Finkbeiner, Gerhard

Patent Trials and Appeals Board

Mar 4, 2020

13262247 - (D) (P.T.A.B. Mar. 4, 2020)

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.
13/262,247 09/30/2011 Gerhard Finkbeiner MAMMP0105US 8690
23908 7590 03/04/2020
RENNER OTTO BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
NINETEENTH FLOOR
CLEVELAND, OH 44115
EXAMINER
YOON, SEAHEE
ART UNIT PAPER NUMBER
3723
NOTIFICATION DATE DELIVERY MODE
03/04/2020 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):
ipdocket@rennerotto.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERHARD FINKBEINER
Appeal 2019-003048
Application 13/262,247
Technology Center 3700
BEFORE JILL D. HILL, JEREMY M. PLENZLER, and
PAUL J. KORNICZKY, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–5, 9, 13–19, 21, and 24–27.2 We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as the inventor,
Gerhard Finkbeiner. Appeal Br. 2.
2 Claims 22 and 23 are pending, but objected to as dependent from a rejected
claim while including allowable subject matter. Final Act. 8.
Appeal 2019-003048
Application 13/262,247

2
CLAIMED SUBJECT MATTER
The claims are directed to a lifting device. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A lifting device for lifting loads or vehicles comprising:
a lifting column provided on a base device;
a carrier positioned to move up and down in relation to the
lifting column, the carrier having a sleeve-shaped or cartridge-
shaped design which at least partly surrounds the lifting column;
a load handling attachment arranged on the carrier;
a drive unit comprising a drive element and a hydraulic
unit, the drive element is situated in the lifting column, the drive
element being a lifting cylinder; and the hydraulic unit is
provided on the carrier;
a control provided on the carrier for moving the carrier up
and down in relation to the lifting column, wherein the control is
an electronic unit that is configured for wireless communication
and communicates with further controls wirelessly for a
simultaneous lifting movement of the lifting device; and
at least one accumulator provided on the carrier.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Francis US 5,484,134 Jan. 16, 1996
Baker US 7,014,012 B2 Mar. 21, 2006
REJECTIONS
Claim 24 is rejected under 35 U.S.C. § 112, second paragraph, as
indefinite.
Claims 1–5, 9, 13, 16–19, 21, and 25–27 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Francis and Baker.
Appeal 2019-003048
Application 13/262,247

3
OPINION
Indefiniteness
The Final Action rejects claim 24 as indefinite. Final Act. 2.
Although the Examiner’s Answer does not list the indefiniteness rejection, it
states that “[e]very ground of rejection set forth in the Office action dated
3/7/2018 from which the appeal is taken is being maintained by the
examiner except for the grounds of rejection (if any) listed under the
subheading ‘WITHDRAWN REJECTIONS.’” Ans. 3. There are no
rejections listed as withdrawn in the Examiner’s Answer. Further, our
review of the record does not indicate that the indefiniteness rejection has
been withdrawn. Accordingly, we understand this rejection is pending.
Our rules state that Appellant’s “arguments shall explain why the
examiner erred as to each ground of rejection contested by appellant.” See
37 C.F.R. § 41.37(c)(1)(iv). “When the appellant fails to contest a ground of
rejection to the Board . . . the PTO may affirm the rejection of the group of
claims that the examiner rejected on that ground without considering the
merits of those rejections.” Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir.
2008). Accordingly, because there is no assertion of error by Appellant, we
summarily affirm the Examiner’s indefiniteness rejection.
Obviousness
Each of the claims requires a “drive element being a lifting cylinder”
that “is situated in the lifting column.” The Examiner finds that Francis
teaches “a lifting column 18” and a “drive element 50 . . . situated in the
lifting column.” Final Act. 3. Figure 2 of Francis is reproduced below.
Appeal 2019-003048
Application 13/262,247

4

“F[igure] 2 is a side elevational view, partially in section, of the vehicle
wheel lift and stand apparatus, illustrating a cradle assembly of the apparatus
in a raised position.” Francis 2:31–33. Francis explains that “the upper free
end of the post 18 is provided with a piston 50.” Id. at 3:39–40.
Appeal 2019-003048
Application 13/262,247

5
Appellant contends, consistent with the description reproduced above,
that “Francis does not disclose or even suggest a drive element that is
situated in the post 18, since the piston 50 is located above the post 18.”
Appeal Br. 10.
The Examiner responds that “[t]he phrase, ‘situated in’ does not
require the drive element to be ‘inside’ of the lifting column.” Ans. 3. The
Examiner bases this determination on an unsupported finding that “[i]t is
known in the art that the terms, ‘in[’], ‘inside’, and ‘into’ all have similar
meanings with subtle differences” and “[i]t is also commonly known that the
term ‘situated in’ does not require something to be ‘positioned inside.’” Id.
That is, the Examiner does not dispute that piston 50 is entirely outside of
post 18 in Francis. Rather, the basis for the Examiner’s rejection is that
piston 50 is “situated in” post 18 because it is near post 18. See id. (“with
the broadest reasonable interpretation, the drive element 50 is situated in (in
the place and in the area of) the lifting column 18”).
Based on the record before us, we see no support for the Examiner’s
broad interpretation of the phrase “situated in.” As noted above, the
Examiner fails to provide any evidence supporting this interpretation, and
does not explain, or even assert, that such an understanding is consistent
with the Specification. The Specification explains that the “lifting cylinder,
for example as a drive unit 18, is arranged in the lifting column 14 and
within the carrier 21” and “is therefore not accessible from the outside and is
protected.” Spec. 18:17–19. The Specification further explains that “this
configuration has the advantage that the upper guide element 41 and the
lower guide element 43 are always inside and therefore protected.” Id. at
18:20–22.
Appeal 2019-003048
Application 13/262,247

6
Consistent with the plain meaning of the term “in,” as well as the
Specification, the claim recitation that “the drive element is situated in the
lifting column” requires at least some part of the drive element to be within
the lifting column. Because the Examiner’s rejection lacks any finding
regarding an element meeting that claim limitation, we do not sustain the
Examiner’s decision to reject claims 1–5, 9, 13, 16–19, 21, and 25–27.
CONCLUSION
The Examiner’s indefiniteness rejection is affirmed and the
obviousness rejection is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
24 112 ¶ 2 24
1–5, 9, 13,
16–19, 21,
25–27
103(a) Francis, Baker 1–5, 9, 13,
16–19, 21,
25–27
Overall
Outcome
24 1–5, 9, 13,
16–19, 21,
25–27

TIME PERIOD FOR RESPONSE
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)(1)(iv).
AFFIRMED IN PART