Ex Parte Boehm et al

Patent Trial and Appeal Board

Aug 29, 2017

12728660 (P.T.A.B. Aug. 29, 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.
12/728,660 03/22/2010 Daniel Boehm 298-496 5785
28249 7590 08/29/2017
DILWORTH & BARRESE, LLP
Dilworth & Barrese, LLP
1000 WOODBURY ROAD
SUITE 405
WOODBURY, NY 11797
EXAMINER
QUANDT, MICHAEL M
ART UNIT PAPER NUMBER
3745
MAIL DATE DELIVERY MODE
08/29/2017 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 DANIEL BOEHM, THOMAS LANDMANN,
and RALF SPÄTH
____________

Appeal 2016-000818
Application 12/728,660
Technology Center 3700
____________

Before EDWARD A. BROWN, WILLIAM A. CAPP, and
ARTHUR M. PESLAK, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the non-final
rejection of claims 1, 3–5, 7 and 11. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
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THE INVENTION
Appellants’ invention relates to a drive for a construction machine,
such as an excavator. Spec. 1. Claim 1, taken from Appellants’
amendments of September 30, 2014, with paragraph indentations added, is
reproduced below.
1. A drive for an excavator with a number of individual
drives, including
a slewing gear drive and
at least one of a hoist drive, a bucket drive and an arm
drive,
wherein for the slewing gear drive two reversible adjusting
units are provided, which are at least coupled with an energy
accumulator,
wherein one of the reversible adjusting units is connectable
with a drive unit of the excavator,
wherein the reversible adjusting units are hydraulic
adjusting units, and
wherein the adjusting units of the slewing gear drive are
energetically coupled with the reversible adjusting units of the
hoist drive.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:

The following rejections are before us for review:
1. Claims 1, 3–5, 7, and 11 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the applicant regards as the
invention.
Ferris
Metailler
Shore
Zhang
US 1,793,438
US 3,172,552
US 6,971,463 B2
US 7,908,852 B2
Feb. 17, 1931
Mar. 9, 1965
Dec. 6, 2005
Mar. 22, 2011
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2. Claims 1, 3–5, 7, and 11 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Ferris.
3. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Ferris.
4. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Ferris and Zhang.
5. Claims 1, 3, 4, 7, and 11 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Metailler and Shore.
OPINION
File History Leading Up to this Appeal
Appellants filed a Non-Provisional Patent Application on March 22,
2010. The Examiner entered a Final Rejection dated July 1, 2014.
Appellants subsequently filed an After-Final Amendment on September 30,
2014, presenting proposed claim amendments.1 Next, the Examiner issued
an Advisory Action on October 10, 2014, in which the Examiner indicated
that, for purposes of appeal, the proposed claim amendments will not be
entered. In the Advisory Action, the Examiner indicated that the proposed
amendments change the scope of the claims and, therefore, would require
further consideration and/or search. Advisory Action.
Thereafter, on October 28, 2014, Appellants filed a Request for
Continued Examination (“RCE”). In the accompanying remarks submitted
contemporaneously with the RCE, Appellants requested entry of the
amendment and consideration of remarks contained in their After-Final
Amendment. The Examiner then issued a Non-Final Action on November 7,

1 These are the claims under review in this appeal.
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2014. The Examiner stated that the Non-Final Action was issued in
response to Appellants’ Amendments filed September 30, and October 28,
2014. Non-Final Action 2. The Examiner further stated that:
The claims submitted with the After Final request on 9/30/14
were previously not entered as they required further
consideration and/or search. The claims introduced matter that
required further consideration, specifically 35 USC § 112, 2nd
paragraph issues in Claim 1, which also affects all other claims
being presented for examination, and Claim 11.
Non-Final Action 2.
Subsequently, Appellants filed a Notice of Appeal on February 6,
2015. On April 2, 2015, Appellants filed their Appeal Brief. Attached to
the Appeal Brief is a Claims Appendix that purports to present pending
claims 1, 3, 4, 5, 7, and 11. See Claims App. In response to the Appeal
Brief, the Examiner issued an Examiner’s Answer on October 5, 2015. In
the Answer, the Examiner maintains the rejections set forth in the Non-Final
Action of November 7, 2014 and then states:
Appellant has changed the claims on appeal versus those
that were examined.
It should be noted that appellant has altered the claims
presented in the appeal brief filed 4/2/15 versus those that were
treated in the Office Action mailed 11/7/14 which treated the
set of claims filed 9/30/14 with no explanation.
At least two differences are noted:
a) Claim 3 has a different status identifier.
b) Claim 1 carries the status identifier of "previously
presented"; However Claim 1, line 9 is different than before and
now reads "with the reversible adjusting units of the hoist
hoisting gear drive" (emphasis examiner's). In the claims filed
9/30/14 Claim 1, lines 8-9 read "with the reversible adjusting
units of the hoist drive" (emphasis examiner's).
Ans. 9 (emphasis supplied by the Examiner).
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Our rules permit an appellant to submit a Reply Brief in reply to an
Examiner’s Answer. See 37 C.F.R. § 41.41(a). However, in this particular
case, Appellants did not file a Reply Brief, submit a corrected Claims
Appendix, or otherwise respond to the Examiner’s observation that
Appellants’ Claim Appendix did not accurately reflect the claims on appeal.
Upon comparing the version of claim 1 set forth in the Claims
Appendix with the version submitted in the amendment of September 30,
2014, it appears to us that Appellants intended to strike the words “hoisting
gear” before the final word “drive” in claim 1, but then inadvertently
included “hoisting gear” before “drive” at the end of the claim in the version
supplied in the Claims Appendix.
For purposes of this appeal, we will treat inclusion of the words
“hoisting gear” toward the end of claim 1 in the Claims Appendix as an
inadvertent typographical error. We will use the version of claim 1
submitted in the September 30, 2014, amendment as the claim on review in
this appeal.
Indefiniteness
Claim 1
The first element of claim 1 recites: “a slewing gear drive and at least
one of a hoist drive, a bucket drive and an arm drive.” The final element of
claim 1 recites “the adjusting units of the slewing gear drive are
energetically coupled with the reversible adjusting units of the hoist drive.”
The Examiner finds that the final element identified above lacks
antecedent basis. Non-Final Action 6. The Examiner further notes an
internal consistency between broadly claiming “at least one of a hoist drive,
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a bucket drive, and an arm drive” and then later claiming only the narrower
“the hoist drive.” Id. at 7.
The Patent and Trademark Office can properly reject a claim as
indefinite if the “claim is ambiguous, vague, incoherent, opaque, or
otherwise unclear.” In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014).
In their Appeal Brief, Appellants only argue the Examiner’s art rejection, but
do not otherwise mention, much less argue, the Examiner’s indefiniteness
rejection. See generally Appeal Br. Here, we agree with the Examiner that
the meaning of claim 1 is sufficiently uncertain that a clarifying amendment
should be required. Moreover, Appellants have effectively waived the right
to challenge the Examiner’s rejection, which further warrants our sustaining
the rejection. See 37 C.F.R. § 41.37(c)(1)(iv) (failure to separately argue
claims); See also Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008)
(“When the appellant fails to contest a ground of rejection to the Board, . . .
the Board may treat any argument with respect to that ground of rejection as
waived”).
We sustain the Examiner’s indefiniteness rejection of claim 1. The
indefiniteness of claim 1 also taints claims 3–5, 7, and 11, and we also
sustain the Examiner’s indefiniteness rejection thereof.
Claim 11
With respect to claim 11, the Examiner states:
Claim 11 is indefinite as it does not detail how or where such
"at least one cylinder is present" in relation to any claimed part
of the apparatus or how the cylinder is connected with "two
hydraulic adjusting units", or if these "two hydraulic adjusting
units" have anything to do with the units introduced in claim 1.
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Non-Final Action 7. Appellants having not briefed or argued this rejection,
it is summarily sustained. 37 C.F.R. § 41.37(c)(1)(iv), Hyatt, 551 F.3d
at 1314.
The Art Rejections
We pro forma reverse the Examiner’s art rejections. Inasmuch as we
have concluded that all pending claims are indefinite, the prior art rejections
are necessarily based on speculative assumptions as to the meaning of the
claims. In re Steele, 305 F.2d 859, 862 (CCPA 1962).
DECISION
The decision of the Examiner to reject claims 1, 3–5, 7, and 11 as
indefinite is affirmed.
The decision of the Examiner to reject claims 1, 3–5, 7, and 11 under
35 U.S.C. § 102(b) and/or 35 U.S.C. § 103(a) is pro forma 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)(1)(iv).
AFFIRMED