Ex Parte Drewes

Patent Trial and Appeal Board

Feb 22, 2016

11632470 (P.T.A.B. Feb. 22, 2016)

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.
11/632,470 12/10/2008 Olaf Jörg Drewes MUL001 P336 6320
277 7590 02/22/2016
PRICE HENEVELD LLP
695 KENMOOR SE
P O BOX 2567
GRAND RAPIDS, MI 49501
EXAMINER
BURCH, MELODY M
ART UNIT PAPER NUMBER
3657
MAIL DATE DELIVERY MODE
02/22/2016 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 OLAF JÖRG DREWES1
____________

Appeal 2013-010360
Application 11/632,470
Technology Center 3600
____________

Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
MARK A. GEIER, Administrative Patent Judges.

GEIER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner’s rejection of claims 1–18.2 Appeal Br. 2. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 Appellant indicates that the real party in interest is SAF-Holland GMBH.
Appeal Br. 2.
2 We note that the Examiner has also objected to the drawings. Final Act.
2–3. However, an objection is a petitionable matter and not an appealable
matter and is not within the jurisdiction of the Board. See In re Mindick, 371
F.2d 892, 894 (CCPA 1967). As such, we do not address the matter in this
Appeal.
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THE CLAIMED SUBJECT MATTER
The claimed subject matter relates to “a braking device for wheels
rotatable about axle spindles of a motor vehicle with a brake caliper
securement.” Spec. 1:1–2. Claim 1 is illustrative and recites:
1. A braking device for wheels of a motor vehicle rotatable
about axle spindles, comprising a brake caliper securement
which includes an axle-side carrier securable on a vehicle axle
and a brake-side carrier detachably securable to the axle-side
carrier by means of bolts adapted to receive a brake caliper of the
braking device, wherein the axle-side carrier and the brake-side
carrier are supported on one another by axial contact faces
oriented in a longitudinal axle direction, as well as radial contact
faces oriented in a transverse axle direction for absorbing force
components acting in the longitudinal axle direction as well as
also forces acting in a circumferential axle direction occurring
during driving and braking operation, further wherein the axial
and radial contact faces of the axle-side carrier and the brake-
side carrier are each located substantially in the same axial or
radial plane.

THE REJECTIONS ON APPEAL
The Examiner rejected claims 1–10 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellant regards as the invention.
The Examiner rejected claims 1–18 under 35 U.S.C. § 102(b) as
anticipated by Matsuzaki (US 6,250,439 B1; iss. June 26, 2001).
ANALYSIS
Rejection of Claims 1–10 as Indefinite
The Examiner found that claim 1 was indefinite in its recitation of
“wherein the axial and radial contact faces of the axle-side carrier and the
brake-side carrier are each located substantially in the same axial or radial
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plane.” Final Act. 3. According to the Examiner, “[t]he phrase should be
rewritten to clearly identify which faces should be in the same plane similar
to the way in which it is set forth in new claim 11.” Id.
Appellant argues that the Examiner should have an entered an
amendment after final in which “claim 1 was rewritten to clearly identify
which contact faces were in the same or similar plane in a manner as set
forth in claim 11.” Appeal Br. 6. Appellant further argues that “the claims,
while not further clarified, still comport to the requirements of 35 U.S.C.
§ 112, second paragraph,” because one skilled in the art would “reasonably
recognize that the axial contact faces of the axial side carrier and the brake
side carrier would be located in substantially the same axial plane, whereas
the radial contact faces of the axle-side carrier and the brake-side carrier
would be located in substantially the same radial plane.” Id.; see also Reply
Br. 1–3 (citing Spec. ¶ 17, Abstract). For the reasons elaborated below, we
agree with the Examiner.
At the outset, we note that entry or non-entry of amendments is not an
appealable matter, but rather is a petitionable matter, and thus is not within
the jurisdiction of the Board. See In re Mindick, 371 F.2d at 894 (holding
that the refusal of an examiner to enter an amendment of claims is
reviewable by petition under 37 C.F.R. § 1.181, and not by appeal to the
Board). As such, we address the claims as presented on Appeal and express
no opinion regarding the Examiner’s non-entry of the amendment.
With respect to the rejection, 35 U.S.C. § 112, second paragraph,
requires the claims “be cast in clear–as opposed to ambiguous, vague,
indefinite–terms.” In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014).
Although exact precision is not required, the claim language must be as
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reasonably precise as the subject matter permits. Id. As presently written, it
is not readily apparent from the final limitation of claim 1 whether both the
axial and radial contact faces lie in substantially the same axial or radial
plane or whether the axial contact faces lie in substantially the same axial
plane and the radial contact faces lie in substantially the same radial plane.
These alternative interpretations of this limitation of claim 1 render the claim
unclear and indefinite. See Ex parte Miyazaki, 89 USPQ2d 1207, 1211
(BPAI 2008) (precedential) (“[I]f a claim is amenable to two or more
plausible claim constructions, the USPTO is justified in requiring the
applicant to more precisely define the metes and bounds of the claimed
invention by holding the claim unpatentable under 35 U.S.C. § 112, second
paragraph, as indefinite.”).
For these reasons, we sustain the Examiner’s rejection of claim 1 as
indefinite under 35 U.S.C. § 112, second paragraph. Likewise, we sustain
the rejection of claims 2–10, which directly or indirectly depend from claim
1.
Rejection of Claims 1–18 as Anticipated by Matsuzaki3
The Examiner relies on Matsuzaki’s surfaces 10 for teaching the
claimed axial contact faces. Final Act. 4. Appellant argues that Matsuzaki
fails to disclose the claimed contact faces because Matsuzaki teaches
surfaces 10 at the disk-leading side and disk-trailing side, respectively, are
in different axial planes. Appeal Br. 8–9 (citing Matsuzaki, Figs. 1C, 1D;

3 Despite our affirmance of the Examiner’s rejection of claims 1–10 under
35 U.S.C. § 112, second paragraph, the following analysis is directed to all
of claims 1–18 and is based on the Examiner’s interpretation of the claims
notwithstanding the indefinite language of claim 1.
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col. 2, l. 63–col. 3, l); see also Reply Br. 4. In particular, Appellant asserts
that “[t]he axial contact faces 10 are clearly in offset planes that are aligned
on either side of the mounting bolt 3.” Reply Br. 4.
The Examiner responds:
[W]hile figures 1C and 1D of Matsuzaki show the axial contact
faces 10 of the axial-side carrier and the brake-side carrier being
located in two different planes, col. 3 lines 4–6 of the Matsuzaki
reference explicitly states that both surfaces 10 of the axial-side
carrier and the brake-side carrier can be provided farther from or
nearer to the disk rotor 8, i.e. the axial contact surfaces 10 of both
the axial-side carrier and the brake-side carrier of Matsuzaki can
be located in the same axial plane as the claim language requires.
Ans. 7.
Independent claim 1 recites “wherein the axial and radial contact faces
of the axle-side carrier and the brake-side carrier are each located
substantially in the same axial or radial plane.” Independent claim 11
similarly recites “the axial contact faces of the axle-side carrier and the
brake side-carrier being located substantially in a same axial plane” and “the
radial contact faces of the axle-side carrier and the brake-side carrier being
located substantially in a same radial plane.” Consequently, our
determination of whether Matsuzaki discloses, either expressly or inherently,
the claimed contact faces requires us to construe the claim term
“substantially” as it pertains to the axial and radial planes, respectively, of
the axial and radial contact faces. Although Appellant’s Specification at
pages 2 and 5 discusses axial and radial contact faces located in substantially
the same axial and radial planes, respectively, it does not provide any
definition or any statements of limitation or disclaimer regarding the term
“substantially.” See In re Bigio, 381 F.3d 1320, 1325 (Fed Cir. 2004)
(citation omitted). We therefore turn to the dictionary for guidance as to
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what is meant by “substantially” as it pertains to the axial and radial contact
faces. See, e.g., York Prods., Inc. v. Central Tractor Farm & Family Ctr.,
99 F.3d 1568, 1572–73, (Fed. Cir. 1996) (“In this case, the patent discloses
no novel uses of claim words. Ordinarily, therefore, ‘substantially’ means
‘considerable in . . . extent,’ American Heritage Dictionary Second College
Edition 1213 (2d ed. 1982), or ‘largely but not wholly that which is
specified.’ Webster’s Ninth New Collegiate Dictionary 1176 (9th ed.
1983).”). The foregoing dictionary definitions are generally consistent with
the arrangement of the contact faces depicted in Appellant’s drawing Figures
1 and 2. Although the Figures are not necessarily to scale, they do depict
axial contact faces 6 that appear to be located in considerably or largely the
same axial plane and radial contact faces 7 that appear to be located in
considerably or largely the same radial plane. We see no other relevant
information in the Appellant’s Specification that provides meaning to the
term “substantially” in this context.
Having construed the term “substantially,” we agree with Appellant
that Matsuzaki does not disclose, expressly or inherently, the claimed axial
faces. The passage from Matsuzaki cited by the Examiner states “[b]ut both
of the surfaces 10 at the disk-leading and disk-trailing sides may be provided
farther from or nearer to the disk rotor 8 than are the bolts 3.” Matsuzaki,
3:4–6. Although this passage of Matsuzaki teaches that surfaces 10 may be
positioned relative to disk rotor 8, this portion of Matsuzaki does not
expressly disclose that surfaces 10 lie in substantially the same axial plane.
Further, this passage does not indicate that moving surfaces 10 relative to
disk rotor 8 necessarily results in surfaces 10 on the disk-leading and disk-
trailing sides being in the same axial plane or substantially the same axial
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plane. See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (holding that
to establish that anticipation by inherency, the Examiner must establish that
the relevant element is necessarily present in the cited reference).
For the foregoing reasons, we conclude that the Examiner has not
established, by a preponderance of the evidence, that Matsuzaki teaches,
either expressly or inherently, axial contact faces located substantially in the
same axial plane as recited in independent claims 1 and 11. Therefore, we
do not sustain the Examiner’s anticipation rejection of claims 1–18.

DECISION
We affirm the Examiner’s rejection of claims 1–10 under 35 U.S.C.
§ 112, second paragraph, as indefinite.
We reverse the Examiner’s rejection of claims 1–18 under 35 U.S.C.
§ 102(b) as anticipated by Matsuzaki.
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) (2015).

AFFIRMED-IN-PART