10555300 (P.T.A.B. Sep. 20, 2012)

Ex Parte Graute

Patent Trial and Appeal BoardSep 20, 2012

10555300 (P.T.A.B. Sep. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte LUDGER GRAUTE ____________________ Appeal 2010-006228 Application 10/555,300 Technology Center 3600 ____________________ Before: JENNIFER D. BAHR, GAY ANN SPAHN, and WILLIAM V. SAINDON, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-006228 Application 10/555,300 2 STATEMENT OF THE CASE Ludger Graute (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 35-45 under 35 U.S.C. § 112, second paragraph, as being indefinite, and under 35 U.S.C. § 102(b) as anticipated by Raffelsiefer (US 2002/0017792 A1, pub. Feb. 14, 2002). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. The Claimed Subject Matter Claim 35, reproduced below, is illustrative of the claimed subject matter. 35. A vehicle door lock with a locking mechanism (1, 2), at least one operating lever (3a, 3b), and a locking lever (4, 5), wherein said operating lever (3a, 3b) consists of a first partial lever (3a) and a second partial lever (3b), said locking lever (4, 5) comprises a control journal (10) for controlling a coupling element (12), said coupling element (12) being disposed on said operating lever (3a, 3b), said coupling element (12) comprising a leg spring (22) having a first leg (23) and a second leg (24), said leg spring (22) being disposed on a pivot (21), and said coupling element (12) being movable via said first leg (23) by said control journal (10), said control journal (10) being disposed between said first leg (23) and said second leg (24) of said leg spring (22). OPINION Preliminary Issues Appellant requests our review of the Examiner’s refusal to enter amendments after the Final Rejection. Reply Br. 2. This relates to a matter that is petitionable to the Director under 37 C.F.R. § 1.181, and thus is not within the jurisdiction of the Board. See Manual of Patent Examining Procedure (MPEP) § 1201 (8th Ed., Rev. 8, Jul. 2010) (the Board will not ordinarily hear a question that is reviewable by petition); In re Berger, 279 Appeal 2010-006228 Application 10/555,300 3 F.3d 975, 984 (Fed. Cir. 2002) (citing In re Hengehold, 440 F.2d 1395, 1403-04 (CCPA 1971) (stating that there are many kinds of decisions made by examiners that are not appealable to the Board when they are not directly connected with the merits of issues involving rejections of claims, and holding that “the kind of adverse decisions of examiners which are reviewable by the board must be those which relate, at least indirectly, to matters involving the rejection of claims”)); and In re Mindick, 371 F.2d 892, 894 (CCPA 1967) (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). Appellant also requests our review of the Examiner’s objection to the drawings. Reply Br. 2. Ordinarily an objection is reviewable by petition under 37 C.F.R. § 1.181, and thus is not within the jurisdiction of the Board. Thus, we do not specifically review the objection to the drawings. However, to the extent that the objection turns on the same issues as the indefiniteness rejection of claims 35-45 under 35 U.S.C. § 112, second paragraph, our decision with respect to the indefiniteness rejection likewise is dispositive as to the corresponding objection to the drawings. Indefiniteness The Examiner rejected claims 35-45 as indefinite because, according to the Examiner, the “engagement of the levers is unclear from the specification and the figures.” Ans. 4. The Examiner also suggested “more illustrative figures showing the different positions of the levers with relation to the axes claimed in claims 41 and 45.” The Examiner’s statements do not specifically point out in any meaningful way why the scope of the claims is unclear. Appeal 2010-006228 Application 10/555,300 4 The Examiner determined that the use of the closed language “consists of” in the claim 35 limitation “said operating lever (3a, 3b) consists of a first partial lever (3a) and a second partial lever (3b)” is inappropriate, because operating lever 3a comprises an extension arm 19. See Ans. 4. The Examiner’s position is untenable. As the extension arm 19 is part of the first partial lever 3a, it is not an element in addition to the first partial lever and the second partial lever. Thus, there is no inconsistency between the disclosed details of the partial levers 3a, 3b of the operating lever and the limitation “said operating lever (3a, 3b) consists of a first partial lever (3a) and a second partial lever (3b).” The Examiner additionally determined that the limitation in claim 35 that the locking lever comprises the control journal is unclear because the locking lever 4, 5 is not shown in figures 4 and 5. Ans. 4. We do not agree. The journal is described (Spec., p. 6, l. 20) and schematically shown in figure 1 as being located on the internal locking lever 4. Figures 4 and 5 illustrate a second embodiment of Appellant’s invention that differs from the embodiment shown in figures 1-3 only in that the control journal 10 acts upon a leg spring 22 arranged on the coupling lever 12, rather than upon a profile 11 on the coupling element 12. See Spec., p. 6, ll. 20-22; Spec, p. 7, ll. 1, 8. The fact that figures 4 and 5 omit some elements shown in figures 1- 3 that are the same in both embodiments does not render the claims confusing or indefinite. The Examiner determined that dependent claim 41 is indefinite for the additional reason that the terminology “in such a way” is unclear. Ans. 4. The Examiner’s position, while not entirely clear, appears to be that Appellant is claiming the relative orientations of the operating lever and the release lever too broadly. Such a position is untenable. Merely that a claim Appeal 2010-006228 Application 10/555,300 5 is broad does not mean that it is indefinite. See In re Johnson, 558 F.2d 1008, 1016 n.17 (CCPA 1977); In re Miller, 441 F.2d 689, 693 (CCPA 1971); In re Gardner, 427 F.2d 786, 788 (CCPA 1970). Further, “[a] patent applicant is free to recite features of an apparatus either structurally or functionally . . . . Yet, choosing to define an element functionally, i.e., by what it does, carries with it a risk.” In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). The Examiner determined that claim 36 is indefinite for the additional reason that the term “level” in claim 36 should be “lever.” Ans. 4. Consequently, claim 36 refers to a “said locking level” that has no antecedent basis in the claim. Appellant does not dispute the Examiner’s position. Thus, we sustain the rejection of claim 36 and its dependent claims 37-41 under 35 U.S.C. § 112, second paragraph. The Examiner determined that dependent claim 38 is indefinite for the additional reason that it recites that coupling element 12 has a “second” axis of rotation without ever reciting a first axis of rotation, and because the limitation “rotatably arranged” is unclear. Ans. 4. Appellant does not present any argument disputing the Examiner’s position on either point. Thus, we sustain the rejection of claim 38 under 35 U.S.C. § 112, second paragraph, for this additional reason. In summary, for the above reasons, we reverse the indefiniteness rejection of claims 35 and 42-45. We affirm the indefiniteness rejection of claim 36-41. Anticipation Claim 35 requires, in relevant part, a leg spring having a first leg and a second leg, wherein the control journal is disposed between the first leg and the second leg of the leg spring. Appeal 2010-006228 Application 10/555,300 6 The Examiner found that Raffelsiefer’s pin 23 of coupling link 17 corresponds to the control journal and spring 20 corresponds to the leg spring. Ans. 5. Raffelsiefer discloses “a spring 20 braced between the pin 23 and the lever 1 urges the pin 23 and with it the lever 17 upward.” Para. [0021]. Thus, we agree with Appellant (App. Br. 12) that Raffelsiefer’s pin 23 is not between1 the first leg and the second leg of the spring 20. We do not sustain the rejection of claim 35 and its dependent claims 36-45 as anticipated by Raffelsiefer. DECISION The Examiner’s decision rejecting claims 35-45 is affirmed as to claims 36-41 and reversed as to claims 35 and 42-45. 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-IN-PART hh 1 An ordinary and customary meaning of the term “between” is “in or through the space that separates (two things).” Webster's New World Dictionary 136 (David B. Guralnik ed., 2nd Coll. Ed., Simon & Schuster, Inc. 1984).