Ex Parte Hofbauer

Patent Trial and Appeal Board

Sep 24, 2018

13514877 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/514,877 08/10/2012
27799 7590 09/26/2018
Cozen O'Connor
277 Park A venue, 20th floor
NEW YORK, NY 10172
FIRST NAMED INVENTOR
Edwin Hofbauer
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
5029-969PUS-320778.000 5722
EXAMINER
GUAN, GUANG H
ART UNIT PAPER NUMBER
3631
NOTIFICATION DATE DELIVERY MODE
09/26/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patentsecretary@cozen.com
patentdocket@cozen.com
patentsorter@cozen.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWIN HOFBAUER
Appeal 2017-011476
Application 13/514,877
Technology Center 3600
Before JENNIFER D. BAHR, LINDA E. HORNER, and
GEORGE R. HOSKINS, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Edwin Hofbauer (Appellant) 1 appeals under 35 U.S.C. § 134(a) from
the Examiner's decision rejecting claims 11-18, 20, and 21, which are the
only pending claims. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant identifies Siemens AG as the real party in interest. Appeal Br. 2.
Appeal 2017-011476
Application 13/514,877
THE CLAIMED SUBJECT MATTER
Claim 11, reproduced below, is illustrative of the claimed subject
matter.
11. A mounting and latching mechanism of an electrical
device for fastening on a standard rail, comprising:
at least one moveable web;
an immoveable claw;
a moveable claw which is moveable against a spring
force; and
an externally disposed planar element arranged between
the moveable claw and the immoveable claw via the at least one
moveable web;
wherein the moveable claw is translationally moveable
relative to the immoveable claw;
wherein the immoveable claw and the moveable claw are
formed in one piece with connecting spring structures; and
wherein the spring structures include a plurality of
meandering-type spring elements arranged at the immoveable
claw and the moveable claw, respectively.
REJECTION
Claims 11-18, 20, and 21 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Apfelbacher et al. (US 2005/0006053 Al, published Jan.
13, 2005), Milcoy (US 4,067,529, issued Jan. 10, 1978), and Siemens
(DE 295 06 579 Ul, published June 22, 1995). 2
2 A partial English translation of Siemens, obtained from Google Translate
(https://translate.google.com/ (accessed Dec. 14, 2014)), was entered into the
electronic record for the present application on April 1, 2016.
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DISCUSSION
The only issue raised in the Appeal Brief is whether the Examiner
erred in finding that Apfelbacher discloses structure corresponding to the
"externally disposed planar element arranged between the moveable claw
and the immoveable claw via the at least one moveable web" of claim 11 in
the combination set forth in the rejection. See Appeal Br. 3---6.
The Examiner provided an annotated version of Apfelbacher's Figure
5 showing how the Examiner is reading the structure of claim 11 on the
structure of Apfelbacher. Final Act. 3, 7; see Ans. 9 (incorporating the same
annotated Figure 5 into the Answer). The Examiner's annotated Figure 5 is
reproduced below.
FIG 5
The annotated Figure 5 is a three-dimensional illustration of
Apfelbacher's device viewed from the face of connecting element 3, which
engages bearing rail 5 ( shown in dashed lines), with annotations labelling
the structure the Examiner considers to correspond to the claimed structure.
These annotations include, in pertinent part, a label denoting the structure
the Examiner considers to correspond to the claimed "externally disposed
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Application 13/514,877
planar element" with reference numeral "106." See Final Act. 3. The
Examiner explained:
[T]he standard rail ( 5, fig 1) is not a structural component of the
mounting and latching mechanism (1, 2, 3, 4, fig 1). Therefore,
it is incorrect to state that the Examiner identified the
"externally disposed planar element" as the standard rail (5, fig
1 ). Rather, the "externally disposed planar element" is
identified as "the planar surface in the middle" of the mounting
and latching mechanism ( 1, 2, 3, 4, fig 1 ). This is the middle
planar surface that the standard rail (5, fig 5) abuts against.
Moreover, the annotated Figure 5 clearly shows the "planar
surface in the middle" with a reference number (106), which is
arranged between the moveable claw (104, fig 5, after
modification with the moveable claw 20 of Milcoy) and the
immoveable claw (102, fig 5) via the at least moveable web
( 100, fig 5).
Id. (italics omitted).
Despite the Examiner's very explicit statement in the Final Action
emphasizing that the Examiner is not reading the claimed "externally
disposed planar element" on Apfelbacher's standard rail 5, Appellant
persists in the Appeal Brief in the position that the Examiner is reading the
claimed "externally disposed planar element" on Apfelbacher' s standard rail
5. See Appeal Br. 3. Appellant argues that "[t]his rail does not correspond
to the 'externally disposed planar element arranged between the moveable
claw and the immovable claw via the at least one moveable web' of
Appellant's independent claim 11." Id. (emphasis omitted). This argument
is unavailing because it is not responsive to the rejection articulated by the
Examiner.
Next, Appellant interprets the Examiner's reference numeral "106" as
pointing to "an externally disposed planar space ... shown between the
fastening claws," and submits that "this structure does not constitute a planar
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Application 13/514,877
element that is part of a rigid unit formed by the planar element itself, the
two segments of the moveable web, the moveable claw[,] and the actuating
element (as shown in Fig. 1 of Appellant's disclosure)." Id. at 4. Appellant
adds that
the skilled person would view the planar space 106 shown in
Fig. 5 of Apfelbacher as either a part of the standard rail (rear
side) or an "empty" space between the fastening claws and the
fasting mechanism - or even a space on the rear of the device
for the standard rail, but the planar space 106 is not an element
that belongs to the mounting and latching mechanism.
Id. (italics omitted).
Once again, Appellant's argument is not responsive to the rejection
set forth by the Examiner. The Examiner's rejection does not rely on either
a part of rail 5 or the space between rail 5 and the central planar surface of
connecting element 3 (between the upper and lower portions of second
fixing device 7, referred to by Appellant as "fastening claws"). The
Examiner expressly explained in the Final Action that, in the Examiner's
rejection, "the 'externally disposed planar element' is identified as 'the
planar surface in the middle' of the mounting and latching mechanism (1, 2,
3, 4, fig. 1), not as the 'space' as [Appellant] interpreted." Final Act. 4. It is
clear from the Examiner's explanations and annotated Figure 5 in the Final
Action that the Examiner is reading the claimed "externally disposed planar
element" on the central planar portion of connecting element 3 between the
upper and lower portions of second fixing device 7, referred to by Appellant
as "fastening claws." See Final Act. 3--4.
Moreover, Appellant's argument that element 106 of Apfelbacher is
not "a planar element that is part of a rigid unit formed by the planar element
itself, the two segments of the moveable web, the moveable claw[,] and the
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actuating element" (Appeal Br. 4) is not commensurate with the scope of
claim 11, which does not recite that the "planar element" is part of a rigid
unit formed by two segments of the moveable web, the movable claw, and
the actuating unit, and, thus, does not identify error in the rejection. See In
re Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations not appearing in the
claims cannot be relied upon for patentability).
Appellant additionally argues that "the identified 'planar surface in
the middle' is arranged at the rear of the first side and fails to interconnect
the latching mechanism (20) (which includes the spring 21) to the fixing
device (7) located at the other end of the connection element (3)." Appeal
Br. 5 ( emphasis omitted). This argument also is unavailing because it is not
commensurate with the scope of claim 11, which does not recite that the
"planar element" interconnects the spring to the moveable claw and/or
immovable claw. Rather, claim 11 recites "an externally disposed planar
element arranged between the moveable claw and the immoveable claw via
the at least one moveable web." Appeal Br. 2 (Claims App.) (emphasis
added).
Moreover, the Examiner found that "externally disposed planar
element (106, fig 5, see annotation, the planar surface in the middle) [is]
arranged between the moveable element and the immoveable claw via the at
least one moveable web" in that "the planar surface is connected to the lower
immoveable web, which in tum is connected to the spring elements and the
block on the right side, which are in tum are connected to the moveable web
that is connected to the left block." Final Act. 6. In this regard,
Apfelbacher's "immovable claw" (labelled "102 -Immovable Claw" by the
Examiner) includes the upper portion of second fixing device 7 and forms
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the upper portion of connecting element 3, and, thus, is connected to the
lower portion of connecting element 3 (labelled "112 -Immoveable Web"
by the Examiner) by the planar middle portion (labelled "106-Extemally
Disposed Planar Element" by the Examiner). See Final Act. 3 (Annotated
Fig. 5). The lower portion of connecting element 3, including the lower
portion of fixing device 7, in tum, is connected to latching mechanism 20
with integrally molded spring 21 (labelled "100- Moveable Web" by the
Examiner). See id.; Apfelbacher ,r 34. Thus, the planar middle portion of
connecting element 3 (i.e., the "externally disposed planar element") does, in
fact, interconnect latching mechanism 20 to the upper portion of second
fixing device 7 (i.e., what Appellant refers to as "the fixing device (7)
located at the other end of the connection element (3)").
Notably, Appellant's Appeal Brief does not present any arguments
contesting the Examiner's findings with respect to Siemens or Milcoy or the
Examiner's reasoning in combining their teachings with Apfelbacher. See
Appeal Br. 6 (noting that Siemens and Milcoy fail "to teach or suggest the
externally disposed planar element of independent claim 11," and, thus, fail
"to provide what Apfelbacher lacks" (italics omitted)); Final Act. 8-10
( discussing Milcoy and Siemens).
Appellant presents in the Reply Brief several new arguments that were
not raised in the Appeal Brief. See Reply Br. 3-5. As discussed in more
detail below, these arguments are not responsive to an argument raised in the
Answer, and Appellant has not shown good cause why these arguments
should be considered now. Accordingly, these arguments are not timely,
and we do not consider them. See 37 C.F.R. § 4I.41(b )(2) (stating, "Any
argument raised in the reply brief which was not raised in the appeal brief, or
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Application 13/514,877
is not responsive to an argument raised in the examiner's answer ... will not
be considered by the Board for purposes of the present appeal, unless good
cause is shown.").
Appellant contends for the first time in the Reply Brief that
"Apfelbacher lacks a description of Figure 5 and the externally disposed
planar space (annotated with 106 by the Examiner) is not numbered in
Apfelbacher" and that, "[ c ]onsequently, the Examiner's position is a mere
guess about what is provided at this location, i.e., hindsight." Reply Br. 3
(italics omitted). The Examiner provided the annotated Figure 5, in which
the Examiner inserted the reference numeral "106" to denote the "externally
disposed planar element," on pages 3 and 7 of the Final Action. Moreover,
the Examiner's stated position, to which Appellant's argument purports to be
responding (see Reply Br. 2-3) was set forth on pages 2--4 and 6-7 of the
Final Action, including the annotated Figure 5. Although the Examiner
repeated this explanation, and reproduced the annotated Figure 5, on pages
2-3 and 8-11 of the Answer, this position was not a point or argument
raised in the Examiner's Answer. Consequently, Appellant's argument in
response to this explanation could have been, but was not, presented in the
Appeal Brief.
Appellant argues that "Apfelbacher only shows immovable webs" and
"[t]he skilled person would more aptly regard the Examiner-annotated
movable web 100 as a part of the latching mechanism to affix or to press a
device (2) to the standard rail (5) via the spring structure." Reply Br. 4
(italics omitted). As already noted, the Examiner presented the annotated
Figure 5 to which Appellant's argument purports to respond on pages 3 and
7 of the Final Action. Thus, although the Examiner reproduced the
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Application 13/514,877
annotated Figure 5 on page 9 of the Answer, it was not raised in the
Examiner's Answer. Consequently, Appellant's argument could have been,
but was not, presented in the Appeal Brief.
Appellant argues that a movable web "arranged centrally between the
meandering spring structures" is a feature that is not "disclosed by
Apfelbacher, Milcoy, nor Siemens." Reply Br. 4 (italics omitted). Once
again, the Examiner included annotated Figure 5, which included reference
numeral "100" to denote the structure on which the Examiner reads the
"moveable web" on pages 3 and 7 of the Final Action. Consequently,
Appellant's argument regarding this structure could have been, but was not,
presented in the Appeal Brief.
Appellant argues that "the skilled person would not view [Milcoy's]
hooking member (20) as being moveable within the meaning of Appellant's
instant invention." Reply Br. 4. Appellant also asserts that the age of
Milcoy "is evidentiary of a long existing problem and, therefore, provides a
secondary consideration with respect to the inventiveness of Appellant's
instant invention." Id. at 4--5. On page 8 of the Final Action, the Examiner
explicitly articulated the finding that "Milcoy teaches a mounting and
latching mechanism ... comprising: a moveable claw (20, fig 2)," and
determined it would have been obvious to combine this teaching with
Apfelbacher by "form[ing] the moveable element (Apfelbacher: 104, fig 5)
as a moveable claw (Milcoy: 20, fig 1 )," thereby obtaining "the moveable
claw" of claim 11, in order "to securely engage the lower edge of the
standard rail with a claw." Consequently, Appellant's argument regarding
this finding, as well as any arguments or evidence of secondary
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considerations contesting the reasoning in support of the determination of
obviousness, could have been, but were not, presented in the Appeal Brief.
Appellant also presents arguments contesting the Examiner's
determination that it would have been obvious to modify the
Apfelbacher/Milcoy combination "based on the teachings of Siemens," and
alleges hindsight. Reply Br. 5 (italics omitted). Appellant also argues that
"[t]he claws shown in Figure 13 of [Siemens] are both moveable, because
both of these claws are spring-loaded." Id. (emphasis omitted). This issue
was not addressed in either the Appeal Brief or the Examiner's Answer. The
Examiner's findings with respect to the teachings of Siemens, and the
rationale in combining those teachings with Apfelbacher, were set forth by
the Examiner on pages 9 and 10 of the Final Action. Thus, Appellant's
arguments with regard to Siemens could have been, but were not, presented
in the Appeal Brief.
For the above reasons, Appellant fails to apprise us of error in the
rejection of claim 11. Accordingly, we sustain the rejection of claim 11, as
well as claims 12-18, 20, and 21, for which Appellant does not present any
separate arguments (see Appeal Br. 3---6), under 35 U.S.C. § 103(a) as
unpatentable over Apfelbacher, Milcoy, and Siemens.
DECISION
The Examiner's decision rejecting claims 11-18, 20, and 21 is
AFFIRMED.
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)(l )(iv).
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AFFIRMED
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