Ex Parte Oesch et al

Patent Trial and Appeal Board

Mar 6, 2015

10592207 (P.T.A.B. Mar. 6, 2015)

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.
10/592,207 06/25/2008 Marc Oesch 10139/09202 2777
76960 7590 03/09/2015
Fay Kaplun & Marcin, LLP
150 Broadway, suite 702
New York, NY 10038
EXAMINER
AMIRI, NAHID
ART UNIT PAPER NUMBER
3679
MAIL DATE DELIVERY MODE
03/09/2015 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 MARC OESCH and
ANDREAS LANZ
____________

Appeal 2013-002330
Application 10/592,207
Technology Center 3600
____________

Before LINDA E. HORNER, MICHAEL L. HOELTER, and
ERIC C. JESCHKE, Administrative Patent Judges.

JESCHKE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 16–35. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to the mutual positioning of
longitudinal building components . . . .” Spec., Abstract. Independent claim
30, shown below with certain language in italics, is representative of the
claims on appeal:
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30. A clamp for securing longitudinal elements
comprising:
a substantially S-shaped clamp body
including three clamping arms defining two
diametrically opposed clamp openings for
accommodating the longitudinal building
elements, and
a borehole traversing the three clamping
arms along a first axis,
wherein elastic deformation of the clamp
body permits constriction and expansion of the
clamp openings.
Appeal Br. 23–24 (Claims App.) (emphasis added).

EVIDENCE RELIED ON BY THE EXAMINER
Roth US 2,651,026 Sept. 1, 1953
Riead US 4,426,805 Jan. 24, 1984
Babb US 4,526,023 July 2, 1985
Dobrovolny ’899 US 5,727,899 Mar. 17, 1998
Dobrovolny ’046 US 5,792,046 Aug. 11, 1998
Biller US 7,159,626 B2 Jan. 9, 2007

REJECTIONS ON APPEAL
1. Claim 30 is rejected under 35 U.S.C. § 102(b) as anticipated by
Roth.
2. Claims 31 and 32 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Roth and Biller.
3. Claim 33 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Roth and Babb.
4. Claim 34 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Roth and Dobrovolny ’899.
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5. Claims 16, 19–23, and 35 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Dobrovolny ’899 and Roth.
6. Claims 17 and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Dobrovolny ’899, Roth, and Biller.
7. Claim 24 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Dobrovolny ’899, Roth, and Babb.
8. Claims 16, 19, 21, 25, 27–29, and 35 are rejected under 35
U.S.C. § 103(a) as unpatentable over Dobrovolny ’046 and Roth.
9. Claim 26 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Dobrovolny ’046, Roth, and Riead.

ANALYSIS
Rejection 1 – The rejection of claim 30
under 35 U.S.C. § 102(b)
A. Appellants’ Positions
Appellants assert that Roth “does not disclose or suggest ‘three
clamping arms defining two diametrically opposed clamp openings,’ as
recited in claim 30.” Appeal Br. 5. According to Appellants, the phrase
“diametrically opposed” “requires that the [clamp] openings be aligned.” Id.
at 6. In support of this position, Appellants provide two definitions of the
term “diametric”: (1) “of, pertaining to, or along a diameter” and (2) “in
direct opposition; being at opposite extremes.” Id. (quoting Random House
Dictionary (Random House, Inc. 2012)). Appellants contend that, under
both definitions, claim 30 requires “that the [clamp] openings be aligned
with another, in particular, directly opposite to each other at end points of a
common diameter.” Appeal Br. 6. Appellants assert that bends 17a and 17b
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in Figure 1 of Roth have openings that cannot be diametrically opposed to
each other “due to the lateral separation.” Id. at 7.
In response to a statement in an Advisory Action in which the
Examiner allegedly “questions whether diametrically opposite directions of
openings can be applied to an S-shape,” Appellants assert that one skilled in
the art “will understand that an S-shape merely indicates that a starting
position of the shape extends in a first direction, curves around in a second
direction opposite the first direction, curves around again in the first
direction, and extends in the first direction.” Id. (citing Adv. Act. 2 (mailed
Mar. 22, 2012)).
B. The Examiner’s Positions
In response, the Examiner states that “while the first stated definition
of the term [diametric] may be said to require alignment, the second does
not.” Ans. 3. The Examiner finds that the openings in Roth satisfy the
claim language at issue under the second definition because “one [opening]
opens to the left as viewed in Fig. 1 while the other opens to the right as
viewed in Fig. 1.” Id.
The Examiner contends that openings defined by the “legs” of an “S”
shape are “in diametrically opposite directions” but “are not aligned . . . .”
Id. With that, the Examiner questions whether Appellants are “asserting that
the body claimed in claim 30 is not actually an ‘S’ shape.” Id.
C. Discussion
We are persuaded that the construction of “diametrically opposed”
applied by the Examiner—which did not require alignment of the recited
“clamp openings”—was unreasonably broad. We conclude, in light of the
dictionary definitions of “diametric” discussed by the parties, that, under the
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proper construction of “diametrically opposed,” the recited “clamp
openings” must be aligned, oriented in opposing directions, and located at
end points of a common diameter.
1
See Appeal Br. 6 (proposing a similar
construction).
As to the first definition of “diametric” discussed by the parties—“of,
pertaining to, or along a diameter”—the Examiner concedes that this
definition requires alignment and provides no reason why this definition
does not apply here. Ans. 3. And as to the second definition—“in direct
opposition; being at opposite extremes”—we conclude that it also requires
alignment for the reasons set forth by Appellants (Appeal Br. 6; Reply Br.
3–4). By not requiring alignment, the Examiner’s interpretation of the
second definition essentially reads out “direct” from “direct opposition.”
Further, for the reasons set forth by Appellants (Appeal Br. 7; Reply
Br. 4–5), we do not agree with the Examiner’s position that the “S-shape[]”
of the clamp body recited in claim 30 inherently precludes alignment
between the “clamp openings.” Instead, we are persuaded by Appellants’
interpretation of the term “S-shaped,” which, as supported by the
Specification, does not preclude alignment of the “clamp openings.” See

1
Here, neither party has identified intrinsic evidence to aid in the
construction of “diametrically opposed,” and we have identified no such
evidence in conflict with the construction provided by the combined
dictionary definitions discussed above. See Phillips v. AWH Corp., 415 F.3d
1303, 1322–23 (Fed. Cir. 2005) (en banc) (stating that judges may “‘rely on
dictionary definitions when construing claim terms, so long as the dictionary
definition does not contradict any definition found in or ascertained by a
reading of the patent documents’”) (quoting Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1584 n.6 (Fed. Cir. 1996)).
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Appeal Br. 7 (citing Spec., Figs. 1, 2); see also Spec. 5 (“upper clamp 1a is
S-shaped”).
We now apply the construction of “diametrically opposed” to the prior
art reference at issue. Figure 1 of Roth is reproduced below:

Figure 1 depicts an “improved clamp connector used between
conductors of substantially the same diameter.” Roth, col. 1, ll. 46–48. We
agree with the Examiner’s implicit finding that the clamp openings
associated with bends 17a and 17b in Figure 1 of Roth are not aligned. See
Ans. 3–4. For at least that reason, we conclude that Roth does not disclose
“diametrically opposed” clamp openings, as recited in claim 30. Therefore,
we do not sustain the decision to reject claim 30.
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Rejections 2–4 – The rejection of claims
31–34 under 35 U.S.C. § 103(a)
Claims 31–34 depend, directly or indirectly, from claim 30. Appeal
Br. 24 (Claims App.). The Examiner does not rely on Biller, Babb, or
Dobrovolny ’899 to remedy the deficiency discussed above with regard to
Roth. Final Act. 11–12 (mailed Dec. 27, 2011); Ans. 6. For the reasons set
forth above with regard to claim 30, we therefore do not sustain the decision
to reject claims 31–34.
Rejections 5–9
Similar to independent claim 30, the two other independent claims—
claims 16 and 35—recite “wherein at least one of the first and second
clamps has an S-shaped profile defining two diametrically opposed clamp
openings.” Appeal Br. 21, 25 (Claims App.) (emphasis added). Claims 17–
29 depend, directly or indirectly, from claim 16. Id. at 21–23. The
Examiner relies on the same deficient findings and conclusions with regard
to Roth for claim 16 (and its dependent claims) and claim 35 as discussed
above with regard to claim 30. Compare Final Act. 3–10 with id. at 2–3;
Ans. 3–6. Moreover, the Examiner does not rely on the other prior art
references to remedy the deficiency discussed above with regard to Roth.
Final Act. 3–10; Ans. 4–6. Thus, for the reasons set forth above with regard
to claim 30, we do not sustain the decision to reject claim 16 (and its
dependent claims) and claim 35.
CONCLUSION
For the reasons set forth above, we REVERSE the Examiner’s
decision to reject claims 16–35.
REVERSED
Ssc