Hilmar Gensert

Patent Trials and Appeals Board

Sep 17, 2019

14827642 - (D) (P.T.A.B. Sep. 17, 2019)

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.
14/827,642 08/17/2015 Hilmar Gensert 051831-1810 2990
24504 7590 09/17/2019
THOMAS | HORSTEMEYER, LLP
3200 WINDY HILL ROAD, SE
SUITE 1600E
ATLANTA, GA 30339
EXAMINER
BATTULA, PRADEEP CHOUDARY
ART UNIT PAPER NUMBER
3725
NOTIFICATION DATE DELIVERY MODE
09/17/2019 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):
docketing@thomashorstemeyer.com
ozzie.liggins@tkhr.com
uspatents@tkhr.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HILMAR GENSERT
____________

Appeal 2017-011853
Application 14/827,642
Technology Center 3700
____________

Before JOSEPH A. FISCHETTI, ROBERT L. KINDER, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

KINDER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’s
rejections of claims 1–5 and 7–11. We have jurisdiction over this appeal
under 35 U.S.C. § 6(b).

We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. According to Appellant, “[t]he real party in interest of the
instant application is KAMAX Holding GmbH & Co. KG.” Appeal Br. 2.
Appeal 2017-011853
Application 14/827,642

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STATEMENT OF THE CASE
Appellant’s invention “relates to a pressing tool for producing
components by deforming and especially by cold forming,” wherein “[t]he
pressing tool includes a die and a punch.” Spec. 1, ll. 7–10. The formed
components may consist of screws, threaded bolts, ball pins and other
components with substantially symmetrical shape. Id. The invention more
specifically “relates to a die module set for a pressing tool including two
different cores and two different reinforcement rings.” Id. at 2, ll. 13–16.
“[A] first die includ[es] a first core and reinforcement rings or alternatively a
second die including the other core and only one of the reinforcement rings
can be composed thereof.” Id.
Illustrative Claim
1. A die module set for mounting different dies from different
combinations for a pressing tool, comprising:
a first core including a first inner diameter and a first outer
diameter;
a second core including a second inner diameter and a second
outer diameter, the second outer diameter of the second core
being greater than the first outer diameter of the first core;
a first reinforcement ring having a third inner diameter and a
third outer diameter, the third outer diameter of the first
reinforcement ring being identical to the second outer diameter
of the second core; and
a second reinforcement ring having a fourth inner diameter and
a fourth outer diameter, wherein the die module set comprises a
first die or a second die, the first outer diameter of the first core
and the third inner diameter of the first reinforcement ring as
well as the third outer diameter of the first reinforcement ring
and the fourth inner diameter of the second reinforcement ring
are coordinated in a way that the first die comprises the first
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Application 14/827,642

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core, the first reinforcement ring and the second reinforcement
ring, and
the second outer diameter of the second core and the fourth
inner diameter of the second reinforcement ring are coordinated
in a way that alternatively the second die comprises the second
core and the second reinforcement ring, but not the first
reinforcement ring.
Rejections
Claims Grounds References Office Action
Citation
1, 2, 5, and 8–
11
35 U.S.C.
§ 102(a)(1)
Akamatsu2 3–7
3, 4, and 7 35 U.S.C.
§ 103
Akamatsu and
Memmott3
7 and 8

ANALYSIS
Claim 1 is the only independent claim on appeal, with the rest of the
claims on appeal (i.e., claims 2–5 and 7–11) depending directly or ultimately
from independent claim 1. See Appeal Br., Claims App’x. Appellant
challenges whether Akamatsu discloses certain limitations of claim 1 as
discussed below. For the reasons set forth below, we find the Examiner’s
reasoning persuasive and affirm the rejections based on Akamatsu.
Appellant first argues that “Akamatsu does not disclose a die module
set designed and arranged such that different dies can be composed thereof.”
Appeal Br. 5. According to Appellant, “the elements relied upon in Figure
10 of Akamatsu by the [Examiner] are not part of a die module set for

2 Akamatsu, US 5,956,993, Sept. 28, 1999.
3 Memmott, US 7,540, 181 B1, June 2, 2009.
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Application 14/827,642

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composing different dies, but instead they are simply part of a die.” Id.
(emphases omitted). Similarly, Appellant argues that “Akamatsu does not
and cannot serve to mount different dies from different combinations of the
components since Akamatsu does not disclose modules as defined by the
present disclosure, but instead Akamatsu discloses elements that are part of
(only) one die having specific dimensions.” Reply Br. 3.
The Examiner responds that Claim 1 requires “that the die module set
is for mounting different dies from different combinations,” and “[t]his
indicates that the die module set is not for making up different dies but the
module set is used to make different mounting configurations for different
dies.” Answer 14 (emphasis added). The Examiner also notes “that all of
the elements of the die module set are parts that are combined to complete a
die,” and further, “it is seen in Akamatsu and the annotated drawings that the
die module set is presented by the completed die which comprises the two
dies claimed.” Id. The Examiner also finds that the preamble language of
“for mounting different dies from different combinations,” “is to intended
use,” but regardless, “[t]he claim language does not make it clear that it is
either a first die only or either a second die only that is made by the die
module set and not both that can be made or exist at the same time.” Id.
The Examiner determines “that the indicated dies of Akamatsu are capable
to be used independently in a pressing tool,” because “[e]ach of the dies of
Akamatsu can be used separately as the second core can be removed from
the construction and then another construction where the first core and
reinforcement ring are removed and the second core is placed at the top of
the die construction.” Id.
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As to this argument, we find the Examiner’s reasoning persuasive.
First, because the claim language “for mounting different dies from different
combinations for a pressing tool,” is intended use language found only in the
preamble, we find that this language does not limit the structure of the
claimed invention. See Catalina Mktg. Int’l v. Coolsavings.com, Inc., 289
F.3d 801, 808, (Fed. Cir. 2002). If the body of a claim fully and intrinsically
sets forth all of the limitations of the claimed invention, and the preamble
merely states, for example, the purpose or intended use of the invention,
rather than any distinct definition of any of the claimed invention’s
limitations, then the preamble is not considered a limitation and is of no
significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard
Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). Thus, Appellant’s arguments
that “Akamatsu does not disclose a die module set designed and arranged
such that different dies can be composed thereof,” are not persuasive
because they are not commensurate with the broadest reasonable
interpretation of claim 1. See also Answer 15 (“The claimed invention is
different from the disclosed invention.”).
Second, even if this intended use were considered a limitation, the
Examiner has persuasively established that Akamatsu discloses all the
claimed limitations of claim 1 as explained below.
Appellant challenges the meaning of the term “module.” Appellant
contends that the Examiner’s proposed claim construction for the term
“module” “is not a complete definition of the term ‘module’ and submits
that a module is further defined as ‘a separable component, frequently one
that is interchangeable with others, for assembly into units of differing size,
complexity, or function.’” Appeal Br. 7 (emphasis omitted). The
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Examiner’s proposed definition of module to mean “‘one of a set of parts
that can be connected or combined to build something,’” is broad, but
reasonable, based on the Specification. Appellant has not shown why its
proposed construction is the broadest reasonable interpretation.
Appellant contends that Akamatsu cannot mount different dies from
different combinations of the components because Akamatsu does not
disclose modules, but instead discloses elements that are part of only one die
having specific dimensions. Appeal Br. 6; Reply Br. 4. Based on the claim
language, we find the Examiner’s response more persuasive. See Answer
15. Specifically, we agree with the Examiner that “[t]he claimed invention
is different from the disclosed invention,” (id.) and many of the limitations
that Appellant argues are simply not part of the claimed invention. As noted
by the Examiner, “[t]he claimed invention is to a die module set for
mounting different dies, which makes the claim appear it is actually to die
mounts,” and the claim language of mounting different dies from different
combinations does not require mounting separate dies from different
combinations of the same pieces. Id. As also noted by the Examiner, claim
1 requires “alternatively the second die comprises the second core and the
second reinforcement ring, but not the first reinforcement ring,” but using
“the term ‘alternatively’ at the bottom of Claim 1 does not indicate . . .
separate dies, just the alternate configurations of the dies.” Answer 15
(emphasis omitted). Thus, contrary to Appellant’s contention, we see no
requirement in the claim that the first and second die cannot be used
together. See Appeal Br. 6.
Accordingly, the Examiner establishes adequately that the die module
set forth in independent claim 1 is anticipated by Akamatsu. Thus, we
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sustain the Examiner’s rejection of independent claim 1 under 35 U.S.C.
§ 102 based on Akamatsu.
Dependent Claims 2, 5, and 8–11
These dependent claims are not argued separately (see Appeal Br. 7),
and so they fall with independent claim 1. Thus, we sustain the Examiner’s
rejection of dependent claims 2, 5, and 8–11 under 35 U.S.C. § 102 based on
Akamatsu.
Dependent Claims 3, 4, and 7
Claims 3, 4, and 7 stand rejected under 35 U.S.C. § 103 over
Akamatsu and Memmott. Ans. 7. The Examiner has offered reasonable
explanation for combining Memmott with Akamatsu (Ans. 7–8) and
explained where each limitation of these claims is taught in the combination
(id.). These dependent claims are not argued separately (see Appeal Br. 8)
by Appellant, and so they fall with independent claim 1. Thus, we sustain
the Examiner’s rejection of dependent claims 3, 4, and 7 under 35 U.S.C.
§ 103 over Akamatsu and Memmott.

SUMMARY
Claim(s)
Rejected
Basis Affirmed Reversed
1, 2, 5, and 8–11 35 U.S.C. § 102(a)(1)
Akamatsu
1, 2, 5, and 8–
11

3, 4, and 7 35 U.S.C. § 103
Akamatsu and
Memmott
3, 4, and 7
Overall Outcome 1–5 and 7–11
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DECISION
We AFFIRM the Examiner’s rejections of claims 1–5 and 7–11.
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).
AFFIRMED