Ex Parte Steffes et al

Patent Trial and Appeal Board

Feb 8, 2017

13677234 (P.T.A.B. Feb. 8, 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.
13/677,234 11/14/2012 Edward Charles Steffes JR. 2109-0122.01 1107
26568 7590 02/10/2017
TOOK AT F.y T TD
EXAMINER
SUITE 2850 GARFT, CHRISTOPHER
200 WEST ADAMS STREET
CHICAGO, IL 60606 ART UNIT PAPER NUMBER
3632
NOTIFICATION DATE DELIVERY MODE
02/10/2017 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):
docket @ cookalex. com
backup @ cookalex. com
cortiz@cookalex.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD CHARLES STEFFES, JR. and
PAUL MUSSCHOOT
Appeal 2015-005517
Application 13/677,234
Technology Center 3600
Before: CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner’s Final rejection of claims 1—17. Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
THE CLAIMED SUBJECT MATTER
The disclosed subject matter “is directed to a motor mount, and, in
particular, to a reconfigurable motor mount.” Spec. 11. Claims 1 and 17
Appeal 2015-005517
Application 13/677,234
are independent. Independent claim 1 is illustrative of the claims on appeal
and is reproduced below:
1. A reconfigurable motor mount comprising:
at least one connection point that has at least a first
configuration adapted to accept a first arrangement of fasteners
and a second configuration adapted to accept a second
arrangement of fasteners, the first and second arrangements of
fasteners being different from each other.
REFERENCES RELIED ON BY THE EXAMINER
Battig et al. US 7,229,061 B2 June 12, 2007
(“Battig”)
Bodily et al. US 2008/0265590 Al Oct. 30, 2008
(“Bodily”)
Orbeta US 2009/0188289 Al July 30, 2009
THE REJECTIONS ON APPEAL
Claims 1—8, 10—12, and 15—17 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Battig and Orbeta.
Claims 9, 13, and 14 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Battig, Orbeta, and Bodily.
ANALYSIS
Independent claim 1 recites in the preamble a reconfigurable “motor
mount.” Similarly, the preamble of independent claim 17 recites a “motor
mount” that is reconfigurable.
In discussing claims 1 and 17, “the Examiner is of the position that the
[Battig] device is capable of being used in a motor or with a motor and
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Application 13/677,234
therefore the limitation in the preamble is met.”1 Ans. 13; see also Final
Act. 2. Similarly, the Examiner states: “[fjurthermore, the Appellant does
not positively claim “a motor” in the claim and is only claiming a mount.
Therefore, the Examiner is of the position that Battig meets the limitation in
the pre-amble of the claim.” Ans. 13. The Examiner further notes that the
preamble is not always afforded patentable weight “where it merely recites
the purpose of a process or the intended use of a structure, and where the
body of the claim does not depend on the preamble for completeness but,
instead, the process steps or structural limitations are able to stand alone.”
Ans. 13—14; see also Final Act. 12. Regarding this last note, the Examiner
finds:
there is no mentioning of the motor at all in the body of the claim
and the body of the claim does not depend on the preamble for
completeness. It is the Examiner's position that the preamble of
Claims 1 and 17 are merely statements of the intended use of the
structure or the intended scenario in which “the mount” is
intended to be used.
Ans. 14.
Appellants disagree with this assessment by the Examiner and state
that “[i]n this regard, applicant submits that the term ‘motor mount’ is
essential to point out the invention defined [in] the claims.” App. Br. 3
(referencing Kropa v. Robie, 187 F.2d 150 (CCPA 1951) as cited in MPEP
2111.02). Appellants further contend, “[i]n addition, the term ‘motor
1 The Examiner supports this position stating Battig’s “‘Background of the
Invention’ section discusses that turbochargers are used in medium and
larger engines” and that Battig’s “Summary of the Invention also discloses
turbochargers being used in engines.” Ans. 13 (citing Battig 1:33—36 and
1:60-64).
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Application 13/677,234
mount’ is structural, and not simply a statement of purpose or intended use.”
App. Br. 3; see also Reply Br. 1.
The determination of whether a preamble limits a claim is made on a
case-by-case basis in light of the facts in each case; there is no litmus test
defining when a preamble limits the scope of a claim. MPEP § 2111.02
(citing Catalina Mktg. Int’l v. Coolsavings.com, Inc., 289 F.3d 801, 808,
(Fed. Cir. 2002)). In general, a preamble limits the invention if it recites
essential structure or steps, or if it is “necessary to give life, meaning, and
vitality” to the claim. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d
1298, 1305 (Fed. Cir. 1999). Conversely, a preamble is not limiting “where
a patentee defines a structurally complete invention in the claim body and
uses the preamble only to state a purpose or intended use for the invention.”
Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997).
As indicated supra, the Examiner relies on Battig for teaching a
device “capable of being used in an engine or motor.”2 Final Act. 2.
Appellants’ Specification, on the other hand, states that “certain
embodiments of the present invention” are configured for connecting a
motor “to a frame or a vibratory apparatus, such as a vibratory conveyor or
feeder.” Spec. 20, 21. Appellants assert that none of the references cited
disclose a motor mount as recited in claims 1 and 17. App. Br. 3.
Appellants explain:
A motor mount is a mount for a motor (see Fig. 1 of the instant
application), not a device capable of being used in an engine or
motor as suggested at paragraph 5 of the Final Office Action. In
2 Battig teaches a device for “fastening turbochargers to a base.” Battig
1:6—7. The Examiner does not equate a turbocharger to a motor, but instead
states that a turbocharger “is capable of being used in an engine or motor”
(Final Act. 2) or “in a motor or with a motor.” Ans. 13.
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Application 13/677,234
particular, applicant notes that the term “mount” has the meaning
of “frame” or “support,” such as an undercarriage or part on
which a device (such as a motor) rests in service. See, e.g.,
Webster's Third New International Dictionary 1477 (1976).
Thus, the motor mount is used to support the motor on another
structure, such as a vibratory conveyor, for example, not a device
capable of being us[ed] in a motor.
App. Br. 3; see also Reply Br. 1—2.
In the foregoing passage, Appellants underscore the structural
differences between a device for mounting a motor onto another structure,
i.e., a motor mount, from a device that is used in a motor, i.e., a
turbocharger. That is, Appellants clearly rely on the recitation of a motor
mount in the preambles of clams 1 and 17 to structurally distinguish the
reconfigurable motor mount of the claimed invention from the turbocharger
mount taught by Battig.
In the matter before us, Appellants’ preamble is directed to a “motor
mount,” in contrast to simply reciting a “mount.” In Kropa, our reviewing
court addressed an analogous situation and thus, Kropa is instructive for use
here. In Kropa, the claim preamble recited an “abrasive article” (and not
just an “article”). Kropa, 187 F.2d at 150. Our reviewing court stated, “it is
only by that phrase that it can be known that the subject matter defined by
the claims is comprised as an abrasive article.”3 Kropa, 187 F.2d at 152.
The Court continued stating, “[ejvery union of substances capable inter alia
of use as abrasive grains and a binder is not an ‘abrasive article’” because
“[t]he term calls forth a distinct relationship between” the grain and the resin
forming the article. Kropa, 187 F.2d at 152. Accordingly, the court stated
3 The Court stated that an abrasive article comprised abrasive grains and a
hardened binder. Kropa, 187 F.2d at 152.
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Application 13/677,234
that the preamble phrase was essential to point out the invention defined by
the claims and served to further define the structure claimed, i.e., “[i]n our
judgment those introductory words give life and meaning” to the claims.
Kropa, 187 F.2d at 152; see also MPEP § 2111.02.
Here, as indicated supra, Appellants did not address mounts in
general, but instead a “motor mount.” Similar to the holding in Kropa, not
every mount is a “motor mount” and the preamble employed by Appellants
set forth a distinct relationship or arrangement to the limitations that follow.
Accordingly, we agree with Appellants that the preamble term “motor
mount” is essential to point out the invention; is structural in nature; gives
life, meaning, and vitality to the claim; and as such, serves as a limitation to
define the claims. See App. Br. 3. Consequently, we agree with Appellants
that the preamble phrase “motor mount” distinguishes Appellants’ invention
from the Battig device that fastens “turbochargers to a base.” Battig 1:6—7;
see also Battig 1:60. In other words, the term “motor mount” recited in the
preambles of claims 1 and 17 defines the invention set forth in those claims
and is not simply a statement of purpose or intended use. Accordingly, we
are not persuaded that Battig discloses such structure or that the Examiner
articulates how Battig teaches the structure claimed.
Furthermore, Orbeta, which is directed to an electrically-operable
strike for locking and unlocking doors (Orbeta, Abstract), fails to cure the
deficiency of Battig in meeting the motor mount limitations of claims 1 and
17 discussed above.
For the foregoing reasons, we do not sustain the Examiner’s rejection
of independent claims 1 and 17 under 35 U.S.C. § 103 as unpatentable over
Battig and Orbeta. We likewise do not sustain the rejection of dependent
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claims 2—8, 10-12, 15, and 16, which are subject to the same grounds of
rejection. Further, regarding the rejection of dependent claims 9, 13, and 14
involving the additional teachings of Bodily (Final Act. 9—11), the Examiner
does not rely on Bodily in any way that would cure the deficiency of Battig.
We therefore do not sustain the Examiner’s rejection of dependent claims 9,
13, and 14.
DECISION
The Examiner’s rejections of claims 1—17 are reversed.
REVERSED
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