Ex Parte Luhr et al

Patent Trial and Appeal Board

Aug 24, 2016

13133283 (P.T.A.B. Aug. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/133,283 06/07/2011
34044 7590 08/26/2016
MICHAEL BEST & FRIEDRICH LLP (Bosch)
100 EAST WISCONSIN A VENUE
MILWAUKEE, WI 53202
FIRST NAMED INVENTOR
Volker Luhr
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.
022862-1260-usoo 1859
EXAMINER
RATH OD, ABHISHEK M
ART UNIT PAPER NUMBER
2835
NOTIFICATION DATE DELIVERY MODE
08/26/2016 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):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VOLKER LUHR,
MARKUS-ALEXANDER SCHWEIKER, RENE KLOETZIG,
and ANDREA VOETH
Appeal2015-002559
Application 13/133,283
Technology Center 2800
Before MARK NAGUMO, GEORGE C. BEST, and LILAN REN,
Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-9, 11, and 14-23 of
Application 13/133,283 under 35 U.S.C. § 103(a) as obvious. Final Act.
(March 20, 2014). Appellants 1 seek reversal of these rejections pursuant to
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
As discussed in greater detail below, we conclude that claims 1 and 19
of the '283 Application are indefinite. We, therefore, reject all of the claims
1 Robert Bosch GmbH is identified as the real party in interest. Appeal
Br. 2.
Appeal2015-002559
Application 13/133,283
on appeal pursuant to 35 U.S.C. § 112 iJ 2. This is a NEW GROUND OF
REJECTION. Because the claims are indefinite in a way that precludes
determining whether the claims can be read on the prior art , we REVERSE
the Examiner's rejection of the claims under§ 103. We emphasize that this
reversal is procedural in nature and is not an expression of any opinion
regarding the merits of the Examiner's rejection as applied to definite
claims.
BACKGROUND
The '283 Application describes an electric circuit assembly that can
be used to control a motor vehicle device. Spec. 1. The circuit assembly
comprises a first circuit board, a second circuit board, and a mount for
holding the second circuit board on the first circuit board. Id.
Claim 1 is representative of the '283 Application's claims and is
reproduced below:
1. An electrical circuit assembly ( 1 ), compnsmg
a first circuit board (2),
at least one second circuit board (3) and
at least one mount ( 4) for holding the second circuit board (3)
on the first circuit board (2) while producing an electrical
contact ( 6) between the first (2) and the second (3) circuit
board,
characterized in that the second circuit board (3) is
preassembled on the mount ( 4 ), and
in that the preassembled unit (5) including the second
circuit board (3) and mount ( 4) is connected to the first
circuit board (2),
wherein the mount ( 4) and the second circuit board (3) are
arranged transversely, with respect to the first circuit board (2),
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Application 13/133,283
characterized in that the electrical contact ( 6) is produced
between the first circuit board (2) and the second circuit board
(3)
via the mount ( 4) and
via at least one contact element (7, 24) electrically
connected to the mount (4),
wherein the contact element (7, 24) makes
electrical contact
with the first circuit board (2) by means of
at least one spring element or at least one
press-fit pin (8) attached to the mount (4)
and
with the second circuit board (3) by means
of at least one press-fit pin (27) attached to
the mount (4),
wherein holding elements (16) for holding the second circuit
board (3) are provided on the mount (4), and wherein the mount
(4) includes openings (29) for the latching reception of the
holding elements (16).
Anneal Br. 9 (Claims Ann.) (nara!.!ranhirn.!. indentation and emnhasis added).
_._ _._ ' _._ _._ / ,_._ '-' _._ '-'-' _._ /
REJECTION
On appeal, the Examiner maintains the following rejection:
Claims 1-9, 11, and 14-23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Boucheron2 and Sasao. 3 Final Act. 2.
2 US 2002/0044429 Al, published April 18, 2002.
3 US 5,074,800, issued December 24, 1991.
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Application 13/133,283
DISCUSSION
Appellants argue for reversal of the Examiner's rejection based upon a
limitation present in both independent claim 1 and independent claim 19.
See Appeal Br. 6. In particular, Appellants argue that the Examiner erred by
finding that the combination of Boucheron and Sasao describes or suggests
every limitation in independent claims 1 and 19. See Appeal Br. 6-7.
Appellants also argue that the rejection should be reversed because a person
of ordinary skill in the art would have no motivation to combine Sasao with
Boucheron and that the Examiner's proposed combination would change
Boucheron's principles of operation. See id. at 7.
We are unable to address Appellants' arguments because the claims
are indefinite. See NEW GROUNDS OF REJECTION, infra. Therefore,
discerning the claims' proper scope would require undue and improper
speculation. See In re Aoyama, 656 F.3d 1293, 1298-99 (Fed. Cir. 2011)
(explaining that a claim cannot be both indefinite and anticipated and
refusing to review an anticipation rejection); In re Steele, 305 F.2d 859, 862
(CCPA 1962) ("[W]e do not think a rejection under 35 U.S.C. § 103 should
be based on such speculations and assumptions.").
Thus,for procedural reasons only, we reverse the Examiner's
rejection of claims 1-9, 11, and 14-23. We emphasize that our reversal
should not be interpreted as an expression of any opinion regarding the
merits of the Examiner's rejection pursuant to§ 103 as set forth in the Final
Action and the Examiner's Answer. If prosecution of the '283 Application
continues and the § 112 ,-i 2 rejection is overcome, the Examiner remains
free to reject the claims as unpatentable over the combination of Boucheron
and Sasao under§ 103 if such a rejection is appropriate.
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Application 13/133,283
NEW GROUND OF REJECTION
For the reasons set forth below, we conclude that claims 1 and 19 fail
to particularly point out and distinctly claim the subject matter which
Appellants regard as their invention. We, therefore reject claims 1-9, 11,
and 14-23 pursuant to 35 U.S.C. § 112 ii 2.
Section 112 ii 2, requires "that a patent's claims, viewed in light of the
specification ... inform those skilled in the art about the scope of the
invention with reasonable certainty." Nautilus, Inc. v. Biosig Instruments,
Inc., 134 S. Ct. 2120, 2129 (2014). During prosecution, a claim is examined
for compliance with 35 U.S.C. § 112 ii 2 by determining whether the claim
meets threshold requirements of clarity and precision. In re Skvorecz, 580
F.3d 1262, 1268 (Fed. Cir. 2009) (quoting MPEP § 2173.02). In
determining whether a particular claim is definite, the claim's language must
be analyzed in light of the content of the particular application, the prior
art's teaching, and the interpretation that would be given to the claim's
language by a person of ordinary skill in the art at the time the invention was
made. Id.
Claims 1 and 19 both recite that electrical contact between the first
circuit board and the second circuit board occurs via the mount and via at
least one contact element (7,24)4. As discussed in greater detail below, the
independent claims further specify that the claimed contact element
simultaneously fulfill three structural requirements. Because we are unable
4 We refer to the contact element as recited in claims 1 and 19, recognizing
that the label "(7,24)" does not limit the recited contact element to forms (if
any) illustrated in the Specification, but also recognizing that we are
required to give weight to all words in a claim.
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to determine how a contact element-as that term is understood in view of
Appellants' Specification-can simultaneously satisfy all three of the
structural requirements, we conclude that independent claims 1 and 19 are
indefinite.
Appellants' Specification describes three possible locations for a
contact element. According to the Specification, a contact element may be
located on the first circuit board, the second circuit board, or the mount. In
particular, the Specification describes two different ways to achieve
electrical connection between the first and second circuit boards:
The fixing of the preassembled unit on the first circuit board
can be provided by means of the second circuit board, the
mount or both. By way of example, contact elements of the
second circuit board can be connected to the first circuit board,
wherein the mount serves for support on the first circuit board.
The electrical contact between the first and the second circuit
board can be produced both directly and indirectly. In the
former case, contact elements of the second circuit board are
connected to contact elements of the first circuit board while in
the latter case the mount likewise has contact elements that are
connected to the contact elements of both the first and the
second circuit boards.
Spec. 3 (emphasis added).
One development of the invention provides for the electrical
contact between the first and the second circuit board to be
produced directly and/or via the mount. After the preassembled
unit has been connected to the first circuit board, therefore, an
electrical connection can be present directly between the first
and second circuit boards. For this purpose, by way of
example, both the first and the second circuit boards have
contact elements which form the electrical contact after
connection. It can also be provided that further contact
elements are provided on/in the mount, which are connected
both to contact elements of the first circuit board and to contact
elements of the second circuit board and thus produce the
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electrical contact indirectly via the mount. In this case, the
electrical contact between the second circuit board and the
mount can be formed as early as after the preassembly of the
preassembled unit, while the electrical contact with the first
circuit board only arises with the connection of the
preassembled unit to the first circuit board.
Id. at 6 (emphasis added).
As stated above, independent claims 1 and 19 require the required
contact element (7 ,24) to fulfill three structural requirements simultaneously:
(1) be electrically connected to the mount, (2) make electrical contact with
the first circuit board by means of a spring element or a press-fit pin attached
to the mount, and (3) make electrical contact with the second circuit board
by means of at least one press-fit pin attached to the mount. As explained
below, it is not possible for the contact element described in Appellants'
Specification to meet all three of these requirements at the same time.
The first structural requirement means that contact element (7 ,24) is
not part of the mount. Thus, contact element (7,24) is part of either the first
or second circuit board. The second structural requirement means that
contact element (7 ,24) cannot be part of the first circuit board, leaving the
second circuit board as the location of contact element (7,24). The third
structural requirement, however, excludes the second circuit board as the
location of contact element (7,24).
In view of the foregoing, we conclude that independent claims 1 and
19 are indefinite. Thus, we reject these claims pursuant to 35 U.S.C. § 112
ii 2. We also reject dependent claims 2-9, 11, 14-18, and 20-23 pursuant to
§ 112 ii 2 because they depend from indefinite claims.
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CONCLUSION
As discussed above, we have newly rejected claims 1-9, 11, and 14-
23 are indefinite pursuant to§ 112 iJ 2. We reverse the rejection of claims
1-9, 11, and 14-23 pursuant to § 103. We emphasize that this reversal is
purely procedural in nature and express no opinion regarding the merits of
the rejection set forth in either the Final Action or the Examiner's Answer.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 4 l.50(b) also provides:
When the Board enters such a non-final decision, the appellant, within
two months from the date of the decision, must exercise one of the following
two options with respect to the new ground of rejection to avoid termination
of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
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rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
REVERSED; NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R. § 41.50(b)
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