Ex Parte Krautzig et al

Patent Trial and Appeal Board

Jun 25, 2013

11277781 (P.T.A.B. Jun. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JOACHIM KRAUTZIG and MLADEN MATAN
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Appeal 2011-003632
Application 11/277,781
Technology Center 3700
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Before: LINDA E. HORNER, CHARLES N. GREENHUT, and
BARRY L. GROSSMAN, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-003632
Application 11/277,781
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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
5, 8, 9, 11, 12, and 14-17. App. Br. 3. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

The claims are directed to a machine housing. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A housing for a machine, the housing comprising:
a first housing shell and a second housing shell, the first
housing shell bearing against the second housing shell along a
parting plane; and
at least one bridge in the region of the parting plane, the
at least one bridge extending transversely with respect to the
parting plane and including a first bridge portion and a second
bridge portion, the first bridge portion firmly connected on one
side of the parting plane to the first housing shell and the
second bridge portion firmly connected on the other side of the
parting plane to the second housing shell;
wherein the first and second housing shells and the at
least one bridge are configured and arranged to form an at least
approximately constant mass distribution in the region of the
parting plane.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Willis
Dusevoir
Brennan
US 2,276,603
US 2,311,434
US 6,506,018
Mar. 17, 1942
Feb. 16, 1943
Jan. 14, 2003
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REJECTIONS
Claims 2, 4 and 8 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
Ans. 4.
Claims 1-5, 8, 9, 11, 12, 14 and 15, are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Brennan and Willis. Ans. 5.
Claims 16 and 17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brennan, Willis and Dusevoir. Ans. 6.

OPINION
The rejection under 35 U.S.C. § 112, second paragraph
The Examiner contends that claims 2, 4, and 8 are indefinite because
for each claim “it is unclear as to whether the claim requires any, all, some,
one or none of the claim limitations in addition to the ‘housing of claim 1.’”
Ans. 4-5. We find the scope of the claims to be clear. Each of claims 2, 4,
and 8 calls for the housing to include at least one of the alternative
limitations recited therein. App. Br. 18.
The Examiner also contends that claims 2, 4, and 8 are indefinite
because the Markush-type grouping used in the claims is improper. The
Examiner draws this conclusion because the elements recited are not
“alternatives,” in that they are not alternatively usable in a functional or
structural sense. Ans. 4-5 (citing MPEP1 § 2173.05(h) entitled “Alternative

1 “While the MPEP does not have the force of law, it is entitled to judicial
notice as an official interpretation of statutes or regulations as long as it is
Appeal 2011-003632
Application 11/277,781
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Limitations.”) MPEP § 2173.05(h) states that “the phrase ‘Markush claim’
means any claim that recites a list of alternatively useable species regardless
of format.” (emphasis added). MPEP § 2173.05(h) is a subchapter of MPEP
§ 2173 which involves the 35 U.S.C. § 112, second paragraph, requirement
of “particularly pointing out and distinctly claiming the subject matter which
the applicant regards as his invention.” This section instructs examiners that,
while a Markush claim that encompasses a large number of alternative
species is not necessarily indefinite, “[i]n certain circumstances, however, a
Markush group may be so expansive that persons skilled in the art cannot
determine the metes and bounds of the claimed invention” such as due to
inability of one skilled in the art to envision all of the members of the
Markush group. Id. This section provides another example in which a claim
may be found to be indefinite under certain circumstances due to the
multiple inclusions of one or more elements in a claim. Id. We do not
understand the Examiner’s determination of indefiniteness to be based on
either of these examples. Rather, we understand the Examiner’s position to
be that, since Appellants’ alternative claim limitations do not belong to an
art-recognized class, a rejection under 35 U.S.C. § 112, second paragraph, is
warranted. Appellants, on the other hand, assert that since the recited
members of the claim are clearly presented as “alternatives” according to the
language of the claim, in that only one element of the group will suffice to
meet the entire limitation, the metes and bounds of the claim are clear. App.
Br. 18-19.
We are mindful that there is a body of case law that can be traced
back to shortly after the decision in Ex parte Markush, 1925 CD 126

not in conflict therewith.” Molins PLC v. Textron, Inc., 48 F.3d 1172, 1180
n.10 (Fed. Cir. 1995).
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(Comm’r. Pat. 1924) that supports the position that a Markush grouping may
be improper if the recited elements do not exhibit “unity of invention,” do
not have a “community of properties,” or are “repugnant to the principles of
scientific classification.” See In re Harnisch, 631 F.2d 716 (CCPA 1980)
(reversing a rejection of claims under 37 C.F.R. § 1.196(b) as being drawn to
“improper Markush groups”); In re Swenson, 132 F.2d 336 (CCPA 1942)
(affirming a rejection2 of claims as containing improper Markush groups).
Neither of these cases, however, involved a rejection of the claims under 35
U.S.C. § 112, second paragraph3.
The predecessor court to our reviewing court reversed a rejection of
claims under 35 U.S.C. § 112, second paragraph, on the basis that the claim
limitations “‘lacked the ‘requirements of proper Markush formulation,’ these
‘requirements’ being that ‘the whole compounds [must] enjoy a recognized
community of physical or chemical characteristics not repugnant to scientific
classification coupled with utility.’” In re Wolfrum, 486 F.2d 588, 590
(CCPA 1973). The court agreed with the Appellants that
the second paragraph of 35 U.S.C. § 112 merely states that the
specification shall conclude with one or more claims “which
clearly and distinctly describe the invention which the applicant
believes he invented” and provides no authority for rejecting a
claim on the basis of an “arbitrary” Patent Office determination
that the claim contains a plurality of inventions.
Id. at 591. The court concluded that

2 Between the Supreme Court decision in Steinmetz v. Allen, 192 U.S. 543,
in 1904 and January 1, 1953, the effective date of the 1952 Patent Act,
restriction requirements were treated as “rejections.” See In re Hengehold,
440 F. 2d 1395, 1398-1404 (CCPA 1971).
3 See e.g., MPEP § 803.02; See also Ex parte Eagle, 1870 CD 137; and Ex
parte Cook, 1890 CD 81, 82 (discussing the “alternative form” issue in Ex
parte Markush); In re Watkinson, 900 F.2d 230 (Fed. Cir. 1990).
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a determination by the Patent Office that earlier, separate claims
encompass a “plurality of different inventions” cannot serve,
under § 112, as the basis for a rejection of a later combined
claim. An applicant is free under that provision to set the metes
and bounds of “his invention” as he sees them.
Id.
Thus, even if Markush groupings, are not “alternatives” in the sense
that they do not satisfy the requirements of “unity . . .,” “community . . .,”
and “classification . . .,” as discussed above, so long as such groupings do
not render the metes and bounds of the claims unclear, we are unaware of
any reason that the failure to satisfy these tests would render the claims at
issue noncompliant with the requirements now set forth in 35 U.S.C. § 112,
second paragraph. See In re Wolfrum, supra. Our holding should be
interpreted narrowly. We express no opinion as to the correctness of any
conclusion that failing to satisfy the aforementioned test renders the
application not in compliance with any other applicable law or rule. Such
issues are not before us for review.

The prior-art rejections
Appellant argues the claims according to the following groupings: 1-
5, 8, 9, 11, 12, and 15 (App. Br. 20-22); 14 (App. Br. 22-23); and 16 and 17
(App. Br. 24-25). We select claims 1, 14 and 16, respectively, as
representative. 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner correctly found that Brennan discloses the basic
housing claimed, but without the “bridge.” Ans. 5-6. We agree with the
Examiner that Brennan exhibits an “approximately constant mass
distribution in the region of the parting plane” (at 40, 42) as required by
claim 1. Contra App. Br. 20-22. We also agree with the Examiner that
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Brennan discloses “a cylindrical outer contour” as required by claim 14.
Contra App. Br. 22-23. We do not believe the Examiner’s proposed
modification with Willis’s jointing technique involving jaws or clamps h,
would destroy either of these features in Brennan. Contra App. Br. 20-23. It
is well-established that a determination of obviousness based on teachings
from multiple references does not require an actual, physical substitution of
elements. In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012). Willis’s
jointing technique could be employed as an alternative to Brennan’s bolting
technique without adopting the particular mass distribution or casing shape
of Willis, and preserving that of Brennan.
Appellants’ argument concerning the admitted prior art of Brennan
seems to be premised on an incorrect reading of Brennan. Ans. 12. Both
Brennan and Willis seek to depart from Brennan’s admitted prior art which
relies on welded flanges. Brennan col. 1, ll. 40-44; Willis 1, col. 1, ll. 16-23.
We, like the Examiner, find nothing in Brennan leading away from Willis’s
jointing technique.
Regarding claim 16, we also agree with the Examiner that the skilled
artisan would not regard Dusevoir’s serration technique (fig. 4; p. 2, col. 1,
ll. 5-18, col. 2, ll. 66-73) as having an applicability for alignment that is
limited only for use with the specific surfaces on which Dusevoir applies it.
Ans. 16.
While we believe we have succinctly summarized hereinabove
Appellants’ arguments and the Examiner’s response thereto, we adopt the
entirety of the Examiner’s response to Appellants’ arguments concerning the
prior-art rejections (Ans. 10-17) as our own. See In re Paulsen, 30 F.3d
1475, 1478 n. 6 (Fed. Cir.1994).
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DECISION
The Examiner’s rejection under 35 U.S.C. § 112 is reversed. The
Examiner’s prior art rejections are affirmed.

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

mls