Ex Parte Jonsson

Patent Trial and Appeal Board

Oct 1, 2013

10502017 (P.T.A.B. Oct. 1, 2013)

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.
10/502,017 12/17/2004 Anders Jonsson PAH-102 8955
7590 10/01/2013
Mark P. Stone
400 Columbus Avenue
Valhalla, NY 10595
EXAMINER
TIGHE, BRENDAN P
ART UNIT PAPER NUMBER
3652
MAIL DATE DELIVERY MODE
10/01/2013 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 ANDERS JONSSON
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Appeal 2011-008351
Application 10/502,017
Technology Center 3600
____________

Before STEFAN STAICOVICI, MICHELLE R. OSINSKI, and
ADAM V. FLOYD, Administrative Patent Judges.

FLOYD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-20. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
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Application 10/502,017

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CLAIMED SUBJECT MATTER
Claims 1 and 9 are the independent claims on appeal. Claim 1 is
illustrative of the subject matter on appeal, and recites:
1. A rotator for a jib-carried tool including tree working units,
wherein the rotator (10) is hydraulically driven and includes a
stator (20) and a rotor (30), and wherein said rotator (10) is
connected to a tip (2) of the jib or arm (3) via a link
arrangement and to said tool (1), characterized in that the
rotator (10) or its surroundings includes means (70, 71) for
determining the relative position of rotation between the rotor
(30) and the stator (20) and limiting the extent of rotation of the
rotor relative to the stator based upon said determined relative
position for limiting twisting of attached hoses and/or cables
and to enhance automatisation [sic—automation].

REFERENCES
Hansson
Dessaux
US 4,989,652
US 5,071,184
Feb. 5, 1991
Dec. 10, 1991
Strauss US 5,988,126 Nov. 23, 1999

REJECTIONS
Claims 1 and 9 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Dessaux and Hansson.
Claims 2-8 and 10-20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Dessaux, Hansson, and Strauss.

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ANALYSIS
Claims 1-8 and 10-20
Appellant argues that Dessaux does not disclose “means (70, 71) for
determining the relative position of rotation between the rotor (30) and the
stator (20) and limiting the extent of rotation of the rotor relative to the stator
based upon said determined relative position for limiting twisting of attached
hoses and/or cables and to enhance automatisation [sic—automation]” as
recited by claim 1. App. Br. 7-8. The Examiner determines that the claim
limitation is a means-plus-function element and that the corresponding
structure disclosed is a pulse emitter 70 and grooves 71. Ans. 4. We do not
entirely agree with the Examiner’s construction because there are two
recited functions—“for determining the relative position of rotation between
the rotor (30) and the stator (20),” and “[for] limiting the extent of rotation
of the rotor relative to the stator based upon said determined relative position
for limiting twisting of attached hoses and/or cables,” as well as a statement
of purpose—“to enhance automatisation [sic—automation].” We agree with
the Examiner that the first function is carried out by the emitter 70 and
grooves 71. However, the second function appears to require a computer
unit or processor, which is not illustrated, and presumably some other
structure(s) attached to the processor which limits the rotation. Spec. p. 3, l.
34–p. 4, l. 18. As such, the scope of claim 1 and its dependent claims 2-8
and 10-20 is unclear, as the Specification does not forth the structure which
corresponds to the means for “limiting the extent of rotation of the rotor
relative to the stator based upon said determined relative position for
limiting twisting of attached hoses and/or cables.”
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Hence, the recited limitation is indefinite because Appellant’s
disclosure lacks sufficient precision to permit one endeavoring to practice
the invention to determine the metes and bounds thereof. “If no reasonably
definite meaning can be ascribed to certain terms in the claim, the subject
matter does not become obvious—the claim becomes indefinite.” In re
Wilson, 424 F.2d 1382, 1385 (CCPA 1970). As this is the limitation
Appellant argues is missing from Dessaux, the identity of the corresponding
structure is critical to our analysis. A rejection should not be based on
“speculations and assumptions.” In re Steele, 305 F.2d 859, 862 (CCPA
1962). Here, for the reasons explained supra in addressing the
indefiniteness of claims 1-8 and 10-20, “our analysis of the claims leaves us
in a quandary as to what in fact is covered by them.” Steele, 305 F.2d at
862. Speculations and assumptions would be required to decide the meaning
of the terms employed in the claims and the scope of the claims. Therefore,
for the foregoing reasons, we conclude that the indefiniteness of claims 1-8
and 10-20 prevents us from reaching the issue of obviousness.
Consequently, pursuant to our authority under 37 C.F.R. § 41.50(b),
we enter a new ground of rejection of claims 1-8 and 10-20 under 35 U.S.C
§ 112 as being indefinite, and we reverse pro forma the obviousness
rejections of claims 1-8 and 10-20. We emphasize that our reversal is based
on procedure rather than on the merits of the obviousness rejections. The
reversal does not mean that we consider the claims to be patentable as
presently drawn.
Claim 9
With respect to claim 9, Appellant argues that Dessaux fails to
disclose,
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limiting the angle through which the rotator (10) rotates in
either direction from a starting position based upon the
determined relative position of the rotor and the stator for
limiting the extent to which pressure medium connection hoses
present are able to twist and/or to limit the extent to which
connection cables (7) including cables for signals, data
transmission, and electric power supply, are able to twist.
App. Br. 6-8; Reply Br. 2-3. The Examiner finds that the usual operation of
Dessaux would necessarily perform the method. Ans. 5. We agree.
Dessaux was aware that over rotation caused problematic twisting in cables.
Dessaux, col. 1, ll. 41-47. Thus, because the equipment operator in Dessaux
would be expected in normal operation to limit the angle of rotation to limit
the amount of twist on the cables, this would satisfy the limitation of claim
9. Accordingly, the rejection of claim 9 under 35 U.S.C. § 103(a) over
Dessaux and Hansson is sustained.

DECISION
We REVERSE the rejection of claim 1 under 35 U.S.C. § 103(a) as
unpatentable over Dessaux and Hansson.
We REVERSE the rejection of claims 2-8 and 10-20 under 35 U.S.C.
§ 103(a) as unpatentable over Dessaux, Hansson, and Strauss.
We AFFIRM the rejection of claim 9 under 35 U.S.C. § 103(a) as
unpatentable over Dessaux and Hansson.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection of claims 1-8 and 10-20 under 35 U.S.C. § 112, second
paragraph, for being indefinite.
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This decision contains new grounds of rejection under 37 C.F.R.
§ 41.50(b) (2008) which provides “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.” 37 C.F.R.
§ 41.50(b) provides that Appellant, WITHIN TWO MONTHS FROM THE
DATE OF THE 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 rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, 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 rejection, including any timely request for rehearing thereof.

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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))

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