Ex Parte TOENNESMANN et al

Patent Trial and Appeal Board

Jul 23, 2018

14612303 (P.T.A.B. Jul. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/612,303 02/03/2015 ANDRESTOENNESMANN
96897 7590 07/24/2018
PA TENT LAW OFFICES OF DR. NORMAN B. THOT
POSTFACH 10 17 56
RATINGEN, 40837
GERMANY
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.
TS/PIE 1204
US-PAT-CON
EXAMINER
8296
HICKS, ANGELISA
ART UNIT PAPER NUMBER
3753
MAIL DATE DELIVERY MODE
07/24/2018 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
Ex parte ANDRES TOENNESMANN, MARTIN NOW AK, and
ANDREAS KOESTER
Appeal2017-009856
Application 14/612,303 1
Technology Center 3700
Before LINDA E. HORNER, ANNETTE R. REIMERS, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1-11 under pre-AIA 35 U.S.C.
§ 102(b) as anticipated by Briggs (US 1,505,856, issued August 19, 1924).
Final Office Action (September 7, 2016) (hereinafter "Final Act."). We
have jurisdiction under 35 U.S.C. § 6(b ).
1 Pierburg GmbH ("Appellant") is the applicant as provided under 37 C.F.R.
§ 1.46 and is identified as the real party in interest. Appeal Brief (February
17, 2017) (hereinafter "Appeal Br."), at 2.
Appeal2017-009856
Application 14/612,303
The claimed subject matter relates to "a positioning device for
converting a rotary motion into a linear motion." Specification (filed
February 3, 2015 and amended July 18, 2016) (hereinafter "Spec.") ,r 2.
"Such positioning devices are used in particular to drive exhaust gas
recirculation valves, but they may also be used in waste gate valves,
butterfly valves or as VNT actuators." Spec. ,r 3. For the reasons explained
below, the Examiner's finding that Briggs discloses the claimed subject
matter is not supported by a preponderance of the evidence. Accordingly,
we REVERSE.
Nonetheless, we find that the claim language is unclear and fails to
particularly point out and distinctly claim the subject matter regarded as the
invention. Accordingly, pursuant to our authority under 37 C.F.R.
§ 41.50(b ), we enter a NEW GROUND OF REJECTION of claims 1-11
under pre-AIA 35 U.S.C. § 112, second paragraph, as indefinite.
CLAIMED SUBJECT MATTER
Claims 1 and 6 are the independent claims on appeal and are
reproduced below.
1. A valve unit comprising:
a positioning device for converting a rotary motion into a
linear motion;
a valve rod;
a drive unit configured to generate a torque;
a drive shaft on which an eccentric is arranged;
a coupling element comprising a slot, the valve rod being
connected with the coupling element;
an output shaft arranged at the eccentric, the output shaft
being configured to move in the slot of the coupling element,
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Application 14/612,303
wherein,
the valve rod is supported so as to be linearly movable with
the coupling element between an initial position in which the
valve is in a closed position and an end position,
the slot comprises a guide path configured to cooperate
with the eccentric, the guide path of the slot comprising an angle
with a plane perpendicular to a direction of movement of the
valve rod,
the initial position of the eccentric is a position which is
located, as seen in a direction of rotation, before a dead center
existing for an axial movement of the output shaft, the dead
center being passed during a rotational movement of the drive
shaft, and
the slot is immovably attached to the valve rod.
6. A positioning device for converting a rotary motion
into a linear motion, the positioning device comprising:
a valve rod;
a drive unit configured to generate a torque;
a drive shaft on which an eccentric is arranged;
a coupling element comprising a slot;
an output shaft arranged at the eccentric, the output shaft
being configured to move in the slot of the coupling element; and
a valve rod connected with the coupling element, the valve
rod being supported so as to be linearly movable with the
coupling element between a first end position and a second end
position, the first end position and the second end position each
being defined by a stop,
wherein, the slot comprises a guide path configured to
cooperate with the eccentric, the guide path of the slot
comprising an angle with a plane perpendicular to a direction of
movement of the valve rod,
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Application 14/612,303
the positioning device is a valve, and
the slot is immovably attached to the valve rod.
Appeal Br. 17-18 (Claims Appendix).
ANALYSIS
Claims 1 and 6 recite "a drive shaft on which an eccentric is arranged"
and "an output shaft arranged at the eccentric, the output shaft being
configured to move in the slot of the coupling element." Appeal Br. 17-18
(Claims Appendix). Appellant's Specification describes, with reference to
Figure 1, that "[o]n the end of the drive shaft 2 opposite the drive unit 1, an
eccentric 4 is provided" and "[ a ]t the end of the eccentric 4 remote from the
drive shaft 2, an output shaft 6 is provided." Spec. ,r 24. "A ball bearing 8 is
arranged at the end of the output shaft 6 opposite the eccentric 4" that moves
in a slot of coupling element 14. Spec. ,r 25; see also Spec. ,r 28 (describing
Figures 2a, 2b ). Figure 1 depicts drive shaft 2 disposed on one end of
eccentric 4, output shaft 6 provided on the other end of eccentric 4, and
bearing 8 at the end of output shaft 6 that moves within a slot of coupling
element 14. See also Figs. 2a, 2b.
The Examiner found that Briggs discloses "a drive shaft ([crank] 28)
on which an eccentric ([block] 30) is arranged" and "an output shaft ([ crank
shaft] 27) arranged at the eccentric ([block] 30), the output shaft ([pin] 29)
being configured to move in the slot ([cam slot] 23) of the coupling element
([block] 22)." Final Act 2-3. Appellant contends that that crank shaft 27 (as
the output shaft) is not arranged at the block 30 and does not move in the
cam slot 23. Appeal Br. 12. The Examiner responds that Briggs's crank
shaft 27 is arranged at the eccentric 30 by virtue of being "in the vicinity of'
the eccentric 30. Ans. 6 (Examiner stating that "the limitation 'at' is vague"
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Appeal2017-009856
Application 14/612,303
and "could range from an element being directly connected, or in the vicinity
of the object"). The Examiner further explains that "the pin [29], which is in
the slot" is described in Briggs as pivotally mounted "which means there is
an element within the pin that connects in such a manner as to allow the
rotation." Ans. 7.
The Examiner's reliance on crank shaft 27 to correspond to the
claimed output shaft is problematic because the Examiner never finds that
crank shaft 27 moves in cam slot 23 of block 22. Rather, the Examiner finds
that pin 29 moves in cam slot 23. Pin 29, however, is disposed on the
opposite end of crank 28 from crank shaft 27. As such, we agree with
Appellant that the Examiner erred in finding that Briggs's crank shaft 2 7
corresponds to the claimed output shaft arranged at the eccentric and
configured to move in the slot of the coupling element, as recited in claims 1
and 6.
For these reasons, the Examiner's finding that the subject matter of
independent claims 1 and 6 is anticipated by Briggs is not supported by a
preponderance of the evidence. Accordingly, we do not sustain the rejection
of independent claims 1 and 6, and their dependent claims 2-5 and 7-11
under 35 U.S.C. § 102(b).
NEW GROUND OF REJECTION
We enter a NEW GROUND OF REJECTION of claims 1-11 under
35 U.S.C. § 112, second paragraph, as indefinite. "Applying the broadest
reasonable interpretation of a claim ... the Office establishes a prima facie
case of indefiniteness with a rejection explaining how the metes and bounds
of a pending claim are not clear because the claim contains words or phrases
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Application 14/612,303
whose meaning is unclear." Ex parte McAward, 2017 WL 3669566, Appeal
2015-006416 (PTAB August 25, 2017) (precedential), at *2.
Claims 1-5
Independent claim 1 recites a valve unit comprising "a positioning
device for converting a rotary motion into a linear motion" in combination
with the additional elements of a valve rod, a drive unit, a drive shaft, a
coupling element, and an output shaft. Appeal Br. 17 (Claims Appendix).
Appellant's Specification does not describe a positioning device in
combination with these additional elements. Rather, the Specification
describes the positioning device as comprising these additional elements.
See Spec. ,r 2 ("a positioning device ... comprising a drive unit ... , a drive
shaft on which an eccentric is arranged, an output shaft ... , and an adjusting
element"); Spec. ,r,r 24-25 ( describing a prior art "positioning device" as
comprising these elements). Thus, the scope of claim 1 is unclear when read
in light of Appellant's Specification. In particular, it is unclear from the
claim language and the Specification what structure is encompassed by the
claimed positioning device separate from the additional structures recited in
claim 1.
Claim 1 further recites that "the valve rod is supported so as to be
linearly movable with the coupling element between an initial position in
which the valve is in a closed position and an end position." Appeal Br. 17
(Claims Appendix) (emphasis added). Claim 1 recites in the preamble "a
valve unit," however, it does not recite "a valve" in either the preamble or as
a positively recited element in the body of the claim. Thus, the reference to
"the valve" in this portion of the claim lacks proper antecedent basis.
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Application 14/612,303
For these reasons, claim 1 fails to particularly point out and distinctly
claim the subject matter regarded as the invention. Accordingly, claim 1,
and its dependent claims 2-5, are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
Claims 6-11
Independent claim 6 recites "[a] positioning device for converting a
rotary motion into a linear motion, the positioning device comprising" a
valve rod, a drive unit, a drive shaft, a coupling element, and an output shaft.
Appeal Br. 18 (Claims Appendix). Claim 6 further recites that "the
positioning device is a valve." Id. Appellant's Specification does not
describe the positioning device being a valve. Rather, the Specification
describes the positioning device as the components used to drive the valve.
See Spec. ,r 3 ("Such positioning devices are used in particular to drive
exhaust gas recirculation valves"); Spec. ,r 25 ( describing the components of
a positioning device including a valve rod used to open and close an
unillustrated globe valve). Thus, the scope of claim 6 is unclear when read
in light of Appellant's Specification. In particular, it is unclear from the
claim language and the Specification whether the valve is a component of
the claimed positioning device in addition to the other recited elements in
the body of claim 6.
For these reasons, claim 6 fails to particularly point out and distinctly
claim the subject matter regarded as the invention. Accordingly, claim 6,
and its dependent claims 7-11, are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
DECISION
The decision of the Examiner rejecting claims 1-11 is REVERSED.
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Application 14/612,303
We enter a NEW GROUND OF REJECTION of claims 1-11 under
35 U.S.C. § 112, second paragraph, as indefinite.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 4I.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
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.
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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).
REVERSED; 37 C.F.R. § 4I.50(b)
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