TRUMPF Maschinen Austria GmbH & Co. KG.

Patent Trials and Appeals Board

Aug 17, 2021

2021000273 (P.T.A.B. Aug. 17, 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.
15/502,627 04/11/2017 Thomas DENKMEIER DENKMEIER
ET AL-4 PCT
8937
25889 7590 08/17/2021
COLLARD & ROE, P.C.
1077 NORTHERN BOULEVARD
ROSLYN, NY 11576
EXAMINER
SULLIVAN, DEBRA M
ART UNIT PAPER NUMBER
3725
NOTIFICATION DATE DELIVERY MODE
08/17/2021 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):
uspto@collardroe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS DENKMEIER and MELVIN SKOPLJAK
Appeal 2021-000273
Application 15/502,627
Technology Center 3700
Before DANIEL S. SONG, EDWARD A. BROWN, and
JEREMY M. PLENZLER, Administrative Patent Judges.
SONG, 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 decision to reject claims 1–9 and 19. Claims 10–18 have been
withdrawn from consideration. 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(a). The Appellant identifies the real party in interest as
TRUMPF Maschinen Austria GmbH & Co. KG. Appeal Br. 1.
Appeal 2021-000273
Application 15/502,627

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CLAIMED SUBJECT MATTER
The claims are directed to a bending tool. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1. Bending tool for insertion in a tool receptacle, the bending
tool comprising:
a tool body comprising a first gripping groove and a
second gripping groove arranged opposite to each other,
a locking element comprising a locking catch, the locking
element being disposed in and/or on the tool body, and
an actuating element coupled to the locking element, the
actuating element being movable between a base position and an
actuating position, the base position corresponding to a locked
position of the locking element, the actuating position
corresponding to an unlocked position of the locking element,
the actuating element having a first end portion and a second end
portion, the first end portion having an actuating face, the second
end portion having an actuating recess,
wherein the first end portion of the actuating element is
accessible in a region of the first gripping groove and the second
end portion of the actuating element is accessible in a region of
the second gripping groove,
wherein the actuating recess is configured such that a
gripping catch of a gripping device for manipulating the bending
tool can engage in the actuating recess of the actuating element
to pull the actuating element out of the base position into the
actuating position, and
wherein the first end portion of the actuating element is
rigidly connected to the second end portion of the actuating
element, such that when the gripping catch of the gripping device
engages in the actuating recess and pulls the actuating element,
the actuating face and the actuating element are moved out of the
base position into the actuating position.
Appeal Br. 15–16 (Claims App., emphasis added).
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Application 15/502,627

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REJECTIONS
1. Claims 1–3, 5, 8, 9, and 19 are rejected under 35 U.S.C.
§ 102(a)(l) as being anticipated by Rouweler (US 2009/0217731 A1, pub.
Sept. 3, 2009). Non-Final Act. 3.
2. Claims 4 and 6 are rejected under 35 U.S.C. § 103 as being
unpatentable over Rouweler. Non-Final Act. 6.
3. Claim 7 is rejected under 35 U.S.C. § 103 as being unpatentable
over Rouweler in view of Mayrhofer (US 2016/0136706 A1, pub. May 19,
2016). Non-Final Act. 6.
OPINION
Rejection 1: Anticipation
The Examiner rejects claims 1–3, 5, 8, 9, and 19 as being anticipated
by Rouweler. Non-Final Act. 3. As to independent claim 1, the Examiner
finds that Rouweler disclose the claimed tool, including “an actuating
element (55, 56)” with “the first end portion having an actuating face, the
second end portion having an actuating recess [recess adjacent to element
56; see figure 5],” wherein “the first end portion of the actuating element is
rigidly connected to the second end portion of the actuating element” such
that the actuating face and actuating element are moved in the manner
claimed. Non-Final Act. 3, 4 (citing Rouweler ¶ 47; Fig. 5).
The Appellant argues that Rouweler fails to disclose “the first end
portion of its actuating element is rigidly connected to the second end
portion” as required by claim 1 because “the actuating member 55,
spreading member 57, and the spreading actuating member 59 are not rigidly
connected.” Appeal Br. 11. The Appellant points out that in Rouweler,
“when the spreading actuating member 59 is pressed, the spreading actuating
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Application 15/502,627

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member 59 glides within the spreading member 57” so that “the action
members 55 and 56 are not moved at all by sole movement of element 57,”
and thus, the spreading member 57 “is not capable of pulling the action
members 55 and 56 from a base position into the actuating position.”
Appeal Br. 11, 12.
These arguments are unpersuasive because the Appellant
misunderstands the rejection. As the Examiner points out, the Appellant
“appears to define the actuating element to be comprised of elements 55, 57
and 59 of Rouweler,” but the rejection relies on “elements 55 and 56
(equivalent to elements 5 & 6 of [F]igure 1A)” as corresponding to the
recited actuating member. Ans. 3 (citing Non-Final Act. 3); see also Non-
Final Act. 3; Rouweler Figs. 1A, 5. As the Examiner finds, Rouweler
illustrates that “the first end portion 5 of the actuating element is rigidly
connected to the second end portion 6.” Ans. 3 (citing Rouweler Fig. 1A).
The Examiner also explains that although the rejection is based on the
embodiment of Figure 5 of Rouweler, reference is made to Figure 1A “for
clarity purposes,” and asserts that the only difference between the illustrated
embodiments is that “the embodiment of [F]igure 5 includes an additional
safety element.” Ans. 3. Then, referring to both Figures 1A and 1B, the
Examiner finds that the recited “actuating recess of the actuating element is
the recess formed between the head of element 6 and the shaft of element 6.”
Ans. 4 (citing annotated Figure 1B of Rouweler).
According to the Examiner, “[t]he limitation ‘gripping catch of a
gripping device’ is not positively recited within the claim but is rather set
forth as an intended function” such that the actuating recess need only be
“configured to allow for engagement with an external device.” Ans. 4.
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Application 15/502,627

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Based thereon, the Examiner finds that “the actuating recess [of Rouweler]
is capable of being engaged with an external device” because there is “no
structure that prohibits the actuating element 5, 6 from being pulled,” and
Figure 1B shows the actuation element having slid to a different position.
Ans. 5. The Examiner also asserts that Figure 5 of Rouweler “demonstrates
that an external element is capable of engaging with the actuating recess.”
Ans. 4.
The Appellant does not object to the Examiner’s reliance on Figures
1A–1B of Rouweler. Instead, Appellant argues that based on comparison of
Figures 1A and 1B of Rouweler, “the actuating recess is only available when
the actuating element is already in its actuating position.” Reply Br. 2
(citing Rouweler Figs. 1A, 1B). According to the Appellant, “when the
actuating element is in its base position, a recess is not present anymore,
because the head of element 6 contacts the tool body 2” such that the recess
cannot be engaged by a gripping catch. Reply Br. 2. The Appellant also
disagrees as to the Examiner’s claim interpretation based on the final
limitation of claim 1. Reply Br. 2
The Appellant has the better position. The “actuating recess”
identified by the Examiner relative to the annotated Figure 1B of Rouweler
does not exist in Figure 1A when the actuating element is in the base
position “corresponding to a locked position of the locking element” as
required by claim 1. The rejection overlooks the requirement that the
actuating recess allows for engagement by a gripping catch when the
actuating element is in its base position in which the locking element is in
the locked position. Such a position corresponds to the position shown in
Figure 1A of Rouweler. Thus, the Appellant is correct that “if the actuating
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element is in its base position, the gripping device cannot engage in the
actuating recess, because the head of element 6 contacts the tool body 2, and
therefore does not provide any space for allowing the gripping device to be
engaged with the actuating element.” Reply Br. 2 (emphasis omitted).
Accordingly, we reverse the Examiner’s anticipation rejection of
independent claim 1, and of claims 2, 3, 5, 8, and 9 that depend from claim
1. In addition, as the Appellant correctly notes, independent claim 19 is
“substantially identical” to claim 1 in its scope as to the issues raised in the
appeal. Appeal Br. 10. Accordingly, we reverse the anticipation rejection of
claim 19 as well.

Rejections 2 and 3: Obviousness
The Examiner’s rejection of claims 4, 6, and 7 are premised on the
same erroneous findings with respect to Rouweler discussed above relative
to claim 1. Non-Final Act. 6. Thus, Rejections 2 and 3 are also reversed.
CONCLUSION
The Examiner’s rejections are reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 5, 8, 9,
19
102(a)(l) Rouweler 1–3, 5, 8, 9,
19
4, 6 103 Rouweler 4, 6
7 103 Rouweler,
Mayrhofer
7
Overall
Outcome
1–9, 19
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Application 15/502,627

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REVERSED