Ex Parte Kohl et al

Patent Trial and Appeal BoardSep 28, 2018

15500158 (P.T.A.B. Sep. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 15/500, 158 01/30/2017 148434 7590 10/02/2018 McNair Law Firm, P.A. Husqvarna Bank of America Plaza 101 South Tryon Street, Suite 2610 Charlotte, NC 28280 UNITED ST A TES OF AMERICA FIRST NAMED INVENTOR Peter Kohl 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. 738004/10283/P3012USOO 4277 EXAMINER TORRES, ALICIA M ART UNIT PAPER NUMBER 3671 NOTIFICATION DATE DELIVERY MODE 10/02/2018 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): mcnairip@mcnair.net PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PETER KOHL, BRUNO HAUSSLER, KARIN SCHAFFER, GERHARD STREITFERDT, and SIEGFRIED RAU 1 Appeal2018-006884 Application 15/500,158 Technology Center 3600 Before ANNETTE R. REIMERS, JEFFREY A. STEPHENS, and ALYSSA A. FINAMORE, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE2 Peter Kohl et al. (Appellants) appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision to reject under 35 U.S.C. Â§ 102(a)(l): (1) claims 1- 1 In the Appeal Brief, Husqvama AB is indicated as the "real party in interest" of the present application. Appeal Brief 1 (hereinafter "Appeal Br.") (filed Feb. 20, 2018). 2 The Examiner indicates that "[c]laims 7 and 11-13 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims" and"[ c ]laims 15-18 are allowed." Final Office Action 10 (hereinafter "Final Act.") ( dated Sept. 14, 2 0 1 7). Appeal2018-006884 Application 15/500,158 6, 8-10, and 14 as anticipated by Carr (US 2001/0048228 Al, published Dec. 6, 2001); (2) claims 1-5 as anticipated by Chen (US 8,132,836 B2, issued Mar. 13, 2012); and (3) claims 1-6 and 8-10 as anticipated by Cross (US 638,912, issued Dec. 12, 1899). We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. CLAIMED SUBJECT MATTER The claimed subject matter "is directed to a fruit collector, a retaining bracket, and a collecting container of and for such a fruit collector." Spec. 1:3-5, Figs. 1-3. Claims 1 and 8 are independent. Claim 1 is illustrative of the claimed subject matter and recites: 1. A retaining bracket for a fruit collector, the retaining bracket being arranged to pivotably retain a fruit collecting container, and comprising a hub which is arranged to pivotably retain a stub axle section of the collecting container projecting from an axial end of the collecting container, wherein the hub comprises an inner, central hole configured and sized to enable fruits collected in the collecting container to pass through, and arranged to communicate via a container opening at the stub axle section with a container inner volume once the collecting container is coupled to the hub. ANALYSIS Anticipation by Carr Claims 1-6, 8-10, and 14 Independent claim 1 is directed to a retaining bracket including a hub, "wherein the hub comprises an inner, central hole configured and sized to enable fruits collected in the collecting container to pass through." Appeal Br. 21, Claims App. The Examiner finds that Carr discloses "a retaining 2 Appeal2018-006884 Application 15/500,158 bracket (16)" including "a hub (20)," "wherein the hub (20) comprises an inner, central hole (unnumbered, leg of the 'tee' of the opening of hub 20 as seen in Carr's annotated Fig. 7 below) configured and sized to enable fruits collected in the collecting container to pass through." Final Act. 2; see also id. at 4 (the Examiner's annotated version of Figure 7 of Carr). The Examiner further takes the position that "after considering intended use phrases used throughout claim 1, such as ... 'configured to ... ' [and] 'sized to ... ', claim 1 is being read to positively claim only: a retaining bracket comprising a hub having an inner, central hole." Final Act. 9; see also Ans. 3-5, 8-10. 3 As an initial matter, we note that claim 1 recites the hub "compris[ing] an inner, central hole configured and sized to enable fruits collected in the collecting container to pass through." Appeal Br. 21, Claims App. ( emphasis added). In other words, claim 1 recites a configured central hole, meaning the function which follows implies something about the structure of the claimed apparatus, namely, that it requires at least a central hole configured to enable fruits collected in the collecting container to pass through. The language "configured to" cannot simply be dismissed as intended use; rather, such language must be construed in light of the underlying disclosure in the Specification. Final Act. 9; see also Ans. 3-5, 8-10; In re Giannelli, 739 F.3d 1375, 1379-80 (Fed. Cir. 2014). Appellants' Specification describes that "[a]s can be seen from FIG. 2, the retaining bracket 3, in particular the hub 9 comprises an inner or central hole 13 defining a passage of size and dimension to enable fruits of the type 3 Examiner's Answer (hereinafter "Ans.") (dated Apr. 20, 2018). 3 Appeal2018-006884 Application 15/500,158 to be collected passing through." Spec. 30:31-34, Fig. 2; see also id. at 9: 13-20, 11: 18-23. In this case, we agree with Appellants that ( 1) Figure 7 of Carr "discloses a support member 16 for a receptacle 12, where the support member 16 has a central portion 20 (i.e., the alleged hub 20)"; (2) "[t]he alleged hub 20 (i.e., central portion of support member 16) is coupled to elongated bars or rods 18 to form an enclosure structure 24"; and (3) "the alleged hub 20 of Carr in no way has an inner, central hole to enable anything to pass through it, much less fruits to pass through to a container opening." Reply Br. 4; see also Appeal Br. 5-7; Carr ,r 36, Figs. 2, 7. 4 Moreover, Appellants correctly point out that "[ w ]hen operational, the hole [i.e., alleged hub 20] of Carr is unambiguously filled and incapable of having any fruit pass therethrough." Reply Br. 4; see also Appeal Br. 5-7; Carr ,r 36, Figs. 2, 7. As such, the Examiner's finding that Carr discloses a hub "compris[ing] an inner, central hole configured and sized to enable fruits collected in the collecting container to pass through" is not supported by a preponderance of the evidence. Similar to claim 1, independent claim 8 is directed to a collecting container and includes language to the central hole of the hub of the retaining basket being configured to communicate with the through-hole of the stub axle section of the collecting container to enable passage of fruits collected through the central hole of the hub and the through-hole of stub axle section into the collecting container. Appeal Br. 22, Claims App. The 4 Reply Brief (hereinafter "Reply Br.") (filed June 20, 2018). 4 Appeal2018-006884 Application 15/500,158 Examiner relies on the same unsupported findings in Carr discussed above. See Final Act. 7. As such, the Examiner's findings with respect to Carr are deficient for claim 8 as well. For these reasons, we do not sustain the Examiner's rejection of claims 1---6, 8-10, and 14 as anticipated by Carr. Anticipation by Chen Claims 1-5 Independent claim 1 is directed to a retaining bracket including a hub, "wherein the hub comprises an inner, central hole configured and sized to enable fruits collected in the collecting container to pass through." Appeal Br. 21, Claims App. The Examiner finds that Chen discloses "a retaining bracket (12)" including "a hub (unnumbered, see Chen's annotated Fig. 2 below)," "wherein the hub (unnumbered, see Chen's annotated Fig. 2 below) comprises an inner, central hole (unnumbered, see Chen's annotated Fig. 2 below) configured and sized to enable fruits collected in the collecting container to pass through." Final Act. 4; see also id. at 5 (The Examiner's annotated version of Figure 2 of Chen). Similar to that discussed above for Carr, the Examiner takes the position that "after considering intended use phrases used throughout claim 1, such as ... 'configured to ... ' [and] 'sized to ... ', claim 1 is being read to positively claim only: a retaining bracket comprising a hub having an inner, central hole." Final Act. 9; see also Ans. 3-5, 11-12. As discussed above in reference to Carr, the language "configured to" cannot simply be dismissed as intended use; rather, such language must be construed in light of the underlying disclosure in the specification. Final Act. 9; see also Ans. 3-5, 11-12; In re Giannelli, 739 F.3d at 1379-80. 5 Appeal2018-006884 Application 15/500,158 In this case, we agree with Appellants that ( 1) "the alleged hub with the alleged hole is merely the point where the control element 12 is connected to the drum 11 thereby allowing the user to control the movement of the drum 11 "; and (2) as shown in Figure 3 of Chen, "the alleged hole in the alleged hub is clearly entirely plugged with an axial portion such that no fruit or anything else could pass therethrough." Reply Br. 5; see also Appeal Br. 9-10; Chen, Figs. 2, 3. As such, we agree with Appellants that "Chen in no way discloses a hub having an inner, central hole to enable anything to pass through it, much less fruits to pass through to a container opening." Reply Br. 5; see also Appeal Br. 9-10; Chen, Figs. 2, 3. For these reasons, we do not sustain the Examiner's rejection of claims 1-5 as anticipated by Chen. Anticipation by Cross Claims 1-6 and 8-10 Independent claim 1 is directed to a retaining bracket including a hub, "wherein the hub comprises an inner, central hole configured and sized to enable fruits collected in the collecting container to pass through." Appeal Br. 21, Claims App. The Examiner finds that Cross discloses "a retaining bracket (1 O)" including "a hub (12)," "wherein the hub (12) comprises an inner, central hole (unnumbered inner hole of 12) configured and sized to enable fruits collected in the collecting container to pass through." Final Act. 6; see also Cross, Figs. 1--4. Similar to that discussed above for Carr and Chen, the Examiner further takes the position that "after considering intended use phrases used throughout claim 1, such as ... 'configured to ... ' [and] 'sized to ... ', claim 1 is being read to positively claim only: a retaining 6 Appeal2018-006884 Application 15/500,158 bracket comprising a hub having an inner, central hole." Final Act. 9; see also Ans. 3-5, 13-14. Cross discloses that knives [12] maybe constructed in a number of ways; but I prefer to provide them with beveled upper edges 13 co-extensive with the spaces between the guides, a slotted tailpiece 14, and slotted lateral wings 15, the several slots in these knives or knife-plates being designed for the reception of adjusting-screws 16, which pass through the knives from the inner side and into screw- threaded apertures 17 in the knife-collar. Cross, 1:58---67, Fig. 4. In this case, the Examiner finds that knife 12 of Cross constitutes the claimed hub. Final Act. 6. However, Cross fails to teach or suggest that knife 12 has "an inner, central hole," as structurally required by claim 1. Appeal Br. 21, Claims App. (emphasis added); see also Appeal Br. 13 ("Cross in no way discloses a structure related to the hub having a central hole claimed by [Appellants]."); Reply Br. 5. Further, the Examiner fails to provide sufficient evidence or technical reasoning to establish that knife 12 of Cross necessarily includes a central hole. Final Act. 6; see also Ans. 13- 14. Independent claim 8 is directed to a collecting container and includes language to "an inner, central hole of the hub." Appeal Br. 22, Claims App. We acknowledge that the "hub" of claim 8 is functionally recited; however, the "hub" of claim 8 is structurally required to include a "central hole." Id.; see also Ans. 17. As such, we disagree with the Examiner's position that "no structural limitations of the hub are claimed [in claim 8]." Ans. 17. Because the Examiner takes this position, the Examiner does not indicate what element of Cross is being considered to constitute the hub of claim 8. 7 Appeal2018-006884 Application 15/500,158 See id. at 17-18; see also Final Act. 8. The Examiner finds that collar 10 of Cross constitutes the stub axle section of claim 8. Ans. 17-18; see also Final Act. 8. Assuming arguendo that, similar to claim 1, knife 12 of Cross is considered to constitute the hub of claim 8, as discussed above, Cross fails to teach or suggest that knife 12 has "an inner, central hole," as structurally required by claim 8. Appeal Br. 21, Claims App. ( emphasis added); see also Final Act. 6; Ans. 13-14 For these reasons, we do not sustain the Examiner's rejection of claims 1---6 and 8-10 as anticipated by Cross. DECISION We REVERSE the decision of the Examiner to reject claims 1-6, 8- 10, and 14 under 35 U.S.C. Â§ 102(a)(l). REVERSED 8