Ex parte Bendel
Appeal 2012-001251; Appl. No. 11/901,804; Tech. Center 3600
Decided: Nov. 21, 2013
The application was directed to noise reduction electronics. A representative claim on appeal read:
1. A device for actively influencing vibrations in a component, comprising:The Applicant amended as shown above in response to an anticipation rejection in the first Office Action. The Examiner maintained the anticipation rejection in the next Office Action, and the Applicant appealed.
a sensor for detecting the vibrations;
an electrically actuatable piezoelectric actuator for acting on the component; and
a regulation and control unit in which actuating signals are generated from sensor signals of the sensor in order to adjust the actuator;
wherein the actuator is one of (a) directly mounted on a surface of the component influenced by the vibrations, and (b) enclosed inside a wall of the component influenced by the vibrations.
In the Appeal Brief, the Applicant argued that the reference did not teach either of the alternative limitations describing the location of the actuator. According to the Applicant:
[T]he cited sections of Fischer merely describe actuators 4 enclosed within a vibration damper module 1. Thus, the actuators 4 are merely situated within a device for actively influencing vibrations in a component. Nowhere does Fischer disclose that its actuators 4 are directly mounted on a surface of a component influenced by vibrations, as opposed to the device for actively influencing vibrations, as provided for in the context of claim 1.The Examiner provided further explanation of his position in the Answer, as follows:
The Applicant takes an overly narrow construction of (1) what constitutes the "component" and (2) what it means to be "influenced" by vibrations. First, claim 1 does not require the "component" to be entirely separate from the device ... the claim in no way precludes the "component" from being some part of the "device" itself. Second, the mere fact that the vibration damper module 1 is producing vibrations does not preclude some portion of it from being "influenced" by these vibrations as well. All that is required to meet the limitation of claim 1 is that the component changes in some way (i.e., is "influenced") due to the vibrations of the device. Given the broadest possible reasonable interpretation of the claim, the housing 5 of the vibration damper module 1 is "influenced by vibrations" because it goes from a state of rest to a state of "tension" in producing the counter vibrations.The Applicant filed a Reply Brief arguing that the Examiner's interpretation of the claim language at issue was unreasonable:
[A]ny reading of the present application makes plain that "a component influenced by vibrations" does not form a part of "a device for actively influencing vibrations." Moreover, the Examiner's overly broad interpretation of the presently claimed subject matter leads to the nonsensical result of a device that produces influencing vibrations that influence itself, and simultaneously produces damping vibrations to dampen the influencing vibrations previously produced. ... it is completely nonsensical to produce influencing vibrations only to then try to damp those same vibrations. ... one of ordinary skill in the art would know that in order to prevent vibrations in a device for actively influencing vibrations, one may simply not produce any influencing vibrations from the outset, instead of producing influencing vibrations only to then have to simultaneously produce damping vibrations.The Board didn't reach the merits of the anticipation rejection and instead entered a new indefiniteness rejection under Ex parte Miyazaki ("more than one plausible interpretation"). The Board first noted that the preamble did not recite a device in combination with a component, but rather recited the component being influenced as the target of the intended use of the device. However, in the Appeal Brief the Applicant distinguished the reference with arguments about the component. The Board found that this contradiction between the preamble and the position taken by the Applicant made the claim ambiguous:
Since Appellant appears to be arguing that the wherein clause states a condition that is material to patentability, claim 1 appears to be ambiguous. In other words, it is not clear whether Appellant’s claim 1 recites a device per se, with intended use language as to the component, or a combination of a device and a component wherein the actuator is one of directly mounted on the surface of the component or enclosed inside a wall of the component.
As claim 1 is a claim under examination that is susceptible of more than one plausible interpretation, claim 1 is indefinite because the scope of the claim differs significantly depending upon which of the plausible interpretations one adopts. See Ex parte Miyazaki, 89 USPQ2d 1207, 1211- 12 (BPAI 2008) (precedential) ) (“if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.”).
My two cents: Arguing that a claim element distinguishes over the reference make a claim ambiguous? Really? Nah, I don't buy it.
The Board's reasoning goes like this:
A) claim term recited in preamble but not in body means term gets no patentable weight
B) Applicant argued that same term distinguishes over the reference, i.e., gets patentable weight
C) A and B are contradictory, thus claim is ambiguous.
The way I look at it, A is a presumption that the Applicant attempted to rebut with B. Looking at the claim alone, maybe the term gets no patentable weight. But Applicant argued the reference didn't teach the term at issue, thus implying the term gets patentable weight. Maybe the Applicant's rebuttal is persuasive, and maybe it isn't. But it seems ridiculous to use this argument to find the claim contradictory and thus indefinite. If anything, the Applicant argument makes the claim more definite.