Ex Parte Thye-MoormannDownload PDFPatent Trial and Appeal BoardAug 16, 201612520910 (P.T.A.B. Aug. 16, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/520,910 0612312009 Frank Thye-Moormann 22850 7590 08/18/2016 OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP, 1940 DUKE STREET ALEXANDRIA, VA 22314 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. 343995US6PCT 2170 EXAMINER BURCH, MELODY M ART UNIT PAPER NUMBER 3657 NOTIFICATION DATE DELIVERY MODE 08/18/2016 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): patentdocket@oblon.com oblonpat@oblon.com ahudgens@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FRANK THYE-MOORMANN Appeal2014-003037 1 Application 12/520,910 Technology Center 3600 Before CHARLES N. GREENHUT, JILL D. HILL, and ERIC C. JESCHKE, Administrative Patent Judges. JESCHKE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Frank Thye-Moormann (Appellant)2 seeks review, under 35 U.S.C. § 134(a), of the Examiner's decision to reject claims 1-9 and 11-20. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM, designating the affirmance of the rejection under 35 U.S.C. § 112, second paragraph, as a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). 1 The record includes a transcript of the oral hearing held on July 19, 2016. 2 Appellant identifies BASF SE as the real party in interest. Appeal Br. 1. Appeal2014-003037 Application 12/520,910 BACKGROUND The disclosed subject matter "relates to a spring element based on elastic material." Spec. 1, 1. 5. 3 Claims 1, 6, 7, and 12 are independent. Claim 1 is reproduced below: 1. A spring element with a geometry which is substantially concentric along the spring axis, compnsmg: a main body including at least one elastomer, the main body including a plurality of contour elements having a circular cross-section located on opposite sides of the spring axis from each other along a line perpendicular to the spring axis, the plurality of contour elements each extending along an element axis and having the circular cross- section in a plane perpendicular to the element axis, and the element axis makes an angle of 0° to 45° with the spring axis. REJECTIONS 1. Claims 1-9 and 11-20 are rejected under 35 U.S.C. § 112, second paragraph, as failing to particularly point out and distinctly claim the subject matter regarded as the invention. 2. Claims 1, 2, 4-9, and 11-20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Cao (US 7,624,462 B2, issued Dec. 1, 2009). 3. Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable over Cao and DE '895 (DE 203 13 895 U 1, issued Dec. 18, 2003). 3 All citations to the Specification refer to the page and line numbering in the version dated June 23, 2009. 2 Appeal2014-003037 Application 12/520,910 DISCUSSION Rejection 1 - The rejection of claims 1-9 and 11-20 under 35 U.S. C. § 112, second paragraph The Examiner rejects all of the independent claims, finding that "[t]he phrase each contour element 'having the circular cross-section in a plane perpendicular to the element axis' is indefinite." Final Act. 3 (dated Apr. 16, 2013). The Examiner stated "the cross-section of the elements in a plane perpendicular to the element axis is oval at best but not circular." Id. Appellant argues that "Figure 2b shows that element iii has a cylindrical shape with a diameter c around element axis iv" and that "page 4, lines 17-24 [of the Specification] clearly describe that the element iii is a cylinder with diameter c." Appeal Br. 3. Appellant contends that "[a]lthough the elements iii in Figure Id may appear to have an oval crosssection due to the perspective angle, this does not render any of the claims indefinite, as the [S]pecification and Figure 2b clearly show and describe elements with a circular cross-section." Id. at 4. A claim fails to comply with 35 U.S.C. § 112, second paragraph, "when it contains words or phrases whose meaning is unclear." In re Packard, 751F.3d1307, 1310, 1314 (Fed. Cir. 2014) (approving, forpre- issuance claims, the standard from MPEP § 2173.05(e)). A "satisfactory response" to a rejection under 35 U.S.C. § 112, second paragraph, "can take the form of a modification of the language identified as unclear, a separate definition of the unclear language, or, in an appropriate case, a persuasive explanation for the record of why the language at issue is not actually unclear." Packard, 751 F.3d at 1311. To address this Rejection, we must distinguish between ( 1) the recited "contour elements" (see, e.g., (iii) in Figures la through Id) and (2) the 3 Appeal2014-003037 Application 12/520,910 cylinders that dejzne the recited "contour elements." See Ans. 6 (discussing an annotated version of Figure 2b from the Specification and noting that "while a portion (the leftmost portion) of the left side of the diameter ( c) is shown to be associated with the contour element (iii), the right portions of the diameter ( c) are completely disassociated and spaced from the contour element (iii) and the spring body (i)"). The Specification, in describing Figure 2b, provides that contour element (iii) "is defined by a cylinder with a diameter c, the center axis (iv) of which intersects with the perpendicular (v) to the spring axis (ii) at point A." Spec. 4, 11. 20-22 (emphasis added). The limitations at issue, however, recite "the plurality of contour elements each extending along an element axis and having the circular cross-section in a plane perpendicular to the element axis, and the element axis makes an angle of 0° to 45° with the spring axis" or similar language. Appeal Br. V-i (claim 1), V-ii (claims 6 and 7); see also id. at V-iii (providing similar language for claim 12). Thus, the limitations at issue appear to describe the "contour elements" themselves but actually recite features describing the cylinders used to define the "contour elements." See Ans. 6 ("Examiner agrees that a cylinder has a circular cross-section, but disagrees that the contour elements of the instant invention are cylinders as Appellant's arguments seem to suggest."). Because the Examiner has shown that the claims recite phrases that are unclear, and because Appellant has not demonstrated otherwise, we sustain this Rejection.4 See Packard, 751 F.3d at 1311. 4 To resolve this lack of clarity, the limitations at issue in claims 1, 6, and 7 could, for example, be amended to recite "the plurality of contour elements 4 Appeal2014-003037 Application 12/520,910 We also note that each of the independent claims recites additional language subject to the same lack of clarity. Claims 1, 6, and 7 each recites "a plurality of contour elements having a circular cross-section" and claim 12 recites "6 or 8 contour elements having a circular cross-section." Appeal Br. V-i to V-iii. 5 Because this finding of indefiniteness adds to those of the Examiner outlined above, we designate our affirmance as a new ground of rejection under 37 C.F.R. § 41.50(b) to provide Appellant with a full and fair opportunity to respond to the Rejection, as modified. Rejection 2 -The rejection of claims 1, 2, 4-9 and 11-20 under 35 U.S.C. § 103(a) Addressing all of the independent claims in this Rejection, the Examiner relied on Cao for various limitations but stated that Cao is "silent with regards to the cross-section specifically being circular along with the particular diameter and the particular angle." Final Act. 4. The Examiner stated "that since Applicant provides no explanation of criticality with respect to the cross-sections specifically being circular or the angles being a each defined by a cylinder extending along an element axis and having the circular cross-section in a plane perpendicular to the element axis, and the element axis makes an angle of 0° to 45° with the spring axis." Appeal Br. V-i, V-ii (showing proposed added language in underline). The limitation at issue in claim 12 could, for example, be amended to recite: "each contour element defined by a cylinder extending along an element axis and having the circular cross-section in a plane perpendicular to the element axis, and the element axis makes an angle of 0° to 45° with the spring axis." Id. at V- iii (showing proposed added language in underline). 5 To resolve this lack of clarity, these limitations could, for example, be amended to recite "contour elements each defined by a cylinder having a circular cross-section." 5 Appeal2014-003037 Application 12/520,910 certain size, [Jn re Dailey, 357 F.2d 669 (CCPA 1966)] serves as sufficient motivation for the modification." Id. at 4--5. The Examiner also stated that with regards to the particular angle ranges, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have modified the angle to have been between 0 and 22.5 degrees or between 5 and 15 degrees since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. Id. at 5 (citing In re Aller, 220 F .2d 454 (CCP A 1955)). Appellant notes that "well settled case law holds that the cited art must recognize a particular parameter as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation" and argues that "[i]n the present case, Cao does not even mention an angle between an axis of the notches or indentations and a spring axis, much less identify such an angle as a result effective variable." Appeal Br. 5 (emphasis omitted) (citing In re Antonie, 559 F .2d 618 (CCP A 1977) and MPEP § 2144.05). We agree. Each of the independent claims requires an angle of between 0° and 45° between the "element axis" and the "spring axis." Here, the Examiner has not sufficiently demonstrated that the claimed angle is recognized by the prior art as a result-effective variable to adjust the response characteristics of a spring body. In an effort to establish this factual predicate, the Examiner relies on column 8, lines 3 to 12 of Cao, which, according to the Examiner, "explains that the depth, which controls the shape of the contour elements, can be altered to achieve desired spring body characteristics." Ans. 11. Based on this disclosure, the Examiner "maintains that the angle between the 6 Appeal2014-003037 Application 12/520,910 element axis and the spring body also affects the shape and consequently has an effect on the spring body characteristics." Id. Although the relied-upon discussion does demonstrate that by adjusting the depth of a formation (and thereby the overall shape of the element) one can realize the "desired physical characteristics sought for [the] element," it does not show that the prior art recognized that any characteristic modifying the overall shape (such as, for example, a "contour element" defined by a cylinder characterized, in part, by the "angle" at issue) could be effective in adjusting the desired response characteristics, as implied by the Examiner. See Ans. 11; see also Antonie, 559 F.2d at 620 ("The PTO and the minority appear to argue that it would always be obvious for one of ordinary skill in the art to try varying every parameter of a system in order to optimize the effectiveness of the system even if there is no evidence in the record that the prior art recognized that particular parameter affected the result." (emphasis added)). For these reasons, we are persuaded of error in this basis for the Rejection. We tum now to the Examiner's identification of an "element axis" and "spring axis" in an annotated version of Figure 2 of Cao. See Final Act. 7; Ans. 9. This finding appears to be an alternative basis-aside from design choice and optimization (Final Act. 5}-to address the "angle" limitations discussed above. See Final Act. 6 ("Applicant argues that the outstanding office action concedes that Cao does not teach or suggest any angle between an axis of the notches or indentations and a spring axis. Examiner disagrees that the office action conceded that Cao does not teach or suggest any angle."). Appellant contends that Cao "does not identify any element axis, much less identify any angle between an element axis and spring axis or 7 Appeal2014-003037 Application 12/520,910 identify such an angle as a result effective variable" and also "does not state that the figures are to scale, and patent drawings are not necessarily to scale." Appeal Br. 5. The Examiner responds that the annotated version of Figure 2 of Cao shows "how Cao teaches contour element (25) extending along an element axis (Element axis (1 )), and the element axis makes an angle ( e) of 0 to 45 degrees with the spring axis which is drawn parallel to axis 24." Ans. 9-10. The Examiner states that the Specification "does not describe an element axis but instead refers to a center axis of an abstract cylinder" and states that, "[a]s a result of the element axis phrase not being tightly defined, Examiner is able to pick from a vast selection of element axes associated with the contour 25 of Cao to represent the recited element axis forming an angle ( e) between 0 and 45 degrees with the spring axis." Id. at 10. We do not agree that the identified "Element axis ( 1)" satisfies the recited "element axis." As disclosed in the Specification, the "element axis" provides the center axis for a cylinder that defines the "contour element." See Spec. 4, 11. 20-22. Thus, the "element axis" extends parallel to the length of the "contour element." See, e.g., Spec. Figs. 2a, 2b. In contrast, the identified "Element axis (1 )"extends perpendicular to the length of the identified "contour element"-indentation 25 in Cao. Compare Ans. 9, with Cao, Figs. 1, 2; see also Reply Br. 2-3 ("Note in Fig. 1 of Cao that all of the 'contour elements' (25, 26, 27) cited by the Examiner actually 'extend' in a horizontal manner with respect to the vertically-shown 'spring axis' across the outer surface of the spring. As such, the 'element axis' of elements (25, 26, 27), cannot ever make any angle with the axis regardless of the range, as there is no chance of intersection."). Thus, we do not sustain the rejection of 8 Appeal2014-003037 Application 12/520,910 independent claim 1, and do not sustain the rejection of claims 2, 4, 5, 8, 9, 11, 14 and 18, which depend from claim 1. As with claim 1, independent claims 6, 7, and 12 each recites that "the element axis makes an angle of 0° to 45° with the spring axis." Appeal Br. V-ii to V-iii (Claims App.). For claims 6, 7, and 12 (and their dependent claims in this Rejection), the Examiner again relies on In re Aller to support the conclusion of obviousness, in the same manner discussed above with regard to claim 1. See Final Act. 4--5. Thus, we also do not sustain the rejection of claims 6, 7, 12, 13, 15-17, 19, and 20. Rejection 3 - The rejection of claim 3 under 35 U.S.C. § 103(a) Claim 3 depends from claim 1. Appeal Br. V-i (Claims App.). The Examiner's added reliance on DE '895 does not remedy the deficiencies discussed above (see supra Rejection 2). Thus, for the same reasons discussed above, we do not sustain the rejection of claim 3. DECISION We AFFIRM the decision to reject claims 1-9 and 11-20 under 35 U.S.C. § 112, second paragraph, designating the affirmance as a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). We REVERSE the decision to reject claims 1-9 and 11-20 under 35 U.S.C. § 103(a).6 6 See 37 C.F.R. § 41.50(a)(l) ("The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision 9 Appeal2014-003037 Application 12/520,910 FINALITY OF DECISION This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(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: 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. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). of the examiner on that claim, except as to any ground specifically reversed."). 10 Appeal2014-003037 Application 12/520,910 AFFIRMED; 37 C.F.R. § 41.50(b) 11 Copy with citationCopy as parenthetical citation