Anthony William. Pankratz et al.Download PDFPatent Trials and Appeals BoardNov 4, 201914373701 - (D) (P.T.A.B. Nov. 4, 2019) 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. 14/373,701 07/22/2014 Anthony William Pankratz 35010/390US 9887 32827 7590 11/04/2019 THE OLLILA LAW GROUP LLC 2569 Park Lane, Suite 202 Lafayette, CO 80026 EXAMINER ZHONG, XIN Y ART UNIT PAPER NUMBER 2861 NOTIFICATION DATE DELIVERY MODE 11/04/2019 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): patents@olgip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte ANTHONY WILLIAM PANKRATZ and JOEL WEINSTEIN __________ Appeal 2018-003722 Application 14/373,701 Technology Center 2800 ___________ Before ADRIENE LEPIANE HANLON, CHRISTOPHER C. KENNEDY, and JEFFREY R. SNAY, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE The Appellant1 filed an appeal under 35 U.S.C. § 134(a) from an Examiner’s decision finally rejecting claims 1–14 under 35 U.S.C. § 112, first paragraph, as 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 Micro Motion, Inc. Appeal Brief dated November 3, 2017 (“App. Br.”), at 2. Appeal 2018-003722 Application 14/373,701 2 failing to comply with the written description and enablement requirements.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a new ground of rejection. The Appellant’s invention is directed to a vibrating meter, such as a densitometer, a volumetric flow meter, or a Coriolis flow meter, with a synthetically wrapped case. Spec. 1, ll. 4–5; id. at 6, ll. 16–17. The Appellant discloses that “[t]he synthetic wrap can dramatically increase the burst pressure of the case while minimizing the added weight and effect on the case’s vibrational frequencies.” Spec. 4, ll. 7–9. Figure 3, reproduced below, illustrates a sensor assembly of the vibrating meter according to one embodiment of the invention. Appellant’s Figure 3 depicts a sensor assembly 2 In the Examiner’s Answer dated December 21, 2017 (“Ans.”), at 3, the Examiner withdrew the rejection of claims 1–14 under 35 U.S.C. § 103(a) as unpatentable over Lanham in view of Van Cleve. Appeal 2018-003722 Application 14/373,701 3 with a synthetic wrapping a portion of the case. Independent claim 1 is reproduced below from the Claims Appendix to the Appeal Brief. The limitation at issue is italicized. 1. A sensor assembly (10) of a vibrating meter (5), comprising: one or more fluid conduits (103A, 103B); a case (200) surrounding at least a portion of the one or more fluid conduits (103A, 103B); and a synthetic wrap (300) applied to at least a portion of the case (200) to increase a natural frequency of the case (200) lowered by the synthetic wrap (300) applied to another portion of the case (200). App. Br. 13. B. DISCUSSION 1. New ground of rejection The Examiner finds the following limitation recited in claim 1 is not supported by the original disclosure: “a synthetic wrap (300) applied to at least a portion of the case (200) to increase a natural frequency of the case (200) lowered by the synthetic wrap (300) applied to another portion of the case (200).” Final Act. 4.3 The Examiner also concludes that that same limitation in claim 1 is not enabled. Final Act. 5. The Examiner rejects independent claim 7 for the same reasons as claim 1. Final Act. 5, 6. As for the rejection based on the written description requirement, the Examiner finds the Specification discloses, in one method, adding additional wraps near the top of the case to lower bending mode frequencies, and in an alternative method, discloses adding extra wraps to the lower portion of the case to increase bending mode frequencies. Final Act. 4–5. The Examiner, however, finds the 3 Final Office Action dated March 22, 2017. Appeal 2018-003722 Application 14/373,701 4 Specification does not disclose combining the two methods in a single embodiment of the invention. Final Act. 5. In response, the Appellant argues that “the present Application support[s] combining the application of a synthetic wrap to a portion of the case that increases a natural frequency, and the application of a synthetic wrap to another portion of the case that lowers a natural frequency of the case.” App. Br. 5. For support, the Appellant directs our attention to page 9, lines 17–27 of the Specification4 which states: It would also be possible to increase the cantilever-type bend mode frequencies of the case by intentionally adding extra wraps, and therefore extra stiffness, to the lower portion of the case near plates 113, 113’. This technique would add extra stiffness to the case in a location of high modal strain energy, thus raising the first few cantilever-type bend mode frequencies appreciably. While this technique would also add mass to the case, it would not be added in a location of high modal displacement, and therefore would not appreciably lower the frequencies of the first few bending modes of the case. Alternatively, if a reduction in case bending mode frequencies were desired, this could be accomplished by adding additional wraps, and thus additional mass, near the top of the case 203 at a location of high modal displacement, where the mass would have a significant lowering effect on case frequencies. [Emphasis added.] The Appellant also directs our attention to page 11, line 28–page 12, line 5 of the Specification5 which states, in relevant part: [I]n some embodiments, the synthetic wrap 300 may be wrapped thicker in [the bending] region than the remainder of the case 200. In another embodiment, the synthetic wrap 300 can be wrapped thicker at the base of the case 200 near where the case 200 is coupled to the plates 113, 113’. 4 App. Br. 4–5. 5 App. Br. 5–6. Appeal 2018-003722 Application 14/373,701 5 Spec. 11, l. 31–12, l. 3. The Examiner’s rejection and the Appellant’s arguments reveal that claims 1 and 7 may be interpreted at least two different ways. First, claim 1 may be interpreted as reciting a synthetic wrap wherein additional wraps are applied to two separate portions of the case, i.e., a first portion of the case and a second portion of the case, thereby modifying a frequency of the case differently. That is, the synthetic wrap applied to the first portion of the case increases a natural frequency of the case, and the synthetic wrap applied to the second portion of the case lowers a natural frequency of the case. Similarly, the method of claim 7 may be interpreted as including the step of applying a synthetic wrap to a first portion of the case to increase a natural frequency of the case and applying a synthetic wrap to a second portion of the case to lower a natural frequency of the case. Second, claims 1 and 7 may be interpreted as directed to the application of a synthetic wrap to a case for the sole purpose of increasing a natural frequency of the case. That is, claim 1 may be interpreted as reciting a synthetic wrap applied to at least a portion of the case to increase a natural frequency of the case that otherwise would be lowered when that same synthetic wrap is applied to another portion of the case. Similarly, claim 7 may be interpreted as applying a synthetic wrap to at least a portion of the case to increase a natural frequency of the case that otherwise would be lowered when that same synthetic wrap is applied to another portion of the case. In sum, it is not clear on this record whether claims 1 and 7 recite a synthetic wrap applied to two different portions of the case thereby affecting a natural frequency of the case differently or a synthetic wrap that only increases a natural frequency of the case. See In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014) (“claims are required to be cast in clear—as opposed to ambiguous, vague, Appeal 2018-003722 Application 14/373,701 6 indefinite—terms. It is the claims that notify the public of what is within the protections of the patent, and what is not.”). For that reason, we enter a new ground of rejection of claims 1–14 under 35 U.S.C. § 112, second paragraph, based on indefiniteness. See In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (“[D]uring patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed.”). 2. Rejections under 35 U.S.C. § 112, first paragraph It is not possible to determine whether the limitations at issue in claims 1 and 7 satisfy the written description and enablement requirements of 35 U.S.C. § 112, first paragraph, because the claims are so indefinite that considerable speculation and assumptions would be required regarding the scope of the claims. For that reason, we do not sustain the rejections of claims 1–14 under 35 U.S.C. § 112, first paragraph. In re Steele, 305 F.2d 859, 862 (CCPA 1962). We note that this reversal is not a reversal on the merits of the rejections but rather is a procedural reversal predicated upon the indefiniteness of claims 1 and 7. C. CONCLUSION The Examiner’s decision is reversed. A new ground of rejection of claims 1–14 under 35 U.S.C. § 112, second paragraph, is entered pursuant to the Board’s authority under 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that an Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . Appeal 2018-003722 Application 14/373,701 7 (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. . . . Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1–14 112, first paragraph Written description 1–146 1–14 112, first paragraph Enablement 1–147 1–14 112, second paragraph Indefiniteness 1–14 Overall Outcome 1–14 1–14 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). REVERSED; 37 C.F.R. § 41.50(b) 6 As noted above, the reversal is not a reversal on the merits of the rejection but rather is a procedural reversal predicated upon the indefiniteness of claims 1 and 7. 7 As noted above, the reversal is not a reversal on the merits of the rejection but rather is a procedural reversal predicated upon the indefiniteness of claims 1 and 7. Copy with citationCopy as parenthetical citation