Ex Parte Oberle et al

Patent Trial and Appeal Board

Nov 9, 2016

11574305 (P.T.A.B. Nov. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111574,305 02/26/2007
34044 7590 11/14/2016
MICHAEL BEST & FRIEDRICH LLP (Bosch)
100 EAST WISCONSIN A VENUE
MILWAUKEE, WI 53202
FIRST NAMED INVENTOR
Hans-Juergen Oberle
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.
022862-1109-00 2889
EXAMINER
BOES, TERENCE
ART UNIT PAPER NUMBER
3658
NOTIFICATION DATE DELIVERY MODE
11/14/2016 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):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HANS-JUERGEN OBERLE, WILLI SCHMIDT, and
ANDREAS LIENIG
Appeal2014-009516
Application 11/574,305
Technology Center 3600
Before EDWARD A. BROWN, AMANDA F. WIEKER, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Hans-Juergen Oberle et al. ("Appellants") appeal under 35 U.S.C.
§ 134(a) from the Examiner's non-final decision rejecting claims 1-5, 7, 8,
and 19-31. 1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and designate our affirmance as NEW GROUNDS OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Appellants submit the real party in interest is Robert Bosch GmbH.
Appeal Br. 2 (filed Jan. 16, 2014).
Appeal2014-009516
Application 11/574,305
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A gear drive unit ( 1 ), which is fastened on a base part ( 50),
the gear drive unit (1) comprising:
a spindle ( 40), on which a drive gear ( 42) that drives the
spindle (40) is provided, the drive gear (42) having a
substantially constant diameter along its entire axial length;
a drive assembly (20), which drives the drive gear ( 42)
by a driven element (500); and
a gear housing (30) on which the drive assembly (20) is
mounted and which operationally couples at least the driven
element (500) and the drive gear (42),
wherein at least one additional support (100,100') is
positioned in the gear housing such that the driven element
(500) is disposed at least partially radially outside of the at least
one additional support (100,100'), and the drive gear (42) is
mounted in the at least one additional support, and the at least
one additional support is fastened to the base part (50) and
supports the gear housing (30), in that the at least one additional
support (100, 100') is substantially tubular in shape, and in that
the at least one additional support (100, 100') has at least one
radial opening (130), through which the driven element (500) of
the drive assembly (20) and the drive gear ( 42) are connected to
one another.
Appeal Br. i (Claims App.) (emphasis added).
2
Appeal2014-009516
Application 11/574,305
REJECTIONS
1) Claims 1-5, 7, 8, and 19-31 are rejected under 35 U.S.C. § 112,
first paragraph, as lacking the written description requirement.
2) Claims 1-5, 7, 8, and 19-31 are rejected under 35 U.S.C. § 112,
second paragraph, as indefinite.
3) Claims 1, 2, 4, 5, 8, 19-29, and 31 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Houston (US 6,575,421 Bl, iss. June 10,
2003).
4) Claims 3, 7, and 30 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Houston and Gauger (US 5,613,402, iss. Mar.
25, 1997).
DISCUSSION
35 U.S. C. § 112, First Paragraph-Written Description
Independent claims 1 and 19 each contain the limitation "the drive
gear ( 42) having a substantially constant diameter along its entire axial
length." Appeal Br. i-ii (Claims App.). The Examiner finds that this
limitation is not "in the original disclosure" and "does not appear in the
drawings." Non-Final Act. 2. The Examiner finds that Appellants' element
40 is a spindle nut that is formed integrally with drive gear 42, while the
spindle (element 41) is "a separate component located inside of the spindle
nut 40." Ans. 11. The Examiner then reasons that "drive gear 42 is merely
a portion (emphasis added) of spindle nut 40. It is clear that this drive gear
portion 42 is integrally formed with the unnumbered stepped down side
portions of the rest of the spindle nut (40)." Id. at 10-11.
The Specification discloses that element 40, the "spindle component,"
includes spindle 41, worm wheel 42, and ball 43. Spec. i-f 24. The Examiner
3
Appeal2014-009516
Application 11/574,305
has not directed us to any part of the Specification where element 40 is
described as a spindle nut, or where element 40 is described as being formed
integrally with drive gear 42 (termed "worm wheel" in the Specification).
The Examiner also does not direct us to any part of the Specification
describing drive gear 42 as having stepped down side portions. Based on the
foregoing, the Examiner's rejection is not supported by the disclosure in the
Specification. Nonetheless, we sustain the rejection of claims 1-5, 7, 8, and
19-31 under the written description requirement of 35 U.S.C. § 112, first
paragraph, for different reasons.
In response to the Examiner's rejection, Appellants rely solely on
Figure 3 of the application for support for this limitation. Appeal Br. 5.
Appellants do not point to any original disclosure in support of this
limitation. Id. Our review of the original disclosure reveals that it includes
no description regarding the diameter of the drive gear (worm wheel 42) and
does not specify whether it has a substantially constant diameter.
The Federal Circuit explained that:
The test for determining compliance with the written description
requirement is whether the disclosure of the application as originally
filed reasonably conveys to the artisan that the inventor had possession
at that time of the later claimed subject matter, rather than the presence
or absence of literal support in the specification for the claim language.
. . . The content of the drawings may also be considered in determining
compliance with the written description requirement.
In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983) (citations omitted).
Appellants' Figure 3 is a side sectional view of an embodiment of the
claimed gear drive unit illustrating drive gear 42 without any accompanying
reference to or delineation of its diameter provided in the Specification.
Spec. i-f 15. Figure 2 also illustrates drive gear 42 from a similar perspective.
4
Appeal2014-009516
Application 11/574,305
None of the drawings in the application illustrate drive gear 42 from the top,
bottom, or any other perspective. Therefore, we cannot conclude that this
one drawing, Figure 3, clearly shows that drive gear 42 has a substantially
constant diameter along its entire axial length. Cf In re Mraz, 455 F.2d
1069, 1072 (CCP A 1972) ("'Patent drawings are not working drawings
***.' However, we did not mean that things patent drawings show clearly
are to be disregarded.")( emphasis in original). In the absence of any written
description in the Specification concerning a substantially constant diameter
of the drive gear, we determine that Figure 3 standing alone would not have
reasonably conveyed to one of ordinary skill in the art that Appellants had
possession of the claimed gear unit including a drive gear having a
substantially constant diameter. We therefore exercise our discretion under
37 C.F.R. § 41.50(b) and designate as a new ground the rejection under 35
U.S.C. § 112, first paragraph, against claims 1 and 19 and claims 2-5, 7, and
8 which are dependent on claim 1, and claims 20-31 which are dependent on
claim 19, for failing to comply with the written description requirement.
35 U.S.C. § 112, Second Paragraph-Indefiniteness
The Examiner determined, for the same reasons noted above in
connection with Rejection 1, that the same limitation in claims 1 and 19
renders the metes and bounds of claims 1 and 19 unclear. Non-Final Act. 3.
This rejection is based on the same unsupported interpretation of the
Specification noted above for Rejection 1. Nonetheless, we sustain the
rejection of claims 1-5, 7, 8, and 19-31 under 35 U.S.C. § 112, second
paragraph, for different reasons.
"As the statutory language of 'particular[ity]' and 'distinct[ness]'
indicates, claims are required to be cast in clear - as opposed to ambiguous,
5
Appeal2014-009516
Application 11/574,305
vague, indefinite-terms." Jn re Packard, 751F.3d1307, 1313 (Fed. Cir.
2014 ). "It is the applicants' burden to precisely define the invention, not the
PTO's." In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). When words
of degree, such as "substantially" are used, we "must determine whether the
patent's specification provides some standard for measuring that degree ...
[and] whether one of ordinary skill in the art would understand what is
claimed when the claim is read in light of the specification." Seattle Box
Co., Inc. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir.
1984); see also Interval Licensing, LLC v. AOL, Inc., 766 F.3d 1364, 1379
(Fed. Cir. 2014) ("Claim language employing terms of degree has long been
found definite when it provided enough certainty to one of skill in the art
when read in the context of the invention").
As noted above, the Specification contains no disclosure in regard to
the diameter of the drive gear, and does not contain the phrase "substantially
constant diameter." Consequently, the Specification provides no standard
for measuring or determining the degree associated with the term
"substantially." See Seattle Box, 731 F.2d at 826. Nor does the claim
language provide sufficient certainty to one skilled in the art when read in
the context of the Specification. See Interval Licensing, 766 F.3d 1379.
We, therefore, determine that it would not have been clear to one of ordinary
skill in the art, after reading the Specification, what a "substantially constant
diameter" means in claims 1 and 19. We exercise our discretion under 3 7
C.F.R. § 41.50(b) and designate as a new ground the rejection under 35
U.S.C. § 112, second paragraph, against claims 1 and 19 and claims 2-5, 7,
and 8 which are dependent on claim 1, and claims 20-31 which are
dependent on claim 19 as indefinite.
6
Appeal2014-009516
Application 11/574,305
Anticipation by Houston and Obviousness over Houston and Gauger
We do not sustain the rejection of claims 1, 2, 4, 5, 8, 19-29, and 31
under 35 U.S.C. § 102(b) as anticipated by Houston, or the rejection of
claims 3, 7, and 30 under 35 U.S.C. § 103(a) as unpatentable over Houston
and Gauger, because these rejections are necessarily based on speculative
assumptions as to the meaning of the limitation "substantially constant
diameter" in claims 1 and 19. See In re Steele, 305 F .2d 859, 862---63
(CCPA 1962). It must be understood, however, that our decision regarding
these rejections is based solely on the indefiniteness of the claims and does
not reflect in any manner on the adequacy of the prior art evidence relied
upon in the Examiner's rejections.
DECISION
The Examiner's decision rejecting claims 1-5, 7, 8, and 19-31 under
35 U.S.C. § 112, first paragraph, is affirmed and designated as a NEW
GROUND OF REJECTION pursuant to our authority under 37 C.F.R §
41.50(b).
The Examiner's decision rejecting claims 1-5, 7, 8, and 19-31 under
35 U.S.C. § 112, second paragraph, is affirmed and designated as a NEW
GROUND OF REJECTION pursuant to our authority under 37 C.F.R §
41.50(b).
The Examiner's decision rejecting claims 1, 2, 4, 5, 8, 19-29, and 31
under 35 U.S.C. § 102(b) is reversed.
The Examiner's decision rejecting claims 3, 7, and 30 under 35 U.S.C.
§ 103(a) is reversed.
7
Appeal2014-009516
Application 11/574,305
FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision, [Appellants], within
two months from the date of the decision, must exercise one of the following
two options with respect to the new ground[s] of rejection to avoid
termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded
to the examiner. The new ground[ s] of rejection [are]
binding upon the Examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground[ s] of
rejection designated in this decision. Should the examiner
reject the claims, [Appellants] may again appeal to the
Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of
8
Appeal2014-009516
Application 11/574,305
rejection and state with particularity the points believed to
have been misapprehended or overlooked in entering the
new ground of rejection and also state all other grounds
upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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)(l )(iv).
AFFIRMED; 37 C.F.R. § 41.50(b)
9