Ex Parte Ehrenberg et al

Board of Patent Appeals and Interferences

Nov 30, 2011

11529961 (B.P.A.I. Nov. 30, 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.
11/529,961 09/29/2006 Joern Ehrenberg 10901/139 1593
26646 7590 11/30/2011
KENYON & KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
EXAMINER
BUI PHO, PASCAL M
ART UNIT PAPER NUMBER
2878
MAIL DATE DELIVERY MODE
11/30/2011 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 JOERN EHRENBERG, HERMAN MEYER,
and ERICH STRASSER
____________

Appeal 2010-000284
Application 11/529,961
Technology Center 2800
____________

Before JOSEPH F. RUGGIERO, CARL W. WHITEHEAD, JR., and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-000284
Application 11/529,961

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STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-17. Appeal Brief 1. We have jurisdiction under 35 U.S.C. § 6(b)
(2002). We AFFIRM.

Exemplary Claim
Exemplary independent claim 1 under appeal reads as follows:
1. A position-measuring device for measuring at least one of (a) linear and
(b) angular positions, comprising:
a first measuring standard including a first code track with which
consecutive position regions are cyclically measurable; and
at least two multiturn code disks including second code tracks, a currently
measured region of the first code track determinable from angular positions
of the multiturn code disks;
wherein the first measuring standard and the multiturn code disks are
positioned such that the first code track and the second code tracks are
scannable by a common scanning unit, the first code track scannable by the
common scanning unit at a first scanning subregion, and each second code
track scannable by the common scanning unit at a respective second
scanning subregion.

Rejections on Appeal
Claims 1-6, 13, and 15-17 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Tessari (DE 2817172). Answer 3-5.
Claims 7-12 and 14 stand rejected under 35 U.S.C. § 103(a) over
Tessari. Answer 5-7.

Appeal 2010-000284
Application 11/529,961

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Issue on Appeal
Does the claimed “common scanning unit” read upon Tessari’s board
which has emitters on one side and receivers on the other and is shared by
code discs?

PRINCIPLES OF LAW
During examination of a patent application, a claim is given its
broadest reasonable construction “in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted) (internal
quotation marks omitted). “[T]he words of a claim ‘are generally given their
ordinary and customary meaning.’” Phillips v. AWH Corp., 415 F.3d 1303,
1312 (Fed. Cir. 2005) (en banc) (citations omitted).

ANALYSIS
Appellants contend that Tessari fails to disclose first and second code
tracks scannable by a common scanning unit. Appeal Brief 5. Appellants
argue that Tessari’s code disks (18 and 24a to 24e) are provided on different
boards; therefore, they cannot be scanned by a common scanning unit.
Appeal Brief 5-6.
The Examiner contends that “Appellant appears to intend to set forth a
position-measuring device wherein a common scanning unit comprises a
light-emitting section and a light-receiving section wherein all of a first code
track and second code tracks are scannable by the same light emitting
section and light receiving section.” Answer 9. The Examiner concludes
Appeal 2010-000284
Application 11/529,961

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that multiple code tracks scanned by the same unit were not recited in the
claims. Id.
Appellants acknowledge the Examiner’s contention that both of
Tessari’s receivers and emitters constitute a scanning unit. See Reply Brief
4. Appellants further argue that
[t]he receivers on board 20 and the senders on board 22 sense
only the a coding on the first disk 18; and the receivers located
on board 22 and senders located on board 22 sense only code
disks 24a to 24e, there is simply no common scanning unit
described by Tessari et al. by which both the code disk 18 and
the code disks 24a to 24e are scannable.
Id.
We do not find Appellants’ arguments to be persuasive because the
terminology ‘common scanning unit’ is broad and subject to a reasonable
broad interpretation. Neither the claims nor Appellants’ Specification
narrows the claim limitation “common scanning unit” to mean the “same
scanning unit.” As such, the “common scanning unit” limitation reads upon
Tessari’s board 22, which has emitters on one side and receivers on the other
side and is shared by code disks 18 and 24-24e. See Answer 3, 5.
Therefore we will sustain the Examiner’s anticipation rejection of
independent claims 1 and 15. We will also sustain the Examiner’s rejection
of dependent claims 2-6, 13, 16, and 17 as well as the rejection of dependent
claims 7-12 and 14 for the same reasons as we have stated above in regards
to claim 1 since Appellants do not argue them separately from claim 1. See
Appeal Brief 7.

Appeal 2010-000284
Application 11/529,961

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DECISION
The Examiner has not erred in rejecting claims 1-17 under the various
35 U.S.C. §§ 102 and 103 rejections.

AFFIRMED

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