Ex Parte Wolf et al

Patent Trial and Appeal Board

May 15, 2017

12884274 (P.T.A.B. May. 15, 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.
12/884,274 09/17/2010 Iwan Wolf 706856 6390
23548 7590 05/17/2017
LEYDIG VOIT & MAYER, LTD
700 THIRTEENTH ST. NW
SUITE 300
WASHINGTON, DC 20005-3960
EXAMINER
LONG, ROBERT FRANKLIN
ART UNIT PAPER NUMBER
3721
NOTIFICATION DATE DELIVERY MODE
05/17/2017 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):
DCpatent@leydig.com
Chgpatent @ ley dig. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IWAN WOLF, MARIO ZAHNER,
ROLF ERHARDT, and PETER GOEPFERT
Appeal 2015-006549
Application 12/884,274
Technology Center 3700
Before: LINDA E. HORNER, JILL D. HILL, 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 final rejection of
claims 1 and 3—21.1 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Our rules require that appeal briefs include a statement identifying, among
other matters, related appeals before the Board. 37 C.F.R. § 41.37(c)(1)(h).
Appellants’ Appeal Brief fails to identify the appeal filed on the same day as
this appeal in Patent Application No. 12/884,260 (Appeal No. 2015-
006548), which is owned by the same party as the application in this appeal
and is related to, directly affected by, and has a bearing on this appeal.
Appeal 2015-006549
Application 12/884,274
CLAIMED SUBJECT MATTER
The claims are directed to a device for transmitting energy to a
fastener. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A device for transmitting energy to a fastener comprising
a reaction chamber,
an energy-transmission element for transmitting energy
released in the reaction chamber to a fastener,
wherein the energy-transmission element can move in a
fastening direction,
wherein the energy-transmission element is oriented in the
fastening direction with an energy-receiving face adjacent to the
reaction chamber and
an energy-discharge face, and
a first supply channel opening into the reaction chamber
for feeding a first reagent to the reaction chamber, wherein the
first supply channel comprises
a feeder device for feeding the first reagent into the
reaction chamber and compressing the first reagent in the
reaction chamber, and
wherein the feeder device comprises
a stator,
a rotor having a rotational axis, and
a feeder element for rotatingly moving the
first reagent,
wherein the feeder element is locked on the
rotor.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Nishikawa US 2006/0225675 A1 Oct. 12, 2006
Panasik US 2008/0156842 A1 July 3, 2008
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Appeal 2015-006549
Application 12/884,274
REJECTIONS
Claims 1 and 3—21 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Panasik.
Claims 1 and 3—21 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Nishikawa or, alternatively, under 35 U.S.C. § 103(a) as
being unpatentable over Nishikawa and Panasik.
OPINION
Appellants argue that neither of the cited references teach or suggest
“a feeder device for feeding the first reagent into the reaction chamber and
compressing the first reagent in the reaction chamber” as required by claim
1. Appeal Br. 4 and 6; see also id. at 2—6. The Examiner finds that the fan
blades 42 and piston 44/46 of Panasik and the fan blades 14 and frame 11 of
Nishikawa each teach the above-referenced claim limitation. Final Act. 3,
5—6. In particular, the Examiner states “the fan blades [] compress the fuel
to at least some small degree/amount and [] the piston being driven also
compresses the fuel to provide combustion.” Ans. 2.
Concerning the compression by the fan blades, as noted by
Appellants, neither Panasik nor Nishikawa discuss compressing the fuel, but
rather discuss using the fan to mix the air and fuel immediately prior to
combustion. Appeal Br. 4—6; see, e.g., Panasik 129; Nishikawa 111.
Though it is possible that compression may occur in Panasik or Nishikawa,
no evidence is provided in support of a finding that compression is inherent
in the disclosure, or that “at least some small degree” of compression would
occur as a result of the fan blades. The fact that a certain result or
characteristic may occur or be present in the prior art is not sufficient to
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Appeal 2015-006549
Application 12/884,274
establish the inherency of that result or characteristic. In re Rijckaert, 9 F.3d
1531, 1534 (Fed. Cir. 1993).
Concerning compression by the piston or frame, we note that Panasik
and Nishikawa both teach that the purpose of the combustion is to advance
the piston to thereby drive a fastener. See, e.g., Panasik 129, Fig. 1;
Nishikawa 111, Fig. 2. In particular, fuel is injected into a chamber defined
at least in part by a frame and a piston, which fuel is then ignited to drive the
piston outward. Id. In this way, combustion of the fuel acts on the piston.
Thus, though the piston and frame momentarily contain the fuel prior to
combustion, neither Panasik nor Nishikawa support the Examiner’s position
that the piston and/or frame compress the fuel.
For these reasons, we do not sustain the Examiner’s rejections.
DECISION
The Examiner’s rejections of claims 1 and 3—21 are reversed.
REVERSED
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