Ex Parte Ernst et alDownload PDFPatent Trial and Appeal BoardAug 7, 201310687451 (P.T.A.B. Aug. 7, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte RICHARD J. ERNST, DONALD BUYTAERT, and MICHAEL S. POPOVICH ____________________ Appeal 2010-007548 Application 10/687,451 Technology Center 3600 ____________________ Before: LYNNE H. BROWNE, REMY J. VANOPHEM, and ANNETTE R. REIMERS, Administrative Patent Judges. VANOPHEM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-007548 Application 10/687,451 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s rejection of claims 32, 35, 36, 37 and 38.1 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. The claims are directed to a rod hanger for securing a rod to a substrate. Spec. 1; figs. 1-2. Claim 36, reproduced below, is illustrative of the claimed subject matter: 36. A rod hanger for attachment with a fastener to a substrate when the fastener is driven into the substrate and frictionally held in the substrate, the rod hanger for securing a rod to the substrate, comprising: a mounting portion defining a perimeter edge, having generally planar top and bottom surfaces, said generally planar top surface configured for engaging the substrate that the fastener is driven into and that frictionally holds the fastener and having a hole extending between said top and bottom surfaces configured for engaging the fastener; a rod receiving portion configured for threadably receiving the rod; a connecting element configured for vertically displacing said mounting portion and said rod receiving portion; and, at least four anti-rotation elements on said mounting portion generally planar top surface spaced apart from said hole, spaced apart from said perimeter edge and configured for penetratingly engaging the substrate that the fastener is driven 1 Appellant’s Brief at page 2 states that “[c]laims 1, 2, 8, 12, 26, and 32-38 stand rejected in a final rejection mailed June 24, 2009. The rejections of claims 32, 35, 36, 37 and 38 are appealed.” The Examiner in the Answer at page 2 states that “the status of claims contained in the brief is correct.” Appeal 2010-007548 Application 10/687,451 3 into and that frictionally holds the fastener in place and for counteracting a moment acting upon said rod hanger as the rod is threadably received by said rod receiving portion, and further including a resilient cover for enhancing the adhesion of the mounting portion with the substrate. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Gutshall US 3,788,185 Jan. 29, 1974 Jones US 5,546,723 Aug. 20, 1996 Logue US 5,758,465 Jun. 2, 1998 Farrell US 6,866,458 B2 Mar. 15, 2005 REJECTIONS Appellants seek our review of the following rejections: 1. Claim 37 stands rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellants regards as their invention.2 2. Claims 32, 35, 36, and 38 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Logue, Jones, and Gutshall. 2 We note that the Examiner has not rejected claim 37 under the prior art rejection. Appeal 2010-007548 Application 10/687,451 4 ANALYSIS Claim 37 as indefinite under 35 U.S.C. § 112, second paragraph. Claim 37 stands rejected under 35 U .S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. The Examiner finds that it is not clear what shape is being claimed as Appellants are now claiming a generally hemispherical shape while the Examiner used a generally truncated hollow cone shape in the previous action. Ans. 3. In response to this rejection Appellants state “[c]laim 1 recites that the anti-rotation elements have one of a generally hemisphered or a truncated cone shape. Claim 37 depends from claim 1 and recites that the elements have a generally hemispherical shape. App. Br. 19; Reply Br. 7-8. Appellants argue that the Examiner’s rejection is not clear, is not well- founded, and is improper. App. Br. 19. In the Reply Brief Appellants further argue “[t]he Examiner's position is not clear. It is not understood, for instance, why a drawing showing both hemisphered and truncated cone shaped elements is necessary for claim 37 to be definite. Reply Br. 8. We agree. The legal standard for definiteness under 35 U.S.C. § 112, second paragraph, is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565-1576 (Fed. Cir. 1986). We understand the Examiner to be rejecting claim 37 because it further limits claim 1 to anti-rotation elements having generally hemisphered shape and Appellants drawings do not show both hemisphered shape anti-rotation elements and truncated cone shaped elements in the same drawing. We Appeal 2010-007548 Application 10/687,451 5 know of no requirement that alternative elements, such as Appellants hemisphered shape anti-rotation elements and truncated cone shaped elements be shown in the same drawing in order for a claim reciting one of the alternatives to be definite. Accordingly, we do not sustain the Examiner’s rejection of claim 37. The Examiner’s stated rationale in support of the rejection for indefiniteness does not point out just what it is about the recitations of structure in the claim which renders the scope of claim 37 not reasonably determinable. While the claim may cover the inclusion of unspecified components, that does not render the claim indefinite under 35 U.S.C. § 112, second paragraph. Claim scope is defined by the components which have been specified and recited, together with the functions they perform according to claim features. Breadth of coverage, however broad, is not equitable to indefiniteness. In re Miller, 441 F.2d 689, 693 (CCPA 1971); see also In re Gardner, 427 F.2d 786, 788 (CCPA 1970). Accordingly, we do not sustain the Examiner’s rejection of claim 37 under 35 U.S.C. § 112, second paragraph. Claims 32, 35, 36, and 38 as obvious over Logue, Jones and Gutshall. Independent claim 36 recites “a resilient cover for enhancing the adhesion of the mounting portion with the substrate.” App. Br., Clms. App’x. Independent claim 35 recites similar language. The Examiner finds that Logue, in view of the teachings of Jones, does not specifically teach wherein the at least four anti-rotation members include a resilient cover, secured by a chemical adhesive, and the resilient cover is formed of a polymer. Ans. 6. The Examiner further finds that Gutshall teaches “wherein a mounting is secured by a resilient cover.” Id. Appeal 2010-007548 Application 10/687,451 6 The Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time the invention was made to have modified the rod hanger of Logue in view of the teachings of Jones with four shaped anti- rotation elements to include the resilient cover on each anti-rotation element as taught by Gutshall “wherein so doing would provide for a protective coating on the anti-rotation [elements].” Id. Appellants contend that the Examiner failed to cite to “any particular portion of the [Gutshall] patent by column, line, element number or [f]igure[that was relied upon by the Examiner].” App. Br. 14. Appellants further contend that despite [Appellants’] express request for clarification on this issue . . . no further detail was provided in the Final Action regarding what particular portion(s) of the [Gutshall] patent were relied upon. No column, lines, figures or elements are identified. Repeated rejections that lack specificity have added to the difficulty in understanding and addressing the rejection over the [Gutshall] patent. App. Br. 14-15. Appellants also argue that no prima facie case of obviousness has been put forth, since Gutshall fails to teach a resilient cover as claimed in claim 36 but instead discloses a very different seal washer. App. Br. 8-10. According to Appellants, the seal washer 30 of Gutshall is not a “resilient cover” that extends over anti-rotation elements, as claimed and as the Final Action alleges it to be, but is instead a “seal washer.” It serves a very different purpose than the claimed resilient anti-rotation element cover. The washer of Gutshall acts as a seal between a fastener shaft and a rigid washer. Id. Appeal 2010-007548 Application 10/687,451 7 We find Appellants’ arguments persuasive. The PTO fails to carry its procedural burden of establishing a prima facie rejection when the rejection is so “uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection.” (In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) citing Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990). In this case, the omission by the Examiner of the particular portion(s) of Gutshall the Examiner was relying upon suggests Appellants were not afforded a fair opportunity to react to the thrust of the Examiner’s rejection. See In re Jung, 637 F. 3d at 1365 (“It is well-established that the Board is free to affirm an examiner's rejection so long as ‘appellants have had a fair opportunity to react to the thrust of the rejection.’”) (citing In re Kronig, 539 F.2d 1300, 1302-03 (CCPA 1976)). Furthermore, like Appellants, we fail to see how the “seal washer” of Gutshall would render obvious a resilient cover for enhancing the adhesion of the mounting portion with the substrate, as required by claim 36. Accordingly, for the foregoing reasons, we are constrained to reverse the Examiner’s rejection of claims 32, 35, 36 and 38 as obvious over Logue, Jones, and Gutshall. DECISION The decision of the Examiner is reversed as to claims 32, 35, 36, 37 and 38. REVERSED Klh Copy with citationCopy as parenthetical citation