Ex Parte Wasser et al

Patent Trial and Appeal Board

Sep 24, 2012

11250578 (P.T.A.B. Sep. 24, 2012)

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.
11/250,578 10/17/2005 Tobias Wasser WASS3001/FJD 4949
23364 7590 01/16/2013
BACON & THOMAS, PLLC
625 SLATERS LANE
FOURTH FLOOR
ALEXANDRIA, VA 22314-1176
EXAMINER
CHAUDRY, ATIF H
ART UNIT PAPER NUMBER
3753
MAIL DATE DELIVERY MODE
01/16/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TOBIAS WASSER and JOHANNES BAUMGARTNER
____________

Appeal 2010-008748
Application 11/250,578
Technology Center 3700
____________

Before: JENNIFER D. BAHR, MICHAEL L. HOELTER, and
JOHN W. MORRISON, Administrative Patent Judges.

MORRISON, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

STATEMENT OF THE CASE
Appellants filed a request for rehearing under 37 C.F.R. § 41.52
(hereinafter “Request”), dated November 26, 2012, of our decision mailed
September 25, 2012 (hereinafter “Decision”). In that Decision, we affirmed
the Examiner’s rejection under 35 U.S.C. § 102 of claims 11, 14, and, 19,
and affirmed the Examiners rejections under 35 U.S.C. §103 of claims 12,
15-18, and 20
Appeal 2010-008748
Application 11/250,578

2
OPINION
Appellants present three points which they contend the Board has
misapprehended or overlooked. We grant the Request to the extent that we
have considered Appellants’ arguments but otherwise deny the Request.
The first point which Appellants contend the Board misapprehended
or overlooked is that the Board allegedly misinterpreted that rotation of 90°
is not rotation. The Appellants contend “[m]ovement about a fixed axis
which is less than 360° is not a rotation but instead a segmental movement.”
See Request 1.
The primary dictionary definition of rotation is “the action or process
of rotating on or as if on an axis or center” Merriam-Webster,
http://www.merriam-webster.com/dictionary/rotation, (last visited December
21, 2012). The 90° movement around an axis of Allenbaugh is rotation
according to this definition. The Appellants propose the use of the
secondary definition of “one complete turn” Id. However, claim 1 requires
that “torque introduced via the valve blocks rotation of said drive shaft.”
The Appellants’ disclosed structure immediately (or with very small
rotational movement) prevents rotation about the axis. Nothing in
Appellants’ Specification indicates that the rotation is only blocked after a
full 360° of rotating about the axis. Therefore, the broadest reasonable
interpretation is that rotation is “any action or process of rotating on the axis
or center” and does not require a “complete turn.” The Appellants’
arguments are not persuasive, as the disclosed device functions consistently
with the first definition, and does not function in a manner that would
indicate that a full rotation is required to block rotation of the drive shaft.
Appeal 2010-008748
Application 11/250,578

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The second point which Appellants contend the Board
misapprehended or overlooked is that the Board allegedly misinterpreted
that “[a] drive shaft does not refer to a member which only moves through a
segment or arc. Rotary movement cannot be imparted that way.” See
Request 2. As discussed above, the claims do not require a “complete turn”,
and the structure disclosed by Appellants functions identically to the prior
art when rotated less than 360°.
The last point which Appellants contend the Board misapprehended or
overlooked is that the Board allegedly needs to reconsider the obviousness
rejections under U.S.C. §103(a). There is no need for such reconsideration.
Claim 1 is anticipated by Allenbaugh. Other than arguments against the
disclosures of Allenbaugh, Appellants fail to advance specific arguments
that would show that Examiner erred in any of the obviousness rejections to
claims 12, 15-18, and 20.
For the above reasons, the arguments in Appellants’ Request do not
convince us that we erred in affirming the Examiner’s rejection under 35
U.S.C. § 102 of claims 11, 14, and, 19, or erred in affirming the Examiner’s
rejections under 35 U.S.C. §103 of claims 12, 15-18, and 20.

DECISION
Appellants’ Request has been granted to the extent that we have
reconsidered our Decision in light of the arguments in Appellants’ Request,
but is denied with respect to our making any modification to the Decision.

Appeal 2010-008748
Application 11/250,578

4
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

DENIED

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