Ex Parte Rejman et al

Patent Trial and Appeal Board

Feb 23, 2017

13337620 (P.T.A.B. Feb. 23, 2017)

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.
13/337,620 12/27/2011 Marcin REJMAN 10191/7290 8979
24972 7590 02/27/2017
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
EXAMINER
CHMIELECKI, SCOTT J
ART UNIT PAPER NUMBER
1729
NOTIFICATION DATE DELIVERY MODE
02/27/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARCIN REJMAN, RAINER GLAUNING, and
THORSTEN SEIDEL1
Appeal 2015-006950
Application 13/337,620
Technology Center 1700
Before LINDA M. GAUDETTE, WESLEY B. DERRICK, and
BRIAN D. RANGE, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s rejection under 35 U.S.C. § 103 of claims 1-3, 12, 13, 15-20,
and 23-37. We have jurisdiction pursuant to 35 U.S.C. § 6.
We AFFIRM.
BACKGROUND
Appellants’ claimed invention relates to a handheld machine tool
energy supply unit having an accumulator unit, an interface element, and a
1 Appellants identify Robert Bosch GmbH as the real party in interest.
Appeal Br. 1.
Appeal 2015-006950
Application 13/337,620
damping unit for supporting the accumulator unit in an oscillation-damped
manner. Spec. Abstract.
Independent claims 1 and 16—reproduced below—are representative
of the claims on appeal.
1. A handheld machine tool energy supply unit, comprising:
an accumulator unit; and
an interface element having only one damping unit
disposed entirely between the accumulator unit and the
interface element to support the accumulator unit in an
oscillation-damped manner,
an interface on a housing of a handheld machine tool for
connecting to the handheld machine tool energy supply unit,
wherein a contact holder of the interface is provided with
an additional damping unit to form an oscillation-damped
contacting of at least one contact unit of the handheld machine
tool energy supply unit.
16. A handheld machine tool energy supply unit, comprising:
an accumulator unit having a housing, wherein the
housing contains a plurality of battery cells and has a contact
unit including electrical contacts, the contact unit being rigidly
connected to the housing; and
an interface element having a locking unit configured to
connect the interface element to a handheld machine tool; and
a damping unit configured to support the housing in an
oscillation damped manner relative to the interface element,
wherein the damping unit adheres to the housing and to
the interface element such that the damping unit is disposed
between the housing and the interface element to support the
housing in an oscillation damped manner relative to the
interface element,
wherein the damping unit comprises a single damping
unit.
Appeal Br. (Claims Appendix 1, 2). Claim 30, the sole remaining
independent claim on appeal, is similar to claim 16 except that the
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recited contact unit is recited as a portion of the interface element
instead of the accumulator unit. Claims 16, 30.
THE REJECTIONS2
The claims stand rejected under 35 U.S.C. § 103(a) as follows:
I. Claims 1-3, 12, and 13 over Brazell;3
II. Claim 15 over Brazell in view of Ueda;4
III. Claims 16-19, 23-28, and 30-36 over Brazell in view of
Kanai;5 and
IV. Claims 20, 29, and 37 in view of Brazell in view of Kanai and
Phillips.6
DISCUSSION7
To prevail in an appeal to this Board, Appellants must adequately
explain or identify reversible error in the Examiner’s rejection. See
37 C.F.R. § 41.37(c)(l)(iv) (2012); see also In re Jung, 637 F.3d 1356,
1365—66 (Fed. Cir. 2011) (explaining that even if the Examiner had failed to
make a prima facie case, it has long been the Board’s practice to require an
2 The Final Office Action and the Examiner’s Answer separately set forth
the same grounds of rejection for different groups of claims. This list
reflects the combined listings of claims subject to rejection over Brazell in
view of Kanai and Brazell in view of Kanai and Phillips, respectively.
3 Brazell et al., US 2005/0058890 Al, published March 17, 2005.
4 Ueda et al., US 2010/0092850 Al, published April 15, 2010.
5 Kanai et al., US 2003/0134189 Al, published July 17, 2003.
6 Phillips et al., US 2008/0220324 Al, published September 11, 2008.
7 We refer to the Specification filed December 27, 2011, the Final Office
Action mailed August 28, 2014, the Appeal Brief filed January 28, 2015, the
Examiner’s Answer mailed May 20, 2015, and the Reply Brief filed July 20,
2015.
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appellant to identify the alleged error in the examiner’s rejection); In re
Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010) (“[T]he burden of showing
that the error is harmful normally falls upon the party attacking the agency’s
determination.” (quoting Shinseki v. Sanders, 556 U.S. 396, 409 (2009))).
Appellants proffer arguments as to Rejection I and Rejection III
(Appeal Br. 3-8) and rely on the dependency from base claims subject to
these rejections for claims subject to Rejection II and Rejection IV,
respectively (Appeal Br. 8-9).
On this record, we are not persuaded that the Examiner erred
reversibly in rejecting all claims as obvious in light of the teachings of the
cited prior art for reasons expressed by the Examiner in the Final Office
Action and the Answer. We add the following.
Rejection I (and Rejection II)
Appellants rely on arguments as to independent claim 1, on which we
focus our discussion.
Referring to Figure 5, the Examiner relies on Brazell for its disclosure
of a handheld machine tool energy supply unit (battery pack 20) comprising
an accumulator unit (a plurality of battery cells 54), an interface element (a
plastic housing 44), and damping units (annular elastic members 56 and 56').
Ans. 2-3 (citing, inter alia, Brazell Fig. 5,132). The Examiner finds the
elastic members 56 and 56' would inherently dampen oscillations as the
elastic members cradle the battery cells. Ans. 2-3. In finding the lower
elastic member 56' contacts the accumulator unit (battery cells 54) and
prevents them from touching, inter alia, the circumferential wall (48) and
floor (46), the Examiner de facto finds lower elastic member 56' to be the
recited “one damping unit disposed entirely between the accumulator unit
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and the interface element.” Ans. 2-3. In finding the upper elastic member
56 contacts the accumulator unit (battery cells 54), interface element
(housing 44), and the mounting flange of the handle 28, the Examiner de
facto finds upper elastic member 56 to be the recited “additional damping
unit to form an oscillation-damped contacting.” Ans. 3.
The Examiner concedes that Brazell does not teach that the interface
element has only one damping unit, but finds it to have been within the
ambit of one of ordinary skill in the art to have made the damping unit as a
single piece as a matter of obvious engineering choice. Ans. 3 (citing In re
Larson, 340 F.2d 965, 968 (CCPA 1965)).
Appellants argue that Brazell discloses four elastic members and that
each one “is required in order to ‘help prevent the battery cells 54 from
contacting and/or impacting the floor 46, circumferential wall 48 or the cap
50 of the housing 44.’ (Paragraph 0032, and Figure 5, of Brazell et al.).”
Appeal Br. 3—4. Appellants further argue that the Examiner erred in relying
on Larson because it merely stands for the proposition that “omission of an
element and its function is obvious if the function of the element is not
desired” and cite In re Edge, 359 F.2d 896 (CCPA 1966), for the proposition
that the omission of three elastic members while “retain[ing] the function of
supporting the accumulator unit in a vibration-damped manner” is, in fact,
evidence of non-obviousness. Appeal Br. 4.
We begin our analysis by determining the scope and meaning of the
claims, giving claim terms the broadest reasonable interpretation consistent
with the Specification as they would be interpreted by one of ordinary skill
in the art. In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011) (citing In
re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010)). In doing so,
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we turn first to the claims themselves. See, e.g., Rapoport v. Dement, 254
F.3d 1053, 1059 (Fed. Cir. 2001).
We are of the opinion that the meaning of “having only one damping
unit disposed entirely between the accumulator unit and the interface
element” (claim 1) does not separately require both that there is “only one
damping unit” and that each damping unit present is “disposed entirely
between the accumulator unit and the interface element.” Looking to the
Specification, we note that the Specification discloses damping element 14
as being adhered to interface element 12 (see, e.g., Spec. 8,11. 17-18; 9,11.
18-20; 10,1. 14; 11,11. 19-20; Figs. 1-3, 5), but discern no particular
limitation to a single damping unit by way of definition.8 As to Figures 1, 2,
3, and 5 each disclosing “only one damping unit” relevant to the interface
element (Appeal Br. 4), it is improper to read limitations into the claims.
See, e.g., Sjolund v. Musland, 847 F.2d 1573, 1581 (Fed. Cir. 1988)
(“[WJhile it is true that claims are to be interpreted in light of the
specification ... it does not follow that limitations from the specification
may be read into the claims.”) (emphasis in original). Thus, properly
construed, claim 1 is open to additional damping units so long as they are
not “disposed entirely between the accumulator and the interface element.”
Turning to Brazell, we find Figure 5 meets the limitation of “only one
damping unit disposed entirely between the accumulator unit and the
interface element” because the cited lower elastic member 56' is the only
8 In the event of further prosecution, Appellants and the Examiner should
consider whether the recited language of “an interface element having . . .
[a] unit disposed entirely between the accumulator unit and the interface
element' (claim 1, emphasis added) complies with 35 U.S.C. § 112, second
paragraph.
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damping unit disposed entirely between the accumulator and the interface
element because a portion of 56 abuts the mounting flange of handle 28.
Brazell Fig. 5. Furthermore, as found by the Examiner, Appellants’
arguments contending that BrazelFs Figure 5 discloses four separate elastic
members is without persuasive merit because 56 and 56' are explicitly
disclosed to be annular. Ans. 14 (Brazell 132, Fig. 5).
As to Appellants’ contention that the Examiner erred in determining
that it would have been obvious to have modified BrazelFs disclosed
structure so as to use a single elastic member to provide the oscillation
damping, we discern no cogent, persuasive argument because claim 1 is not
in fact limited to a single damping unit. Instead, claim 1 explicitly requires
at least “an additional damping unit to form an oscillation-damped
contacting,” and Appellants fail to explain how elastic member 56 does not
correspond to the recited additional damping unit. See generally Appeal Br.;
Reply Br. Further, as to the argument grounded on the retention of the
function in the absence of an element, Appellants fail to proffer any
persuasive evidence or argument that the elastic element 56' would not still
meet the requirement to dampen oscillation, particularly where the claim
fails to require any particular degree of damping.
For these reasons, and those set forth by the Examiner, we are
unpersuaded of any harmful error in the Examiner’s determination that one
of ordinary skill in the art at the time of the invention, armed with the
teachings of Brazell, would have arrived at the subject matter of claim 1
within the meaning of 35 U.S.C. § 103. Accordingly, we sustain Rejections
I (claims 1-3, 12, and 13) and II (claim 15).
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Rejection III (and Rejection IV)
Appellants repeat arguments discussed above as well as present
additional arguments directed to elements common to both independent
claims 16 and 30. Appeal Br. 5. We focus our discussion, accordingly, on
the argument as applied to claim 16.
The Examiner relies on Brazell for its disclosure of a plurality of
batteries 54 to meet the recited accumulator unit and on its disclosure of
electrical contacts (Brazell 32, 38; Figs. 5-6); a plastic housing 44 to
meet the recited interface element (Brazell H 31, 35, 39; Figs. 1-7), and the
elastic members 56 and 56' to meet the recited damping unit (Brazell ^ 32;
Fig. 5) with the reasoning that elastic members 56 and 56' would be replaced
with a single element as a matter of obvious engineering choice. Ans. 5-6,
7. As to the recitation “wherein the damping unit comprises a single
damping unit” (claims 16, 30), the Examiner both determines the transitional
phrase “comprising” opens the claims to the inclusion of additional damping
units and that, even if claim 16’s recitations exclude additional damping
units, that “it is well within the ambit of one of ordinary skill in the art to
combine the elastic elements taught by Brazell into a single unit” (Ans. 15).
In regard to combining damping elements, the Examiner further relies on
Kanai’s disclosure of vibration absorbing materials 83, 84, 85 in Figures 24,
25, and 26, respectively (Ans. 16), in which the damping function is met
with varying numbers of the absorbing materials.9
9 In the event of further prosecution, Appellants and the Examiner should
also consider Kanai’s explicit disclosure of a unitary vibration absorbing
material 81. Kanai 1135; Fig. 22.
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The Examiner concedes that Brazell is silent as to the accumulator’s
unit housing but alternatively (i) finds that the battery cells in Brazell
inherently possess a housing to isolate the battery components from the rest
of the device (Ans. 6-7); and (ii) that Kanai teaches the use of a housing for
an accumulator unit, i.e., case unit cells, and that it would have been obvious
to one of ordinary skill in the art the time of the invention, armed with
Kanai’s teachings, to include the housing to facilitate improved battery
performance and safety (Ans. 7, citing Kanai 70, Tflf 77-78; Figs. 1, 4).
We sustain the Examiner’s rejection as grounded on the combination
of Brazell and Kanai.
Appellants argue that the claims require that the damping unit
comprises a single damping unit and repeats the arguments made as to claim
1 that Brazell describes four elastic members, that these are taught as being
required, and that it would not have been obvious to use only one damping
unit. Appeal Br. 5; Reply Br. 4. Appellants also repeat the arguments made
as to the citation to Larson and how the retained function when omitting all
but one of the damping units is evidence that the claims are not obvious.
Appeal Br. 5-6, 8; Reply Br. 4-6.
Appellants’ repeated arguments are not persuasive of reversible error
for the reasons set forth as discussed above in regard to Rejection I, but are
further lacking persuasive merit for the additional reason that Kanai
reasonably teaches that the function of the elastic members can be met by
differently arranged vibration absorbing materials. In re Preda, 401 F.2d
825, 826 (CCPA 1968) (It is well established that in evaluating references “it
is proper to take into account not only the specific teachings of the
references but also the inferences which one skilled in the art would
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reasonably be expected to draw therefrom.”). Appellants’ argument as to
Kanai is merely that it does not remedy the deficiencies of Brazell (Appeal
Br. 8) and is wholly inadequate to establish that the Examiner erred.
Appellants’ further arguments are wholly grounded on Brazell’s
housing 44 as the accumulator unit’s housing of claims 16 and 30. Appeal
Br. 6-8. The Examiner, however, explicitly sets forth that Brazell’s housing
44 is relied on as the interface element in Rejections III and IV (see, e.g.,
Final Act. 7, 12; Ans. 5, 10), and, accordingly, Appellants’ arguments lack
persuasive merit.
In addition to mischaracterizing the rejections grounded on the battery
cells in Brazell inherently possessing a housing to isolate the battery
components from the rest of the device, Appellants further fail to address the
alternative ground based on the combination of Brazell and Kanai (Final
Act. 8, 13) except to contend without elaboration that Kanai does not
remedy the deficiencies of Brazell (Appeal Br. 8).
Appellants contend in the Reply Brief that the Examiner for the first
time refers to Kanai for disclosing the housing and the relative arrangement
of the battery cells’ housing, damping unit, and interface element (Reply Br.
6), but fail to explain how the Final Office Action setting forth the rejection
grounded on the combination would not have reasonably apprised
Appellants of the ground of rejection. We, accordingly, deem Appellants’
new arguments as to this issue first raised in the Reply Brief waived. 37
C.F.R. §41.41(b)(2).
Appellants proffer further new arguments as to how the Examiner
erred in treating the housing 44 of Brazell as an interface element (Reply Br.
6-8), however, these are also untimely and deemed waived because, as
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explained above, the Examiner explicitly set forth in the Final Office Action
that the housing 44 of Brazell was relied upon to meet the interface element,
and Appellants fail to provide good reason why they could not have raised
the arguments earlier. See 37 C.F.R. § 41.41(b)(2); Cf. McBride v. Merrell
Dow andPharms., Inc., 800 F.2d 1208, 1211 (D.C. Cir. 1986) (internal
citations omitted) (“Considering an argument advanced for the first time in a
reply brief... is not only unfair to an appellee but also entails the risk of an
improvident or ill-advised opinion on the legal issues tendered.”).
For these reasons, and those set forth by the Examiner, we are
unpersuaded of any harmful error in the Examiner’s determination that one
of ordinary skill in the art at the time of the invention, armed with the
teachings of Brazell and Kanai, would have arrived at the subject matter of
claim 16 (and claim 30) within the meaning of 35 U.S.C. § 103.
Accordingly, we sustain Rejections III (claims 16-19, 23—28, and 30—36)
and IV (claims 20, 29, and 37).
CONCEUSION
The Examiner’s rejections of claims 1-3, 12, 13, 15-20, and 23-37
under 35 U.S.C. § 103 is 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)(1).
AFFIRMED
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