Ex Parte SchreinerDownload PDFPatent Trial and Appeal BoardJul 24, 201813420020 (P.T.A.B. Jul. 24, 2018) Copy Citation 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."). 2 Appeal2017-009766 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. 3 Appeal2017-009766 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 4 Appeal2017-009766 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. 5 Appeal2017-009766 Application 13/420,020 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 6 Appeal2017-009766 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. 7 Appeal2017-009766 Application 13/420,020 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. 8 Appeal2017-009766 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. 9 Appeal2017-009766 Application 13/420,020 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) 10 Copy with citationCopy as parenthetical citation