Ex Parte Sonnendorfer et al

Patent Trial and Appeal Board

Oct 10, 2014

11816649 (P.T.A.B. Oct. 10, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte HORST SONNENDORFER and FRANZ WIETH
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Appeal 2012-007103
Application 11/816,649
Technology Center 3600
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Before: JOHN C. KERINS, MICHAEL L. HOELTER, and
LYNNE H. BROWNE, Administrative Patent Judges.

BROWNE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Horst Sonnendorfer and Franz Wieth (Appellants) appeal under 35
U.S.C. § 134 from the Examiner’s decision rejecting claims 5–8. Claims 1–
4 are canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
The claims are directed to an immobilizer for a transport trolley.
Claim 5, reproduced below, is representative of the claimed subject matter:
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5. An immobilizer assembly switchable between an activated
state and a deactivated state, comprising:
an immobilizer having interior operating elements
switchable by a magnetic force from an external magnetic field,
said interior operating elements selectively switching
said immobilizer between the activated state and the deactivated
state when the immobilizer assembly is moved through the
external magnetic field and the operating elements are moved
by the external magnetic field for switching the immobilizer
between the activated state and the deactivated state,
said interior operating elements selectively switching
said immobilizer between the deactivated state and the activated
state when the immobilizer assembly is moved through the
external magnetic field and the operating elements are moved
by the external magnetic field for switching the immobilizer
between the deactivated state and the activated state.

REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Isaacks US 3,495,688 Feb. 17, 1970

REJECTIONS1
I. Claims 5–8 stand rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite.
II. Claims 5–8 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Isaacks.
III. Claims 5–8 stand rejected on the ground of provisional nonstatutory
obviousness-type double patenting as being unpatentable over claims
1–4 of copending U.S. Patent Application Number 12/302,218.

1 The Examiner withdraws the rejection of claims 5–8 under 35 U.S.C.
§ 112, first paragraph. Ans. 4.
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IV. Claims 5–8 stand rejected on the ground of nonstatutory obviousness-
type double patenting as being unpatentable over claims 1–132 of US
8,029,005, which issued on October 4, 2001, from US Application
11/816,660.3
OPINION
Rejection I. – Indefiniteness
The Examiner determines that claims 1–5 are indefinite because
“[c]laim 5 employs indefinite term ‘selectively’. ‘Selectively’ provides
options and suggestions; therefore is indefinite.” Ans. 6.
We are not aware of any precedent supporting the Examiner’s
determination that a claim is per se indefinite simply because it allows for
options or suggestions. The Supreme Court recently interpreted the claim
definiteness requirement of 35 U.S.C. § 112, second paragraph, in Nautilus,
Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120 (2014), stating:
[W]e read § 112, ¶ 2 to require that a patent’s claims, viewed in
light of the specification and prosecution history, inform those
skilled in the art about the scope of the invention with
reasonable certainty. The definiteness requirement, so
understood, mandates clarity, while recognizing that absolute
precision is unattainable.
Nautilus, 134 S.Ct. at 2129.
In the context of the claims at issue, we agree with Appellants that
“‘selectively’ merely means that the state of the immobilizer will change
between activated/deactivated” as these are the only two states of the

2 We note that US 8,029,005 has 12 claims, and treat the Examiner’s
reference to 13 claims as a typographical error.
3 This is a new ground of rejection, as the prior provisional rejection is now
a non-provisional rejection due to the issuance of US Application
11/816,660 as US 8,029,005. See Ans. 4–5, 8. Hereinafter, we refer to both
US Application 11/816,660 and US 8,029,005 as the “Patent.”
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immobilizer described in the Specification. Appeal Br. 7; see generally
Spec. Thus, claims 5–8 would readily inform those skilled in the art that this
was the scope of the claim.
We further note that “[m]erely claiming broadly does not . . . prevent
the public from understanding the scope of the patent.” Ultimax Cement
Mfg. v. CTS Cement Mfg., 587 F.3d 1339, 1352 (Fed. Cir. 2010) (citing In re
Gardner, 427 F.2d 786, 788 (1970) (“Breadth is not indefiniteness.”)).”
Accordingly, the Examiner errs in determining that claims 5–8 are
indefinite. For these reasons, we do not sustain the Examiner’s decision
rejecting claim 5–8 under 35 U.S.C. § 112, second paragraph.

Anticipation
The Examiner finds that Isaacks discloses all of the limitations of
claims 1–5. Ans. 6. Appellants argue that “Isaacks does not disclose an
immobilizer that has a structure which allows one external magnetic field to
switch the wheel lock from an activated state to a deactivated state and from
a deactivated state to an activated state.” Br. 10. In response to this
argument, the Examiner states “Appellant’s arguments are contradictory and
confusing [as] to what is considered to be the essential working principle of
the invention . . .[i]f claim 5 . . . restricts the invention to one and only one
magnet; claim 7 . . . cannot broaden the scope of the claims by adding a
second magnet.” Ans. 10.
The Examiner’s statements appear to allege that claims 5 and 7 are
indefinite; however, claims 5 and 7 do not stand rejected as being indefinite
for the reasons enumerated by the Examiner on pages 9–10 of the Answer.
We note that that claim 5 uses the transitional phrase “comprising” which “is
inclusive or open-ended and does not exclude additional, unrecited elements
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or method steps.” MPEP § 2111.03 (citations omitted). Furthermore, the
Examiner’s statement evidences a misunderstanding of the claimed
invention. Claim 5 requires an external magnetic field, not a magnet,
capable of switching the immobilizer from the activated state to the
deactivated state and vice-versa. See Br. 15. Claim 7 adds a second external
magnetic field that is “less than the external magnetic field required for
activation” and which is “sufficient to switch said immobilizer to the
deactivated state from the activated state.” Br. 16–17 (emphasis added).
There is no indication in claim 7 that the second external magnetic field is
capable of switching the immobilizer from the deactivated state to the
activated state. Accordingly, the Examiner’s conclusion that claim 7
“broaden[s] the scope of the claims by adding a second magnet” is not
indicative of a flaw in independent claim 5 or claim 7 which depends
therefrom. Ans. 10.
Furthermore, the Examiner’s statements are not responsive to
Appellants’ arguments. The Examiner does not identify, nor do we discern
where Isaacks discloses
said interior operating elements selectively switching said
immobilizer between the activated state and the deactivated
state when the immobilizer assembly is moved through the
external magnetic field and the operating elements are moved
by the external magnetic field for switching the immobilizer
between the activated state and the deactivated state, said
interior operating elements selectively switching said
immobilizer between the deactivated state and the activated
state when the immobilizer assembly is moved through the
external magnetic field and the operating elements are moved
by the external magnetic field for switching the immobilizer
between the deactivated state and the activated state
as required by claim 5. Br. 15.
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For these reasons, we do not sustain the Examiner’s decision rejecting
independent claim 5, and claims 6–8 which depend therefrom, as anticipated
by Isaacks.
Provisional Non-Statutory Obviousness-type Double Patenting
We dismiss as moot the Examiner’s provisional non-statutory
obviousness-type double patenting rejection of claims 5–8 as being
unpatentable over claims 1–4 of copending Application No. 12/302,218,
because the copending application went abandoned on February 16, 2014.
Non-statutory Obviousness-type Double Patenting
The Examiner finds that claims 5–8 are not patentably distinct from
claims 1–12 of the Patent “because the claims of the patent encompass the
claims of the instant application.” Ans. 8.
Appellants argue that the claims of the Patent “pertain to mutually
different structural features of an immobilizer.” Br. 13. Appellants
particularly note that the Patent “claims a mechanism for compensation of
disturbance forces, which has absolutely nothing in common with the
claims of the instant application.” Id.
The Manual of Patent Examination Procedure (MPEP) defines
nonstatutory-type double patenting, stating:
the “nonstatutory-type” double patenting rejection [is] based on
a judicially created doctrine grounded in public policy and
which is primarily intended to prevent prolongation of the
patent term by prohibiting claims in a second patent not
patentably distinguishing from claims in a first patent.
Nonstatutory double patenting includes rejections based on
either a one-way determination of obviousness or a two-way
determination of obviousness.
MPEP § 804.
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The Examiner does not explain, nor is it readily apparent, how any of
claims 1–12 of the Patent render claims 5–8 obvious under either a one-way
or two-way determination. Thus, the Examiner fails to set forth a prima
facie case of non-statutory obviousness-type double patenting.
For this reason, we do not sustain the Examiner’s decision rejecting
claims 5–8 on the ground of non-statutory obviousness-type double
patenting as being unpatentable over claims 1–12 of the Patent.

DECISION
The Examiner’s rejections of claims 5–8 are REVERSED.

REVERSED

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