13015627 (P.T.A.B. Mar. 25, 2016)

Ex Parte Torell

Patent Trial and Appeal BoardMar 25, 2016

13015627 (P.T.A.B. Mar. 25, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/015,627 01/28/2011 Bruce D. Torell L497.12-0003 2981 27367 7590 03/25/2016 WESTMAN CHAMPLIN & KOEHLER, P.A. SUITE 1400 900 SECOND AVENUE SOUTH MINNEAPOLIS, MN 55402 EXAMINER RIEGELMAN, MICHAEL A ART UNIT PAPER NUMBER 3654 MAIL DATE DELIVERY MODE 03/25/2016 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 BRUCE D. TORELL ____________________ Appeal 2014-001164 Application 13/015,627 Technology Center 3600 ____________________ Before CHARLES N. GREENHUT, LYNNE H. BROWNE, and PAUL J. KORNICZKY, Administrative Patent Judges. KORNICZKY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellant, Bruce D. Torell, appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1–9. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION. Appeal 2014-001164 Application 13/015,627 2 THE CLAIMED SUBJECT MATTER The claims are directed to a lubrication pump. Claim 1, reproduced below, is the only independent claim and is illustrative of the claimed subject matter (emphasis added): A handheld apparatus for delivering a lubricating oil in a lower unit of an I/O drive, through a hole in a housing of the lower unit, the apparatus comprising: an oil container having a neck portion and a main body, the main body defined by a main body wall for containing the lubricating oil, the main body wall being sufficiently thick to withstand pressure of up to 30 pounds per square inch; a pumping mechanism attached to the oil container, the pumping mechanism comprising a pumping component comprising a plunger housing and an air moving plunger movable within the plunger housing, and an outer sleeve positioned within the container wherein the plunger housing is positioned within the outer sleeve, the plunger housing having an air valve disposed at a distal end thereof for expelling air into the outer sleeve, the air being moved by the plunger, and wherein the outer sleeve includes at least one air hole positioned above an oil level in the container such that when the air is expelled through the air valve, the air enters the container through the air hole above the oil level; an oil delivery mechanism comprising a flexible hose attached to an outlet of the container, the outlet positioned proximate a bottom of the container and a hand operable nozzle attached to the hose at another end, the nozzle comprising a frustoconical tip for engaging the hole of the lower unit housing; and Appeal 2014-001164 Application 13/015,627 3 wherein the pumping mechanism with the outlet being positional proximate the bottom of the container is capable of pumping out the container through the hand operable nozzle a lubricating oil of a viscosity used to deliver the oil into the lower unit of the I/O drive. REFERENCES In rejecting the claims on appeal, the Examiner relied upon the following prior art: Brandt Ehnts Leuenberger Ellison Barnett Powell US 1,557,650 US 2,058,219 US 4,756,481 US 4,930,664 US 6,595,392 B2 US 7,581,662 B2 Oct. 20, 1925 Oct. 20, 1936 July 12, 1988 June 5, 1990 July 22, 2003 Sept. 1, 2009 REJECTIONS 1. Claims 1, 2, 5 and 6 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Powell, Ellison, Leuenberger, and Ehnts. 2. Claims 3, 4 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Powell, Ellison, Leuenberger, Ehnts, and Barnett. 3. Claims 7–9 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Powell, Ellison, Leuenberger, Ehnts, and Brandt. Appellant seeks our review of the three rejections. Appeal 2014-001164 Application 13/015,627 4 OPINION New Ground of Rejection - Indefiniteness Claims 1–9 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. 35 U.S.C. § 112, second paragraph, requires “claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” Independent claim 1 recites “a lubricating oil of a viscosity used to deliver the oil into the lower unit of the I/O drive.” Appeal Br. 24, Claims App. This limitation is incomprehensible, as it is unclear how the viscosity of a lubricating oil is capable of delivering the oil. Viscosity is a property of a lubricating oil which affects the ability of the oil to be delivered, but it is not a mechanism for delivering oil. It is also unclear what part the lubricating oil plays in the claimed apparatus, and whether the lubricating oil is a required part of the claimed combination, or if claim 1 is more broadly directed to an apparatus intended to be used with lubricating oil. The preamble, for example, recites an “apparatus for delivering a lubricating oil” which suggests that the lubricating oil is not actually required. The last paragraph of the claim, however, later recites “a lubricating oil of a viscosity” which appears to further limit (albeit in an indefinite manner as discussed supra) the lubricating oil, which implies that lubricating oil is somehow part of the claimed combination. In addition, the claim’s recitation of “a lubricating oil” in two locations — in the preamble and the last paragraph — also makes it unclear whether the claim requires the same or different lubricating oils. In several other limitations, claim 1 recites an “oil container,” an “oil level,” and an Appeal 2014-001164 Application 13/015,627 5 “oil delivery mechanism” which also obscures whether the lubricating oil is required by the claim. For the foregoing reasons, we conclude that claim 1 fails to comply with 35 U.S.C. § 112, second paragraph, by failing to particularly point out and distinctly claim the subject matter which Appellant regards as the invention. Claims 2–9 depend from claim 1 and, likewise, are indefinite. Having determined that claims 1–9 are indefinite, we cannot sustain the rejections of these claims under 35 U.S.C. § 103(a) because to do so would require speculative assumptions as to the meaning and scope of the claims. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) (holding that the Board erred in affirming a rejection of indefinite claims under 35 U.S.C. § 103(a)). We emphasize that our reversal of the rejections is because the claims are indefinite; hence, a decision has not been made based on the merits of the prior art rejections of claims 1–9. DECISION The Examiner’s rejection of claims 1–9 is pro forma REVERSED. Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW GROUND OF REJECTION as follows: 1. Claims 1–9 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. 37 C.F.R. § 41.50(b) provides that “[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 Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must Appeal 2014-001164 Application 13/015,627 6 exercise one of the following two options with respect to the new grounds 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. . . . 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) (2009). REVERSED; 37 C.F.R. § 41.50(b)