Ex Parte Hafellner et al

Patent Trial and Appeal Board

Nov 20, 2012

10956611 (P.T.A.B. Nov. 20, 2012)

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.
10/956,611 10/01/2004 Reinhard Hafellner 04-517 6739
34704 7590 11/20/2012
BACHMAN & LAPOINTE, P.C.
900 CHAPEL STREET
SUITE 1201
NEW HAVEN, CT 06510
EXAMINER
CASTELLANO, STEPHEN J
ART UNIT PAPER NUMBER
3781
MAIL DATE DELIVERY MODE
11/20/2012 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 REINHARD HAFELLNER, MICHAEL PICHLER,
ANDREAS ZIEGER and GUNTHER KRAINZ
________________

Appeal 2011-000139
Application 10/956,611
Technology Center 3700
________________

Before PHILLIP J. KAUFFMAN, MICHAEL L. HOELTER and
HYUN J. JUNG, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-000139
Application 10/956,611

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STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a
rejection of claims 1-3 and 9. Br. 4. Claim 8 has been canceled and claims
4-7 and 10-15 have been withdrawn. Br. 4. We have jurisdiction under 35
U.S.C. § 6(b). We REVERSE.

THE CLAIMED SUBJECT MATTER
The disclosed subject matter pertains to a tank for cryogenic liquids
which is installed in motor vehicles. Spec. para. [0001]. Sole independent
claim 1 is representative of the claims on appeal and is reproduced below:
1. A tank for cryogenic liquids for use in a
motor vehicle comprises an outer container, an
inner container suspended in the outer container by
spatially arranged strut means for compensating
for displacements of the inner container due to
thermal expansion, and selectively actuatable
coupling means for selectively securing the inner
container within the outer container, said coupling
means being located between the outer container
and inner container, and said coupling means being
selectively movable from a first position wherein
said coupling means is disengaged when the motor
vehicle is at a standstill to a second position
wherein said coupling means is engaged when the
vehicle is in motion for securing the inner
container within the outer container.

REFERENCE RELIED ON BY THE EXAMINER
Greenberg US 3,446,388 May 27, 1969

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THE REJECTIONS ON APPEAL
1. Claims 1-3 and 9 are rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement. Ans. 4.
2. Claims 1-3 and 9 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 Applicants regard as the invention.
Ans. 6.
3. Claims 1, 2 and 9 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Greenberg. Ans. 7.

ANALYSIS
The rejection of claims 1-3 and 9 as failing to comply with the written
description requirement
To satisfy the written description requirement, the disclosure must
convey with reasonable clarity to skilled artisans that Appellants were in
possession of the claimed invention as of the filing date. Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). The inquiry into
whether the description requirement is met is a question of fact. In re
Wertheim, 541 F.2d 257, 262, (CCPA 1976).
The Examiner identifies certain limitations found in claims 1 and 2,
specifically, the claim terms “strut means for …,” “coupling means for …”
and “actuator means for …,” and has determined that they are not
“supported by the original disclosure.” Ans. 4. The Examiner questions
whether sufficient disclosure has been provided to describe the operation of
the claimed “strut means for;” states that “there is no specific reference to a
particular structure which forms a coupling means” and states “that
appellant[s] only specified an electromagnet as an example but failed to state
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what else could become the actuator that isn't an electromagnet.” Ans. 5, 8-
10.
Appellants traverse this written description rejection indicating where
the original disclosure provides support for these claim limitations. Br. 8.
The paragraphs identified by Appellants1, as well as other paragraphs2
in the original disclosure, persuade us that Appellants were in possession of
the claimed invention as of the filing date. Accordingly, we reverse the
Examiner’s rejection based on lack of written description.

The rejection of claims 1-3 and 9 as being indefinite
“A decision on whether a claim is invalid under § 112, 2d ¶, requires a
determination of whether those skilled in the art would understand what is
claimed when the claim is read in light of the specification.” Orthokinetics,
Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986).
Here, the Examiner addresses two of the claim limitations discussed
supra, i.e. “strut means” and “coupling means.” 3 Ans. 6. Regarding the
“strut means” limitation, the Examiner asserts that “35 U.S.C. 112, sixth
paragraph is not invoked because the strut modifies the claimed function”
(italics added). Ans. 6. Appellants disagree stating that “[i]t is perfectly
clear from the instant disclosure that elements 11 constitute the strut means.”
Br. 8.

1 Paragraphs [0013], [0028]-[0030].
2 See also paragraphs [0001], [0006]-[0009], [0011], [0016] and [0031]-
[0033].
3 The Examiner does not refer to these limitations as “strut means for” and
“coupling means for” as recited in claim 1. Ans. 6.
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Regarding the claim term “strut means for” the Examiner states that
the term “strut” is structural while the term “means for” triggers 35 U.S.C. §
112, sixth paragraph, and by mixing structural language and means-plus-
function language the claim is rendered confusing and indefinite. Ans. 6,
11. For the reasons that follow, the Examiner’s rejection is not based upon
the proper analysis, and is internally inconsistent.
The test of indefiniteness is not whether structural terms and “means
for” language have been mixed. Rather, use of the term “means” raises a
presumption that the inventor used the term to invoke 35 U.S.C. § 112, sixth
paragraph. Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1375 (Fed. Cir.
2003). “This presumption can be rebutted when the claim, in addition to the
functional language, recites structure sufficient to perform the claimed
function in its entirety.” Id. (citation omitted). Thus, the proper inquiry is
whether a strut is sufficient structure to perform the function of
“compensating for displacements of the inner container due to thermal
expansion” as recited in claim 1.
The Examiner determines a strut is sufficient structure to perform the
claimed function, yet concludes that this renders the claim confusing (Ans.
6). To the contrary, if a strut is sufficient structure to perform the claimed
function, then a person of ordinary skill in the art would recognize that 35
U.S.C. § 112, sixth paragraph, is not triggered. See Altiris. Therefore, we
reverse the Examiner’s rejection that the claim term “strut means” is
indefinite.
Regarding the claim term “coupling means,” the Examiner
acknowledges that this limitation is a means plus function limitation but that
“the written description fails to clearly link or associate the disclosed
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structure, material, or acts to the claimed function” and as such, one skilled
in the art would not be able to “recognize what structure, material, or acts
perform the claimed function.” Ans. 6-7, see also 11. Appellants disagree
and contend that “[i]t is perfectly clear from the instant disclosure that the
abutments and supporting faces constitute the coupling means” and again
Appellants refer to Paragraph [0029] of the original disclosure. Br. 9.
Based on the record before us, we are persuaded that “those skilled in the art
would understand what is claimed when the claim is read in light of the
specification.” Orthokinetics, 806 F.2d at 1576. Accordingly, we reverse
the Examiner’s rejection that the claim term “coupling means” is indefinite.

The rejection of Claims 1, 2 and 94 as being anticipated by Greenberg
The Examiner finds that Greenberg discloses all the limitations of
these claims. Ans. 7-8. More specifically, the Examiner finds that the
claimed “coupling means” are provided by trunnion 35 and rods 31, 32 on
the left side of Greenberg’s Figure 1. Ans. 7. Appellants traverse stating
“[t]his structure is not equivalent to the claimed “selectively actuatable
coupling means.” Br. 10. The Examiner acknowledges that “Appellant[s]
identif[y] the coupling means structure as only abutments and supporting
faces” (Ans. 11, see also Br. 9-10) and accordingly, the Examiner finds that
Appellants’ abutments are disclosed by the face of Greenberg’s brackets 33

4 The Examiner states “[c]laim 3 would be allowable if rewritten to
overcome the rejection(s) under 35 U.S.C. 112, 2nd paragraph, set forth in
this Office action and to include all of the limitations of the base claim and
any intervening claims.” Non-Final Office Action dated Feb. 26, 2010, pg.
6.
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and Appellants’ supporting faces are disclosed by the outer surface of
Greenberg’s trunnion 35. Ans. 11.
In order for a prior art element to meet a section 112, paragraph 6
means-plus-function limitation, the prior art element must either be the same
as the disclosed structure or be a section 112, paragraph 6 equivalent. In re
Donaldson Co. 16 F.3d 1189, 1195 (Fed. Cir. 1994). Two structures may be
“equivalent” for purposes of section 112, paragraph 6 if they perform the
identical function, in substantially the same way, with substantially the same
result. Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1364 (Fed.
Cir. 2000).
The Examiner does not contend that the structure of Greenberg’s rods
31, 32, and more particularly the face of bracket 33, is the same as
Appellants’ abutments 13 (Fig. 1 embodiment) or 23 (Fig. 2 embodiment).
Likewise, the Examiner does not contend that the structure of Greenberg’s
trunnion 35 is the same as the structure of Appellants’ faces 12 (Fig. 1
embodiment) or 22 (Fig. 2 embodiment). Furthermore, there is no
discussion by the Examiner that Greenberg’s structure is the equivalent of
Appellants’ structure by explaining that Greenberg’s structure performs the
identical function in substantially the same way with substantially the same
result. Instead, the Examiner places the burden on Appellants stating that
Appellants have not provided reasoning that “the examiner’s interpretation is
without merit” and more specifically that Appellants have failed “to rebut
examiner’s statement of rejection.” Ans. 11.
We disagree with the Examiner’s analysis. Donaldson provides
instruction as to the requirements required for a prior art element to meet a
section 112, paragraph 6 means-plus-function limitation. We are not
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persuaded that the Examiner’s analysis has met these requirements. Further,
even should the Board conduct such an analysis, there is no indication that
Greenberg’s identified abutments and faces are movable towards and away
from each other as such structure is described as doing so in Appellants’
Specification. Spec. paras. [0006] and [0030]. Accordingly, we reverse the
Examiner’s rejection of claims 1, 2 and 9 as being anticipated by Greenberg.

DECISION
The rejections of claims 1-3 and 9 are reversed.

REVERSED

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