Ex Parte Bogl

Board of Patent Appeals and Interferences

May 3, 2011

10517711 (B.P.A.I. May. 3, 2011)

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.
10/517,711 12/10/2004 Stefan Bogl CBZ-1266 4636
22827 7590 05/04/2011
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
MCDONALD, SHANTESE L
ART UNIT PAPER NUMBER
3723
MAIL DATE DELIVERY MODE
05/04/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEFAN BOGL
____________

Appeal 2009-011504
Application 10/517,711
Technology Center 3600
____________

Before STEVEN D.A. McCARTHY, STEFAN STAICOVICI and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE 1
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s 2
decision finally rejecting claims 21, 25-27, 29-34, 37 and 40. More 3
specifically, the Examiner rejects: 4
claims 21, 25-27, 29-32 and 40 under 35 U.S.C. § 102(b) 5
as being anticipated by or under Teerbau GmbH (DE 197 53 6
705 A1, publ. Jun. 10, 1999) (hereinafter Teerbau); and 7
claims 33, 34 and 37 under § 103(a) as being 8
unpatentable Teerbau and Feisel US (US 5,209,020, issued May 9
11, 1993). 10
Claims 22-24, 28, 35, 36, 38 and 39 are allowed. We have jurisdiction over 11
the appeal under 35 U.S.C. § 6(b). 12
We AFFIRM. 13
Claim 21 is illustrative of the claims on appeal. 14
21. A method for producing a precise 15
prefabricated concrete part in the form of a plate 16
for a fixed track for rail guided vehicles, 17
comprising using a grooved roller to grind 18
connection surfaces for add on elements of the 19
fixed track into the prefabricated concrete part at 20
relevant points along the concrete part, the grooved 21
roller having a cross-sectional profile 22
corresponding to the shape of the connection 23
surfaces and defining the connection surfaces to 24
desired predetermined dimensions. 25
Claim 32 recites a device for production of a concrete part. The device 26
includes, “a grinding machine with a grooved roller configured thereon to 27
grind functionally relevant connection surfaces into the prefabricated 28
concrete part for connection of add on elements, said grooved roller having a 29
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cross-sectional profile and dimensions corresponding to a profile and desired 1
dimensions of the connection surfaces.” 2
3
ISSUES 4
The Appellant provides arguments for independent claims 21 and 32. 5
(App. Br. 4-9). The Appellant has not separately argued dependent claims 6
25-27, 29-31 and 40,which are rejected under § 102(b), or dependent claims 7
33, 34 and 37, which are rejected under § 103(a). (App. Br. 9). In the Reply 8
Brief on page 3 the Appellant mischaracterizes claim 30 as an independent 9
claim that calls for a grinding machine. The Appellant’s argument appears 10
to concern claim 32 and is addressed as such. This appeal turns on the 11
following issues: 12
First, does Teerbau describe a grinding process and 13
machine? (Reply Br. 2 and 3). 14
Second, does Teerbau describe an “add on element” 15
within a proper construction of the term as used in claims 21 16
and 32? (App. Br. 4-6; Reply Br. 2). 17
Third, does Teerbau describe “the grooved roller having 18
a cross-sectional profile corresponding to the shape of the 19
connection surfaces” and “said grooved roller having a cross-20
sectional profile and dimensions corresponding to a profile and 21
desired dimensions of the connection surfaces” with respect to 22
claims 21 and 32? (App. Br. 7 and 8). 23
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FINDINGS OF FACTS 1
The record supports the following findings of fact (“FF”) by a 2
preponderance of the evidence. 3
1. We adopt and incorporate by reference the Examiner’s findings 4
in the paragraph at page 3, line 17 of the Examiner’s Answer beginning with 5
“DE 19753705 [Teerbau] teaches a method for producing a precise . . .” and 6
ending at page 4, line 5 with “the same concrete part, (translation pg, 17 7
lines 5-22).” 8
2. The Appellant’s Specification concedes “DE 197 53 705 A1 9
[Teerbau] discloses concrete plates to produce a fixed track, whereby 10
grooves are ground or cut into the concrete plates.” (Spec. 2)1. 11
3. Teerbau describes device 22, which includes a roller-shaped 12
milling cutter 30, for precise machining of two parallel grooves 1 in a 13
concrete slab 4. (Teerbau, pp. 15, 17 and 18). 14
4. Teerbau describes a profile element as an intermediate layer 15
between the underside of a rail and a support surface. (Teerbau, p. 3). In 16
Figure 1, Teerbau depicts profile element 5 between the underside of track 17
rail 7 and groove 1 in concrete slab 4. (See also Teerbau, p. 12). 18
5. The Appellant’s Specification does not specifically formally 19
define the term “add-on element.” However, according to Appellant’s 20
Specification, one example of a high-precision “add-on element” is a rail. 21
(Spec. 2). 22
6. The Appellant uses the term “add-on element” to describe 23
element numbers 6 and 10 in the Appellant’s Appeal Brief pages 2 and 3. 24

1 All citations to the Appellant’s Specification are from the amended
Specification dated Sep. 12, 2005.
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The Specification identifies element number 6 as intermediate layers and 1
element number 10 as angular guide plates. (Spec. 10). 2
7. The Appellant’s Figure 2 depicts intermediate layer 6 in 3
between rail 5 and bed 4 of concrete plate 1 with rail supporting point 3. 4
The Appellant’s Specification states “[t]he trough bottom serves as bed 4. 5
With intermediate layers 6 provided, a rail 5 is installed on the bed 4.” 6
(Spec. 10). 7
8. Teerbau discloses a roller-shaped milling device is first used to 8
create section 2 of groove 1, then an undercut section 3 is created by a 9
slanted cutting disk. (Teerbau, p. 13 and fig. 2). More specifically Teerbau 10
shows in Figures 5 and 6 a roller-shaped milling cutter 30 and two disk-like 11
milling cutters 31 for each groove 1. (Teerbau, pp. 17-18). 12
13
ANALYSIS 14
First Issue 15
The Appellant contends that Teerbau describes a milling or cutting 16
process and machine, but not a grinding process or machine. (Reply Br. 2-17
3). The Appellant’s Specification concedes Teerbau discloses grooves are 18
ground into concrete plates, however. (FF 2). Accordingly, Teerbau 19
describes a grinding process and machine and the Examiner correctly finds 20
Teerbau describes that a grooved roller 30 is used in a grinding process. (FF 21
1). 22
23
24
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Second Issue 1
Claim 21 recites “using a grooved roller to grind connection surfaces 2
for add on elements of the fixed track into the prefabricated concrete part.” 3
(Italics added). Claim 32 recites “a grinding machine with a grooved roller 4
configured thereon to grind functionally relevant connection surfaces into 5
the prefabricated concrete part for connection of add on elements.” (Italics 6
added). The Appellant’s Specification does not define the term “add on 7
element.” (FF 5). In the absence of an express definition of a claim term in 8
the specification or a clear disclaimer of scope, the claim term is interpreted 9
as broadly as the ordinary usage of the term by one of ordinary skill in the 10
art reasonably would permit. In re ICON Health & Fitness, Inc., 496 F.3d 11
1374, 1379 (Fed. Cir. 2007); In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 12
1997). 13
The Examiner reasonably construes “add-on elements” to include 14
“anything added into the grooved concrete, ground by the roller, for the 15
insertion of the fixed track.” (Ans. 6). Although the Specification identifies 16
a rail as one example of an “add-on element” (FF 5), the broadest reasonable 17
interpretation of the term “add-on element” is not limited to this particular 18
example. The Examiner finds that Teerbau’s roller-shaped milling cutter 30 19
corresponds to the recited grooved roller and that Teerbau’s profile element 20
5 corresponds to the recited add on element. (FF 1). Teerbau’s profile 21
element 5 is within the Examiner’s definition of an “add on element” 22
because profile element 5 is added into the grooved concrete, ground by the 23
roller, for the insertion of the fixed track. (See FF4). 24
The Appellant contends that “‘profile elements’ are not ‘add on 25
elements’ or the equivalent thereof.” (App. Br. 6). The Appellant’s Appeal 26
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Brief uses the term “add-on element” to describe intermediate layer 6. (FF 1
6). The Appellant depicts in Figure 2 the intermediate layer 6 being located 2
in between a concrete support 3, 4, and track rail 5. (FF 7). Similarly 3
Teerbau describes that profile element 5 is an intermediate layer and 4
depicted in Figure 1 as being located in between a concrete support 1, 4 and 5
track rail 7. (FF 4). In view of the similarity, both the Appellant’s and 6
Teerbau’s intermediate layers, 6 and 5 respectively, are within the 7
Examiner’s construction of the term add on element, “anything added into 8
the grooved concrete, ground by the roller, for the insertion of the fixed 9
track.” As such the Examiner’s finding that Teerbau’s profile element 5 10
corresponds to the recited add on element is correct. 11
12
Third Issue 13
The Appellant points out Teerbau’s Figures 5 and 6 depict a first 14
mechanism to grind sections 2 of the grooves 1and a second mechanism to 15
grind the undercut sections 3 of the grooves 1. (App. Br. 8). The first 16
grinding mechanism corresponds to Teerbau’s roller-shaped milling cutter 17
30 and the second grinding mechanism corresponds to Teerbau’s two disk-18
like cutters 31. (See FF 8). The Appellant also points out that undercut 19
sections 3 is included in the cross-sectional profile of the connection 20
surfaces that accept the profile element 5. (See App. Br. 8). The Appellant 21
contends that the overall profile of the groove is a combination of non-22
undercut section 2 created by Teerbau’s roller-shaped milling cutter 30 and 23
undercut section 3 created by Teerbau’s two disk-like cutters 31. (Id.). As 24
such, Teerbau does not describe “a grooved roller having a cross-sectional 25
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profile that corresponds to the shape of the connection surfaces.” (App. Br. 1
8). 2
Concerning the construction of claims 21 and 32 both claims use the 3
open-type transitional term “comprising” between the claim’s preamble and 4
claim body. The relevant portions of the body of claim 21 recites “a 5
grooved roller to grind connection surfaces . . . the grooved roller having a 6
cross-sectional profile corresponding to the shape of the connection surfaces 7
and defining the connection surfaces to desired predetermined dimensions.” 8
The relevant portion of the body of claim 32 recites “a grinding machine 9
with a grooved roller configured thereon to grind functionally relevant 10
connection surfaces . . . said grooved roller having a cross-sectional profile 11
and dimensions corresponding to a profile and desired dimensions of the 12
connection surfaces.” Notably claims 21 and 32 recite functional language 13
“to grind the connection surfaces” and “configured thereon to grind 14
functionally relevant connection surfaces” respectively, with regard to the 15
grooved roller. 16
The Examiner reasons claims 21 and 32 do not specify that the 17
connection surfaces have a particular shape or dimension in the concrete 18
part. (See Ans. 6). In other words, the claims require the grooved roller to 19
be functionally capable of grinding connection surfaces where some part of 20
the connection surface has a cross-sectional profile and predetermined 21
dimension. 22
The Examiner finds that Teerbau’s roller-shaped milling cutter 30 23
grinds connection surfaces. (FF 1; see also FF 8). The side walls of section 24
2 of groove 1 above undercut section 3 corresponds to the recited connection 25
surfaces of claims 21 and 32 and profile element 5 is added into concrete 26
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slab 4. (See FF 8). Teerbau’s Figure 1 depicts profile element 5 in contact 1
with section 2 in the area above the undercut section 3. (FF 8). Additionally 2
Teerbau’s Figure 1 depicts section 2 having a cross-sectional profile and 3
predetermined dimensions corresponding to roller-shaped milling cutter 30. 4
Nothing in claim 21 or claim 32 requires that the connection surfaces 5
correspond to the entire interior surface of a groove. Therefore, the 6
Examiner’s findings are correct. 7
8
CONCLUSION 9
First, Teerbau describes a grinding process and machine. Second, 10
Teerbau describes an “add on element” within a proper construction of the 11
term as used in claims 21 and 32. Third, Teerbau describes “the grooved 12
roller having a cross-sectional profile that corresponds to the shape of the 13
connection surfaces” and “said grooved roller having a cross-sectional 14
profile and dimensions corresponding to a profile and desired dimensions of 15
the connection surfaces” with respect to claims 21 and 32. We sustain the 16
rejection of claims 21, 25-27, 29-34, 37 and 40 under § 102(b) as being 17
anticipated by Teerbau. We also sustain the rejection of claims 33, 34 and 18
37 under § 103(a) as being unpatentable Teerbau and Feisel. 19
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DECISION 1
We AFFIRM the Examiner’s decision finally rejecting claims 21, 25-2
27, 29-34, 37 and 40. 3
No time period for taking any subsequent action in connection with 4
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 5
§ 1.136(a)(1). 6
7
AFFIRMED 8
9
10
11
Klh 12