Ex Parte Holowczak et alDownload PDFPatent Trial and Appeal BoardDec 12, 201311682390 (P.T.A.B. Dec. 12, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JOHN E. HOLOWCZAK and CONNIE E. BIRD ____________________ Appeal 2012-000892 Application 11/682,390 Technology Center 3600 ____________________ Before STEFAN STAICOVICI, SCOTT A. DANIELS, and JEREMY M. PLENZLER, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-000892 Application 11/682,390 2 STATEMENT OF CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1-12, 14, and 17-21. Claims 13, 15, and 16 are cancelled and claims 22 and 23 are withdrawn. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART and enter a NEW GROUND OF REJECTION. CLAIMED SUBJECT MATTER Claims 1, 10, and 18 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A hard ballistic material comprising: a monolithic ceramic layer; and a rear face Ceramic Matrix Composite (CMC) layer continuously bonded to a rear face of said monolithic ceramic layer to provide a close thermal expansion match of said monolithic ceramic layer and said Ceramic Matrix Composite (CMC) layer. REJECTIONS 1. Claim 20 is rejected under 35 U.S.C. § 112, second paragraph, as indefinite; 2. Claims 1-12, 14, 17-19, and 21 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Lucuta (WO 03/010484 A1; pub. Feb. 6, 2003) and Benitsch (US 2007/0116939 A1; pub. May 24, 2007); and 3. Claim 20 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Lucuta, Benitsch, and Dunn (US 5,349,893; iss. Sep. 27, 1994). Appeal 2012-000892 Application 11/682,390 3 OPINION Indefiniteness – Claim 20 The Examiner asserts that claim 20 is indefinite because of the use of a trademark or trade name in the claim as a limitation to identify or describe a particular material or product. Ans. 4. Appellants do not challenge the merits of the rejection. App. Br. 3; Reply Br. 1. Accordingly, we summarily sustain the rejection of claim 20 as indefinite. New Ground – Indefiniteness – Claims 1-12, 14, and 17-21 Claims 1, 10, and 18 each recite “a close thermal expansion match” between the monolithic ceramic layer and the Ceramic Matrix Composite (CMC) layer. The test 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) (citation omitted). Definiteness problems often arise when terms of degree are used, however, imprecise terms can be definite if they are defined properly in the specification. See Seattle Box Co., Inc. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984). The terminology “close thermal expansion match” is a term of degree. We do not see anything in Appellants’ Specification providing a standard for measuring the degree of closeness for the claimed thermal expansion match. Paragraph [0026] of Appellants’ Specification simply states that “[t]he close thermal expansion match between the CMC layer 52 and the monolithic Appeal 2012-000892 Application 11/682,390 4 ceramic layer 54 face insures that any pre-straining of the materials is minimized.” This is the first, and only, reference to the “close thermal expansion match” in the Specification and does not define what constitutes a close thermal expansion match (i.e., the degree of closeness required). The explanation that the close thermal expansion match minimizes pre-straining does not further clarify the degree of closeness required for the claimed “close thermal expansion match.” For these reasons, one skilled in the art would be unable to determine the metes and bounds of the claimed invention. Claims 2-9, 11, 12, 14, 17, and 19-21 depend from claim 1, 10, or 18 and do not further correct the ambiguity in claims 1, 10, and 18. Accordingly, and pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW GROUND OF REJECTION against claims 1-12, 14, and 17-21 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 regard as the invention. Obviousness – Claims 1-12, 14, and 17-21 Because we found that claims 1-12, 14, and 17-21 are indefinite, a determination of the scope of these claims would require us to resort to considerable speculation as to the meaning of the terms employed and assumptions as to the scope of the claims. Therefore, any determination on the merits of the Examiner’s rejections of claims 1-12, 14, and 17-21 is imprudent. See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (holding that the Board erred in affirming a rejection of indefinite claims under 35 U.S.C. § 103(a), because the rejection was based on speculative assumptions as to the meaning of the claims). As such, we are constrained to reverse the Appeal 2012-000892 Application 11/682,390 5 Examiner’s rejection of claims 1-12, 14, 17-19, and 21 as being unpatentable over Lucuta and Benitsch and the Examiner’s rejection of claim 20 as being unpatentable over Lucuta, Benitsch, and Dunn. DECISION We AFFIRM the Examiner’s decision to reject claim 20 as indefinite. We REVERSE the Examiner’s decision to reject claims 1-12, 14, 17- 19, and 21 as being unpatentable over Lucuta and Benitsch. We REVERSE the Examiner’s decision to reject claim 20 as being unpatentable over Lucuta, Benitsch, and Dunn. Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW GROUND OF REJECTION for claims 1-12, 14, and 17-21 under 35 U.S.C. § 112, second paragraph. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground 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 proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . Appeal 2012-000892 Application 11/682,390 6 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). AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b) llw Copy with citationCopy as parenthetical citation