Ex Parte Ludwig

Board of Patent Appeals and Interferences

Jan 11, 2005

09758513 (B.P.A.I. Jan. 11, 2005)

1 Claims 1, 6 through 8 and 39 have been amended subsequent
to final rejection.
The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board
UNITED STATES PATENT AND TRADEMARK OFFICE
______________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
______________________
Ex parte RAINER LUDWIG
______________________
Appeal No. 2005-0187
Application No. 09/758,513
______________________
ON BRIEF
______________________
Before MCQUADE, NASE, and BAHR, Administrative Patent Judges.
MCQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Rainer Ludwig originally took this appeal from the final
rejection of claims 1, 3 through 10 and 39.1 As the examiner has
since withdrawn all rejections of claims 6 through 9, the appeal
as to these claims is hereby dismissed, leaving for review the
standing rejection of claims 1, 3 through 5, 10 and 39. Claims 6
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through 9 and claims 11 through 38, the only other claims pending
in the application, stand objected to as depending from a
rejected base claim.
THE INVENTION
The invention relates to a monitoring device designed for
use in industrial environments, e.g., with a machine tool, where
it may be subject to potentially harmful working fluids and/or
waste materials. Representative claim 1 reads as follows:
1. A monitoring device for checking for a predefined
position of a body or for checking for the presence
of a body, comprising a pivotal checking element,
a motor for driving the checking element, a housing
for accommodating the motor, and a seal which is
disposed exteriorly of the housing between the
checking element and the housing and which extends
around a shaft by means of which the checking
element is driven, wherein the seal abuts on the
checking element and abuts on the housing.
THE REJECTION
Claims 1, 3 through 5, 10 and 39 stand rejected under 35
U.S.C. § 102(e) as being anticipated by U.S. Patent No. 6,130,516
to Huber et al. (Huber).
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2 We consider the appealed rejection to be made under 35
U.S.C. § 102(e) rather than under 35 U.S.C. § 102(a) as stated by
the examiner. The instant application has a U.S. filing date of
January 11, 2001 and a unchallenged claim made pursuant to 35
U.S.C. § 119 for a foreign priority date of January 17, 2000,
while the Huber patent has an issue date of October 10, 2000. On
this record, Huber is prior art with respect to the instant
application under § 102(e), but not under § 102(a). This change
in the statutory basis of the rejection does not prejudice the
appellant to any meaningful extent. Also, the statement of the
appealed rejection in the answer does not include claim 10. The
remarks accompanying the rejection indicate, however, that the
omission was inadvertent.
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Attention is directed to the main and reply briefs (filed
October 6, 2003 and February 6, 2004) and the answer (mailed
December 11, 2003) for the respective positions of the appellant
and the examiner regarding the merits of this rejection.2
DISCUSSION
Huber discloses a monitoring device which is described in
the reference as follows:
[t]he device comprises a scanning head 10 and a
controller 12. The scanning head 10 is attached
directly to the object to be monitored or to the
process area to be monitored, for example, next to the
tool to be monitored, e.g. a drill, of a machine tool.
The controller 12 can be disposed at a distance in
order to be protected, for example, from the assault of
chips, coolant and lubricant. The scanning head 10 and
the controller 12 are connected together via a cable
14.
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The scanning head 10 shown in FIG. 1 exhibits a
cylindrical housing 16, which is sealed against chips,
coolant and lubricant and similar disturbing
influences. The cable 14 for connecting to the
controller 12 is attached to the scanning head 10 by
means of a screwable connector 18. In the housing 16
there is an electric motor 20, which is designed as a
d.c. motor. The electric motor 20 is fed so as to
reverse the polarity by means of a motor driver 22,
disposed in the controller 12, via the cable 14. The
electric motor 20 drives by way of a precision tooth
gearing 24 a shaft 26, which is run coaxially on the
face side out of the housing 16. A double lip seal 28
seals the passage of the shaft 26 through the face-
sided cover of the housing 16 against chips and
coolant. O-ring seals 30 seal the respective face-
sided cover[s] of the cylindrical housing 16. A pin
holder 32, into which a feeler pin 34 can be clamped,
is clamped via a setscrew 36 on the stump of the shaft
26 that projects beyond the housing 16. The feeler pin
34 that is clamped into the pin holder 32 protrudes
radially from the shaft 26 [column 2, line 46, through
column 3, line 5].
Anticipation is established only when a single prior art
reference discloses, expressly or under principles of inherency,
each and every element of a claimed invention. RCA Corp. v.
Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ
385, 388 (Fed. Cir. 1984). In other words, there must be no
difference between the claimed invention and the reference
disclosure, as viewed by a person of ordinary skill in the field
of the invention. Scripps Clinic & Research Found. v. Genentech
Inc., 927 F.2d 1565, 1576, 18 USPQ2d 1001, 1010 (Fed. Cir. 1991).
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As framed by the appellant, the dispositive issue with
respect to the rejection of independent claims 1 and 39 is
whether Huber meets the limitations in these claims relating to
the seal. Claim 1 requires a seal “which is disposed exteriorly
of the housing between the checking element and the housing and
which extends around a shaft by means of which the checking
element is driven, wherein the seal abuts on the checking element
and abuts on the housing.” Similarly, claim 39 recites a
monitoring device comprising a seal “which is disposed exteriorly
of the housing between the checking element and the end face of
the housing and which extends around said shaft, wherein the seal
abuts on the checking element and abuts on the end face of the
housing.”
The examiner considers these limitations to be met by the
face-sided cover of Huber’s housing 16 through which the shaft 26
passes. Figure 1 of the reference shows this cover, which is not
denoted by a reference numeral, as being screwed into the bore of
the housing 16 and as having a flange disposed between the end of
the housing 16 and the pin holder 32.
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The examiner’s position here is unsound for at least two
reasons. To begin with, a person of ordinary skill in the art
would not view Huber’s face-sided cover to be a seal. The
presence of the double lip seal 28 between the cover and the
shaft 26 and the 0-ring seal 30 between the cover and the housing
16 belies any notion that the cover itself is a seal. Moreover,
the fair teachings of Huber, and more particularly the
perspective view of the scanning head 10 shown in Figure 1, do
not support the examiner’s determination that the cover abuts on
the checking element (pin holder 32). Indeed, the appellant’s
explanation (see page 3 in the reply brief) as to why the cover
does not abut on the checking element, while itself lacking
support in the reference, is far more compelling.

Thus, the examiner’s finding that the subject matter recited
in independent claims 1 and 39 is anticipated by Huber is not
well taken. Accordingly, we shall not sustain the standing 35
U.S.C. § 102(e) rejection of claims 1 and 39, and dependent
claims 3 through 5 and 10, as being anticipated by Huber.
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SUMMARY
The decision of the examiner to reject claims 1, 3 through
5, 10 and 39 is reversed.
REVERSED
JOHN P. MCQUADE )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
)
JEFFREY V. NASE ) APPEALS AND
Administrative Patent Judge )
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
JPM/dpv
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Edward J. Timmer
Walnut Woods Center
5955 W. Main Street
Kalamazoo, MI 49009