Ex Parte Michienzi

Patent Trial and Appeal Board

Dec 12, 2018

14233212 (P.T.A.B. Dec. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/233,212 01/16/2014
14299 7590 12/12/2018
WATERS TECHNOLOGIES CORPORATION
c/o Schmeiser, Olsen & Watts LLP
33 Boston Post Road West
Suite 410
Marborough, MA 01752
FIRST NAMED INVENTOR
Joseph D. Michienzi
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.
W-713-US2 (WAT-070US) 7503
EXAMINER
PEO,KARAM
ART UNIT PAPER NUMBER
1777
MAIL DATE DELIVERY MODE
12/12/2018 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 JOSEPH D. MICHIENZI
Appeal2018-000660
Application 14/233,212 1
Technology Center 1700
Before KAREN M. HASTINGS, JEFFREY R. SNAY, and
JANEE. INGLESE, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant requests our review under 35 U.S.C. § 134(a) of the
Examiner's final decision rejecting claims 8-13. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellant, the real party in interest is Waters Technologies
Corporation (Appeal Br. 4).
Appeal2018-000660
Application 14/233,212
Independent claim 8 is illustrative ( emphasis added to highlight key
limitation in dispute):
8. A tubing assembly comprising:
an outer tube comprising a metal;
an intermediate tube comprising a polymeric material and
disposed within the outer tube; and
first inner tube disposed within the intermediate tube, wherein
the outer tube is deformed by a uniform radial crimp at a
longitudinal location along the outer tube to form a fluid-tight
seal between the first inner, intermediate and outer tubes, and
wherein the uniform radial crimp has a substantially flat base
region over which a diameter of the outer tube is reduced for a
non-zero longitudinal length.
The following rejections have been maintained by the Examiner:
a. Claims 8-13 are rejected under 35 U.S.C. § 112, second paragraph
for being indefinite;
b. Claims 8-12 are rejected under 35 U.S.C. § I02(b) as being
anticipated by Benevides (WO 2009/088663 Al, published July 16, 2009);
c. Claim 13 is rejected under 35 U.S.C. § I03(a) as being
unpatentable over Benevides.
ANALYSIS
We have reviewed each of Appellant's arguments for definiteness and
patentability. However, we determine that a preponderance of the evidence
supports the Examiner's finding that the language of claims 8-13 is
indefinite, and that the claimed subject matter of independent claim 8 ( as
well as dependent claims 9-12, which are not separately argued) is
anticipated within the meaning of§ 102 in view of the applied prior art.
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Application 14/233,212
Accordingly, we will sustain the Examiner's§§ 112 and 102 rejections, as
well as the Examiner's§ 103 rejections for essentially those reasons
expressed in the Answer, including the Examiner's Response to Argument
section, and we add the following primarily for emphasis.
The § 112 Re} ection
During prosecution, claims are definite if they "set out and
circumscribe a particular area with a reasonable degree of precision and
particularity." In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).
The Examiner found the language of independent claim 8 indefinite,
since the claim requires "substantially flat base region" but does not provide
any guidance as to what constitutes substantially flat, nor does the
Specification provide adequate guidance as to what is meant by a non-zero
longitudinal length as recited therein (Final Act. 2, 3; Ans. 3, 6-8).
Appellant points out that the Specification describes that the non-zero
longitudinal length, as well as a substantially flat base region, is compared to
a conventional line crimp (e.g., Appeal Br. 11, 12).
In prosecution before the PTO "[i]t is the applicants' burden to
precisely define the invention, not the PTO's." In re Morris, 127 F.3d 1048,
1056 (Fed. Cir. 1997). The purpose of this requirement is to provide the
public with adequate notice of the boundaries of protection involved. The
time to do so is during prosecution where an applicant has the ability to
amend the claims to more precisely define the metes and bounds of the
claimed invention. See Ex parte Miyazaki, 89 USPQ2d 1207, 1210-12
(PTAB 2008).
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Application 14/233,212
Notably, as the Examiner pointed out, Appellant's Specification is
devoid of the word "flat" and sets forth various embodiments, all of which
were described as being within the alleged inventive "uniform radial crimp"
and having a "non-zero longitudinal length" (e.g., Ans. 6, 7; Spec. 7-18).
Appellant's Specification also makes clear that the drawings and
embodiments described therein are not limiting (paragraph bridging Spec. p.
6 to Spec. p. 7). Furthermore, the use of the word "flat" to describe a
circular cross section, as is shown in each and every embodiment, is mis-
descriptive at best. The ordinary meaning of "flat" is in reference to a
smooth planar surface. While an applicant may be his own lexicographer,
the Specification must clearly describe when a word is being used contrary
to its ordinary and customary meaning. See, e.g., Process Control Corp. v.
HydReclaim Corp., 190 F.3d 1350, 1357 (Fed. Cir. 1999) ("While we have
held many times that a patentee can act as his own lexicographer to
specifically define terms of a claim contrary to their ordinary meaning," in
such a situation the written description must clearly redefine a claim term
"so as to put a reasonable competitor or one reasonably skilled in the art on
notice that the patentee intended to so redefine that claim term."). Since the
term "substantially flat" was never used in the Specification, Appellant has
not provided adequate notice of its meaning in the context of a tube's
circular cross section as depicted therein.
Appellant does not persuasively identify error in the Examiner's
position that there is no guidance set forth in the Specification as to what
constitutes a "substantially flat base region" as recited in claim 8. The
acceptability of words of degree as claim language depends on whether one
of ordinary skill in the art would understand what is claimed, in light of the
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Application 14/233,212
specification. Seattle Box Co. v. Industrial Crating & Packing, Inc., 731
F.2d 818,826 (Fed. Cir. 1984). The court in Seattle Box Co., 731 F.2d at
826, held that the term of degree "substantially equal to" was not indefinite,
when considered in light of an example in the specification. The court in
Seattle Box Co. guides (id.):
Definiteness problems often arise when words of degree
are used in a claim. That some claim language may not be
precise, however, does not automatically render a claim invalid.
When a word of degree is used the district court must determine
whether the patent's specification provides some standard for
measuring that degree. The trial court must decide, that is,
whether one of ordinary skill in the art would understand what
is claimed when the claim is read in light of the specification.
Similarly, more recent cases recognize that claims having terms of
degree will fail for indefiniteness unless they "provide objective boundaries
for those of skill in the art" when read in light of the specification and the
prosecution history. Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364,
1370-71 (Fed. Cir. 2014), cert. denied, 136 S. Ct. 59 (2015) (finding a single
example of the term "unobtrusive manner" in the specification did not
outline the claims to a skilled artisan with reasonable certainty).
Appellant's argument does not identify how the Specification
provides adequate guidance as to what constitutes a "substantially flat base
region," nor of what constitutes a "non-zero longitudinal length."
For example only, Appellant contends that a relative measure, as set
out in the Specification's description of providing a non-zero longitudinal
length compared to a single narrow line crimp formed using conventional
ferrules, is sufficient (e.g., Appeal Br. 7, 11, 12; paragraph bridging Spec. p.
7 to p. 8). We disagree, as insufficient details are established to define what
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Application 14/233,212
constitutes a conventional line crimp, nor is there any specific description of
how much length greater than zero is needed to define over such a
"conventional" line crimp. Indeed, as Appellant admits, such a line crimp
has a non-zero longitudinal length as well (e.g., Appeal Br. 12 ("a line crimp
does have some length")).
Accordingly, we affirm the Examiner's§ 112, second paragraph
rejection of claims 8-13.
The§ 102 and§ 103 Rejections
"[T]he PTO must give claims their broadest reasonable construction
consistent with the specification. . . . Therefore, we look to the specification
to see if it provides a definition for claim terms, but otherwise apply a broad
interpretation." In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007). "[A]s applicants may amend claims to narrow their scope,
a broad construction during prosecution creates no unfairness to the
applicant or patentee." Id.
Each argument advanced by Appellant is adequately addressed by the
Examiner (Ans. generally). As pointed out by the Examiner, given the
breadth and alternative meanings possible for each disputed claim term, the
disputed claim language in independent claim 8 encompasses, and does not
distinguish over, the radial crimp depicted in Benevides (see, e.g., Ans. 9
comparing Benevides Fig. 2b to Appellant's Fig. 3). Contrary to
Appellant's position, an atomic level length "flat" region is indeed
encompassed by the claim (Appeal Br. 12), since the plain meaning of a
non-zero longitudinal length encompasses a flat region that may extend for
any non-zero longitudinal length. Appellant's contention that he has
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Application 14/233,212
disclaimed the embodiment depicted in Fig. 3 (Reply Br. 3) is not well
taken, since the Specification describes that all the embodiments of its
"radial line crimp" have a non-zero longitudinal length and are inventive
over prior art "narrow line crimps," and Benevides depicts a wider line
crimp consistent with Appellant's invention depicted at Fig. 3, as well as
inventive embodiments depicted at Appellant's Fig. 4a (three uniform radial
crimps 80A, 80B, and 80C) and Appellant's Fig. 7 (second tubing assembly
134).
Notably, Appellant has not directed our attention to any adequate
definitions of the disputed phrase( s) in the Specification, or to any
persuasive reasoning or credible evidence to establish that the Examiner's
interpretation of the language of independent claim 8 is unreasonable.
Appellant relies upon the same arguments presented for claim 8 for
each dependent claim argued separately (Appeal Br. 22, 23). Thus,
Appellant has not shown error in the Examiner's position.
Appellant also does not sufficiently point out any error in the
Examiner's obviousness determination of dependent claim 13 (e.g., Appeal
Br. 25, 26). Appellant relies on the same/similar arguments to those
previously made, and thus does not point out reversible error in the § 103
rejection of claim 13.
Accordingly, the Examiner's§§ 112, 102, and 103 rejections are
affirmed with respect to all of the claims on appeal.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
ORDER
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Appeal2018-000660
Application 14/233,212
AFFIRMED
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