Ex Parte Krueger et al

Patent Trial and Appeal Board

Mar 25, 2015

12966949 (P.T.A.B. Mar. 25, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/966,949 12/13/2010 Frieder Krueger 1004/0130PUS1 9747
60601 7590 03/26/2015
Muncy, Geissler, Olds & Lowe, P.C.
4000 Legato Road
Suite 310
FAIRFAX, VA 22033
EXAMINER
MCPARTLIN, SARAH BURNHAM
ART UNIT PAPER NUMBER
3649
MAIL DATE DELIVERY MODE
03/26/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte FRIEDER KRUEGER, ANDRE BLINZLER,
STEPHANIE HARTLEB, JUERGEN SILLER,
VOLKER MOELLER, MICHAEL ZELLMANN,
and MATTHIAS WEISS
____________________

Appeal 2013-001398
Application 12/966,949
Technology Center 3600
____________________

Before: STEFAN STAICOVICI, CHARLES N. GREENHUT, and
JILL D. HILL, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE

Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
17. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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Application 12/966,949

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The claims are directed to an adjustment fitting. Claim 1, reproduced
below, with emphasis added, is illustrative of the claimed subject matter:
1. An adjustment fitting for a motor vehicle seat, the
adjustment fitting comprising:
a first fitting part;
a second fitting part that is rotationally adjustable relative
to the first fitting part about an axis of rotation,
an outer wheel associated with the first fitting part, the
outer wheel having internal teeth, the outer wheel being
configured as a ring gear with a floor and an outer wall that is
extended in an axial direction past the internal teeth;
an inner wheel inserted in the outer wheel eccentrically to
the axis of rotation in the manner of a wobble mechanism, the
inner wheel having external teeth that are associated with the
second fitting part, the inner wheel forming a receiving space
that is eccentric to the axis of rotation;
an eccentric cam rotatably inserted in the eccentric
receiving space;
a drive shaft configured to drive the eccentric cam; and
a retaining element being configured to move axially in
the outer wall toward the inner wheel, the retaining element
positioned to define axial play of the inner wheel and the
retaining element being attached to the outer wall and
supporting the inner wheel against the floor of the ring gear.

REJECTIONS
1

Claims 1-17 are rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which applicant regards as the invention. Final Act. 2.
Claims 1-8 and 10-14 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Dill (US 2006/0084547 A1; pub. Apr. 20, 2006). Final Act.
3.

1
The intent of the Examiner’s comment regarding claim 6 under the
“Withdrawn Rejections” section of the Answer is not clear.
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OPINION
The rejection under 35 U.S.C. § 112
Appellants argue the claims subject to the rejection under 35 U.S.C.
§ 112 as a group, for which we select claim 1 as representative. App. Br 8-
10; 37 C.F.R. § 41.37(c)(1)(iv). Appellants do not dispute the Examiner’s
understanding of the disclosed or claimed subject matter. Reply Br. 1-3.
Rather, Appellants fail to appreciate the reasons why the conflict between
the two, and even within the claim itself, renders the claim non-compliant
with the second paragraph of 35 U.S.C. § 112.
The basis for the Examiner’s rejection under 35 U.S.C. § 112, second
paragraph, is the clause italicized above. The problem with this clause is
that it makes four requirements of the retaining element that do not appear to
be able to be contemporaneously achieved. The first requirement, of “being
configured to move axially” is one that, as the Examiner correctly points out,
is only satisfied during the assembly process. Spec. paras. 42-43. The latter
three requirements of the clause, which relate to the definition of axial play
of the inner wheel, the attachment of the retaining element to the outer wall,
and the supporting of the inner wheel against the floor of the ring gear,
appear to be directed to limitations that are only satisfied after the assembly
is complete. Id. Thus, it would appear to be impossible for a device, at the
very least any disclosed device, to satisfy all the limitation of claim 1. In
other words, “[i]t is evident to us from the above summary of the
description, definitions and examples appearing in appellant’s specification,
that the claims on appeal are inherently inconsistent.” See In re Cohn, 438
F.2d 989, 993 (CCPA 1971) (summarized at MPEP § 2173.03).
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There is precedent for the notion that this particular situation is “more
precisely a matter which involves a question of compliance with the first
paragraph of 35 U.S.C. § 112.” See, e.g., In re Hammack, 427 F. 2d 1378,
1381 (CCPA 1970) (citing In re Borkowski, 422 F.2d 904, 57 CCPA
(1970)); MPEP § 2174. Nevertheless, due to the ambiguity in the claims a
rejection under the second paragraph of 35 U.S.C. § 112, as made by the
Examiner, is also appropriate. See, e.g., In re Hammack, 427 F. 2d at 1381-
83. The Examiner contends that the internal conflict in the recitation above
creates an ambiguity as to whether the claim is directed to the assembled
product or the process of assembly. Final Act. 2. We agree. For example,
once the axial play is “define[d],” the retaining element “attached,” and the
inner wheel supported against the floor of the ring gear, the retaining
element is no longer configured to move axially. All limitations must be
satisfied to infringe. However, the conflicting requirements of the retaining
element make it unclear whether the claim is infringed after assembly, or at
some point during the assembly process.
At best, at least for purposes of this particular claim, there is a third
possibility: the claim is directed to an intermediate product of the
manufacturing process, i.e., one in which the retaining element can still
move axially according to the first requirement while arguably satisfying the
remaining three requirements of the clause. This possibility seems unlikely
as Appellants have not offered any argument to that effect, nor does the
Specification evidence any intent to direct a claim to such an intermediate
product. Furthermore, if independent claim 1 was directed to an
intermediate product having a retaining element with the requisite axial
mobility it would clearly cast significant doubt on the compliance of at least
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dependent claim 9 with the first, second and fourth paragraphs of 35 U.S.C.
§ 112. It is neither clear as required by paragraph two, nor disclosed as
required by paragraph one, of 35 U.S.C. § 112, how the retaining element
can be axially movable in the outer wall while being welded thereto. Claim
17, itself, suffers from this same flaw. Further with this construction, claim
9 would then appear to undo limitations of the claim from which it depends,
in violation of the fourth paragraph of 35 U.S.C. § 112. See Ans. 3 (noting
the inconsistency of claims 9, 16 and 17).
Ultimately, in addition to some of the other problems we have
mentioned, when read in light of the Specification and the surrounding
claims, due to the ambiguities identified by the Examiner, the claims fail to
put the potential infringer on notice as to the metes and bounds of protection
sought. See In re Hammack, 427 F. 2d at 1382. The burden of drafting
precise and non-ambiguous claims with definite boundaries that can be
ascertained without resort to speculation rests squarely on the applicant. In
re Morris, 127 F. 3d 1048, 1056 (Fed. Cir. 1997). Thus, for the reasons
discussed above, the Examiner’s rejection under 35 U.S.C. § 112, second
paragraph, is entirely appropriate.

The rejection under 35 U.S.C. § 102
Appellants argue the claims subject to the rejection under 35
U.S.C. § 102 as a group, for which we again select claim 1 as representative.
App. Br 10-11; 37 C.F.R. § 41.37(c)(1)(iv).
We are mindful that in instances where speculation is necessary to
determine the scope of claimed subject matter it becomes impossible to
definitively determine patentability under 35 U.S.C. §§ 102 or 103. See In
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re Steele, 305 F.2d 859 (CCPA 1962). The Examiner proposes an
amendment to remedy the deficiencies of claim 1 discussed above. See
Final Rej. 2. Although it appears that the Examiner’s proposed amendment
would remedy the deficiencies of claim 1, it is still not entirely clear from
the record whether the amendment proposed by the Examiner causes the
claim to be directed to the subject matter for which Appellants actually seek
protection. Nevertheless, in an effort to provide compact prosecution (see.
e.g., MPEP § 2173.06) the Examiner proceeds to analyze the proposed claim
under 35 U.S.C. § 102. Despite the ambiguities of claim 1 we are able to
express our agreement with the Examiner on the issues raised by Appellants
concerning the rejection under 35 U.S.C. § 102. We also do this in an effort
to promote compact prosecution.
First, it is not clear why the Appellants believe the retaining element
aspect of the claim, which formed the basis for the Examiner’s rejection
under 35 U.S.C. § 112, was not addressed by the Examiner when rejecting
the claim under 35 U.S.C. § 102. App. Br. 10. At most, the Examiner could
have been more precise in identifying the round (unlabeled) portion of Dill’s
geared wheel 31 relied on to meet this structure. See Final Act. 3; Ans. 3.
But, as this element appears to satisfy all the structural and functional
recitations required of the recited retaining element (see Dill Fig. 5), we
think it is apparent what structure the Examiner was referring to. The
Examiner’s position in this regard is uncontroverted.
We also agree that the Examiner properly interpreted “eccentric cam”
to include structures having an eccentric or irregularly shaped body even if
they do not have an eccentric axis of rotation. Ans. 4. Though the structure
described as Appellants’ preferred embodiment is not necessarily controlling
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either way, it is not clear that Appellants’ own cams 30, 32 are “eccentric”
for the reasons suggested in Appellants’ arguments. See App. Br. 11.
Appellants’ proposed construction of “eccentric cam” is not commensurate
in scope with the claim and does not even appear to be commensurate in
scope with Appellants’ disclosure.
The basis for Appellants’ assertion that “pinion 22 does not provide “a
receiving space that is eccentric to the axis of rotation [A]” (App. Br. 11) is
also unclear. This feature is plainly visible in Figure 3 of Dill.
Lastly, it is unclear why “Applicants submit that the “attached to”
limitation does not include the stringing together of all elements between a
first claimed element and a wall and concluding that it is attached to the
wall” (App. Br. 11) because the Examiner has never proposed “stringing
together [any] elements between” those that must be “attached” according to
claim 1. Rather, the clamping elements 33, 35, and 37 cited by the
Examiner act externally to the structures interpreted as the recited retaining
element and outer wall to cause direct engagement of the latter. See Dill
Figure 5. Thus, even assuming, in a manner that would seem contrary to
established precedent (see, e.g., Ullstrand v. Coons, 147 F.2d 698, 700
(CCPA 1945) (The accepted definition of the term “connected” is restricted
to neither a direct nor an indirect connection, and it is therefore applicable to
an indirect connection)), that “attached to” precludes the presence of
intermediate structures, no such intermediate structures are present between
those relied upon by the Examiner.
Appellants’ remaining arguments (App. Br. 12-13) amount to mere
recitations of the claim elements and naked assertions that the corresponding
elements were not found in the prior art. Such arguments do little to
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controvert the express findings and conclusions articulated by the Examiner
(Final Act. 4-6; Ans. 4-7), which we adopt as our own. See In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011) (citing the predecessor of 37 C.F.R.
§ 41.37(c)(1)(iv)).

DECISION
The Examiner’s rejections are affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED
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