Ex Parte Bach et al

Patent Trials and Appeals BoardMar 29, 2019

13487575 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/487,575 06/04/2012 Alexander Bach 2543 7590 04/02/2019 ALIX, YALE & RISTAS, LLP 150 TRUMBULL STREET SIXTH FLOOR HARTFORD, CT 06103 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 ATTORNEY DOCKET NO. CONFIRMATION NO. GMH/491/US 6478 EXAMINER IANNUZZI, PETER J ART UNIT PAPER NUMBER 3716 NOTIFICATION DATE DELIVERY MODE 04/02/2019 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): ip@pctlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALEXANDER BACH, BERND KRUSE, and WOLFGANG BRUMMER Appeal2017-003286 Application 13/487,575 1 Technology Center 3700 Before JENNIFERD. BAHR, KENB. BARRETT, and FREDERICK C. LANEY, Administrative Patent Judges. LANEY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE P.H. Schule Miihlenbau GmbH (Appellant) appeals under 35 U.S.C. Â§ 134(a) from the Examiner's decision entered July 22, 2015 (hereinafter "Final Act.") rejecting claims 1-17 and 19-21.2 We have jurisdiction over this appeal under 35 U.S.C. Â§ 6(b). We REVERSE. 1 P.H. Schule Miihlenbau GmbH is the Applicant as provided in 37 C.F.R. Â§ 1.46 and is identified as the real party in interest Br. 3. 2 Claim 18 has been canceled. Br. 3. Appeal2017-003286 Application 13/487,575 INVENTION Appellant's invention relates "to a drum cutting machine having a rotary drum." Spec. ,r 1. Claims 1 and 11 are independent. Claim 1 is illustrative of the claimed invention, and reads as follows: 1. A drum cutting machine having a rotary drum defining an axis, with a generally circumferential lateral surface having a contour, and a plurality of blades with a cutting edge arranged along the lateral surface of the rotary drum, the lateral surface of the rotary drum being provided with a multiplicity of holes, wherein the blades are supported by a supporting part which matches the contour of the lateral surface, the supporting part is a one-piece element having a first bearing surface and a second bearing surface for each blade, and the first and second bearing surfaces are in contact with each of the blades and define a position of the cutting edge. REJECTIONS The following rejections are before us for review: I. The Examiner rejected claims 8 and 19 under 35 U.S.C. Â§ 112, first paragraph, for failing to comply with the written description requirement. II. The Examiner rejected claims 8 and 19 under 35 U.S.C. Â§ 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. III. The Examiner rejected claims 1-17 and 19-21 under 35 U.S.C. Â§ 103(a) as unpatentable over Kipp (US 1,672,945, iss. June 12, 1928) and Amfield (US 540,570, iss. June 4, 1895). 2 Appeal2017-003286 Application 13/487,575 ANALYSIS Rejection I - Written Description The Examiner determines that claims 8 and 19, which both ultimately depend from claim 1, contain subject matter the Specification fails to describe in such a way as to reasonably convey to a skilled artisan that Appellant had possession of the invention claimed. Final Act. 3--4. Although not entirely clear from the Final Action, it appears as though the Examiner rejected claims 8 and 19 as lacking written description support in the Specification because there "is an apparent contradiction" with these claims and the language in claim 1 reciting, "the supporting part is a one- piece element." See id. The Examiner's written description rejection in the Final Action lacks a clear explanation for why claims 8 and 19 do not find written description support in the Specification, however. The Examiner's rejection instead focuses on the "one-piece" description of the "supporting part" found in claims 1 and 11 and describes it as a "new limitation [that] is concerned with the unity of the supporting part as a single piece, whereas the originally filed claim and the specification are only concerned with where the supporting part contacts the blades." Id. The Examiner concludes "[t]his limitation does not have support in the original disclosure." Id. at 4. In its Brief, Appellant argues that claims 8 and 19 recite "a structural element," which is a composition of a plurality of components, and the "one- piece" supporting part is a component of this composition. Br. 10. Appellant adds, "[a]n assembly with a plurality of one-piece supporting parts does not contradict the language recited in claim 1." Id. Addressing the Examiner's remarks about the lack of support in the original disclosure for 3 Appeal2017-003286 Application 13/487,575 reciting "the supporting part is one-piece element," Appellant contends that written description support can be found at paragraphs 4 and 5 of the Specification and argue that the recited "one-piece" language was added to provide "nothing more than a mere clarification of the subject matter as originally claimed." Id. at 5---6. In the Answer, the Examiner responds that "claims 1 and 11 [have not been rejected] on the basis of new matter" and adds that there is no doubt the Specification provides written description support for the "the supporting part is one-piece element" limitation. Ans. 6. The Examiner explains, "[c]laim 1 may be read to have a 'one-piece' supporting part and still fall within the original disclosure, however claim 1 in view of dependent claims 8 and 19 present issues of new matter." Id. at 7. Turning to claims 8 and 19, the Examiner explains for the first time why these claims do "not comport with the prior recited supporting part and [do] not have support in the originally filed disclosure." Id. at 6-7. The Examiner determines that "it is not clear [ from claims 8 and 19] if the side plate is different from the supporting part" and that "the number of elements recited in claims 8 and 19 is larger than the number of elements in the original disclosure." Id. at 7. In addition, in view of paragraph 30 and Figures 3 and 4 of the Specification, the Examiner determines that the recited elements "a component" and "a side plate" lack sufficient support because "there are not enough structural elements that comport ... [with] all of these newly recited elements, and an understanding of the claims and recited elements cannot be logically maintained in view of the original disclosure." Id. at 8. Written description requires an evaluation of whether the Specification "clearly allow[ s] persons of ordinary skill in the art to 4 Appeal2017-003286 Application 13/487,575 recognize that [the inventor] invented what is claimed." Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (citation omitted). In this case, we find that the Examiner erred because the Specification clearly discloses the subject matter of claims 8 and 19. First, paragraph 12 of the Specification states: In order to fasten the supporting part to the machine, it is favorable for the supporting part to be an element of a structural element which can be connected in its entirety to the machine. Preferably, the structural element consists of two side plates and an intermediate plate, at least one of the side plates being in the form of a supporting part within the meaning of the invention. If each of the side plates has an undercut and the side plates are held at a suitable distance from one another by the intermediate plate, the fastening means can be supported on both undercuts at the same time and extend through between the two side plates in the direction of the blade. Second, describing Figures 3 and 4, paragraph 30 of the Specification states, the structural element 19 is composed of three components, specifically of two side plates and an intermediate plate 22 arranged between the side plates. The side plates have a substantially semicircular contour which corresponds to the lateral surface of the rotary drum 14. A blade holder for each of the blades 20 is formed in each case in the side plates, so that the side plates each form a supporting part 23 within the meaning of the invention. Both of the above paragraphs demonstrate clearly to a skilled artisan that Appellant invented what claims 8 and 19 recite-"wherein the supporting part is a component of a structural element composed of two side plates and an intermediate plate, the side plates being held at a distance from one another by the intermediate plate." The Examiner appears to suggest erroneously that identifying "the supporting part" as "a component" in claims 8 and 19 requires it to be 5 Appeal2017-003286 Application 13/487,575 separate and distinct from the "side plates" comprising the structural element. The term "component," however, simply requires the supporting part to be incorporated into the structural element's composition and the Specification evidences that the Appellant was in possession of "side plates" with a "supporting part" formed therein. Therefore, we do not sustain the Examiner's rejection of claims 8 and 19 as lacking sufficient written description support in the Specification. Rejection II-Indefiniteness Claims 8 and 19 recite, "wherein the supporting part is a component of a structural element composed of two side plates and an intermediate plate, the side plates being held at a distance from one another by the intermediate plate." Br. 13, 15. The Examiner has determined that this limitation is unclear and indefinite "because it contradicts the 'one-piece' limitation of the supporting part in claim 1 and it is not clear how the supporting parts become part of the structural element." Final Act. 4--5; see also Ans. 11 (stating claims 8 and 19 are confusing and do "not clearly recite a non-contradictory structural relationship between the 'one-piece' supporting part and the multiple pieces" recited in these claims). Appellant argues that the Examiner erred, however, because claims 8 and 19 define a structural element for which the "one-piece" supporting part is a component of the assembly and having a plurality of one-piece supporting parts as components of the assembly does not contradict the language of claim 1. To evaluate whether a claim is sufficiently definite, we must consider "whether those skilled in the art would understand what is claimed when the claim is read in light of the specification." Morton Int 'l, Inc. v. Cardinal Chem. Co., 5 F.3d 1464, 1470 (Fed. Cir. 1993). We do not agree with the 6 Appeal2017-003286 Application 13/487,575 Examiner that a contradiction exists between independent claim 1 and dependent claims 8 and 9 regarding the structural relationship of the recited supporting part. Although claim 1 recites supporting the blades by a supporting part that is a one-piece element, it does not limit the claim to having only a single one-piece supporting part. See Br. 12; see also Spec. ,r 6 (explaining that "[ o ]ne supporting part is usually not enough to hold the blade securely," and, "[t]herefore, there is preferably provided a second supporting part" for each blade). Claims 8 and 19 add to claim 1 a "structural element," which is defined as having "two side plates and an intermediate plate, the side plates being held at a distance from one another by the intermediate plate" and the supporting part must be a component of this element. In view of the Specification (see Spec. ,r,r 12, 30, Figs. 3, 4), a skilled artisan would understand claims 8 and 19 recite a "structural element" that incorporates the one-piece supporting part, as recited in claim 1, into its composition via each of the two side plates. As such, each of the side plates, and its respective supporting part, forms an individual one-piece unit that is assembled with another such side plate, and its respective supporting part, and the intermediate plate to create the structural element, which is consistent with how Appellant describes the "structural element" in the Specification. Therefore, we do not sustain the Examiner's indefiniteness rejection of claims 8 and 19. Rejection III- Obviousness The Examiner determines claims 1-17 and 19-21 would have been obvious in view of Kipp and Amfield. Final Act. 5-10. For independent claims 1 and 11, the Examiner finds that Kipp's drum cutting machine is 7 Appeal2017-003286 Application 13/487,575 different than these claimed apparatuses because the supporting part (24) is not "a one-piece element having a first bearing surface and a second bearing surface for each blade, and the first and second bearing surfaces are in contact with each of the blades and define a position of the cutting edge." Id. at 5---6. The Examiner finds that Amfield discloses a cutting machine with such a supporting part as "a means to hold blades for use with a beater instead of a drum." Id. at 6 ( citing Amfield 1, 11. 1-16, 46-58, Fig. 2). The Examiner reasons that, in view of what Amfield shows was known at the time of the invention, it would have been obvious to modify the supporting part in Kipp's drum cutting machine to have the structural limitations claims 1 and 11 recite because: the references are from a similar art and concerned with a similar problem, i.e. holding stator blades around a rotary element, it would have been obvious to one having ordinary skill in the art at the time of invention to construct the drum cutting machine in Kipp with a one-piece supporting part so as to allow for quick removal and replacement of blades as taught by Amfield. Id. ( citing Amfield 1, 11. 90-97). Appellant challenges whether the Examiner's reasoning properly establishes that a skilled artisan would have modified the apparatus Kipp discloses in the manner claimed. Br. 8-9. Appellant argues that "Amfield is not relevant art and there is no teaching or motivation to modify the cutter of Kipp with the hammering machine of Amfield." Id. at 8-9. Appellant contends a skilled artisan would have recognized significant differences between the design and operation of the Kipp and Amfield apparatuses. Id. Appellant argues "[t]he cutting device of Kipp provides no motivation to incorporate a hammering device such as Amfield given the different 8 Appeal2017-003286 Application 13/487,575 structure and functionality of the devices and the entirely different precision of the ultimate cut material." Id. at 9. The Examiner's reasoning is deficient in its finding that a skilled artisan would have had a motivation to combine Kipp and Amfield in the way claims 1 and 11 recite and would have had a reasonable expectation of success in doing so. The Examiner concludes a skilled artisan would have understood that the combination of Kipp and Amfield would "allow for quick removal and replacement of blades," (Final Act. 6), but that reasoning seems to say no more than that of a skilled artisan, once presented with the two references, would have understood that they could be combined. The Federal Circuit, however, has held that such reasoning "is not enough: it does not imply a motivation to pick out those two references and combine them to arrive at the claimed invention." Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 993-994 (Fed. Cir. 2017). The Examiner fails to provide any persuasive evidence or technical reasoning to demonstrate why a skilled artisan addressing a drum cutting machine, such as the one Kipp discloses, would have been motivated to look to grates for cotton-lappers, such as the one Amfield discloses. Although the Examiner states generically that the use of these apparatuses are similar because "a bulk material is broken up through a series of blades," (Ans. 11), this generalized correlation does little, if anything, to explain why a skilled artisan would have viewed these apparatuses as facing similar problems and as having relatable operational characteristics. Although the Examiner disagrees with Appellant that the Kipp machine is for cutting and the Amfield apparatus is for hammering, the Examiner provides no evidence or explanation to support this position. Moreover, this position appears to 9 Appeal2017-003286 Application 13/487,575 contradict the Examiner's earlier finding that "Amfield teaches this blade holding arrangement as a means to hold the blades for use with a beater instead of a drum" in the Final Action (Final Act. 6, ( emphasis added)) and apparent affirmance of this position in the Answer (Ans. 11 (acknowledging "Kipp uses a drum and Amfield uses a hammer")). By failing to address these differences and explain why a skilled artisan would have viewed the operational characteristics of grates for cotton-lappers relatable to a drum cutting machine, the Examiner failed to set forth properly a prima facie case for a reason to combine Kipp and Amfield in the manner independent claims 1 and 11 recite. Therefore, because the Examiner's rejection of dependent claims 2- 10, 12-17, and 19-21 do not cure the above defect with the rejection independent claims 1 and 11, we do not sustain the Examiner's obviousness rejection of independent claims 1-17 and 19-21. DECISION The Examiner's rejections of claims 1-17 and 19-21 are reversed. REVERSED 10