Ex Parte 7866134 et al

Patent Trial and Appeal Board

Jul 28, 2016

90013329 (P.T.A.B. Jul. 28, 2016)

MOD PTOL-90A (Rev.06/08)

APPLICATION NO./
CONTROL NO.
FILING DATE FIRST NAMED INVENTOR /
PATENT IN REEXAMINATION
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EXAMINER
ART UNIT PAPER NUMBER
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UNITED STATES PATENT AND TRADEMARK OFFICE
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UNITED STATES PATENT AND TRADEMARK OFFICE
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
90/013,329 09/03/2014 7866134 HUSQ.008X1 1094
20995 7590 07/29/2016
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
EXAMINER
ENGLISH, PETER C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
07/29/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte HUSQVARNA AB,
Appellant and Patent Owner.
____________________

Appeal 2016-001569
Reexamination Control 90/013,329
Patent 7,866,134 B2
Technology Center 3900
____________________

Before JAMES T. MOORE, MICHAEL L. HOELTER, and
JENNIFER L. McKEOWN, Administrative Patent Judges.

McKEOWN, Administrative Patent Judge.

DECISION ON APPEAL
Husqvarna AB (“Patent Owner”) appeals from the decision in the
Examiner’s Final Action, mailed March 27, 2015, rejecting claims 1, 2, 7, 8, 22–
28, and 30–34 of U.S. Patent No. 7,866,134 B2 (the “’134 patent”). App. Br. 1–2.1

1 Throughout this opinion, we refer to (1) the Final Action, mailed March
27, 2015 (“Final Act.”); (2) Patent Owner’s Appeal Brief, filed July 24,
2015 (“App. Br.”); (3) the Examiner’s Answer, mailed August 28, 2015
(“Ans.”), and (4) Patent Owner’s Reply Brief, filed October 28, 2015
(“Reply Br.”).
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I. STATEMENT OF CASE
This proceeding arose from an ex parte reexamination request (the
“Request”) of the ’134 patent, issued to Matt Lambert and Nicholas Hansen on
January 11, 2011.
We have been informed that the ’134 patent was the subject of a district
court proceeding, namely Husqvarna AB v. The Toro Company, U.S. District –
North Carolina Western, No. 3:14cv103. See App. Br. 1.
An oral hearing was conducted on May 4, 2016. The transcript of the oral
hearing was made of record on July 14, 2016.
We have jurisdiction under 35 U.S.C. §§ 134(b) and 315 (pre-AIA).
We reverse.

II. THE ’134 PATENT
The ’134 patent relates generally to mower for cutting grass and collecting
the cut grass. The mower includes a main body, two handle brackets, a handle, a
collector element, and two collector brackets. ’134 patent, Abstract. One
embodiment of the invention includes two handle brackets 118a and 118b
oppositely mounted on lateral sides of the main body and coupled to the handle.
Annotated Figures 3A and 3B below depict the frame 126 which defines the
collector element for the mower. See also ’134 patent, col. 3, ll. 7–22.
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Annotated Figures 3A and 3B of the ’134 Patent Depicting an
Exemplary Embodiment of the Claimed Invention
The frame 126 includes at least two limb elements 132 located on opposite
sides of the collector element. As shown, the two collector brackets 134 are
respectively mounted to the two handle brackets 118a and 118b and are configured
to respectively accommodate the limb elements 132 of the collector frame 126.
Thus, the collector element (secured to the collector brackets) is mounted on the
mower free from the handle. ’134 patent, col. 1, ll. 40–41.
Claim 1 is illustrative and reads as follows:
1. A walk-behind grass mower for cutting grass and collecting
cut grass including:
a main body including a deck, an engine operatively coupled to
a grass cutting blade, and ground engaging wheels, a chute being
provided at a rear of the main body such that grass cut by the blade
within the main body is directed through the chute to a discharge
opening at an end of the chute;
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two handle brackets oppositely mounted on lateral sides of the
main body;
a maneuvering handle coupled to the two handle brackets to
allow operation of the mower in a direction desired by a user of the
grass mower who is located at a walk behind location;
a collector element attached to the discharge opening at the end
of the chute collects the cut grass cut by the blade within the main body
and directed through the chute to the discharge
opening at an end of the chute, the collector element being
defined by a frame, the frame including at least two limb elements
located on substantially opposite sides of the collector element; and
two collector brackets respectively mounted to the two handle
brackets and configured to respectively accommodate the limb
elements, wherein the collector element is mounted on the mower free
from the handle.
App. Br., Claims App’x.

III. REJECTIONS
A. Evidence Relied Upon
The Examiner relies on the following as evidence of unpatentability:
Booher et al. US 3,176,453 Apr. 6, 1965
(“Booher”)
Meyer et al. US 3,636,686 Jan. 25, 1972
(“Meyer”)
Plamper US 4,203,276 May 20, 1980
(“Plamper”)
Edwards et al. US 4,522,019 June 11, 1985
(“Edwards”)
Kiteley AU 402,989 Oct. 24, 1968
(“Kiteley”)

Toro, 22in Recycler® Lawn Mower, Parts Catalog (2007) (“Toro”).

Patent Owner relies on the Declaration of Robert Fancher, dated March 12,
2015 (“Fancher Decl.”), the Declaration of Matt Lambert, dated March 10, 2015
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(“Lambert Decl.”), the Declaration of Dan Nielson, dated March 9, 2015 (“Nielson
Decl.”), and the Declaration of Stu Sandstrom, dated March 11, 2015 (“Sandstrom
Decl.”).

B. The Adopted Rejections
The Examiner maintains the following rejections:
1. Claims 1, 2, 7, 8, 24, 25, and 30–34 are rejected under 35 U.S.C. § 102(b)
as anticipated by, or in the alternative, under 35 U.S.C. § 103(a) as being
unpatentable over Plamper.
2. Claims 1, 2, 7, 8, 24, 25, and 30–34 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Plamper, Edwards, and Booher.
3. Claims 1, 2, 7, 8, 22, 24, 25, and 31–33 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kiteley, Edwards, and Booher.
4. Claims 23, 26–28, 30, and 31 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kiteley, Edwards, Booher, Meyer, and Toro.
5. Claims 27, 28, 31, and 33 are rejected under 35 U.S.C. § 112 (pre-AIA),
first paragraph for failing to comply with the written description
requirement.
6. Claims 26–28 are rejected under 35 U.S.C. § 112 (pre-AIA), second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the applicant regards as the
invention.
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7. Claims 26, 29, 30, 32, and 34 are rejected under 35 U.S.C. § 112 (pre-
AIA), first paragraph for failing to comply with the written description
requirement.2

IV. ANALYSIS
A. The Anticipation and Obviousness Rejections Based on Plamper
Based on the record before us, we are persuaded that the Examiner erred in
rejecting claims 1, 2, 7, 8, 24, 25, and 30–34 under 35 U.S.C. § 102 as anticipated
by, or alternatively under 35 U.S.C. § 103 as unpatentable over, Plamper.
The Examiner relies on Figures 5 and 6 of Plamper for disclosing “two
collector brackets respectively mounted to the two handle brackets and configured
to respectively accommodate the limb elements.” Final Act. 4. Specifically, the
Examiner finds that
While not discussed in the written description, Fig. 6 of Plamper
illustrates the two collector brackets 27 as extending inwardly from and
mounted to the handle brackets. See the marked-up copies of Figs. 5
and 6 below, and the enlarged, highlighted portions of Fig. 6 showing
the collector brackets mounted to the handle brackets. Thus, in a first
interpretation, Plamper is considered to teach collector brackets
mounted to handle brackets.

2 We note that the Examiner does not explicitly identify this rejection and, instead,
sets forth an objection to the Specification under 35 U.S.C. § 132(a) because it
introduces new matter into the disclosure. See Final Act. 15. However, as Patent
Owner points out, the referenced amendment, filed on March 12, 2015, does not
amend the Specification and only adds new claims 22–34. As such, we understand
the Examiner to be rejecting the recited claims for lack of written description
support as outlined at pages 15 and 16 of the Final Action. Further, because the
Examiner separately identifies a rejection of claims 31 and 33 under 35 U.S.C.
§ 112 (pre-AIA), first paragraph (listed rejection 5), we do not repeat the rejection
of those claims.
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Final Act. 4; see also Ans. 3. The Examiner’s marked-up versions of Figure 6 and
the enlarged, highlighted portion of Fig. 6 are reproduced below.

The Examiner Annotated Copy of Plamper’s Figure 6 Identifying the
Collector Brackets and Handle Brackets

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The Examiner’s Enlarged, Highlighted Portions of Figure 6
Final Act. 5; Ans. 4. In the annotated figures, the Examiner identifies the handle
brackets and collector brackets (hooks 27), and also appears to draw in black lines
depicting a connection between the collector brackets to the handle brackets.
Patent Owner rebuts the Examiner’s findings, contending that Plamper does
not disclose the claimed mounting of collector brackets to the handle brackets.
According to Patent Owner, “the Examiner filled in and expanded the size of hook
27” in modified Fig. 6 of Plamper “to show a physical connection that simply does
not exist.” App. Br. 12. Patent Owner further points out that Plamper expressly
describes that the hooks (i.e. collector brackets) are mounted to the housing.
App. Br. 13–14. Specifically, Plamper states that “[t]wo laterally spaced
downwardly directed hooks 27 are mounted on the housing 12 near the upper
portion of the rear wall 13.” Plamper, col. 3, ll. 51–53; see also App. Br. 14;
Plamper, col. 3, ll. 56–58, col. 4, ll. 61–62.
We find Patent Owner’s arguments persuasive. Notably, Plamper expressly
identifies that the collector brackets, or hooks, are mounted to the housing.
Plamper, col. 3, ll. 51–53. This is also supported by Figures 5 and 6 that depict a
portion of hooks 27 extending parallel to the surface of housing 12. See, e.g.,
Figures 5 and 6; App. Br. 15–16; Nielsen Decl. ¶ 8. As shown in enlarged,
unmodified portions of Figure 6 reproduced below, there is no clear connection
depicted between the hooks and the handle brackets as asserted by the Examiner,
nor does Plamper express such a connection. See supra.
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Enlarged, Unmodified Portions of Figure 6 of Plamper
While we recognize that there are some lines in Figure 6 extending past the
side bars 20C of the collector frame (or the rearward projecting portions 20D)
towards the handle bracket, neither Plamper’s Figure 6 or the accompanying
written description makes abundantly clear what those lines are and whether the
lines represent a connection or mounting of the hooks to the handle bracket.
For example, in the enlarged portion of Figure 6 on the left above, there is a
line that extends from collector frame side bar 20C (or item 20D) to the bolt of the
handle bracket that appears to correspond to the upper horizontally extending hook
surface, but there is no similar corresponding line for the bottom horizontally
extending hook surface. Similar issues are found with the enlarged portion of
Figure 6 on the right above with numerous lines extending between the side bar
20C (or maybe 20D) of the collector frame to the bolt of the handle bracket,
without any clear identification of what those lines represent.
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Moreover, as Patent Owner also explains, further extending the horizontal
surface of hooks 27 in Figure 6 would result in the hooks meeting the bolts of the
handle brackets, not the handle brackets. See App. Br. 16. As such, we agree with
Patent Owner that Plamper fails to disclose “two collector brackets respectively
mounted to the two handle brackets and configured to respectively accommodate
the limb elements.”
The Examiner alternatively concludes that, in view of Plamper alone, it
would have been obvious to mount the two collector brackets to the handle
brackets as required by the claims. Final Act. 5–6; Ans. 4–5. According to the
Examiner,
given the illustration in Fig. 6 which appears to show the collector
brackets mounted to the handle brackets, and given the need to provide
a secure mounting for the collector brackets which bear the weight of
the grass catcher/collector, it would have been obvious to one of
ordinary skill in the art to mount Plamper’s collector brackets to the
handle brackets so as to provide a secure and convenient mounting for
the collector brackets on the mower. Further, by mounting the collector
brackets on the handle brackets, these elements can be mounted
together onto the mower, thereby facilitating assembly.
Final Act. 5–6; see also Ans. 22–24.
First, we note that we disagree that Plamper “appears to show the collector
brackets mounted to the handle brackets.” As discussed above, Plamper expressly
discloses that the collector brackets are mounted to the housing, not the handle
brackets, and Figures 5 and 6 are consistent with this teaching.
Second, Patent Owner explains that the Examiner’s proposed modification
would increase the complexity of Plamper’s design. App. Br. 16. Additionally,
Patent Owner asserts that “connecting the hook 27 to the handle bracket would be
a very unlikely design” because “[f]rom a design and manufacturing standpoint, a
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design that goes out to the handle bracket would not be a good design as the head
of the pin would have to be worked around, thus requiring the hook 27 to be
notched to provide clearance.” App. Br. 16 (citing Nielsen Decl. ¶ 8). Patent
Owner also points out, based on Figure 6 of Plamper, the type of connection
between the hook and the handle bracket would be a “‘very weak’” “‘butt weld’”
“‘that would tend to shear load the joint.’” App. Br. 16 (citing Nielsen Decl. ¶ 8).
We agree with Patent Owner. The Examiner fails to provide sufficient
articulated reasoning with a rational underpinning to support the legal conclusion
of obviousness. Merely stating that the proposed arrangement would be “secure
and convenient” and “facilitate assembly,” without supporting reasoning, is
insufficient. As the Examiner acknowledges, the collector brackets bear the weight
of the grass catcher/collector. It seems illogical, then, for a skilled artisan modify
the secure mounting of the collector brackets to the housing to the weaker or less
secure mounting to the handle brackets. The Examiner also does not adequately
explain why a skilled artisan would mount the collector brackets to the handle
brackets in addition to the already secure mounting to the housing. See App. Br.
16. As Patent Owner points out, this modification would complicate an already
simple direct connection design. App. Br. 19.
Further, Patent Owner explains that “the connection of the hooks 27 to the
housing 12 is more convenient than mounting to the handle bracket for the
purposes required in Plamper, namely coupling the collector to the housing 12 [to
provide Plamper’s hinged connection].” App. Br. 18–19; see also App. Br. 14;
App. Br. 19 (“Making an already simple and straightforward connection (directly
to the housing) more complex by adding an additional (and from everything
learnable from Plamper also unnecessary) part between the housing and the
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collector bracket would not be rational.”); App. Br. 22 (noting that “there would be
nothing further to be gained, and to the contrary only an addition of further design
complication and material cost, by extending additional metal out to the handle
bracket to attach thereto” and that the Examiner proposed connection “is
extraneous, more costly and more complex (as also admitted) and cannot also
reduce the complication by enabling mounting ‘them’ together when considered in
this full context.”). As such, we determine that the Examiner erred in concluding
that Plamper renders the disputed limitation obvious.
Accordingly, for the reasons discussed above, we do not sustain the
rejections of claims 1, 2, 7, 8, 24, 25, and 30–34 based on Plamper.

B. The Obviousness Rejection Based on Plamper, Edwards, and Booher
Based on the record before us, we are persuaded that the Examiner erred in
rejecting claims 1, 2, 7, 8, 24, 25, and 30–34 under 35 U.S.C. § 103 as
unpatentable over Plamper, Edwards, and Booher. Namely, we agree with Patent
Owner that the Examiner fails to provide a rational basis as to why a skilled artisan
would modify Plamper in accordance with Edwards and Booher to arrive at the
claimed invention. See, e.g., App. Br. 25.
The Examiner finds that each of Edwards and Booher teaches “two collector
brackets respectively mounted to the two handle brackets and configured to
respectively accommodate the limb elements” and then concludes the combination
would be obvious. Final Act. 8–9; Ans. 7–8. Specifically, the Examiner
determines that
it would have been obvious to one of ordinary skill in the art at the time
the invention was made to modify Plamper by forming the collector
brackets separately from the handle brackets and then mounting the
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collector brackets to the handle brackets that are positioned
immediately adjacent to the collector brackets. Such a construction (a)
allows the collector brackets and handle brackets to be manufactured
separately, thereby reducing the complexity of the parts which must be
produced, (b) enables the collector brackets and handle brackets to be
replaced separately, at a lower cost, when repairs are needed, and (c)
provides a secure and convenient mounting for the collector brackets
on the mower.
Final Act. 9; see also Ans. 25–26
The Examiner’s reasons (a) and (b), regarding separate manufacturing and
the ability to separately replace the collector brackets and the handle brackets, lack
merit. Plamper’s collector brackets (i.e. hooks) and handle brackets are already
separate components. It is the Examiner, not Plamper, that suggests assembling
the collector bracket and handle bracket together and then mounting the combined
brackets to the housing (as discussed in the obviousness rejection based on
Plamper alone). See Final Act. 6. Plamper, though, does not support this
suggestion. To the contrary, Plamper describes that the collector brackets are
mounted to the housing. Plamper, col. 3, ll. 51–53. Figures 5 and 6 also depict the
collector brackets and handle brackets as separate components. As such, any
benefit achieved by making the collector brackets and handle brackets separate
components is already achieved by Plamper’s invention. More importantly, having
the collector brackets and handle brackets as separate components does not provide
any explanation as to why a skilled artisan would modify Plamper’s collector
brackets to be mounted to the handle brackets, instead of being mounted to the
housing.
The Examiner’s third reason, that the proposed modification would provide
a secure and convenient mounting for the collector brackets on the mower, is
similarly insufficient. Essentially, the Examiner’s proposed combination requires
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moving the collector brackets mounting from the housing to the handle bracket
resulting in a less secure mounting and less convenient mounting for Plamper’s
hinged connection of the collector frame. See, e.g., App. Br. 16, 18–19; Nielson
Decl. ¶ 8. As discussed above with respect to the obviousness rejection based on
Plamper alone, merely stating that the alternative mounting to the handle brackets
would be a secure and convenient mounting, without a supporting explanation,
fails to provide adequate rationale to support the combination.
Accordingly, for the reasons discussed above, we do not sustain the
rejections of claims 1, 2, 7, 8, 24, 25, and 30–34 based Plamper, Edwards, and
Booher.

C. The Obviousness Rejections Based on Kiteley, Edwards, and Plamper
For similar reasons, based on the record before us, we determine that the
Examiner erred in rejecting claims 1, 2, 7, 8, 22, 24, 25, and 31–33 under 35
U.S.C. § 103 as unpatentable over Kiteley, Edwards, and Booher and rejecting
claims 23, 26–28, 30, and 31 under 35 U.S.C. § 103 as unpatentable over Kiteley,
Edwards, Booher, Meyer, and Toro.
Kiteley is directed to a lawn mower and grass catcher including handle
brackets, each with a slot to receive a laterally bent extremity 15 of metal bracket
14. Kiteley, Figs. 1, 2, and 5, p. 4. The Examiner relies on Edwards and Booher to
modify Kiteley such that each handle bracket is broken into two separate brackets,
a handle bracket and a collector bracket (that receives the lateral extremity), and
then is mounted together. Final Act. 10–11; Ans. 9–10. The Examiner then
repeats the same reasoning, discussed above with respect to Plamper, Edwards, and
Booher, to support the combination. Namely, the Examiner determines that a
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skilled artisan would modify Kiteley, in view of Edwards and Booher, (a) to allow
separate manufacturing of the collector brackets and handle brackets, (b) to enable
the ability to separately replace each bracket, and (c) to provide a secure and
convenient mounting for the collector brackets on the mower. Final Act. 11;
Ans. 10.
We agree with Patent Owner that Examiner fails to provide some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness. While the Examiner’s points regarding separate manufacturing and
replace ability of the bracket components are at least applicable here, we disagree
with the Examiner’s reasoning. For example, Patent Owner explains how
separating the handle bracket into two brackets adds complexity to the
manufacturing process and increases cost. App. Br. 29 (citing Lambert Decl.
¶ 13). Further, Patent Owner points out that “the collector brackets and handle
brackets are not prone to excessive wearing and, in fact, are expected to last the
entire life of the lawn mower” and thus would not benefit from allegedly being
able to be separately replaced. App. Br. 29–30 (citing Lambert Decl. ¶ 15).
Further, we fail to see how separating the handle brackets into separate
handle and collector brackets creates a secure and convenient mounting. This
modification again replaces one secure mounting with a weaker or less secure
mounting. As such, we determine that the Examiner’s conclusory assertions,
without more, fails to provide sufficient rationale to support the combination. See,
e.g., Reply Br. 33.
Accordingly, for the reasons discussed above, we do not sustain the rejection
of claims 1, 2, 7, 8, 22, 24, 25, and 31–33 based Plamper, Edwards, and Booher
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and the rejection of claims 23, 26–28, 30, and 31 based on over Kiteley, Edwards,
Booher, Meyer, and Toro.

D. The Written Description Rejection of claims 27, 28, 31, and 33
The Examiner rejects claims 27, 28, 31, and 33 as failing to comply with the
written description requirement. Final Act. 14. According to the Examiner claims
27 and 28 each recite new matter because the claims recite “downward path” while
the Specification only describes a “substantially downward path.” Final Act. 14.
Patent Owner, however, contends that
if support exists for “substantially downward path,” Appellant contends
that support also exists for “downward path.” Indeed, the term
“substantially” is a “descriptive term commonly used to ‘avoid a strict
numerical boundary to the specified parameter.’” See Ecolab, Inc. v.
Envirochem, Inc., 264 F.3d 1358 (Fed. Cir. 2001)(quoting Pall Corp.
v. Micron Seps., 66 F.3d 1211, 1217 (Fed. Cir. 1995). As such, a
“substantially downward path” necessarily includes a “downward path”
and a range of values nearby, just as “substantially 3 mph” would
include “3 mph” and a range of values nearby. For at least these reasons,
the written description rejections of claims 27 and 28 should be
reversed.
App. Br. 46. We find Patent Owner’s argument persuasive. We similarly agree
with Patent Owner that the Specification disclosure of substantially U-shaped is
adequate written description support the U-shaped limitation, as recited in claim
31. See App. Br. 47. As such, we determine that the Examiner erred in rejecting
claims 27, 28, and 31 for lack of written description support.
The Examiner rejects claim 33 as reciting new matter because, according to
the Examiner, the widths shown in Figs. 3B-4A include portions of the collector
brackets defined by projections 138. Final Act. 14. As Patent Owner points out
though, claim 33 does not recite the collector brackets having any projections. As
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such, we agree with Patent Owner that “[i]t seems the Examiner has imported the
projections 138 shown in Fig. 4A into the structure of the collector brackets recited
in claim 33.” App. Br. 47. Further, “[r]egardless, any collector bracket, whether
or not it also includes integral or non-integral projections, will have a width.” Id.
As such, we determine that the Examiner erred in rejecting claims 33 for lack of
written description support.
Accordingly, for the reasons discussed above, we do not sustain the rejection
of claims 27, 28, 31, and 33 under 35 U.S.C. § 112 (pre-AIA), first paragraph.

D. The Indefiniteness Rejection
We similarly agree with Patent Owner that the Examiner erred in rejecting
claims 26–28 as indefinite. Namely, the Examiner finds that the references to a
“respective . . . collector brackets” and “a corresponding limb element” in claims
26–28 is unclear because two collector brackets or two limb elements are
introduced in claim 1 and “it is unclear whether the ‘collector brackets’ of claim 26
correspond to the collector brackets of claim 1, or if this term refers to different
collector brackets.” Final Act. 14–15.
We disagree. A skilled artisan would understand that claim 1 recites two
collector brackets and two limb elements and “[c]laim 26 [] clarifies that the ends
of the limb elements are received in the ‘respective ... collector brackets’. Given
this entire context, one of ordinary skill in the art would appreciate that the
‘respective ... collector brackets’ in claim 26 do in fact correspond to the ‘two
collector brackets’ in claim 1.” App. Br. 47; see also App. Br. 47–48 (presenting
similar arguments with respect to claims 27 and 28). In other words, a skilled
artisan would easily appreciate the meaning of the disputed limitations.
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With respect to claims 27 and 28, the Examiner also finds that the term
“passage” recited in claims 27 and 28 indefinite because each collector bracket
defines a passage and it is unclear whether the singular “passage” refers to one of
the two passages or both passages. Final Act. 15. Similarly, the Examiner finds
the term “the end” in claim 28 is indefinite because “each of the limb elements has
been defined as having a corresponding end (see ll. 1-3). Since there is more than
one end, it is unclear what the singular term ‘the end’ refers to, e.g., one of the two
ends or both of the ends.” Final Act. 15.
We find Patent Owner’s arguments persuasive. Patent Owner “submits that
one of skill in the art would easily appreciate that after defining that ‘each of the
collector brackets defines a passage’ it is clear that the further reference to ‘the
passage’ relates to each of the passages.” App. Br. 48. And Patent Owner
contends that “one of skill in the art would easily appreciate that after defining that
the limb elements each have a corresponding end it is clear that the further
reference to ‘the end’ relates to each of the limb element ends.” App. Br. 48. As
such, a skilled artisan would easily understand the language of claims 26–28 and
we determine that the Examiner erred in rejecting claims 26–28 as indefinite.
Accordingly, for the reasons discussed above, we do not sustain the rejection
of claims 26–28 under 35 U.S.C. § 112 (pre-AIA), second paragraph.

E. The Written Description Rejection of Claims 26, 29, 30, 32, and 34
We also agree with Patent Owner that the Specification provides adequate
written description support for claims 26, 29, 30, 32, and 34. Namely, the
identification of issues with these claims rely on minor discrepancies between the
language of the claim and the disclosure of the Specification. See Final Act. 15–
Appeal 2016-001569
Reexamination Control 90/013,329
Patent 7,866,134 B2

19
16. For example, the Examiner notes that claim 26 recites inward facing while the
Specification describes “mounted on inner sides” and claim 30 recites “flared”
while the Specification refers to “sloped portions” or “tapered.” Final Act. 15–16.
As Patent Owner explains, a skilled artisan would easily appreciate the recited
claim limitations based upon the similar disclosure of the Specification. See, e.g.,
App. Br. 49–51.
Accordingly, for the reasons discussed above, we do not sustain the rejection
of claims 26, 29, 30, 32, and 34 under 35 U.S.C. § 112 (pre-AIA), first paragraph.

VI. CONCLUSION
We reverse the Examiner’s decisions to reject claims 1, 2, 7, 8, 22–28, and
30–34.

REVERSED

Appeal 2016-001569
Reexamination Control 90/013,329
Patent 7,866,134 B2

20

PATENT OWNER:

KNOBBE, MARTENS, OLSON & BEAR LLP
2040 Main Street
14TH Floor
Irvine, CA 92614

FOR THIRD-PARTY REQUESTER:

JAMES W. MILLER, ATTORNEY
527 MARQUETTE A VENUE
SUITE 1960, RAND TOWER
MINNEAPOLIS, MN 55402