Ex Parte LANGER et al

Patent Trial and Appeal BoardOct 8, 2015

12694884 (P.T.A.B. Oct. 8, 2015)

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. 12/694,884 01/27/2010 Christian LANGER 1001/0111PUS2 6806 60601 7590 10/09/2015 Muncy, Geissler, Olds & Lowe, P.C. 4000 Legato Road Suite 310 FAIRFAX, VA 22033 EXAMINER YAGER, JAMES C ART UNIT PAPER NUMBER 1782 MAIL DATE DELIVERY MODE 10/09/2015 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 CHRISTIAN LANGER, SEBASTIAN TAEUBERT, and JOERG GEIPEL1 ____________ Appeal 2013-010067 Application 12/694,884 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, CHUNG K. PAK, and WESLEY B. DERRICK, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’s rejections of claims 7–10 under 35 U.S.C. § 112, 2nd paragraph (now paragraph (b)), as indefinite and under 35 U.S.C. § 103(a) as unpatentable over Wagner (EP 0,863,697 A2, published Sept. 9, 1998), as translated) in 1 PEPPERL+FUCHS GMBH is identified as the real party in interest. App. Br. 1. Appeal 2013-010067 Application 12/694,884 2 view of Shubinsky (US 2005/0145330 Al, published Jul. 7, 2005). We have jurisdiction under 35 U.S.C. § 6. We AFFIRM. Appellants claim a sensor housing structure comprising a sensor housing 10 having an opening 17 with a lateral surface 30, a plastic body 50 having a lateral surface 55 abutting the lateral surface 30 in a butt-joint-like manner, and a connection site 70 forming a substantially seamless and substantially smooth transition between the sensor housing 10 and the plastic body 50 (sole independent claim 7, Figs. 1–4). A copy of representative claim 7, taken from the Claims Appendix of the Appeal Brief, appears below. 7. A sensor housing structure comprising: a sensor housing having an opening with an edge and a lateral surface, which lateral surface, perpendicular to a top surface of the sensor housing, has a shoulder-shaped ledge; a seal configured as a strip lying on said shoulder-shaped ledge; a plastic body having a lateral surface, a top side and a bottom side, wherein said lateral surface abuts the lateral surface of the sensor housing partially in a butt-joint-like manner, and said bottom side of the plastic body lies partially on the seal; and a connection site, which forms a substantially seamless and substantially smooth transition between the sensor housing and the plastic body on a top surface of the sensor housing and said top side of the plastic body. The Examiner determines that the appealed claims are indefinite due to the unclear meaning and scope of the claim 7 phrases “butt-joint-like,” “substantially seamless,” and “substantially smooth” (Final Action 2–3; see also Ans. 2, 6–7). Appeal 2013-010067 Application 12/694,884 3 In contesting this determination, Appellants correctly point out that paragraph 20 of their Specification contains the phrase “butt-joint-like” (App. Br. 4), that paragraph 21 contains the phrase “smooth and seamless” (id. at 5), and that paragraph 23 contains the phrase “virtually seamless and virtually smooth” (id.). However, Appellants do not explain with any reasonable specificity why these paragraphs of the Specification are considered to reasonably circumscribe the scope of protection sought by the claim phrases in question. See In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014) (“Given the role of the applicant in the process, it is a reasonable implementation of the examination responsibility, as applied to § 112(b), for the USPTO, upon providing the applicant a well-grounded identification of clarity problems to demand persuasive responses on pain of rejection.”). In the record before us, the Examiner has established a prima facie case for the § 112, 2nd paragraph, rejection, and Appellants have failed to show harmful error in this rejection. We sustain, therefore, the Examiner’s rejection of claims 7–10 as indefinite. In the § 103 rejection, the Examiner finds that Figure 1 of Wagner shows a substantially seamless and substantially smooth transition between the housing and body as required by claim 7 (Final Action 5; see also Ans. 4, 7–8). Appellants argue that “a substantially smooth transition . . . is clearly not indicated by Figure 1 or the disclosure of Wagner[, and Wagner’s connection site] is shown as neither seamless nor smooth given any reasonable interpretation to the claim language and the disclosure of Wagner” (App. Br. 6). Appellants contend that the Examiner has impermissibly interpreted the claim 7 phrases “substantially smooth” and “substantially seamless” (Reply Br. 3). Appeal 2013-010067 Application 12/694,884 4 Our analysis of the record reveals that these diametrically opposed views of the Examiner and Appellants are based on speculations and assumptions regarding the subject matter included versus excluded by the indefinite claim phrases “substantially seamless” and “substantially smooth.” It is well-settled that a rejection under 35 U.S.C. § 103 should not be based on such speculations and assumptions. In re Steele, 305 F.2d 859, 862 (CCPA 1962); see also In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). For this reason, we procedurally reverse the § 103 rejection of claims 7–10 as unpatentable over Wagner and Shubinsky. The decision of the Examiner is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED lp