SEW-EURODRIVE GMBH & CO. KG

Patent Trials and Appeals Board

Oct 21, 2020

15035396 - (R) (P.T.A.B. Oct. 21, 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.
15/035,396 05/09/2016 Zili WU 2915-144 3107
31554 7590 10/21/2020
CARTER, DELUCA & FARRELL LLP
576 BROAD HOLLOW ROAD
MELVILLE, NY 11747
EXAMINER
ROGERS, ADAM D
ART UNIT PAPER NUMBER
3656
NOTIFICATION DATE DELIVERY MODE
10/21/2020 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):
docket@carterdeluca.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte ZILI WU
________________

Appeal 2019-006674
Application 15/035,396
Technology Center 3600
________________

Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
WILLIAM A. CAPP, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

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STATEMENT OF THE CASE
Appellant1 filed a Request for Rehearing (“Req. Reh’g”) dated
September 15, 2020 of the Decision on Appeal mailed July 21, 2020
(“Decision”). This Decision affirmed the Examiner’s rejections of
claims 30–42, but did so by entering a new ground of rejection. See
Decision 17–18. This Decision also reversed the Examiner’s rejections of
claims 16, 18–21, and 23–25. See Decision 17–18.
Appellant states, “[t]his request for rehearing addresses the new
grounds of rejection set forth in the Decision and states with particularity the
points believed to have been misapprehended or overlooked in entering the
new grounds of rejection.” Req. Reh’g 1. We thus understand Appellant
only seeks a rehearing with respect to claims 30–42. Upon consideration of
Appellant’s Request, we do not modify our opinion.
REQUIREMENTS OF A REQUEST FOR REHEARING
A request for rehearing “must state with particularity the points
believed to have been misapprehended or overlooked by the [Patent Trial
and Appeal Board, hereinafter “Board”].” See 37 C.F.R. § 41.52(a)(1). This
section also states that arguments not raised in the briefs before the Board
and evidence not previously relied upon in the briefs “are not permitted in
the request for rehearing except as permitted by paragraphs (a)(2) through
(a)(4) of this section.”2 In addition, a request for rehearing is not an

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as “SEW-
EURODRIVE GmbH & Co. KG of Bruchsal, Federal Republic of
Germany.” Appeal Br. 1.
2 37 C.F.R. § 41.52(a)(3) states, “New arguments responding to a new
ground of rejection designated pursuant to § 41.50(b) are permitted.”
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opportunity to express disagreement with a decision without setting forth
points believed to have been misapprehended or overlooked by the Board in
rendering its Decision. The proper course for an Appellant dissatisfied with
a Board decision is to seek judicial review, not to file a request for rehearing
to reargue issues that have already been decided. See 35 U.S.C. §§ 141, 145.
BACKGROUND
Independent claim 30 was specifically addressed in the Decision, and
particularly its optional (“and/or”) limitation reciting “a first groove adapted
to collect sprayed-around oil being disposed all around.” See Decision 7–10.
This was the option the Examiner pursued. See Final Act. 9 (referencing “a
groove on one side of 21”). The Examiner and Appellant disagreed as to
what the phrase “disposed all around” modified. See Decision 8. However,
as concluded in the Decision, “we are of the opinion that Appellant has the
more reasonable claim interpretation, i.e., that it is the ‘first groove’ that is
‘disposed all around’” in contrast to the Examiner’s interpretation that it is
the oil that is “disposed all around.” Decision 8, 9.
This interpretation in favor of Appellant, unfortunately, “leads to a
quandary” because the “first groove” that is “disposed all around” is, we
ascertained, contradicted by Appellant’s Specification which, instead,
describes “the ‘first groove’ as extending longitudinally (i.e., in a parallel
direction).” Decision 9. Consequently, it was stated, “we cannot help but
notice that there are apparent underlying 35 U.S.C. § 112 (written
description, enablement, and, to some degree, indefiniteness) issues with
claim 30 as it is presently interpreted, and which Appellant champions.”
Decision 9. It was upon this new basis (i.e., Section 112(a) and (b)) that the
rejection of claim 30 (and its dependent claims 31–42) was affirmed. See
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Decision 10 (“Because this rejection differs from that proffered by the
Examiner, we designate this rejection under 35 U.S.C. § 112 as a New
Ground of rejection.”).
ANALYSIS
Appellant first addresses the rejection of claims 30–42 as lacking
sufficient written description support. See Req. Reh’g 1–4. Appellant
contends that “to the contrary, page 2, line 28 to page 3, line 6 of the original
Specification3 specifically describes a first groove that is ‘disposed all the
way around.’” However, Appellant’s characterization of this passage as
describing a “first” groove which is “disposed all the way around” is in
error. See also Sub. Spec. 2:18–27. This is because both specifications,
when addressing this “disposed all around” arrangement, only refer to “a”
groove and not to the recited “first” groove.4 Further, when both
specifications actually describe the recited “first” groove, such passages
distinguish a “first” groove from another “further” groove. See Spec. 3:13–
23; Sub. Spec. 2:34–3:7. Neither the “first” groove nor the “further” groove
is described in these specifications as “disposed all around,” unlike the
preceding “a” (or “the”) groove. See above.

3 Appellant filed two Specifications, both having the same date of May 9,
2016. Appellant refers to one as being “original” (herein “Spec.”) and to the
other as being “Substitute” (herein “Sub. Spec.”). Req. Reh’g 2. Not only
does the “original” specification lack such headings as “Field of the
Invention,” “Background Information,” and the like, but the text of this
“original” specification differs from that of the “Substitute” specification as
well. However, regardless of which specification is employed, for this issue,
the discrepancies between them are not important for either Appellant’s
arguments or our analysis thereof.
4 This “a” groove which extends “all around” is also (subsequently)
referenced as “the” groove. See Spec. 3:8–11; Sub. Spec. 2:29–32.
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Additionally, original claim 1 (canceled by a preliminary amendment
dated May 9, 2016) recites “a first groove formed on its inner side and
extending in a longitudinal direction,” i.e., no “all around” recitation.
Further, this “first” groove “extending in a longitudinal direction” is
supported in both specifications, each of which state “the housing top part
having at least a first groove formed on its inner side and extending in a
longitudinal direction.” Spec. 1:29–30; Sub. Spec. 1:23–25. This quoted
passage was specifically referenced (as were others) in the Decision as
indicative that the written description of the “first” groove lacked any
indication of it extending “all around,” as claim 30 is interpreted. See
Decision 8, 9. Hence, any assertion by Appellant that the Board
misapprehended or overlooked certain passages in Appellant’s Specification
is without merit.
Appellant further contends that the recited “first” groove has the same
geometry as the aforesaid “a” groove by comparing present claim 30 with
original claim 2 (canceled along with original claim 1). See Req. Reh’g 3.
However, original claim 2 refers to “a” groove, not to any “first” groove.
Accordingly, we understand Appellant desires the Board to deduce or
postulate that the “all around” geometry described with respect to “a” (or
“the”) groove is to be accorded to the recited “first” groove of claim 30,
even though both specifications are silent as to this specific arrangement for
this “first’ groove. Of further interest is Appellant’s acknowledgement that
to satisfy the written description requirement, the specification must describe
the claimed invention “in sufficient detail that one skilled in the art can
reasonably conclude that the inventor had possession of the claimed
invention.” Req. Reh’g 3 (citations omitted). However, in the present
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situation, the only clear fact a skilled person can reasonably conclude is that
the recited “first” groove is one that extends longitudinally. See supra.
As is well-known, “the patent drafter is in the best position to resolve
the ambiguity in . . . patent claims.” Halliburton Energy Servs., Inc. v. M–I
LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008). It is this “ambiguity” that
Appellant desires to be resolved in their favor. We decline to do so for the
reasons set forth above and also in our Decision. See Decision 7–10.
Suffice it to say, due to the lack of sufficient written description
support for the claimed “first” groove, based on the description of the “first”
groove in the specification, we concluded that “claim 30, as a whole, is
presented in such a manner that the scope, meaning, and manner of
implementing this claim (and hence its dependent claims as well), is not
fully conveyed because it is not in harmony with Appellant's Specification.”
Decision 9–10. Because there is a lack of written description support for the
recited “first” groove, the Board thereafter determined that claim 30
additionally failed to satisfy the enablement requirement and also that claim
30 was indefinite. See Decision 10 (and particularly footnote 7). These
determinations have not been assuaged by Appellant’s Request for
Rehearing. See Req. Reh’g 4–6.
To be clear, Appellant’s sections devoted to enablement and to
indefiniteness rely on passages in the specifications already discussed above,
in addition to the various MPEP sections covering such topics. See Req.
Reh’g 4–6. From our perspective, Appellant’s ability to show enablement of
claim 30, i.e., “the essential ‘quid pro quo of the patent bargain’” regarding
teaching the public “how ‘to practice the full scope of the claimed
invention,’” is missing (i.e., how can a longitudinally extending groove be
said to extend “all around?”). Decision 10. Likewise, the purpose of the
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claim definiteness requirement is to ensure clarity of claim scope so that “the
public is informed of the boundaries of what constitutes infringement of the
patent.” Decision 10. Here, the full scope of the recited “first” groove,
when claim 30 and both specifications differ, renders its scope uncertain. In
other words, Appellant has not resolved these matters in its favor.
DECISION
Accordingly, Appellant’s Request for Rehearing has been granted to
the extent that the Board reconsidered its Decision in light of the statements
made in this Request, but is denied with respect to the Board making any
modification to the Decision.

Outcome of Decision on Rehearing:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/
Basis
Denied Granted
30–42 112(a), (b) Written
Description,
Enablement,
Indefiniteness
30–42

Final Outcome of Appeal after Rehearing:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
16, 18–21,
23, 25
102(a)(1) Alquist 16, 18–21,
23, 25
24 103 Alquist 24
30–42 112(a), (b) Written
Description,
Enablement,
Indefiniteness
30–42

Appeal 2019-006674
Application 15/035,396
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Claim(s)
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed

Overall
Outcome
30–42 16, 18–21,
23–25

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).

DENIED