Ex Parte Maciejewski

Patent Trial and Appeal Board

Dec 29, 2013

11903150 (P.T.A.B. Dec. 29, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/903,150 09/20/2007 Bernd Maciejewski 2006P14747US 8765
22116 7590 12/30/2013
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
MCDUFFIE, MICHAEL D
ART UNIT PAPER NUMBER
3632
MAIL DATE DELIVERY MODE
12/30/2013 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 BERND MACIEJEWSKI
____________

Appeal 2011-009028
Application 11/903,150
Technology Center 3600
____________

Before: JOHN C. KERINS, WILLIAM A. CAPP and NEIL T. POWELL,
Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 11, 12, 14-18, 22 and 27 as unpatentable under 35 U.S.C.
§ 103(a) over Albertine (US 3,432,197, iss. Mar. 11, 1969) and Delong (US
5,947,356, iss. Sep. 7, 1999) and claims 19-21 and 23-26 as unpatentable
over Albertine, Delong and Krispin (US 6,769,724 B2, iss. Aug. 3, 2004).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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Application 11/903,150
2

THE INVENTION
Appellant’s invention relates to mechanical fasteners. Spec. 8-9.
Claim 11, reproduced below, is illustrative of the subject matter on appeal.
A medical device, comprising:
a support rail that disposed on a component of the device;
and
a casing element that encases the device on an outside of
the device and is fixed to the support rail by a quick-action
tension element so that the casing element is displaced
longitudinally and secured on the support rail;
wherein the support rail is fixed to the component with a
vibration damping by one or more intermediate damping
elements, said intermediate damping elements being positioned
between the support rail and the component of the device.
OPINION
Unpatentability of Claims 11, 12, 14-18, 22 and 27
Appellant argues claims 11, 12, 14-18, 22 and 27 as a group. App.
Br. 3-6. We select claim 11 as representative. See 37 C.F.R. § 41.37(c)(1)
(vii) (2011).
The Examiner finds that Albertine discloses all of the elements of
claim 1 except for a damping element between the support rail and the
component. Ans. 4. The Examiner relies on Delong for the damping
element limitation. Id. The Examiner concludes that it would have been
obvious to a person of ordinary skill in the art at the time of the invention to
use the damping element of Delong with the device of Albertine to achieve
the claimed invention. Id. According to the Examiner, a person of ordinary
skill in the art would do this to provide cushioning between the two
elements. Id.
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Application 11/903,150
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Appellant traverses the Examiner’s rejection by arguing that Albertine
does not disclose fixing a support rail to a component. App. Br. 4. In
particular, Appellant argues that there is no disclosure as to how the support
rail would be fixed to such a component. Id. In response, the Examiner
responds that Albertine expressly discloses that channel 12 is fixed to a first
object. Ans. 8. The Examiner maintains that the first object may be
interpreted as a component. Id.
Albertine discloses a “slider latch” incorporating a levered cam that is
essentially identical to Appellant’s “quick action tension element.” See
Albertine, Figs. 1 & 2 (cam 68 with handle portion 72). Albertine’s latch is
coupled to one object and maintained in a fixed relationship with respect to
another object. Albertine, col. 1, ll. 20-24. Albertine’s mounting bracket 56
includes a mounting section 58 to affix the latch to an object. Col. 2, ll. 27-
29. Albertine’s channel 12 is fixed to a first object. Col. 2, ll. 42-58.
Albertine’s latch slider 14 is movable within channel 12 thereby allowing
adjustment of the second object with respect to the first object. Col. 2, ll.
55-58.
We agree with the Examiner that Albertine’s first object and second
(“another”) object satisfy the Appellant’s claim limitations directed to a
component and a casing element, respectively. Ans. 8. In a proper case, the
disclosure of a genus may anticipate a species within that genus even if the
species is not recited. See In re Petering, 301 F.2d 676, 682 (CCPA 1962);
Bristol-Myers Squibb Co. v. Ben Venue Labs, Inc., 246 F.3d 1368, 1380
(Fed. Cir. 2001). While Albertine’s “objects” may be construed more
broadly than a component and casing element respectively, Appellant
provides neither evidence nor technical reasoning to rebut the Examiner’s
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Application 11/903,150
4

position that Appellant’s species elements fall within the generic category of
Albertine’s objects. Neither has Appellant offered evidence or technical
reasoning to patentably distinguish the claimed component and casing from
more generic objects.
With respect to Appellant’s argument that Albertine does not disclose
“how” to affix a support rail to a component, the Examiner annotated a
drawing from Albertine depicting where the component would be disposed
relative to placement of the support rail for the latch. See Ans. 6. Channel
12 is fixed to a first object and functions as a track for slider 14. Col. 2, ll.
42-44. We do not believe that a detailed disclosure of how channel 12 is
fixed to the first object is necessary or required. It is well settled that a
patent need not teach, and preferably omits, what is well known in the art.
See Streck, Inc. v. Research & Diagnostic Sys., Inc., 665 F.3d 1269, 1288
(Fed. Cir. 2012). We believe a person of ordinary skill in the art would be
able to affix a channel to a component or other object using well known
fastening techniques such as screws, bolts, rivets, welding, etc. using no
more than routine skill and without specific instructions.
Next, Appellant argues that the prior art fails to disclose an
intermediate damping element positioned between the support rail and the
device component. App. Br. 4-5. In response, the Examiner states that
Delong discloses a damping element 120 provided between a support rail 32
and a component 24. Ans. 8-9. The Examiner further notes that it is well
known in the art to use damping elements to provide cushioning and prevent
damage to components. Ans. 9. The Examiner relies on Delong to
demonstrate that damping elements are capable of being used in connection
with quick-action tensioning elements. Id. According to the Examiner,
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therefore, Albertine and Delong, in combination, teach the limitation of a
damping element that is capable of being positioned between a support rail
and a component. Id.
Albertine discloses a slider latch 10 with a slider 14 that slides within
a C-shaped channel 12. Col. 1, ll. 63-70. Delong discloses a system for
attaching a toolbox to a pickup truck. Abstract. Delong uses a quick release
latch with a clamp arm 60 and cam surface 63. The cam action increases the
pressure between the toolbox 30 and the top surface of the pick-up truck side
panel 25, thereby holding the toolbox securely. Delong, col. 3, ll. 41-50.
Delong teaches that a layer of rubber 120 or other suitable cushioning
material may be attached to the base of the toolbox 30 and the side panel 25
of the pickup truck. Col. 4, ll. 13-15. The purpose of the layer of rubber
120 is to provide cushioning between the toolbox 30 and the side panel 25.
Delong, col. 4, ll. 14-15.
While Albertine and Delong both disclose cam-lever quick release
fasteners, only Albertine discloses such a fastener that incorporates a C-
shaped channel and slider, Delong does not. The issue presented is whether
a person of ordinary skill in the art, armed with the teachings of Albertine
and Delong, would find it obvious to dispose a cushioning, vibration
damping element on the “back side” of the C-shaped channel (i.e., opposite
the opening of the C-shaped channel). We agree with the Examiner that it
would have been obvious to cushion Appellant’s device by so locating the
damping element.
Although Delong does not disclose a C-shaped channel, it does teach
a person of ordinary skill in the art to dispose a cushioning element to
facilitate forming a secure connection and to isolate vibration between two
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Application 11/903,150
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objects. Appellant’s Specification indicates that there are only a finite
number of connections between an MRI magnet and the outer casing of an
MRI device. Spec. 2-4. We think a person of ordinary skill in the art faced
with the problem of isolating vibration between an MRI magnet and the
external casing of the device, would consider the connection between the
component (MRI magnet) and support rail as one of a finite number of
alternatives for locating a damping element. See KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 421 (2007).
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.
Id. We sustain the Examiner’s rejection of claims 11-12, 14-18, 22 and 27.
Unpatentability of Claim 19-21 and 23-26
In challenging the Examiner’s rejection to claims 19-21 and 23-26,
Appellant relies on the same arguments that we have previously considered
above with respect to claims 11, 12, 14-18, 22 and 27. For the same reasons
articulated above, we sustain the rejection of claims 19-21 and 23-26.
DECISION
The decision of the Examiner to reject claims 11, 12 and 14-27, is
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)(1)(iv).
AFFIRMED
rvb