Ex Parte Bea

Patent Trial and Appeal Board

May 21, 2018

13823203 (P.T.A.B. May. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/823,203 07/09/2013 Dominik Bea
50438 7590 05/23/2018
Juneau & Mitchell Law Firm
1727 King Street
Suite 300
Alexandria, VA 22314
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Westphal Connect 3829
EXAMINER
HANNON, TIMOTHY
ART UNIT PAPER NUMBER
3659
NOTIFICATION DATE DELIVERY MODE
05/23/2018 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):
info@juneaupartners.com
tjuneau@juneaumitchell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOMINIK BEA
Appeal2017-009249
Application 13/823,203 1
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL C. ASTORINO, and
AMEE A. SHAH, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant appeals from the
Examiner's decision rejecting claims 1, 4, 6, and 7. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b ).
We REVERSE.
1 According to the Appellant, the real party in interest is "IMS Gear SE &
Co. KGaA." Br. 2.
Appeal2017-009249
Application 13/823,203
STATEMENT OF THE CASE
Claimed Subject Matter
Claim 1, the sole independent claim, is representative of the subject
matter on appeal and is reproduced below.
1. A connecting structure for mechanical connection of a first
housing with a second housing, wherein one face of the second
housing has a hollow cylindrical recess for inserting the first
housing, characterized in that (i) the hollow cylindrical recess is
formed of a ring-shaped collar, (ii) the hollow cylindrical recess
exists prior to insertion of the first housing; and (iii) for
producing a frictional connection of the first housing with the
second housing, the collar comprises at least one tensioning
element, which in radial direction with respect to the collar is in
active connection with the first housing, wherein the first housing
is a motor housing and the second housing is designed as a
modular transmission housing in the axial direction, wherein a
face side surface of the motor housing lies flush on a recess base
of the hollow cylindrical recess, and wherein the tensioning
element is designed as a threaded pin, wherein the first housing
further comprises a radially arranged engagement groove for the
threaded pin in the area of the collar.
Rejections
Claims 1, 4, and 6 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Oberle et al. (US 2008/0197733 Al, pub. Aug. 21, 2008)
("Oberle") and Huang (US 2006/0163481 Al, pub. July 27, 2006).
Claim 7 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Oberle, Huang, and Nardone (US 2,687,789, iss. Aug. 31,
1954).
2
Appeal2017-009249
Application 13/823,203
ANALYSIS
The Examiner finds that Oberle does not disclose "wherein the
tensioning element is designed as a threaded pin" and "wherein the first
housing further comprises a radially arranged engagement groove for the
threaded pin in the area of the collar," as recited in claim 1. Final Act. 4.
The Examiner relies on Huang to remedy the deficiency of Oberle.
See id. at 4--5. Specifically, the Examiner relies on an embodiment of
Huang shown in Figure 5 and finds that screw 262 corresponds to the
claimed "threaded pin" and radial screw hole 251 corresponds to the claimed
"radially arranged engagement groove." Id. at 4; see Huang i-f 66.
Additionally, the Examiner determines that "[i]t would have been
obvious to one of ordinary skill in the art ... to have derived a threaded pin
and engagement groove from Figure 5, as taught by Huang, to add to the
structure taught by Oberle" to "allow the [Oberle's connecting] structure to
be even more secure." Final Act. 5.
The Appellant argues that "the combined teachings of Oberle and
Huang ... do not [teach] a radially arranged engagement groove." Br. 13.
The Appellant asserts that "Huang does not use the words 'radially arranged
engagement groove' or any similar phrasing, as required by the claims,"
rather Huang refers to element 251 as a "radial screw hole[]." Id. at 12.
The Appellant's Specification describes radially arranged engagement
groove 6 for threaded pin 5 (Spec. i-fi-1 16, 28, 39, 55, original claim 3,
Figs. 1, 3). The Specification also describes threaded hole 13 for threaded
pin 5. See Spec. i-fi-1 52, 62, Figs. 1-3. In this case, the terms "radially
arranged engagement groove" and "threaded hole" are used in the
Specification to identify different structural features.
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Appeal2017-009249
Application 13/823,203
Huang uses the terms "groove" and "hole" similar to the Appellant's
Specification as Huang describes element 251 as a screw hole and element
252 as an annular groove. Huang i-fi-166, 67, Figs. 5, 6. And, Haung's screw
hole 251 closely resembles threaded hole 13 of the present application rather
than radially arranged engagement groove 6.
As such, we agree with the Appellant that the Examiner's finding that
Huang teaches a "radially arranged engagement groove," as required by
claim 1, is not adequately supported. Additionally, we do not understand the
Examiner's response, in the Answer, to include sufficient facts and
reasoning to remedy the deficiency of the Examiner's finding with regard to
the claimed "radially arranged engagement groove."
Thus, we do not sustain the Examiner's rejection of claim 1, and
dependent claims 4 and 6, as unpatentable over Oberle and Huang. The
remaining rejection based on Oberle and Huang in combination with
Nardone relies on the same erroneous finding discussed above, which is not
cured by additional findings and/ or reasoning associated therewith. As such,
we do not sustain the Examiner's rejection of claim 7 as unpatentable over
Oberle, Huang, and Nardone.
DECISION
We REVERSE the Examiner's decision rejecting claims 1, 4, 6,
and 7.
REVERSED
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