Ex Parte Wasser et al

Patent Trials and Appeals Board

Sep 24, 2012

11250578 - (D) (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 09/25/2012
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
09/25/2012 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 APPEAL

STATEMENT OF THE CASE
Tobias Wasser and Johannas Baumgartner (Appellants) seek our
review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims
11, 12, and 14-20. We have jurisdiction under 35 U.S.C. § 6(b).

We AFFIRM.
Appeal 2010-008748
Application 11/250,578

2
THE INVENTION
Appellants’ claimed invention relates to an actuator for operating a
valve. Spec 1
1
. Claim 11 is the independent claim on appeal and is
reproduced below:
11. An actuator for operating a valve, comprising:
a drive component;
a drive shaft, which is connectable with the valve;
a torque lock, which is connectable with the drive shaft;
at least one entraining element on said drive component;
and
at least one blocking piece on said drive shaft, wherein:
said torque lock includes at least one essentially
rotationally symmetric spring element arranged in a ring-shaped
housing;
said torque lock is so constructed that a torque introduced
via said drive component rotates said drive shaft, and a torque
introduced via the valve blocks rotation of said drive shaft;
the two end regions of said rotationally symmetrical
spring element are so embodied and arranged that, in case of an
introduction of the torque via said drive component, said at
least one entraining element so interacts with the two end
regions of said rotationally symmetrical spring element that
said torque lock is unlocked and said drive shaft rotates; and
in the case of an introduction of the torque via the valve,
said at least one blocking piece so interacts with the two end
regions of said rotationally symmetrical spring element that
said torque lock locks.

1
The Specification referred to is the Substitute Specification filed on Jan. 6,
2006.
Appeal 2010-008748
Application 11/250,578

3
THE REJECTIONS
Appellants seek review of the following rejections:
Claims 11, 14, and 19
2
are rejected under 35 U.S.C. § 102(b) as
anticipated by Allenbaugh (US 3,940,107, issued Feb. 24, 1976).
Claim 12 is rejected under 35 U.S.C. §103(a) as unpatentable over
Allenbaugh and Rude (US 5,058,720, issued Oct. 22, 1991).
Claims 15 and 17 are rejected under 35 U.S.C. §103(a) as
unpatentable over Allenbaugh and Tice (US 5,137,257, issued Aug. 11,
1992).
Claim 16 is rejected under 35 U.S.C. §103(a) over Allenbaugh and
Payne (US 5,168,200, issued Dec. 1, 1992).
Claim 18 is rejected 35 U.S.C. §103(a) over Allenbaugh, Tice and
Riester (US 2006/0081800 A1, published Apr. 20, 2006).
Claim 18 is rejected under 35 U.S.C. §103(a) over Allenbaugh, Tice
and Milleville (US 2,855,940, issued Oct. 14, 1958).

2
The Examiner states that “claim 15 was erroneously stated as rejected
under 102 in the final rejection while it was actually rejected under 103.”
Ans. 3.
Appeal 2010-008748
Application 11/250,578

4
Claim 20 is rejected under 35 U.S.C. §103(a) over Allenbaugh and
Hubbard (US 3,726,370, issued April 10, 1973).
3

ANALYSIS
In addressing the rejection of claim 11, the Appellants present two
arguments. First, the Appellants propose Allenbaugh discloses “no rotation
of the valve. It is only turned from the open position to the locked position.”
Appeal Br. 5. The Examiner responds that “turning of valve and rotation of
valve are synonymous.” Ans. 7. The Appellants attempt to clarify their
arguments by stating that Allenbaugh discloses “movement through an arc
not rotation.” Reply Br. 1. The Appellants further contend that rotation
requires at least 360° of rotation. Reply Br. 2. We disagree. The concept
that rotation of 90 is not rotation is unreasonable. In addition, the
Specification is silent as to any restriction on the amount of rotation or type
of valve used in the invention. Second, the Appellants argue that the pre-
stressed spring of Allenbaugh does not allow “unhindered rotation” of the
drive shaft which would result in a system that has a lower efficiency.

3
Claims 17 and 18 were rejected under 35 U.S.C. §112, second paragraph,
as being indefinite. The Appellants contend that “An AMENDMENT
UNDER 35 USC 1.116 AND 41.33(a) is being filed herewith to remove the
rejection of claims 17 and 18 under 35 USC 112.” Appeal Br. 2. Although
we find no such amendment in the electronic record of this application, we
note that claim 17 as reproduced in the Claims Appendix of the Appellants’
Appeal Brief differs from the version of claim 17 presented in the most
recent amendment of record, filed August 4, 2008, in that claim 17 in the
Appendix depends from claim 15 rather than from claim 11. Further, the
Examiner accepted claim 17 as reproduced in the Appendix as “correct”
(Ans. 2), and did not restate the indefiniteness rejection in the Answer.
Therefore, we do not review this rejection in this opinion, and we leave to
the Examiner clarification of the status of claim 17.
Appeal 2010-008748
Application 11/250,578

5
Appeal Br. 5. The Examiner has correctly determined that “unhindered
rotation” is not required by claim 11. See Ans. 7. For the reasons stated
above, we do not find either of the Appellants’ arguments persuasive and
sustain the Examiner’s rejection as to claim 11. The Appellants do not
present separate arguments for claims 14 and 19. Therefore, we affirm the
rejection of claims 11, 14, and 19.
For the remaining six rejections related to claims 12, 15-18 and 20,
the Appellants argue that none of the added secondary references (Rude,
Tice, Payne, Riester, Milleville, or Hubbard) “rehabilitate Allenbaugh.”
Appeal Br. 5. As determined above, Allenbaugh does not require
“rehabilitation” as it is not deficient in overcoming the anticipation rejection.
As such, the Appellants’ argument against the last six rejections is rendered
moot by our determination above that there is no underlying deficiency in
Allenbaugh that requires rehabilitation. Therefore, we affirm the
Examiner’s last six rejections related to claims 12, 15-18 and 20.

DECISION
We affirm the decision of the Examiner to reject claims 11, 12, and
14-20.
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

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