CONTINENTAL TEVES AG & CO. OHG

Patent Trials and Appeals BoardNov 13, 2020

2020002602 (P.T.A.B. Nov. 13, 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. 14/895,299 12/02/2015 Uwe Bach 1700P13140WOUS 8042 23122 7590 11/13/2020 RATNERPRESTIA 2200 Renaissance Blvd Suite 350 King of Prussia, PA 19406 EXAMINER BOWES, STEPHEN M ART UNIT PAPER NUMBER 3657 NOTIFICATION DATE DELIVERY MODE 11/13/2020 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): PCorrespondence@ratnerprestia.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte UWE BACH, JENS HOFFMANN, NICLAS GÖRRISSEN, WOLFGANG RITTER, AHMED SEFO, and HOLGER VON HAYN Appeal 2020-002602 Application 14/895,299 Technology Center 3600 ____________ Before JENNIFER D. BAHR, MICHAEL L. HOELTER, and CARL M. DEFRANCO, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s decision to reject claims 1–7, which are the sole claims pending in this application.1 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 “Continental Teves AG & Co. oHG.” Appeal Br. 2. Appeal 2020-002602 Application 14/895,299 2 We REVERSE the Examiner’s rejection of these claims. CLAIMED SUBJECT MATTER The disclosed subject matter “relates to an electrically actuated drum brake, in particular electromotively actuated drum brake module, with improved cable pull actuator arrangement for motor vehicles.” Spec. 1:13– 15. Apparatus claim 1 is the sole independent claim, is illustrative of the claims on appeal, and is reproduced below. 1. An electromotively actuated drum brake module with a cable pull actuator arrangement for motor vehicles, comprising: an electromechanical cable pull actuator which is arranged on an outer side of an anchor plate and which serves for driving a rotation-translation converter for converting a rotational drive input rotary movement into a translational actuation movement of brake pads, which brake pads are arranged on an inner side of the anchor plate in an interior of a brake drum, such that said brake pads can perform an actuation movement in the direction of the brake drum; and an adapter arranged between the cable pull actuator and the anchor plate, wherein the adapter comprises a single sheet of material provided in unipartite form and being formed into a frame having multiple planar walls which are arranged at an angle and obliquely with respect to one another, the frame defining a cavity, the frame having, on one side, at least one planar fastening flange for accommodating the cable pull actuator, the frame being fixable at another side to the anchor plate, with the multiple planar walls extending between the fastening flange and the anchor plate. EVIDENCE Name Reference Date Bach, et al. (“Bach”) WO 2012 104392 A2 Aug. 9, 2012 Appeal 2020-002602 Application 14/895,299 3 REJECTION Claims 1–7 are rejected under 35 U.S.C. § 102(a)(1) as anticipated by Bach. ANALYSIS Independent claim 1 recites an adapter that “comprises a single sheet of material.” The Examiner finds that Bach’s adapter meets this limitation and provides an annotation of Figure 1a of Bach for support. See Final Act. 3–4. Appellant disagrees with this assessment and notes that for an anticipation rejection, “each and every element” must be found “either expressly or inherently described” in a single reference. Appeal Br. 4 (citation omitted). Appellant contends that “[i]nasmuch as the Examiner does not cite to any written description in Bach for the features of the adaptor of claim 1, it is assumed that the Examiner relies entirely on FIG. 1a of Bach as disclosing the claimed adaptor.” Id. The Examiner does not disagree, and states, “[t]he one-piece, non-cage-like body of Bach et al reads on the limitation of ‘sheet’ as much as the invention does” and that “[t]he limitation ‘sheet’ carries relatively little weight as the inventive adapter is a cup-shaped body and not planar.” Ans. 3. We disagree with these statements by the Examiner because Bach is silent as to the construction material used in making the adapter, regardless of its shape, and none of Bach’s drawings provide any clear guidance that the adaptor “comprises a single sheet of material.” Further, we are instructed that “claims are interpreted with an eye toward giving effect to all terms in the claim.” Bicon Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006). See also Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, Appeal 2020-002602 Application 14/895,299 4 1362 (Fed. Cir. 2007) (denouncing claim constructions which render phrases in claims superfluous). Thus, the Examiner providing “little weight” to the claim term “sheet” runs counter to this guidance from our reviewing court. Appellant further contends that a cross-sectional view of Bach’s adapter “precludes the possibility of adapter 10 being formed from a single sheet of material” because “Bach shows an adapter 10 that has a varying thickness as well as a cylindrical through-hole, both of which are inconsistent with formation from a single sheet of material.” Appeal Br. 6 (referencing Bach Figure 2a). The Examiner replies stating that Bach’s adapter “could be made by starting with a large, thick sheet of material . . . and carving away material to arrive at the claimed one-piece structure formed from a single sheet.” Ans. 4. Such a hypothetical on the part of the Examiner (i.e., “could be made”) is not conducive to a finding of either an overtly express or a necessarily inherent disclosure.2 The Examiner also contends that “[e]ven if the claimed invention were a product by process claim, it lacks features that distinguish it from the prior art.” Ans. 6. As understood, the Examiner finds that Appellant’s “single sheet” adapter is not distinguishable over Bach’s adapter. However, the Examiner does not elaborate as to why this single-sheet limitation is indistinguishable, and especially when Bach itself is silent on the point. Furthermore, although this claimed feature “could be” possible in Bach (Ans. 4), we are instructed that “probabilities or possibilities” are not enough 2 “To establish inherency, the extrinsic evidence ‘must make clear that the missing descriptive matter is necessarily present in the thing described in the reference.’” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citation omitted). Appeal 2020-002602 Application 14/895,299 5 to find that the prior art inherently discloses something not explicitly present. In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). Accordingly, and based on the record presented, we do not sustain the Examiner’s rejection of claims 1–7 as being anticipated by Bach. CONCLUSION In summary: Claim Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–7 102(a)(1) Bach 1–7 Overall Outcome 1–7 REVERSED