Ex Parte Schreiner

Patent Trial and Appeal Board

Jul 24, 2018

13420020 (P.T.A.B. Jul. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/420,020 03/14/2012
23529 7590
ADE & COMPANY INC.
2157 Henderson Highway
WINNIPEG, MB R2GIP9
CANADA
07/26/2018
FIRST NAMED INVENTOR
Gary A. Schreiner
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.
87478-4US 9035
EXAMINER
BIDWELL, JAMES R
ART UNIT PAPER NUMBER
3651
NOTIFICATION DATE DELIVERY MODE
07/26/2018 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):
uspto@adeco.com
djones@adeco.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARY A. SCHREINER
Appeal2017-009766
Application 13/420,020
Technology Center 3600
Before JOHN C. KERINS, LISA M. GUIJT, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection2 of claims 28-31, 33-53, and 54. 3 We have jurisdiction under 35
U.S.C. § 6(b).
1 Appellant identifies the real party in interest as Gatco Manufacturing Inc.
Br. 1.
2 Appeal is taken from the Final Office Action dated May 31, 2016 (herein
the "Final Act.").
3 Although included in the summaries of the rejected claims, there are no
rejections stated for claims 32, 55, and 56. See Final Act. 2--4; Non-Final
Action dated January 29, 2016, pages 2-5 (herein the "Non-Final Act."),
which is incorporated into the Final Office Action dated May 31, 2016. See
Appeal2017-009766
Application 13/420,020
We reverse and enter a new ground of rejection of claims 28-56 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement, pursuant to our authority under 37 C.F.R.
§ 4I.50(b).
STATEMENT OF THE CASE
Claims 28, 37, 46, and 52 are the independent claims on appeal.
Claim 28, reproduced below, is exemplary of the subject matter on appeal,
with disputed limitations italicized for emphasis.
28. A hopper for an intake of an auger for conveying
particulate material where the auger comprises an auger tube
having an open intake end and an auger flight within the tube
with an intake portion of the auger flight projecting beyond the
open intake end of the auger tube, the hopper comprising:
a base structure for being mounted on the intake end of the
auger;
the base structure comprising a semi-cylindrical bottom
wall surrounding the intake portion of the auger flight and the
open intake end of the auger tube and a rectangular box-shaped
structure standing upwards from a top edge of the semi-
cylindrical bottom wall to an upper rectangular rim;
the base structure being defined by a rear wall, two
upstanding side walls and an upstanding front wall extending to
the upper rectangular rim forming said rectangular box-shaped
structure;
Final Act. 2-3; Non-Final Act. 2-5; Ans. 2-7. Notably, the Non-Final
Action dated January 29, 2016 withdraws the Final Rejection dated January
12, 2016, such that no previous rejections, other than as stated in the Non-
Final Action dated January 29, 2016 are left standing. See Non-Final Act. 2
("The final rejection made 01/12/2016 is hereby withdrawn in view of the
following office action.").
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Application 13/420,020
the front wall has an opening surrounding the auger to
allow the particulate material to enter the auger tube;
and an upper hopper structure with a bottom portion of the
upper hopper structure mounted to the rectangular upper rim of
the base structure and extending upwardly and outwardly
therefrom.
THE REJECTIONS
I. Claims 28-31, 35--41, 44--49, and 52-54 stand rejected under
35 U.S.C. § 102(b) as anticipated by Stevens (US 4,779,544; issued Oct. 25,
1988). 4 Final Act. 2 (referencing the Non-Final Action dated January 29,
2016, for the statement of rejection of these claims); see also Non-Final Act.
2--4; Ans. 3-5.
II. Claims 33, 34, 42, 43, 50, and 51 stand rejected under 35
U.S.C. § I03(a) as unpatentable over Stevens and Hall (US 2013/0092509
Al; published Apr. 18, 2013). Final Act. 2 (referencing the Non-Final
Action dated January 29, 2016, for the statement of rejection of these
claims); see also Non-Final Act. 4; Ans. 5.
4 Although both the Final Office Action and the Non-Final Action dated
January 29, 2016, omit claims 35-37 in the statement of the rejection, the
Examiner provides findings for rejecting claims 35-37 in the body of the
rejection as stated in the Non-Final Action dated January 29, 2016. See
Final Act. 2; Non-Final Act. 2, 3; see also Ans. 3, 4.
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Application 13/420,020
ANALYSIS
Rejection I
Regarding independent claim 28, the Examiner finds, inter alia, that
Stevens' hopper 15 has a base structure comprising a semi-cylindrical
bottom wall (i.e., the bottom wall of auger tube 35, as identified at reference
numeral 3 6) and a rectangular box-shaped structure standing upwards from a
top edge of the semi-cylindrical bottom wall to an upper rectangular rim
(i.e., flange 26), as claimed. Non-Final Act. 2 (citing Stevens, Fig. 2).
Appellant argues that Figure 2 of Stevens fails to disclose that a
rectangular box-shaped structure stands upwards from a top edge of a semi-
cylindrical bottom wall of a base structure, as claimed. Br. 8-9 (referencing
Appellant's annotated Figure 2 of Stevens, as provided in the Evidence
Appendix of the Appeal Brief). Appellant's annotated Figure 2 of Stevens is
reproduced below.
Appellant's annotated Figure 2 of Stevens depicts a partial sectional
perspective and exploded view of an auger feed mechanism, including a
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Application 13/420,020
bottom wall that is partially cylindrical in shape (e.g., at reference numeral
36) and a rectangular box-shaped structure (e.g., at reference numeral 39),
wherein Appellant has identified a point of intersection B between the base
structure and the rectangular box-shaped structure, and also a point P
defining one side of a semi-circle at the circular end of the partial cylinder of
Stevens' base structure. Appellant submits that the meaning of the claim
term "semi-cylindrical" is "half a cylinder," and that Figure 2 of Stevens
does not depict the rectangular box-shaped structure (i.e., identified at
reference numeral 39) as standing upwards from a top edge of a semi-
cylindrical bottom wall of base structure, but rather, as standing upwards
from a top edge of the bottom wall at point B. Br. 9.
Although the claim term "semi-cylindrical" does not appear in the
Specification, as originally filed on March 14, 2012, we agree that an
ordinary meaning of the term "semi-cylinder" means "a half of a cylinder
divided longitudinally," such that to anticipate claim 28, Stevens' Figure 2
must show that Stevens' hopper has a base structure forming a half of a
cylinder divided longitudinally and also "[a] rectangular box-shaped
structure standing upwards from a top edge of the half of a cylinder.
WEBSTER'S THIRD NEW INT'L DICTIONARY 2063 (1993). Because it is
unclear from Stevens' Figure 2 whether the base structure, as identified by
the Examiner, comprises a semi-cylindrical bottom wall, and if so, whether
Stevens' rectangular box-shaped structure stands upwards from a top edge of
the semi-cylindrical bottom wall of the base structure, we are unable to find
that Stevens' Figure 2 anticipates claim 28.
Accordingly, we do not sustain the Examiner's rejection of
independent claim 28, and claims 29--31, 35, and 36, depending therefrom.
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The Examiner relies on the same findings with respect to the rejection of
independent claims 37, 46, and 52, and therefore, for the same reasons stated
supra, we also do not sustain the Examiner's rejection of claims 37, 46, and
52, and claims 38--41, 44, 45, 47--49, 53, and 54 depending therefrom.
Re} ection II
The Examiner's reliance on Hall for disclosing a bar-like screen does
not cure the deficiencies in the Examiner's findings with respect to
independent claims 28, 37, 46, and 52 as set forth supra. See Non-Final
Act. 4. Therefore, for the same reasons set forth supra, we also do not
sustain the Examiner's rejection of claims 33, 34, 42, 43, 50, and 51.
NEW GROUND OF REJECTION
We enter a new ground of rejection of claims 28-56 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement.
To satisfy the written description requirement, the specification must
describe the claimed invention in sufficient detail that one skilled in the art
can reasonably conclude that the inventor had possession of the claimed
subject matter as of the filing date. Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1562---63 (Fed. Cir. 1991). The issue of whether the written
description requirement has been satisfied is a question of fact. Wang Labs.,
Inc. v. Toshiba Corp., 993 F.2d 858, 865 (Fed. Cir. 1993). Further, "patent
drawings do not define the precise proportions of the elements and may not
be relied on to show particular sizes if the specification is completely silent
on the issue." Hockerson-Halberstadt, Inc. v. Avia Grp. Int'!, Inc., 222 F.3d
951,956 (Fed. Cir. 2000) (citing In re Wright, 569 F.2d 1124, 1127 (CCPA
1977) ("Absent any written description in the specification of quantitative
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Application 13/420,020
values, arguments based on measurement of a drawing are of little value.")
(the remaining citations omitted)). However, that does not mean, "that
things patent drawings show clearly are to be disregarded." In re Mraz, 455
F.2d 1069, 1072 (CCPA 1972). A drawing teaches all that it reasonably
discloses and suggests to a person of ordinary skill in the art. In re Aslanian,
590 F.2d 911,914 (CCPA 1979).
As noted supra, the Specification, as originally filed on March 14,
2012, is silent regarding the shape of the bottom structure being semi-
cylindrical. Further, the Specification, as originally filed, uses the term
"cylindrical" only once, disclosing that, with reference to Figures 2a to 2e,
an inside wall of the base structure 102 is shaped such that i[t]
provides a snug fit with a portion of the shielding 28 of the
portable grain auger 10. The base structure 102 can have a
cylindrical bottom structure 102A surrounding a portion of the
shielding 28 and an end portion of the auger housing 12 and a
box-shaped structure 102B extending substantially upwards
therefrom with an upper rim 103 surrounding a - for example,
rectangular shaped - intake opening 124.
Specification dated Mar. 14, 2012, paragraph 27 (emphasis added). Nor
does the term "semi-cylindrical" appear in the claims as originally filed on
March 14, 2012.
With respect to the drawing figures, similar to Stevens, Figures 2a to
2c and 2e of the Specification do not depict the base structure such that a
person of ordinary skill in the art would understand that a semi-cylindrical
bottom wall is disclosed. Moreover, Figure 2d of the Specification appears
to depict a base structure, wherein the bottom wall is not semi-cylindrical,
but rather angles outwardly as compared to the circular opening at the end
portion of auger housing 12.
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Notably, the claim term semi-cylindrical was added to the
Specification and claims by an Amendment dated May 5, 2015, wherein
Appellant stated that
[ t ]he description added in the paragraph on page 5 [ (paragraph
27 of the Specification)] is based on the paragraph immediately
preceding the above description and/or on the figures specifically
now mentioned. The reference numbers now added in those
figures simply point to the items clearly shown in the drawings.
It is submitted therefore that the subject matter now described is
reasonably inferred by a person skilled in the art so that NO new
matter has been added.
Amendment, dated May 5, 2016, page 10. However, we cannot find any
factual basis for Appellant's submission, as paragraph 26 of the
Specification discusses the prior art, with reference to Figures 1 a and 1 b,
wherein there is no depiction of a hopper. We addressed the deficiency of
Figures 2a-2e supra.
We determine that the Specification and claims, as originally filed, do
not describe the base structure 102 in sufficient detail as semi-cylindrical
such that one skilled in the art can reasonably conclude that Appellant had
possession of a base structure comprising a semi-cylindrical bottom wall, as
claimed.
Accordingly, we reject independent claims 28, 37, 46, and 52, which
each recite that "the base structure comprise[ s] a semi-cylindrical bottom
wall," and claims 29-36, 28--45, 47-51, and 53-56 depending therefrom, for
failing to comply with the written description requirement. See Br. 13, 15,
17, 18.
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Application 13/420,020
DECISION
The Examiner's decisions rejecting claims 28-31, 33-53, and 54 are
REVERSED.
We enter a NEW GROUND OF REJECTION of claims 28-56 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 4I.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
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 prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
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Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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).
REVERSED; 37 C.F.R. § 4I.50(b)
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