Ex Parte Zaech et al

Patent Trial and Appeal Board

Oct 13, 2017

13746347 (P.T.A.B. Oct. 13, 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.
2178-0587 5802
EXAMINER
MORGAN, EILEEN P
ART UNIT PAPER NUMBER
3723
MAIL DATE DELIVERY MODE
13/746,347 01/22/2013
10800 7590 10/13/2017
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
Roman Zaech
10/13/2017 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 ROMAN ZAECH, PETER EGGENBERGER,
and SIMON ZURCHER
Appeal 2016-002941
Application 13/746,3471
Technology Center 3700
Before STEFAN STAICOVICI, WILLIAM A. CAPP, and
ANTHONY KNIGHT, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1—16 under 35 U.S.C. § 102(e) as anticipated by Seth
(US 2013/0260656 Al, pub. Oct. 3, 2013).2 We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
1 Robert Bosch GmbH is the applicant as provided in 37 C.F.R. § 1.46 and
identified as the real party in interest in Appellant’s Appeal Brief. Appeal
Br. 2.
2 The Seth patent application was filed December 31, 2012.
Appeal 2016-002941
Application 13/746,347
THE INVENTION
Appellants’ invention relates to grinding wheel hole patterns for
removing swarf from a machining surface. Spec. 1. Claim 1, reproduced
below, is illustrative of the subject matter on appeal.
1. A structural unit having a hole pattern for sucking away
swarf from a machining surface comprising:
at least three first recesses arranged along a first spiral line,
the first spiral line having a first origin offset from a center
point of the structural unit; and
at least three second recesses arranged along a second spiral
line, the second spiral line having a second origin offset from
the center point, wherein the second spiral line intersects the
first spiral line in a region of at least one recess of the at least
three first recesses and the at least three second recesses.
OPINION
Appellants ’ “New Rejection ” Contention
In their Reply Brief, Appellants argue that the Examiner’s Answer
contains a new ground of rejection. Reply Br. 2. In support thereof,
Appellants direct our attention to the following language in the Answer.
New grounds of rejection (if any) are provided under the
subheading “NEW GROUNDS OF REJECTION.”
Reply Br. 2, Ans. 2. Appellants admit, however, that the Answer contains
no such subheading. Reply Br. 2.
The Examiner’s statement on page 2 of the Answer is, more-or-less,
standard, boiler-plate language that we frequently see in many, if not most,
Examiner Answers and with which we are quite familiar. The parenthetical
phrase - “if any — in the Examiner’s statement indicates to us that there is
no new grounds of rejection in the Answer unless otherwise specified as
indicated.
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Application 13/746,347
Appellants also contend that the Answer presents a number of new
rejections based on passages from Seth cited by the Examiner in the Answer.
Reply Br. 3. The Final Rejection states one, and only one, ground of
rejection, namely, that all pending claims are unpatentable under 35 U.S.C.
§ 102(e) as anticipated by Seth. Final Action 2. The Examiner maintains
this ground of rejection in the Answer. Ans. 2 (“Every ground of rejection
set forth the [Final Action] ... is being maintained”). The Examiner’s
citation to additional evidentiary support in Seth is in response to arguments
raised in the Appeal Brief, and thus, is not a “new ground” of rejection.
Moreover, by filing the Reply Brief, Appellants indicate an intent to
maintain the appeal, rather than reopen prosecution. See 37 C.F.R. §
41.39(b)(2). Furthermore, our rules provide that:
Any request to seek review of the primary examiner’s failure to
designate a rejection as a new ground of rejection in an
examiner4 s must be by way of petition to the direct under
§ 1.181 of this title filed within two months from the entry of
the examiner’s answer and before the filing of any reply brief.
Failure of appellant to timely file such a petition will constitute
a waiver of any argument that a rejection must be designated as
a new ground of rejection.
37 C.F.R. § 41.40(a) (emphasis added). By failing to timely petition to the
Director, Appellants have waived any argument that the Answer contains a
new ground of rejection. Id.
Anticipation by Seth
Claim 1
The Examiner finds that Seth discloses all of the elements of claim 1.
Final Action 2. Appellants’ traverse raises two arguments, namely: (1) Seth
merely discloses a pattern but no associated device with recesses as claimed;
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Application 13/746,347
and (2) the origin of Seth’s spiral lines is not offset from center as claimed.
Appeal Br. 5—7. In response, the Examiner states, correctly, that Seth, as a
whole, discloses a grinding wheel disc with recesses to remove swarf.
Ans. 3. The Examiner also finds that Figures 9 and 12 of Seth depict
patterns that are offset. Id. at 4.
Seth discloses an abrasive article with a plurality of apertures arranged
in a non-uniform, spiral distribution pattern. Seth, Abstract. A person of
ordinary skill in the art would understand that Seth’s Figures, such as but not
limited to Figure 2, depict exemplary patterns for the apertures. Seth further
teaches that:
a spiral pattern can be any curve, or set of curves, that emanates
from a central point on the abrasive article and extends
progressively farther away as it revolves around the central
point. The central point can be located at or near the center of
the abrasive article, or alternatively, away from the center of the
abrasive article.
Seth 175 (emphasis added). We interpret Seth’s recital of “away from the
center” as satisfying the limitations in claim 1 directed to an origin that is
“offset from a center point.” Claims App.
The Examiner’s findings of fact are supported by a preponderance of
the evidence and we sustain the rejection of claim 1.
Claim 2
Claim 2 depends from claim 1 and adds the limitation: “wherein: each
of the first origin and the second origin are located on an elliptic ring
extending about the center point.” Claims App. Appellants argue that the
Examiner fails to identify where Seth discloses that the origins of the spirals
are located on an ellipse. Appeal Br. 8. In response, the Examiner directs
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Application 13/746,347
our attention to Figures 9 and 12 of Seth as evidence satisfying the limitation
of claim 2. Ans. 5.
We have reviewed Figures 9 and 12 of Seth. These Figures appear to
support the Examiner’s finding that the origin of at least a first and a second
spiral are located on an ellipse that extends around the center point as
claimed. Seth, Figs. 9 and 12. Appellants provide neither evidence nor
persuasive technical reasoning that rebuts the Examiner’s position or
otherwise apprises us of Examiner error. In particular, Appellants fail to
explain how an ellipse cannot be defined by almost any two points in space.
Consequently, we sustain the rejection of claim 2.
Claims 3—5 and 8—10
These claims depend, directly or indirectly, from claim 1. Claims
App. Appellants contend that the Examiner’s rejection of each of these
claims lacks sufficient detail to constitute proper rejections. Appeal Br. 9
(citing 37 C.F.R. § 1.104). In response, the Examiner states that the
rejection and the corresponding figures of Seth show the claimed subject
matter and pattern of apertures. Ans. 4.
Claim 3 depends from claim 2 and adds the limitation: “wherein the at
least three first recesses are arranged at intersection points of the first and
second spiral lines.” Claims App. The Examiner finds Figures 9 and 12 of
Seth show patterns of holes with clockwise and counterclockwise
intersecting spiral lines. Ans. 4.
The Patent and Trademark Office (“PTO”) satisfies its initial burden
of production by “adequately explain[ing] the shortcomings it perceives so
that the applicant is properly notified and able to respond.” Hyatt v. Dudas,
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Application 13/746,347
492 F.3d 1365, 1370 (Fed. Cir. 2007). The governing statute provides, in
pertinent part, that whenever a claim is rejected:
the Director shall notify the applicant thereof, stating the
reasons for such rejection . . . together with such information
and references as may be useful in judging of the propriety of
continuing the prosecution of his application;
35 U.S.C. § 132(a). To violate section 132, a rejection must be “so
uninformative that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection.” Chester v. Miller, 906 F.2d 1574, 1578
(Fed. Cir. 1990); In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).
In the instant case, it is true that the Examiner’s rejection is short and
succinct. Final Action 2. However, it is equally true that the subject matter
of the claims, for the most part, merely relates to a geometric pattern formed
by holes or recesses arranged in spiral lines. Furthermore, in response to the
Appeal Brief, the Examiner augmented the final rejection with additional
findings of fact taken from passages in Seth. Ans. 3—5.
However, rather than analyze, for example, Figures 9 and 12 of Seth,
and compare them to the subject matter of claims 3—5 and 8, Appellants
merely complain that the Examiner’s rejection lacks detail. Reply Br. 3—5.
However, if Seth’s patterns depicted in Figures 9 and 12, in fact, fail to
satisfy the recitals of claims 3—5 and 8, Appellants should be able to
distinguish Seth from the claimed invention through analysis and persuasive
reasoning. This they have failed to do. Therefore, we are not apprised of
error with respect to the rejection of claims 3—5 and 8.
Claim 9 depends from claim 1 and adds the limitation: “wherein the
structural unit is a grinding wheel.” Claims App. Claim 10 depends from
claim 1 and adds the limitation: “wherein the structural unit is a grinding
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Application 13/746,347
plate.” Id. The Examiner identifies paragraphs 94 and 127—133 as
satisfying these limitations. Ans. 2. These findings by the Examiner are not
rebutted by Appellants. See Reply Brief generally.
Under the circumstances, we are not prepared to find that the
Examiner’s rejection is so uninformative that Appellants have been
effectively prevented from countering the grounds of rejection. Appellants
having otherwise failed to present evidence or persuasive argument
apprising us of error, we sustain the Examiner’s rejection of claims 3—5
and 8—10.
Claims 6—7
Appellants do not argue for the separate patentability of claims 6
and 7 apart from arguments presented with respect to claim 1 which we have
previously considered. We sustain the rejection of claim 6 and 7. See 37
C.F.R. § 41.37(c)(iv) (failure to separately argue claims).
Claim 11
Claim 11 is an independent claim. Claims App. In traversing the
Examiner’s rejection, Appellants raise the same arguments regarding Seth
showing only a pattern but not recesses and regarding lack of an offset origin
that we considered and found unpersuasive with respect to the rejection of
claim 1 and find equally unpersuasive here. Appeal Br. 11.
Appellants also contend that the Examiner’s rejection fails to make
appropriate findings regarding a grinding wheel and a grinding plate as
claimed. Appeal Br. 11. In response, the Examiner states the Appellants’
grinding plate, as disclosed at element 14 of the application, is essentially a
backing or back-up plate as shown in Appellant’s Figure 2. The Examiner
states that a corresponding disclosure is found in the Abstract and in
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paragraph 127 of Seth. Ans. 5, Seth 1127 (back-up pad comprised of a
plurality of air flow paths disposed in a spiral pattern).
Appellants present neither evidence nor persuasive technical
reasoning to rebut the Examiner’s findings or otherwise apprise us of error.
We sustain the Examiner’s rejection of claim 11.
Claim 12
Claim 12 depends from claim 11 and adds the limitation: “wherein the
first origin is located on an elliptic ring, the elliptic ring having a center
point which is offset from the center point of the grinding wheel.” Claims
App. Appellants argue that the Examiner fails to make sufficient findings
regarding where the claimed subject matter is disclosed in Seth. Appeal
Br. 12—13. According to the claim language, the elliptic ring can be defined
by a single point on the ellipse. Under elementary principles of geometry,
this claim language can be satisfied by a first origin located at any point on
the surface of the grinder disc.
Under the circumstances, we determine that the Examiner’s factual
findings are sufficient. See Ans. 4. We sustain the rejection of claim 12.
Claims 13 and 14
Appellants’ traverse to the rejections of claims 13 and 14 is resolved
adversely to Appellants along the lines of our discussion with respect to
claims 2 and 12 hereinabove. We sustain the rejection of claims 13 and 14.
Claims 15 and 16
These claims depend, direct or indirectly, from claim 11. Claims
App. Appellants contend that the Examiner’s rejection of each of these
claims lacks sufficient detail to constitute proper rejections. See Appeal
Br. 15-16 (citing 37 C.F.R. § 1.104).
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Application 13/746,347
We reiterate our previous discussion with respect to claims 3—5
and 8—10 above. Chester, 906 F.2d at 1578; Jung, 637 F.3d at 1362
(section 132 is violated “when a rejection is so uninformative that it prevents
the applicant from recognizing and seeking to counter the grounds for
rejection.”).
As before, rather than analyze, for example, Figures 9 and 12 of Seth,
and compare them to the subject matter claimed in claims 15 and 16,
Appellants merely complain that the Examiner’s rejection lacks detail. See
Reply Br. generally. However, if Seth’s patterns depicted in Figures 9
and 12, in fact, fail to satisfy the recitals of claims 15 and 16, Appellants
should be able to distinguish Seth from the claimed invention through
analysis and persuasive reasoning. As before, this they have failed to do.
Appellants having failed to present evidence or persuasive argument
apprising us of error, we sustain the Examiner’s rejection of claims 15
and 16.
DECISION
The decision of the Examiner to reject claims 1—16 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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