Ex Parte Seiler et al

Patent Trial and Appeal Board

Aug 2, 2016

13140472 (P.T.A.B. Aug. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/140,472
27569 7590
PAUL AND PAUL
FILING DATE
06/17/2011
08/04/2016
1717 Arch Street Three Logan Square
SUITE 3740
PHILADELPHIA, PA 19103
FIRST NAMED INVENTOR
Andreas Seiler
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.
2011-052 8022
EXAMINER
RASHID, FAZLE A
ART UNIT PAPER NUMBER
1774
NOTIFICATION DATE DELIVERY MODE
08/04/2016 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):
INFO@PAULANDPAUL.COM
claire@paulandpaul.com
fpanna@paulandpaul.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREAS SEILER, and WOLFGANG WORNER
Appeal2014-005240
Application 13/140,472
Technology Center 1700
Before TERRY J. OWENS, LINDA M. GAUDETTE, and
WESLEY B. DERRICK, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-005240
Application 13/140,472
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision2 finally rejecting claims 1-3 and 5-21. App. Br. 5. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Claim 1, the sole independent claim on appeal, is representative of the
claimed invention, and reads as follows (see Amendment after Final filed
May 2, 2013; App. Br. 7, 19):
1. A mixer with a mixing container and a tool shaft (8)
arranged at least partly in the mixing container, the tool shaft
having a working end to which a working tool (6) is fastened or
can be fastened and a drive end which is mounted by means of
two mutually set-apart tool bearings, a drive motor (7) being
provided with a motor shaft (21) for driving the tool shaft (8),
wherein the motor shaft (21) is mounted by at least one of the
two mutually set-apart tool bearings, and wherein one of the
bearings, is a combined radial axial bearing ( radiax bearing)
([ 18]).
The claims stand rejected as follows (see Examiner's Answer mailed
January 13, 2014 ("Ans."), 2-11):
1. Claims 1, 2, 6-8, 11, 12, 14, 18, and 19 are rejected under pre-
AIA 35 U.S.C. § 102(b) as anticipated by Nachumsohn (U.S. Patent No.
1,935,857, iss. Nov. 21, 1933).
2. Claims 5 and 15-17 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Nachumsohn.
1 Appellants identify the real party in interest as Maschinenfabrik Gustav
Eirich GmbH & Co. KG. Appeal Brief filed October 3, 2013 ("App. Br."),
3.
2 Final Office Action mailed January 2, 2013; Advisory Action mailed May
10, 2013 (entering the Amendment after Final filed May 2, 2013, and
withdrawing the rejection of claims 10 and 15-18 under 35 U.S.C. § 112,
second paragraph).
2
Appeal2014-005240
Application 13/140,472
3. Claim 3 is rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Nachumsohn in view of Delcourt et al. (U.S. Patent No.
5,813,758, iss. Sept. 29, 1998 ("Delcourt")).
4. Claims 9 and 10 are rejected under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over Nachumsohn in view of Baron et al. (U.S. Patent No.
7,913,878 Bl, iss. Mar. 29, 2011 ("Baron")).
5. Claim 13 is rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Nachumsohn in view of Delcourt, further in view of
Huang et al (U.S. Appln. No. 2004/0120215 Al, pub. June 24, 2004
("Huang")).
6. Claims 20 and 21 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Nachumsohn in view of Wolf (U.S. Appln.
No. 2009/0208160 Al, pub. Aug. 20, 2009).
Appellants argue the Examiner's rejections are based on an erroneous
finding that "item 14 in Figure 2 ofNachumsohn is a combined radial axial
bearing" as recited in claim 1. App. Br. 9. The Examiner does not dispute
that Nachumsohn identifies reference numeral 14 as a washer, but maintains
Nachumsohn's washer 14 "meets the definition of a radial axial bearing per
appellant's specification (suitable for accommodating radial and axial
forces)," because washer 14 "support[s] the axial force resulting from the
weight of the downwardly projecting shaft 8 as well as ... the radial force
resulting from shaft rotation." Ans. 11 (citing Spec. 3 3: 12-14
(corresponding to paragraph 16 of the published application); Nachumsohn
Figure 2, 1 :93-97) (internal citations omitted).
3 Specification filed June 17, 2011.
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Appeal2014-005240
Application 13/140,472
Appellants have argued convincingly that the Examiner's anticipation
rejection lacks persuasive evidentiary support. See App. Br. 9-11. We
agree with Appellants that "[t]here is nothing in the portion ofNachumsohn
relied upon by the Examiner, nor anywhere else in Nachumsohn, that
suggests the conical washer 14 ofNachumsohn" is capable of functioning as
"a combined radial axial bearing" as recited in claim 1, e.g., Nachumsohn
does not describe washer 14 as providing support for the axial and radial
forces created by shaft 8. Reply Br. 6. To the contrary, Nachumsohn
indicates washer 14 is supported by shaft 8 (see Nachumsohn 1 :94--97
("conical washer 14 may be disposed on the shaft ... ; the washer being
fastened for rotation with the shaft")) and describes the function of washer
14 as "prevent[ing] liquid from entering the motor housing" when the unit is
inverted (id. at 1:98-100). See App. Br. 10 (explaining that "[C]onical
washer [ 14] ... is fixed to the shaft 8 and ... does not contact any other part
of the device .... Accordingly, [washer] 14 cannot possibly be considered
a bearing of any kind for the shaft 8.").
Because the Examiner's rejection of claims 1, 2, 6-8, 11, 12, 14, 18,
and 19 under 35 U.S.C. § 102(b) and rejections of claims 3, 5, 9, 10, 13, 15-
17, 20, and 21under35 U.S.C. § 103(a) are based on the same, unsupported
finding of fact, we reverse the Examiner's decision to reject claims 1-3 and
5-21.
REVERSED
4