Ex Parte Mayr

Patent Trial and Appeal BoardMar 30, 2015

12065940 (P.T.A.B. Mar. 30, 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. 12/065,940 03/06/2008 Karlheinz Mayr ZF P103US 5081 20210 7590 03/31/2015 DAVIS & BUJOLD, P.L.L.C. 112 PLEASANT STREET CONCORD, NH 03301 EXAMINER SAHNI, VISHAL R ART UNIT PAPER NUMBER 3657 MAIL DATE DELIVERY MODE 03/31/2015 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 KARLHEINZ MAYR ____________ Appeal 2013-002689 Application 12/065,940 Technology Center 3600 ____________ Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Karlheinz Mayr (Appellant) 1 appeals under 35 U.S.C. § 134 from the Examiner’s decision to reject claims 13–32. Claims 1–12 have been cancelled. 2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 According to Appellant, the real party in interest is ZF Friedrichshafen AG. Br. 1. 2 See First Preliminary Amendment entered March 6, 2008. Appeal 2013-002689 Application 12/065,940 2 CLAIMED SUBJECT MATTER Claims 13 and 25 are independent claims. Claim 13, reproduced below, is representative of the subject matter of this appeal. 13. A locking apparatus (1) of a parking brake device for a vehicle having a drivetrain with an automatic transmission, the locking apparatus comprising: a piston unit (4) positioned inside a housing (3) and being axially displaceable and lockable in a pre-defined axial position; and a catch device (5) being automatically activated when the piston unit (4) is in a locked position to hold the piston unit (4), the catch device (5) having at least one spring arm (5A, 5B) in active connection with the piston unit (4) when the piston unit (4) is in the locked position, the at least one spring arm being abutted by the piston unit (4) in the locked position with a catch area (27), the at least one spring arm (5A) being substantially planar and comprising a radially outer surface which defines a longitudinal plane, and the spring arm (5A) having a through hole (41) extending radially through the spring arm (5A) and the catch area (27) of the piston unit (4) extends at least partially, in a radial direction, through the through hole (41) of the spring arm (5A) so that when the piston unit (4) is in the locked position, the catch area (27) of the piston unit (4) intersects the longitudinal plane defined by the outer surface of the spring arm (5A). Br. 15, Claims App. Appeal 2013-002689 Application 12/065,940 3 THE REJECTION Claims 25–32 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Non-Final Act. 2. 3 Claims 13–32 are rejected under 35 U.S.C. § 103(a) as unpatentable over Kleinert (US 2005/0098400 A1; pub. May 12, 2005) and Havlovitz (US 5,127,762; iss. July 7, 1992). Id. at 3. ANALYSIS Claims 25–32 — Indefiniteness The Examiner finds claims 25–32 indefinite under 35 U.S.C. § 112, second paragraph, “because claim 25 recites ‘an outer surface’” and “[i]t is unclear what this ‘outer surface’ is.” Non-Final Act. 2. The Examiner suggests amending claim 25 to recite a “radially outer surface” as recited in claim 13. Id. Appellant expresses his intention to overcome this rejection by amending claim 25 according to the Examiner’s suggestion, noting that the previous attempt to do so was not entered into the record. 4 Br. 3. Appellant contends that this rejection “is not part of this appeal.” Id. Because this rejection has not been withdrawn by the Examiner, and neither the Advisory Action nor the Pre-Appeal Brief Conference decision modified the rejection, this rejection remains before us on appeal. 5 6 We summarily 3 The Non-Final Action from which this Appeal is taken was mailed November 8, 2011 and is referred to herein as the “Non-Final Act.” 4 See Response After Non-Final Action, p. 4, filed December 7, 2011; Advisory Action indicating that the proposed amendment “will not be entered” mailed December 20, 2011. 5 See 37 C.F.R. § 41.39 (1) (“[a]n examiner’s answer is deemed to incorporate all of the grounds of rejection set forth in the Office action from Appeal 2013-002689 Application 12/065,940 4 affirm the rejection of claims 25–27, 29, 30, and 32 under 35 U.S.C. § 112, second paragraph, because Appellant has not presented any arguments against it. Because claims 28 and 31 depend from claim 13, not claim 25, we do not sustain the Examiner’s rejection of claims 28 and 31. Claims 13–32 — Unpatentable over Kleinert and Havlovitz Appellant argues that Havlovitz is non-analogous art. Br. 4–5. In particular, Appellant contends that Havlovitz, which “relates to a connector for a handle section of a garden appliance,” is not in the same field of endeavor as Appellant’s invention. Id. at 4 (emphasis omitted). Moreover, Appellant contends that Havlovitz “does not deal with the same purpose” as Appellant’s invention, which is “to lock a parking [brake] of an automatic transmission.” Id. Appellant concludes that “the only way these two references would be combined is through the impermissible use of hindsight.” Id. The Examiner finds that “the problem being solved is providing a means for connecting two reciprocating elements together via a catch area” and that “Havlovitz teaches a functionally equivalent connecting means of a hook-through-hole type mechanism.” Ans. 13. The Examiner concludes that “[d]espite Havlovitz being directed to a connector in a different field, it is reasonably pertinent to the particular problem of providing an alternative which the appeal is taken (as modified by any advisory action and pre- appeal brief conference decision), unless the examiner’s answer expressly indicates that a ground of rejection has been withdrawn.”). 6 See Advisory Action; Pre-Appeal Brief Conference decision mailed March 14, 2012. Appeal 2013-002689 Application 12/065,940 5 locking mechanism and, therefore, is properly relied upon for the purpose of this obviousness rejection.” Id. The Federal Circuit has explained that “[t]he analogous art inquiry is a factual one, requiring inquiry into the similarities of the problems and the closeness of the subject matter as viewed by a person of ordinary skill in the art.” Scientific Plastic Prods., Inc. v. Biotage AB, 766 F.3d 1355, 1360 (Fed. Cir. 2014). “Criteria for determining whether prior art is analogous may be summarized as ‘(1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the inventor’s field of endeavor, whether the reference is still reasonably pertinent to the particular problem with which the inventor is involved.’” Id. at 1359 (citing In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992)). Appellant’s Specification identifies the relevant problem as the larger installation space and higher manufacturing costs required by large overlap regions and components sized to have the bending stiffness and deformation resistance needed to withstand the forces, and especially bending moments, in locking devices with catch elements. See Spec. ¶ 6–17. Therefore, Appellant’s Specification expressly states that “the invention has the purpose of providing a locking apparatus that requires only a small installation space and can be manufactured in an economical manner.” Spec. ¶ 18. Havlovitz, on the other hand, addresses the need for easy and quick assembly or disassembly of a connector, without tools and without sacrificing overall strength and durability. Havlovitz col. 1, ll. 26–30, 34–45. We find that the Examiner erred in broadly characterizing the relevant problem as simply providing a means for connecting two reciprocating elements together via a catch area, which is the general purpose of a locking Appeal 2013-002689 Application 12/065,940 6 apparatus. See Ans. 13. However, we also do not agree with Appellant’s statement of the relevant problem as “locking a parking brake of an automatic transmission.” Br. 4–5. Notwithstanding Appellant’s position, we agree that one skilled in the art upon reading Havlovitz would not reasonably understand that Havlovitz is pertinent to the problem of addressing installation space and the manufacturing costs of components designed for locking devices with catch elements. Accordingly, we cannot sustain the Examiner’s rejection of claims 13–32 as unpatentable over Kleinert and Havlovitz. DECISION We AFFIRM the Examiner’s rejection of claims 25–27, 29, 30, and 32 under 35 U.S.C. § 112, second paragraph. We REVERSE the Examiner’s rejection of claims 28 and 31 under 35 U.S.C. § 112, second paragraph. We REVERSE the Examiner’s rejection of claims 13–32 under 35 U.S.C. § 103(a). AFFIRM-IN-PART