KHS GmbHDownload PDFPatent Trials and Appeals BoardMay 4, 20212020005430 (P.T.A.B. May. 4, 2021) Copy Citation 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. Appeal 2020-005430 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.). Appeal 2020-005430 Application 15/580,114 3 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. Appeal 2020-005430 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 Appeal 2020-005430 Application 15/580,114 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 Appeal 2020-005430 Application 15/580,114 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 Appeal 2020-005430 Application 15/580,114 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 Appeal 2020-005430 Application 15/580,114 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. Appeal 2020-005430 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. Appeal 2020-005430 Application 15/580,114 10 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 Application 15/580,114 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. Appeal 2020-005430 Application 15/580,114 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. Appeal 2020-005430 Application 15/580,114 13 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 Application 15/580,114 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 Appeal 2020-005430 Application 15/580,114 15 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 Copy with citationCopy as parenthetical citation