Ex Parte Junig et al

Patent Trial and Appeal Board

May 28, 2014

11645151 (P.T.A.B. May. 28, 2014)

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.
11/645,151 12/23/2006 Marcus Junig P050281/10US 3386
20676 7590 05/29/2014
ALFRED J MANGELS
4729 CORNELL ROAD
CINCINNATI, OH 452412433
EXAMINER
BOWES, STEPHEN M
ART UNIT PAPER NUMBER
3657
MAIL DATE DELIVERY MODE
05/29/2014 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 MARCUS JUNIG, ANTON SIMONOV, OLGA ISPOLATOVA,
MICHAEL PICHURA, MARTIN VORNEHM, and AUREL VIETORIS
____________

Appeal 2012-004786
Application 11/645,151
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/645,151

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STATEMENT OF THE CASE
Marcus Junig et al. (“Appellants”) appeal under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1-4, 6, and 8-13. We have
jurisdiction under 35 U.S.C. § 6(b).
Claimed Subject Matter
Claims 1, 9, 10, and 11 are the independent claims on appeal. Claim 1
is illustrative of the claimed subject matter and is reproduced below.
1. A toothed plate-link chain comprising:
a plurality of plate sets composed of toothed plates
having teeth that extend in an inward direction of the chain as
viewed when the chain passes around a toothed wheel, at least
one guide plate positioned on two chain pins and in association
with a plate set containing toothed plates, wherein the toothed
plates include a front tooth and a rear tooth that is spaced from
the front tooth in the running direction of the chain, wherein the
guide plate is laterally adjacent to a longitudinally successive
pair of toothed plates and is longitudinally offset relative to
each of the longitudinally successive adjacent toothed plates in
the running direction of the chain, wherein the guide plate
includes at least one wing that extends transversely to the
longitudinal direction of the chain in the inward direction of the
chain and is laterally adjacent to a rear tooth of a laterally
adjacent toothed plate, and wherein in the longitudinal direction
of the chain when it is in a straight chain condition the guide
plate wing has a leading longitudinal end edge in the running
direction of the chain that extends longitudinally ahead of a
leading longitudinal end edge in the running direction of the
chain of the laterally adjacent rear tooth of the laterally adjacent
toothed plate of the associated plate set, so that as the chain
enters into engagement with the toothed wheel the guide plate
wing leading edge reaches a side of a tooth of the toothed wheel

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Application 11/645,151

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before the leading edge of the laterally adjacent rear tooth of the
laterally adjacent toothed plate reaches that tooth of the toothed
wheel, to provide leading edge tooth guidance for the chain as it
engages with the toothed wheel.
App. Br., Claims App’x A-1.
Reference
The Examiner relies upon the following prior art reference:
White US 5,445,570 Aug. 29, 1995

Rejection
Appellants seek review of the following rejection:
Claims 1-4, 6, and 8-13 are rejected under 35 U.S.C. § 102(b) as
anticipated by White.
SUMMARY OF DECISION
We AFFIRM.
OPINION
The Examiner finds that White discloses each and every element of
claims 1-4, 6, and 8-13. Ans. 4-10.
Claim 1
Appellants raise several arguments in response to the rejection. We
address each in turn.
First, Appellants contend that:
White’s Fig. 2 does not clearly and unambiguously teach one to
provide a guide plate wing leading edge extending ahead of a
leading longitudinal end edge, in the running direction of a
chain, of the laterally adjacent rear tooth of the laterally
adjacent toothed plate of the associated plate set of the chain.
Reply Br. 2; see also App. Br. 15.
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Appellants assert that, “without supporting disclosure in the reference, one
of only ordinary skill in the art would not be led to that conclusion without
having knowledge of the disclosure contained in the present application.”
App. Br. 15. In a similar vein, Appellants assert that, “without any verbal
description in the specification of the White reference, size inferences drawn
from drawing figures are unsupportable.” Id. at 15-16 (relying on
Hockerson-Halberstadt, Inc. v. Avia Group Int’l, Inc., 222 F.3d 951, 956
(Fed. Cir. 2000); see also Reply Br. 2-3.
The Examiner provided an annotated version of White’s Figure 2
(shown below) mapping the claim language to the embodiment shown. See
Ans. 6. In response to Appellants’ argument, the Examiner explains that
“[t]he various leading edges are defined relative to the chain running
direction. The chain of White is longitudinally symmetrical. It is only
possible for the rear tooth of the rear adjacent link plate to be longitudinally
behind the leading longitudinal end edge of the guide plate.” Id. at 10-11.
Further, the Examiner finds that White’s Figure 2 discloses this element of
the claims as shown in the Examiner’s annotated version of the figure, such
that “text support” is not required. Id.

The Examiner’s annotated version of White’s Figure 2 is reproduced above.
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While patent drawings not designated as being drawn to scale cannot
be relied upon to define precise proportions of elements if the specification
is completely silent on the issue, Hockerson-Halberstadt, 222 F.3d at 956,
that does not mean, “that things patent drawings show clearly are to be
disregarded.” In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972). A drawing
teaches all that it reasonably discloses and suggests to a person of ordinary
skill in the art. In re Aslanian, 590 F.2d 911, 914 (CCPA 1979).
The Examiner’s annotated version of White’s Figure 2 plainly shows
that the guide plate wing has “a leading longitudinal end edge in the running
direction of the chain that extends longitudinally ahead of a leading
longitudinal end edge in the running direction of the chain of the laterally
adjacent rear tooth of the laterally adjacent toothed plate of the associated
plate set” as recited in claim 1. App. Br., Claims App’x A-1. With the chain
running right to left, the portion the Examiner found to disclose the guide
plate front wing leading edge is well in front of the portion the Examiner
found to disclose the rear tooth leading longitudinal end edge of the toothed
plate, longitudinally along the running direction of the chain.1
Further, even if White’s Figure 2 is not drawn to scale, the Examiner
is not relying upon White’s Figure 2 to define precise proportions of
elements. Hockerson-Halberstadt, 222 F.3d at 956. Instead, White’s
Figure 2 discloses and suggests an appreciable gap in the longitudinal
running direction of the chain between the guide plate front wing leading
edge and the rear tooth leading longitudinal end edge. In re Aslanian,

1 Because we agree with the Examiner’s finding that White’s chain is
“longitudinally symmetrical,” the same sequence of edges applies even if the
chain running direction is reversed. Ans. 11; White, fig. 2.
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590 F.2d at 914. Thus, we are not persuaded that the Examiner erred by
relying upon White’s Figure 2 for what it reasonably discloses and suggests
to one of ordinary skill in the art even without a textual description of the
Figure and even if not drawn to scale.
Second, Appellants contend that White fails to disclose “leading edge
guidance.” App. Br. 16. Appellants assert that “[t]he leading edge guidance
feature as claimed in claim 1 amounts to functional language that serves to
distinguish it over the disclosure contained in the White reference.” Id.
Appellants contend that the White reference is configured for achieving
different functions than Appellants’ claimed invention. Id. at 17 (citing
White, col. 4, ll. 32-42).
In response to Appellants’ argument, the Examiner reiterates that
White’s chain discloses leading edge guidance as recited in claim 1.
Ans. 11. The Examiner concludes that the broadest reasonable interpretation
of the function described by the phrase “leading edge guidance” is that “the
guide plates serve to ensure contact between the inner link plates and the
sprocket.”2 Id. The Examiner finds that:
The guide links (20) serve to maintain the lateral alignment of
the chain on the sprockets (Col. 8, lines 13-14). By maintaining
the lateral orientation of the chain, the guide links ensure that
the leading edges of the inner links (50) are properly guided
into maintain[ing] torque-transmitting contact with the
sprockets (12, 14).
Id.

2 The Examiner explains that “[t]he only apparent definition of leading
guidance is found in paragraph [0003] of [Appellants’] [S]pecification.”
Ans. 11. Appellants do not challenge this finding by the Examiner. See
Reply Br. 1-4.
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In their Reply Brief, Appellants contend that “the White reference
also does not verbally disclose or even suggest the claimed function of
providing leading edge guidance for the chain as it[] engages with a toothed
wheel.” Reply Br. 2-3. Thus, Appellants assert that “[w]ithout any verbal
support in [White] for the claimed structural relationship and the claimed
function, one having ordinary skill in the art would not be led by [White] to
the claimed invention.” Id. at 3.
Appellants do not challenge the Examiner’s claim construction of the
phrase “leading edge guidance.” See generally Reply Br. White discloses
“a guide link for use in an endless power transmission chain having a
plurality of chain links.” White, col. 4, ll. 45-47. As shown in Figure 1,
silent chain 10 connects driving sprocket 12 with driven sprocket 14, and the
sprockets are mounted on shafts, such as an engine crankshaft or camshaft.
Id. at col. 7, ll. 27-33; fig. 1. White explains that “[i]n the silent chain
embodiments, the guide links maintain the lateral alignment of the chain on
the sprockets.” Id. at col. 8, ll. 13-14. Because the guide links ensure
contact between the chain and the sprockets by keeping the chain laterally
aligned on the sprockets, the Examiner’s finding that White discloses
“leading edge guidance” is supported by a preponderance of the evidence.3
Third, Appellants contend that White “does not include the scope of
disclosure that is necessary to enable one of only ordinary skill in the art to
practice the claimed invention based solely upon the disclosure contained in

3 White need not use the specific phrase “leading edge guidance” in order to
disclose that element of the claims. See In re May, 574 F.2d 1082, 1090
(CCPA 1978) (“A reference does not fail as an anticipation merely because
it does not contain a description of the subject matter of the appealed claim
in ipsissimis verbis.”).
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the White reference and without knowledge of the claimed invention.”
App. Br. 18. Appellants assert that “because [White] does not disclose each
of the claimed elements and functions as they are recited in claim 1, there is
not sufficient disclosure in that reference to enable one to arrive at the
claimed invention based upon the specification and drawings contained in
the reference.” Id. at 18-19.
Appellants’ argument is unpersuasive. First, as discussed supra,
Appellants have not shown that any of the Examiner’s findings is erroneous.
Thus, the Examiner established that White discloses each and every element
of claim 1. Additionally, Appellants provide no evidence or argument that
practicing the claimed invention in light of White’s disclosure would require
undue experimentation. See In re Wands, 858 F.2d 731, 737 (Fed. Cir.
1988) (“experimentation needed to practice the invention must not be undue
experimentation”).4
Accordingly, because Appellants’ arguments are not persuasive, we
sustain the rejection as applied to claim 1.
Claims 2-4, 6, and 8-13
Appellants include separate headings for each of claims 2-4, 6, and
8-13, but Appellants’ contentions with respect to each of these claims does
not raise a separate argument for patentability. With respect to claims 2-4,
6, 8, 12, and 13, Appellants’ assertions (see App. Br. 19-23) amount to no
more than mere recitation of the claim language and a naked assertion that

4 While Appellants have not challenged whether White itself is enabled, we
note that White is presumed enabled. See In re Antor Media Corp.,
689 F.3d 1282, 1287-88 (Fed. Cir. 2012) (“claimed and unclaimed materials
disclosed in a patent are presumptively enabling” (citing Amgen Inc. v.
Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003))).
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the elements are not disclosed by White. 37 C.F.R. § 41.37(c)(1)(vii);
In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art”). With respect
to claim 9, Appellants simply recite the claim language with no
accompanying argument. App. Br. 21. With respect to claims 10 and 11,
Appellants rely upon their arguments made with respect to claim 1. Thus,
Appellants do not raise separate arguments as to the patentability of claims
2-4, 6, and 8-13.
Accordingly, we sustain the rejection as applied to claims 2-4, 6, and
8-13.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1-4, 6, and
8-13.

AFFIRMED

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