Ex Parte Krammer et al

Patent Trial and Appeal Board

Jun 22, 2016

12947105 (P.T.A.B. Jun. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/947,105 11/16/2010
513 7590 06/24/2016
WENDEROTH, LIND & PONACK, LLP,
1030 15th Street, N.W.,
Suite 400 East
Washington, DC 20005-1503
FIRST NAMED INVENTOR
Bernhard Krammer
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
2010_1581A 1293
EXAMINER
NGUYEN,VUQ
ART UNIT PAPER NUMBER
3657
NOTIFICATION DATE DELIVERY MODE
06/24/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ddalecki@wenderoth.com
eoa@wenderoth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BERNHARD KRAMMER and ANDREAS HOLZAPFEL
Appeal2014-006222
Application 12/947,105 1
Technology Center 3600
Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and
BRUCE T. WIEDER, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 16-32 under 35 U.S.C. § 102(b) as anticipated by
Gasser (US 6,666,306 B2, iss. Dec. 23, 2003). We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 According to the Appellants, "[t]he real party in interest is Julius Blum
GmbH of Hochst, Austria, the Assignee of the present application." Appeal
Br. 1.
Appeal2014-006222
Application 12/947,105
Claimed Subject Matter
Independent claim 16, reproduced below, is illustrative of the subject
matter on appeal.
1. A damping device comprising:
a damper to be located at a first part of an article of
furniture, said damper configured to be actuated by a second part
of the article of furniture so as to dampen a movement of the first
part relative to the second part;
a coupling for activating and deactivating a damping
action of said damper, said damper being configured to dampen
the relative movement between the first part and the second part
during movement of the first part relative to the second part in a
damping direction when said coupling is in a closed state, and
said damper being configured not to dampen the relative
movement between the first part and the second part during
movement of the first part relative to the second part in the
damping direction when said coupling is in an open state; and
a manually actuated switching member connected to said
coupling for switching said coupling between the closed state
and the open state to thereby activate and deactivate said damper,
respectively.
ANALYSIS
The Examiner's rejection of claim 16, under 35 U.S.C. § 102(b) as
anticipated by Gasser, requires that the Examiner establish that each and
every element of the claimed invention, arranged as required by the claim, is
found in a single prior art reference, either expressly or under the principles
of inherency. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
The Examiner finds that Gasser's rocker member 21 corresponds to the
"manually actuated switching member connected to said coupling for
switching said coupling between the closed state and the open state to
thereby activate and deactivate said damper, respectively," as recited in
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Appeal2014-006222
Application 12/947,105
independent claim 16. Final Act. 3 (citing Gasser, col. 3, 11. 5--46). Notably,
the Examiner construes the term "manually actuated" in "manually actuated
switching member" as a functional limitation. Ans. 3. The Examiner
explains that as long as the "prior art structure is capable of performing the
function or intended use, then it meets the limitation." Ans. 3.
The Appellants argue that Gasser's rocker member 21 does not
constitute a "manually-actuated switching member," as required by
independent claim 16. See Appeal Br. 3-6. The Appellants contend that
Gasser's rocker member 21 is not capable of being manually actuated by
asserting that "rocker member 21 is automatically moved with the rotational
damper 20 against the retaining element 17 ." Appeal Br. 4. Also, the
Appellants assert that rocker member 21 is completely enclosed by side
walls 3 and rails 4, 5, 6, which precludes rocker member 21 from being
"manually actuated." See Appeal Br. 4--5 (citing Gasser, col. 2, 11. 31-32,
Fig. 5); Reply Br. 1-2. The Appellants' argument is persuasive.
The Examiner fails to adequately support the finding that Gasser's
rocker member 21 is capable of being manually actuated. At best, the
Examiner appears to suggest that the lack of disclosure that rocker member
21 is not capable of being manually actuated is itself evidence that rocker
member 21 is capable of being manually actuated. See, e.g., Ans. 3 (stating
"nothing appears to preclude the rocker member from being manually
actuated by a human operator.").
Also, the Examiner maintains that "there is no indication that the
damper[, including rocker member 21,] is completely enclosed on all sides."
Ans. 3. After a careful review of Gasser's disclosure, we agree with the
Examiner that there is insufficient evidence to find that the rocker member
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Appeal2014-006222
Application 12/947,105
21 is completely enclosed. However, there is also insufficient evidence to
find that rocker member 21 is not completely enclosed. Because there is
insufficient evidence to find that rocker member 21 is not completely
enclosed, then there is also insufficient evidence to find that rocker member
21 is accessible by a human operator, i.e., manually actuated. Therefore, the
Examiner's finding that Gasser's rocker member 21 corresponds to the
claimed "manually actuated" switching member is not supported by a
preponderance of the evidence. Further, we note that the remainder of the
Examiner's responses in the Answer are based on speculation.
Thus, the Examiner's rejection of claim 16 under 35 U.S.C. § 102(b)
as anticipated by Gasser is not sustained. The Examiner's findings with
respect to claims 17-32 do not compensate for the above-discussed
shortcoming, so we also do not sustain the Examiner's rejection of claims
17-32.
DECISION
We REVERSE the Examiner's decision rejecting claims 16-32.
REVERSED
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