Ex Parte Foser et al

Patent Trial and Appeal Board

Feb 3, 2014

11698680 (P.T.A.B. Feb. 3, 2014)

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.
11/698,680 01/25/2007 Thomas Foser 208,002 5147
38137 7590 02/03/2014
ABELMAN, FRAYNE & SCHWAB
666 THIRD AVENUE, 10TH FLOOR
NEW YORK, NY 10017
EXAMINER
WOOD, KIMBERLY T
ART UNIT PAPER NUMBER
3631
MAIL DATE DELIVERY MODE
02/03/2014 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 THOMAS FOSER and MARKUS DURIG
____________

Appeal 2012-001970
Application 11/698,680
Technology Center 3600
____________

Before JENNIFER D. BAHR, WILLIAM A. CAPP, and JILL D. HILL,
Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/698,680

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STATEMENT OF THE CASE
Thomas Foser and Markus Durig (Appellants) appeal under 35 U.S.C.
§ 134 from the Examiner’s decision finally rejecting claims 2, 3, 5, and 9-16.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claims 9, 15, and 16 are independent. Claim 15 illustrates the subject
matter on appeal and is reproduced below, with the key disputed limitations
being emphasized.
15. A holding element for securing gratings (50) on
supports (40), comprising
a leg-shaped first engagement part (11);
a second engagement part (12);
screw means (30) for securing the first and second
engagement parts (11, 12) with each other along a clamping
axis (A); and
an elongate guide element (13) spaced from the clamping
axis (A) and extending substantially parallel thereto, securable
to one of the first and second engagement parts (12) and
displaceable through an opening (20) formed in another of the
first and second engagement parts (11),
the second engagement part (12) having an opening (15)
through which the screw means (30) is extendable, and
a bearing region (17) for engaging a strut of a grating
(50) and located between the screw means-receiving opening
(15) and the elongate guide element (13).

REJECTIONS
Claims 2 and 9-16 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Langslow (US 934,676; iss. Sep. 21, 1909). Ans. 5.
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Claims 3 and 5 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Langslow. Ans. 6-7.
ANALYSIS
Claims 2, 9, and 14-16
Claims 2, 9, 14, and 16 stand or fall together. App. Br. 12-14. We
select claim 9 as representative. See 37 C.F.R. § 41.37(c)(1)(vii)(2011).
The Examiner finds that Langslow teaches all of the limitations of
independent claims 9, 15, and 16, including first and second engagement
parts (8, 9), a screw means 10, an elongate guide element 13, an opening in
which the elongate guide element 13 is displaceable, and an opening having
a counter thread to receive screw 10. Ans. 5-6.
Regarding independent claims 9, 15, and 16, Appellants argue that
Langslow fails to disclose a screw means that secures first and second
engagement parts (8, 9) “with each other” along a clamping axis, because
Langslow’s screw bears against plate 1 to push the plates away from each
other, such that Langslow’s screw performs the opposite function from the
claimed screw means. App. Br. 13; Reply Br. 3.
The Examiner responds that Langslow teaches the screw 10 securing
the first and second engagement parts (8, 9) together while moving the
engagement parts (8, 9) along a clamping axis by turning the screw 10. Ans.
9-10 (citing Langslow, p. 1, l. 109 – p. 5, l. 15).
The claims do not recite that the screw means moves the first and
second engagement parts toward each other, just that the screw means is for
securing the first and second engagement parts together, which Langslow’s
screw 10 does. Langslow’s screw 10 secures the first and second
engagement parts (8, 9) with each other even as it also pushes them away
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from each other for attaching the clamp to a table edge. We therefore are
not persuaded by Appellants’ argument and we sustain the rejection of
independent claims 9 and 16. Claims 2 and 14 fall with claim 9. See 37
C.F.R. § 1.37(c)(1)(vii)(2011).
Regarding independent claim 15, Appellants additionally argue that
Langslow fails to disclose the claimed “bearing region” for engaging a strut
of a grating and located between the screw receiving opening and the
elongate guide element. App. Br. 13.
The Examiner responds that Langslow discloses a bearing region (the
rectangular area bounded by elements 1, 9, 10, 13 as shown in Langslow’s
Figure 1), for engaging a strut of a grating. Ans. 10-11. The Examiner notes
that the strut has not been positively claimed, but rather is recited in a
functional limitation such that the device need only be capable of engaging a
grating strut, and finds that the rectangular area would provide enough
spacing/area for a grating strut to be secured because Appellants have not
provided any sizing or particular limitations of the grating. Ans. 11.
A functional limitation does not impose any structural limitation on
the claimed apparatus that differentiates the claimed apparatus from a prior
art reference otherwise disclosing the structural limitations of the claim. See
In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (Appellant’s
contention that the claimed structure will be used to perform a function not
taught by the prior art reference does not have patentable weight if the
structure is already known).
Appellants do not dispute that the language at issue is functional;
rather, Appellants argue that despite Langslow’s clamp providing enough
spacing/area for a strut of a grating to be secured (the area between the
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screw 10 and the plate 13), the clamp is not capable of engaging a grating
strut because it is not capable of securing the strut since the clamp portions
1, 9 cannot be drawn together by the screw in that space/area, and indeed are
pushed apart from each other in that space/area. Reply Br. 6.
Neither Appellants nor the Examiner proffer a definition for the term
“engaging.” “To engage” is defined, in relevant context, as “[t]o become
meshed or interlocked.” The Free Dictionary,
http://www.thefreedictionary.com/engage (last visited January 29, 2014).
This definition is consistent with Appellants’ Specification. Based on this
definition, we agree with the Examiner that the rectangular area of Langslow
would provide enough spacing/area to engage a grating strut, given that
Appellants have not provided any sizing or particular limitations of the
grating. We therefore sustain the Examiner’s rejection of claim 15.
Claims 3 and 5
Regarding claim 3, the Examiner finds that Langslow discloses all of
the limitations except for the elongate guide element and one of the first and
second engagement parts being formed integrally by stamping sheet metal.
Ans. 6. The Examiner concludes that it would have been obvious to one
having ordinary skill in the art at the time the invention was made to form
the elongate guide element and the engagement part integrally by stamping
sheet metal, because “it has been held that forming in one piece an article
which has formerly been formed in two pieces and put together involves
only routine skill in the art.” Ans. 6-7 (see Howard v. Detroit Stove Works,
150 U.S. 164 (1893)).
Regarding claim 5, the Examiner finds that Langslow discloses all of
the limitations except for the elongate guide element having a U-shaped
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cross-section. Ans. 7. The Examiner concludes that it would have been an
obvious matter of design choice to have made the elongate guide element
with a U-shaped cross-section, because such a modification would have
involved a mere change in the shape of a component, which is recognized as
being within the level of ordinary skill in the art since lacking a showing of
its criticality. Id.
Appellants argue that Langslow does not render claims 3 and 5
obvious because nothing in the prior art suggests the desirability of
modifying Langslow as proposed by the Examiner. App. Br. 16. Reply Br.
9. Appellants allege that the Examiner’s obviousness conclusion is based on
hindsight. Id. Appellants have not, however, explained these arguments or
refuted the Examiner’s proffered reason for modifying Langslow. We
therefore are not persuaded by Appellants’ arguments regarding obviousness
of modifying Langslow, and we sustain the rejection of claims 3 and 5.
Claims 10-13
Claims 10-13 recite various aspects of a means for enabling pivotal
movement of an engagement part. Appellants argue that the Examiner has
failed to meet the notice requirement of 35 U.S.C. § 132 because the
Examiner failed to explain the basis for the rejection of claims 10-13 in the
Final Office Action in a sufficiently articulate and informative manner as to
meet the notice requirement of § 132. App. Br. 14-15 (citing In re Jung, 98
USPQ2d 1174, 1178 (Fed. Cir. 2011)).
The Examiner responds by finding that Langslow teaches the various
aspects of a means for enabling pivotal movement of an engagement part as
recited in claims 10-13. Ans. 13-15. Appellants argue in response that
claim 10 recites “means for enabling a pivotal movement of the another of
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the first and second engagement parts (11, 12) in a plane containing a
longitudinal axis (L) of the elongate guide element (13),” which is a means
plus function limitation under 35 U.S.C. § 112, sixth paragraph. Reply
Br. 8. Appellants then submit that the Examiner has not established a prima
facie case of equivalence of a corresponding element in Langslow in
accordance with MPEP § 2183. Appellants do not construe “means for
enabling” and do not explain why Langslow does not disclose such means.
We therefore are not persuaded by Appellants conclusory arguments
regarding the Examiner’s finding with respect to Langslow, and we sustain
the rejection of claims 10-13.
DECISION
We AFFIRM the rejection of claims 2 and 9-16 under 35 U.S.C.
102(b) as anticipated by Langslow.
We AFFIRM the rejection of claims 3 and 5 under 35 U.S.C. § 103(a)
as unpatentable over Langslow.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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