Ex Parte Wasser et al

Patent Trial and Appeal BoardSep 24, 2012

11250578 (P.T.A.B. Sep. 24, 2012)

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. 11/250,578 10/17/2005 Tobias Wasser WASS3001/FJD 4949 23364 7590 01/16/2013 BACON & THOMAS, PLLC 625 SLATERS LANE FOURTH FLOOR ALEXANDRIA, VA 22314-1176 EXAMINER CHAUDRY, ATIF H ART UNIT PAPER NUMBER 3753 MAIL DATE DELIVERY MODE 01/16/2013 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 TOBIAS WASSER and JOHANNES BAUMGARTNER ____________ Appeal 2010-008748 Application 11/250,578 Technology Center 3700 ____________ Before: JENNIFER D. BAHR, MICHAEL L. HOELTER, and JOHN W. MORRISON, Administrative Patent Judges. MORRISON, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE Appellants filed a request for rehearing under 37 C.F.R. § 41.52 (hereinafter “Request”), dated November 26, 2012, of our decision mailed September 25, 2012 (hereinafter “Decision”). In that Decision, we affirmed the Examiner’s rejection under 35 U.S.C. § 102 of claims 11, 14, and, 19, and affirmed the Examiners rejections under 35 U.S.C. §103 of claims 12, 15-18, and 20 Appeal 2010-008748 Application 11/250,578 2 OPINION Appellants present three points which they contend the Board has misapprehended or overlooked. We grant the Request to the extent that we have considered Appellants’ arguments but otherwise deny the Request. The first point which Appellants contend the Board misapprehended or overlooked is that the Board allegedly misinterpreted that rotation of 90° is not rotation. The Appellants contend “[m]ovement about a fixed axis which is less than 360° is not a rotation but instead a segmental movement.” See Request 1. The primary dictionary definition of rotation is “the action or process of rotating on or as if on an axis or center” Merriam-Webster, http://www.merriam-webster.com/dictionary/rotation, (last visited December 21, 2012). The 90° movement around an axis of Allenbaugh is rotation according to this definition. The Appellants propose the use of the secondary definition of “one complete turn” Id. However, claim 1 requires that “torque introduced via the valve blocks rotation of said drive shaft.” The Appellants’ disclosed structure immediately (or with very small rotational movement) prevents rotation about the axis. Nothing in Appellants’ Specification indicates that the rotation is only blocked after a full 360° of rotating about the axis. Therefore, the broadest reasonable interpretation is that rotation is “any action or process of rotating on the axis or center” and does not require a “complete turn.” The Appellants’ arguments are not persuasive, as the disclosed device functions consistently with the first definition, and does not function in a manner that would indicate that a full rotation is required to block rotation of the drive shaft. Appeal 2010-008748 Application 11/250,578 3 The second point which Appellants contend the Board misapprehended or overlooked is that the Board allegedly misinterpreted that “[a] drive shaft does not refer to a member which only moves through a segment or arc. Rotary movement cannot be imparted that way.” See Request 2. As discussed above, the claims do not require a “complete turn”, and the structure disclosed by Appellants functions identically to the prior art when rotated less than 360°. The last point which Appellants contend the Board misapprehended or overlooked is that the Board allegedly needs to reconsider the obviousness rejections under U.S.C. §103(a). There is no need for such reconsideration. Claim 1 is anticipated by Allenbaugh. Other than arguments against the disclosures of Allenbaugh, Appellants fail to advance specific arguments that would show that Examiner erred in any of the obviousness rejections to claims 12, 15-18, and 20. For the above reasons, the arguments in Appellants’ Request do not convince us that we erred in affirming the Examiner’s rejection under 35 U.S.C. § 102 of claims 11, 14, and, 19, or erred in affirming the Examiner’s rejections under 35 U.S.C. §103 of claims 12, 15-18, and 20. DECISION Appellants’ Request has been granted to the extent that we have reconsidered our Decision in light of the arguments in Appellants’ Request, but is denied with respect to our making any modification to the Decision. Appeal 2010-008748 Application 11/250,578 4 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). DENIED Klh