Ex Parte Huck

Patent Trial and Appeal Board

Oct 30, 2017

13582519 (P.T.A.B. Oct. 30, 2017)

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.
13/582,519 11/12/2012 Thomas Huck 022862-1626-US00 1457
34044 7590 11/01/2017
MICHAEL BEST & FRIEDRICH LLP (Bosch)
100 EAST WISCONSIN AVENUE
MILWAUKEE, WI 53202
EXAMINER
TRUONG, THOMAS
ART UNIT PAPER NUMBER
2834
NOTIFICATION DATE DELIVERY MODE
11/01/2017 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):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS HUCK
Appeal 2016-006835
Application 13/582,519
Technology Center 2800
Before ROMULO H. DELMENDO, JULIA HEANEY
and MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1—8, 10, 12—17, 19, and 20 of
Application 13/582,519. Final Act. (May 18, 2015) 2—17. Appellant1 seeks
reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM-IN-PART.
1 Robert Bosch GMBH is identified as the real party in interest. Appeal
Br. 2.
Appeal 2016-006835
Application 13/582,519
STATEMENT OF THE CASE
As indicated, the Examiner issued a Final Office Action rejecting
claims 1—8, 10, 12—17, 19, and 20 on May 18, 2015. By Response dated
July 20, 2015, Appellant submitted certain proposed amendments including
an amendment to change the dependency of claim 16 from claim 14 to claim
15. Appellants argued that this amendment would provide antecedent basis
for “the first locking device” limitation of claim 16. Response to Final
Office Action 7. By Advisory Action entered July 27, 2015, the Examiner
declined to enter such amendment on the basis that claim 15 “contained a
different scope and required further search/consideration.”
Applicant filed a Notice of Appeal of all rejected claims on August
18, 2015 and submitted an Appeal Brief on October 15, 2015. The
Examiner’s Answer was submitted April 14, 2016. No Reply Brief was
submitted.
BACKGROUND
The present application generally relates to “an adjusting drive, in
particular for application as window lifter drive in a motor vehicle.” Spec.
1.
Claim 1 is representative of the pending claims and is reproduced
below with certain portions bolded for emphasis:
1. An adjusting drive (1) comprising an electric motor (2),
an output shaft (3), a circuit board (4), a housing (6) and a
connection interface (5),
- wherein the electric motor (2) is contact-connected to the
circuit board (4) and is drivingly connected to the output shaft
(3),
- wherein the housing (6) accommodates the circuit board (4),
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- wherein the circuit board (4) includes contacting pads (9) that
are configured for direct contact with a removable connector
(7) ,
- wherein the connection interface (5) includes a housing
opening (8) in the housing (6) such that the contact pads (9) are
exposed in the housing opening (8) and a portion of the
connector (7) can be inserted along a first direction into the
housing opening (8) to directly contact the contacting pads (9),
- wherein the entire circuit board (4) is narrower than the
housing opening (8) so that the entire circuit board (4) can be
inserted into the housing (6) through the housing opening
(8) along the first direction to be contact connected to the
motor (2), and wherein when the adjusting drive (1) is fully
assembled, the entire housing opening (8) is exposed along an
exterior of the adjusting drive ( 1) for receipt of the removable
connector (7).
Appeal Br. 16 (Claims App.) (emphasis added).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claim 16 is rejected under 35 U.S.C. § 112,12 as being
indefinite. Final Act. 2 13.
2. Claims 1, 5, 8, 10, 14 and 19 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Matsuyama et al. (US 6,903,473 B2, iss. June 7,
2005) (hereinafter “Matsuyama”). Id. at 3—5 1 5.
3. Claims 2, 3, and 16 are rejected under 35 U.S.C. § 103(a) as
obvious over Matsuyama in view of Huck et al. (US 7,602,090 B2, iss. Oct.
13, 2009) (hereinafter “Huck”). Id. at 6—8 17.
4. Claim 4 is rejected under 35 U.S.C. § 103(a) as obvious over
Matsuyama. Id. at 8—9 1 8.
5. Claim 6 is rejected under 35 U.S.C. § 103(a) as obvious over
Matsuyama in view of Huck. Id. at 9—10 9.
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6. Claim 7 is rejected under 35 U.S.C. § 103(a) as obvious over
Matsuyama in view of Hager et al. (US 6,759,783 B2, iss. July 6, 2004). Id.
at 10-11110.
7. Claims 12, 13 and 20 are rejected under 35 U.S.C. § 103(a) as
obvious over Matsuyama in view of Weber et al. (US 6,317,332 Bl, iss.
Nov. 13,2001). Id. at 12-14111.
8. Claim 15 is rejected under 35 U.S.C. § 103(a) as obvious over
Matsuyama in view of Huck. Id. at 14—15 112.
9. Claim 17 is rejected under 35 U.S.C. § 103(a) as obvious over
Matsuyama in view of Ursel et al. (US 6,906,438 B2, iss. June 14, 2005).
Id. at 15-17113.
DISCUSSION
Rejection 1. The Examiner rejected claim 16 as indefinite on the
ground that there is insufficient antecedent basis for the limitation “the first
locking device.” Final Act. 2. Appellant does not present argument
regarding this rejection. Appeal Br. 6. Accordingly, it is summarily
affirmed.
Rejection 2. The Examiner rejected claims 1, 5, 8, 10, 14, and 19 as
anticipated by Matsuyama. Final Act. 3—5 1 5. In support of this rejection,
the Examiner finds that the removable connector 31 and the circuit board 43
of Matsuyama “can be inserted from any direction.” Answer 3. In making
such finding, the Examiner relies upon Matsuyama’s statement that “the
control circuit board 43 and the connector housing 31 can be installed to the
gear housing 42 from any of the circuit board installation opening 42c and
the connector installation opening 42d.” Matsuyama 8:28—32.
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Application 13/582,519
Appellant argues that Matsuyama teaches that the openings for the
two components may be switched, but the components are still inserted
toward one another from opposite sides of the device. Appeal Br. 7.
Appellant asserts that “in Matsuyama it is not possible to insert the circuit
board 43 into the opening 42c in a first direction, such that any contact pads
of the circuit board 43 are exposed in the opening, and to then insert the
connector housing 31 through the same opening along the same, first
direction.” Id.
Matsuyama states in regard to Figures 1 and 2 that the “connector
installation opening lid and the circuit board installation opening 11c are
angularly spaced 180 degrees from one another along a straight line to allow
installation of the connector housing 31 and the control circuit board 13 to
the gear housing 11 from opposite directions.” Matsuyama 7:26—31.
Similarly, in regard to the same embodiments, Matsuyama teaches that “the
connection terminals [ ] of the control circuit board [ ] are formed as female
terminals, and the connection terminals [ ] of the connector housing ... are
formed as male terminals.” Id. 5:23—27. Further, the portion of the
Specification relied upon by the Examiner appears to teach that the circuit
board may be installed through the connector installation opening and vice
versa. Id. 8:14—32.
Taken as a whole, Matsuyama reasonably shows that the circuit board
and the connector enter the housing through separate, oppositely spaced,
apertures and connect end-to-end. This, however, is not dispositive of
whether Matsuyama teaches a connector and a circuit board that “can be
inserted” into a housing opening.
The Examiner construes the “can be inserted” limitations as functional
or intended use limitations that do not patentably distinguish the claimed
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invention over Matsuyama. Answer 4. The Examiner determines that “[t]he
term ‘can be’ simply means ‘to be able to,’ ‘possibility’ or ‘capability’.” Id.
Furthermore, although claim 1 recites that “the entire circuit board (4) can
be inserted into the housing (6)” (emphasis added), the claim does not
require the circuit board (4) to be fully inserted when its contact pads (9) are
in direct contact with the connector (7).
The Federal Circuit has often accorded patentable weight to functional
language. In 2016, it noted “that the phrase ‘adapted to’ generally means
‘made to,’ ‘designed to,’ or ‘configured to,’ though it can also be used more
broadly to mean ‘capable of or ‘suitable for.’” In re Man Machine
Interface Techs. LLC, 822 F.3d 1282, 1286 (Fed. Cir. 2016) (reversing
Patent Office rejection of claim including “adapted to” limitation). In order
to be accorded patentable weight, however, functional language in an
apparatus claim must limit the claim in terms of structure rather than
function. In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997); MPEP
§2114.
The “can be” limitations of claim 1 are similar to those discussed in In
re Man Machine. These are structural limitations bearing upon the size and
shape of the housing opening (8).2 The Examiner finds that Matsuyama
2 The Examiner additionally determines that “claim 1 is a product-by­
process claim because the claim recited the direction where the removable
connector and circuit board can be inserted.” Answer 6; see also Advisory
Action 112. A product-by-process claim “is one in which the product is
defined at least in part in terms of the method or process by which it is
made.” Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 158
n. (1989). As the “can be inserted” limitations do not define the claimed
drive, we do not adopt the Examiner’s determination that they are product-
by-process limitations.
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teaches that the removable connector and the circuit board can be inserted
into opening 42c or 42d. This finding is consistent with Matsuyama’s
teaching that the circuit board or the connector may be installed through
either opening. Matsuyama 8:21—32.
Accordingly, Appellant has not shown reversible error in the
Examiner’s finding that Matsuyama teaches a connector having a portion
that “can be inserted along a first direction into the housing opening (8)” and
a circuit board that “can be inserted into the housing (6) through the housing
opening (8) along the first direction.”
Appellant additionally argues that Matsuyama fails to teach the
“contacting pads” of claim 1. Appeal Br. 10—11. Appellant asserts that the
connection terminals of Matsuyama differ from the claimed contacting pads.
Id. Appellant, however, fails to offer any construction of the term
“contacting pads” or to adequately specify how the terminals of Matsuyama
differ from the pads of the claims. Patent Office rules require that an appeal
brief include the “arguments of appellant with respect to each ground of
rejection, and the basis therefor, with citations of the statutes, regulations,
authorities, and parts of the Record relied on. The arguments shall explain
why the examiner erred as to each ground of rejection contested by
appellant.” 37 CFR § 41.37(c)(iv). Accordingly, Appellant’s argument fails
to comply with Patent Office rules and will not be considered.
In view of the foregoing, Appellant has not shown error in the
rejections of claims 1, 5, 8, 10, 14, and 19.
Rejections 3—6. The Examiner rejected claims 2, 3, and 16 as
obvious over Matsuyama in view of Huck. Final Act. 6—8 17. The
Examiner additionally rejected claim 4 as obvious over Matsuyama. Id. at
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8—9 1 8. The Examiner additionally rejected claim 6 as obvious over
Matsuyama in view of Huck and further in view of Hulsmann. Id. at 9—10
9. The Examiner additionally rejected claim 7 as obvious over Matsuyama
in view of Hager. Id. at 10-11110. With regard to each of the foregoing
rejections, Appellant asserts error on the same bases as with regard to claim
1. Appeal Br. 11. As we find Appellant’s argument regarding claim 1 not to
be persuasive, we similarly find that Appellant has not shown error in the
rejection of claims 2, 3, 4, 6, 7 and 16.
Rejection 7. The Examiner rejected claims 12, 13, and 20 as obvious
over Matsuyama in view of Weber. Final Act. 12—14 111. Claim 12
requires “a connector (7) with protruding spring contacts.” Appeal Br. 19
(Claims App.). The Examiner finds that this feature is taught by Weber.
Final Act. 12. Appellant does not address the Examiner’s findings regarding
Weber in the Appeal Brief. Appeal Br. 12—13. Accordingly, the rejection of
claim 12 has not been shown to be in error.
Claim 13 is to a method for assembling an adjusting drive requiring
“inserting a circuit board (4) into the housing opening (8) along a first
direction” and “inserting a portion of the connector (7) into the assembled
adjusting device (1) along the first direction into the housing opening (8) to
directly contact the contacting pads (9).” Appeal Br. 20 (Claims App.).
The scope of claim 13 differs from that of claim 1 as claim 13 recites
a method that includes steps of “inserting” while claim 1 recites an apparatus
having an opening into which certain elements “can be inserted.”
Matsuyama teaches that either the circuit board or connector may be
inserted in either of two openings, but does not teach insertion of both into
the same opening. Matsuyama 8:14—32. Accordingly, we do not adopt the
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Examiner’s finding that Matsuyama teaches inserting both the circuit board
and the connector into the housing opening.
Claim 13 further requires that “the contacting pads (9) are designed
for direct contact with spring contacts of a connector (7).” Appeal Br. at 20
(Claims App.). The Examiner finds that this limitation is taught by Weber.
Id. at 14. In response, Appellant states only that “Weber fails to cure the
deficiencies of Matsuyama.” Id. at 13, 14. This is insufficient to overcome
the Examiner’s finding that Weber teaches the limitation at issue. 37 CFR
§41.37(c)(iv).
Accordingly, we sustain the rejection of claim 12 but do not sustain
the rejections of claims 13 and 20 (which depends from claim 13).
Rejections 8 and 9. The Examiner rejected claim 15 as obvious over
Matsuyama in view of Huck. Final Act. 14—15 112. The Examiner
additionally rejected claim 17 as obvious over Matsuyama in view of Ursel.
Appeal Br. 15—17 113. Claims 15 and 17 both depend from claim 1.
With regard to both of the foregoing rejections, Appellant asserts error
on the same bases as with regard to claim 1. Appeal Br. 14—15. As we find
Appellant’s argument regarding claim 1 not to be persuasive, we also find
that the rejections of claims 15 and 17 have not been shown to be erroneous.
CONCLUSION
The rejections of claims 1—8, 10, 12, 14—17, and 19 are affirmed. The
rejections of claims 13 and 20 are reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
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AFFIRMED-IN-PART
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