Ex Parte Siegl

Board of Patent Appeals and Interferences

May 17, 2011

11270377 (B.P.A.I. May. 17, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WALTER SIEGL
____________

Appeal 2009-011963
Application 11/270,377
Technology Center 3700
____________

Before MICHAEL W. O’NEILL, STEFAN STAICOVICI, and
GAY ANN SPAHN, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Walter Siegl (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1 and 3-11, as follows:
claims 1, 3-9, and 11 under 35 U.S.C. § 102(b) as
anticipated by Covelli (International Patent
Application Publication No. WO 02/10493 A1,
published Feb. 7, 2002); and
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Application 11/270,377

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claim 10 under U.S.C. § 103(a) as unpatentable
over Covelli and in view of Appellant’s Admitted
Prior Art disclosed in the Background of the
Invention section of the present Specification
(hereinafter “AAPA”) .

Appellant cancelled claim 2. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The Invention
The claims on appeal relate to a method for braking a weft thread of a
weaving machine and to a weaving machine.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for braking a weft thread of a
weaving machine, in particular of a jet weaving
machine, in said method a braking element being
brought into contact with the weft thread and the
braking element being moved via a control device
by means of a drive, wherein during a weft thread
insertion a first measurement value of a movement
parameter of the weft thread is determined, a first
estimate value for the movement parameter is
estimated on the basis of the first measurement
value and a correction value is determined from it;
and in that the movement parameter of the weft
thread is corrected on the basis of the correction
value
wherein the determination of the first
measurement value of the movement parameter of
the weft thread, the estimation of the first estimate
value, the determination of the correction value,
and the correction of the movement parameter of
the weft thread are carried out during one and the
same weft thread insertion.

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OPINION
Issue
The determinative issue in this appeal is:
Whether the Examiner has shown that Covelli discloses each and
every claim limitation of claims 1 and 11 to anticipate claims 1 and 11,
respectively.
Analysis
Appellant contends that the Office Action mailed Feb. 12, 2008 is
improper for consisting merely of quotes from Covelli and offering no
analysis as to how Covelli teaches the claim elements. App. Br. 7.
Appellant also contends that Covelli does not teach claim 1’s recitation of
“wherein during a weft thread insertion a first measurement value of a
movement parameter of the weft thread is determined, a first estimate value
for the movement parameter is estimated on the basis of the first
measurement value and a correction value is determined from it; and in that
the movement parameter of the weft thread is corrected on the basis of the
correction value” because Covelli teaches measurements of the deflection
brake, not a weft thread as is done with the present invention. Id. Appellant
also contends that Covelli does not disclose “the determination of the first
measurement value of the movement parameter of the weft thread, the
estimation of the first estimate value, the determination of the correction
value, and the correction of the movement parameter of the weft thread are
carried out during one and the same weft thread insertion” because Covelli
teaches correction of a movement parameter only after a first weft thread
insertion. App. Br. 8.
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The Examiner posits that Covelli anticipates claims 1 and 11 and
quotes Covelli’s Abstract. Ans. 3-4. The Examiner notes that the steps
described in the Abstract are taken during each weft insertion. Ans. 4. The
Examiner cites to Covelli’s examples discussed on pages 13-15 and
illustrated in Figure 3. Id. The Examiner alleges that Covelli clearly
discloses the limitations in claim 1. Id.
The Patent and Trademark Office (“PTO”) satisfies its initial burden
of production by “adequately explain[ing] the shortcomings it perceives so
that the applicant is properly notified and able to respond.” In re Jung, 98
U.S.P.Q.2d 1174 (Fed. Cir. March 28, 2011) citing Hyatt v. Dudas, 492 F.3d
1365, 1370 (Fed. Cir. 2007). In other words, the PTO carries its procedural
burden of establishing a prima facie case when its rejection satisfies 35
U.S.C. § 132, in “notify[ing] the applicant . . . [by] stating the reasons for
[its] rejection, or objection or requirement, together with such information
and references as may be useful in judging of the propriety of continuing the
prosecution of [the] application.” 35 U.S.C. § 132. That section “is violated
when a rejection is so uninformative that it prevents the applicant from
recognizing and seeking to counter the grounds for rejection.” Chester v.
Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990).
We agree with Appellant that the Examiner has failed to show that
Covelli anticipates claims 1 and 11. The Examiner’s rejection fails to make
any findings as to how Covelli discloses the recitations of claims 1 and 11.
Instead, the Examiner merely quotes Covelli’s Abstract and cites to
Covelli’s examples described at pages 13-15 and illustrated in Figure 3 and
to Covelli’s position detection means discussed at page 4, lines 9-12 as
evidence that Covelli discloses the limitations of claims 1 and 11. We find
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the Examiner’s rejection to be so uninformative that it prevents Appellant
from recognizing and seeking to counter the grounds for rejection and thus,
fails to satisfy the initial burden of production so that Appellant was
properly notified and able to respond. Moreover, we agree with Appellant
that Covelli discloses measurements of the deflection brake, not a weft
thread and thus, does not meet the limitations of claims 1 and 11.
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 1, 3-9, and 11 under 35 U.S.C. § 102(b) as anticipated by Covelli.
Since the rejection of claim 10 is based upon the same uninformative
rejection as was used to reject claim 1 and since the Background of the
Invention section of the instant Specification does not cure the defects of
Covelli, we also do not sustain the Examiner’s rejection of claim 10 under
35 U.S.C. § 103(a) as unpatentable over Covelli and the Background of the
Invention.

CONCLUSION
The Examiner has failed to show that Covelli discloses each and every
claim limitation of claims 1 and 11 to anticipate claims 1 and 11,
respectively.

DECISION
We reverse the Examiner’s rejections of claims 1, 3-9, and 11 under
35 U.S.C. § 102(b) as anticipated by Covelli and claim 10 under 35 U.S.C.
§ 103(a) as unpatentable over Covelli and the Background of the Invention.

REVERSED
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