Ex Parte Willim

Patent Trial and Appeal Board

Jun 14, 2017

13268003 (P.T.A.B. Jun. 14, 2017)

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.
298-574 1040
EXAMINER
ADAMS, NATHANIEL L
ART UNIT PAPER NUMBER
3654
MAIL DATE DELIVERY MODE
13/268,003 10/07/2011
28249 7590 06/14/2017
DILWORTH & BARRESE, LLP
Dilworth & Barrese, LLP
1000 WOODBURY ROAD
SUITE 405
WOODBURY, NY 11797
Hans-Dieter Willim
06/14/2017 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 HANS-DIETER WILLIM
Appeal 2015-006766
Application 13/268,003
Technology Center 3600
Before JOHN C. KERINS, BRANDON J. WARNER, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Hans-Dieter Willim (“Appellant”) appeals under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 1—21.1 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Appellant submits the real party in interest is Liebherr-Werk Ehingen
GmbH. Appeal Br. 3.
Appeal 2015-006766
Application 13/268,003
THE CLAIMED SUBJECT MATTER
Appellant’s invention “relates to a boom element for a telescopic
boom.” Spec. I.2 Claims 1, 7, and 10 are independent. Claim 1, reproduced
below, is illustrative of the claimed subject matter.
1. A telescopic boom comprising:
at least first and second boom elements defining a
longitudinal axis of the telescopic boom, each boom element
having a substantially quadrangular box-shaped hollow
structure with comer edges, wherein at least one component of
a pinning system is arranged in at least one of the comer edges
of the quadrangular box-shaped hollow stmcture, wherein the
second boom element can be pinned to the first boom element
by the pinning system for the purpose of fixed attachment of
said first and second boom elements, and the pinning system
includes at least one pin guide in which a respective pin is
guided and/or movable,
the telescopic boom further including a plurality of
spacer members each configured and dimensioned to be
positioned between the first and second boom elements at each
of four of their respective comer edges and having a cut out
linearly aligned with at least one cut out in at least one of the
respective comer edges and with the pin guide, wherein the
spacer members each have an arcuate convex outer surface
adjacent to and abutting an inner surface of the comer edge of
the second boom element and an opposite arcuate concave inner
surface adjacent to and abutting an outer surface of the comer
edge of the first boom element,
a first support point positioned on the outer surface of the
first boom element,
a second support point positioned on the inner surface of
the second boom element,
wherein said spacer is positioned between the first and
second support points,
2 References to “Spec.” herein are to the Specification filed Dec. 12, 2011.
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Application 13/268,003
wherein said spacer is positioned apart from at least one
of the support points when said first boom element is in a non-
extended position relative to the second boom element, and
wherein said spacer abuts both the first and second
support points when said first boom element is in a fully
extended position relative to the second boom element.
REJECTIONS
1) Claims 7—11 are rejected under 35 U.S.C. § 112, second paragraph
as being indefinite.3
2) Claims 1, 4, 6, 7, 10, 11, and 20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Rao (US 4,036,372, issued July 19,
1977) and Kaspar (US 5,865,328, issued Feb. 2, 1999).
3) Claims 2, 8, 9, 15, and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Rao, Kaspar, and Brockelmann (US 6,527,131
Bl, issued Mar. 4, 2003).
4) Claims 3, 5, 14, 17, and 21 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Rao, Kaspar, and DE ’056 (DE 20014056 Ul,
published Jan. 3, 2002).
5) Claims 12, 13, 18, and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Rao, Kaspar, Brockelmann, and DE ’056.
DISCUSSION
Claims 1—21
New Ground of Rejection—35 U.S.C. § 112, second paragraph
We exercise our discretion under 37 C.F.R. § 41.50(b) and enter a
NEW GROUND OF REJECTION against claims 1-21 under 35 U.S.C.
3 This rejection is a New Ground of Rejection entered in the Answer. Ans.
2-3.
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Appeal 2015-006766
Application 13/268,003
§112, second paragraph, as being indefinite for failure to particularly point
out and distinctly claim the subject matter which Appellant regards as the
invention. “As the statutory language of ‘particularity]’ and ‘distinctness]’
indicates, claims are required to be cast in clear—as opposed to ambiguous,
vague, indefinite—terms.” In re Packard, 751 F.3d 1307, 1313 (Fed. Cir.
2014) (citation omitted). “It is the [Appellant’s] burden to precisely define
the invention, not the PTO’s.” In re Morris, 111 F.3d 1048, 1056 (Fed. Cir.
1997).
The Examiner rejected claim 1 based on a combination of Rao and
Kaspar. Final Act. The Examiner entered an Amendment After Final,
which Appellant submitted in an attempt to overcome the final rejection.
Adv. Act. 1 (mailed Jan. 9, 2015). The Examiner maintained the rejection of
claim 1 based on Rao and Kaspar. Id. at 2; Ans. 3—7. The dispute in this
appeal is centered on the following limitations of claim 1, which were added
by the after-final claim amendment:
a first support point positioned on the outer surface of the
first boom element,
a second support point positioned on the inner surface of
the second boom element,
wherein said spacer is positioned between the first and
second support points,
wherein said spacer is positioned apart from at least one
of the support points when said first boom element is in a non-
extended position relative to the second boom element, and
wherein said spacer abuts both the first and second
support points when said first boom element is in a fully
extended position relative to the second boom element.
Appeal Br. 15—16 (Claims App) (emphasis added).4
4 The same limitations were also added to independent claims 7 and 10.
Appeal Br. 18—20 (Claims App.).
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Appeal 2015-006766
Application 13/268,003
Claim 1 recites “a plurality of spacer members each . . . having a cut
out linearly aligned with at least one cut out in at least one of the respective
comer edges and with the pin guide.”5 Appellant’s Specification describes
“support shells 200 [that] cause or define the spacing between the telescopic
sections.” Spec. 12. Appellant’s Figures 1 and 11 illustrate that support
shells 200 have a cut out aligned with comer edge 20 and pin guide 104. Id.
at 14, Figs. 1,11. The Specification also provides that support shells 200
serve “as rear support points.” Id. at 14—15. The Specification further
describes a “pushing-out process” illustrated in Figures 19 and 20. Id. at 16.
During the pushing out process, “support shell 200 of the telescopic section
3 pushes the spacer 201 in the direction of the front support point 202. At
the end of the pushing-out process, the spacer 201 is pressed toward the
front support point 202.” Id. (emphasis added); see also Figs. 19, 20.
Appellant’s Figure 15 illustrates that spacer 201, unlike support shell 200,
does not align with comer edge 20 and pin guide 104. See id. at Fig. 15.
Consequently, the recitation of “said spacer” lacks proper antecedent basis
and renders claim 1 indefinite because the Specification discloses that spacer
201 is distinct from support shell 200 and not one of the “plurality of spacer
members.” Further, support shell 200, which also serves as a spacer, is the
rear support point and thus, cannot be the spacer “positioned between the
first and second support points” as recited in claim 1.
5 Claims 7 and 10 recite “a plurality of L-shaped spacer members.” Appeal
Br. 18, 20 (Claims App.) (emphasis added). For the purposes of this new
ground of rejection, the additional limitation of “L-shaped” is immaterial to
our analysis.
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Application 13/268,003
For the foregoing reasons, we enter a new ground of rejection against
independent claims 1, 7, and 10, and claims 2—6, 8, 9, and 11—21, which
depend directly or indirectly from claims 1, 7, or 10, under 35 U.S.C. § 112,
second paragraph, for failure to particularly point out and distinctly claim
the subject matter which Appellant regards as the invention.
Rejection 1
The Examiner rejects claims 7 and 10 under 35 U.S.C. § 112, second
paragraph, because the “recitations ‘the first boom element’ and ‘the second
boom element’ . . . lack antecedent basis.” Ans. 3. Appellant did not file a
reply brief or otherwise address the new ground of rejection. We summarily
affirm the Examiner’s rejection of claims 7 and 10 and claims 8, 9, and 11,
which depend from claims 7 or 10, under 35 U.S.C. § 112, second paragraph
on the additional grounds set forth by the Examiner.
Rejections 2, 3, 4, and 5
We do not sustain the rejections of claims 1—21 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Rao and Kaspar,
with various additional disclosures from Brockelmann and DE ’056, because
these rejections are necessarily based on speculative assumptions as to the
meaning of the claims for the reasons stated above in the New Ground of
Rejection. See In re Steele, 305 F.2d 859, 862—63 (CCPA 1962). Our
decision regarding these rejections is based solely on the indefmiteness of
the claims. We emphasize that our decision does not mean the claims are
patentable. Rather, we leave the patentability determination of these claims
to the Examiner, should the indefmiteness issues be resolved. See MPEP
§ 1213.02.
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Application 13/268,003
DECISION
The Examiner’s decision rejecting claims 7—11 under 35 U.S.C.
§112, second paragraph, is affirmed.
The Examiner’s decision rejecting claims 1—21 under 35 U.S.C.
§ 103(a) is reversed.
We enter a new ground of rejection against claims 1—21 under
35 U.S.C. § 112, second paragraph, pursuant to our authority under 37 C.F.R
§ 41.50(b).
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision, the
[Ajppellant, 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
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Application 13/268,003
claims, [Ajppellant 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART; 37 C.F.R, $ 41.50(b)
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