Ex Parte DuernbergerDownload PDFPatent Trial and Appeal BoardDec 18, 201410596992 (P.T.A.B. Dec. 18, 2014) Copy Citation 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. 10/596,992 07/05/2006 Gerhard Duernberger TURKP0133US 4254 23908 7590 12/18/2014 RENNER OTTO BOISSELLE & SKLAR, LLP 1621 EUCLID AVENUE NINETEENTH FLOOR CLEVELAND, OH 44115 EXAMINER FIGUEROA, LUZ ADRIANA ART UNIT PAPER NUMBER 3633 MAIL DATE DELIVERY MODE 12/18/2014 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 GERHARD DUERNBERGER ____________________ Appeal 2012-010125 Application 10/596,992 Technology Center 3600 ____________________ Before: JENNIFER D. BAHR, CHARLES N. GREENHUT, and JILL D. HILL, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Gerhard Duernberger (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1, 3–8, and 10–17. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2012-010125 Application 10/596,992 2 THE CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. Connecting means made in such a way that one said connecting means can be connected with the other connecting means in a positive fit in two directions that are perpendicular relative to each other, and wherein said one and other connecting means are formed by respective panel edges that have the same geometry, and each panel edge has a uniform cross-sectional portion bounded by top and bottom surfaces of the panels and a profiled cross-sectional portion extending from the uniform cross-sectional portion, each profiled portion having the same geometry but inverted with respect to one another. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Hannig Pervan Eisermann1 US 6,505,452 B1 US 2003/0024199 A1 US 7,065,935 B2 Jan. 14, 2003 Feb. 6, 2003 June 27, 2006 REJECTIONS Claims 1 and 3 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Hannig. 1 The Examiner and Appellant refer to this patent as “Eisermann,” and we do the same. The front page of the patent lists the inventor name as “Eisermann Ralf,” because the Declaration under 37 C.F.R. § 1.63 submitted with the application transmittal for that patent lists “Eisermann” as the first name and “Ralf” as the family name or surname. However, other papers submitted in that application, such as the transmittal letter submitted with the original papers, suggest that the inventor’s name was “Ralf EISERMANN.” Appeal 2012-010125 Application 10/596,992 3 Claims 47 and 17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hannig and Pervan. Claims 8, 10, 13, and 16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hannig and Eisermann. Claims 11, 12, 14, and 15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hannig, Eisermann, and Pervan. OPINION Anticipation The issue presented by Appellant in contesting this rejection is whether the profiled portions (hook projections 47 and 48) of Hannig have “the same geometry but inverted with respect to one another,” as called for in claim 1. Appeal Br. 8; Reply Br. 2; Ans. 5, 11. The Examiner contends that although Hannig’s hook portions 47 and 48 have slightly different dimensions “to create the space L1,” they “have the same geometry because they have the same shape and/or form.” Ans. 11. Further, the Examiner asserts that Appellant’s “disclosure does not provide any indication that having the same geometry is equivalent to having the same dimension.” Id. Appellant, on the other hand, argues that “if they do not have substantially the same dimensions, they do not have the same geometry,” pointing out that “[t]he claim recites the ‘same geometry[,’] not the ‘same shape.’” Appeal Br. 9. According to Appellant, “[t]he geometry of an object manifestly requires consideration of dimensions” and “[i]f one dimension is changed disproportionately to the other dimensions of a shape, the geometry will not be the same.” Reply Br. 23. For the reasons explained below, Appellant has the better position. Appeal 2012-010125 Application 10/596,992 4 First, we find that Appellant’s Specification provides reasonable indication that “same geometry” requires both same shape and same dimensions. In particular, the Specification states that the connecting means is formed so that it can be interlocked in a positive fit with a further connecting means that has entirely or mostly the same geometry. Therefore, only one geometry has to be manufactured. Thus, the number of tools required for manufacturing the connecting means can be minimized. Spec. 4, ll. 26–30. Formation of parts having different dimensions typically requires a different tool for each size, even if the parts have the same shape. Thus, in order for the manufacturing of “only one geometry” or “the same geometry” to minimize the number of tools required for such manufacturing, “same geometry” must entail not only same shape, but same dimensions. Moreover, the Examiner does not point to any disclosure in Hannig that the hook projections 47 and 48 have the same shape. As acknowledged by the Examiner, the vertical dimension of hook projection 47 extending downwardly from upper-side web 46 must be shorter than that of hook projection 48 extending upwardly from lower-side web 49 in order to create the space L1. However, Hannig does not specify that the other dimensions of hook projection 47 are sized proportionately shorter than the corresponding dimensions of hook projection 48. Thus, Hannig does not support the Examiner’s finding that they have the same shape and/or form. For the above reasons, the Examiner does not establish that Hannig’s hook projections 47 and 48 are reasonably interpreted as “having the same geometry but inverted with respect to one another,” as called for in claim 1. Thus, we do not sustain the rejection of claim 1 or its dependent claim 3 as being anticipated by Hannig. Appeal 2012-010125 Application 10/596,992 5 Obviousness The Examiner’s proposed modification of Hannig in view of Pervan in rejecting claims 4–7 and 17, which depend from claim 1, does not make up for the deficiency in Hannig discussed above. Thus, we do not sustain the rejection of claims 4–7 and 17 as unpatentable over Hannig and Pervan. Independent claims 8 and 16, like claim 1, recite “each profiled portion having the same geometry but inverted with respect to one another.” The Examiner’s proposed modifications of Hannig in view of Eisermann and Pervan in rejecting claims 8 and 16, and claims 10–15, which depend from claim 8, do not make up for the deficiency in Hannig discussed above. Thus, we do not sustain the rejection of claims 8, 10, 13, and 16 as unpatentable over Hannig and Eisermann or the rejection of claims 11, 12, 14, and 15 as unpatentable over Hannig, Eisermann, and Pervan. DECISION The Examiner’s decision rejecting claims 1, 3–8, and 10–17 is reversed. REVERSED llw Copy with citationCopy as parenthetical citation