Ex Parte Roeingh et alDownload PDFPatent Trial and Appeal BoardFeb 13, 201510585045 (P.T.A.B. Feb. 13, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KONRAD ROEINGH and KARL KELLER ____________ Appeal 2012-010990 Application 10/585,045 Technology Center 3600 ____________ Before EDWARD A. BROWN, THOMAS F. SMEGAL, and BRANDON J. WARNER, Administrative Patent Judges. WARNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Konrad Roeingh and Karl Keller (Appellants)1 appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1–5. Appeal Br. 2. Claim 6 has been withdrawn. Id. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). 1 According to Appellants, the real party in interest is SMS Siemag AG. Appeal Br. 2. Appeal 2012-010990 Application 10/585,045 2 CLAIMED SUBJECT MATTER Appellants’ disclosed invention relates to “a sealing device for roll bearings, especially oil film bearings or roller bearings.” Spec. 1.2 Claim 1, reproduced below with disputed limitations italicized for emphasis, is the sole independent claim appealed and is representative of the subject matter on appeal. 1. A device for roll bearings, especially oil film bearings or roller bearings, comprising: a sealing ring (6), which is fastened to a neck bush (3), the sealing ring (6) having a cylindrical, roller-burnished sealing surface (7), wherein the roller- burnished sealing surface is work hardened; a holder (8) connected to a chock (5); and an elastic sealing element (9, 10) mounted nonrotatably in the holder (8) so as to rest against the sealing surface (7), the sealing element having two arms that project in a common axial direction. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Draskovich US 5,544,896 Aug. 13, 1996 Robotham US 6,375,195 B1 Apr. 23, 2002 Yoshida US 7,063,193 B2 June 20, 2006 Keller3 WO 02/074461 A1 Sept. 26, 2002 2 We note that Appellants’ Specification does not provide line or paragraph numbering; accordingly, reference herein is made only to page numbers. 3 We note that the Examiner also lists US 6,866,270 B2, issued March 15, 2005, as an English-language translation of Keller, but that the rejections are based on Keller. See Ans. 4, 5–10. Appeal 2012-010990 Application 10/585,045 3 REJECTIONS The following rejections are before us for review: I. Claims 1–5 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. II. Claims 1, 4, and 5 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Robotham and Keller.4 III. Claim 2 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Robotham, Keller, and Draskovich. IV. Claim 3 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Robotham, Keller, and Yoshida. V. Claims 1 and 3–5 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Keller, Robotham, and Yoshida. VI. Claim 2 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Robotham, Keller, Yoshida, and Draskovich. ANALYSIS Rejection I — Written Description The Examiner found that the claims “contain[] subject matter which was not described in the [S]pecification in such a way as to reasonably convey to one skilled in the relevant art that [Appellants], at the time the application was filed, had possession of the claimed invention.” Ans. 4–5. In particular, the claims recite a sealing ring “having a cylindrical, roller- 4 We note that claims 1, 4, and 5 also stand rejected under 35 U.S.C. § 103(a) as being unpatentable over an alternative combination of Keller and Robotham. Appeal 2012-010990 Application 10/585,045 4 burnished sealing surface,” and the Examiner correctly notes that the term “roller-burnished” does not appear in the English-language translation of the original Specification. See id. at 10. Appellants argue that the omission of the term “roller-burnished” in the English-language translation of the original Specification is due to a mistranslation of the term “rolliert” in the German-language international application, of which the present application is a national stage entry. See Appeal Br. 7–8. Specifically, Appellants assert that the term “rolliert” was mistranslated to the term “rolled.” See id.; see also Spec. 5. Appellants further assert that “roller-burnishing” translates to “rollieren” and include translation evidence in support of correspondence between these terms. See Appeal Br. 8; see also id., Evidence App. We agree with the Examiner that the absence of the term “roller- burnished” in the Specification results in a lack of written description for this term as recited in the claims. Although we have considered Appellants’ translation evidence, it is unclear from the record before us whether the words “rolliert” (as described in the German-language international application) and “rollieren” (as provided in the translation evidence) have the same meaning, or can be translated to have the same meaning in English.5 Thus, unless and until correspondence between the terms “rolliert” and “roller-burnished” can be established, and the Specification 5 We note that Appellants include translation evidence for the term “rolliert” (rather than “rollieren”) with the Reply Brief; however, such evidence was not before the Examiner for consideration. See Reply Br. 1–3. We leave it to the Examiner to determine whether this new evidence is sufficient to establish correspondence between the terms “rolliert” and “roller-burnished” upon return of jurisdiction of this application to the Examiner. Appeal 2012-010990 Application 10/585,045 5 amended accordingly to provide adequate written description support therefor, we must sustain the rejection of claims 1–5 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. New Ground of Rejection We enter a new ground of rejection for claims 1–5 pursuant to 37 C.F.R. § 41.50(b) (2011). Claims 1–5 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 Appellants regard as the invention. The essence of the requirement under 35 U.S.C. § 112, second paragraph, that the claims must be definite, is that the language of the claims must provide clarity to those skilled in the art regarding the scope of the subject matter which the claims encompass. See In re Hammack, 427 F.2d 1379, 1382 (CCPA 1970). The test for definiteness under 35 U.S.C. § 112, second paragraph, is “whether those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted); see also Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2128 (2014). The claims recite, inter alia, a sealing ring “having a cylindrical, roller-burnished sealing surface.” Initially, we note that the Examiner determined that it is unclear what Appellants mean by the term “roller- burnished.” See Ans. 5. The Examiner considered this term to be a product- Appeal 2012-010990 Application 10/585,045 6 by-process modifier for the sealing surface element, resulting in structure of a sealing surface that is work hardened with minimized roughness. See id. Appellants contend that the term “roller-burnished” actually “implies a specific structural characteristic of the sealing surface.” Appeal Br. 8. Appellants further contend that “roller-burnished” characterizes “a process for the production of a particular surface structure,” such that “[t]his attribute is thus a structural feature, not simply a process limitation.” Id. at 9. However, despite these contentions, Appellants do not describe, much less define, what specific structural characteristics are necessarily required of the claimed “roller-burnished” surface.6 Neither the claims themselves nor the Specification provides any definition or objective standard for ascertaining the reach of the term “roller- burnished.” We also note that Appellants do not identify any portion of the Specification to indicate what specific structure would be required of a “roller-burnished” surface. Although Appellants repeatedly state that “a specific type of hard surface is being claimed,” no objective standard or structural details of this surface are provided; only that the surface is “roller- burnished.” Appeal Br. 10; see id. at 8–10. Thus, the limitation of a sealing ring “having a cylindrical, roller-burnished sealing surface” is indefinite 6 Indeed, Appellants only provide an “example” of a roller-burnishing method for smoothing and hardening of a surface material, where “special tools are required, which . . . have a roughened work surface, as well as a smooth surface, and [include] an appropriate pressure device that is pressed against the work piece,” such that “[w]hen pressure is exerted, the pressure device exerts a pressure force in the area of the contact surface between the pressure tool and the work pieces being worked on, which leads to a deformation and simultaneous hardening of the outer surface of the work piece.” Appeal Br. 8. Appeal 2012-010990 Application 10/585,045 7 because it lacks sufficient precision to permit one endeavoring to practice the invention to adequately determine the metes and bounds thereof. In light of the above, we conclude that claims 1–5 are indefinite under 35 U.S.C. § 112, second paragraph, for failing to particularly point out and distinctly claim the subject matter which Appellants regard as the invention. Rejections II–VI — Obviousness We shall not sustain the Examiner’s rejections of claims 1–5 under 35 U.S.C. § 103(a). For the reasons explained in detail supra, claims 1–5 are indefinite. Before a proper review of these rejections can be performed, the subject matter encompassed by the claims on appeal must be reasonably understood without resort to speculation. Therefore, because the claims fail to satisfy the requirements of the second paragraph of 35 U.S.C. § 112, we are constrained to reverse, pro forma, the prior art rejections because they necessarily are based on speculative assumptions as to the meaning of the claims. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962). The Patent Trial and Appeal Board is primarily a tribunal of review. See Ex Parte Frye, 94 USPQ2d 1072, 1075–77 (BPAI 2010) (precedential). Here, the entirety of Appellants’ arguments against the various obviousness rejections amounts to an assertion that the cited references do not teach a roller-burnished sealing surface. See Appeal Br. 11–15. However, as discussed in detail supra, it is unclear what specific structural characteristics are necessarily required of the claimed “roller-burnished” surface or what surfaces would be fairly encompassed by the broadest reasonable interpretation of the “roller-burnished” surface. Therefore, meaningful appellate review of the obviousness rejections is precluded by the Appeal 2012-010990 Application 10/585,045 8 indefiniteness of the limitation of a sealing ring “having a cylindrical, roller- burnished sealing surface.” It should be understood, however, that our decision in this regard is based solely on the indefiniteness of the claimed subject matter, and does not reflect on the adequacy of the prior art evidence applied in support of the rejections. DECISION We AFFIRM the Examiner’s decision rejecting claims 1–5 under 35 U.S.C. § 112, first paragraph. We REVERSE the Examiner’s decision rejecting claims 1–5 under 35 U.S.C. § 103(a). We ENTER A NEW GROUND OF REJECTION for claims 1–5 under 35 U.S.C. § 112, second paragraph. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b) (2011). 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . Appeal 2012-010990 Application 10/585,045 9 (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . Should Appellants elect to prosecute further before the Examiner pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, the effective date of the affirmance will be deferred until conclusion of the prosecution before the Examiner unless the affirmed rejection is overcome. If Appellants elect prosecution before the Examiner and this does not result in allowance of the application, abandonment, or a second appeal, this case should be returned to the Patent Trial and Appeal Board for final action on the affirmed rejection, including any timely request for rehearing thereof. 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) (2011). AFFIRMED; 37 C.F.R. § 41.50(b) hh Copy with citationCopy as parenthetical citation