Ex Parte Hefele et al

Patent Trial and Appeal BoardAug 31, 2017

12613311 (P.T.A.B. Aug. 31, 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. 12/613,311 11/05/2009 Christian Hefele 105440.62028US 6039 23911 7590 09/05/2017 CROWELL & MORING LLP INTELLECTUAL PROPERTY GROUP P.O. BOX 14300 WASHINGTON, DC 20044-4300 EXAMINER BAINBRIDGE, ANDREW PHILIP ART UNIT PAPER NUMBER 3754 NOTIFICATION DATE DELIVERY MODE 09/05/2017 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): edocket @ crowell. com tche @ crowell. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTIAN HEFELE, HANS PETER LEDERLE, and FRANZ HEIBERGER Appeal 2016-004429 Application 12/613,3 ll1 Technology Center 3700 Before JENNIFER D. BAHR, FREDERICK C. LANEY, and ARTHUR M. PESLAK, Administrative Patent Judges. LANEY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Christian Hefele et al. (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1—8 under 35 U.S.C. § 103(a) as unpatentable over O’Neil (US 679,983, iss. Aug. 6, 1901) and Faerber (US 5,150,631, iss. Sept. 29, 1992). We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We REVERSE. 1 According to Appellants, the real party in interest is Hilti Aktiengesellschaft. Appeal Br. 1 (filed Aug. 17,2015). Appeal 2016-004429 Application 12/613,311 INVENTION Appellants’ invention “relates to a squeeze-out dispenser for containers containing compounds having at least one plunger, which has a profile along its longitudinal extension, and having a drive unit for the at least one plunger with a drive meshing with the profile of the at least one plunger.” Spec. 12. Claims 1 and 8 are independent claims. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A squeeze-out dispenser for containers containing compounds, comprising: a plunger which has a push rod along a longitudinal extension that selectively pushes a piston, wherein the push rod includes through-holes spaced apart from one another at a uniform interval along substantially an entire length of the push rod, and wherein the push rod is movable over the entire length of the push rod only in a single dimension; and a drive, wherein the drive includes an engagement; wherein the engagement of the drive engages with at least several of the through-holes of the push rod for selectively advancing the plunger. Appeal Br. 9 (Claims App.). ANALYSIS The Examiner’s rejection of claims 1—8 depends on the combination of O’Neil and Faerber. Final Act. 3^4. Appellants contend “one of ordinary skill in the art would not look to Faerber's cable-like drive cable for a motor vehicle to modify O’Neil’s rigid rack bar of a decorating machine.” Appeal Br. 7. In response, the Examiner determines, Although cake decorators and car part rack bars appear at first glance to be “non-analogous art,” both arts are concerned with trying to transfer power efficiently using as little weight as 2 Appeal 2016-004429 Application 12/613,311 possible in the smallest area possible. In that sense, the two arts are analogous “enough” to form a valid and proper 103 rejection of all of the claims. Ans. 6. Appellants argue the Examiner’s reason for finding Faerber “analogous ‘enough’” lacks evidentiary support. Reply Br. 3. We agree. In an instructive, non-precedential decision, the Federal Circuit states, it was the burden of the examiner, not [Appellant], to set forth a prima facie case explaining why a person of ordinary skill in the art would have been motivated to combine references in disparate technological fields. To satisfy this burden, the [examiner] must explain why a person of ordinary skill in the art would have found the prior art to be “reasonably pertinent to the problem of which the inventor was concerned.” In re Natural Alternatives, 2016 WF 4536573, at *4 (Fed. Cir. August 31, 2016) (citing, In re Kahn, 441 F.3d 977, 986—87 (Fed. Cir. 2006). Precedent provides guidance as to when a reference is reasonably pertinent to the problem: A reference is reasonably pertinent if... it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem. If a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection. Innovention Toys, LLC v. MGA Entm % Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011) (quoting Clay, 966 F.2d at 659). “The pertinence of the reference as a source of solution to the inventor’s problem must be recognizable with the foresight of a person of ordinary skill, not with the hindsight of the inventor’s successful achievement.” Scientific Plastic Products, Inc. v. Biotage AB, 766 F.3d 1355, 1359 (Fed. Cir. 2014). 3 Appeal 2016-004429 Application 12/613,311 Appellants’ invention is for a “a squeeze-out dispenser for containers containing compounds” and, more particularly, a specific design for the push rod that pushes the piston to dispense the contents. The Specification, at paragraphs 5 and 6, identifies the disadvantages with the prior art designs is that they are, “expensive to manufacture and prone to getting dirty because impurities such as dust, compound, or the like can get deposited on the tooth profile and thereby interfere with the meshing of the gear wheel acting as the drive means.” “The objective of the invention is creating a generic squeeze- out dispenser, which does not have the aforementioned disadvantages, wherein, in particular, the at least one plunger can be manufactured cost- effectively.” Spec. 1 6. Regarding the prior art, O’Neil discloses a decorating machine and states the problem with the previous devices is that they required one hand to operate the piston and the other to guide the cylinder to trace the design. O’Neil, col. 1,11. 14-47. The objective of the invention O’Neil discloses “is to provide a device for the production of relief-work in a more perfect and uniform manner and with greater rapidity.” Id. Faerber discloses a “flexible thermoplastic rack bar for meshing with a gear wheel, particularly for the drive of displaceable vehicle elements, like roof elements, sliding windows, and the like,” (col. 1,11. 5—8). Faerber states the disadvantages with the prior art devices is that they are expensive to manufacture because of the reinforcement design of the teeth and the tooth height design is constricted, “which has a detrimental effect on the transfer of force.” Faerber, col. 1,11. 5—25. The identified objective of Faerber is to “provide a flexible thermoplastic rack bar, which is easy to 4 Appeal 2016-004429 Application 12/613,311 manufacture, and has preselected cross-sectional dimensions which will facilitate an increased transfer of force.” Faerber, col. 1,11. 34—38. Appellants’ Specification and O’Neil fail to disclose any problems with the efficiency of transfer power, with the weight of the power transfer mechanisms, or with space used by the power transfer mechanisms. Even if Faerber can be characterized as disclosing, “trying to transfer power efficiently using as little weight as possible in the smallest area possible,” to be a recognized problem (Ans. 6), the Examiner does not identify any evidence, or technical reasoning, that explains why a skilled artisan would have characterized the problems Appellants and/or O’Neil faced similarly. Nor does the Examiner provide any evidence that supports the assertion that a skilled artisan would have viewed Faerber as having a purpose similar to Appellants’ claimed invention. As a result, this record does not support, by a preponderance of the evidence, the Examiner’s finding that Faerber discloses subject matter that logically would have commended itself to an inventor’s attention in considering problems associated with “squeeze-out dispensers.” Therefore, we do not sustain the Examiner’s rejection of claims 1-8. DECISION We reverse the Examiner’s decision to reject claims 1—8. REVERSED 5