Ex Parte Klann

Patent Trial and Appeal Board

Sep 26, 2013

11225611 (P.T.A.B. Sep. 26, 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.
11/225,611 09/13/2005 Horst Klann 71919 3581
23872 7590 09/27/2013
MCGLEW & TUTTLE, PC
P.O. BOX 9227
SCARBOROUGH STATION
SCARBOROUGH, NY 10510-9227
EXAMINER
WILSON, LEE D
ART UNIT PAPER NUMBER
3727
MAIL DATE DELIVERY MODE
09/27/2013 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 HORST KLANN
____________

Appeal 2011-000371
Application 11/225,611
Technology Center 3700
____________

Before GAY ANN SPAHN, MICHAEL L. HOELTER and
ANNETTE R. REIMERS, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-000371
Application 11/225,611

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STATEMENT OF THE CASE
Horst Klann (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner’s decision to reject under 35 U.S.C. § 103(a): (1) claims 1, 3 and
5-9 as unpatentable over Klann1,2 (DE 29915947 U1, pub. Jan. 20, 2000),
Johnson (US 2,310,639, iss. Feb. 9, 1943) and Gaillard (US 1,123,513, iss.
Jan. 5, 1915); (2) claim 2 as unpatentable over Klann, Johnson, Gaillard and
Omori (US 4,744,119, iss. May 17, 1988); and (3) claim 4 as unpatentable
over Klann, Johnson, Gaillard and Ryan (US 5,400,628, iss. Mar. 28, 1995).
Claims 10-18 have been withdrawn. We have jurisdiction under 35 U.S.C.
§ 6(b). We REVERSE.

THE INVENTION
Appellant’s invention relates to “a device for the assembly of a motor
vehicle clutch.” Spec. 1, para. [0002]; fig. 8.
Claim 1, the sole independent claim, is representative of the subject
matter on appeal and is reproduced below:
1. A device for the assembly of a motor vehicle
clutch, the device comprising:
a pretensioning means for tensioning a plate spring
arranged in a clutch cover of the motor vehicle clutch together
with a pressure plate and by which the pressure plate is pressed
against a carrier plate of the clutch during operation, wherein
the clutch cover is mounted stationarily during operation on a
driven plate of the clutch by means of a plurality of individua1

1 We derive our understanding of this reference from an English translation
by FLS, Inc., in May 2010, which is available in the electronic file wrapper
of the underlying application. All references to the text of Klann are to
portions of the translation.
2 As pointed out by Appellant, the Examiner incorrectly cited Klann as DE
29925947 instead of DE 29915947. Br. 7; Ans. 3.
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Application 11/225,611

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mounting bolts engaged in mounted threads of the driven plate
and mounting holes of the clutch cover and wherein the
pretensioning means has a base plate with a central pressing
screw, which is axially adjustable against the plate spring
centrally through the base plate for pretensioning the plate
spring, said central pressing screw being provided with a
central through hole;
a centering tool which can be arranged in said central
through hole for the centered preassemb1y of the carrier plate;
centering bolts for replacement with the individual
mounting bolts of the clutch cover, said centering bolts being
screwed stationarily into the mounted threads of the driven
plate through the mounting holes of the clutch cover while
allowing the clutch cover to be guided axially movably such
that the clutch cover is not screwed stationarily against the
driven plate by the centering bolts, each one of said centering
bolts being received in one of at least three circumferentially
distributed adjusting slots defined by said base plate of said
pretensioning means with a small clearance, said adjusting slots
extending radially in relation to said pressing screw; and
tightening nuts, said base plate being fixed on said
centering bolts in an axial direction by means of said tightening
nuts.

ANALYSIS
Obviousness over Klann, Johnson and Gaillard - Claims 1, 3 and 5-9
Independent claim 1 recites a device including centering bolts, “[the]
centering bolts being screwed stationarily into the mounted threads of [a]
driven plate.” Br., Clms. App’x. The Examiner found that Klann discloses
the limitations of claim 1. Ans. 3-4. Without stating what the Klann
reference lacks, the Examiner cited Johnson “[for teaching] that a threaded
centering bolt is known and that it does not have to be a hook [as disclosed
in Klann].” Ans. at 7; see also id. at 3-4. The Examiner concluded that
“[o]ne of ordinary skill in the art would have been motivated to [replace the
Appeal 2011-000371
Application 11/225,611

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hooks of Klann with the centering bolts of Johnson] in order to provide a
stable support for the base in situations where the workpiece [clutch cover
plate] has existing threaded holes.” Ans. 4. The Examiner further turned to
Gaillard for “teach[ing] that centering bolts may be attached to a base using
tightening nuts.” Id. The Examiner further concluded that “[o]ne of
ordinary skill in the art would have been motivated to [add tightening nuts to
the device of Klann as modified by Johnson] in order to enable the base to
[be] conveniently attached to the support legs at a desired location.” Id.
Appellant contends that Klann, Johnson and Gaillard fail to teach or
suggest “any similar structure with bolts screwed stationarily into the
mounted threads of the driven plate.” Br. 13; see also id. at 21. Appellant
further contends that “the rejection fully misses the requirement that the
bolts are screwed stationarily into the mounted threads of [a] driven plate . . .
. [a] driven plate is not even shown in KLANN. There is clearly no
suggestion to provide the clamping/centering features as claimed.” Br. 15.
We agree.
At the outset, we acknowledge the Examiner’s position that “[t]he
patentability of the tool is based on the structure of the tool and not what the
tool is being used on [i.e., the workpiece/clutch cover plate]” (see Ans. 5-6);
however, we note that claim 1 requires a device (tool) with centering bolts
structurally “being screwed stationarily into the mounted threads of [a]
driven plate.” Br., Clms. App’x. The Examiner has not identified what
structure in Klann the Examiner regards as the claimed “driven plate.” As
discussed above, the Examiner relied on Johnson and Gaillard merely for the
disclosure of centering bolts and tightening nuts, respectively. Appellant
contends that there is no “driven plate” present in Klann. Br. 15. Since
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claim 1 structurally requires that the device’s centering bolts be screwed
stationarily into the mounted threads of a driven plate and since the
Examiner has not made apparent what structure in Klann the Examiner
regards as the claimed “driven plate,” we are constrained to agree with
Appellant. “A rejection based on section 103 clearly must rest on a factual
basis. . . .” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The Patent
Office has the initial duty of supplying the factual basis for its rejection. It
may not . . . resort to speculation, unfounded assumptions or hindsight
reconstruction to supply deficiencies in its factual basis.” Id.
Accordingly, for the foregoing reasons, the Examiner’s rejection of
independent claim 1 and its respective dependent claims 3 and 5-9 as
unpatentable over Klann, Johnson and Gaillard cannot be sustained.

Obviousness over Klann, Johnson, Gaillard and either Omori or Ryan -
Claims 2 and 4
The Examiner’s rejection of claim 2 over Klann, Johnson, Gaillard
and Omori (see Ans. 5) and of claim 4 over Klann, Johnson, Gaillard and
Ryan (see Ans. 5) is based on the same unsupported findings discussed
above with respect to independent claim 1. For the same reasons, we do not
sustain the Examiner’s rejection of claim 2 over Klann, Johnson, Gaillard
and Omori and of claim 4 over Klann, Johnson, Gaillard and Ryan.

DECISION
We REVERSE the decision of the Examiner to reject claims 1-9.

REVERSED
Appeal 2011-000371
Application 11/225,611

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