Ex Parte Theel et alDownload PDFPatent Trial and Appeal BoardAug 30, 201813984489 (P.T.A.B. Aug. 30, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/984,489 10/03/2013 20151 7590 09/04/2018 HENRY M FEIEREISEN, LLC HENRY M FEIEREISEN 708 THIRD A VENUE SUITE 1501 NEW YORK, NY 10017 FIRST NAMED INVENTOR Thomas Theel 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 ATTORNEY DOCKET NO. CONFIRMATION NO. THEEL-2 1097 EXAMINER ROBERSON, JASON R ART UNIT PAPER NUMBER 3669 NOTIFICATION DATE DELIVERY MODE 09/04/2018 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): INFO@FEIEREISENLLC.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte THOMAS THEEL, MATTHIAS MUNTU, and VOLKER BREMEIER Appeal2017-000124 Application 13/984,489 Technology Center 3600 Before MICHAEL L. HOELTER, LYNNE H. BROWNE, and ANNETTE R. REIMERS, Administrative Patent Judges. BROWNE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Thomas Theel et al. (Appellants) appeal under 35 U.S.C. § 134(a) from the rejection of claims 7-12. Appellants' Representative presented oral argument on August 23, 2018. We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter a new ground of rejection pursuant to our authority under 37 C.F.R. § 41.50(b). Appeal2017-000124 Application 13/984,489 CLAIMED SUBJECT MATTER The claims are directed to a method and apparatus for stabilizing the running of a wobbling trailer. Spec. ,r 1. Claim 7, reproduced below, is illustrative of the claimed subject matter: 7. A method of stabilizing a running of a wobbling trailer which is towed by a vehicle, comprising: automatically braking a tandem including the trailer and the vehicle when an amplitude of an oscillation of the trailer is above a predetermined value; decelerating the tandem to a speed at which the amplitude of the oscillation of the trailer is below a predetermined value; with the wobbling trailer and in presence of a first driving speed of the tandem, decelerating the tandem more than with the wobbling trailer and in presence of a second speed of the tandem, which is smaller than the first driving speed; and carrying out the braking of the tandem in presence of the first driving speed at exceeding a lower value of the amplitude than in presence of the second driving speed. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Waldbauer Messano Traechtler US 2006/0204347 Al Sept. 14, 2006 US 7,338,335 Bl Mar. 4, 2008 US 2008/0255741 Al Oct. 16, 2008 REJECTIONS I. Claims 7, 8 11, and 12 stand rejected under 35 U.S.C. § I03(a) as unpatentable over Waldbauer and Traechtler. 1 1 This rejection includes claim 10 (Final Act. 5---6), but claim 10 depends from claim 9. Appeal Br. 9 (Claims App.). Accordingly, we understand claim 10 to stand rejected based on Waldbauer, Traechtler, and Messano. 2 Appeal2017-000124 Application 13/984,489 II. Claims 9 and 102 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Waldbauer, Traechtler, and Messano. DISCUSSION New Ground of Rejection Claims 7-12 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventors regard as the invention. In claim 7, it is unclear what is meant by the claim limitation "with the wobbling trailer and in presence of a first driving speed of the tandem, decelerating the tandem more than with the wobbling trailer and in presence of a second speed of the tandem, which is smaller than the first driving speed." Appeal Br. 9 (Claims App.). It appears that this limitation is incomplete in that it doesn't designate what happens "in presence of a second speed of the tandem." In other words, the claim language "with" appears to set up a contrast between the response to a wobbling trailer based on whether the tandem is traveling at a first speed, or at a lower second speed; however, no such comparison is claimed. Further, it is unclear how deceleration of the tandem occurs "more than with the wobbling trailer." Specifically, it is unclear what the phrase "more than with" means in this limitation. How does deceleration occur "more than with" the trailer if the trailer is part of the tandem? In addition, it is unclear what is meant by the limitation "carrying out the braking of the tandem in presence of the first driving speed at exceeding a lower value of the amplitude than in presence of the second driving 2 See fn. 1. 3 Appeal2017-000124 Application 13/984,489 speed." Id. Specifically, the phrase "at exceeding a lower value of the amplitude" is not understood. Claims 9-11 depend from claim 7 and likewise are indefinite. In claim 12 the phrase "so that with wobbling trailer and in the presence of a first driving speed, the tandem is decelerated more than with wobbling trailer and in the presence of a second driving speed of the tandem, which is smaller than the first driving speed" is indefinite for the same reasons the similar phrase in claim 7 is indefinite. Rejections I and II Having determined that claims 7-12 are indefinite, we cannot sustain the rejections of these claims under 35 U.S.C. § 103(a) because to do so would require speculation as to the scope of the claims. See In re Steele, 305 F.2d 859, 862---63 (CCPA 1962) (Holding that the Board erred in affirming a rejection of indefinite claims under 35 U.S.C. § 103(a)). DECISION The Examiner's rejections of claims 7-12 are REVERSED. We enter NEW GROUNDS OF REJECTION for claims 7-12 under 35 U.S.C. § 112, second paragraph. FINALITY OF DECISION This Decision contains new grounds of rejection pursuant to 37 C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Section 41.50(b) also provides: 4 Appeal2017-000124 Application 13/984,489 When the Board enters such a non-final decision, the Appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure§ 1214.01. REVERSED 37 C.F.R. § 4I.50(b) 5 Copy with citationCopy as parenthetical citation