Ex Parte Becker et al

Patent Trial and Appeal BoardMar 28, 2019

13704528 (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/704,528 12/14/2012 26646 7590 04/01/2019 HUNTON ANDREWS KURTH LLP 200 Park A venue NEW YORK, NY 10166 FIRST NAMED INVENTOR Gunter Becker 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. 512604.0246396 (96) 4830 EXAMINER FREAY,CHARLESGRANT ART UNIT PAPER NUMBER 3746 NOTIFICATION DATE DELIVERY MODE 04/01/2019 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): uspto@kenyon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GUNTER BECKER and DIRK DEGEN Appeal 2018-007778 Application 13/704,528 1 Technology Center 3700 Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and TARA L. HUTCHINGS, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. Â§ 134(a), the Appellants appeal from the Examiner's decision rejecting claims 28-30 under 35 U.S.C. Â§ 112 (pre- AIA), first paragraph, as failing to comply with the enablement and written description requirements. 2 We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b). We REVERSE. 1 "The real party in interest in the present appeal is SEW-EURODRIVE GmbH & Co. KG." Appeal Br. 2. 2 The Examiner has withdrawn the rejections of claims 16, 20, 25, and 27. Ans. 6. Appeal 2018-007778 Application 13/704,528 STATEMENT OF THE CASE Subject Matter on Appeal The Appellants' invention pertains "to a method for controlling a delivery device having a connecting rod and at least one balance weight." Spec. 1 :7-9. Claim 25, reproduced below, is illustrative of the subject matter on appeal. 25. A method for controlling a device having a connecting rod and at least one weight plate connected to the connecting rod via a pivot bearing, the weight plate including at least one track for displaceably accommodating at least one balance weight, comprising: driving the connecting rod by a driven shaft that is connected to the weight plate and an electric drive, wherein the electric drive includes a gear unit driven by an electric motor; recording an effective power of the electric drive based on a rectifier supplying the electric motor; and shifting the at least one balance weight along the at least one track as a function of the recorded effective power with at least one drive mounted on the weight plate. ANALYSIS Enablement Claim 28 recites, "regulating the second actual value toward a second setpoint value in that a displacement of the pivot bearing is used as an actuating variable of one of the first controller and the second controller, in order to optimize a delivery rate." Appeal Br., Claims App. The Examiner determines that claim 28 fails to comply with the enablement requirement because the Specification fails to teach those skilled in the art how to make and/or use the subject matter of the claim without undue experimentation. Ans. 2--4. 2 Appeal 2018-007778 Application 13/704,528 Determining whether any necessary experimentation is undue involves considering relevant factors including, but not limited to: (1) the quantity of experimentation necessary; (2) the amount of direction or guidance presented; (3) the presence or absence of working examples; (4) the nature of the invention; ( 5) the state of the prior art; ( 6) the relative skill of those in the art; (7) the predictability or unpredictability of the art; and (8) the breadth of the claims. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). "Whether undue experimentation is needed is not a single, simple factual determination, but rather is a conclusion reached by weighing many factual considerations." Id. The Examiner suggests that all of the Wands factors were considered and that factors (1 ), (2), and (3) "have not been satisfactorily provided." 3 See Ans. 3--4, 9--10. We are not convinced that the Examiner properly weighed all of the Wands factors. See Reply Br. 3. For example, the Examiner considered factor (1 ), the quantity of experimentation necessary, as not being satisfactorily being provided. The record, however, fails to contain any meaningful discussion of that factor. See id. Additionally, it is unclear if the Examiner determined that other factors weigh against the determination of undue experimentation and, if so, to what extent. See id. For example, the Examiner fails to directly address on the record: ( 4) the nature of the 3 The Examiner references Manual of Patent Examiner Procedure (MPEP) Â§ 2164.0l(a), "Undue Experimentation Factors," and specifically, factors F, G, and H, which correspond to factors 2, 3, and 1, respectively. See Ans. 3, 9--10. 3 Appeal 2018-007778 Application 13/704,528 invention; ( 6) the relative skill of those in the art; and (7) the predictability or unpredictability of the art. See id. Although the Examiner does not explicitly reference factor (8), the breadth of the claims, the record suggests that the Examiner considered this factor. See Ans. 7-9. The Examiner determines that the "regulating" step "requires that the pivot bearing be translated relative to the weight plate." Id. at 3. The Examiner's concern with the breadth of claim 28 appears to be based on the lack of discussion in the Specification of "the mechanism for making the pivot bearing 6 translate relative to the weight plate 8." Id. As pointed out by the Appellants, the step of "regulating the second actual value toward a second setpoint value in that a displacement of the pivot bearing is used as an actuating variable of one of the first controller and the second controller, in order to optimize a delivery rate" is not directed to the particular mechanism for making the pivot bearing 6 translate relative to the weight plate 8. See Appeal Br. 3--4, 6, Reply Br. 2. Therefore, the Examiner's rejection of claim 28 as failing to comply with the enablement requirement is weakened because of the overreliance on the lack of discussion in the Specification and drawings of a specific mechanism for making pivot bearing 6 translate relative to weight plate 8. For example, factor (2) the amount of direction or guidance presented. Notably, the Appellants point to the Specification at page 2, lines 19-22 and page 10, lines 5-9, and Figures 1 and 2, as direction and guidance for the "regulating" step. See Appeal Br. 5. In response to the disclosure pointed out by the Appellants, the Examiner focuses on the lack of a mechanism to perform the "regulating" step. See Ans. 8-9. 4 Appeal 2018-007778 Application 13/704,528 Thus, we do not sustain the Examiner's rejection of claims 28-30 as failing to comply with the enablement requirement. Written Description Claim 28 recites multiple steps including "determining a local maximum from the characteristic of the effective power" and "regulating the second actual value toward a second setpoint value in that a displacement of the pivot bearing is used as an actuating variable of one of the first controller and the second controller, in order to optimize a delivery rate." Appeal Br., Claims App. The Examiner finds that the "regulating" step fails to comply with the written description requirement. Ans. 5. The Examiner's finding appears to be based on a construction of the "regulating" step that requires "a mechanism or structure which would allow the translation of the pivot bearing on a weight plate." Id. As discussed above, the "regulating" step is not directed to the particular mechanism for making the pivot bearing 6 translate relative to the weight plate 8. See Appeal Br. 6-7. And, as pointed out by the Appellants, the Specification at page 2, lines 19-22 and page 10, lines 5-9, along with Figures 1 and 2, adequately discloses the "regulating" step. See id. at 7. Additionally, the Examiner rejects claim 28 as failing to comply with the written description requirement on a more general basis that appears to reference the "determining" and "regulating" steps. See Ans. 5---6. The Appellants do not appear to appreciate the basis for the Examiner's reference, but nonetheless contend that the Examiner's rejection is based on an improper interpretation of claim 28. See Appeal Br. 7. In response, the 5 Appeal 2018-007778 Application 13/704,528 Examiner explains that "the disclosure merely sets forth the input to the controller, the desired output from the controller[,] and a resulting action," but "provides no teaching of what the controller does 'inside' the controller with the received information to accomplish the desired result of translating the pivot bearing relative to the[] weight plate as claimed by the 'regulating [step']." Ans. 13-14; see also Final Act. 6-7. However, the Examiner fails to explain how claim 28 requires the "determining" and "regulating" steps to be performed by a controller. Notably, the "determining" step does not reference a controller; and, although the "regulating" step refers to a "first controller and the second controller," the Examiner does not explain on the record how the "regulating" step as claimed must be performed by a controller. For the above reasons, we determine that the Examiner fails to adequately explain, on the record, why the Specification does not convey with reasonable clarity to those skilled in the art that, as of the filing date sought, that the Appellants were in possession of the disputed subject matter of claim 28. Thus, we do not sustain the Examiner's rejection of claims 28-30. DECISION We REVERSE the Examiner's decision rejecting claims 28-30. REVERSED 6