Erowa AG

Patent Trials and Appeals BoardMay 28, 2021

2020005882 (P.T.A.B. May. 28, 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. 15/486,662 04/13/2017 Hans Hediger 1761-0122 3625 28078 7590 05/28/2021 MAGINOT, MOORE & BECK, LLP One Indiana Square, Suite 2200 INDIANAPOLIS, IN 46204 EXAMINER QUANN, ABBIE E ART UNIT PAPER NUMBER 3723 MAIL DATE DELIVERY MODE 05/28/2021 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 HANS HEDIGER ____________________ Appeal 2020-005882 Application 15/486,662 Technology Center 3700 ____________________ Before JOHN C. KERINS, DANIEL S. SONG, and LEE L. STEPINA, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134(a) of the Examiner’s Decision rejecting claims 1–22. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 The term “Appellant” is used herein to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Erowa AG as the real party in interest. Appeal Br. 2. Appeal 2020-005882 Application 15/486,662 2 CLAIMED SUBJECT MATTER Appellant’s invention relates to a clamping device. Independent claim 1 is illustrative, and is reproduced below with additional formatting added: 1. A clamping device comprising a clamping chuck and a clamping element, which can be clamped thereto, wherein the clamping chuck has an elongated slot-shaped receiving opening, defining a longitudinal axis, for the clamping element and clamping members for clamping the clamping element in the receiving opening, characterized in that the clamping element is embodied in an elongated insertion area of the elongated receiving opening, and that at least one resiliently flexible centering element is configured and operable to align the clamping element in response to an insertion into the receiving opening at right angles to the longitudinal axis of the receiving opening, wherein the centering element is arranged on the clamping chuck in the insertion area of the receiving opening. REJECTION The Examiner rejects: (i) claims 1–11 and 13 under 35 U.S.C. § 103 as being unpatentable over Sandmeier (EP 2052808 A1, published Apr. 29, 2009, hereinafter “‘Sandmeier ‘808”) in view of Sandmeier (US 8,413,973 B2, published Apr. 9, 2013, hereinafter “‘Sandmeier ‘973”); (ii) claim 12 under 35 U.S.C. § 103 as being unpatentable over Sandmeier ‘808 in view of Sandmeier ‘973 and Lin (US 2016/0263716 A1, published Sept. 15, 2016); Appeal 2020-005882 Application 15/486,662 3 (iii) claim 14 under 35 U.S.C. § 103 as being unpatentable over Sandmeier ‘808 in view of Sandmeier ‘973 and Hediger (US 9,302,359 B2, published Apr. 5, 2016); (iv) claims 15–20 and 22 under 35 U.S.C. § 103 as being unpatentable over Hediger in view of Sandmeier ‘973; and (v) claim 21 under 35 U.S.C. § 103 as being unpatentable over Hediger in view of Sandmeier ‘973 and Sandmeier ‘808. ANALYSIS Claims 1–11 and 13--§ 103--Sandmeier ‘808/Sandmeier ‘973 The Examiner finds that Sandmeier ‘808 discloses a clamping chuck, a clamping element with an elongated slot-shaped receiving opening defining a longitudinal axis for the clamping element, clamping members, and the clamping element embodied in an elongated manner. Non-Final Act. 6. The Examiner cites to Sandmeier ‘973 as disclosing a similar system which includes a clamping element embodied in an elongated manner to be received through an elongated insertion area in response to insertion into the receiving opening at right angles to the longitudinal axis of the receiving opening with a centering element arranged on the clamping chuck. Id. at 6– 7. The Examiner concludes that it would have been obvious to modify Sandmeier ‘808 to include a resiliently flexible centering element as taught by Sandmeier ‘973 in order to achieve repeatable accuracy when the centering pin is received in the opening. Non-Final Act. 7–8. The Examiner additionally concludes that it would have been obvious to modify Sandmeier ‘808 to include an elongated slot-shaped receiving opening and an elongated insertion area, in that, according to the Examiner, it would have been Appeal 2020-005882 Application 15/486,662 4 obvious to use any shaped clamping pin and corresponding receiving area and that by “elongating the shape of the circular pin and opening, the insertion area would thereby be elongated in a horizontal direction, creating a longitudinal axis in this defined plane.” Id. at 7. Further, the Examiner takes the position that Sandmeier ‘973 discloses clamping elements extending in an elongated manner with corresponding receiving apertures. Id. at 7 and 12. Appellant argues that the assertion of obviousness set forth by the Examiner does not equate to a reasoned statement or clearly articulated rationale as to why a person of ordinary skill would change the circular shape of the clamping pin and corresponding receiving area in Sandmeier ‘808 to an elongated shape. Appeal Br. 7–8. It is further argued that the Examiner’s position is essentially “that as long as a modification can be made to work it is obvious.” Id. We agree that the Examiner has not provided sufficient rationale as to why it would have been obvious to modify the shape of the clamping element and receiving opening in Sandmeier ‘808. Possibly in recognition that the reasoning provided in the Non-Final Action was not well-supported by rational underpinnings, the Examiner, in the Answer, seems to place greater emphasis on the purported teaching in Sandmeier ‘973 of elongated clamping elements 3 with corresponding apertures. However, the protrusions 3 and corresponding openings 9 of Sandmeier ‘973 are not clamping elements, but are instead used for centering and alignment. No explanation is offered as to why the shape of these protrusions and openings would be relevant to a possible shape modification of the clamping element and receiving openings. Additionally, the Examiner seems to allude to a Appeal 2020-005882 Application 15/486,662 5 vertical2 elongation of the clamping element and receiving opening as having some significance in modifying these elements to also be elongated in the horizontal3 direction. Ans. 18. Similarly, here we see no sufficient explanation offered as to why that would be so. As such, the Examiner’s ultimate conclusion of obviousness is not supported by rational underpinnings, in that a sufficient reason to make the proposed modifications is not provided. Accordingly, the rejection of claims 1 and 3–7 as being unpatentable over Sandmeier ‘808 and Sandmeier ‘973 is not sustained. Claim 12--§ 103--Sandmeier ‘808/Sandmeier ‘973/Lin; and Claim 14--§ 103--Sandmeier ‘808/Sandmeier ‘973/Hediger The Examiner does not rely on either Lin or Hediger in any manner that remedies the deficiencies in the rejection of claim 1 based on Sandmeier ‘808 and Sandmeier ‘973. The rejections are not sustained. Claims 15–20 and 22--§ 103--Hediger/Sandmeier ‘973 Independent claim 15 requires a system having at least three clamping chucks, so the Examiner cites first to Hediger as disclosing at least three clamping chucks offset to one another, together with a corresponding number of clamping elements, wherein each clamping chuck has a receiving opening and clamping members, and wherein the clamping elements are vertically elongated, with corresponding vertically elongated slots. Non- 2 “Vertical” in the sense of being aligned with or parallel to the direction of insertion of the clamping element into its receiving opening. 3 “Horizontal” in the sense of being orthogonal to the direction of insertion. Appeal 2020-005882 Application 15/486,662 6 Final Act. 11–12. The Examiner relies on Sandmeier ‘973 for its disclosure of a resiliently flexible centering element, in a similar manner to the rejection of claim 1. Id. at 12. The Examiner’s reasoning and conclusion as to the obviousness of modifying Hediger from having circular clamping elements and receiving openings is identical to that advanced in rejecting claim 1. See id. For the reasons discussed above with respect to that rejection, we here also determine that the Examiner’s ultimate conclusion of obviousness is not supported by rational underpinnings, in that a sufficient reason to make the proposed modifications is not provided. Accordingly, the rejection of claims 15 and 20–22 as being unpatentable over Hediger and Sandmeier ‘973 is not sustained. Claim 21--§ 103--Hediger/Sandmeier ‘973/Sandmeier ‘808 The Examiner does not rely on Sandmeier ‘808 in any manner that remedies the deficiencies in the rejection of claim 15 based on Hediger and Sandmeier ‘973. The rejection is not sustained. DECISION The rejection of claims 1–11 and 13 under 35 U.S.C. § 103 as being unpatentable over Sandmeier ‘808 in view of Sandmeier ‘973 is reversed. The rejection of claim 12 under 35 U.S.C. § 103 as being unpatentable over Sandmeier ‘808 in view of Sandmeier ‘973 and Lin is reversed. The rejection of claim 14 under 35 U.S.C. § 103 as being unpatentable over Sandmeier ‘808 in view of Sandmeier ‘973 and Hediger is reversed. Appeal 2020-005882 Application 15/486,662 7 The rejection of claims 15–20 and 22 under 35 U.S.C. § 103 as being unpatentable over Hediger in view of Sandmeier ‘973 is reversed. The rejection of claim 21 under 35 U.S.C. § 103(a) as being unpatentable over Hediger in view of Sandmeier ‘973 and Sandmeier ‘808 is reversed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1–11, 13 103 Sandmeier ‘808, Sandmeier ‘973 1–11, 13 12 103 Sandmeier ‘808, Sandmeier ‘973, Lin 12 14 103 Sandmeier ‘808, Sandmeier ‘973, Hediger 14 15–20, 22 103 Hediger, Sandmeier ‘973 15–20, 22 21 103 Hediger, Sandmeier ‘973, Sandmeier ‘808 21 Appeal 2020-005882 Application 15/486,662 8 REVERSED