10273094 (B.P.A.I. Oct. 28, 2010)

Ex Parte Streuer et al

Board of Patent Appeals and InterferencesOct 28, 2010

10273094 (B.P.A.I. Oct. 28, 2010)

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. 10/273,094 10/17/2002 Peter Streuer JCI-471 3149 20455 7590 10/28/2010 LATHROP & CLARK LLP 740 REGENT STREET SUITE 400 P.O. BOX 1507 MADISON, WI 537011507 EXAMINER HODGE, ROBERT W ART UNIT PAPER NUMBER 1729 MAIL DATE DELIVERY MODE 10/28/2010 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte PETER STREUER, CHRISTIAN ROSENKRANZ, and GEROLF RICHTER __________ Appeal 2009-013528 Application 10/273,094 Technology Center 1700 ____________ Before MICHAEL P. COLAIANNI, PETER F. KRATZ, and JEFFREY T. SMITH, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-013528 Application 10/273,094 2 Appellants appeal under 35 U.S.C. § 134 the final rejection of claims 1, 2, and 5-17. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We REVERSE. Appellants’ invention is directed to a starter battery for a motor vehicle having positive and negative electrodes arranged in a housing with separators between them (Spec. ¶ [0002]). Claim 1 is illustrative: 1. A starter battery for a motor vehicle comprising: a housing for the starter battery; a cover associated with the housing and comprising filling openings for introducing electrolyte into the housing; positive and negative electrodes arranged in the housing; separators located between the electrodes; at least one end pole arranged on the cover and associated with one of the electrodes; and a contact protection device comprising a rotatable wall surrounding the end pole and comprising insulating material, the contact protection device being substantially cylindrical and having at least one vertical slot in the rotatable wall sized and shaped to receive a connecting cable; wherein the contact protection device is held in a mounting ring connected to the cover such that the contact protection device is freely rotatable around the end pole to allow repositioning of a battery cable connected to the end pole when the contact protection device is held in place by the mounting ring. Appeal 2009-013528 Application 10/273,094 3 Appellants appeal the following rejections: 1. Claims 1, 2, 5, 11, and 12 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Turner (US Patent 5,021,305 issued Jun. 4, 1991) in view of Kostrivas (US Patent 5,525,438 issued Jun. 11, 1996). 2. Claims 6-9 and 13-16 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Turner in view of Kostrivas and McEwan (US Patent 4,693,948 issued Sept. 15, 1987). 3. Claims 10 and 17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Turner in view of Kostrivas, McEwan, and Gordon (US Patent 4,239,322 issued Dec. 16, 1980). ISSUE Did the Examiner err in determining that Turner teaches “a contact protection device comprising a rotatable wall surrounding the end pole . . . [that] is freely rotatable around the end pole . . . when the contact protection device is held in place by the mounting ring” (claim 1) or “a contact protection device comprising a rotatable wall surrounding the end pole . . . [and] attached by said attachment claws . . . wherein the contact protection device is freely rotatable around the end pole . . . when the contact protection device is held in place by the attachment claws” (claim 11)? We decide this issue in the affirmative. FACTUAL FINDINGS (FF) & ANALYSIS The Examiner relies on Turner to teach a mounting ring (seal 15 of Turner) and attachment claws (the portion of seal 15 that surrounds recess Appeal 2009-013528 Application 10/273,094 4 31 and grabs the contact protection device) that hold Turner’s contact protection device (21) (Ans. 3). The Examiner reasons that the contact protection device (21) “can be rotated around the end pole do sic [due] to the shape of the opening in the contact protection device” (Ans 4). The Examiner explains that Turner need only be capable of performing the functional limitation and that Turner’s contact protection device 21 can be rotated even to the slightest degree and therefore is fully capable of being “freely rotatable” (Ans. 7). The Examiner contends that Turner does not teach that the contact protection device is permanently bonded to the battery case and cannot be removed such that one of ordinary skill in the art would be able to rotate the contact protection device (base 21) of Turner even after a compressive force is applied to seal the base 21 to the battery case 19 (Ans. 7-8). The Examiner further finds that Turner’s seal 15 constitutes a mounting ring because it holds the contact protection device and the contact protection device is mounted onto said seal (Ans. 8). Regarding the attachment claws feature, the Examiner finds that Turner’s recess 31 is regarded as an attachment claw because “it is grabbing the contact protection device and the recess is on all sides of the terminal and therefore a plurality [of attachment claws] exists” (Ans. 8). Appellants argue that Turner does not teach a contact protection device that is freely rotatable around the end pole when the contact protection device is held in place by the mounting ring (claim 1) or attachment claws (claim 11) (App. Br. 7-13). Appellants contend that in the embodiments of Turner relied upon by the Examiner, Turner uses a putty like caulk (PERMAGUM®) to seal the terminal cap 10 to the battery case Appeal 2009-013528 Application 10/273,094 5 19 such that there would be no way to rotate the terminal cap without destroying the seal (App. Br. 10-11). We agree. The claims require that the contact protection device be freely rotatable “when . . . held in place by the mounting ring” (claim 1) or “when . . . held in place by the attachment claws” (claim 11). Thus, the claims require that the contact protection device be freely rotatable when it is being held in place by either the mounting ring or attachment claws. This claim construction is supported by Appellants’ Figure 2a which shows a mounting ring 5a, which holds the contact protection device in place but permits the contact protection device to rotate in an unhindered and free manner (Spec. ¶ [0017]). The Examiner’s rejections of the claims fail to address the features that require the contact protection device to be freely rotatable “when the contact protection device is held in place by the mounting ring” (emphasis added claim 1) or “when the contact protection device is held in place by the attachment claws” (emphasis added claim 11). Rather, the Examiner reasons that Turner’s contact protection device is capable of being rotated because Turner does not teach that the contact protection device is permanently bonded to the battery by the seal 15. However, the Examiner has not explained how rotating base 21 after compressing the base onto the seal would constitute free rotation when the contact protection device (i.e., base 21 with recess 31) is held in place by seal 15 (i.e., mounting ring) and attachment claws (recess 31). Though never clearly explained in the Office Actions or Answer, it appears that the Examiner differentiates between the holding and mounting functions of the seal 15 because he finds that the contact protection device (base 21) is Appeal 2009-013528 Application 10/273,094 6 mounted on seal 15 and also that seal 15 holds the base 21 in place. Presumably, seal 15 holds the base 21 in place after compressing the base 21 into the seal 15. Indeed, as shown in Turner’s Figure 5, which is relied upon by the Examiner as showing attachment claws (i.e., recess 31), a seal is formed by pressing base 21 into seal 15 such that seal 15 is forced around recess 31 (i.e., attachment claws) (Turner, col. 3, ll. 28-67; Ans. 3). However, rotating the base 21 after compression of the base onto the seal would not constitute free rotation when the base 21 is held in place by the seal 15 (i.e., mounting ring) because such rotation would appear to destroy the sealing and holding functions of the seal 15. Turner discloses that a hermetic, gas-tight seal is formed by applying a compressive force to the base 21 so as to press the base 21 into the seal 15 (the seal is preferably a putty like caulk called PERMAGUM®) (Turner, col. 4, ll. 5-9; col. 3, ll. 28- 63). Turner discloses that the cover will remain sealed until it is desired to access the terminals when the cover is removed and the base section can be separated to fully expose the connectors (Turner, col. 4, ll. 15-20). Accordingly, we agree with Appellants that rotating base 21 after compressing to seal would destroy Turner’s sought after hermetic seal and would result in the base 21 not being held by the seal (i.e., the base 21 is separated from the seal). In other words, Turner’s contact protection device (i.e., base 21) cannot be both held by seal 15 and freely rotatable as required by the claims. Contrary to the Examiner’s determination, Turner’s seal 15 (i.e., mounting ring) and base 21 with recess 31 (i.e., contact protection device with attachment claws) possess a structure that does not appear capable of performing the claimed functions (i.e., being freely rotatable when held in Appeal 2009-013528 Application 10/273,094 7 place by a mounting ring or attachment claws) as properly construed. The Examiner has not explained how base 21 is freely rotatable when held (i.e., sealed) by seal 15. The Examiner does not rely on any of the secondary references to teach or suggest the argued features. For these reasons, we reverse all of the Examiner’s § 103 rejections that rely on the combination of Turner and Kostrivas. DECISION The Examiner’s decision is reversed. ORDER REVERSED bar LATHROP & CLARK LLP 740 REGENT STREET SUITE 400 P.O. BOX 1507 MADISON, WI 53701-1507