Ex Parte SieglDownload PDFBoard of Patent Appeals and InterferencesMay 17, 201111270377 (B.P.A.I. May. 17, 2011) Copy Citation 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 Appeal 2009-011963 Application 11/270,377 2 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. Appeal 2009-011963 Application 11/270,377 3 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. Appeal 2009-011963 Application 11/270,377 4 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 Appeal 2009-011963 Application 11/270,377 5 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 Klh Copy with citationCopy as parenthetical citation