Ex Parte Biecker

Patent Trial and Appeal Board

Feb 2, 2015

11909813 (P.T.A.B. Feb. 2, 2015)

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.
11/909,813 05/19/2008 Peter Biecker 8953-91926 9756
22242 7590 02/02/2015
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406
EXAMINER
JOHNSON, BLAIR M
ART UNIT PAPER NUMBER
3634
MAIL DATE DELIVERY MODE
02/02/2015 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 PETER BIECKER
____________

Appeal 2013-001552
Application 11/909,8131
Technology Center 3600
____________

Before JILL D. HILL, THOMAS F. SMEGAL and
BRANDON J. WARNER, Administrative Patent Judges.

SMEGAL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Peter Biecker (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s final rejection of claims 1−12, the only claims pending in the
application on appeal. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and enter a new ground of rejection pursuant to
37 C.F.R. § 41.50(b).

1 According to Appellant, the real party in interest is Webasto AG. Appeal
Br. 3.
Appeal 2013-001552
Application 11/909,813

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CLAIMED SUBJECT MATTER
An understanding of the invention can be derived from a reading of
independent claim 1, which is reproduced below, with emphasis added to
key disputed claim limitations.
1. A roller-blind system, in particular trunk covering for the
trunk of a vehicle, with a roller-blind material which can be
wound up on a winding shaft between a covering position and
a stowed position, wherein a damping means is provided which
serves for the defined, speed reduced retraction of the roller-
blind material into the stowed position at the end of a winding-
up operation, characterized in that the damping means is
designed in order to reduce the rotational speed of the winding
shaft and to bring the rotation of the winding shaft to a
standstill within a predetermined angle of rotation of the
winding shaft, and wherein the predetermined angle of rotation
is selectable from a number of possible angles of rotation and
wherein the damping means comprises specific adjustment
means for setting the predetermined angle of rotation of the
winding shaft.

Claims App., Appeal Br. 9.
REJECTIONS ON APPEAL
The following Examiner’s rejections are before us for review.
1. Claims 1−12 are rejected under 35 U.S.C. § 112, first paragraph,
for failing to comply with the enablement requirement.
2. Claims 1−12 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Kwak (US 7,234,503 B2, iss. June 26, 2007).2

2 While Appellant contends at page 5 of the Reply Brief that the final
rejection is only of claim 1, the Examiner corrected the typographical error
at page 3 of the Answer. We also note that Appellant argued claims 3−12 in
an earlier response to this rejection in the amendment filed December 22,

Appeal 2013-001552
Application 11/909,813

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ANALYSIS
Rejection 1-Enablement
We are not persuaded by Appellant’s arguments that the Examiner
erred in finding that claims 1−12 “contain subject matter which was not
described in the specification in such a way as to enable one skilled in the art
to which it pertains, or with which it is most nearly connected, to make
and/or use the invention.”3 App. Br. 5 (citing Final Act. 2).
The standard for determining whether the Specification meets the
enablement requirement was cast in the Supreme Court decision of Minerals
Separation v. Hyde, 242 U.S. 261, 270 (1916), which postured the question:
is the experimentation needed to practice the invention undue or
unreasonable? That standard is still the one to be applied. In re Wands, 858
F.2d 731, 737 (Fed. Cir. 1988).
In particular, the Examiner finds that:
The [damping] means in the form of a viscous damper is not
adequately disclosed. The damper [also] includes a “further
component” that is “not visible in the figure”. Also, the
nonrotational member, i.e. the “further component” is said to be
“mounted in the receptacle 16” which is also not understood.

Final Act. 2.
Appellant contends that:
claim 1 is directed broadly to a “damping means” for a winding
shaft and to the predetermined angle of rotation of the winding

2011, indicating an understanding that these claims are also subject to the art
rejection.
3 Appellant provides no response to the Examiner’s further rejection of claim
12 under 35 U.S.C. § 112, first paragraph, as set forth at page 3 of the Final
Action.
Appeal 2013-001552
Application 11/909,813

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shaft that is “selectable from a number of possible angles of
rotation and wherein the damping means comprises specific
adjustment means for setting the predetermined angle of
rotation of the winding shaft.” . . . [T]he “specific adjustment
means” for “setting the predetermined angle” is the number of
control disk[s] 7 that are placed between an end piece 9 at one
end of the winding shaft 1 and the torsional viscous damper 2 at
the other end of the winding shaft 1, and the angle between lugs
8 on each of the control disk[s] 7.

Appeal Br. 5.

While agreeing “with the Examiner that a ‘further component’ is not
visible in the figures of the drawing (Office Action, page 2),” Appellant also
asserts that:
[The] disclosure clearly explains that the “further component”
in the torsional viscous damper 2 is rotationally fixed to the
fastening element 3 and therefore to the bodywork component,
and that the housing parts 5 and 6 of the torsional viscous
damper 2 are rotatable in relation to the “further component”
(paragraph [0033] [of the Specification]).
Id. (citing Spec. ¶ 10).

Thus, Appellant contends that “[i]f the claims on appeal were
specifically directed to the housing parts 5 and 6, and specific details of the
‘further component,’ then Appellant could reasonably be required to show
the specific details of the ‘further component’ in the drawing.” Appeal Br.
6. However, Appellant continues by arguing that “the ‘further component’
may not be shown in the figures of the drawing, but the description of the
‘further component’ in the disclosure would put the skilled artisan in
possession of such a ‘component’ without the need to resort to undue
experimentation.” Reply Br. 2.
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Application 11/909,813

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However, we agree with the Examiner that:
Since claim 2 recites that the damping means “is” the viscous
damper, it is unclear if the discs are considered part of the
damping means but is it very clear that the damping means of
claim 1 is a direct reference to the viscous damper. The details
of the viscous damper as well as the interaction between the
discs, elements 5, 6, etc., and the viscous damper are simply not
provided.

Answer 4.

Therefore, we agree with the Examiner that the structural details
necessary to enable the recited damping means are not adequately provided
in Appellant’s Specification.4 Furthermore, while claim 1 recites that the
damping means is designed “to bring the rotation of the winding shaft to a
standstill within a predetermined angle of rotation of the winding shaft,”
control disks 7 are the only component described as providing an angle of
rotation. See, e.g., Specification, p. 10, ll. 22−38. Thus, we find no
disclosure of how the rotation of the winding shaft would be brought to a
standstill as recited by claim 1 and conclude that undue experimentation
would be needed to practice the invention.
For the foregoing reasons, we sustain the Examiner’s rejection of
claims 1−12 as under 35 U.S.C. § 112, first paragraph, for failing to comply
with the enablement requirement.

4 This deficiency is magnified where, as here, the claim recitation is written
in a “means for” format—which is construed to cover the corresponding
structure, material, or acts described in the specification and equivalents
thereof—making sufficient disclosure of such corresponding structure all the
more important to one endeavoring to practice the invention. See 35 U.S.C.
§ 112, sixth paragraph.
Appeal 2013-001552
Application 11/909,813

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NEW GROUND OF REJECTION
Claims 1–12 are rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failure to particularly point out and distinctly claim the
subject matter which the Appellant regards as the invention.
The language of a claim satisfies 35 U.S.C. § 112, second paragraph,
only if “one skilled in the art would understand the bounds of the claim
when read in light of the specification.” Exxon Research & Eng’g Co. v.
U.S., 265 F.3d 1371, 1375 (Fed. Cir. 2001). “It is the applicants’ burden to
precisely define the invention, not the PTO’s. See 35 U.S.C. § 112 ¶ 2 . . . .
[T]his section puts the burden of precise claim drafting squarely on the
applicant.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997).
In particular, we agree with the Examiner that:
[T]he ambiguity of [what] this invention is and how it works
and the bounds of the “damping means” renders examination
thereof difficult, which includes providing one skilled in the art
with enough information to make and use the device and also in
applying art to the claimed subject matter.

Answer 5.
For similar reasons to the enablement discussion above, the identified
claim limitations are indefinite because they lack sufficient precision to
permit one endeavoring to practice the invention to adequately determine the
metes and bounds thereof. Thus, we find that claims 1–12 fail to comply
with 35 U.S.C. § 112, second paragraph, in failing to particularly point out
and distinctly claim the subject matter which the Appellant regards as the
invention.
Rejection 2-Obviousness over Kwak
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Application 11/909,813

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We do not sustain the rejection of claims 1–12 based on obviousness
because that rejection is necessarily based on speculative assumptions as to
the meaning of the claims. See In re Steele, 305 F.2d 859, 862–63 (CCPA
1962). It should be understood, however, that our decision in this regard is
based solely on the indefiniteness of the claimed subject matter and does not
reflect on the adequacy of the prior art evidence applied in support of the
Examiner’s rejection.
DECISION
The decision of the Examiner to reject claims 1–12 is under 35 U.S.C.
§ 112, first paragraph, is AFFIRMED.
The decision of the Examiner to reject claims 1–12 is under 35 U.S.C.
103(a) is REVERSED.
We enter a new ground of rejection of claims 1–12 under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failure to particularly point
out and distinctly claim the subject matter which the Appellant regards as
the invention.
The decision contains a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provide that Appellant, WITHIN TWO MONTHS
FROM THE DATE OF THIS DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
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Application 11/909,813

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and have the matter reconsidered by the Examiner, in which event the
proceeding will be remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .
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 37 C.F.R. § 41.50(b)
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