Ex Parte Stroissnigg et al

Patent Trial and Appeal Board

Aug 17, 2017

13508492 (P.T.A.B. Aug. 17, 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.
13/508,492 06/14/2012 Horst Stroissnigg 5068.1099 1093
23280 7590 08/21/2017
Davidson, Davidson & Kappel, LLC
589 8th Avenue
16th Floor
New York, NY 10018
EXAMINER
SETLIFF, MATTHIEU F
ART UNIT PAPER NUMBER
3679
NOTIFICATION DATE DELIVERY MODE
08/21/2017 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):
ddk @ ddkpatent .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HORST STROISSNIGG, ERWIN MANSCHITZ,
MANFRED LUDWIG, WERNER KAIBACH, MANFRED SCHALLERT,
FRANZ MOESSNANG, and FERDINAND KRISTEN
Appeal 2016-000390
Application 13/508,492
Technology Center 3600
Before CHARLES N. GREENHUT, JILL D. HILL, and
ERIC C. JESCHKE, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Horst Stroissnigg et al. (“Appellants”)1 seek review under 35 U.S.C.
§ 134(a) of the Examiner’s decision, as set forth in the Final Office Action
dated October 8, 2014 (“Final Act.”), rejecting claims 6—8, 10, 12, and 13.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify Hilti Aktiengesellschaft as the real party in
interest. Appeal Br. 2. Although Appellants’ briefing lacks page
numbering, we will refer to specific pages as if each brief was numbered
starting with the cover page as page 1.
Appeal 2016-000390
Application 13/508,492
BACKGROUND
The disclosed subject matter “relates to a torque coupling.” Spec.
If l.2 Claim 6, the sole independent claim, is reproduced below:
6. A torque coupling comprising:
a shaft;
a hollow shaft;
a plurality of levers; and
bearings for the levers, the bearings non-
rotatably connected to the shaft, the levers being
spring-loaded so as to be pressed against the
hollow shaft, the levers being shaped from a steel
strip, wherein the levers have a bearing head bent
to form a circular segment, the bearing head placed
movably into a bearing receptacle made of non-
metallic materials.
REJECTIONS
1. Claims 6, 7, 10, 12, and 13 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Harless (US 2,818,950, issued Jan. 7, 1958).
2. Claim 8 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Harless and Taylor (US 4,043,437, issued Aug. 23, 1977).
3. Claims 6, 7, and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Connor (GB 2 257 493 A, published Jan. 13, 1993).
4. Claim 8 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Connor and Taylor.
2 Citations to the Specification refer to the version filed on December
9, 2013.
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Application 13/508,492
DISCUSSION
Rejection 1 — The rejection of claims 6, 7, 10,
12, and 13 as unpatentable over Harless
Claim 6 recites, among other limitations, “the levers being shaped
from a steel strip” and “a bearing receptacle made of non-metallic
materialsAppeal Br., App. A (Claims App.) (emphasis added).
In the Rejection, the Examiner acknowledged that “Harless does not
expressly disclose the levers being steel... or the bearing receptacle being
made of non-metallic materials.” Final Act. 3. The Examiner stated
“[hjowever, steel. . . and plastic and ceramic materials, and their properties
are well known in the art and it has been held that the selection of a known
material based upon its suitability (i.e. greater strength/durability, lower cost,
wear resistance) for the intended use is a design consideration within the
skill of the art.” Id. According to the Examiner,
at the time of invention, it would have been obvious to one
having ordinary skill in the art to modify the torque coupling of
Harless to include levers shaped from steel . . . and the bearing
receptacle being made of non-metallic materials . . . since it has
been held that the selection of a known material is a design
consideration within the skill of the art. In re Leshin, 227 F.2d
197, 125 USPQ 416 (CCPA 1960).
Id.
Appellants argue that “there is simply no reason or factual basis
provided, as required by MPEP 2141, for the assertion [that it would have
been obvious to make] the levers of Harless out of steel and the bearing
receptacle out of non-metallic materials.” Appeal Br. 4 (also arguing that
“[t]here is no factual basis for the proposed modification”). We agree with
Appellants.
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Application 13/508,492
The Examiner has not made sufficient findings to support the
conclusion of obviousness of claim 6 based on Harless. The record here is
distinguishable from that in In re Leshin. In that case, the court addressed
dependent claims requiring that the “container-dispenser for cosmetics”
recited in the parent claim be made from molded plastic materials. Leshin,
277 F.2d at 198—99. Before the court was a secondary reference (Anderson)
teaching the use of molded plastic in a “similar container.” Id. at 199. On
those facts, the court held that “[m]ere selection of known plastics to make a
container-dispenser of a type made of plastics prior to the invention, the
selection of the plastics being on the basis of suitability for the intended use,
would be entirely obvious.” Id.
In contrast, here, the Examiner has not shown that a person of
ordinary skill in the art would have known that “steel” or “non-metallic
materials” could be used for the structures at issue in claim 6—i.e., the
“levers” and “bearing receptacle,” respectively. Even assuming that the
Examiner is correct that, “[a]t the time of invention, steel and its properties,
and a multitude of non-metallic materials . . . and their associated properties,
were known” (Ans. 4), this does not show that these materials were known
to be suitable for the structures here. See Leshin, 277 F.2d at 199. The lack
of evidentiary support on these issues distinguishes the record here from that
in In re Leshin, and undermines the rejection here.
For these reasons, we do not sustain the rejection of claim 6, or the
rejection of claims 7, 10, 12, and 13, which depend from claim 6, as
unpatentable over Harless.
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Rejection 2 — The rejection of claim 8 as
unpatentable over Harless and Taylor
Claim 8 depends from claim 6. Appeal Br., App. A (Claims App.).
The Examiner’s added reliance on Taylor does not remedy the deficiencies
discussed above (see supra Rejection 1). Thus, for the same reasons
discussed above, we do not sustain the rejection of claim 8 as unpatentable
over Harless and Taylor.
Rejection 3 — The rejection of claims 6, 7,
and 10 as unpatentable over Connor
Claim 6 recites, among other limitations, “the bearing head placed
movably into a bearing receptacle.” Appeal Br., App. A (Claims App.)
(emphasis added). In the Rejection, the Examiner relied on Figure 1 of
Connor, stating
the bearing head ([element] 8a) placed movably (the bearing
head 8a of Connor is capable of at least some movement either
in an axial direction, which would be required to be installed
and/or removed, or slight movement in a rotational direction as
there is no express disclosure that the bearing heads 8a are fixed
by the narrow neck 7b) into a bearing receptacle (7a).
Final Act. 4.
Appellants state that “[c]laim 6 requires that the bearing head is
*placed movably into a bearing recepta[c]le’” and argue that “[t]he rolled
tubular section 8a of Connor of each blade is placed exactly the opposite:
each is placed immovably via the neck 7b so that a bend 8b results via the
bearing portion 8c.” Appeal Br. 5—6 (citing Connor at 8). We agree with
Appellants that the record here does not support the Examiner’s finding that
the relied-upon structures in Connor satisfy the limitation at issue.
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Application 13/508,492
First, we address the proper construction of the limitation “placed
movably.” During examination, claims are given their broadest reasonable
interpretation consistent with the specification, reading the claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990). The Examiner takes
the position that “the limitation ‘placed movably’ appears to be a product-
by-process/method-of-forming limitation that has been given little patentable
weight because the method of forming the claimed device is not germane to
the issue of patentability of the device itself.” Ans. 9. The Examiner also
states that “the claim does not positively set forth whether ‘placed movably’
is in regards to the assembly of the bearing head into the bearing receptacle,
or is in regards to the ability of the bearing head to move after being finally
assembled into the bearing receptacle.” Id. Appellants respond by
highlighting the language “[a] torque coupling” in the preamble of claim 6,
and arguing that “[t]he bearing head thus must be movable after assembly
into the torque coupling.” Reply Br. 3.
We agree with Appellants that, under the broadest reasonable
construction, the limitation at issue requires that, after assembly, the
“bearing head” is movable with respect to the “bearing receptacle.” This
construction is supported by the Specification, which discloses rotational
motion of levers 17 (which include bearing head 22) with respect to their
surrounding structures during operation. See, e.g., Spec. 110 (“If an applied
torque exceeds a threshold value, the levers 17 are pressed by the projections
15 towards the shaft 12 against the force of the springs 19, and the shaft 11
rotates with respect to the hollow shaft 12.”), Ill (“During the free-running
of the torque coupling 10, the outer surfaces 20 of the levers 17 rub along
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Application 13/508,492
the inside 14 of the hollow shaft 12.”). The Specification also discloses the
use of plastic for bearing 18 in order to reduce friction—i.e., during
operation—at the interface of bearing receptacle 23 (a part of bearing 18)
and bearing head 22 (a part of lever 17). See id. 112 (“The bearing
receptacle 23 made of the plastic likewise has a circular segment-like cross
section in which the bearing head 22 can be inserted. In contrast to the
attachment of the levers 17 by means of a pin, especially a pin made of
metal, a considerable reduction of the friction could be achieved here since
the wear and tear of the plastic bearing turns out to be less than that of an
attachment using a metal pin.” (emphasis added)).
As to the Examiner’s statement that “[e]ven if the claim positively set
forth that ‘placed movably’ was in regards to the ability of the bearing head
to move after being finally assembled in the bearing receptacle, the claim
does not positively set forth the type and direction of the movement” (Ans.
9), we agree with Appellants that, on the facts here, “[t]here is simply no
requirement for the claim to do so.” Reply Br. 3.
Next, we turn to the findings regarding the limitation at issue. To the
extent the Examiner relies upon movement during installation or assembly
of the structures at issue, for the reasons discussed above, such movements
do not satisfy the limitation at issue, when properly construed. See Final
Act. 4 (discussing “movement... in an axial direction, which would be
required to be installed and/or removed”).
Moreover, the preponderance of the evidence does not support the
finding of “slight movement in a rotational direction” between the “bearing
head” and the “bearing receptacle” during operation. See Final Act. 4. For
example, a lack of disclosure in Connor that the identified “bearing head”
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and the identified “bearing receptacle” are “fixed” relative to each other is
not the same as a disclosure that those structures are movable relative to
each other. Id. (noting that “there is no express disclosure that the bearing
heads 8a are fixed by the narrow neck 7b”); Ans. 9 (noting that Connor “is
silent as to the [identified] bearing head being movable or immovable once
finally placed within the [identified] bearing receptacle”); see also In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967) (discussing how a rejection
cannot be based on “speculation, unfounded assumptions or hindsight
reconstruction to supply deficiencies in its factual basis”). We agree with
Appellants that Connor does not expressly or inherently disclose movement
by the identified “bearing head” (element 8a) with respect to the identified
“bearing receptacle” (element 7a) during operation. See Connor, Fig. 1,
discussed at id. at 8; see also Reply Br. 3 (“Connor clearly has a torque
coupling where any possible asserted bearing head is placed immovably
[with respect to] any possible asserted bearing receptacle.”).
Thus, we do not sustain the rejection of claim 6, or the rejection of
claims 7, 10, which depend from claim 6, as unpatentable over Connor.
Rejection 4 — The rejection of claim 8 as
unpatentable over Connor and Taylor
Claim 8 depends from claim 6. Appeal Br., App. A (Claims App.).
The Examiner’s added reliance on Taylor does not remedy the deficiencies
discussed above (see supra Rejection 3). Thus, for the same reasons
discussed above, we do not sustain the rejection of claim 8 as unpatentable
over Connor and Taylor.
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DECISION
We reverse the decision to reject claims 6—8, 10, 12, and 13.
REVERSED
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