Ex Parte Boehm et al

Patent Trial and Appeal BoardAug 29, 2017

12728660 (P.T.A.B. Aug. 29, 2017)

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. 12/728,660 03/22/2010 Daniel Boehm 298-496 5785 28249 7590 08/29/2017 DILWORTH & BARRESE, LLP Dilworth & Barrese, LLP 1000 WOODBURY ROAD SUITE 405 WOODBURY, NY 11797 EXAMINER QUANDT, MICHAEL M ART UNIT PAPER NUMBER 3745 MAIL DATE DELIVERY MODE 08/29/2017 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 DANIEL BOEHM, THOMAS LANDMANN, and RALF SPÄTH ____________ Appeal 2016-000818 Application 12/728,660 Technology Center 3700 ____________ Before EDWARD A. BROWN, WILLIAM A. CAPP, and ARTHUR M. PESLAK, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the non-final rejection of claims 1, 3–5, 7 and 11. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2016-000818 Application 12/728,660 2 THE INVENTION Appellants’ invention relates to a drive for a construction machine, such as an excavator. Spec. 1. Claim 1, taken from Appellants’ amendments of September 30, 2014, with paragraph indentations added, is reproduced below. 1. A drive for an excavator with a number of individual drives, including a slewing gear drive and at least one of a hoist drive, a bucket drive and an arm drive, wherein for the slewing gear drive two reversible adjusting units are provided, which are at least coupled with an energy accumulator, wherein one of the reversible adjusting units is connectable with a drive unit of the excavator, wherein the reversible adjusting units are hydraulic adjusting units, and wherein the adjusting units of the slewing gear drive are energetically coupled with the reversible adjusting units of the hoist drive. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: The following rejections are before us for review: 1. Claims 1, 3–5, 7, and 11 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the applicant regards as the invention. Ferris Metailler Shore Zhang US 1,793,438 US 3,172,552 US 6,971,463 B2 US 7,908,852 B2 Feb. 17, 1931 Mar. 9, 1965 Dec. 6, 2005 Mar. 22, 2011 Appeal 2016-000818 Application 12/728,660 3 2. Claims 1, 3–5, 7, and 11 are rejected under 35 U.S.C. § 102(b) as being anticipated by Ferris. 3. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Ferris. 4. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Ferris and Zhang. 5. Claims 1, 3, 4, 7, and 11 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Metailler and Shore. OPINION File History Leading Up to this Appeal Appellants filed a Non-Provisional Patent Application on March 22, 2010. The Examiner entered a Final Rejection dated July 1, 2014. Appellants subsequently filed an After-Final Amendment on September 30, 2014, presenting proposed claim amendments.1 Next, the Examiner issued an Advisory Action on October 10, 2014, in which the Examiner indicated that, for purposes of appeal, the proposed claim amendments will not be entered. In the Advisory Action, the Examiner indicated that the proposed amendments change the scope of the claims and, therefore, would require further consideration and/or search. Advisory Action. Thereafter, on October 28, 2014, Appellants filed a Request for Continued Examination (“RCE”). In the accompanying remarks submitted contemporaneously with the RCE, Appellants requested entry of the amendment and consideration of remarks contained in their After-Final Amendment. The Examiner then issued a Non-Final Action on November 7, 1 These are the claims under review in this appeal. Appeal 2016-000818 Application 12/728,660 4 2014. The Examiner stated that the Non-Final Action was issued in response to Appellants’ Amendments filed September 30, and October 28, 2014. Non-Final Action 2. The Examiner further stated that: The claims submitted with the After Final request on 9/30/14 were previously not entered as they required further consideration and/or search. The claims introduced matter that required further consideration, specifically 35 USC § 112, 2nd paragraph issues in Claim 1, which also affects all other claims being presented for examination, and Claim 11. Non-Final Action 2. Subsequently, Appellants filed a Notice of Appeal on February 6, 2015. On April 2, 2015, Appellants filed their Appeal Brief. Attached to the Appeal Brief is a Claims Appendix that purports to present pending claims 1, 3, 4, 5, 7, and 11. See Claims App. In response to the Appeal Brief, the Examiner issued an Examiner’s Answer on October 5, 2015. In the Answer, the Examiner maintains the rejections set forth in the Non-Final Action of November 7, 2014 and then states: Appellant has changed the claims on appeal versus those that were examined. It should be noted that appellant has altered the claims presented in the appeal brief filed 4/2/15 versus those that were treated in the Office Action mailed 11/7/14 which treated the set of claims filed 9/30/14 with no explanation. At least two differences are noted: a) Claim 3 has a different status identifier. b) Claim 1 carries the status identifier of "previously presented"; However Claim 1, line 9 is different than before and now reads "with the reversible adjusting units of the hoist hoisting gear drive" (emphasis examiner's). In the claims filed 9/30/14 Claim 1, lines 8-9 read "with the reversible adjusting units of the hoist drive" (emphasis examiner's). Ans. 9 (emphasis supplied by the Examiner). Appeal 2016-000818 Application 12/728,660 5 Our rules permit an appellant to submit a Reply Brief in reply to an Examiner’s Answer. See 37 C.F.R. § 41.41(a). However, in this particular case, Appellants did not file a Reply Brief, submit a corrected Claims Appendix, or otherwise respond to the Examiner’s observation that Appellants’ Claim Appendix did not accurately reflect the claims on appeal. Upon comparing the version of claim 1 set forth in the Claims Appendix with the version submitted in the amendment of September 30, 2014, it appears to us that Appellants intended to strike the words “hoisting gear” before the final word “drive” in claim 1, but then inadvertently included “hoisting gear” before “drive” at the end of the claim in the version supplied in the Claims Appendix. For purposes of this appeal, we will treat inclusion of the words “hoisting gear” toward the end of claim 1 in the Claims Appendix as an inadvertent typographical error. We will use the version of claim 1 submitted in the September 30, 2014, amendment as the claim on review in this appeal. Indefiniteness Claim 1 The first element of claim 1 recites: “a slewing gear drive and at least one of a hoist drive, a bucket drive and an arm drive.” The final element of claim 1 recites “the adjusting units of the slewing gear drive are energetically coupled with the reversible adjusting units of the hoist drive.” The Examiner finds that the final element identified above lacks antecedent basis. Non-Final Action 6. The Examiner further notes an internal consistency between broadly claiming “at least one of a hoist drive, Appeal 2016-000818 Application 12/728,660 6 a bucket drive, and an arm drive” and then later claiming only the narrower “the hoist drive.” Id. at 7. The Patent and Trademark Office can properly reject a claim as indefinite if the “claim is ambiguous, vague, incoherent, opaque, or otherwise unclear.” In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014). In their Appeal Brief, Appellants only argue the Examiner’s art rejection, but do not otherwise mention, much less argue, the Examiner’s indefiniteness rejection. See generally Appeal Br. Here, we agree with the Examiner that the meaning of claim 1 is sufficiently uncertain that a clarifying amendment should be required. Moreover, Appellants have effectively waived the right to challenge the Examiner’s rejection, which further warrants our sustaining the rejection. See 37 C.F.R. § 41.37(c)(1)(iv) (failure to separately argue claims); See also Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (“When the appellant fails to contest a ground of rejection to the Board, . . . the Board may treat any argument with respect to that ground of rejection as waived”). We sustain the Examiner’s indefiniteness rejection of claim 1. The indefiniteness of claim 1 also taints claims 3–5, 7, and 11, and we also sustain the Examiner’s indefiniteness rejection thereof. Claim 11 With respect to claim 11, the Examiner states: Claim 11 is indefinite as it does not detail how or where such "at least one cylinder is present" in relation to any claimed part of the apparatus or how the cylinder is connected with "two hydraulic adjusting units", or if these "two hydraulic adjusting units" have anything to do with the units introduced in claim 1. Appeal 2016-000818 Application 12/728,660 7 Non-Final Action 7. Appellants having not briefed or argued this rejection, it is summarily sustained. 37 C.F.R. § 41.37(c)(1)(iv), Hyatt, 551 F.3d at 1314. The Art Rejections We pro forma reverse the Examiner’s art rejections. Inasmuch as we have concluded that all pending claims are indefinite, the prior art rejections are necessarily based on speculative assumptions as to the meaning of the claims. In re Steele, 305 F.2d 859, 862 (CCPA 1962). DECISION The decision of the Examiner to reject claims 1, 3–5, 7, and 11 as indefinite is affirmed. The decision of the Examiner to reject claims 1, 3–5, 7, and 11 under 35 U.S.C. § 102(b) and/or 35 U.S.C. § 103(a) is pro forma reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED