Ex Parte Rube

Patent Trial and Appeal Board

Jul 18, 2016

12736483 (P.T.A.B. Jul. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121736,483 10/13/2010
513 7590 07/20/2016
WENDEROTH, LIND & PONACK, L.L.P.
1030 15th Street, N.W.,
Suite 400 East
Washington, DC 20005-1503
FIRST NAMED INVENTOR
Helmut Rube
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.
57484 4891
EXAMINER
DUCKWORTH, BRADLEY
ART UNIT PAPER NUMBER
3632
NOTIFICATION DATE DELIVERY MODE
07/20/2016 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 HELMUT RUBE
Appeal2014-006384
Application 12/736,483
Technology Center 3600
Before JENNIFER D. BAHR, WILLIAM A. CAPP, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Helmut Rube ("Appellant") appeals under 35 U.S.C. § 134(a) from
the Examiner's Final Decision rejecting claims 24--54. 1 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and ENTER A NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Appellant submits the real party in interest is Carl Stahl GmbH. Appeal
Br. 1.
Appeal2014-006384
Application 12/736,483
THE CLAIMED SUBJECT MATTER
Claim 24, reproduced below, is illustrative of the claimed subject
matter.
24. A load bearing device for introducing load forces into
support structures, comprising:
at least one load bearing member being anchorable onto a
support structure and having a spherical part with a transfer
surface, said transfer surface being at least partially convex with
surface areas circumscribed by a convexly curved envelope; and
a tensioning housing engaging said transfer surface, said
tensioning housing having a receiving compartment receiving
said spherical part such that said tensioning housing surrounds
said spherical part in a hooking-together state, said tensioning
housing having recesses remaining open in the hooking-together
state only through which said spherical part passes for hooking
and unhooking said load bearing member with said tensioning
housing.
REJECTIONS
1) Claims 28 and 48 are rejected under 35 U.S.C. § 112, second
paragraph as indefinite.
2) Claims 24--28, 31-33, 35--40, 42, 47--48, and 51-52 are rejected
under 35 U.S.C. § 102(b) as anticipated by Wright (US 5,478,039,
iss. Dec. 26, 1995).
3) Claim 34 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Wright.
4) Claims 29, 30, 41, 49, and 50 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Wright and Trachet (US 7,775,495 B2, iss.
Aug. 17, 2010).
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5) Claims 43, 44, and 53 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Wright and Clayton (US 7,762,735 B2, iss. July
27, 2010).
6) Claims 45, 46, and 54 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Wright and Bennett (US 7,523,906 B2, iss. Apr.
28, 2009).
DISCUSSION
Rejection 1: Claims 28 and 48 - Indefiniteness
The Examiner concludes these claims are indefinite because "it is
unclear how the recessed surface areas ... relate to the claimed invention, as
neither of these elements have previously been recited in the claims such
that it is unclear how the areas are arranged." Ans. 2; see also Claims App.
ii, vi. Appellant submits that the "recessed surface areas" recited in claims
28 and 48 are illustrated in Appellant's Figures 16-18 and described in the
Specification on page 14 thereof. Appeal Br. 4. Appellant contends that one
of ordinary skill would understand that the claims recite "a transfer surface
comprising transfer surface areas that are offset (i.e. separated) from one
another by recessed areas (i.e. depressions) that are between those transfer
surface areas." Id. Although claims 28 and 48 are not models of
grammatical clarity, we determine that Appellant's contention is persuasive.
Based on our review of Appellant's Figure 16 and the referenced description
in the Specification, we conclude that one of ordinary skill in the art would
understand the scope of claims 28 and 48. We do not sustain the
indefiniteness rejection of claims 28 and 48 under 35 U.S.C. § 112, second
paragraph.
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Application 12/736,483
Rejection 2: Claims 24-28, 31-33, 35--40, 42, 47--48, and 51-52
Anticipation by Wright
Appellant contends, with respect to claim 24, that the recited phrase
"only through which said spherical part passes" limits the size of the
recesses in the tensioning houses to "only the amount necessary for the
spherical part to pass into and exit from the receiving space." Appeal Br. 6.
Based on this interpretation, Appellant argues that the recess in Wright's
support 30 does not meet this limitation because it is not "open only to the
extent necessary of passing of the spherical part into ... the housing." Id.
at 8; see also Reply Br. 3 ("[T]he use of the term 'only' provides necessarily
a reference to the maximum extent or size of the recess recited in claim
24."). Appellant also contends that Wright's support 30 does not "surround"
the spherical part as recited in claim 24.
The Examiner responds that claim 24 does not require "a complete
surrounding or total enveloping of the spherical member" and Wright
"surrounds the spherical member (22) at least on the top, back and part of
the front sides of the member." Ans. 3. The Examiner also responds that
"[ n ]owhere in the claims is a maximum extent or size of the recesses
mentioned .... The claims merely require that the recesses allow the
spherical part to pass there through between the hooking and unhooking
state." Id. at 3--4.
We first construe claim 24 because the language of claim 24 does not
contain an unambiguous recitation that the maximum size of the recesses is
limited to "only the amount necessary for the spherical part to pass into and
exit from the receiving space." Appeal Br. 6. We give claim terms their
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Application 12/736,483
broadest reasonable interpretation consistent with the Specification as it
would be interpreted by one of ordinary skill in the art. See In re Suitco
Surface, Inc., 603 F.3d 1255, 1259---60 (Fed. Cir. 2010); In re Morris, 127 F.
3d 1048, 1054--55 (Fed. Cir. 1997). Although the claims are interpreted in
light of the Specification, limitations from the Specification are not read into
the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
In support of Appellant's construction of claim 24, Appellant refers us
to Figure 2 of the application and argues that "the drawings of this
application only shows [sic] the tension housing 3 open only at recesses 4 7
and 51." Appeal Br. 6. The Specification provides:
the end of the slit 4 7 that forms an entry region has an aperture 51 ....
This aperture 51 forms a kind of round window that extends as far as
into the proximity of the upper part 5. The window size of this
aperture 51 is chosen in such a way that, when the shank 19 of the
load bearing member 17 is inserted along the slit 4 7, the spherical part
21 can enter into the receiving compartment 15 through aperture 51.
Spec. 10-11.
The Specification merely describes that the size of aperture 51 is
chosen so that spherical part 21 can enter the housing through aperture 51.
Thus, the size of aperture 51 can be any size that allows spherical part 21 to
enter aperture 51. Appellant does not direct us to any part of the
Specification supporting a reasonable interpretation of claim 24 that the
maximum size of the recesses is equal to the minimum size that can be
chosen for the spherical part to enter the recesses. We conclude that one of
ordinary skill in the art would reasonably understand that the size of the
recited recesses in claim 24 can be any size that allows the spherical part to
enter the recesses. The Examiner's interpretation that claim 24 "merely
require[s] that the recesses allow the spherical part to pass there through
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Application 12/736,483
between the hooking and unhooking state" (Ans. 3, 4) is not inconsistent
with our construction.
The Examiner's finding that Wright's recess 28 allows spherical
part 28 to pass through for hooking and unhooking with support 30 is
supported by a preponderance of the evidence. See Wright, col. 3, 1. 46-col.
4. 1. 2, Fig. 3, 4. Appellant's contention that Wright does not anticipate
claim 24 because it fails to disclose recesses "open only to the extent
necessary of passing of the spherical part into an outer housing" (Appeal Br.
8) is not persuasive in light of our construction of claim 24. Appellant's
second contention that Wright does not disclose "a housing surrounding the
spherical part" is likewise unpersuasive. Id. The Specification discloses that
support housing 3 does not completely surround spherical part 21 but is open
in the front at aperture 53. See Fig. 2. Appellant does not refer us to any
disclosure in the Specification that requires the housing to completely
surround the spherical part and we will not read such a limitation into claim
24. The Examiner's finding that Wright's sphere is surrounded by the
housing 30 because it surrounds the sphere "at least on the top, back and part
of the front sides of the member" is supported by a preponderance of the
evidence. Ans. 3; see also Wright, Fig. 4. Consequently, we sustain the
rejection of claim 24 under 35 U.S.C. § 102(b). Appellant did not argue
separately for the patentability of claims 25-27 and 31 which depend on
claim 24. Appeal Br. 9. We, thus, sustain the rejection of claims 25-27 and
31.
Appellant next contends that Wright does not disclose "the recessed
surface areas" on the transfer surface recited in claim 28. Appeal Br. 9. The
Examiner does not provide a further explanation of this rejection in response
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to Appellant's contention. Ans. 6. Wright's spherical bearing 22 does not
have recesses on its surface. See e.g. Wright, Fig. 3. The Examiner's
finding to the contrary is not supported by Wright. We do not sustain the
rejection of claim 28 under 35 U.S.C. § 102(b).
Appellant next contends that Wright does not disclose the "threaded
journal" on the shank section recited in claim 32. Appeal Br. 10. The
Examiner finds that Wright's element 20 is the shank section in connection
with claim 31 but, in the rejection of claim 32, does not provide any
reference in Wright to support a finding that element 20 is threaded. Final
Act. 3. Rather, the Examiner relies on Wright's fastener 15, which is not
part of element 20, as the "threaded journal." Final Act. 4; see Wright,
col. 4, 11. 12-18. The Examiner does not provide a further explanation in
response to Appellant's contention. Ans. 6. Wright's element 20 is smooth
without threads. See e.g. Wright, Fig. 3. The Examiner's finding that
Wright discloses a shank section having a "threaded journal" is, thus, not
supported by Wright. We do not sustain the rejection of claim 32. The
rejection of claim 33, which is dependent on claim 32, is not sustained for
the same reason as claim 32.
Appellant next contends that Wright does not disclose the tensioning
housing having a "spherical cap" as recited in claims 35 and 47. Appeal
Br. 9, 10. Appellant argues that Wright discloses "the surface of support 30
formed by the inner side of flared end 24 is cylindrical, not spherical." Id.
at 9. The Examiner, referring to Wright Figure 3, responds "the upper
portion of the housing (24) appears to wrap around the spherical bearing
member." Ans. 5. The Examiner supports the finding by reference to the
text of Wilson which provides "[t]he internal surface of the superior aspect
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(of the support 30) has a concavity (32) ... that mates with the superior
hemisphere of bearing (22)." Id. (see Wilson, col. 3, 11. 55---60)
While we appreciate the Examiner's reference to Wright's Figure 3,
that drawing does not definitively illustrate that the upper portion of
housing 30 is in the shape of at least a section of a sphere. Figures 4 and 5
of Wilson support Appellant's contention that the upper portion is
cylindrical not spherical. Both a cylindrical shape and a spherical shape can
be described as having "concavity" or "being curved inward. "2 The
Examiner's finding that Wright discloses "a spherical cap" is not supported
by a preponderance of the evidence. Therefore, we do not sustain the
rejection of claim 35 and claims 36-40, 42, and 52-54 which depend on
claim 35. We also do not sustain the rejection of claim 47 and claims 48, 49
and 51, which depend on claim 4 7, for the same reasons.
Rejection 3: Claim 34-Unpatentability Wright
The Examiner rejects claim 34 as unpatentable over Wright as applied
to claim 33 and notes that the recited "diameter of said collar is about twice
said diameter of said threaded journal" is "a matter of obvious design
choice." Final Act. 5---6. As noted above in connection with claims 32 and
33, the Examiner's finding that Wright discloses a "shank section" having a
"threaded journal" is not supported by a preponderance of the evidence.
Consequently, we do not sustain the rejection of claim 34 under 35 U.S.C. §
103(a) for the same reasons stated in connection with claims 32 and 33.
2 http://www.merriam-webster.com/dictionary/concavity last accessed July
8, 2016.
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Rejection 4: Claims 29, 30, 41, 49 and 50 - Unpatentability
Wright and Trachet
The Examiner finds Wright discloses the limitations of these claims
but "does not teach that the surface area of the transfer surface are spaced
from each other by a recessed surface area and that the surface areas are
formed by elevations that are closed ring ribs that extend from [the]
anchoring element in a diverging pattern." Final Act. 6. The Examiner
finds that Trachet discloses "a ball joint having closed ring ribs (serrations
on 44)." Id. The Examiner concludes that it would have been obvious "to
place the closed ring ribs of Trachet on the ball (bearing member) of Wright,
as this would help increase the grip between the ball and the gripping
member and would further be using known elements for their known
functions." Id.
Appellant contends, with respect to claims 29 and 49, "the Trachet
serrations are not shown to be used on a spherical part that is received in a
spherical housing part, such serrations are not shown to involve an
analogous environment or a common problem." Appeal Br. 12. The
Examiner responds that Wright and Trachet "relate to ball and socket joints,
and as such are analogous art." Ans. 7.
The Federal Circuit explains that "[t]wo separate tests define the
scope of analogous prior art: (1) whether the art is from the same field of
endeavor, regardless of the problem addressed and, (2) if the reference is not
within the field of the inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
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involved." Jn re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011); see also Jn re
ICON Health and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007).
Trachet discloses a serrated ball 44 (spherical element) that is received in
"sockets 78." Trachet col. 4, 11. 7-8, Fig. 3, 6. Sockets 78 are cylindrical.
Id. Appellant does not offer any persuasive argument or technical reasoning
why the fact that Trachet's serrated ball is received in a cylindrical rather
than a spherical housing supports a conclusion that Trachet is outside
Appellant's field of endeavor or that Trachet would not be reasonably
pertinent to the particular problem faced by Appellant. Therefore,
Appellant's argument is not persuasive. Appellant, thus, fails to
persuasively apprise us of error in the Examiner's rationale, quoted above,
for the combination of Wright and Trachet, which we determine to be
reasonable and supported by the disclosure in the cited references. See KSR
Intern. Co. v Teleflex Inc., 550 US 398, 416 (2007) ("[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results."). We sustain the rejection of
claim 29 under 35 U.S.C. § 103(a). As noted above in connection with
claims 35 and 47, Wright does not disclose the "spherical cap." Since claim
49 is ultimately dependent on claim 47, we do not sustain the rejection of
claim 49 under 35 U.S.C. § 103(a) for the reasons stated in connection with
claim 47.
Claims 30 and 50 recite that ribs on the transfer surface extend "in a
diverging pattern from said anchoring element." Claims App. ii, vii.
Appellant contends the ribs in Trachet are concentric and do not extend in a
diverging pattern from the anchoring point. Appeal Br. 12. Appellant refers
us to Figures 17 and 18 of the application which illustrate examples of the
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recited diverging pattern of ribs. Id. The Examiner does not provide any
further explanation of this rejection in response to Appellant's contention.
Ans. 7. Appellant's argument that Trachet's concentric ribs are not arranged
in a "diverging pattern" is persuasive. We do not sustain the rejection of
claims 30 and 50 for this reason. In addition, claim 50 is dependent on claim
47 and we do not sustain the rejection of claim 50 for the additional reason
stated above for claim 4 7.
Claim 41, which is ultimately dependent on claim 3 5, recites the
"spherical cap parts have circular segments." As noted above in connection
with claim 35, the Examiner fails to establish by a preponderance of the
evidence that Wright discloses the "spherical cap." For the reasons stated
above in connection with claim 35, we do not sustain the rejection of claim
41.
Rejection 5: Claims 43, 44, and 53 - Unpatentability-
Wright and Clayton
These claims are all ultimately dependent on claim 35. Appellant
contends these claims are patentable for the same reasons as, inter alia,
claim 35. Appeal Br. 13. For the same reasons stated above in connection
with claim 35, we do not sustain the rejection of claims 43, 44, and 53.
Rejection 6: Claims 45, 46, and 54 - Unpatentability-
Wright and Bennet
These claims are all ultimately dependent on claim 35. Appellant
contends these claims are patentable for the same reasons as, inter alia,
claim 35. Appeal Br. 14. For the same reasons stated above in connection
with claim 35, we do not sustain the rejection of claims 45, 46, and 54.
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New Ground ofRejection: Claim 28
We enter a NEW GROUND OF REJECTION of claim 28 under 35
U.S.C. § 103(a) as unpatentable over Wright and Trachet for the following
reasons. We sustained the rejection of claim 29 as unpatentable over Wright
and Trachet. Claim 29 is dependent on claim 28. When a dependent claim
is determined to be obvious, the broader claim from which it depends
necessarily is also obvious. See Soverain Software LLC v. Victoria's Secret
Direct Brand Mgmt., 778 F.3d 1311, 1315 (Fed. Cir. 2015); Ormco Corp. v.
Align Tech., Inc., 498 F.3d 1307, 1319 (Fed. Cir. 2007).
Consequently, we hereby exercise our discretion under 37 C.F.R.
§ 41.50(b) and enter a new ground of rejection of claim 28 under 35 U.S.C.
§ 103(a) as unpatentable over Wright and Trachet.
DECISION
The Examiner's decision rejecting claims 24--27, 29, and 31 is
affirmed.
The Examiner's decision rejecting claims 28, 30, and 32-54 is
reversed.
We exercise our discretion under 37 C.F.R. § 41.50(b) and enter a
new ground of rejection of claim 28 as unpatentable under 35 U.S.C.
§ 103(a) over Wright and Trachet.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) which provides "[a] new ground of rejection pursuant to
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this paragraph shall not be considered final for judicial review." 37 C.F.R.
§ 41.50(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 this 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 rejection and also state all other grounds
upon which rehearing is sought.
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Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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)(l )(iv).
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
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