Ex Parte Zurbruegg et al

Patent Trial and Appeal Board

Feb 13, 2018

14352207 (P.T.A.B. Feb. 13, 2018)

United States Patent and Trademark Office
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.
14/352,207 07/15/2014 Andreas Zurbruegg 2178-1025 6168
10800 7590 02/13/2018
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
EXAMINER
CARLSON, MARC
ART UNIT PAPER NUMBER
3723
MAIL DATE DELIVERY MODE
02/13/2018 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 ANDREAS ZURBRUEG and URS ROTH
Appeal 2017-006564
Application 14/3 52,2071
Technology Center 3700
Before MICHAEL C. ASTORINO, CYNTHIA L. MURPHY, and
TARA L. HUTCHINGS, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellants appeal from the
Examiner’s decision rejecting claims 1—5 and 7—11. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to the Appellants, “Robert Bosch GmbH is the real party in
interest for this application.” Appeal Br. 2.
Appeal 2017-006564
Application 14/352,207
STATEMENT OF THE CASE
Claimed Subject Matter
Claims 1 and 10 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A power tool clamping device for clamping a sheet-type
working tool to a tool receiver that is mounted in an eccentrically
movable manner, comprising:
at least one clamping element movably mounted to the tool
receiver;
at least one slotted link movement unit configured to move
the clamping element so as to generate a tension in the sheet-type
working tool in at least one operating state; and
a further clamping element mounted to the tool receiver so
as to be movable relative to the at least one clamping element.
Rejections
The Examiner maintains the following rejections, which are before us
for review:
I. Claims 3,8, and 9 stand rejected under 35 U.S.C. § 112(b) or
35 U.S.C. § 112 (pre-AIA), second paragraph, as indefinite (Ans. 2—3); and
II. Claims 1—5 and 7—11 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Stoll et al. (US 4,351,133, issued Sept. 28, 1982) (“Stoll”)
(Ans. 3—8).2
2 The Examiner acknowledges that the Final Office Action (mailed
December 9, 2015) rejected claims 1—5 and 7—11 under 35 U.S.C. § 103(a).
Ans. 2; see Final Act. 3—8. The Examiner explains, however, that the
rejection of claims 1—5 and 7—11 was not a rejection under 35 U.S.C.
§ 103(a), but rather a rejection under 35 U.S.C. § 102(b). Ans. 2. The
Appellants acknowledge the Examiner’s explanation in the Reply Brief and
presents arguments for the rejection under 35 U.S.C. § 102(b) as presented
in the Answer. See Reply Br. 2—5.
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Application 14/352,207
ANALYSIS
Rejection I
The Appellants do not contest the Examiner’s rejection of claims 3,8,
and 9 as indefinite. Thus, we summarily sustain the Examiner’s rejection of
claims 3, 8, and 9, under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA),
second paragraph, as indefinite.
Rejection II
The Examiner finds that Stoll’s clamping slide 4 corresponds to “at
least one clamping element movably mounted to the tool receiver,” as
recited in claim 1. Ans. 4. Also, the Examiner finds that the end surfaces 5
and bores 36 of Stoll’s table plate 1 or, alternatively, Stoll’s angle pieces 10—
13, which are positioned on table plate 1, correspond to “a further clamping
element mounted to the tool receiver so as to be movable relative to the at
least one clamping element,” as recited in claim 1. Id.', see Stoll, Figs. 1,3,
7, 8. The Examiner makes similar findings for independent claim 10, which
has similar recitations as claim 1. Ans. 8.
The above findings are based on a construction of claims 1 and 10 in
which the Examiner determines that there is no stationary point of reference
in the claims to assess relative movement. See Ans. 9—10. Namely, the
Examiner finds that when Stoll’s clamping slide 4 opens and closes, and
table plate 1 remains stationary, clamping slide 4 moves relative to table
plate 1. And, the Examiner finds that when Stoll’s clamping slide 4 opens
and closes, but clamping slide 4 remains stationary, table plate 1 moves
relative to clamping slide 4. Id. at 9. Here, the Examiner determines that the
same action, i.e., Stoll’s clamping slide 4 opening and closing, under
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Application 14/352,207
different conditions, i.e., either table plate 1 or clamping slide 4 remaining
stationary, results in different movements, i.e., clamping slide 4 or table
plate 1 moving, respectively. See id. at 9-11.
The Appellants argue that claims 1 and 10 require “that both the ‘at
least one clamping element’ and the ‘further clamping element’ are each
movable,” whereas “Stoll only has one movable element - either the
clamping slide (4) as asserted by Applicant, or the rest of the Stoll structure,
as asserted by the Examiner.” Reply Br. 3; see also id. at 4. We determine
that the Appellants’ argument is persuasive of error. Here, the Examiner’s
application of Stoll implies a construction of claims 1 and 10 that would not
be shared by one of ordinary skill in the art when reading the claims in light
of the Specification. As such, we determine that the Examiner’s application
of Stoll’s disclosure to subject matter of independent claims 1 and 10 is in
error.
Thus, we do not sustain the Examiner’s rejection of independent
claims 1 and 10, or their dependent claims, under 35 U.S.C. § 102(b) as
anticipated by Stoll.
DECISION
We summarily AFFIRM the Examiner’s decision rejecting claims 3,
8, and 9 under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second
paragraph, as indefinite.
We REVERSE the Examiner’s decision rejecting claims 1—5 and
7—11 under 35 U.S.C. § 102(b) as anticipated by Stoll.
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Application 14/352,207
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
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