Ex Parte Heudorfer et al

Patent Trial and Appeal Board

Aug 29, 2017

14235268 (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.
14/235,268 05/15/2014 Markus Heudorfer 5068.1137 5804
23280 7590 08/31/2017
Davidson, Davidson & Kappel, LLC
589 8th Avenue
16th Floor
New York, NY 10018
EXAMINER
MAESTRI, PATRICK J
ART UNIT PAPER NUMBER
3638
NOTIFICATION DATE DELIVERY MODE
08/31/2017 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):
ddk @ ddkpatent .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARKUS HEUDORFER, ULRICH BIRNBAUM,
HOLGER BASCHE, and THOMAS BRUNHUBER1
Appeal 2017-000660
Application 14/235,268
Technology Center 3600
Before MAHSHID D. SAADAT, STACEY G. WHITE, and
JOHN P. PINKERTON, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Non-Final Rejection of claims 13 and 17—25, which constitute all the claims
pending in this application.2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify Hilti Aktiengesellschaft, a corporation having a place
of business in Schaan, Liechtenstein, as the real party in interest. App. Br. 2.
2 The rejections of claims 15 and 16 were appealed (see App. Br. 4—6), but
these claims were subsequently canceled (see Reply Br. 2).
Appeal 2017-000660
Application 14/235,268
STATEMENT OF THE CASE
Appellants generally describe the disclosed and claimed invention as
follows:
The invention relates to an anchor channel, comprising a
channel element that has a plurality of identical fastening points
and a plurality of identical anchor elements that are attached to
the fastening points on the channel element. According to the
invention, it is provided that an additional element is attached to
at least one of the fastening points, said additional element
differing from the identical anchor elements.
Abstract.3
Claim 13 is illustrative and reads as follows (with the disputed
limitation emphasized):
13. An anchor channel, comprising:
a channel element having a plurality of identical
fastening points and a plurality of identical anchor elements, the
plurality of identical anchor elements having the same form and
dimensions and being attached to the identical fastening points
on the channel element, and
an additional element attached to one of the identical
fastening points instead of one of the identical anchor elements,
3 Our Decision refers to the Non-Final Office Action mailed Dec. 7, 2015
(“Non-Final Act.”), Appellants’ Appeal Brief filed June 7, 2016 (“App.
Br.”) and Reply Brief filed Oct. 11, 2016 (“Reply Br.”), the Examiner’s
Answer mailed Aug. 11, 2016 (“Ans.”), and the amended Specification filed
Jan. 27, 2014 (“Spec.”). The pages of the Briefs are not numbered. Thus,
we consider the title page of each brief as page 1, with the subsequent pages
numbered consecutively thereafter.
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Application 14/235,268
the additional element differing in form from the identical
anchor elements.
App. Br. 9 (App’x A).
Rejections on Appeal
Claims 13 and 17—25 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
Claims 13, 16, 17, 22, and 23 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Frohlich (US Patent No. 5,729,951; issued Mar. 24,
1998).
Claims 15, 18, 20, and 25 stand rejected under 5 U.S.C. § 103(a) as
being unpatentable over Frohlich and Heudorfer et al. (US 2010/0146904
Al; published June 17, 2010) (“Heudorfer”).
Claims 19 and 21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Frohlich and Graham (US Patent No. 938,662; issued
Nov. 2, 1909).
ANALYSIS
Rejection of Claims 13 and 17—25 under § 112, second paragraph
The Examiner concludes claim 13 is indefinite because “[i]t is unclear
if the ‘additional element’ in line 5 is a third element or if it is one of the
first two elements.” Non-Final Act. 3. The Examiner also concludes: “[i]t
is assumed that a second element is replaced by the additional anchor
element and will be examined accordingly.” Id.
In the Answer, the Examiner concludes the broadest reasonable
interpretation of “a plurality of identical fastening points” is “two elements”
and the broadest reasonable interpretation of “a plurality of identical anchor
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Application 14/235,268
elements” is “two.” Ans. 2. Thus, the Examiner concludes: “[i]t remains
unclear how the additional anchor element can be a third element attached to
one of the prior two anchoring points without replacing one of the prior two
elements.” Id.
Appellants argue claim 13 requires “a plurality of identical anchor
elements . . . and an additional element of a differing form.” App. Br. 3.
Appellants also argue claim 13 “clearly requires that two identical anchor
elements are attached” and “then a third additional element [is] attached to
one of the identical fastening points.” Reply Br. 2.
We are persuaded by Appellants’ arguments that the Examiner has
erred. In particular, we are persuaded that the Examiner’s indefiniteness
rejection is flawed because it is based on an incorrect construction of claim
13. Although claim terms are given their broadest reasonable interpretation
during prosecution {In re Am. Acad. ofSci. Tech. Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004)), “[a]bove all, the broadest reasonable interpretation must
be reasonable in light of the claims and specification.” PPC Broadband,
Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 747, 755 (Fed. Cir.
2016).
The drawings and their descriptions in Appellants’ Specification show
and describe an anchor channel having “a plurality of identical fastening
points 20, 20’, 20”’ . . . provided on the bed of the channel” (Spec. Fig. 1,
125), “an identical anchor element 30, 30’ [] attached to each fastening
point 20 and 20’” (Spec. Fig. 1,126), and “[a]n additional element 40
whose shape differs from that of the identical anchor elements 30, 30’ []
attached to the third fastening point 20”” (Fig. 1,127). Thus, the
Specification shows and describes an anchor channel having three identical
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Application 14/235,268
fastening points, with two identical anchor elements, each of which is
attached to one of the two fastening points, and a third “additional” element
of a different shape attached to the third fastening point.
Claim 13 recites a channel element having (1) “a plurality of identical
fastening points and a plurality of identical anchor elements, the plurality of
identical anchor elements . . . being attached to the identical fastening points
on the channel element” and (2) “an additional element attached to one of
the identical fastening points . . . the additional element differing in form
from the identical anchor elements.” It is well established that the ordinary
and customary meaning of the term “plurality” is “at least two” or “two or
more.” See Bilstad v. Wakalopulos, 386 F.3d 1116, 1122—23 (Fed. Cir.
2004) (finding no error in the Board’s interpretation of “plurality” as
between “two . . . and . . . infinit [y] . . . The term “additional” is defined
as “added.”4 Thus, consistent with the Specification and drawings, claim 13
requires “two or more” identical fastening points, “two or more” identical
anchor elements attached to the identical fastening points, and an “added”
element of different form attached to one of the fastening elements.
Based on the Specification and the language of claim 13, we conclude
the Examiner’s interpretation of claim 13 is unreasonable because construing
“a plurality of fastening points” and “a plurality of identical anchor
elements” to each mean only “two” causes the “additional element”
limitation to be changed to a “replacement” limitation. In that regard, based
on the interpretation of “plurality” as “two,” the Examiner determines it is
“unclear how the additional anchor element can be a third element attached
4 See https://www.merriam-webster.com/dictionary/additional (last
consulted on August 18, 2017).
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Application 14/235,268
to one of the prior two anchoring points without replacing one of the prior
two elements.” (emphasis added) Ans. 2. However, there is nothing in the
Specification or claim to support the Examiner’s interpretation that the
additional anchor element would be attached to one of the prior two
anchoring points by “replacing” one of the two identical anchor elements. In
other words, consistent with the Specification, claim 13 requires at least
three anchor elements, two identical and one of a different form. Under the
Examiner’s interpretation, claim 13 would only require two anchor elements,
one identical and one additional of a different form replacing the other
identical anchor. The Examiner’s interpretation of claim 13 is, therefore,
unreasonable and erroneous.
Based on the proper construction of claim 13, as discussed above, we
conclude claim 13 is not indefinite because, when read in light of the
Specification, it is not vague or unclear (see In re Packard, 751 F.3d 1307,
1311 (Fed. Cir. 2014)) and informs, with reasonable certainty, persons of
ordinary skill in the art about the scope of the claim (see Nautilus, Inc. v.
BiosigInstruments, Inc., 572 U.S.__ , 134 S. Ct. 2120, 2124 (2014). Thus,
we do not sustain the Examiner’s rejection of claim 13, as well as claims 17—
25, for indefmiteness under § 112, second paragraph.
Rejection of Claims 13, 17, 22, and 235 under § 102(b)
The Examiner finds Frohlich discloses the limitations of claim 13
because Figure 1 shows two different anchor elements, 2 and 2A, attached to
5 Appellants argue claims 13, 17, 22, and 23 as a group, focusing on claim
13. App. Br. 4—5. Thus, we decide the rejection of these claims on the basis
of representative claim 13. See 37 C.F.R. § 41.37(c)(l)(iv). Although
Appellants also argue claim 22 separately, we need not address that
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Application 14/235,268
identical anchor points, and “[o]ne of the identical anchor elements is
replaced by the additional different element.” Non-Final Act. 4; Ans. 3^4.
The Examiner also finds the channel shown in Figure 1 of Frohlich is “just a
portion of a channel,” and a person or ordinary skill in the art would know
“the channel would extend in either direction in a repeating manner or have
identical elements continuing from each side to match the already
represented elements.” Ans. 3 (citing Frohlich 5:24—27).
We are persuaded by Appellants’ argument that the Examiner erred.
In particular, Appellants argue that Frohlich does not disclose the disputed
limitation of claim 13 because anchor 2 (with swaged head 9) and anchor 2A
(with nut 9A as the head), as shown in Figure 1, “are not actually used
together but rather are alternatives.” App. Br. 5 (citing Frohlich 5:33—39).
We are persuaded by this argument because this portion of Frohlich states
the design of anchor 2A “can be suitable for special applications. However
the embodiment of the anchor 2 with swaged (upset head 9) is less expensive
and thus preferred.” For the same reason, we agree with Appellants’
argument that the Examiner’s finding that the channel of Frohlich “would
extend in either direction in a repeating manner or have identical elements
continuing from each side to match the already represented elements” “is
just wrong, and has no factual basis.” Reply Br. 2.
Thus, because we are persuaded Frohlich does not disclose the
disputed limitation of claim 13, we do not sustain the Examiner’s rejection
argument because, as discussed infra, we find Appellants’ argument with
respect to claim 13 is dispositive.
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Application 14/235,268
of claim 13, and dependent claims 17, 22, and 23, for anticipation under
§ 102(e).
Rejection of Claims 18, 20, and 25 under § 103(a)
The Examiner cites an additional reference, Heudorfer, for the
obviousness rejection of claims 18, 20, and 25. Non-Final Act. 6—7. The
Examiner relies on Frohlich in the same manner discussed above in the
context of claim 13, and does not rely on Heudorfer in any manner that
remedies the deficiencies of the underlying anticipation rejection. Thus, we
do not sustain the Examiner’s rejection of claims 18, 20, and 25 for
obviousness under § 103(a).
Rejection of Claims 19 and 21 under § 103(a)
The Examiner cites an additional reference, Graham, for the
obviousness rejection of claims 19 and 21. Non-Final Act. 8. The Examiner
relies on Frohlich in the same manner discussed above in the context of
claim 13, and does not rely on Graham in any manner that remedies the
deficiencies of the underlying anticipation rejection. Thus, we do not sustain
the Examiner’s rejection of claims 19 and 21 for obviousness under
§ 103(a).
DECISION
We reverse the Examiner’s rejection of claims 13 and 17—25 under
35 U.S.C. § 112, second paragraph.
We reverse the Examiner’s rejection of claims 13, 17, 22, and 23
under 35 U.S.C. § 102(b).
We reverse the Examiner’s rejection of claims 18—21 and 25 under
35 U.S.C. § 103(a).
REVERSED
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