Ex Parte Klumpp et al

Patent Trial and Appeal BoardJun 21, 2018

13672170 (P.T.A.B. Jun. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/672,170 11108/2012 1218 7590 HESPOS & PORCO LLP 110 West 40th Street Suite 2501 NEW YORK, NY 10018 06/25/2018 FIRST NAMED INVENTOR Roiger Klumpp 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. CD48/US/2/FS 8567 EXAMINER HANDVILLE, BRIAN ART UNIT PAPER NUMBER 1783 NOTIFICATION DATE DELIVERY MODE 06/25/2018 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): docketing@hpiplaw.com USPTO@dockettrak.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HOLGER KLUMPP, SAMMY EL DAIBANI, MIKE ROEHR, and DR. ING. H.C.F. PORSCHE AKTIENGESELLSCHAFT Appeal2017-009466 Application 13/672, 170 Technology Center 1700 Before KAREN M. HASTINGS, MONTE T. SQUIRE, And JEFFREY R. SNAY, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants 1 request our review under 35 U.S.C. Â§ 134 of the Examiner's final decision rejecting claims 8 and 9 under 35 U.S.C. Â§ 102(a) as anticipated by Doerfler et al., (US 2010/0326270 Al, published Dec. 30, 2010); and claims 1 and 7 under 35 U.S.C. Â§ 103(a) as unpatentable over Ast 1 The real party in interest is stated to be "Dr. Ing. h. c. F. Porsche Aktiengesellschaft" (Appeal Br. 3). Appeal2017-009466 Application 13/672, 170 et al., (US 2010/0031799 Al, published Feb. 11, 2010) and Doerfler. We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b ). We AFFIRM. Claim 8 is illustrative of the claimed subject matter (emphasis added to highlight key disputed limitation): 8. A cylindrical component having an inner cylindrical surface formed around a central axis and a helical groove formed in the cylindrical inner surface, the groove having a profile that comprises: a groove bottom that extends substantially parallel to the surface of the component into which the groove is formed, the groove bottom having opposite first and second lateral ends, first and second side surfaces aligned at an angle (a) of less than 90Â° to the groove bottom, first and second oblique surfaces extending out from the respective first and second side surfaces at angles (\JI) to the side surfaces greater than 90Â° so that the oblique surfaces converge continuously toward one another at positions farther from the central axis, the helical groove having plural groove sections that are next to one another at a constant spacing in a direction parallel to the central axis, the oblique surfaces of the groove sections that are next to one another in the direction parallel to the central axis intersecting and meeting one another at an angle of intersection (~) that is greater than 90Â°, wherein the converging oblique surfaces cause particles that strike the oblique surfaces to be guided to the groove bottom. Independent claim 1 is similar to claim 8, but additionally recites that there are "first and second steps between the respective first and second lateral ends of the groove bottom" and features pertaining to these steps (Claims Appendix, Spec. 12). 2 Appeal2017-009466 Application 13/672, 170 ANALYSIS We have reviewed each of Appellants' arguments for patentability. However, we determine that a preponderance of the evidence supports the Examiner's finding that the claimed subject matter of representative claim 8 is anticipated within the meaning ofÂ§ 102 in view of the applied prior art of Doerfler. A preponderance of the evidence also supports the Examiner's determination that the subject matter of claims 1 and 7 is obvious over the applied prior art. Accordingly, we will sustain all of the Examiner's rejections for essentially those reasons expressed in the Answer, including the Examiner's Response to Argument section, and we add the following primarily for emphasis. "[T]he PTO must give claims their broadest reasonable construction consistent with the specification. . . . Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation." In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). "[A]s applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee." Id. The main limitation in dispute is whether Doerfler's oblique surfaces as designated by the Examiner in annotated Fig. 4a are "meeting one another" as recited in claim 8 (Appeal Br. 7, 8; Ans. 4, 5). Appellants argue that the presence of spaced indentations 14 prevent the oblique surfaces from meeting as claimed (Appeal Br. 7, reproducing Figs. 4a and Fig. 5a of Doerfler). Appellants de facto contend that the oblique surfaces only exist to form the desired undercut 13 at the transverse location of each indentation 3 Appeal2017-009466 Application 13/672, 170 (Appeal Br. 7, 8; Reply Br. 3 (Appellants state "the concavity 14 prevents the oblique surfaces from adjacent groove sections from meeting")). These arguments are not persuasive of error in the Examiner's rejection. The Examiner de facto points out that the claims do not preclude the indentations 14 of Doerfler (e.g., Ans. 13). Indeed, Appellants do not specifically argue that the claim language precludes any such indentations. The claim recites the open ended phrase "the groove profile comprises" such that the oblique surfaces just before and beyond each indentation would indeed be "meeting" as recited in the claim (Ans. 12, 13 (the Examiner reasonably finds that the extension of the upper portion of the side surfaces will still form an undercut at locations not transverse to the indentations, contrary to Appellants' position)). Appellants do not specifically address this finding, but rather continue to state that the indentations preclude the oblique surfaces from meeting (Reply Br. 3). However, Doerfler's Fig. 5a shows that there is a continuous bulging profile from one indentation to the next. This supports the Examiner's finding that the groove profile of Doerfler comprises (i.e. includes) oblique surfaces outside the indentations 14 that would meet as claimed, even if only at the outermost edges of each indentation. Appellants' Specification contains no limiting or special definition of these oblique surfaces, such that oblique surfaces just before and after each indentation as shown in Doerfler's Fig 5a would be encompassed by the disputed claim language. Thus, a preponderance of the evidence supports the Examiner's position (Ans. generally). Appellants have not directed our attention to any persuasive reasoning or credible evidence to establish that the Examiner's interpretation is unreasonable, nor to any portion of the Specification that 4 Appeal2017-009466 Application 13/672, 170 limits the definition of these oblique surfaces to exclude those found in Doerfler as pointed out by the Examiner. Accordingly, we affirm the Examiner's anticipation rejection. To the extent Appellants present any additional arguments with respect to the obviousness rejection of claims 1 and 7, a preponderance of the evidence supports the Examiner's position (Appeal Br. 9; Ans. 15-18). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136. ORDER AFFIRMED 5