SEW-EURODRIVE GMBH & CO. KG

Patent Trials and Appeals Board

Nov 23, 2020

2019005059 (P.T.A.B. Nov. 23, 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.
15/107,093 06/21/2016 Robert REICHLE 2915-149 1043
31554 7590 11/23/2020
CARTER, DELUCA & FARRELL LLP
576 BROAD HOLLOW ROAD
MELVILLE, NY 11747
EXAMINER
SILVERMAN, SETH ADAM
ART UNIT PAPER NUMBER
2145
NOTIFICATION DATE DELIVERY MODE
11/23/2020 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 ROBERT REICHLE, MANFRED GAUL,
DANIEL REINHARDT, STEPHAN NICKLIS, DESIREE NISSEL,
STEPHAN SCHNEIDER, RIMA PFETZING, ANNE SCHILLING, and
CHRISTIAN HORNUNG
Appeal 2019-005059
Application 15/107,093
Technology Center 2100

Before TERRY J. OWENS, BRADLEY W. BAUMEISTER, and
JOHN A. EVANS, Administrative Patent Judges.

OWENS, 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 13–23 and 26. We have jurisdiction
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. Appellant identifies the real party in interest as SEW-
EURODRIVE GmbH & Co. KG (Appeal Br. 1).
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Application 15/107,093

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CLAIMED SUBJECT MATTER
The claims are directed to a method and device for displaying
apparatus information. Claim 13, reproduced below, is illustrative of the
claimed subject matter:
13. A method for displaying apparatus information in a
navigation tree, the navigation tree having nodes that are
interlinked by directional links, the directional links defining an
order structure that includes superordinate nodes and
subordinate nodes for each node, the order structure defining
for each node an assigned navigation path that includes all
superordinate nodes for the node and respective connecting
links, each node being assigned an apparatus part, an apparatus,
or an apparatus group of a plant that in each case transmits
apparatus information, comprising:
displaying a node as a selected node with an associated
navigation path and nodes directly subordinate to the node, on a
display unit, wherein one node is displayed as the selected node
with an associated first navigation path and nodes directly
subordinate to the node on the display unit;
automatically identifying an associated node for
apparatus information sent by an apparatus part, an apparatus,
or an apparatus group;
automatically ascertaining an associated second
navigation path for the identified node, one node in the second
navigation path that is presently displayed on the display unit
being ascertained automatically; and
displaying the apparatus information on the display unit
in a manner assigned automatically to the ascertained node.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Farn US 2006/0085435 A1 Apr. 20, 2006
Kanda US 2013/0201192 A1 Aug. 8, 2013
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Application 15/107,093

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REJECTIONS
The claims stand rejected as follows: claims 18–23 and 262 under 35
U.S.C. § 112(b) as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the inventors regard as the
invention, and claims 13–23 and 26 under 35 U.S.C. § 103 over Farn in view
of Kanda.
OPINION
Rejection under 35 U.S.C. § 112(b)
“[T]he indefiniteness inquiry asks whether the claims ‘circumscribe a
particular area with a reasonable degree of precision and particularity.’”
Marley Mouldings Ltd. v. Mikron Indus. Inc., 417 F.3d 1356, 1359 (Fed. Cir.
2005) (quoting In re Moore, 439 F.2d 1232, 1235 (C.C.P.A. 1971)).
“An element in a claim for a combination may be expressed as a
means or step for performing a specified function without the recital of
structure, material, or acts in support thereof, and such claim shall be
construed to cover the corresponding structure, material, or acts described in
the specification and equivalents thereof.” 35 U.S.C. § 112(f) (Sept. 16,
2011). “If there is no structure in the specification corresponding to the
means-plus-function limitation in the claims, the claim will be found invalid
as indefinite.” Biomedino, LLC v. Waters Tech. Corp., 490 F.3d 946, 950
(Fed. Cir. 2007); see also In re Donaldson, 16 F.3d 1189, 1195 (Fed. Cir.
1994) (en banc).
“‘[A] claim term that does not use ‘means’ will trigger the rebuttable
presumption that 112 ¶ 6 [now 112(f)] does not apply.’” This presumption

2 The Examiner’s statement of the rejection under 35 U.S.C. § 112(b) should
include claim 26 instead of canceled claim 24 (Final Rej. 8).
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Application 15/107,093

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can be rebutted “by showing that the claim element recite[s] a function
without reciting sufficient structure for performing that function.” LG Elect.,
Inc. v. Bizcorn Elect., Inc., 453 F.3d 1364, 1372 (Fed. Cir. 2006) (citations
omitted). “The generic terms ‘mechanism,’ ‘means,’ ‘element,’ and ‘device,’
typically do not connote sufficiently definite structure” for performing a
function. Mass. Inst. of Tech. v. Abacus Software, 462 F.3d 1344, 1354 (Fed.
Cir. 2006). “[T]he unadorned term ‘mechanism’ is ‘simply a nonce word or
a verbal construct that is not recognized as the name of structure and is
simply a substitute for the term “means for.””’ Id. (quoting Lighting World,
Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1360 (Fed. Cir. 2004)).
The Appellant’s claims 18 and 26 recite “selection device,”
“information input,” “identification device,” “navigation-path calculation
device,” and “node-selection device.” Like “mechanism,” the claim terms
“device” and “input” are nonce words. The Appellant’s Specification states
that the selection device “may be formed by a pointing device, a touch-
sensitive and/or light-sensitive display, etc.” (Spec. 6:26–28). The
Specification, therefore, describes structure corresponding to the selection
device such that the meaning of “selection device” as a means-plus-function
limitation under 35 U.S.C. § 112(f) is definite. The Specification, however,
does not describe structure corresponding to the information input or the
identification, navigation-path calculation, or node-selection devices.
The Appellant argues, in reliance upon In re Venezia, 530 F.2d 956
(C.C.P.A. 1976), that “[t]he phrase ‘adapted to’ [which follows each of the
Appellant’s nonce words] in and of itself imparts present structure to a
claim” (Appeal Br. 5).
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In Venezia, the claims “were rejected under 35 U.S.C. § 112, second
paragraph, as indefinite and incomplete in not defining a completed article
of manufacture.” Venezia, 530 F.2d. at 957. The court in its reversal stated
that “a pair of sleeves . . . each sleeve of said pair adapted to be fitted over
the insulating jacket of one of said cables” (id. at 959) “imparts a structural
limitation to the sleeve.” Id. Such a structural limitation is not indicated,
however, by the Appellant’s Specification’s disclosure of an information
input “via which apparatus information transmitted from the apparatus part,
the apparatus or the apparatus group is receivable” (Spec. 6:7–9), an
identification device “equipped to identify a node assigned to apparatus
information received” (Spec. 6:9–11), a navigation-path calculating device
“furnished to ascertain the navigation path to an identified node”
(Spec. 6:12–13), or a node-selection device “equipped to ascertain one node
in the navigation path to the identified node” (Spec. 6:13–15).
The Appellant argues that adequate structure is provided to the
Appellant’s nonce words by the Specification’s disclosure that the
information input, identification device, navigation-path calculation device,
and node-selection device are computer implemented (Appeal Br. 5).
As stated in In Aristocrat Techs. Austl. Pty Ltd. v Int’l Game Tech.,
521 F.3d 1328, 1333 (Fed. Cir. 2008):
For a patentee to claim a means for performing a particular
function and then to disclose only a general purpose computer
as the structure designed to perform that function amounts to
pure functional claiming. Because general purpose computers
can be programmed to perform very different tasks in very
different ways, simply disclosing a computer as the structure
designated to perform a particular function does not limit the
scope of the claim to “the corresponding structure, material, or
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acts” that perform the function, as required by section 112
paragraph 6 [now 112(f)].

Thus, the Appellant’s Specification does not support the claims’
information input, identification device, navigation-path calculation device,
or node-selection device by describing corresponding structure, material, or
acts as required by 35 U.S.C. § 112(f). The claims, therefore, are indefinite,
so we affirm the rejection under 35 U.S.C. § 112(b).
Rejection under 35 U.S.C. § 103
Regarding claims 18–23 and 26, in some instances it may be
impossible to determine whether claimed subject matter is anticipated by or
would have been obvious over references because the claims are so
indefinite that considerable speculation and assumptions would be required
regarding the meaning of terms employed in the claims with respect to the
scope of the claims. See In re Steele, 305 F.2d 859, 862 (C.C.P.A. 1962). In
other instances, however, it is possible to make a reasonable, conditional
interpretation of claims adequate for the purpose of resolving patentability
issues to avoid piecemeal appellate review. In the interest of administrative
and judicial economy, this course is appropriate wherever reasonably
possible. See Ex parte Saceman, 27 USPQ2d 1472, 1474 (BPAI 1993); Ex
parte Ionescu, 222 USPQ 537, 540 (Bd. App. 1984).
In the present case, we consider such a reasonable, conditional
interpretation to be possible. This interpretation is that the information input,
identification device, navigation-path calculation device, and node-selection
device in claims 18–23 and 26 are computer programs adapted to achieve
the recited functions.
Kanda discloses a method and apparatus for displaying apparatus
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information in a navigation tree (¶¶ 23, 29; Fig. 2). A user designates any
node (e.g., Tank 01) in a navigation tree, and if a storage unit (24) has
relation information for that node, then based on the relation information,
nodes (e.g., Temperature, Level, Pump 01, Valve 01) bound to the selected
node, nodes (e.g., Flow Rate, Setting Value, Opening Degree of Valve 01,
Setting Degree of Valve 01) bound to those bound nodes, and navigation
paths for the nodes are displayed in the navigation tree (¶¶ 59–64; Fig. 2).3
The Appellant argues that “rather than disclosing any automatic
identification of an associated node for apparatus information sent by an
apparatus part, an apparatus, or an apparatus group, Kanda’s plant
information display method is entirely based upon manual operation by a
user” (Appeal Br. 6). The Appellant points to several of Kanda’s paragraphs
which state that the Tank 01 node is designated by the user. (Appeal Br. 6–
7).
Kanda’s user designation of the Tank 01 node corresponds to the
selection of a node required by all of the Appellant’s independent claims. As
in the Appellant’s method and device, Kanda’s other nodes in Tank 01’s
navigation path are displayed automatically (¶¶ 60–66).
Accordingly, we are not persuaded of reversible error in the rejection
under 35 U.S.C. § 103.
CONCLUSION
The Examiner’s rejections are affirmed.

3 A discussion of Farn is not necessary to our decision.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
18–23, 26 112(b) Indefiniteness 18–23, 26
13–23, 26 103 Farn, Kanda 13–23, 26
Overall
Outcome
13–23, 26

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