Ex Parte Hotz et alDownload PDFPatent Trial and Appeal BoardDec 4, 201412739960 (P.T.A.B. Dec. 4, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DIETER HOTZ, CENGIZ KUCUK, MANFRED SEEBLE and MARTIN STICKEL ____________ Appeal 2012-010842 Application 12/739,9601 Technology Center 3600 ____________ Before CHARLES N. GREENHUT, THOMAS F. SMEGAL and JAMES J. MAYBERRY, Administrative Patent Judges. SMEGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Dieter Hotz et al. (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 12−20 and 22−24, the only claims pending in the application on appeal. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART and enter NEW GROUNDS OF REJECTION pursuant to 37 C.F.R. § 41.50(b). 1 According to Appellants, the real parties in interest are BSH Bosch und Siemens Hausgerate GmbH. Appeal 2012-010842 Application 12/739,960 2 CLAIMED SUBJECT MATTER An understanding of the invention can be derived from a reading of independent claim 12, which is reproduced below, with emphasis on the key disputed claim limitation. 12. An appliance, comprising: a treatment container including a container door pivotable about a pivot axis; and a door-weight compensating device for at least partially compensating a weight of the container door, the door-weight compensating device including a spring which is connected by a tension transmitter in a spring force transmitting manner to the container door, wherein the container door includes a pivotable deflector, the deflector having at least two mutually separate sliding surfaces for deflecting the tension transmitter. Clms. App, Appeal Br. 11. REJECTIONS ON APPEAL The following Examiner’s rejections are before us for review. 1. Claims 12−17, 19, and 20 are rejected under 35 U.S.C. §102(b) as anticipated by Wilhelmstatter (US 5,988,933, iss. Nov. 23, 1999). 2. Claim 18 is rejected under 35 U.S.C. §103(a) as unpatentable over Wilhelmstatter and Hannan (US 5,341,542, iss. Aug. 30, 1994). 3. Claims 23 and 24 are rejected under 35 U.S.C. §103(a) as unpatentable over Wilhelmstatter and Kimberley (US 3,046,974, iss. July 31, 1962). 4. Claim 22 is rejected under 35 U.S.C. §103(a) as unpatentable over Carnahan (US 3,049,114, iss. Aug. 14, 1962) and Kimberley. Appeal 2012-010842 Application 12/739,960 3 ANALYSIS Anticipation of claims 12−17, 19, and 20 by Wilhelmstatter. We are persuaded by Appellants’ arguments that the Examiner failed to establish a prima facie showing of anticipation in rejecting claims 12−17, 19, and 20 over Wilhelmstatter. The Examiner contends that “it is not positively recited in the claim that the tension transmitter is actively sliding over the surface” and that the “roller 17 [of Wilhelmstatter] creates a sliding surface, as the cable [11] is moving laterally and the roller is pivoting about the pivot point 18.” Answer 9. However, we agree with Appellants that there “is no relative sliding movement as between the roller and the cable since the roller and the cable move together with one another, in the normal operation of Wilhelmstatter’s deflection roller.” App. Br. 2. “[U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102.” Net MoneyIN, Inc., v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). For the foregoing reasons, we do not sustain the rejection of claims 12−17, 19, and 20 over Wilhelmstatter. Obviousness of claim 18 over Wilhelmstatter and Hannan. This rejection is directed to claim 18, which depends directly from claim 12. We found that independent claim 12 is not anticipated because the Examiner did not show by a preponderance of the evidence that Wilhelmstatter satisfied the claim language of “a pivotable deflector [] having at least two mutually separate sliding surfaces.” The Examiner’s Appeal 2012-010842 Application 12/739,960 4 reliance on Hannan to disclose the sliding surfaces of a material “different from a material from which other components [] are made” as recited in claim 18, does not remedy the deficiencies discussed supra with respect to independent claim 12. Therefore, we do not sustain the rejection of claim 18 which is dependent upon independent claim 12, as being unpatentable over Wilhelmstatter and Hannan. NEW GROUNDS OF REJECTION Obviousness of the subject matter of claim 12. Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW GROUND OF REJECTION against claim 12under 35 U.S.C. §103(a) as unpatentable over Wilhelmstatter. While we have exercised our discretion under 37 C.F.R. 41.50(b) in rejecting claim 12, we leave the dependent claims for the Examiner’s consideration in any further prosecution. While the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See MPEP 1213.03.. Section 103(a) forbids issuance of a patent when “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). It is well established that ordinary creativity is presumed on the part of one of ordinary skill in the art. Id. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Appeal 2012-010842 Application 12/739,960 5 Wilhelmstatter discloses the appliance of claim 12 with a pivotable deflector having a sliding surface 13 and a roller 17 for deflecting the tension transmitter (cable 11). See Wilhelmstatter, col. 4, ll. 8−23. We find that it would be obvious to one of ordinary skill in the art to substitute a second sliding surface for roller 17 of Wilhelmstatter as Wilhelmstatter illustrates that the use of sliding surfaces for deflecting such a tension transmitter is well known to those of ordinary skill in this art. KSR Int’l Co., 550 U.S. at 416 (“when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.”) (citation omitted)). Indefiniteness of Claims 23 and 24. Pursuant to our authority under 37 C.F.R. § 41.50(b), we also enter a NEW GROUND OF REJECTION against claims 23 and 24 under 35 U.S.C. §112, second paragraph, as being indefinite for failure to particularly point out and distinctly claim the subject matter which the Appellant regards as the invention. The language of a claim satisfies § 112, second paragraph, only if “one skilled in the art would understand the bounds of the claim when read in light of the specification.” Exxon Research & Eng'g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). [T]his section puts the burden of precise claim drafting squarely on the applicant.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). We find that there is insufficient antecedent basis in claim 23 for the limitation “each said deflector is structured for operation in each of the first and the second locations irrespective of handedness.” (emphasis added). While claim 23 recites “a pair of springs located at first and second positions Appeal 2012-010842 Application 12/739,960 6 and connected to a respective tension transmitter,” the claim merely recites that the “each said transmitter being associated with a respective pivotable deflector” without identifying “the first and the second locations” of the pivotal deflectors. Obviousness of claims 23 and 24 over Wilhelmstatter and Kimberley. We do not sustain the rejections of claims 23 and 24 because the rejection over Wilhelmstatter and Kimberly is necessarily based on speculative assumptions as to the meaning of the claims. See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962). It should be understood, however, that our decision in this regard is based solely on the indefiniteness of the claimed subject matter and does not reflect on the adequacy of the prior art evidence applied in support of the Examiner’s rejection. Obviousness of claim 22 over Carnahan and Kimberley. Appellants first state that “the tension spring [of Wilhelmstatter] is accommodated in a spring channel formed inside the base support and only accessible from the bottom. This makes for difficult manufacturing process as per paragraph 5 of the original specification” Appeal Br. 9. However the Examiner has not relied on Wilhelmstatter in rejecting claim 222. Appellants also argue that “[t]he Examiner provides no support for the contention that Carnahan [] includes lateral sides each having a lateral recess that is open to the outside”, further contending that “the lateral sides of the base support [of Carnahan] are closed, not open to the outside, and the lateral sides do not have lateral recesses in order to accommodate a door- weight compensating device” and that the “bulkhead 178 is clearly not a base support as described in the present specification” Id. 2In an appeal under 35 U.S.C. § 134(a), it is the Examiner’s final rejection that we review. See In re Webb, 916 F.2d 1553, 1556 (Fed. Cir. 1990). Appeal 2012-010842 Application 12/739,960 7 While indicating a willingness to amend the claim, Appellants contend that “such amendment is not necessary since claim 22 specifies first and second attachment points which are both provided in the lateral recess” so that “claim 22 does in fact require that (at least a part of) the deflector and the spring are provided in the lateral recess.” Reply Br. 4. However, the mere existence of differences between the prior art and the claim does not establish nonobviousness. Dann v. Johnston, 425 U.S. 219, 230 (1976). The issue is “whether the difference between the prior art and the subject matter in question ‘is a differen[ce] sufficient to render the claimed subject matter unobvious to one skilled in the applicable art.’” Dann, 425 U.S. at 228 (citation omitted) (finding system for automatic record keeping of bank checks and deposits obvious in view of nature of extensive use of data processing systems in banking industry and “closely analogous” patent for an automatic data processing system used in a large business organization for keeping and updating system transaction files for each department of the organization). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results”). First, Appellants’ argument is not commensurate with the scope of claim 22, which is not limited to lateral sides with “lateral recesses to accommodate a door-weight compensating device,” but merely recites “a base support having lateral sides each with a lateral recess open to the outside” and that deflectors and springs are provided with attachment points to the base support “provided in the lateral recess.” Appeal Br. 12. Second, the Examiner does provide support for the teaching of Carnahan, explaining that Carnahan “shows an appliance (oven)…with a Appeal 2012-010842 Application 12/739,960 8 lateral recess (formed by bulkhead 178 and side wall 39, Fig. 1) open to the outside (open to the back and top of the appliance).” Answer 8. The Examiner also finds that “[t]he lateral recess of Carnahan is formed by side walls (39 and 178) in the appliance, in a similar manner to the lateral recess that is formed in applicant's invention.” Id at 11. In addition, the Examiner points out that claim 22 “does not recite that they [the spring and deflector] are located in the lateral recess of the base support.” Id. at 12. Furthermore, the Examiner finds that Kimberley shows a base support having lateral sides (oppose side walls of container) each with lateral recess (recess at 16, Fig. 2, col.1 lines 46−50) open to the outside, each lateral side of the base support has a spring (20, Fig.2), a respective tension transmitter (cable 25), each transmitter associated with respective pivotable deflector (pulley 23), for each lateral side, the attachment point between the pulley and the wall of the container as well as the attachment point between the spring and the base support (connection of spring with fixed anchorage 21) are located in the same lateral recess (16, Fig.2). Id at 8. Still further, the Examiner finds that Kimberley clearly shows a recess (16, see Fig. 1, Fig. 2, Col.1 lines 48−50) formed at each lateral side open to the outside to accommodate the mechanism. Thus the combination of Carnahan and Kimberley show lateral sides each with a lateral recess open to the outside (open to the top and back) to accommodate the door-weight compensating device Id at 11. See also Kimberley, Figs. 3 and 4. Thus, Appellants are simply attacking Carnahan in isolation, rather than as combined with Kimberley which the Examiner determines to also disclose the lateral recesses as recited by claim 22. Nonobviousness cannot be established by attacking the references individually when the rejection is Appeal 2012-010842 Application 12/739,960 9 predicated upon a combination of prior art disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.1986). For the foregoing reasons, we sustain the rejection of claim 22 as being obvious over Carnahan and Kimberley. DECISION The rejection of claims 12−17, 19, and 20 under 35 U.S.C. §102(b) as anticipated by Wilhelmstatter is REVERSED. The rejection of claim 18 under 35 U.S.C. §103(a) as unpatentable over Wilhelmstatter and Hannan is REVERSED. The rejection of claims 23 and 24 under 35 U.S.C. §103(a) as unpatentable over Wilhelmstatter and Kimberley is REVERSED. The rejection of claim 22 under 35 U.S.C. §103(a) as unpatentable over Carnahan and Kimberley is AFFIRMED. We enter NEW GROUNDS OF REJECTION of claim 12 under 35 U.S.C. §103(a) as unpatentable over Wilhelmstatter. We enter NEW GROUNDS OF REJECTION of claims 23 and 24 under 35 U.S.C. §112, second paragraph, as being indefinite for failure to particularly point out and distinctly claim the subject matter which the Appellant regards as the invention. Regarding the affirmed rejection, 37 C.F.R. § 41.52(a)(1) provides “Appellants may file a single request for rehearing within two months from the date of the original decision of the Board.” In addition to affirming the Examiner’s rejections of one or more claims, this decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Appeal 2012-010842 Application 12/739,960 10 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THIS DECISION must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the Examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . Should Appellant elect to prosecute further before the Examiner pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejections, the effective date of the affirmance will be deferred until the prosecution before the Examiner concludes unless, the affirmed rejection is overcome. If Appellant elects prosecution before the Examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to the Patent Trial and Appeal Board for final action on the affirmed rejections, including any timely request for rehearing thereof. 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; 37 C.F.R. § 41.50(b). tkl Copy with citationCopy as parenthetical citation