SEW-EURODRIVE GMBH & CO. KG

Patent Trials and Appeals Board

Jul 21, 2020

15035396 - (D) (P.T.A.B. Jul. 21, 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.
15/035,396 05/09/2016 Zili WU 116218.0246337 (144) 3107
26646 7590 07/21/2020
Hunton Andrews Kurth LLP/HAK NY
2200 Pennsylvania Avenue NW
Washington, DC 20037
EXAMINER
ROGERS, ADAM D
ART UNIT PAPER NUMBER
3656
NOTIFICATION DATE DELIVERY MODE
07/21/2020 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):
uuspto@hunton.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ZILI WU

Appeal 2019-006674
Application 15/035,396
Technology Center 3600
____________

Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
WILLIAM A. CAPP, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 16, 18–21, 23–25, and 30–42, which
constitute all the claims pending in this application. See Appeal Br. 1. We
have jurisdiction under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as “SEW-
EURODRIVE GmbH & Co. KG of Bruchsal, Federal Republic of
Germany.” Appeal Br. 1.
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2
We AFFIRM IN PART the Examiner’s rejections of these claims and
we also issue a new ground of rejection.
CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to a gear unit having a housing.”
Spec. 1:2. Apparatus claims 16 and 30 are independent. They are both
illustrative of the claims on appeal and are both reproduced below.
16. A gear unit, comprising:
a housing including a housing top part and a housing
bottom part on which the housing top part is mounted, the
housing top part being disposed on a first side of a plane and
the housing bottom part being disposed on a second side of the
plane, the housing top part having at least a first groove formed
on an inner side and extending in a longitudinal direction, the
first groove formed (a) in one piece and/or integrally on the
housing top part, the housing top part having at least one further
groove formed on the inner side and extending in a transverse
direction, the further groove formed (a) in one piece and/or
integrally on the housing top part, the transverse direction being
aligned perpendicular to the longitudinal direction;
wherein the transverse direction is aligned parallel to an
axis of an output shaft of the gear unit and/or the longitudinal
direction and the transverse direction are aligned parallel to the
plane.

30. A gear unit, comprising:
a housing including a housing top part and a housing
bottom part on which the housing top part is mounted, the
housing top part being disposed on a first side of a plane and
the housing bottom part being disposed on a second side of the
plane, the housing top part having an oil pocket closed all
around and/or a first groove adapted to collect sprayed-around
oil being disposed all around.

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EVIDENCE
Name Reference Date
Alquist US 1,220,810 Mar. 27, 1917
Schmitter (“Schmitter
’671”)
US 2,676,671 Apr. 27, 1954
Schmitter (“Schmitter
’661”)
US 3,029,661 Apr. 17, 1962
Lafer et al. (“Lafer”) US 8,650,980 B2 Feb. 18, 2014
REJECTIONS2
Claims 16, 18–21, 23, 25, 30, 32–35, 37, and 39 are rejected under 35
U.S.C. § 102(a)(1) as anticipated by Alquist.
Claims 30–33 and 39 are rejected under 35 U.S.C. § 102(a)(1) as
anticipated by Schmitter ’661.
Claims 30–33 and 39 are rejected under 35 U.S.C. § 102(a)(1) as
anticipated by Schmitter ’671.
Claims 24 and 38 are rejected under 35 U.S.C. § 103 as unpatentable
over Alquist.
Claims 34–38 are rejected under 35 U.S.C. § 103 as unpatentable over
Schmitter ’661 and Alquist.
Claims 40–42 are rejected under 35 U.S.C. § 103 as unpatentable over
Schmitter ’661 and Lafer.
Claims 34–38 are rejected under 35 U.S.C. § 103 as unpatentable over
Schmitter ’671 and Alquist

2 The Examiner indicates that Appellant “has overcome the following
rejections(s): The 112(b) rejections disclosed in the Final Rejection.”
Advisory Action dated March 25, 2019.
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ANALYSIS
The rejection of claims 16, 18–21, 23, 25, 30, 32–35, 37, and 39
as anticipated by Alquist
Appellant presents separate arguments for claim 16 (see Appeal
Br. 3–4) and for claim 30 (see Appeal Br. 4–6). Appellant also argues
dependent claims 20, 21, 34, and 35 together. See Appeal Br. 6–7.
Regarding dependent claims 18, 19, 23, 25, 32, 33, 37, and 39, Appellant
does not separately argue these claims but instead relies on “the reasons
more fully set forth above.” Appeal Br. 6. We thus select claims 16, 30, and
20 (in that order) for review, with the remaining claims standing or falling
with their respectively grouped or parent claim. See 37 C.F.R.
§ 41.37(c)(1)(iv).
CLAIM 16
Independent claim 16 is directed to a gear housing having a top part
and a bottom part separated along a plane. Claim 16 further recites that the
top part has “at least a first groove formed on an inner side and extending in
a longitudinal direction” and also a “further groove formed on the inner side
and extending in a transverse direction.” Claim 16 additionally recites, “the
transverse direction is aligned parallel to an axis of an output shaft and/or
the longitudinal direction and the transverse direction are aligned parallel to
the plane” (emphasis added).3

3 We note this last limitation because the Examiner, in relying on Alquist,
identifies two grooves parallel to the corresponding plane in accordance with
one option. We further note that the corresponding transverse “further
groove” in the cited art is perpendicular to the shaft’s axis, and not parallel
as per the other option. See Alquist Figs. 1 and 2.
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The Examiner correlates the recited longitudinal “first groove” to “a
groove on one side of 21” of Alquist. Final Act. 7. The Examiner also
correlates the recited transverse “further groove” to “a side of 21
perpendicular to the first groove.” Final Act. 7. The Examiner additionally
annotates Figures 1 and 2 of Alquist (see below) to better identify these
corresponding grooves in Alquist’s reservoir 21. See Ans. 5–6.

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The Examiner self-identifies these figures as annotated and also identifies,
with greater clarity, that which the Examiner deems to be the “Groove” and
the “Further Groove” (drawing boxes around each) in reservoir 21.
As indicated, the Examiner’s two “grooves” depicted above are the
entire sidewall and the entire bottom of Alquist’s reservoir 21. Appellant
argues that “a side or a side wall does not reasonably constitute a groove.”
Appeal Br. 4. There is merit to Appellant’s argument because the Examiner
initially stated that the reservoir’s sides “can be viewed as constituting a
groove” and that this finding is buttressed “in light of the definition from
Dictionary.com that [defines “groove” as] ‘a long, narrow cut or indentation
in a surface.’” Advisory Action dated March 25, 2019. However, this
definition clearly expresses the “groove” as being “in a surface,” and the
Examiner does not identify the “surface” into which Alquist’s “grooves” are
“cut” or “indent[ed]” into.
Upon Appellant questioning the Examiner’s “Dictionary.com”
definition (see Appeal Br. 4), the Examiner proffers a more generic
definition stating, “Merriam-webster.com defines ‘groove’ as ‘a long narrow
channel or depression’ which reads on the structure” above. Ans. 4. We
note that this new “Merriam-webster.com” definition does not elaborate as
to the underlying material into which the groove is channeled or depressed,
but, nevertheless, we understand from even this latest definition, a groove
must be still be channeled or depressed into some material. Appellant
addresses both definitions and argues that even the latest definition does not
“reasonably establish that Alquist discloses a ‘groove.’” Reply Br. 2. To
further this point, Appellant analogizes the Examiner’s interpretation of
Alquist’s walls being a “groove” “to the absurd result that the floor, wall,
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and ceiling of an office or bedroom, for example, would also constitute a
‘groove.’” Reply Br. 3.
We concur with Appellant’s position in this matter. As Appellant
expresses, “under any of the varied and inconsistent interpretations applied
in the Final Office Action, Advisory Action, and Examiner's Answer,” a
skilled person would not conclude that “the identified structures of Alquist
constitute a ‘groove.’” Reply Br. 3. As such, we agree with Appellant that
the Examiner “present[ed] ‘groove’ as a moving target” and that “substantial
evidence does not support the rejection.” Reply Br. 3.
Accordingly, and based on the record presented, we do not sustain the
Examiner’s rejection of claim 16, or of claims 18, 19, 23, and 25 which
depend directly therefrom. We reverse the Examiner’s rejection of claims
16, 18, 19, 23 and 25 as being anticipated by Alquist.
CLAIM 30
Independent claim 30 also recites a housing top part having “a first
groove,”, but is silent as to any “further groove” (as recited in claim 16
above).4 Similar to the above discussion, the Examiner finds that Alquist
discloses “a first groove (a groove on one side of 21).” Final Act. 9.
Appellant again challenges this finding (see Appeal Br. 4, 5) and we concur
with Appellant for the reasons expressed above. However, rather than
conclude our analysis here, we wish to point out other discrepancies
regarding claim 30 so that, should prosecution continue, such discrepancies
can be addressed.

4 Claim 31, which depends directly from claim 30, recites “a further
groove,” so we understand via claim differentiation that “first groove” and
“further groove” are two different grooves.
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To begin, claim 30 includes “and/or” language, to wit: “the housing
top part having an oil pocket closed all around and/or a first groove adapted
to collect sprayed-around oil being disposed all around” (emphasis added).5
Addressing the second option, the parties disagree as to that which is
“disposed all around.” The Examiner states this second option means “the
sprayed-around oil is disposed all around the housing top part.” Ans. 6–7.
Appellant disagrees arguing that “[g]rammatically, the foregoing phrase
plainly articulates that a ‘first grove’ is ‘disposed all around.’” Reply Br. 3.
As support for Appellant’s position, certain passages in Appellant’s
Specification are referenced. See Reply Br. 4 (referencing Spec. 2:18–27,
2:29–32). The first of these referenced locations (i.e., Spec. 2:18–27)
discusses the housing top part stating “in each case a groove for collecting
sprayed-around oil thus being disposed all the way around.” The second of
these (i.e., 2:29–32) discusses an advantage being “the groove going all
around on the inner wall of the concave, e.g., shell-like housing top part”
and that this “makes it possible to collect oil conducted along the top wall or
along the oil-guiding rib structure.” Appellant’s Specification also discusses
“oil droplets sprayed up toward the top wall” that “drip off . . . into a groove
formed on the inner side of the housing top part.” 6 Spec. 6:2–4.

5 We understand the claim phrase “all around” means encircling or
encompassing. This is supported by Appellant’s Specification that, when
discussing oil sprayed within the housing and its subsequent collection,
states “[t]he collection of oil is thus ensured all around.” Spec. 2:5–15.
6 Appellant also makes the point that “[c]onsidering ‘disposed all around’ to
modify ‘sprayed-around oil’” as the Examiner reasons, “is grammatically
nonsensical.” Reply Br. 4. This position is compelling because “sprayed-
around oil” is already “disposed all around” (see Spec. 6:2–4) and thus such
construction by the Examiner appears to be superfluous and redundant.
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From the above, we are of the opinion that Appellant has the more
reasonable claim interpretation, i.e., that it is the “first groove” that is
“disposed all around.” See Reply Br. 3–4.
However, this interpretation leads to a quandary. As noted above and
as per the limitations of claim 30, it is the “first groove” that is “disposed all
around.” As also noted above, claim differentiation mandates a distinction
between parent claim 30’s “first groove” and dependent claim 31’s “further
groove.” One skilled in the art, aware of this distinction, would investigate
Appellant’s Specification for a better understanding regarding the parent’s
recitation that the “first groove” itself is “disposed all around” as construed
above. In this regard, Appellant’s Specification only addresses the “first
groove” as extending longitudinally (i.e., in a parallel direction). See Spec.
1:23–25, 2:7–9. Thus, although we agree with Appellant’s claim
construction above, we cannot help but notice that there are apparent
underlying 35 U.S.C. § 112 (written description, enablement, and, to some
degree, indefiniteness) issues with claim 30 as it is presently interpreted, and
which Appellant champions. See Reply Br. 3–4.
In such cases, our reviewing court has provided instruction that before
an art rejection can be analyzed, “it is essential to know what the claims do
in fact cover.” See In re Steele, 305 F.2d 859, 862 (CCPA 1962). Because
we are unable to square claim 30 consistent with Appellant’s Specification,
it is speculation on our part to further address the Examiner’s anticipation
rejection of this claim, and contrast claim 30 with the teachings of Alquist.
Thus, claim 30, as a whole, is presented in such a manner that the scope,
meaning, and manner of implementing this claim (and hence its dependent
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claims as well), is not fully conveyed because it is not in harmony with
Appellant’s Specification.7
Accordingly, although we fault the Examiner’s finding that Alquist
teaches a “groove,” we nevertheless affirm the Examiner’s rejection of claim
30 (and dependent claims 32, 33, 37, and 39) for the Section 112 reasons
expressed above. Because this rejection differs from that proffered by the
Examiner, we designate this rejection under 35 U.S.C. § 112 as a New
Ground of rejection.
CLAIM 20
Claim 20 depends from claim 16, and thus is subject to the same
analysis above regarding claim 16’s “groove,” and whether Alquist discloses
same. However, Appellant further challenges whether Alquist teaches the
additional claim 20 limitation regarding an “oil-guiding rib structure” and
whether this structure, extending from the top wall, has a “vanishing slope”
that varies along its extension. See Appeal Br. 6; Reply Br. 4. The
Examiner equated the recited “oil-guiding rib structure” with Alquist’s webs
13 depicted in the above two figures, but better seen in Figure 2.

7 For example, the requirement of enablement enforces the essential “quid
pro quo of the patent bargain” by requiring a patentee to teach the public
how “to practice the full scope of the claimed invention.” AK Steel Corp. v.
Sollac, 344 F.3d 1234, 1244 (Fed. Cir. 2003). “The essence of the written
description requirement is that a patent applicant, as part of the bargain with
the public, must describe his or her invention so that the public will know
what it is and that he or she has truly made the claimed invention.” AbbVie
Deutschland GmbH & Co. v. Janssen Biotech, Inc., 759 F.3d 1285, 1298
(Fed. Cir. 2014). “The primary purpose of this requirement of definiteness
of claim language is to ensure that the scope of the claims is clear so the
public is informed of the boundaries of what constitutes infringement of the
patent.” MPEP § 2173.
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Appellant acknowledges “the Final Office Action merely cites to
Figure 2 of Alquist” but contends, “there is no indication that Figure 2 is
drawn to scale.” Appeal Br. 6. We agree with Appellant that there is no
indication that Figure 2 of Alquist is drawn to scale, but that does not detract
from that which is clearly shown.8 Appellant does not dispute that Alquist’s
webs 13 are plainly illustrated as extending downwardly from the top wall in
a tapering manner. As such, Appellant does not explain how Alquist’s
tapered webs 13 fail to disclose the “vanishing slope” recited in claim 20.
However, as mentioned above, claim 20 depends directly from claim
16, and thus, while Appellant’s “vanishing slope” argument regarding claim
20 is not persuasive of Examiner error, Appellant’s “groove” arguments
regarding parent claim 16 are persuasive of Examiner error. We thus reverse
the Examiner’s rejection of claim 20 and further dependent claim 21 on this
basis.
Regarding dependent claims 34 and 35, these claims both depend,
either directly or indirectly, from claim 30 discussed above. Claims 34 and
35 also recite the “vanishing slope” limitation, which Appellant contends (as
above) that Alquist does not teach. See Appeal Br. 6; Reply Br. 4. We do
not find Appellant’s “vanishing slope” arguments persuasive of Examiner
error for the same reasons already expressed. However, as also noted above,
we entered a new ground of rejection with respect to parent claim 30, and
thus, such a rejection of parent claim 30 also extends to its dependent claims
34 and 35.

8 See In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972) (“[W]e did not mean
that things patent drawings show clearly are to be disregarded.”).
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The rejection of claims 30–33 and 39
as anticipated (a) by Schmitter ’661 and (b) by Schmitter ’671
Both of these anticipation rejections address independent claim 30 and
its dependent claims 31–33 and 39. Parent claim 30 has been discussed
above and found wanting, and as such, we find no need to replicate that
Section 112 analysis here when discussing these additional rejections.
However, in addressing these two rejections in view of these references,
Appellant additionally focuses on the corresponding troughs relied upon by
the Examiner as teaching claim 30’s “disposed all around” limitation. See
Appeal Br. 7–9; Reply Br. 5, 6. We elect to address these arguments so that
this issue can be resolved.
In arguing these rejections, Appellant explains that trough 80 of
Schmitter ’661 “appears” to not extend “all around” as claimed. See Appeal
Br. 7. But, appearances can be deceiving because, and specifically with
respect to Schmitter ’661, there is written disclosure of the “L-shaped oil
receiving trough 80 [that is] mounted on each of the respective wall
members of the [upper] section 31.” Schmitter ’661 4:66–68 (emphasis
added); see also Ans. 9. To be clear, upper section 31 is shown in at least
Figures 1, 3, and 4 of Schmitter ’661 as a cover having opposite sidewalls
along “each” of which we are informed an oil receiving trough is mounted.
Thus, while the other reference, i.e., Schmitter ’671, may be silent as to the
mounting locations of its troughs, the same cannot be said with respect to the
written description of Schmitter ’661. Hence, with regard to at least
Schmitter ’661, Appellant’s reliance on drawing appearance alone is not
persuasive that the Examiner incorrectly relied on this reference for teaching
this “disposed all around” limitation. See Final Act. 11; Ans. 8–10.
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Additionally, Appellant’s contention that neither reference discloses
structure “adapted to” collect oil as recited (see Appeal Br. 8, 9; Reply Br. 5,
7) is also not persuasive. This is because the structures identified by the
Examiner (item 80 with respect to Schmitter ’661, and items 67 and 68 with
respect to Schmitter ’671 (see Final Act. 11, 12)) are described as serving
this exact purpose. See Schmitter ’661 4:66 (“oil receiving trough”);
Schmitter ’671 4:3–5 (discussing troughs “for receiving such lubricant”); see
also Ans. 11, 12.
Accordingly, although the Examiner’s rejection is affirmed for other
reasons relating to Section 112, Appellant’s above arguments seeking to
show Examiner error are unavailing.
The rejection of claims 24 and 38
as unpatentable over Alquist
Claim 24 depends directly from claim 20, while claim 38 depends,
indirectly, from claim 30. In each instance, Appellant relies on arguments
“more fully set forth above” as evidence of Examiner error. Appeal Br. 9.
In other words, Appellant does not additionally argue the rejection of these
claims but, instead, relies on arguments previously presented. As noted
above, we have reversed the Examiner’s rejection of claim 20 (and parent
claim 16) in view of Alquist’s “grooves,” but affirmed the rejection of claim
30 under Section 112. Thus, with respect to this rejection of claims 24 and
38, we reverse the Examiner’s rejection of claim 24 but affirm the rejection
of claim 38.
The rejection of claims 34–38
as unpatentable over Schmitter ’661 and Alquist
As expressed by Appellant, “[c]laims 34 to 38 ultimately depend from
claim 30 and therefore include all of the features included in claim 30.”
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Appeal Br. 10. Claim 30 has been discussed above and such discussion
involving Section 112 discrepancies with Appellant’s Specification will not
be duplicated here. Appellant supplements the arguments made above with
respect to claim 30 by additionally addressing the Examiner’s reliance on
Alquist’s webs 13 and contending that these webs do not disclose the
additionally recited “vanishing slope.” Appellant again relies on (see above)
the assertion that “there is no indication that Figure 2 [of Alquist] is drawn
to scale.” Appeal Br. 10. Appellant supplements this argument in the
present rejection, which also relies on the teachings of Schmitter ’661,
stating “Schmitter ’661 does not indicate that its Figures are drawn to scale”
either. Appeal Br. 11.
Such additional and/or supplemental arguments are not persuasive of
Examiner error for the reasons addressed above, and particularly because
“things patent drawings show clearly” are not to be disregarded. See Mraz,
455 F.2d at 1072. We thus affirm the rejection of claims 34–38 for the same
Section 112 reasons we affirmed the rejection of parent claim 30 above.
The rejection of claims 40–42
as unpatentable over Schmitter ’661 and Lafer
Appellant states, “[c]laims 40 to 42 ultimately depend from claim 30
and therefore include all of the features included in claim 30.” Appeal Br.
11. Claim 30 has been discussed above and such discussion will not be
duplicated here. Appellant also contends that “Lafer does not cure the
critical deficiencies noted above” when Lafer was not employed by the
Examiner in such capacity. Appeal Br. 11; see also Final Act. 18. Such
argument regarding Lafer is not persuasive of Examiner error.
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Specific to claim 40, Appellant contends that the additional recitation
therein to certain components “being stamped bent parts,” was not properly
addressed by the Examiner. See Appeal Br. 11; Reply Br. 8. To be clear,
the Examiner found that “the method of forming the device is not germane
to the patentability of the device itself” (Final Act. 18 (referencing MPEP
§ 2113)) and that “the method of forming the bent pieces is not given
patentable weight.” Ans. 13. Appellant disagrees contending that this
“stamped bent” limitation is similar to other terms (i.e., welded, intermixed,
ground in place, press fitted, and etched) which “are capable of construction
as structural limitations.” Appeal Br. 12. However, Appellant does not
make clear just what “structural” limitations are provided by this “stamped
bent” process. Further, we have been instructed that “[t]he patentability of a
product does not depend on its method of production.” In re Thorpe, 777
F.2d 695, 697 (Fed. Cir. 1985) (citing In re Pilkington, 411 F.2d 1345, 1348
(CCPA 1969)). Thus, lacking any indication that specific structural features
are imparted to the parts by being “stamped bent,” in contrast to other
methods of construction, we are not persuaded the Examiner erred on this
point.9

9 “Where a product-by-process claim is rejected over a prior art product that
appears to be identical, although produced by a different process, the burden
is upon the applicants to come forward with evidence establishing an
unobvious difference between the claimed product and the prior art
product.” In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983). Further, upon a
prima facie showing of obviousness regarding this “stamped bent” limitation
(see Final Act. 17, 18; Ans. 13) the burden of coming forward with evidence
to show otherwise falls on Appellant because, as stated by our reviewing
court, the fairness of this shift “is evidenced by the PTO’s inability to
manufacture products or to obtain and compare prior art products.” In re
Best, 562 F.2d 1252, 1255 (CCPA 1977).
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Specific to claim 42, whose limitations address “a marking” on a side
wall where “a bore hole” is to be placed, Appellant contends that the
Examiner’s reliance on “Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App.
& Inter. 1987), is misplaced.” Appeal Br. 12; see also Reply Br. 9. This is
because, “the Masham decision relates to the issue of a statement in the
preamble of a claim” whereas the Examiner applies Masham “to a feature
recited in the body of claim 42.” Appeal Br. 12; see also Reply Br. 9. The
Examiner responds that “Masham is focused on both a preamble limitation
and a body limitation.” Ans. 14. The Examiner’s statement is the correct
one because even MPEP § 2114 II reproduces excerpts from this case stating
that the step of “mixing” is found in both the preamble and the body of the
claim. Thus, Appellant’s basis above that the Examiner’s reliance on
Masham “is misplaced,” is not persuasive.
In Appellant’s Reply Brief, Appellant again addresses Masham, but
this time from the perspective of intended use, i.e., the Examiner’s reliance
on Masham, “constitutes a statement of intended use” and that “[t]he only
statement of intended use discussed in the Masham decision appeared in the
preamble.” Reply Br. 9. Even if true, Appellant does not explain how the
Examiner erred in relying on Lafer for disclosing “that one of the side walls
has a marking (132; Lafer et al).” Final Act. 19; see also Ans. 14. Indeed,
Lafer’s items 132 are described as “openings” located “in the side walls.”
Lafer 6:1. However, Appellant appears to have misinterpreted the
Examiner’s point because Appellant contends that “Lafer’s reference
numeral 132 . . . is a reference numeral of the Lafer patent document rather
than a marking actually applied to any component.” Reply Br. 9. “There is
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no indication that any component of Lafer is actually marked with the
patent’s reference numerals.” Reply Br. 9.
The Examiner was not saying that Lafer’s commercial product “is
actually marked with the patent’s reference numerals,” but that Lafer’s
sidewalls have markings thereon, and employed reference numeral 132 to
show where and what. Appellant’s argument that Lafer’s reference numeral
“132” is not marked on Lafer’s actual product is not persuasive of Examiner
error on this point.
Thus, as discussed above, although we affirm the rejection of claim 30
on other grounds, Appellant’s arguments above with respect to claims 40–42
are not persuasive of Examiner error.
The rejection of claims 34–38
as unpatentable over Schmitter ’671 and Alquist
Appellant’s arguments in response to this rejection are duplicative of
those previously presented by Appellant, but involving the combination of
Schmitter ’667 and Alquist. Compare Appeal Br. 10–11 with Appeal Br.
12–13. Our analysis is also the same. We thus affirm the rejection of claims
34–38 for the same reasons we affirmed the rejection of parent claim 30
above.
CONCLUSION
In summary:

Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed New
Ground
16, 18–
21, 23,
25
102(a)(1) Alquist 16, 18–
21, 23,
25

30–42 112 Written 30–42 30–42
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Description,
Enablement,
Indefiniteness
24 103 Alquist 24
Overall
Outcome
30–42 16, 18–
21, 23–
25
30–42

This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” Section
41.50(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.
Appeal 2019-006674
Application 15/035,396

19
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED IN PART; 37 C.F.R. § 41.50 (b)