Ex Parte Mordau et al

Patent Trials and Appeals BoardApr 24, 2013

11654708 - (D) (P.T.A.B. Apr. 24, 2013)

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. 11/654,708 01/18/2007 Ulf Mordau TRW(AEC)8496 7547 26294 7590 04/25/2013 TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P. 1300 EAST NINTH STREET, SUITE 1700 CLEVELAND, OH 44114 EXAMINER CHAN, KO HUNG ART UNIT PAPER NUMBER 3631 MAIL DATE DELIVERY MODE 04/25/2013 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 ULF MORDAU and ANDREAS NEUMANN ____________________ Appeal 2011-002959 Application 11/654,708 Technology Center 3600 ____________________ Before: PHILLIP J. KAUFFMAN, BARRY L. GROSSMAN, and BART A. GERSTENBLITH, Administrative Patent Judges. KAUFFMAN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-002959 Application 11/654,708 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1- 15, 17, 18, 20, 22-25, and 30-36. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The Invention Appellants’ claimed invention relates to “a holding clip by which a sensor, particularly a rain sensor, can be mounted on a holding frame.” Spec. 1:3-4. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A holding clip (16) for a rain sensor (10) comprising: a plate (22), said plate (22) covering said rain sensor when the rain sensor is connected with the holding clip (16), and at least one holding arm (26) and at least one detent arm (28), said holding arm (26) and said detent arm (28) engaging a holding frame (12) for said sensor (10) when said sensor (10) is connected with said holding clip (16), said plate (22), said at least one holding arm (26) and said at least one detent arm (28) being formed integrally as one- piece, said plate (22) extending substantially across a rear side of said sensor (10) facing away from said holding frame (12) with said sensor (10) being substantially located between said plate (22) and said holding frame (12) when said sensor (10) is connected with said holding clip (16). Appeal 2011-002959 Application 11/654,708 3 The Rejections and Evidence Relied Upon The following rejections are before us on appeal: I. Claims 1, 2, 6-13, and 35 under 35 U.S.C. § 102(b) as anticipated by Dalton (US 6,698,701 B1; iss. Mar. 2, 2004). II. Claims 1-11 and 35 under 35 U.S.C. § 102(b) as anticipated by Watanabe (US 5,816,550; iss. Oct. 6, 1998). III. Claims 1-3, 6, 7, 14, 15, 17, 20, 22, 23, 30, 31, and 36 under 35 U.S.C. § 102(b) as anticipated by Schmitt (US 6,894,619 B1; iss. May 17, 2005). IV. Claims 18, 24, 25, and 32-34 under 35 U.S.C. § 103(a) as unpatentable over Schmitt.1 OPINION2 We construe relevant portions of claim 1 before examining the prior art. See Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003) (“Both anticipation under § 102 and obviousness under § 103 are two-step inquiries. The first step in both analyses is a proper construction of the claims. . . . The second step in the analyses requires a comparison of the properly construed claim to the prior art.” (internal citations omitted)). Claim 1 is directed to a holding clip for a rain sensor that includes a plate. When the holding clip is connected to the rain sensor, the plate 1 After the Examiner’s Answer dated July 22, 2010, the Examiner informed Appellants that claim 25 was subject to rejection under 35 U.S.C. § 103(a) as unpatentable over Schmitt, but had been inadvertently omitted due to a typographical error. Misc. Comm. dated Aug. 5, 2010. 2 The Examiner did not enter the Reply Brief filed on September 21, 2010, and so notified Appellants. Office Communication dated December 2, 2010. Therefore, the Reply Brief is not before us on review. Appeal 2011-002959 Application 11/654,708 4 (1) covers the rain sensor, and (2) extends substantially across a rear side of the sensor. Regarding covering the rain sensor, claim 1 broadly calls for the plate to cover the rain sensor, and neither the claim nor the Specification supports Appellants’ narrower reading that claim 1 calls for the plate to completely cover the rain sensor.3 Therefore, all that is required by this element of claim 1 is that the plate cover some portion of the rain sensor. Regarding the plate extending substantially across a rear side of the sensor, claim 1 does not call for the plate to substantially cover the rear side of the sensor in terms of area. Rather, this limitation relates to length rather than area in that it calls for the plate to extend across the rear side of the sensor. Further, claim 1 does not positively recite a rain sensor; rather, the holding clip must be capable of connecting to a rain sensor in the manner specified. As the Examiner correctly points out, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function, provided the structure is capable of performing the function. Ans. 8; In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997) (holding that a funnel disclosed for oil dispensing anticipated a claim to a funnel-like structure employed for dispensing popcorn and that applicant had the burden to prove that the funnel was not capable of dispensing popcorn once the 3 See fig. 6 (depicting the first embodiment with rain sensor 10 not completely covered by plate 22); Spec. 2:17-18 (identifying Figure 6 as the first embodiment); Br. 3 (identifying claim 1 as corresponding to the first embodiment as shown in Figure 2); see also Spec. 2:9-10 (identifying Figure 2 as the first embodiment). Appeal 2011-002959 Application 11/654,708 5 Examiner established a similarity in structure); Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990) (“[A]pparatus claims cover what a device is, not what a device does.”) Each of the four rejections includes a finding that the prior art is capable of performing the claimed function. See Ans. 3-13. The primary dispute in each of the four rejections relates to whether Appellants have demonstrated that the prior art device is not capable of the claimed function. I. Claims 1, 2, 6-13, and 35 as anticipated by Dalton Claims 1, 2, 6, 7, and 9-134 Appellants argue that Dalton is not capable of covering and securing a rain sensor as claimed. Specifically, Appellants contend that due to the large aperture 42, Dalton’s plate (frame 12) is not capable of covering any structure, including a rain sensor, and does not extend substantially across a rear side of the sensor. Br. 8-9. These contentions are not commensurate in scope with claim 1.5 See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[A]ppellant’s arguments fail from the outset because . . . they are not based on limitations appearing in the claims.”). Dalton’s plate (frame 12) is capable of covering some portion of a rain sensor when connected to Dalton’s holding clip (mounting apparatus 10) as depicted by the Examiner. See Ans. 9. Further, Dalton’s plate (wall portion 18b of frame 12) extends substantially across the rear 4 Appellants argue claims 1, 2, 6, 7, and 9-13 as a group, and we select claim 1 as representative. Br. 10; see 37 C.F.R. § 41.37(c)(1)(vii) (2011). 5 Though submission of evidence is not required, these contentions are unpersuasive, in part, because Appellants provide no supporting evidence. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (Appellants’ arguments do not take the place of evidence). Appeal 2011-002959 Application 11/654,708 6 side of a rain sensor when connected to Dalton’s holding clip (mounting apparatus 10) as depicted by the Examiner. See Ans. 9. Appellants also argue that because Dalton’s ESL (electronic shelf label) 40 extends through the frame 12 (the plate), frame 12 does not cover the ESL 40 or extend substantially across a rear side of the ESL 40. Br. 8-9. Appellants argue as if the Examiner found that Dalton’s holding clip (mounting apparatus 10) is capable of connecting to a rain sensor just as it connects to an ESL 40. However, the Examiner made no such finding. Rather, the Examiner found that Dalton’s holding clip is capable of connecting to an appropriately configured rain sensor so that it is positioned between the plate (frame 12) and holding frame (channel 44), with the plate (frame 12) extending substantially across a rear side of the sensor, and the plate (frame 12) covering the rain sensor. Ans. 3-4, 8-9. Therefore, Appellants’ argument is not responsive to the rejection as articulated by the Examiner. Consequently, Appellants have failed to demonstrate error in the rejection of claim 1, and we sustain the rejection of claims 1, 2, 6, 7, and 9- 13. Claim 8 Claim 8 depends indirectly from claim 1 and recites, “wherein said bent edge (24) is provided with a recess for a plug connector (43) of said sensor (10).” Appellants argue that the space adjacent Dalton’s tab portion 26 is not a recess for a plug connector of the sensor as claimed because the space adjacent tab portion 26 does not receive structure of any kind and because Appeal 2011-002959 Application 11/654,708 7 that space cannot do so due to the presence of adjacent screw 54.6 Br. 10- 11. Claim 8 does not positively recite the structure of a plug connector, and for that reason, Appellants’ contention that the space adjacent tab portion 26 does not receive structure of any kind is not commensurate in scope with claim 8. See In re Self, 671 F.2d at 1348. Claim 8 calls for a recess capable of receiving a plug connector, and the Examiner found that Dalton’s device is capable of doing so. See Ans. 9. Further, Appellants’ contention that screw 54 would prevent receiving structure in the space adjacent tab portion 26 is not supported by the reference. Dalton discloses that tab portion 26 provides a stop for screw 54, and Dalton is silent regarding screw 54 protruding into the space adjacent tab portion 26. See Dalton, col. 2, l. 20; see also Ans. 9 (placement of an appropriately sized rain sensor not inhibited by screw 54). Consequently, Appellants have failed to demonstrate error in the rejection of claim 8. Claim 35 Claim 35 depends from claim 1 and recites, “wherein said plate (22) has a portion extending between said holding arm (26) and said detent arm (28) that is spaced farther from said holding frame (12) than the entire rear side of said sensor (10) when said sensor is connected with said holding clip (16).” According to Appellants, any structure mounted in Dalton’s device, including a rain sensor, would have a portion that extends through aperture 6 Appellants’ argument is unpersuasive, in part, because Appellants provide no supporting evidence. See In re Pearson, 494 F.2d at 1405. Appeal 2011-002959 Application 11/654,708 8 42 of frame 12 and thus not be spaced farther from channel 44 (the holding frame) than the frame 12 (plate) as called for in claim 35.7 This contention is incorrect. Dalton’s holding clip (mounting apparatus 10) is capable of connecting to an appropriately sized rain sensor so that the rain sensor fits into the U-shaped area formed by wall portions 18c and 18d of frame 12, and first inward extending portion 28 and upward extending portion 30 of bottom portion 16. Dalton, col. 2, ll. 8-11, 21-26; fig. 2; Ans. 9 (Examiner’s annotated version of Dalton’s Figure 2 showing an example of an appropriately sized rain sensor). Appellants fail to demonstrate error in the rejection of claim 35. II. Claims 1-11 and 35 as anticipated by Watanabe Claims 1-4, 6, 7, and 9-118 Appellants argue that Watanabe is a mounting member for an electronic shelf display and not a holding clip as claimed. Br. 12. This argument is nonresponsive because the Examiner found that Watanabe’s shelf mounting member 1 has the structure of claim 1 and is capable of connecting to a sensor as claimed. Ans. 4-5. Appellants argue that Watanabe contains no indication that shelf mounting member 1 is capable of securing a rain sensor. Br. 12. Appellants’ argument suggests that Watanabe must disclose the capability to secure a rain sensor as claimed. We disagree. 7 Appellants repeat the argument that Dalton’s screw 54 would prevent a rain sensor from being secured between the frame 12 (plate) and the channel 44 (holding frame). As explained in the analysis of claim 8, supra, that is not the case. 8 Appellants argue claims 2-4, 6, 7, and 9-11 as a group, and we select claim 1 as representative. Br. 13; see 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2011-002959 Application 11/654,708 9 A claim reciting an apparatus may be anticipated by a reference disclosing a device which includes each and every structural limitation in the claim and which is capable of performing each and every functional limitation in the claim. See, e.g., In re Schreiber, 128 F.3d at 1478-79. There is no additional requirement that capability of performing the function is explicit in the reference. Appellants argue that Watanabe is not capable of connecting to a rain sensor as claimed because screw member 12 and guide member 13 occupy the interior of the mounting member, and because the showcase shelf to which shelf mounting member 1 is attached has a smooth, arcuate contour. Br. 12. Appellants bear the burden to prove that Watanabe’s device is not capable of connecting to a sensor as claimed. The Examiner provided an illustration of how Watanabe’s device has such capability, and Appellants’ argument does not cogently explain how that illustration is in error. See Ans. 5-7, 11. Appellants argue that replacing electronic shelf display 3 with a rain sensor would not meet the limitations of claim 1. Br. 12-13. Such argument is nonresponsive because this anticipation rejection does not specify that a rain sensor replaced electronic shelf display 3. See Ans. 4-5, 10-11. Appellants fail to demonstrate error in the rejection of claim 1 and claims 2-4, 6, 7, and 9-11 fall with claim 1. Claim 5 Claim 5 depends indirectly from claim 1, and recites, “wherein an opening (40) for a fixing projection (42) of said sensor (10) is provided in said spring tongue (38).” Appeal 2011-002959 Application 11/654,708 10 Appellants argue that the opening in Watanabe’s screw guide member 13 receives male screw member 12 and therefore cannot correspond to an opening that receives a fixing portion of a sensor as claimed. Br. 13-14. In other words, Appellants argue that screw guide member 13 cannot be an opening as claimed because it receives male screw member 12 instead of a fixing projection as claimed. However, the Examiner found that Watanabe’s male screw member 12 corresponds to a fixing projection as claimed. Ans. 11. For that reason, Appellants’ argument does not demonstrate error in the rejection. Claim 8 Claim 8 depends indirectly from independent claim 1 and recites, “wherein said bent edge (24) is provided with a recess for a plug connector (43) of said sensor (10).” Appellants argue that the space between engaging portion 7 and mounting leg 5 cannot be a recess for a plug connector of the sensor as claimed because this space does not receive or retain any portion of the apparatus. Br. 14. Our analysis parallels that of claim 8 as anticipated by Dalton, supra, and as such, we sustain the rejection of claim 8 as anticipated by Watanabe. Claim 35 Appellants repeat the argument presented against the rejection of claim 35 as anticipated by Dalton. See Br. 15. Such argument is unpersuasive as explained supra. Appeal 2011-002959 Application 11/654,708 11 III. Claims 1-3, 6, 7, 14, 15, 17, 20, 22, 23, 30, 31, and 36 as anticipated by Schmitt Claims 1-3, 6, 7, 12-15, and 179 Appellants argue that claim 1 calls for the plate to cover a substantial portion of the rear side of the rain sensor. Br. 17-18. As explained in the analysis of claim 1 as anticipated by Dalton, supra, this claim construction is incorrect and such argument is unpersuasive because it is not commensurate in scope with the claim. As such, we sustain the rejection of claims 1-3, 6, 7, 12-15, and 17. Claims 20, 22, 23, 30, and 3110 Appellants argue that Schmitt’s plate (fastening part 14) is not a plate as called for in claim 20 because it does not cover a majority of the rain sensor. Br. 19-20. Independent claim 20 calls for the plate to extend from the at least one holding arm to the at least one detent arm. As in claim 1, this limitation relates to length (“extending from”) rather than area. Claim 20 calls for the plate to extend from the at least one holding arm to the at least one detent arm across the rear side of the sensor and does not call for the plate to substantially cover the rear side of the sensor. Therefore, this argument is not persuasive because it is not based upon a limitation of claim 20. Appellants also argue that claim 20 is patentable over Schmitt because a person of ordinary skill in the art would not modify Schmitt’s fastening 9 Appellants argue claims 1-3, 6, 7, 12-15, and 17 as a group, and we select claim 1 as representative. Br. 19; see 37 C.F.R. § 41.37(c)(1)(vii). 10 Appellants argue claims 20, 22, 23, 30, and 31 as a group, and we select claim 20 as representative. Br. 21; see 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2011-002959 Application 11/654,708 12 parts 14 such that the rear side of the sensor is substantially between the fastening part and the fastening device 16. Br. 20-21; Reply Br. 8. Such argument is not applicable to an anticipation rejection, because the Examiner did not propose to modify the reference. Consequently, we sustain the rejection of claims 20, 22, 23, 30, and 31 as anticipated by Schmitt. Claim 36 Claim 36 depends from independent claim 20, and recites, “[t]he holding clip according to claim 20, wherein said plate (22) has a portion extending between said holding arm (26) and said detent arm (28) that is spaced farther from said holding frame (12) than the entire rear side of said sensor (10) when said sensor is connected with said holding clip (16).” In other words, the portion of the plate extending between the holding and detent arms must be spaced farther from the holding frame than the entire rear side of the sensor. Appellants present two contentions why Schmitt does not disclose a plate having a portion that extends between the holding and detent arms as claimed: (1) fastening part 14 covers a small percentage of the entire rearward facing surface of sensor housing part 12, and (2) the rearward facing portion of housing part 12 extends farther from the fastening device 16 than the fastening part 14. Br. 21. The first contention is premised on the claim construction that a plate as claimed must cover a majority of the rain sensor. Br. 19-20. As explained with regard to claim 20, supra, this argument is not commensurate in scope with the claim. Appeal 2011-002959 Application 11/654,708 13 Appellants’ second contention compares how far the rearward facing portion of housing part 12 extends from the fastening device 16 than the fastening part 14. This is not the comparison required by claim 36. Claim 36 requires that the portion of the plate (curved portion of fastening part 14) extending between the holding and detent arms (two trapezoidal bracket tabs 26) must be spaced farther from the holding frame than the entire rear side of the sensor. See Ans. 5-7, 13. Therefore, this contention, as the one prior, is unpersuasive because it is not based upon a limitation found in claim 36. IV. Claims 18, 24, and 32-34 as unpatentable over Schmitt Claim 18 depends indirectly from independent claim 14 and claims 24 and 32-34 depend indirectly from independent claim 20. Appellants argue for the patentability of these claims by repeating the arguments for independent claims 14 and 20 as anticipated by Schmitt. Br. 21-22. For the reasons given in the analysis of the third rejection, supra, those arguments are unpersuasive here as well. DECISION We affirm the Examiner’s decision to reject claims 1-15, 17, 18, 20, 22-25, and 30-36. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED mls