Ex Parte Bebesel et al

Board of Patent Appeals and Interferences

May 17, 2011

10838233 - (D) (B.P.A.I. May. 17, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARIUS BEBESEL, PETER JANKER, RUDOLF MAIER,
HENNING STREHLOW
____________

Appeal 2009-010745
Application 10/838,233
Technology Center 3600
____________

Before WILLIAM F. PATE III, MICHAEL W. O’NEILL, and
FRED A. SILVERBERG, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Marius Bebesel et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1-11, 13, 14, 18-23, 36, and 37
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement and the enablement requirement, and claims 1-11,
13, 14, 18-31, and 35-37 under 35 U.S.C. § 102(e) as anticipated by
Strehlow (US 6,480,609 B1, iss. Nov. 12, 2002). An oral hearing was
Appeal 2009-010745
Application 10/838,233

2
conducted on Apr. 14, 2011. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The Invention
The claims on appeal relate to a device for oscillation insulation in a
transmission path.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A device for oscillation insulation in a
transmission path, comprising[:]
a first body structured and arranged to
undergo an oscillation movement;
at least one rigid connection element[;]
a second body connected to said first body
via said at least one rigid connection element;
an actuator device attached to said at least
one connection element; and
a sensor unit arranged at an interface
between said at least one connection element and
the second body; and
a regulator unit, connected to said sensor
unit, being arranged to control said actuator device
to perform an elastic deformation equivalent to an
oscillation movement of said first body.

OPINION
The Examiner finds, while the original disclosure provides antecedent
basis for limiting the sensor unit to be arranged at an interface, the originally
filed disclosure “does not describe or illustrate this feature in a manner
which allows one skilled in the art to appreciate the scope and meaning of
the recitation.” Ans. 3. Appellants contend that the originally filed
disclosure at paragraph [0072] describes the sensor unit as being arranged at
Appeal 2009-010745
Application 10/838,233

3
an interface between the rigid connection element 2 and the second body 3,
and such a written disclosure is depicted in Figure 2a. App. Br. 6.
We find that the Specification as originally filed sets forth an adequate
written description of the invention as now claimed. We agree with
Appellants that original paragraph [0072] adequately describes that the
sensor unit is arranged at an interface between the rigid connection element
2 and the second body 3. We agree with Appellants that Figure 2a depicts
this claimed arrangement of structural features. As such, we reverse the
Examiner’s rejection of claims 1-11, 13, 14, 18-23, 36, and 37 under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
Turning to the Examiner’s rejection with respect to the
nonenablement of the claims, we agree with the Appellants (App. Br. 8-9)
that the Examiner has failed to establish a prima facie case of lack of
enablement. We find that the Examiner failed to specifically identify what
information is missing and why a person having ordinary skill in the art
could not make or use the claimed invention without undue experimentation.
It appears that the Examiner concludes that a lack of enablement necessarily
results from a finding of an inadequate written description. However, this is
an improper standard for determining whether the claimed invention is
enabled by the originally filed disclosure, since our reviewing court has held
that the description requirement is separate and distinct from the enablement
requirement within 35 U.S.C. § 112. Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1345 (Fed. Cir. 2010). As such, we conclude that the
Examiner has failed to set forth sufficient findings in order to conclude that
undue experimentation would be required to make or use the claimed
Appeal 2009-010745
Application 10/838,233

4
invention. Thus, we are constrained to reverse the Examiner’s rejection of
claims 1-11, 13, 14, 18-23, 36, and 37 under 35 U.S.C. § 112, first
paragraph, for lack of enablement.
Turning to the Examiner’s anticipation rejection, we find that
Strehlow does not have a sensor unit at an interface between at least one
rigid connection element and a second body. We further find that the
Examiner has not set forth sufficient evidence and/or technical reasoning
that Strehlow’s system inherently creates elastic deformations equivalent to
the primary vibrations of the body. It appears from our review that Strehlow
superimposes counter oscillations to the strut 5 in order to cancel the
primary vibrations emanating from the power plant and transmission (the
first body). Thus, we are constrained to reverse the Examiner’s rejection of
claims 1-11, 13, 14, 18-31, and 35-37 as anticipated by Strehlow.

DECISION
We REVERSE the Examiner’s decision to reject claims 1-11, 13, 14,
18-23, 36, and 37 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement and the enablement
requirement, and claims 1-11, 13, 14, 18-31, and 35-37 under 35 U.S.C.
§ 102(e) as anticipated by Strehlow.

REVERSED

Klh