Ex Parte Bauer

Patent Trial and Appeal Board

May 31, 2017

12683570 (P.T.A.B. May. 31, 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.
12/683,570 01/07/2010 Andreas BAUER P37818 3423
7055 7590 06/02/2017
GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
EXAMINER
LINFORD, JAMES ALBERT
ART UNIT PAPER NUMBER
3679
NOTIFICATION DATE DELIVERY MODE
06/02/2017 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):
gbpatent@gbpatent.com
greenblum.bernsteinplc@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREAS BAUER
Appeal 2015-006918
Application 12/683,570
Technology Center 3600
Before: WILLIAM A. CAPP, LEE L. STEPINA, and
FREDERICK C. LANEY, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1—
5, 12, 13, and 21—25.1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.
CLAIMED SUBJECT MATTER
The claims are directed to a coupling device. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1 Claims 6—11 are cancelled, and claims 14—20 are withdrawn. Appeal Br. 3.
Appeal 2015-006918
Application 12/683,570
1 A coupling device comprising:
a first part;
a second part;
a sealing ring; and
a clip,
wherein:
the clip is constructed and arranged to fix in a locking
manner a coupling counterpart when the coupling counterpart is
inserted into an open end of the first part;
the sealing ring is in contact with the first part and with the
second part and extends radially along an internal surface of the
first part,
the first part comprises two sloping faces having an acute
angle in a direction of the clip movement,
the clip is movable in a perpendicular direction with
respect to a direction in which the coupling counterpart can be
inserted into the first part, and comprises a U-shaped form having
two ends which are guided on the sloping faces of the first part;
at least one sloping face of the first part comprises a stop
structured and arranged to block further movement of the clip
toward an unlocking position from a locking position; and
the two ends of the clip are arranged on one side of an
imaginary plane passing through a center axis of the first part in
each of the locked and unlocked positions.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
2
Appeal 2015-006918
Application 12/683,570
Eschbaugh
Rautureau
Stoll
US 2003/0052484 A1
US 2008/0001398 A1
US 2008/0224469 A1
DE 100 17 679 C 1
US 3,826,823 July 30, 1974
Mar. 20, 2003
Jan. 3, 2008
Sept. 18,2008
June 9, 2001
Ostergren
Bauer2 3 4
REJECTIONS
(I) Claims 1, 2, 5, 12, 13, and 21—25 are rejected under 35 U.S.C.
§112, first paragraph, as failing to comply with the written description
requirement.3,4
(II) Claims 1, 2, 5, 12, 13, and 21—25 are rejected under 35 U.S.C.
§112, second paragraph, as indefinite.5
(III) Claims 1,21, and 22 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite for omitting essential structural cooperative
relationships of elements.
(IV) Claims 1, 2, 5, 12, 13, and 21—23 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Bauer.
(V) Claims 1—5, 12, 13, and 21—23 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Stoll, Rautureau, and Eschbaugh.
2 Our citations to the text of Bauer refer to the English-language translation
of this reference made of record on May 12, 2015.
3 The Examiner also objected to the drawings (Final Act. 2—3) and
Specification (Final Act. 5—6) as including new matter.
4 The Examiner withdrew a portion of each of the rejections of claims 21
and 22. Ans. 3.
5 The Examiner withdrew a portion of the rejection of claim 1 as indefinite.
Ans. 2-4.
3
Appeal 2015-006918
Application 12/683,570
(VI) Claims 24 and 25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Bauer and Ostergren.6
(VII) Claims 24 and 25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Stoll, Rautureau, Eschbaugh, and Ostergren.
OPINION
Rejection (I), Written Description (New Matter)
In finding a lack of written description for the claimed subject matter,
the Examiner states:
Claim 1 [,] in the last two lines[,] recites “the two ends of
the clip are arranged on one side of an imaginary plane passing
through a center axis of the first part in each of the locked and
unlocked positions” and claims 21 and 22 in the last three lines
in each claim recites “wherein the end portions of the first and
second legs are arranged on one side of an imaginary horizontal
plane passing through the center axis of the first part in each of
the locked and unlocked positions”. As noted above, there is no
support in the original disclosure for this imaginary plane and
thus the issue of new matter is raised.
Final Act. 7 (emphasis added).
We agree with Appellant’s argument (see Appeal Br. 11—18) that the
requirement for “two ends of the clip . . . arranged on one side of an
imaginary plane passing through a center axis of the first part in each of the
locked and unlocked positions” is supported by the original Specification
and drawings. The imaginary plane set forth in the above-noted claim
language is not itself a claimed feature, but is instead used to describe what
is already shown in the original figures, in particular, Figure 2, and to
6 The Examiner refers to Ostergren as “Kristian” in some instances. See,
e.g., Final Act. 29.
4
Appeal 2015-006918
Application 12/683,570
positionally limit other features recited in the claim. As illustrated in Figure
2, reference numbers 14a and 14b depict clip 14 in the locked and unlocked
(released) positions, respectively. Spec. 138. As further shown in Figure 2,
the ends of clip 14 are lower than the center axis of the first part in both the
locked and unlocked positions. Although the center axis of the first part is
not marked in Figure 2, a person of ordinary skill in the art would
understand where this axis is inasmuch as a major portion of first part 2 in
Figure 2 includes a cylindrical opening, and the axis of this cylindrical
opening is the central axis of the first part. Accordingly, we do not sustain
the Examiner’s new matter rejection of claims 1,21, and 22 and associated
dependent claims 2, 5, 12, 13, and 23—25.
Objections to Drawings
The Examiner also objected to the drawings for various reasons,
including for introducing new matter. See Final Act. 2—5. Appellant argues
that the objections to the drawings should be addressed as part of the present
Appeal. Appeal Br. 9. Ordinarily, an objection is reviewable by petition
under 37 C.F.R. § 1.181 and a rejection is appealable to the Patent Trial and
Appeal Board. However, when the issue of new matter presented is the
subject of both an objection and a rejection, the issue is appealable. Manual
of Patent Examining Procedure (MPEP) § 2163.06, II. Review of New
Matter Objections And/Or Rejections (9th Ed., Rev. 7, November 2015).
See also MPEP § 608.04(c) (“where the alleged new matter is introduced
into or affects the claims, thus necessitating their rejection on this ground,
the question becomes an appealable one, and should not be considered on
petition even though that new matter has been introduced into the
specification also.”).
5
Appeal 2015-006918
Application 12/683,570
We do not see sufficient correspondence between any of the
objections to the drawings for including new matter (Final Act. 2—5) and the
rejections of the claims for reciting new matter (Final Act. 6—7) to warrant
addressing those objections. Specifically, the issue addressed in Rejection
(I) is not pertinent to the issues in the objections to the drawings for
including new matter. See Final Act. 2—3, 7. To the extent the drawing
objections relate to the above-noted imaginary plane, the objections are not
for introducing new matter. Id-
Objections to Specification
Appellant asserts that the objection to the Specification “is properly
appealable and properly reviewable by way of appeal rather than petition.”
Appeal Br. 11. Appellant then states that the “new matter objection is
entirely based on Appellant’s introduction of the description of new Fig. 5
into the specification, this objection should necessarily be sustained or
withdrawn based on whether new Fig. 5 is determined to introduce new
matter or not.”
As discussed above, we do not see sufficient correspondence between
any of the objections to the drawings and the rejections of the claims for
reciting new matter to warrant addressing those objections. As we do not
address the drawing objection relating to Figure 5, we likewise do not
address the objection to the Specification based on the added description of
Figure 5.
Rejection (II), Indefiniteness
Claim 1 recites, in part, “at least one sloping face of the first part
comprises a stop structured and arranged to block further movement of the
6
Appeal 2015-006918
Application 12/683,570
clip toward an unlocking position from a locking position.” Appeal Br. 50
(Claims App.).
The Examiner determines that “[i]t is unclear as to where the stop is
positioned and how the stop blocks further movement towards an unlocked
position.” Final Act. 7. The Examiner poses the inquiry, “if there is an
unlocked position and there is a stop [ ] positioned to block further
movement of the clip toward an unlocking position then it is unclear how the
device can ever be unlocked. How can there be an unlocked position if
movement there towards is blocked?” Id. at 7—8.
Appellant argues that a person of ordinary skill in the art would
recognize sloping faces 20 and 21 and stops 25 and 26 in Figures 2 and 3.
Appeal Br. 19.
The Examiner does not adequately explain why the particular position
of the stop and how the stop performs its recited function need to be further
defined in claim 1. Claim 1 recites the above-noted features functionally,
and structure that performs these functional requirements satisfies the
requirement in this portion of the claim. Although possibly unartfully
worded in claim 1, a person of ordinary skill in the art would understand that
the recited stops prevent movement of the clip in a particular direction. See
Spec. 139. The direction of movement is from the unlock position to the
lock position, but the stop recited in claim 1 does not require the clip to
remain in the lock position.
The Examiner also finds that it is unclear how the sealing ring recited
in claim 1 is in contact with the first part and with the second part because
Figure 1 “does not show any such contact.” Final Act. 8.
7
Appeal 2015-006918
Application 12/683,570
Appellant argues that a person of skill in the art would understand that
sealing ring 10 depicted in Figure 1 is in contact, via an annular surface,
with first part 2 and second part 3. Appeal Br. 20.
We disagree with the Examiner on this point because a person of
ordinary skill in the art, reading the Specification, would understand what is
meant by the statement, “the sealing ring is in contact with the first part and
with the second part.” Whether Figure 1 shows or does not show contact is
not dispositive as to whether a person of ordinary skill would understand
what is required by the claim.
The Examiner also finds that the locked and unlocked positions
recited in claim 1 are not defined. Final Act. 8. Appellant discusses the two
positions of clip 14 depicted in Figure 2 and asserts that a person of ordinary
skill in the art would “recognize” what is shown. Appeal Br. 20.
We disagree with the Examiner on this point. Appellant’s
Specification states:
The first part can preferably have a locking device with which
the coupling counterpart can be fixed in a locking manner. The
coupling counterpart is therefore releasably connected to the first
part. This is important in particular for repair work. A locking
connection thereby ensures that unintentional release does not
occur.
Spec. Ill; see also id. 26, 38-41, 44; Fig. 2. Thus, the locking and
unlocking position describe two positions of the clip recited in claim 1. A
person of ordinary skill in the art would understand that one position is
configured to lock the coupling counterpart, and one is configured to release
it.
8
Appeal 2015-006918
Application 12/683,570
Rejection (III), Omitting an Essential Element
The Examiner finds that claims 1,21, and 22 are “incomplete for
omitting essential structural cooperative relationships of elements.” Final
Act. 9.
With respect to claims 1,21, and 22, the Examiner finds that the
imaginary planes set forth are not depicted in the drawings, and
since it is an imaginary plane and not really there and not really
shown in the drawings then the examiner can imagine any plane
(an infinite number of) as long as it merely passes through the
center axis of the first part. This imaginary plane does not even
have to intersect any structure as long as the imaginary plane
passes through a center axis of the first part.
Final Act. 10.
The Examiner also finds that
the imaginary plane is not described in the specification and the
imaginary plane is not illustrated in the drawings and thus any
positional relationship based off of something imaginary (not
real) is not clear and precise because one skilled in the art could
not begin to comprehend that which is not real and that which is
based off of something that is not real, not shown, and not
described in the specification.
Id. at 11 (emphasis omitted).
We disagree because, as discussed above, the use of the imaginary
plane in claims 1,21, and 22 describes structure depicted in these drawings,
a person of ordinary skill in the art would understand where the axis of the
first part is, and a plane passing through this axis7 satisfies this limitation in
claim 1. With respect to claims 21 and 22, the Examiner finds that it is
unclear how the sealing ring mates with the first and second part. Final Act.
7 In the case of claims 21 and 22, a horizontal plane passing through the axis.
9
Appeal 2015-006918
Application 12/683,570
9-10. As discussed above, a person of ordinary skill in the art would
understand that this language requires contact between the sealing ring and
the first and second parts. The Examiner does not explain why further
description on this point is necessary. Accordingly, we do not sustain the
Examiner’s rejection of claims 1,21, and 22 under 35U.S.C. § 112, second
paragraph, for omitting essential structural elements.
Rejection (IV), Anticipation by Bauer8
The Examiner finds that Bauer anticipates claim 1, and, regarding the
recited “clip [that] is constructed and arranged to fix in a locking manner a
coupling counterpart when the coupling counterpart is inserted into an open
end of the first part,” the Examiner finds that clip 3 of Bauer corresponds to
the clip, retaining ring 5 corresponds to the coupling counterpart, and
coupling part 1 corresponds to the first part. Final Act. 12.
Appellant asserts that securing ring 5 of Bauer is not inserted or
insertable into the open end of coupling part 1, and instead, securing ring 5
is positioned outside of coupling part 1. Appeal Br. 25.
In response, the Examiner provides an annotated copy of Figure 2 of
Bauer indicating where securing ring 5 is inserted and why this position
qualifies as being in an open end of the first part. Ans. 29-30.
Appellant replies that the Examiner’s interpretation of claim 1 is
improper, and “[a] fair reading of claim 1 in light of Appellant's disclosure
allows for insertion of a coupling counterpart into the open end of the first
part so that it can be fixed by the clip and prior to or at the time of fixing the
8 Appellant makes separate arguments for claims 24 and 25 in relation to an
“anticipation” rejection based on Bauer. See Appeal Br. 30-33. However,
as noted by the Examiner (Ans. 37), claims 24 and 25 were not rejected as
anticipated by Bauer (see Final Act. 11—15).
10
Appeal 2015-006918
Application 12/683,570
coupling counterpart with the clip.” Reply Br. 13. Appellant asserts that,
“[i]n contrast, the so-called coupling counterpart 5 [securing ring 5] is slid
onto an outer surface of an inner portion 30 of part 1 in an apparent attempt
to axially retain the O-ring 4. [Securing ring] 5 does not slide into the open
front end of part 1 so that it can be fixed by a clip.” Id.
The Examiner has the better position on this point. As shown in
Figure 1 of Bauer, receiving portion 6 is defined by two walls, namely,
radially outer peripheral wall 10 and a radially inner circumferential wall 11.
Figure 2 of Bauer depicts securing ring 5 within receiving portion 6, i.e.,
between radially outer peripheral wall 10 and radially inner circumferential
wall 11. We appreciate Appellant’s argument that securing ring 5 is
disposed on the outer surface of coupling part 1 (specifically, the outer
surface of outer peripheral wall 11). However, the fact that securing ring 5
is on the outside of one portion of coupling part 1 does not negate the fact
that securing ring 5 has been inserted, and is located in, another portion of
coupling part 1. As for Appellant’s contention that securing ring 5 is not
inserted so that it can be fixed by a clip, for the reasons discussed below, we
further agree with the Examiner that securing ring 5 is indeed fixed by clip 3
of Bauer.
Appellant asserts that in Bauer, clip 3 fixes part 2 to coupling part 1
and is not used to fix securing ring 5. Instead, Appellant further asserts,
securing ring 5 appears to be coupled to the coupling part 1 via a groove
engagement 33/34. Appeal Br. 26.
The Examiner answers this assertion by pointing out that securing ring
5 is fixed on a locking manner when coupling parts 1 and 2 are fixed in a
locking manner by clip 3. See Ans. 29; see also Bauer, Fig. 1. In this
11
Appeal 2015-006918
Application 12/683,570
regard, the Examiner finds that claim 1 does not require direct contact
between the coupling counterpart and the clip. Ans. 29.
Appellant replies that (i) claim 1 does not recite a clip that fixes a first
part to a second part, (ii) clip 3 of Bauer does not fix securing ring 5, clip 3
only fixes in a locking manner coupling part 1 to coupling part 2, and (iii)
connection arrangement 33/34 is what fixes securing ring 5 to the coupling
part 1. See Reply Br. 11—14
We agree with the Examiner on this point. As the Examiner correctly
notes (Ans. 29), claim 1 does not require direct contact between the clip and
the coupling counterpart. Additionally, although we appreciate Appellant’s
argument that clip 3 of Bauer constrains coupling part 2, clip 3 also fixes, in
a locking manner, securing ring 5. This is true even if the “fixing” is
performed with an intermediate component placed between clip 3 and
securing ring 5 and even if other structure assists in holding securing ring 5
in place. In this regard, claim 1 does not require the clip to be the only item
that fixes the coupling counterpart.
In the Reply Brief, for the first time, Appellant argues “[a] reasonable
interpretation of BAUER would not characterize part 5 as an insertable
coupling counterpart.” Reply Br. 12. The Final Action cited securing ring 5
as the coupling counterpart (see, e.g., Final Act. 12), and the Appeal Brief
did not contest this finding (Appeal Br. 25—26). Thus, this issue was before
Appellant prior to filing the Appeal Brief. Appellant does not show good
cause as to why we should address this newly raised argument. We decline
to consider arguments raised for the first time by Appellant in the Reply
Brief. See 37 C.F.R. § 41.41(b)(2) (“Any argument raised in the reply brief
which was not raised in the appeal brief, or is not responsive to an argument
12
Appeal 2015-006918
Application 12/683,570
raised in the examiner's answer,. . . will not be considered by the Board for
purposes of the present appeal, unless good cause is shown.”).
We have considered all of Appellant’s timely arguments regarding
Rejection (IV), but are not apprised of Examiner error. Accordingly, we
affirm the Examiner’s rejection of claim 1 as anticipated by Bauer. Claims
2, 12, and 13 depend from claim 1, and Appellant does not make additional
arguments distinguishing these claims over Bauer. Accordingly, we affirm
the rejection of claims 2, 12, and 13 as anticipated by Bauer.
Appellant makes substantially similar arguments for the patentability
of independent claims 21 and 22 as those discussed above regarding claim 1.
For the same reasons discussed above, we sustain the Examiner’s rejection
of claims 21 and 22 as anticipated by Bauer.
Claim 5
Dependent claim 5 depends from claim 1 and recites, in part,
“wherein the second part comprises a stop to limit an insertion distance for
the coupling counterpart.” Appeal Br. 51 (Claims App.).
The Examiner finds that Figures 1 and 2 of Bauer disclose the above-
noted limitation, but does not identify any specific component in these
figures as meeting the requirements of claim 5. Final Act. 13. In the
Answer, the Examiner provides an annotated copy of Figure 2 of Bauer with
reference numeral 4000 added to identify what the Examiner believes
corresponds to the stop recited in claim 1. Ans. 35. Reference numeral
4000 identifies a portion of coupling part 2 immediately to the left (as shown
in Figure 2) of securing ring 5 of Bauer. Id. The Examiner determines that
the identified portion 4000 limits the insertion of the coupling part because
“[t]he claim language does not require the stop to limit an insertion distance
13
Appeal 2015-006918
Application 12/683,570
for the coupling counterpart into the first part. The claim language merely
requires that the second part has a stop and the stop limits an insertion
distance for the coupling counterpart.” Id. (emphasis added).
Appellant argues that “[cjlaim 5 requires that counterpart be inserted
or insertable into the first part and that a stop of the second part limits this
insertion.” Appeal Br. 29 (emphases added). We agree with Appellant on
this point. The insertion that is limited by the stop recited in claim 5 is not
just any insertion into any component, it is the insertion that occurs when
“the coupling counterpart is inserted into an open end of the first part.”
Thus, we do not sustain the Examiner’s rejection of claim 5 as anticipated by
Bauer.
Claim 23
Dependent claim 23 depends from claim 1 and recites, in part,
“wherein the stop of the at least one sloping face is arranged on one side the
imaginary plane passing through the center axis of the first part while a
grippable part of the clip is arranged on an opposite side of the imaginary
plane in each of the locked and unlocked positions.” Appeal Br. 53 (Claims
App.).
Regarding claim 23, the Examiner states:
as best understood: Bauer discloses that the stop of the at least
one sloping face is arranged on one side the imaginary plane
passing through the center axis of the first part while a grippable
part of the clip is arranged on an opposite side of the imaginary
14
Appeal 2015-006918
Application 12/683,570
plane in each of the locked and unlocked positions (see Figs. 1
and 2).
Final Act. 15.
In the Final Action, the Examiner does not further indicate what structure
satisfies the requirements of claim 23.
Appellant also argues that the structure disclosed by Bauer does not
provide a stop in a location satisfying the requirements of claim 23 because
the end 19 of clip 3 would pass across the recited plane when transitioning
between locked and unlocked positions. Appeal Br. 29-30.
In response, the Examiner quotes page 6 of Bauer, stating:
In the grooves 21 may during the radial extraction of the
retaining clip in each case one of the end portions 19 engage, to
prevent inadvertent complete radial pulling out of the retaining
clip 3 from the slots 12, the end portions 19 then abut
respectively on one of the radial side walls 22, as the leg 15 are
under a radially inward preload.
Ans. 37 (quoting Bauer, 6,11. 15—18).
Thus, the Examiner finds that end portions 19 abut one of radial side walls
22 of Bauer, and this qualifies as the recited stop.
Appellant attempts to rebut this finding, stating:
The problem with this assertion is that BAUER does not
use a stop on the sloping surface between element 20 and element
23/21 in Fig. 1. Instead, BAUER teaches that the clip 3 can
unlock the connection between parts 1 and 2 when the ends 19
are positioned between these elements, and there is no stop
between these positions.
Reply Br. 15—16. Accordingly, Appellant argues that the stop is not
positioned on the particular sloping surface required by claim 23.
We agree with Appellant on this point inasmuch as the text from
Bauer quoted by the Examiner merely indicates that one of side walls 22 will
15
Appeal 2015-006918
Application 12/683,570
provide an abutting surface, which would appear to qualify as a stop for clip
3. However, it is not clear from the quoted text that the stop is on a sloping
surface as required. Accordingly, the Examiner’s finding on this point is not
supported by a preponderance of the evidence, and we do not sustain the
Examiner’s rejection of claim 23 as anticipated by Bauer.
Rejection (V), Unpatentability over Stoll, Rautureau, and Eschbaugh
In the rejection of claim 1 as unpatentable over Stoll, Rautureau, and
Eschbaugh, the Examiner states that Stoll discloses “an imaginary plane
passing through a center axis of the first part (see Figs. 1—13),” but fails to
disclose “at least one sloping face of the first part comprises a stop
structured and arranged to block further movement of the clip toward an
unlocking position from a locking position.” Final Act. 16. The Examiner
finds Rautureau teaches “at least one sloping face of the first part comprises
a stop structured (see Figs. 1-4C) and arranged to block further movement of
the clip toward an unlocking position from a locking position (see Figs. 1-
4C), for the purpose of providing a means [to] control the movement of the
clip.” Id. at 16—17.
From this, the Examiner reasons:
As for the recitations “and the two ends of the clip are
arranged on one side of an imaginary plane passing through a
center axis of the first part in each of the locked and unlocked
positions” the device of Stoll as modified by Rautureau and
Eschbaugh would have had said structural relationships and/or
modifications as recited above.
Appeal Br. 16—18.
16
Appeal 2015-006918
Application 12/683,570
Appellant asserts that Rautureau discloses that
the clip ends 66/67 are arranged on one side of an imaginary
plane passing through a center axis of the first part in in the
unlocked position (see Figs. 2B and 2C) and on another side of
the imaginary plane passing through a center axis of the first part
in [sic]in the locked position (see Figs. 3B and 3C).
Appeal Br. 35 (emphasis added). Thus, Appellant contends, the ends of the
clip in Rautureau travel across the pertinent plane. In contrast, Appellant
argues, claim 1 requires the ends of the clip to be positioned on the same
side of the imaginary plane in both the locked and unlocked positions. Id.
In response, the Examiner provides an annotated version of Figure 3
of Stoll including a line identifying what the Examiner describes as an
imaginary plane passing through the a center axis of the first part in Stoll,
and the Examiner states:
Thus, Stoll as modified by Rautureau and Eschbaugh does
set forth the clip ends 66/67 are arranged on one side of an
imaginary plane passing through a center axis of the first part in
in the unlocked position (see Figs. 2B and 2C) and on another
side of the imaginary plane passing through a center axis of the
first part in in the locked position (see Figs. 3B and 3C) and the
appellant argues, but rather Stoll as modified by Rautureau and
Eschbaugh makes obvious the two ends of the clip are arranged
on one side of an imaginary plane passing through a center axis
of the first part in each of the locked and unlocked positions.
Ans. 38—39 (emphasis added).
In reply, Appellant states:
The claims recite the imaginary plane as a reference point
for determining the movement position of a clip and especially
the clip ends - in each of locked and unlocked positions. Since
STOLL does not show a clip at all, much less, ends of the clip,
17
Appeal 2015-006918
Application 12/683,570
the imposition of any imaginary planes in STOLL by the
Examiner is meaningless.
Reply Br. 16.
Although paragraph 20 of Stoll undercuts Appellant’s contention that
Stoll “does not show a clip at all,” the Examiner does not adequately explain
how the combination of Stoll, Rautureau, and Eschbaugh meets every
element recited in claim 1. In particular, it is not clear how the ends of the
clip in the proposed modification will remain on the same side of the
imaginary plane set forth in claim 1. The Examiner’s contention that Stoll,
as modified by Rautureau and Eschbaugh, makes obvious such an
arrangement falls short of providing rational underpinnings for a conclusion
of obviousness. Accordingly, we reverse the Examiner’s rejection of claim
1 as unpatentable over Stoll, Rautureau, and Eschbaugh. Independent claims
21 and 22 recite substantially similar features to those discussed above with
respect to claim 1, and we likewise reverse the Examiner’s rejection of
claims 21 and 22 as unpatentable over Stoll, Rautureau, and Eschbaugh.
Claims 2—5, 12, 13, and 23 all depend from claim 1, and we likewise do not
sustain the Examiner’s rejection of these claims as unpatentable over Stoll,
Rautureau, and Eschbaugh.
Rejection (VI), Bauer and Ostergren
Claim 24
The Examiner relies on Ostergren to teach continuous movement “for
the purpose of providing a means that fully opens the mating components to
allow for disengagement.” Final Act. 27. The Examiner reasons it would
have been obvious to modify Bauer to include the continuous movement
taught by Ostergren “for the purpose of providing a means that fully opens
the mating components to allow for disengagement, to provide a structural
18
Appeal 2015-006918
Application 12/683,570
arrangement which would have been obvious to try, and to provide a
structural arrangement which would have yielded the same predictable
results of allowing disengagement of mating components.” Id.
Appellant asserts that the ends of the clip in Bauer do not stop until
reaching part 18. Appeal Br. 44. Appellant also argues:
There appears to be no logical basis for replacing the clip 3 of
[Bauer] with that disclosed in OSTERGREN. Indeed, the
Examiner has justified the combination based essentially on the
basis that OSTERGREN teaches the continuous movement of
the legs but ignores the fact that [Bauer] intends a contrary
result.
Appeal Br. 44 (emphasis added).
We disagree with Appellant’s arguments because, as discussed above,
Bauer indicates that one of side walls 22 will provide an abutting surface,
which would appear to quality as a stop for clip 3. Bauer, 6,11. 15—18.
Further, Appellant’s assertion that Bauer intends a different result is not
persuasive inasmuch as this rejection is based on a combination of
references, and Appellant’s argument amounts to nothing more than pointing
out a minor difference in Bauer’s structure. Appellant does not point to
anything in Bauer that teaches away from the Examiner’s proposed
modification or that even indicates that the Examiner’s proposed
modification would have any undesirable effect on Bauer’s function.
Accordingly, we sustain the Examiner’s rejection of claim 24 as
unpatentable over Bauer and Ostergren.
Claim 25
Dependent claim 25 requires that “the two ends are spaced from each
other by a larger amount when the clip has its movement further blocked by
19
Appeal 2015-006918
Application 12/683,570
the stop than in at any position arranged between the locked and unlocked
positions.” Appeal Br. 53 (Claims App.).
Appellant argues that Bauer allows movement of clip 3 until ends 19
and projections 18 make contact, and, when contact between these
components occurs, ends 19 are spaced from each other by the same amount
as when ends 19 are first introduced into grooves 21. Appeal Br. 45. We
disagree with Appellant’s argument because, as discussed above, side walls
22 of Bauer (not projections 18) provide an abutting surface, which qualifies
as a stop for clip 3.
Appellant also argues against the combination of Bauer and Ostergren
on essentially the same basis as discussed above regarding claim 24 (Appeal
Br. 46), and for the same reasons, we disagree with Appellant’s argument.
Accordingly, we sustain the Examiner’s rejection of claim 25 as
unpatentable over Bauer and Ostergren.
Rejection (VII), Stoll, Rautureau, Eschbaugh, and Ostergren
The Examiner’s use of Ostergren does not remedy the deficiencies in
the rejection of independent claim 1 as unpatentable over Stoll, Rautureau,
Eschbaugh. See Final Act. 29-30. Accordingly, we do not sustain the
Examiner’s rejection of claims 24 and 25 over these references.
DECISION
(I) The Examiner’s rejection of claims 1, 2, 5, 12, 13, and 21—25 as
failing to comply with the written description requirement is reversed.
(II) The Examiner’s rejection of claims 1, 2, 5, 12, 13, and 21—25 as
indefinite is reversed.
20
Appeal 2015-006918
Application 12/683,570
(III) The Examiner’s rejection of claims 1,21, and 22 as indefinite
for omitting essential structural cooperative relationships of elements is
reversed.
(IV) The Examiner’s rejection of claims 1, 2, 5, 12, 13, and 21—23 as
anticipated by Bauer is affirmed as to claims 1,2, 12, 13,21, and 22, but
reversed as to claims 5 and 23.
(V) The Examiner’s rejection of claims 1—5, 12, 13, and 21—23 as
unpatentable over Stoll, Rautureau, and Eschbaugh is reversed.
(VI) The Examiner’s rejection of claims 24 and 25 as unpatentable
over Bauer and Ostergren is affirmed.
(VII) The Examiner’s rejection of claims 24 and 25 as unpatentable
over Stoll, Rautureau, Eschbaugh, and Ostergren is reversed.
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-IN-PART
21