Ex Parte Maute et al

Patent Trial and Appeal BoardDec 8, 2017

14159163 (P.T.A.B. Dec. 8, 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. 2178-0976 6528 EXAMINER MORGAN, EILEEN P ART UNIT PAPER NUMBER 3723 MAIL DATE DELIVERY MODE 14/159,163 01/20/2014 10800 7590 12/11/2017 Maginot, Moore & Beck LLP One Indiana Square, Suite 2200 Indianapolis, IN 46204 Joerg Maute 12/11/2017 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 JOERG MAUTE and FLORIAN ESENWEIN Appeal 2016-007658 Application 14/159,163 Technology Center 3700 Before DANIEL S. SONG, JAMES P. CALVE, and WILLIAM A. CAPP, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants1 seek our review under 35 U.S.C. § 134(a) of the final rejection of claims 1—11 under 35 U.S.C. § 102(b) as anticipated by Fodor (US 3,101,542, iss. Aug. 27, 1963).2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellants identify Robert Bosch GmbH as assignee and real-party-in- interest. Appeal Br. 2. 2 An alternative grounds of rejection over Nadig (WO 2012/055653 A2, pub. May 3, 2012) has been withdrawn. Ans. 3. Appeal 2016-007658 Application 14/159,163 THE INVENTION Appellants’ invention relates to a brake device for a portable machine tool. Spec. 1. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A machine tool brake device of a portable machine tool, comprising: at least one magnetic-field-type brake unit configured to brake one or more of a spindle and a machining tool when the magnetic-field-type brake unit is in at least one braking position; at least one spindle immobilization unit separate from the at least one magnetic-field-type brake unit and configured to immobilize the spindle when the spindle immobilization unit is in at least one immobilization position; and at least one activation unit configured to transfer the magnetic-field-type brake unit at least into the braking position and to enable automatically at least a transfer of the spindle immobilization unit into the immobilization position. OPINION Anticipation by Fodor Claims 1—9 Claim 1 is an independent claim and claims 2—9 depend, directly or indirectly, from claim 1. Claims App. The Examiner finds that Fodor discloses all of the elements of claim 1. Final Action 3. In particular, the Examiner identifies Fodor’s finger assembly 36 as a spindle immobilization unit that is separate from electromagnet 37, which the Examiner finds corresponds to the claimed magnetic field braking unit. Id. Appellants argue that Fodor’s electromagnet 37 and finger assembly 36 are not “separate units” within the meaning of claim 1. Appeal Br. 10. Appellants argue that finger assembly 36 and electro-magnet 37 are 2 Appeal 2016-007658 Application 14/159,163 part of a magnetic brake assembly. Id. Essentially, Appellants argue that finger assembly 36 and electromagnet 37 are part of the same “unit” that together form the electromagnetic brake assembly and, therefore, do not comprise two separate units as claimed. Id. In response, the Examiner states that Fodor shows the braking of the spindle through two separate units. Ans. 4. The Examiner directs our attention to an “air gap” between elements 36 and 37 as evidence that they are separate from one another. Id. In reply, Appellants point out that energization of Fodor electromagnet 37 causes binding of the spring finger assembly 36 against electromagnet 37 and thus constitutes a single unit. Reply Br. 2—3. Determining whether claims are anticipated involves a two-step analysis. In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012). The first step involves construction of the claims of the patent at issue. Id. The second step of an anticipation analysis involves comparing the claims to prior art. Id. A prior art reference anticipates a patent claim under 35 U.S.C. § 102(b) if it discloses every claim limitation. Id. Appellants and the Examiner disagree as to what it means for a brake unit to be “separate from’’ a spindle immobilization unit. “During examination, ‘claims ... are to be given their broadest reasonable interpretation consistent with the specification. In re Am. Acad, of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under the broadest reasonable interpretation standard, claim terms are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Claim construction is for “resolution of 3 Appeal 2016-007658 Application 14/159,163 disputed meanings.” U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997). Thus, “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Tech, Inc., v. Am. Science & Eng, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Claim 1 requires a “brake unit” that is “separate from” a “spindle immobilization unit.'” Claims App. Construing the terms reasonably, Fodor’s finger assembly 36 and electromagnet 37 are components of a single “brake unit” as they work together as part of a single operational unit to brake Fodor’s dental drill. See Fodor, Fig. 2, col. 4,11. 52—75 (“magnetic brake assembly”). Fodor does not disclose a spindle immobilization unit that is separate from its magnetic brake assembly. We do not sustain the Examiner’s anticipation rejection of claim 1, neither do we sustain the rejection of claims 2—9 that depend therefrom. Claims 10 and 11 Claim 10 is an independent claim and claim 11 depends therefrom. Claims App. As with claim 1, claim 10 contains a limitation directed to a spindle immobilization unit that is “separate from” a magnetic brake unit. Id. Thus, the Examiner’s rejection of these claims suffers from the same infirmity that was identified above with respect to claim 1. Thus, for essentially the same reason expressed above in connection with claim 1, we do not sustain the rejection of claims 10 and 11. DECISION The decision of the Examiner to reject claims 1—11 is reversed. REVERSED 4