Ex Parte Vinshtok et al

Patent Trial and Appeal Board

Jun 15, 2016

11871971 (P.T.A.B. Jun. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111871,971 10/12/2007
95683 7590 06/17/2016
Ley dig, Voit & Mayer, Ltd, (Frankfurt office)
Two Prudential Plaza, Suite 4900
180 North Stetson Avenue
Chicago, IL 60601-6731
FIRST NAMED INVENTOR
Yevgeniy Vinshtok
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.
813066 7931
EXAMINER
MATHEW, FENN C
ART UNIT PAPER NUMBER
3781
NOTIFICATION DATE DELIVERY MODE
06/17/2016 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):
chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YEVGENIY VINSHTOK,
MICHAEL J. MCGOWAN, PETER BREH, RALF SIEGLER,
and MICHAEL BECKER
Appeal2014-007192
Application 11/871,971
Technology Center 3700
Before LYNNE H. BROWNE, MICHELLE R. OSINSKI, and
BRENT M. DOUGAL, Administrative Patent Judges.
DOUGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
19-33. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
Appeal2014-007192
Application 11/871,971
CLAIMED SUBJECT MATTER
The claims are directed to a sensor housing. Claim 19 is
representative and reads as follows:
19. A sensor housing comprising:
a basic body; and
at least a first tube section projecting from the basic body,
the first tube section having an outside thread that is interrupted
in a circumferential direction by a recessed facet,
wherein the sensor housing is formed from halves that are
molded and connected to each other along a molding seam such
that the facet extends on each side of the molding seam along the
first tube section in a longitudinal direction thereof.
REJECTION
Claims 19-33 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pyron (US 7,954,858 B2, iss. June 7, 2011), Fayfield (US
D442,563 S, iss. May 22, 2001), and Ford (US 5,700,977, iss. Dec. 23,
1997).
OPINION
The Examiner finds that Pyron discloses most of the limitations of
independent claim 1. See Final Act. 2. The Examiner further finds that
Fayfield teaches "a tube section having an outside thread (fig. 1) interrupted
by at least one recessed facet." Id. In addition, the Examiner finds that Ford
teaches "a seam created by joining two halves of a housing together." Id.
The Examiner determines that none of these references disclose "that the
seam intersects the facet," but reasons that this is just rearranging of parts
that requires routine skill in the art. Id. at 3 (citing In re Japikse, 181 F.2d
1019(CCPA1950).
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Appeal2014-007192
Application 11/871,971
Appellants argue that the references show separating the housing at
locations other than at the threads. See Appeal Br. 3--4. Appellants further
argue that even if the housing were separated at the threads, there is no
reason why the seam would be near a facet. Id.
The Examiner does not fully address these arguments, but rather
argues that it would simply be a matter of design choice to place the seam at
the facet. Answer 6-7. The Examiner cites In re Japikse, 86 USPQ 70
(CCPA 1950), for the proposition that rearranging parts of an invention
requires only routine skill in the art. Final Act. 3; Answer 6-7. In Japikse,
the court held that moving a starter switch to a location different from the
prior art was an obvious variation because the operation of the device would
not be modified. Appellants contend that in the present case, rearranging the
seam would modify operation of the device. Appeal Br. 3-5; Reply Br. 2-3.
In particular, Appellants contend that rearranging the seam so that it is along
the threaded tube section introduces potential misalignment of the threads
(Reply Br. 3), but that further rearranging of the seam so that the recessed
facet is intersected by the seam prevents any extra material at the molding
seam from interfering with screwing onto the outside thread (Appeal Br. 4
(citing Spec. 2:31-3:20)). Because the Examiner's proposed rearrangement
of the seam changes the structure and function of the modified Pyron device,
the modification is more than an obvious rearrangement or design choice.
See In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992) (finding of obvious design
choice precluded when claimed structure and the function it performs are
different from the prior art).
As to the applicability of "the obvious to try rationale" advanced by
the Examiner (Ans. 7), Appellants are correct that "even if the combination
did disclose a seam, there is an infinite number of possibilities for where to
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Appeal2014-007192
Application 11/871,971
position the seam on the molded part" such that an "obvious to try rationale"
is inapplicable (Reply Br. 3).
For the foregoing reasons, we do not sustain the Examiner's rejection
of independent claim 19, nor claims 20-33 which depend therefrom, under
35 U.S.C. § 103(a) as unpatentable over Pyron, Fayfield, and Ford.
DECISION
The Examiner's rejection of claims 19-33 is REVERSED.
REVERSED
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