KHS GmbH

Patent Trials and Appeals Board

May 4, 2021

2020005430 (P.T.A.B. May. 4, 2021)

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.
15/580,114 12/06/2017 Ludwig Clusserath 40047-346US1 8211
69713 7590 05/04/2021
OCCHIUTI & ROHLICEK LLP
50 Congress Street
Suite 1000
Boston, MA 02109
EXAMINER
STCLAIR, ANDREW D
ART UNIT PAPER NUMBER
3799
NOTIFICATION DATE DELIVERY MODE
05/04/2021 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):
INFO@ORPATENT.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LUDWIG CLUSSERATH, BERND BRUCH, and
DIETER-RUDOLF KRULITSCH
Appeal 2020-005430
Application 15/580,114
Technology Center 3700
Before BENJAMIN D. M. WOOD, BRANDON J. WARNER, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals2 from the
Examiner’s decision to reject claims 14, 16–24, and 26–35. See Final Act.
1. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as KHS GmbH. Appeal
Br. 1.
2 Appellant presented arguments during a telephonic hearing conducted on
April 26, 2021.
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Application 15/580,114
2
CLAIMED SUBJECT MATTER
Appellant’s disclosure is directed to an apparatus including a gaiter
seal adapted to suit user requirements at no additional expense. See Spec.
1:3–29. Claim 14, reproduced below, is illustrative of the claimed subject
matter:
14. An apparatus comprising
a gaiter seal,
a first gaiter-module,
a second gaiter-module, and
a first support-and-sliding element,
wherein said gaiter seal shields a functional element of a
container-processing machine, extends between parts of a
working head of said container-processing machine, and
surrounds said functional element at a distance therefrom, said
functional element being one of rod-shaped and tubular,
wherein said first and second gaiter modules form said
gaiter seal by being interconnected with one another along a
gaiter axis along which they extend, said first and second gaiter
modules being axially adjacent to and adjoining each other,
wherein said first supporting-and-sliding element is
disposed at between said first and second gaiter modules and is
configured for radially supporting and guiding said first and
second gaiter-modules along said functional element as said
functional element slides relative to said first supporting-and-
sliding element, and
wherein said first supporting-and-sliding element and said
first gaiter-module form a unitary structure.
Appeal Br. 47 (Claims App.).
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Uth US 3,799,219 Mar. 26, 1974
Friendship US 3,845,791 Nov. 5, 1974
Drevfors US 4,840,205 June 20, 1989
DeLano US 4,856,795 Aug. 15, 1989
LaWarre US 5,111,857 May 12, 1992
Hough US 6,464,268 B1 Oct. 15, 2002

REJECTIONS
I. Claims 14, 16–24, and 26–35 are rejected under 35 U.S.C.
§ 112(b) as indefinite.
II. Claims 14, 17, 22, 23, 26–28, and 30–35 are rejected under
35 U.S.C. § 103 as unpatentable over Drevfors.
III. Claim 16 is rejected under 35 U.S.C. § 103 as unpatentable
over Drevfors and DeLano.
IV. Claim 18 is rejected under 35 U.S.C. § 103 as unpatentable
over Drevfors and Hough.
V. Claims 19–21 are rejected under 35 U.S.C. § 103 as
unpatentable over Drevfors and LaWarre.
VI. Claim 24 is rejected under 35 U.S.C. § 103 as unpatentable
over Drevfors and Uth.
VII. Claim 29 is rejected under 35 U.S.C. § 103 as unpatentable
over Drevfors and Friendship.
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Application 15/580,114
4
OPINION
Rejection I (Indefiniteness)
Inferentially Recited Elements
The Examiner determines that, for multiple reasons, the scope of
claim 14 is unclear. See Final Act. 3–4. First, the Examiner takes issue with
the language “shields a functional element,” “surrounds,” and “extends
between,” stating that “[i]t is unclear whether the [claimed] apparatus
comprises the functional element, the working head, the entire container-
processing machine, all of those structures, some of those structures, or none
of those structures.” Id. at 4.
Appellant argues “the transition word ‘comprising’ [in claim 14] is
followed immediately by the four elements that are positively recited: 1. a
gaiter seal, 2. a first gaiter-module, 3. a second gaiter-module, and 4. a first
support-and-sliding element.” Appeal Br. 37. According to Appellant,
“[t]he ordinary artisan would have observed that the container-processing
machine is not one of these four objects of the ‘comprising.’ Thus, it would
have been obvious to the ordinary artisan that the container-processing
machine could not possibly be part of the claimed apparatus.” Id.
Additionally, Appellant states, “[t]he remainder of the claim is a set of
‘wherein’ clauses, each of which recites a relationship between selected ones
of the four objects of the verb ‘comprising.’ Since these are all ‘wherein’
clauses, they cannot add anything to the list of grammatical objects.” Id.
Appellant asserts that, “[a]ccording to the [E]xaminer, the law forbids a non-
positively recited element in a claim[, and i]n the [E]xaminer’s view, a claim
with a single non-positively recited element is automatically indefinite under
112(b).” Id. at 38. In related argument, Appellant contends that,
“[a]pparently, the [E]xaminer believes that any positional or functional term
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5
in a claim renders it indefinite. The [E]xaminer cites no law to suggest that
positional or functional language is per se indefinite.” Id. at 39.
In response, the Examiner further explains the rejection by giving
multiple differing examples of how claim 14 might be amended to clarify its
meaning. See Ans. 3. Further, the Examiner finds that Appellant’s
arguments against the prior art, beginning on page 4 of the Appeal Brief,
contradict Appellant’s arguments against the rejection for indefiniteness. Id.
at 4. Specifically, the Examiner finds Appellant’s assertion that the
recitation in claim 14 of a gaiter seal that “extends between parts of a
working head” patentably distinguishes over Drevfors relies on an
interpretation of claim 14 in which parts of the working head are required
by the claim. Id. In other words, the Examiner finds Appellant’s argument
regarding the § 112(b) rejection of claim 14 relies on a broad interpretation
of the claim, and Appellant’s argument against the § 103 rejection relies on a
narrow interpretation. See id. Additionally, the Examiner denies applying a
rule that positional and functional language is indefinite per se. Id. at 5.
In reply, Appellant states, “[t]he fact that a claim could have been
drafted in different ways does not prove indefiniteness. After all, there are
many ways to say the same thing.” Reply Br. 22. Appellant contends “[t]he
[E]xaminer appears to be construing the claim as if it read, ‘extends between
absent parts of a working head.’ However, the adjective ‘absent’ is absent
from the claim.” Id. at 24 (emphasis omitted). Appellant also appears to
contradict the assertion in the Appeal Brief that “it would have been obvious
to the ordinary artisan that the container-processing machine could not
possibly be part of the claimed apparatus” (Appeal Br. 37) by stating “the
fact that Applicant referred to the working head in distinguishing the claim
proves that the ‘working head’ is indeed required by the claim,” and “[i]t is
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6
true that the ‘working head’ is not among the list of direct objects for the
verb ‘comprising.’ But this does not mean that it is not required by the
claim.” Reply Br. 25.
We agree with the Examiner that the language “shields a functional
element,” “surrounds,” and “extends between” in claim 14 makes the claim
unclear. A claim is properly rejected as indefinite under 35 U.S.C. § 112(b)
if, after applying the broadest reasonable interpretation in light of the
specification, the metes and bounds of the claim are not clear because the
claim “contains words or phrases whose meaning is unclear.” In re
Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014) (per curiam)
(approving, for pre-issuance claims, the standard from MPEP § 2173.05(e));
see also Ex parte McAward, Appeal 2015-006416, 2017 WL 3669566, at *5
(PTAB Aug. 25, 2017) (precedential) (adopting the approach for assessing
indefiniteness approved by the Federal Circuit in Packard). Further, claims,
when read in light of the specification, must “reasonably apprise those
skilled in the art both of the utilization and scope of the invention” using
language “as precise as the subject matter permits.” Packard, 751 F.3d at
1313. We do not agree with Appellant’s contention that “it would have been
obvious to the ordinary artisan that the container-processing machine could
not possibly be part of the claimed apparatus.” Appeal Br. 37. Appellant’s
disclosure supports claims directed to either (i) a gaiter seal itself, or (ii) an
apparatus including a gaiter seal and certain components of a working head.
See Spec. 1:26–29, Figs. 1–3. Claim 14 does not make clear whether the
components of container-processing machine set forth in the first wherein
clause (namely, the “functional element” and the “parts of [the] working
head”) are required by the claim. Appellant identifies no portion of the
Specification indicating that only one of these structures is intended to be
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7
claimed or shedding any light on which of these structures, if any, would be
required by claim 14.
Additionally, the contradiction between Appellant’s arguments
against the cited prior art and Appellant’s arguments against the
indefiniteness rejection underscores this lack of clarity. “Drevfors does not
disclose the limitation, ‘wherein said gaiter seal . . . extends between parts of
a working head of said container-processing machine.’” Appeal Br. 4; but
see id. at 37 (“Some of the ‘wherein’ clauses have nouns that are introduced
by indefinite articles. However, these nouns do not identify something that
is part of the invention as claimed.”).
Appellant’s argument attempting to patentably distinguish dependent
claim 26 over the prior art further demonstrates the lack of clarity in claim
14. Claim 26 recites, in pertinent part, “[t]he apparatus of claim 14, wherein
said further [sic] comprising said container-processing machine is a filling
machine and wherein said working head comprises a filling element.”
Appeal Br. 50. (Claims App.). In support of claim 26, Appellant states, “[i]n
the response filed on July 10, 2019, claim 26 was amended to positively
recite the container-processing machine.” Appeal Br. 18 (emphasis added).
Thus, in the Appeal Brief, the argument addressing the indefiniteness
rejection of claim 14 contradicts the argument attempting to patentably
distinguish claim 14 over the prior art, which, in turn, is contradicted by
Appellant’s argument in support of the patentability of claim 26. We sustain
the Examiner’s rejection of claim 14 as indefinite on the basis discussed
above.
“disposed at between”
The Examiner determines that claim 14 is indefinite for an additional
reason, stating, “the language ‘disposed at between’ is unclear. The scope of
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8
the language ‘disposed at’ is different than the scope of the language
‘disposed between.’ One skilled in the art could not discern the scope of the
language ‘disposed at between.’” Final Act. 4.
To address this second basis of the rejection of claim 14 as indefinite,
Appellant relies on a Petition to the Director3 (hereinafter, the “Petition”)
requesting entry of an amendment filed4 after a final rejection5 (hereinafter,
the “Amendment”), along with the subsequent Decision on Petition6
(hereinafter, “Petition Decision”). The Amendment, which was denied entry
by the Examiner as a procedural matter,7 would have removed the word
“between” from the phrase “disposed at between” in claim 14. See
Amendment 3. Appellant states:
Applicant originally believed that the [E]xaminer might be
correct, and thus filed a Jan. 20, 2020 petition to enter the
amendment under Rule 1.116. However, it turns out that both
Applicant and the [E]xaminer have underestimated the ordinary
artisan’s ability to construe claim language.
In dismissing a petition to enter an amendment that would
have addressed the issue, the Director of Tech Center 3700 was
able to construe “wherein said first supporting-and-sliding
element is disposed at between said first and second gaiter
modules” as meaning that the element is not only located at the
modules but also between them.
Appeal Br. 40 (emphasis added). The Reply Brief explains, “Applicant’s
reasoning is based on the fundamental fact that in order to say that a change

3 Petition to the Director under 37 C.F.R. § 1.181 filed on January 28, 2020.
4 Amendment filed on January 7, 2020.
5 Final Office Action mailed on November 14, 2019.
6 Decision on Petition mailed on April 2, 2020.
7 Advisory Action mailed on January 27, 2020.
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Application 15/580,114
9
in state has occurred, one must know the initial state.” Reply Br. 27; see
also id. at 28.
Appellant also contends, “[s]ince the English language does not have
a term that precisely expresses the relationship, a new term had to be
improvised out of what is available. This should come as no surprise. A
novel structure would be expected to require novel language. This is how
language evolves.” Appeal Br. 42.
The Examiner replies, and we agree, the Petition Decision does not
support Appellant’s position.8 Ans. 6. The Petition Decision states:
Petitioner argues that the [E]xaminer should consider the
amendments after final action because the [E]xaminer already
construed the claim as if it has said “disposed at said first and
second gaiter modules” (Petition 2). Furthermore, Petitioner
argues that the recitation of “disposed at between” was a
typographical error and that the proposed amendment would not
have changed the meaning of the text but it would have given the
text meaning (Petition 1-2). Petitioner also argues that if the
claim had been interpreted as “disposed between, “the outcome
would have been the same (Petition 2).
These arguments are unpersuasive because the meaning of
“disposed at between said first and second gaiter modules” and
“disposed at said first and second gaiter modules” are different.
While “disposed at between said first and second gaiter modules”
includes not only a location at the modules, but between them as
well, the new amended limitation “disposed at said first and
second gaiter modules” is a broader limitation that permits a
location that is not limited also to between the modules. The
interpretation of the amended limitation requires additional
consideration by the [E]xaminer in view of the Specification as

8 The Examiner also notes, “[t]he merits of the indefiniteness rejection were
not at issue in the petition, as 112(b) rejections are not reviewable by
petition.” Ans. 6. The Examiner is correct. The Petition states that its
purpose is “for entry of two minor amendments to place the claims in better
condition for appeal.” Petition 1.
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to the amended wording of the limitation. Moreover, the new
amended limitation “disposed at” may require an additional
search depending on the interpretation given after further
consideration.
Petition Decision 2 (emphasis omitted, emphasis in italics added). Thus, the
Petition Decision concluded that the words “at” and “between” in the clause
at issue both limit the scope of claim 14, and omitting the word “between”
would broaden the claim, but the Petition Decision left open the
interpretation of the phrase at issue.
As for Appellant’s contention that “a new term had to be improvised
out of what is available [in the English language],” this argument is
undermined by Appellant’s statement of record. “One of ordinary skill in
the art would have understood ‘at between’ as not meaning anything in
particular. The term ‘at between’ is a typographical error.” Petition 1.
Further, the Examiner takes issue with the meaning of the term “at
between,” not the mere fact that a new term may have been used. See Final
Act. 4. We sustain the rejection of claim 14 as indefinite on the basis of its
recitation that a “first supporting-and-sliding element is disposed at between
said first and second gaiter modules.” Appeal Br. 47 (Claims App.).
Gaiter Seal as Separate Element
Next, the Examiner determines claim 14 is unclear because “lines 2–4
of the claim recite the gaiter seal[,] first gaiter-module, and second gaiter[-]
module as distinct structures[, and] line 10 of claim 14 recites that the gaiter
seal is ‘formed by’ the first gaiter module and second gaiter module.” Final
Act. 4.
Appellant argues “[t]his configuration can be seen in figure 1, where
one can see gaiter modules 13 that interconnect to form a gaiter seal 12,” and
Appeal 2020-005430
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11
“[t]he idea that two things can cooperate to form a third thing is not
particularly difficult to grasp.” Appeal Br. 39. Appellant provides certain
examples of this concept, stating “a hydrogen atom and an oxygen atom can
together form a hydroxide ion,” “[t]wo plates can come together to form a
capacitor,” and “[a] set of legs and a board can come together to form a
table.” Id. at 39–40.
The Examiner responds that “the claim language which clearly lists
the structures as separate elements and subsequently refers to them as being
the same element is confusing and should be clarified.” Ans. 6.
In reply, Appellant contends,
if one were to look at a triangle, it would be entirely correct to
say, “I see a triangle and three sides, where the three sides
together form the triangle.” It would, however, be unclear if one
only said, “I see a triangle and three sides.” In the latter case, one
would not know if there were a total of six sides, of which three
are part of the triangle.
Reply Br. 27.
The Examiner has the better position. Claim 14 is directed to an
apparatus, and, as Appellant asserts (Appeal Br. 37), the claim then
positively recites (at least) four components, namely, a gaiter seal, a first
gaiter-module, a second gaiter-module, and a first support-and-sliding
element. Appeal Br. 47 (Claims App.). The arrangement of the claim
indicates that the gaiter-modules and the gaiter seal are distinct components,
but the claim also recites that the gaiter seal includes the first and second
gaiter-modules. Accordingly, claim 14 is internally inconsistent, and we
sustain the rejection of claim 14 as indefinite on this basis.
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12
Structure Between Gaiter Modules
Finally, the Examiner determines that claim 14 recites the supporting-
and-sliding element as a structure distinct from the gaiter modules and that
the supporting-and-sliding element is “disposed between” the gaiter
modules. Final Act. 4. The Examiner further notes that claim 14 recites that
the first and second gaiter modules are “axially adjacent to and adjoining
each other.” Id. The Examiner takes the position that it is unclear “as to
whether there is a structure between the gaiter modules.” Id. (emphasis
added).
Appellant faults the Examiner for using the term “disposed between”
rather than what claim 14 actually recites, namely, that the first supporting-
and-sliding element is “disposed at between” the first and second gaiter
modules. Appeal Br. 42. As discussed above, Appellant contends the term
“disposed at between” is clear. See Appeal Br. 40–43; Reply Br. 27–28.
We agree with the Examiner that it is unclear whether claim 14
requires structure between the first and second gaiter-modules. Claim 14
recites that the “first and second gaiter modules [are] axially adjacent to and
adjoining each other.” Appeal Br. 47 (Claims App.). However, claim 14
also requires the “first supporting-and-sliding element is disposed at between
said first and second gaiter modules.” Id. (emphasis added). Further, claim
14 requires that the first supporting-and-sliding element and the first gaiter-
module form a unitary structure. Id. It is unclear whether the supporting-
and-sliding element must be between the first and second gaiter-modules,
and, if it is required to be between the gaiter-modules, how it can also be
unitary with one of them as recited in the last line of claim 14. We sustain
the rejection of claim 14 as indefinite on this basis.
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We have considered all of Appellant’s arguments regarding the clarity
of claim 14, but find them unavailing. Accordingly, we sustain the rejection
of claim 14, and claims 16–24 and 26–35 depending therefrom, as indefinite.
Claim 17
Claim 17 depends from claim 14 and recites, in pertinent part,
“wherein said gaiter seal further comprises first and seals within said first
gaiter-module, said first and second seals being ring-shaped.” Appeal Br.
48 (emphasis added).
The Examiner determines that the language “comprises first and seals
within” renders claim 17 unclear. Final Act. 5.
Appellant argues, and we agree, that the context of claim 17 makes
clear that the word “second” is inadvertently missing between the words
“and” and “seals.” See Appeal Br. 45. Accordingly, we do not sustain the
rejection of claim 17 on this basis.9
Rejections II–VII (Obviousness based on Drevfors, DeLano, Hough,
LaWarre, Uth, and Friendship)
Many of Appellant’s arguments addressing the prior art rejections
implicate the issues discussed above regarding the lack of clarity of claim
14. See Appeal Br. 4–15. Before meaningful appellate review of these
rejections can be performed, the subject matter encompassed by the claims
on appeal must be reasonably understood without resort to speculation.
Accordingly, we reverse, pro forma, Rejections II–VII. See In re Steele, 305
F.2d 859, 862 (CCPA 1962) (holding that the Examiner and the Board were
wrong in relying on what, at best, were speculative assumptions as to the

9 As claim 17 depends from claim 14, claim 17 is indefinite for the same
reasons discussed above.
Appeal 2020-005430
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14
meaning of the claims and in basing a rejection under 35 U.S.C. § 103
thereon). We emphasize, however, that our decision in this regard is based
solely on the indefiniteness of the claimed subject matter, and does not
reflect on the adequacy of the prior art evidence applied in support of the
rejections.

CONCLUSION
The Examiner’s decision to reject claims 14, 16–24, and 26–35 is
affirmed.

More specifically,
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
14, 16–24,
26–35
112(b) Indefiniteness 14, 16–24,
26–35

14, 17, 22,
23, 26–28,
30–35
103 Drevfors 14, 17, 22,
23, 26–28,
30–35
16 103 Drevfors, DeLano 16
18 103 Drevfors, Hough 18
19–21 103 Drevfors, LaWarre 19–21
24 103 Drevfors, Uth 24
29 103 Drevfors,
Friendship
29
Overall
Outcome
14, 16–24,
26–35

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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).
AFFIRMED