Ex Parte Curry

Patent Trial and Appeal Board

Dec 7, 2018

15719716 (P.T.A.B. Dec. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/719,716 09/29/2017
23859 7590 12/11/2018
Ballard Spahr LLP
SUITE 1000
999 PEACHTREE STREET
ATLANTA, GA 30309-3915
FIRST NAMED INVENTOR
Brett Curry
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
36328.0152U2 8652
EXAMINER
COCHRAN, BRIDGET A
ART UNIT PAPER NUMBER
3641
NOTIFICATION DATE DELIVERY MODE
12/11/2018 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):
USpatentmail@ballardspahr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRETT CURRY
Appeal2018-004397
Application 15/719, 716 1
Technology Center 3600
Before STEFAN STAICOVICI, CHARLES N. GREENHUT, and
BRENT M. DOUGAL, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE-
Brett Curry ("Appellant") appeals under 35 U.S.C. § 134(a) from the
Examiner's decision in the Final Office Action (dated Dec. 28, 2017,
hereinafter "Final Act.") rejecting claims 1 and 3-16. 2 We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
1 American Outdoor Brands Corporation is the applicant and is identified as
the real party in interest in Appellant's Appeal Brief (filed Jan. 8, 2018,
hereinafter "Appeal Br."). Appeal Br. 1.
2 Claim 2 is cancelled. See Appeal Br. 10 (Claims App.).
Appeal2018-004397
Application 15/719, 716
We AFFIRM.
SUMMARY OF DECISION
INVENTION
Appellant's invention is directed "to detent mechanisms." Spec. 1.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A detent mechanism, comprising:
a housing;
a pin bore positioned within said housing, said pin bore
extending longitudinally along a pin bore axis;
a plunger cavity comprising a blind hole positioned
within said housing and intersecting said pin bore, said plunger
cavity extending longitudinally along a plunger cavity axis, said
plunger cavity axis being oriented transversely to said pin bore
axis, said blind hole having an open end terminating on a
surface of said housing and a closed end terminating within said
housing, said spring being positioned between said closed end
and said plunger;
a pin having a tip, said pin being positioned within said
pin bore and movable along said pin bore axis between a first
position, wherein said tip projects from said housing, and a
second position, wherein said tip is within said housing;
an action surface positioned on said pin, said action
surface being oriented transversely to said pin bore axis;
a plunger having an end, said plunger being positioned
within said plunger cavity and movable along said plunger
cavity axis;
a spring positioned within said plunger cavity and biasing
said end of said plunger into engagement with said action
surface of said pin.
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Appeal2018-004397
Application 15/719, 716
REJECTIONS
I. The Examiner rejects claims 1 and 3-16 on the ground of
nonstatutory double patenting as being unpatentable over
claims 1-18 of Curry (US 9,810,506 B2, iss. Nov. 7, 2017,
hereinafter "Curry '506").
II. The Examiner rejects claim 1 under 35 U.S.C. § 112(b) or
35 U.S.C. § 112 (pre-AIA), second paragraph, as being
indefinite.
III. The Examiner rejects claims 1, 3---6, 8, 9, 11-14, and 16 under
35 U.S.C. §§ 102(a)(l) and 102 (a)(2) as being anticipated by
Mooney (US 4,934,081, iss. June 19, 1990).
IV. The Examiner rejects claims 7, 10, and 15 under 35 U.S.C.
§ 103(a) (pre-AIA) as being unpatentable over Mooney.
ANALYSIS
Rejection I
Appellant does not challenge the merits of the Examiner's
nonstatutory double patenting rejection of claims 1 and 3-16 over claims
1-18 of Curry '506. See Appeal Br. 8. Rather, Appellant states that a
terminal disclaimer will be filed once the application underlying this appeal
is in condition for allowance. See id. Accordingly, we decline to reach the
merits of the double patenting rejection.
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Application 15/719, 716
Rejection II
The Examiner finds that the limitations "said spring" in line 10 and
"said plunger" in line 11 of claim 1 lack antecedent basis. Final Act. 4. The
Examiner further finds that the limitations "a plunger" in line 18 and "a
spring" in line 20 are indefinite because it is not clear whether they refer to
the same plunger and spring recited in lines 11 and 10, respectively, or to a
different plunger and spring. Id.
Appellant "acknowledges that the elements 'said spring' in line 10 of
claim 1 and 'said plunger' in line 11 lack sufficient antecedent basis."
Appeal Br. 8. However, as Appellant does not address the limitations of "a
plunger" in line 18 and "a spring" in line 20, we summarily sustain the
rejection of claim 1 as indefinite. See In re Berger, 279 F.3d 975, 984--85
(Fed. Cir. 2002) (holding that the Board did not err in sustaining a rejection
under 35 U.S.C. § 112, second paragraph, when the applicant failed to
contest the rejection on appeal).
Rejection III
Appellant does not present arguments for the patentability of claims
3---6, 8, 9, 11-14, and 16 apart from claim 1. See Appeal Br. 6
("[D]ependent claims 3-6, 8, 9, 11-14, and 16 are not anticipated by
Mooney by the same reasoning showing that claim 1 is not anticipated by
Mooney .... "). Therefore, in accordance with 37 C.F.R. § 4I.37(c)(l)(iv),
we select claim 1 as the representative claim to decide the appeal of the
rejection of these claims, with claims 3---6, 8, 9, 11-14, and 16 standing or
falling with claim 1.
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Application 15/719, 716
The Examiner finds that Mooney discloses a detent mechanism
including, inter alia, a housing, a pin 34 (yoke stud) 3 located within pin bore
35 (cylindrical bore), which is positioned within the housing, a plunger 48
(pin) located within plunger cavity 60 ( outer recess), which constitutes a
blind hole positioned within the housing with an open end terminating on the
surface of the housing and a closed end within the housing, and a coil spring
46 located within plunger cavity 60 for biasing an end of plunger 48 into
engagement with transversely oriented action surface 72 of the tip of pin 34.
See Final Act. 4--5 (citing Mooney, Figs. 4--6), 6 (Examiner's annotated
version of Mooney's Figure 6).
Appellant argues that "Mooney does not disclose a plunger cavity
comprising a blind hole in the housing of the detent mechanism as recited in
claim 1." Appeal Br. 5. According to Appellant, Mooney's hole 56 is not a
blind hole, rather it is a through-hole that does not "have a closed end which
terminates in the housing," and "spring 46 and plunger 48 ... are captured
by a recess 60 in retainer screw 40, and not in a blind hole in the housing as
recited in [ c] laim 1" because " [ r] ecess 60 does not terminate in the housing,
but in the retainer screw 40." Id. at 4, 6. Appellant contends that Mooney's
screw 44 does not constitute a "housing," as called for by claim 1, but rather
"a screw threadedly engaged with a housing." See Reply Brief 2-3 (filed
Mar. 22, 2018, hereinafter "Reply Br.").
We are not persuaded by Appellant's arguments for the following
reasons. First, the Examiner is not relying on hole 56 as the claimed
"plunger cavity," rather the Examiner is relying on Mooney's outer recess
3 Parenthetical nomenclature refers to Mooney.
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60 "where element 46 is located." See Examiner's Answer 13 (dated
Mar. 21, 2018, hereinafter "Ans."). Secondly, we agree with the Examiner
that "the term 'housing' does not dictate a unitary element," and, thus, as
screw 44 "is screwed into elements 12 and 42 they together form 'the
housing'." Id. ( emphasis added).
"[C]laims under examination before the PTO are given their broadest
reasonable interpretation consistent with the specification." In re Abbott
Diabetes Care Inc., 696 F.3d 1142, 1148 (Fed. Cir. 2012). Here,
Appellant's Specification does not assign or suggest a particular definition to
the claim term "housing" and therefore, it is appropriate to consult a general
dictionary definition of the word for guidance in determining the ordinary
and customary meaning of the claim term as viewed by a person of ordinary
skill in the art. See Comaper Corp. v. Antee, Inc., 596 F.3d 1343, 1348 (Fed.
Cir. 2010). An ordinary and customary meaning of the term "housing" is
"something that covers or protects: such as a : a case or enclosure (as for a
mechanical part or an instrument). "4 Such an interpretation is consistent
with Appellant's Specification, which describes housing 30 as enclosing
( covering) the elements of the claimed detent mechanism, namely, pin 46,
plunger 60, spring 64, pin bore 32, and plunger cavity 36. See Spec. 7-8,
Fig. 4.
As such, the Examiner's interpretation of Mooney's elements 12
(frame), 44 (screw), and 42 (side plate) as together constituting the claimed
"housing" is reasonable because Mooney's elements 12, 42, and 44 together
4 See https://www.merriam-webster.com/dictionary/housing (last visited
December 4, 2018).
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Application 15/719, 716
enclose ( cover) a detent mechanism formed by pin 34, plunger 48, spring 46,
pin bore 35, and plunger cavity 60. Moreover, we could not find any portion
in Appellant's Specification, and Appellant has not pointed to any portion
compelling a narrower reading of the term "housing" as a "unitary element."
See also Ans. 13. Therefore, in contrast to Appellant's assertion, Mooney
discloses a plunger cavity 60 that constitutes a blind hole positioned within
housing 12, 42, 44 having an open end terminating on a surface of the
housing and a closed end terminating within the housing. See Ans. 14 (the
Examiner's annotated version of Mooney's Figure 6).
In conclusion, for the foregoing reasons, we sustain the anticipation
rejection of claim 1. Claims 3-6, 8, 9, 11-14, and 16 fall with claim 1.
Rejection IV
In addition to the arguments discussed supra, which we did not find
persuasive (see Appeal Br. 7), Appellant further contends that "[b ]ecause the
retainer screw [ 44] can be omitted without affecting the function of the
mechanism, applicant's invention is ipso facto non obvious according to the
MPEP and In re Edge." Id. at 8 (citing MPEP § 2144.04(II)(B) and In re
Edge, 359 F.2d 896 (CCPA 1966)).
We are not persuaded by Appellant's argument because as the
Examiner correctly states "the screw [ 44] is considered to be part of the
housing, and is not omitted." Final Act. 2. For the reasons discussed above,
we do not agree with Appellant's assertion that "[t]he retainer screw [44] is a
separate part from the housing." Appeal Br. 8. Therefore, as Mooney's
elements 12 (frame), 44 (screw), and 42 (side plate) together constitute the
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claimed "housing," we do not agree with Appellant that "[t]he retainer screw
[ 44] ... is unnecessary and can be omitted without affecting the function of
the [ detent] mechanism." Id. Moreover, as indicated by the first sentence of
MPEP § 2144, "Indicia ofUnobviousness" under MPEP § 2144.04(II)(B)
should not be regarded as creating any per se rule.
Accordingly, we also sustain the rejection under 35 U.S.C. § 103(a) of
claims 7, 10, and 15 as unpatentable over Mooney.
SUMMARY
The Examiner decision to reject claim 1 under 35 U.S.C. § 112(b) or
35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite, is affirmed.
The Examiner's decision to reject claims 1 and 3-16 under 35 U.S.C.
§ § 102 and 103 is affirmed.
We decline to reach the merits of the Examiner's nonstatutory double
patenting rejection of claims 1 and 3-16 over claims 1-18 of Curry '506.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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