2021000974 (P.T.A.B. Aug. 12, 2021)

Schwing GmbH

Patent Trials and Appeals BoardAug 12, 2021

2021000974 (P.T.A.B. Aug. 12, 2021)

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. 16/091,908 10/15/2018 Johannes Henikl 511232.000011 5170 25764 7590 08/12/2021 FAEGRE DRINKER BIDDLE & REATH LLP PATENT DOCKETING - INTELLECTUAL PROPERTY 2200 WELLS FARGO CENTER 90 SOUTH SEVENTH STREET MINNEAPOLIS, MN 55402-3901 EXAMINER JOHNSON, VICKY A ART UNIT PAPER NUMBER 3656 NOTIFICATION DATE DELIVERY MODE 08/12/2021 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): PatentDocketing@FaegreDrinker.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOHANNES HENIKL and REINER VIERKOTTEN ____________ Appeal 2021-000974 Application 16/091,908 Technology Center 3600 ____________ Before NATHAN A. ENGELS, JAMES W. DEJMEK, and AMEE A. SHAH, Administrative Patent Judges. SHAH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s final decision to reject claims 9–14, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42 (2019). The Appellant identifies the real party in interest as Schwing GmbH. Appeal Br. 2. Appeal 2021-000974 Application 16/091,908 2 CLAIMED SUBJECT MATTER The Appellant’s invention “relates to a device for controlling large manipulators, in particular distributor booms of truck-mounted concrete pumps . . . by way of which an active oscillation damping of the large manipulator is capable of being switched on and off, and which has at least one control lever.” Spec. 1. Independent claim 9 is the only independent claim on appeal, is representative of the subject matter on appeal, and is reproduced below: 9. A device comprising: a remote control apparatus including a control lever that is pivotably mounted to the remote control apparatus, the control lever being pivotable within an inner zero-position range, an outer travel range, and an oscillation damping range located between the inner zero-position range and the outer travel range, the remote control apparatus is configured to: cause movement of a large manipulator, which has an active oscillation damping mode, switch on the active oscillation damping mode and cause movement of the large manipulator when the control lever is within the outer travel range, switch off the active oscillation damping mode when the control lever is located in the zero-position range, and switch on the active oscillation damping mode without causing movement of the large manipulator when the control lever is located within the oscillation damping range. Appeal Br. 9, Claims App. THE REJECTION Claims 9–14 stand rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. Appeal 2021-000974 Application 16/091,908 3 OPINION The Examiner rejects the claims because the invention is “not described in the [S]pecification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor . . . at the time the application was filed, had possession of the claimed invention,” because “[t]he [S]pecification fails to describe how to make the device and how it works with respect to the zero position range, the travel range and the damping range.” Final Act. 2. Specifically, the Examiner finds there is not adequate description for “[w]hat structural elements are connected to the lever,” “how the lever works and is connected together to distinguish between the ranges and turn on and off the one mode without affecting the other mode,” “[h]ow . . . the lever distinguish[es] between the modes” whether by magnets, sensors, or switches, “[h]ow . . . the device distinguish[es] between the two pivot axes,” and “[w]hat structural element provides the restoring force and how is it connected to the device.” Id. at 2–3. The Appellant contends the Examiner’s rejection is in error because the Examiner’s assertions “are focused on details that are not recited in the claims.” Appeal Br. 3; see also id. at 4. The Appellant asserts “the claim features are adequately supported by the [S]pecification” and that “the level of one of ordinary skill in the art is one with a bachelor’s degree in mechanical engineering and at least 1 year of industry experience.” Id. at 4. Specifically, the Appellant directs attention to pages 1, 4, 7, and 8 and Figures 1, 2, and 5 of the Specification (id.) to show that “each of the claimed features is directly supported by the [S]pecification[, and] . . . this Appeal 2021-000974 Application 16/091,908 4 direct support is sufficient to show one skilled in the art that the inventors possessed the claimed features” (id. at 7). The Appellant further argues, the Examiner’s focus on the [S]pecification allegedly failing “to describe how to make the device and how it works with respect to the zero position range, the travel range and the damping range” is misplaced. . . . [T]he written description requirement is not concerned with explaining how to make a device and how it works. Instead, the written description requirement is satisfied by showing “possession” of the claimed invention by “describing the invention, with all its claimed limitations.” Id. at 4. We agree with the Appellant. The Examiner withdrew the previously made rejection of claims 9–14 as failing to comply with the enablement requirement, but the Examiner relies on the same reasoning for the current rejection as failing to comply with the written description requirement. Non-Final Act. 3; see also Final Act. 2–3 (mailed Sept. 5, 2019). However, the two requirements are “separate and distinct.” Manual of Patenting Examining Procedure § 2163(I) (citing cases). In the Answer, the Examiner clarifies and finds that in reciting that the apparatus is configured to cause movement and switch on and off the active oscillation damping mode, “[c]laim 9 states a desired result, but the Appellant[’]s [S]pecification fails to sufficiently identify how the function is performed.” Ans. 3–4. In other words, the Examiner appears to find that the Specification does not adequately describe what causes the large movement and switching. The Appellant disagrees and contends that the Specification provides adequate support to show one of ordinary skill in the art that the Appellant had possession of the subject matter at the time of the invention. See Reply Br. 1–2, 4; see also Appeal Br. 5–6. We agree. Appeal 2021-000974 Application 16/091,908 5 The Specification discusses a remote control apparatus having a structure of a control lever mounted so as to be pivotable and/or rotatable about an initial position and ranges, guided out of the initial position to other ranges, and restored back to the initial position. See Spec. 1, 2, 4. In particular, the Specification describes that “the active oscillation damping is switched on when the control lever is located in the travel range” (id. at 1, 2 (describing prior art)) and that the rotatable mounting of the lever “leads to the active oscillation damping being switched on without causing any movement of the large manipulator” (id. at 4). Thus, the Specification establishes that a person of ordinary skill in the art would find sufficient support for switching as claimed. Further, the Specification discusses prior art having a “so-called Cartesian control of the boom tip” that provides for “[t]he movement of the boom . . . [to] be operated by way of a single control lever as long as the latter has at least three degrees of freedom or adjustment directions, respectively.” Id. at 5. Page 7 of the Specification provides that “[t]wo control levers 2 by way of which a distributor boom of the truck-mounted concrete pump can be moved are attached to the remote control apparatus 1,” and “[w]hen the machine operator moves the control lever 2 further to the travel range 7, the distributor boom is repositioned depending on the respective selected operating mode.” Thus, the Specification provides sufficient description to reasonably convey to one skilled in the relevant art with knowledge of remote control interfaces that the inventor had possession of manipulating the remote control apparatus to cause movement. Appeal 2021-000974 Application 16/091,908 6 Based on the record before us, we are persuaded of Examiner error. Thus, we do not sustain the Examiner’s rejection under 35 U.S.C. § 112(a) of claims 9–14 as failing to comply with the written description requirement. CONCLUSION The Examiner’s decision to reject claims 9–14 is not sustained. In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 9–14 112 Written Description 9–14 REVERSED