Ex Parte Bihrer et al

Patent Trial and Appeal Board

May 2, 2016

13105448 (P.T.A.B. May. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/105,448 05/11/2011
53609 7590 05/04/2016
REINHART BOERNER VAN DEUREN P,C
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
FIRST NAMED INVENTOR
Markus Bihrer
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.
508625 3261
EXAMINER
FIGUEROA, FELIX 0
ART UNIT PAPER NUMBER
2833
NOTIFICATION DATE DELIVERY MODE
05/04/2016 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):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARKUS BIHRER and JOHANN KRECH
Appeal2014-004094
Application 13/105,448 1
Technology Center 2800
Before MICHAEL P. COLAIANNI, CHRISTOPHERM. KAISER, and
JULIA HEANEY, Administrative Patent Judges.
KAISER, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Pursuant to 37 C.F.R. § 41.52; Appellants submitted a timely request
for rehearing dated April 18, 2016 ("Request"), requesting rehearing from
and modification of the original Decision in this Appeal, dated February 18,
2016 ("Decision," abbreviated "Dec."), in which this panel affirmed the
Examiner's rejection of claims 30-44 and 49--58. 2
1 According to Appellants, the Real Party in Interest is Lapp Engineering &
Company. Appeal Br. 2.
2 We affirmed the Examiner's rejections (1) under 35 U.S.C. § 102(b) of
claims 30-41, 44, 55, and 56 as anticipated by Toorell; (2) under 35 U.S.C.
§ 103(a) of claims 42, 43, and 49--52 as obvious over the combination of
Toorell and Huang; (3) under 35 U.S.C. § 103(a) of claims 53 and 54 as
obvious over Toorell; and (4) under 35 U.S.C. § 103(a) of claims 57 and 58
as obvious over the combination of Toorell and Bertsch. Dec. 8. We also
reversed the Examiner's rejection under 35 U.S.C. § 102(b) of claims 45--48
Appeal2014-004094
Application 13/105,448
OPfNION
Appellants' invention "relates to a plug connector comprising a plug
connector housing which is designed to be electrically insulating and is
formed from a plurality of housing parts." Spec. 1.
In the request for rehearing, Appellants raise four arguments that our
original decision was flawed. Request 2. We consider each of these
arguments in tum.
"Plug Connector"
Appellants argue that we erred in finding that they had not shown
harmful error in the Examiner's rejections that depend on the construction of
"plug connector." Request 2-3. Specifically, Appellants argue that it was
error for us to require them to show harmful error rather than requiring the
Examiner to prove that the construction given the term in the Final Rejection
was correct. This argument is unpersuasive for two reasons.
First, as we noted in the Decision, Dec. 2, Appellants were required
"to identify the alleged error in the examiner's rejections." In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011). To identify this error, Appellants were
required to provide more than "a mere recitation of the claim elements and a
naked assertion that the corresponding elements were not found in the prior
art." In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). The argument
Appellants made in their Appeal Brief did not carry this burden. Instead,
Appellants argued only that "the contact element 22 of T oorell is configured
to connect to a light bulb, and not to accommodate a complementary plug
as anticipated by Toorell, id., but Appellants have not asked for rehearing on
this point.
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Application 13/105,448
connector. Further, the lampholder of Toorell does not have the plug
opening, as required by the rejected claims, because the lampholder is not
designed to receive a connector plug." Appeal Br. 7. From this, it is
possible to understand that Appellants believe that Toorell's lampholder is
not configured to accommodate a complementary plug connector, but it is
impossible to understand why Appellants believe this to be the case. This is
no more than a mere assertion that T oorell lacks a limitation of Appellants'
claims.
Second, to the extent that Appellants intended to raise a claim-
construction argument that a plug connector configured to accommodate a
complementary plug connector cannot be construed so broadly as to
encompass a lampholder configured to receive a light bulb, we are not
persuaded that we erred in concluding that Appellants had not made that
case. Again, there was a burden on Appellants "to identify the alleged error
in the examiner's rejections." Jung, 637 F.3d at 1365. Appellants now
argue that this improperly removes from the Examiner the burden of proving
that the Examiner's construction was correct. Dec. 2. Indeed, "the examiner
bears the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability." In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). But, "[i]f that burden is met, the burden of
coming forward with evidence or argument shifts to the applicant." Id.
Accordingly, the Examiner bears the ultimate burden of persuasion as to
whether these rejections were proper, but Appellants had a burden to come
forward with argument sufficient to make clear the Examiner's alleged
errors. A mere statement that Appellants disagreed with the Examiner's
claim construction was not sufficient to carry this burden of production.
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Application 13/105,448
SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir.
2006) ("[M]ere statements of disagreement ... as to the existence of factual
disputes do not amount to a developed argument.").
Moreover, even considered on its merits, we do not find Appellants'
claim-construction argument persuasive. Appellants now argue that the
Examiner's broad construction was flawed because "Appellants[']
Specification does not mention a light bulb base, and provides no reason to
construe the claimed plug connector as anything other than a plug
connector." Request 3. This fails to explain either what a plug connector is
or why lampholders should be excluded from that definition. The plain and
ordinary meaning of "plug" is "a piece used to fill a hole" or "a male fitting
for making an electrical connection to a live circuit by insertion in a
receptacle." Merriam-Webster, Definition of "Plug," http ://www.merriam-
webster.com/ dictionary/plug (accessed April 21, 2016). Neither of these
definitions would exclude the base of a light bulb inserted into the
lamp holder of Toorell. In the absence of any evidence that these ordinary
definitions should be excluded from the broadest reasonable interpretation of
"plug connector," we cannot agree that we erred in concluding that
Appellants had failed to show harmful error in the Examiner's construction
of the term.
Creeping Current Paths
Appellants argue that we erred in concluding that there was no
harmful error in the Examiner's failure to find that Toorell taught the
limitation "creeping current paths leading away from the contact element in
the receiving area run exclusively to the plug opening and/or to the cable
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Application 13/105,448
opening." Request 3--4. According to Appellants, the Examiner "argued,
without evidentiary support, that the housing in Toorell is capable of
performing" this function. This is incorrect. As we noted in our Decision,
the Examiner found that Toorell teaches assembling its housing using
ultrasonic welding. Dec. 4. The Examiner found that this also disclosed the
limitation on creeping current paths. Final Act. 4. It was incumbent upon
Appellants to explain why this finding was erroneous. Jung, 637 F.3d at
1365. In light of the repeated statements in Appellants' Specification, Spec.
5, 6, 15, 18, 26, that ultrasonic welding is an advantageous way to achieve
the aims of Appellants' invention, including the limitation on creeping
current paths, we concluded that Appellants had failed to offer argument
sufficient to convince us that the Examiner's finding was an example of
harmful error. Appellants still have not offered any explanation of the error
in the Examiner's finding, merely the statement that the Examiner "offered
no proof that the housing in Toorell is actually capable of performing the
intended use." Request 4. Accordingly, we are not persuaded that we erred
in concluding that Appellants had not shown harmful error in the Examiner's
finding.
Central Axis
Appellants argue that we erred in affirming the Examiner's rejection
of claim 36, because, while that claim requires that "the joins between the
housing parts extend parallel to a plane running transversely to the central
axis," the Examiner never identified a central axis. Request 4. Appellants
argue that it was error for the Board to "plac[ e] the burden on Appellants to
provide evidence to disprove the Examiner's assertion, [rather than]
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Application 13/105,448
ensur[ing] that the Examiner had met the burden of showing that Toorell
teaches each and every element of the rejected claim 36." Id. The Board did
not place any such burden on Appellants. The ultimate burden of persuasion
remained on the Examiner to make a proper rejection of the claim. Oetiker,
977 F .2d at 1445. But the existence of this burden did not relieve Appellants
of the burden to demonstrate why the Examiner erred, nor did it permit
Appellants to carry their burden of production through mere assertions that
claim limitations were missing from the prior art. Jung, 637 F.3d at 1365;
Lovin, 652 F.3d at 1357. With respect to claim 36, the Examiner did not
simply "assert[], in a conclusory statement, that Toorell t[aught]" the central
axis limitation, as Appellants argued, Appeal Br. 10. Instead, the Examiner
offered the following explanation: "Figure 1 of Toorell shows ... the joins
extending parallel to a plane running transversely to the central axis (i.e. the
joins have a width)." Final Act. 10. From this explanation, Appellants
could have determined the plane defined by the width of the joins and
determined whether that plane was parallel to a plane that they considered to
be transverse to the central axis of Toorell's connector. Assuming
Appellants disagreed with the Examiner, Appellants then could have
explained why the Examiner erred. Given that Appellants did not undertake
this exercise, we cannot agree with Appellants that we erred in concluding
that Appellants had failed to show harmful error in the Examiner's rejection
of claim 3 6.
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Application 13/105,448
Claims 49-54
Appellants argue that we erred in affirming the Examiner's
obviousness rejections of claims 49-54, 3 because these claims depend from
claim 47, whose anticipation rejection we reversed. Request 5. Appellants
are correct that, once a claim is allowed, all claims that depend from it also
should be allowed. But claim 4 7 has not yet been allowed. Instead, we
merely concluded that the Examiner erred in rejecting claim 4 7 as
anticipated, without deciding whether any other rejection of that claim
would be proper.
Nevertheless, upon further consideration of our Decision, we conclude
that the Examiner's obviousness rejections of claims 49-54 were reversible.
As Appellants argued, Appeal Br. 9, and as we concluded, Dec. 4--5, the
Examiner erred in finding that Toorell disclosed the "intermediate space
between a cable sheath and the plug connector housing being closed by a
gel" of claim 47. In theory, the Examiner's obviousness rejections of claims
49-54 were supported not by the flawed finding that Toorell disclosed this
limitation of the independent claim, but rather by the implicit finding that
Toorell taught or suggested this limitation. Because Appellants did not
present any argument or evidence explicitly challenging this implicit
finding, we affirmed the rejections. On further review, it is clear that we
erred in requiring Appellants to challenge this finding explicitly. The
burden of persuasion in rejecting a claim is on the Examiner. Oetiker, 977
F.2d at 1445. Here, the Examiner did not make any finding that Toorell
3 There are two separate rejections at issue here: the rejection of claims 49-
52 as obvious over the combination of Toorell and Huang, and the rejection
of claims 53 and 54 as obvious over Toorell.
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Application 13/105,448
taught or suggested the limitations of claim 47 in the sense of 35 U.S.C. §
103 (a), other than the finding (which we found to be erroneous) that Toorell
disclosed those limitations in an anticipatory fashion. Because the rejections
of claims 49-54 required support from such a finding, we reverse those
rejections.
Conclusion
Thus, we decline to modify our Decision to the extent that it affirms
the Examiner's rejections of claims 30-44 and 55-58, but we do modify our
Decision to the extent it affirms the Examiner's rejections of claims 49-54.
Accordingly, Appellants' Request is granted to the extent that (1) we have
reconsidered our Decision and (2) we modify our Decision so that it reverses
the rejections of claims 49-54. Appellants' Request is denied in all other
respects. The disposition of the rejections on appeal is as follows:
The Examiner's rejection under 35 U.S.C. § 102(b) of claims 45--48
as anticipated by Toorell is reversed. The Examiner's rejections under 35
U.S.C. § 103(a) of claims 49-52 as obvious over the combination of Toorell
and Huang and of claims 53 and 54 as obvious over Toorell also are
reversed. The Examiner's rejection under 35 U.S.C. § 102(b) of claims 30-
41, 44, 55, and 56 as anticipated by Toorell is affirmed. The Examiner's
rejections under 35 U.S.C. § 103(a) of claims 42 and 43 as obvious over the
combination of Toorell and Huang and of claims 57 and 58 as obvious over
the combination of T oorell and Bertsch also are affirmed.
This Decision on the Request for Rehearing incorporates our original
Decision, mailed February 18, 2016, and is final for the purposes of judicial
review. See 37 C.F.R. § 41.52(a)(l).
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
GRANTED-IN-PART
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