Ex Parte NAWRODT et al

Patent Trial and Appeal Board

Dec 31, 2018

14189312 (P.T.A.B. Dec. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/189,312 02/25/2014
60601 7590 12/31/2018
Muncy, Geissler, Olds & Lowe, P.C.
4000 Legato Road
Suite 310
Fairfax, VA 22033
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Sebastian NA WRODT
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.
1047/0llOPUSl 7918
EXAMINER
ROSARIO-APONTE, ALBA T
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
12/31/2018 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
Exparte SEBASTIANNAWRODT,
KARSTEN HEINIG, ROLAND HENNIG, and
CHRISTOPH STEINER 1
Appeal2018-005408
Application 14/189 ,312
Technology Center 3700
Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1---6 and 12-14. Claim 7 has been canceled and
claims 8-11 have been withdrawn from consideration. Appeal Br. 4. We
have jurisdiction under 35 U.S.C. § 6(b ).
1 Jenoptik Automatisierungstechnik GMBH ("Appellant") is the applicant as
provided under 3 7 C.F .R. § 1.46 and is identified as the real party in interest.
Appeal Brief2 ("Appeal Br."), filed Nov. 2, 2017.
Appeal2018-005408
Application 14/189,312
We REVERSE.
CLAIMED SUBJECT MATTER
The claimed subject matter "relates to a method for disposing of a
slug produced in a hole punching operation on a hollow profile and to a
device for carrying out this method." Spec. ,r 3, Figs. la-3b. Claims 1 and
12 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A method for disposing of a slug produced in a hole
punching operation on a hollow profile, the method comprising:
providing a hollow profile;
cutting at least one predeterminable, non-continuous
contour path into the hollow profile via a cutting device;
leaving a residual web between a first end region of the
contour path and a second end region of the contour path;
moving a receiving device into the hollow profile;
moving a first punch from a first position into a residual-
web-removing second position such that a first slug thereby
produced is received by the receiving device; and
moving the receiving device out of the hollow profile,
wherein the first end region of the contour path extends
away from the first slug, and wherein the second end region of
the contour path extends within the first slug, the contour path
defining at least a portion of a perimeter of the slug.
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Application 14/189,312
THE REJECTIONS 2
I. Claims 12-14 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
II. Claims 1--4, 6, and 12-14 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Carlsson (WO 98/55244, published Dec. 10, 1998).
III. Claims 1--4, 6, and 12-14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Buettner (US 7,992,475 B2, issued Aug. 9, 2011) and
Carlsson.
IV. Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Carlsson and Yamauchi (US 5,839,336, issued Nov. 24, 1998).
V. Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Buettner, Carlsson, and Yamauchi.
ANALYSIS
Rejection I-Indefiniteness
Claims 12-14
With respect to claim 12, the Examiner finds that the phrase "'cutting
at least two predeterminable, non-continuous hole or slug contour paths"'
renders the claim indefinite because it "is unclear if [Appellant] is trying to
claim two non-continuous holes, or two slug contour paths, or two non-
continuous, hole or slug, contour paths." Final Act. 3. 3 The Examiner also
2 The rejection of claim 6 under 35 U.S.C. § 112, second paragraph, has been
withdrawn by the Examiner. Examiner's Answer 13 ("Ans."), dated Mar. 1,
2018.
3 Final Office Action ("Final Act."), dated May 9, 2017.
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Application 14/189,312
finds that the term "'the opposing side"' at line 9 of the claim lacks
antecedent support. Id.
A claim is properly rejected as being indefinite under 35 U.S.C. § 112
second paragraph if, after applying the broadest reasonable interpretation in
light of the Specification, the metes and bounds of a claim are not clear
because the claim "contains words or phrases whose meaning is unclear." In
re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014).
We agree with Appellant that the phrase at issue is clear because "one
of skill in the art would not read the entire phrase of 'cutting at least two
predeterminable, non-continuous hole or slug contour paths into the hollow
profile' as anything but [the] cutting of contour paths." Appeal Br. 19. As
Appellant explains, the term "'hole or slug' clearly modifies or describes the
contour path cut in the hollow profile." Id.
We also agree with Appellant that, concerning the term "'the
opposing side,"' "the antecedent basis is clear in the claim." Id. As
Appellant explains, "the claim previously recites 'opposing sides of the
hollow profile.' In particular, the claim describes at least two contour paths
on opposing sides. The later recited, 'the opposing side' is used in
conjunction with these paths and refers [to] the punching of this path by a
punch." Id. We note the Examiner's assertion that "'[o]pposing sides of the
hollow profile' is not the same as 'the opposing side'. Which opposing side
of the opposing sides is the claim referring to when it cites 'punching of the
opposing side'? It seems that the limitation should read 'the opposing sides
of the hollow profile."' Ans. 22-23. However, breadth is not indefiniteness.
See SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1341 (Fed.
Cir. 2005). The penultimate limitation of claim 12 does not require
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Application 14/189,312
identification of a particular one of the "opposing sides of the hollow
profile." It is clear from this limitation that a punch is positioned to produce
slugs on one side of the hollow profile and another slug is produced by
punching on the opposing side of the hollow profile.
For these reasons, we do not sustain the Examiner's rejection of
claims 12-14 as indefinite.
Rejection II -Anticipation by Carlsson
Claims 1-4 and 6
With respect to claim 1, the Examiner finds that Carlsson discloses a
method for disposing of a slug produced in a hole punching operation on a
hollow profile, the method comprising cutting at least one predeterminable,
non-continuous contour path into the hollow profile via a cutting device
wherein a first end region of the contour path extends away from a first slug
and wherein a second end region of the contour path extends within the first
slug, the contour path defining at least a portion of a perimeter of the slug.
See Ans. 15-16 (citing Carlsson, 4:28-31, 5:1-2, Figs. 1, 3---6); see also
Final Act. 4--5.
Appellant contends that the Examiner fails to "address how an
uncompleted vertical cut can teach the specific contour end placement
claimed in the final limitation of claim 1. That is, Carlsson cannot teach the
features of 'the second end region of the contour path extends within the first
slug,' recited in claim 1." Appeal Br. 11.
In review of Figures 1 and 3---6 and the cited passages of Carlsson, we
fail to see how Carlsson discloses a first end region of the contour path
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Application 14/189,312
extending away from a first slug and a second end region of the contour path
extending within the first slug, as claimed.
For these reasons, we do not sustain the Examiner's rejection of claim
1 and claims 2--4 and 6 depending therefrom, as anticipated by Carlsson.
Claims 12-14
With respect to claim 12, the Examiner finds that Carlsson discloses a
method for disposing of a slug produced in a hole punching operation on a
hollow profile, the method comprising cutting at least two predeterminable,
non-continuous hole or slug contour paths into a hollow profile on opposing
sides of the hollow profile via a cutting device because of the
"circumferential and vertical path [ that is] formed prior to completely
cutting [through] the thickness of the hollow profile wall to form holes 4
and/or 10." Final Act. 6 (citing Carlsson, Abstract, 4:13-31, 5:1-11 Figs. 1,
3---6); see also Ans. 17. According to the Examiner, Carlsson discloses this
limitation because "the contour path is interrupted by the removal of 7[ 4J to
allow the punch to cut [through] the bottom wall of the hollow profile."
Adv. Act. 2. 5
In this case, we agree with Appellant that "[t]he Examiner's assertions
that these claimed steps can be taught by taking a snapshot of the machine as
it is half way through punching a single disc, such that the punch is part way
4 As Carlsson identifies reference number 7 as a punch cavity, it appears that
the Examiner is referring to die 8 instead of punch cavity 7 because it is the
removal of die 8 that allows punch 5 to punch through the bottom wall 2. See
Carlson, Fig. 2.
5 Advisory Action ("Adv. Act."), dated July 27, 2017.
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Application 14/189,312
through its path, is simply not supported by the reference nor is this a proper
interpretation of the claims" and that "[t]he Examiner's explanation in the
Advisory Action is equally unsupported." Appeal Br. 10. In creating holes
4 and 10, Carlsson employs a punch 5 and die 8 to shear the top wall 3 or
bottom wall 6, rather than performing a cutting action. In doing so, a
continuous circular path is formed at the boundaries of holes 4 and 10 and a
skilled artisan would not consider this continuous circular path as a
"predeterminable, non-continuous hole or slug contour path[]," as claimed,
in view of Appellant's disclosure. Further, the Examiner's finding that
Carlsson discloses this limitation because "the contour path is interrupted by
the removal of [ die 8] to allow the punch to cut [through] the bottom wall of
the hollow profile" exceeds the bounds of the broadest reasonable
interpretation in light of and consistent with the Specification. A skilled
artisan would not consider a two-step punching process to correspond to a
non-continuous path as disclosed in the Specification. See Spec. ,r 36; see
also Appeal Br. 14--15.
For these reasons, we do not sustain the Examiner's rejection of claim
12 and claims 13 and 14 depending therefrom, as anticipated by Carlsson.
Rejection III- Obviousness over Buettner and Carlsson
Claims 1-4 and 6
With respect to claim 1, the Examiner finds that Buettner discloses
[a] first end region (horizontal top end of 6) of [a] contour path
extend[ing] away from a center of [a] first slug (as shown in Fig.
1 b ), and wherein [a] second end region ( vertical middle end of 6)
of the contour path extends within the center of the first slug ( as
shown in Fig[ s]. 1 b, 1 d), the contour path defining at least a
portion of a perimeter of the slug ( as shown in Fig. 1 b ).
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Application 14/189,312
Final Act. 8 ( emphasis added); see also Ans. 19. In the Advisory Action, the
Examiner takes the position that a "slug is the combination of the two
portions 2 in Fig. 1 b [ of Buettner], therefore, its center is located between
the two portions 2." Adv. Act. 2.
In this case, we agree with Appellant that "as seen in FIG. ld [of
Buettner], the two slugs on either side are merely surrounded by the contour
6." Appeal Br. 15. We further agree with Appellant that
[Figure] 1 b only shows that the ends of line 6 extend toward the
bridge portion between the slugs. The remaining portion
between the lines 6 in [Figure] 1 b is still webbing not a part of
the slug. Even if the bridge is part of the slug, the cited ends of
the lines 6 only extend toward the slug but do not extend within
the slug as claimed.
Id. at 16. As such, we fail to see how Buettner discloses a first end region of
the contour path extending away from a first slug, and wherein a second end
region of the contour path extends within the first slug, the contour path
defining at least a portion of a perimeter of the slug, as claimed. The
Examiner relies on Carlsson for disclosure of providing a hollow profile,
moving a receiving device into the hollow profile, and moving the receiving
device out of the hollow profile. See Final Act. 9. Thus, the Examiner does
not rely on Carlsson in any manner that remedies the deficiencies of
Buettner discussed above.
For these reasons, we do not sustain the Examiner's rejection of claim
1 and claims 2--4 and 6 depending therefrom, as unpatentable over Buettner
and Carlsson.
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Appeal2018-005408
Application 14/189,312
Claims 12-14
With respect to claim 12, the Examiner finds that Buettner discloses
"cutting at least two predeterminable, non-continuous hole or slug contour
paths ( 6) into the plate workpiece on opposing sides (left and right, up and
down) of the plate workpiece via a cutting device (32)." Final Act. 10-11;
see also Ans. 20. According to the Examiner, "[t]he claim language does
not limit the opposing sides to be in the different planes, therefore a left side
and a right side, or an up/back side and a down/front side are opposite sides
of the plate workpiece." Ans. 20.
We agree with Appellant that the Examiner's finding is in error.
Appeal Br. 1 7. Claim 12 recites "cutting at least two predeterminable, non-
continuous hole or slug contour paths into the hollow profile on opposing
sides of the hollow profile via a cutting device." Appeal Br. 21, Claims
App. ( emphasis added). As Appellant explains, Figure 2 of Buettner shows
"a plate [in which] all the pre-cut contours are in the same plane and not
opposing any of the others, nor is the single cut plane opposing anything."
Id. at 1 7. The Examiner relies on Carlsson for disclosure of providing a
hollow profile, moving a punch for each hole or slug contour path from a
first position into a residual-web-removing second position such that discs or
slugs produced by punching of the opposite side are received together by the
receiving device, moving a receiving device into the hollow profile and
moving the receiving device out of the hollow profile. See Final Act. 11-12.
Thus, the Examiner does not rely on Carlsson in any manner that remedies
the deficiencies of Buettner discussed above.
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For these reasons, we do not sustain the Examiner's rejection of claim
12 and claims 13 and 14 depending therefrom, as unpatentable over Buettner
and Carlsson.
Rejections IV and V - Obviousness over Carlsson and Yamauchi or
Buettner, Carlsson, and Yamauchi
Claim 5 depends from claim 1. Appeal Br. 20, Claims App. The
Examiner's rejections of claim 5 as unpatentable over Carlsson and
Yamauchi or Buettner, Carlsson, and Yamauchi are each based on the same
unsupported findings in Carlsson and Buettner discussed above with respect
to claim 1. See Final Act. 13-14. The Examiner does not rely on Yamauchi
in any manner that remedies the deficiencies of Carlsson or Buettner
discussed above. Accordingly, for reasons similar to those discussed above
for claim 1, we do not sustain the Examiner's rejections of claim 5 as
unpatentable over Carlsson and Yamauchi or Buettner, Carlsson, and
Yamauchi.
DECISION
We REVERSE the decision of the Examiner to reject claims 12-14 as
indefinite.
We REVERSE the decision of the Examiner to reject claims 1---6 and
12-14 under 35 U.S.C. §§ 102(b) and 103(a).
REVERSED
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