Hunger, Erich et al.

Patent Trials and Appeals Board

Sep 17, 2020

2019003660 (P.T.A.B. Sep. 17, 2020)

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.
13/642,562 01/02/2013 Erich Hunger 07013-P0001A 6262
131672 7590 09/17/2020
Whitmyer IP Group LLC
600 Summer Street
3rd Floor
Stamford, CT 06901
EXAMINER
MERCADO, ALEXANDER A
ART UNIT PAPER NUMBER
2856
MAIL DATE DELIVERY MODE
09/17/2020 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 ERICH HUNGER and SEBASTIAN HUNGER
____________________

Appeal 2019-003660
Application 13/642,562
Technology Center 2800
____________________

Before ROBERT E. NAPPI, THU A. DANG, and
JOHN P. PINKERTON, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–20 (Appeal Br. 1), which constitute all the
claims pending in this application.1 We have jurisdiction under 35 U.S.C.
§ 6(b). We held an Oral Hearing on June 17, 2020.
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. According to Appellant, the real party in interest is IML-
Instrumenta Mechanik Labor GmbH. Appeal Br. 2.
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A. INVENTION
According to Appellant, the claimed invention relates to “a method
and an instrument for examining the condition of wood,” and “other column-
shaped or cylindrical sections of bodies.” Spec. 1:3–5.

B. ILLUSTRATIVE CLAIM
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. A hand-held testing instrument for examining the
condition of column-shaped or cylindrical sections of an object,
comprising:
a drive device having a drill chuck, which holds a drill needle
that is driven by the drive device,
a guiding device for centrally-axially guiding the drill needle
into the object to be examined, wherein the guiding device comprises
a telescopic tube,
wherein said telescopic tube comprises two tube sections
including a shorter inner tube section and a longer outer tube section,
wherein the shorter inner tube section is arranged in the longer outer
tube section such that it is axially displaceable and has a
longitudinally arranged measuring scale on an outer circumference of
the inner tube section,
wherein said telescopic tube is mounted on the drive device via
the inner tube section in non-rotating manner, wherein the drive
device is a drilling machine,
wherein the drill needle extends in central-axial direction from
the drill chuck through the inner tube section and through the outer
tube section,
wherein the drill needle can be driven into the object to be
examined in a manner guided by the guiding device while the inner
tube section is being inserted into the outer tube section,
wherein the hand-held testing instrument comprises neither an
electronic nor a mechanical recorder to measure how far the needle
penetrated the object, wherein the longitudinally arranged measuring
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scale on the outer circumference of the inner tube section provides a
direct measure of how far the needle penetrated the object.

C. REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:

Name Reference Date
Foley US 2003/0131674 July 17, 2003
Kipp DE 4004242 August 14, 1991
Rinn ’494 DE 4122494 March 5, 1992
Rinn ’395 DE 10031395 April 26, 2001

Claims 1–19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rinn ’395, Rinn ’494, and Kipp.
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rinn ’395, Rinn ’494, Kipp, and Foley.
II. ISSUES
The dispositive issues before us are whether the Examiner has erred in
determining that the combination of Rinn ’395, Rinn ’494 and Kipp teaches
or suggests “a telescopic tube” of “a guiding device” that comprises “a
shorter inner tube section and a longer outer tube section,” wherein “the
shorter inner tube section is arranged in the longer out tuber section” such
that it “has a longitudinally arranged measuring scale on an outer
circumference of the inner tube section.” Claim 1.
III. ANALYSIS
a. Claims 1–19
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With respect to the Examiner’s rejection of claims 1–19, Appellant
contends that none of the cited references teach a longitudinally arranged
measuring scale on an outer circumference of the inner tube section. Appeal
Br. 5–7. According to Appellant, the Examiner relies on Kipp to teach this
feature, “alleging that the measuring scale 8 is on an outer circumference of
the inner tube section 27.” Id. at 5. However, Appellant contends that, in
Kipp, “it is clear from Fig. 3 that the measuring scale 8 is not on an outer
circumference of the inner tube section.” Id. at 6.
We have considered all of Appellant’s arguments and evidence
presented. We agree with Appellant that the preponderance of the evidence
on this record does not support the Examiner’sconclusion that claim 1 and
claims 2–19 depending therefrom would have been obvious over Kipp in
combination with Rinn ’395 and Rinn ’494.
The claimed invention provides a “hand-held testing instrument” for
“examination of a large number of trees and wood constructions as well as
wooded poles for the presence of decay.” Spec. 7:1–4. Figure 1 is
reproduced below:
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Figure 1 of the claimed invention shows a hand-held testing device
comprising drive means 1 having a drill chuck into which drill needle is
inserted, a guidance for guided penetration of drill needle 3 into object 6 to
be examined, and measuring scale 4 showing the depth at which the diseased
wood is detected, wherein the guidance comprises telescopic tube 2 having
inner tube section 2’ that is shorter than outer tube section 2” surrounding it.
Spec. 7:30–8:8. As shown in Figure 1, inner tube section 2’ is arranged in
out tube section 2” comprising measuring scale 4 thereon. Id. at 8:8–12.
On the record before us, we are persuaded that the Examiner erred in
finding that Kipp teaches or suggests “the shorter inner tube section is
arranged in the longer outer tube section” such that it “has a longitudinally
arranged measuring scale on an outer circumference of the inner tube
section,” as recited in claim 1. We agree with Appellant that, in Kipp,
“because there is an intermediary part between [measuring scale 8 and inner
tube 27,] the scale is not on the circumference of the inner tube.” Appeal Br.
6 (citing Kipp, Fig. 3).
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Kipp discloses a testing device using a metal wire which is rotated and
caused to penetrate the wood, with detection of the penetration depth. Kipp,
Abstract. Figure 3 of Kipp is reproduced below:

Figure 3 of Kipp shows telescope device 25, comprising inner tube 27 inside
outer tube 22, and caliper 8 with digital display 8a.
We are unpersuaded by the Examiner’s finding that claim 1’s
“longitudinally arranged measuring scale” encompasses Kipp’s caliper 8.
Final Act. 5–6. As Appellant points out, as shown in Kipp’s Figure 3,
caliper 8 “is significantly above the circumference of the inner tube 27 and
even above the circumference of the outer tube 22.” Appeal Br. 6. That is,
although the Examiner relies on Kipp’s caliper 8 as a “longitudinally
arrange[d] measuring scale on the outer circumference of the inner tube
section” (Final Act. 5–6), as shown in Figure 3, Kipp’s caliper 8 is arranged
above outer tube 22 and inner tube 27. Compare claim 1 with Kipp, Fig. 3.
In the Answer, the Examiner adds that the “broadest reasonable
interpretation consistent with the specification” of the term “on” does not
preclude having an intermediary between the two elements. Ans. 4.
According to the Examiner, “Kipp teaches an inner tube section (27) and an
outer tube section (22) (Figure 3),” and “a longitudinally arranged measuring
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scale [8] which is attached to (30) which is supported by the outer
circumference of the inner tube section (27) (Figure 3).” Id. 4–5.
However, the broadest reasonable interpretation of a claim term does
not mean an interpretation so broad that it would encompass an unreasonable
construction under claim construction principles. See Microsoft Corp. v.
Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). As shown in Kipp’s
Figure 3, and as agreed by the Examiner, caliper 8 is attached to element 30
of the telescope device, which is attached to the inner tube section 27. Ans.
4–5. However, as shown in Figure 3 and given the broadest reasonable
interpretation of “on,” which would not encompass an unreasonable
construction under claim construction principles, caliper is not “on” the
outer circumference of section 27, but rather above the various sections of
the telescope device, including the inner tube section 27. Compare claim 1
with Kipp, Fig. 3.
Further, the broadest reasonable interpretation of “on” does not allow
for a legally incorrect interpretation that is divorced from the specification
and record evidence. See PPC Broadband, Inc. v. Corning Optical
Commc’ns RF, LLC, 815 F.3d 747, 751–53 (Fed. Cir. 2016). Interpretation
of “a longitudinally arranged measuring scale on an outer circumference of
the inner tube section” as encompassing Kipp’s caliper 8 attached to element
30 of the telescope device, which is then attached to the inner tube section
27, is divorced from the specification and record evidence, wherein the
specification’s Figure 1, for example, clearly shows measuring scale 4
arranged “on” inner tube section 2’. Compare Kipp, Figure 3 (caliper 8)
with Spec., Figure 1 (measuring scale 4).
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Consequently, we are constrained by the record before us to find that
the Examiner erred in concluding Appellant’s claim 1 and claims 2–19
depending therefrom would have been obvious over Kipp in combination
with Rinn ’395 and Rinn ’494.
b. Claim 20
Independent claim 20 similarly recites “a measuring scale on an outer
circumference of the inner tube section.” See claim 20. The Examiner does
not suggest, and has not established on this record, that the additionally cited
Foley reference overcomes the aforementioned deficiencies of Kipp. See
Final Act. 8–11, Ans. 9–12. Consequently, we are constrained by the record
before us to find that the Examiner also erred in concluding that the
combination of Rinn ’395, Rinn ’494, Kipp, and Foley renders obvious
Appellant’s claim 20.

IV. CONCLUSION AND DECISION
The Examiner’s rejections of claims 1–20 under 35 U.S.C. § 103(a)
are reversed.

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–19 103(a) Rinn ’395, Rinn
’494, Kipp
1–19
20 103(a) Rinn ’395, Rinn
’494, Kipp, Foley
20

REVERSED