Ex Parte Baumer et al

Patent Trial and Appeal BoardNov 15, 2012

11703435 (P.T.A.B. Nov. 15, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KLAUS BAUMER, KLAUS GINSBERG, and MATTHIAS TUSCHHOFF ____________ Appeal 2010-009919 Application 11/703,435 Technology Center 3700 ____________ Before STEFAN STAICOVICI, BENJAMIN D. M. WOOD, and SCOTT A. DANIELS, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-009919 Application 11/703,435 2 STATEMENT OF THE CASE Klaus Baumer et al. (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting under 35 U.S.C. § 103(a) claims 13-19 as unpatentable over Ginzburg (US 2001/0020379 A1, pub. Sep. 13, 2001) and Peterson (US 4,155,242, iss. May 22, 1979). Claims 1-12 and 20- 36 have been cancelled. We have jurisdiction over this appeal under 35 U.S.C. § 6. THE INVENTION Appellants’ invention relates to a device “for coiling thin metal strip” including an expansion adapter 20 having support elements 19 in “one or more radial planes of the expansion adapter 20.” Spec. 1, l. 4; Spec. 19, ll. 7-8; and fig. 5. Claim 13, the sole independent claim, is representative of the claimed invention and reads as follows: 13. Device for coiling thin metal strip (1), especially hot- rolled or cold-rolled thin steel strip, with a drivable coiler mandrel (3a), which can be adjusted in diameter by means of expandable segments (3b) and can be adjusted to a coil inside diameter (14) and to a diameter for detaching the finished coil (11), wherein an expansion adapter (20) is provided, which can be inserted completely into an open eye (15) of the coil prior to expansion, the expansion adaptor being expandable only in a radial plane. SUMMARY OF DECISION We REVERSE. Appeal 2010-009919 Application 11/703,435 3 ANALYSIS The Examiner found that Ginzburg discloses all the limitations of independent claim 13 with the exception of an expansion adapter. Ans. 3. The Examiner further found that “Peterson discloses an expansion adapter (22’) that is expandable only in a radial plane.” Id. Appellants argue that “[t]he jaws 22′ of Peterson do not expand in only a radial plane. Instead, they expand along a curved path.” Br. 6. In response, the Examiner finds that an ordinary and customary meaning of the term radial is “‘characterized by divergence from a center.’” Ans. 5. Thus, according to the Examiner, “because the jaws (22’) [of Peterson] diverge in an outward manner from the center of the eye of the coil to contact the inner surface winding of the eye of the coil,” Peterson satisfies the limitation of “expanding in only a radial plane.” Id. At the outset, we note that because expansion of Peterson’s jaws 22′ occurs by pivoting the jaws about pins 24, we agree with Appellants that jaws 22′ of Peterson expand along an arcuate path. See, e.g., Peterson, fig. 2. Although we appreciate the Examiner’s position that jaws 22′ diverge in an outward manner from the center of the eye of Peterson’s coil, that is, they expand radially, we do not agree that jaws 22′ are “expandable only in a radial plane,” as called for by independent claim 13. See Br., Claims Appendix. Emphasis added. Claims are construed 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 Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions which render phrases in claims superfluous). The Examiner’s interpretation of “expandable only in a radial plane” as covering an expansion along a curved Appeal 2010-009919 Application 11/703,435 4 path, in effect renders meaningless, or superfluous, the term “only.” Since an arcuate trajectory includes both radial and axial components, we do not see how Peterson’s jaws 22′ are “expandable only in a radial plane.” Emphasis added. Therefore, the combined teachings of Ginzburg and Peterson do not disclose an expansion adapter “expandable only in a radial plane,” as called for by independent claim 13. Accordingly, we cannot sustain the rejection of independent claim 13, and its dependent claims 14-19 under 35 U.S.C. § 103(a) as unpatentable over Ginzburg and Peterson. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988) (If an independent claim is nonobvious under 35 U.S.C. § 103, then any claim dependent therefrom is nonobvious). SUMMARY The decision of the Examiner to reject claims 13-19 is reversed. REVERSED mls