AMESBURY GROUP, INC.

Patent Trials and Appeals Board

Sep 23, 2020

14744940 - (D) (P.T.A.B. Sep. 23, 2020)

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.
14/744,940 06/19/2015 Travis Steen 40724.0031USC1 9032
23552 7590 09/23/2020
MERCHANT & GOULD P.C.
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
EXAMINER
MORGAN, EMILY M
ART UNIT PAPER NUMBER
3677
NOTIFICATION DATE DELIVERY MODE
09/23/2020 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):
USPTO23552@merchantgould.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TRAVIS STEEN, CHAD SWIER, DAN RAAP,
GARY NEWMAN, and BRUCE HAGEMEYER
Appeal 2020-000661
Application 14/744,940
Technology Center 3600
BEFORE STEFAN STAICOVICI, JEREMY M. PLENZLER, and
BRANDON J. WARNER, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 29–31, 36–38, 42, and 43. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART and enter a NEW GROUND OF REJECTION
in accordance with 37 C.F.R. § 41.50(b).

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Amesbury Group,
Inc. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claims are directed to a window balance. Claim 29, reproduced
below, is illustrative of the claimed subject matter:
29. A shoe body for a coil spring inverted constant force
window balance comprising:
an elongate shoe body comprising a plurality of side walls;
at least one curved surface disposed at a first end of the
elongate shoe body;
a coil spring rotatably supported by the at least one curved
surface, wherein at least a portion of the coil spring extends
beyond at least one of the plurality of side walls;
an enlarged portion opposite the first end;
a groove defined at least partially in a front surface of the
elongate shoe body and the enlarged portion, and between the
plurality of side walls, wherein an upper end of the groove
extends adjacent to at least a portion of the coil spring and is
separated from the coil spring via the front surface; and
a cam rotatably disposed in the enlarged portion at a lower
end of the groove, wherein the groove is configured to permit
passage of a pivot bar therethrough.
REFERENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Tuller US 2008/0178425 A1 July 31, 2008
REJECTIONS
Claims 29, 31, 36–38, 42, and 43 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Tuller.
Claim 30 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Tuller.
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OPINION
Claims 29–31
The preamble of claim 29 recites “[a] shoe body for a coil spring
inverted constant force window balance comprising,” but the body of the
claim does not only recite features of a “shoe body.” For example, the body
of claim 29 also requires “a coil spring rotatably supported by the at least
one curved surface” “disposed at a first end of the elongate shoe body.” See
Appeal Br. 37–38 (Claims App.). Accordingly, we know that each feature
recited in claim 29 is not part of the “shoe body.” This is consistent with the
description provided by Appellant’s Speciation. See Spec. 5 (“Elements of
the window balance include a shoe body 12, a coil spring 14, and a
mounting bracket 16.”).
Claim 29 additionally recites “an enlarged portion opposite the first
end” without additional context, other than the first end referenced is that of
the “shoe body.” Appellant and the Examiner disagree as to what is required
by the “enlarged portion” limitation. See Appeal Br. 28 (contending that
“Tuller does not indicate anywhere within the specification that any part of
the shoe body is ‘enlarged,’ as compared to any other component of the shoe
body or otherwise”); Ans. 4 (explaining that “[s]ince appellant does not
require that [the enlarged] portion be ‘enlarged’ as compared with any
particular feature, examiner contends that this portion is enlarged as
compared to other parts including bracket 50” in Tuller).
The claim does not recite what the “enlarged portion” is enlarged
relative to, or even what structure defines the “enlarged portion” (e.g., it
does not require that the “enlarged portion is part of the elongate shoe
body”). The Specification explains that “[t]he shoe body 12 may
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incorporate a generally T-shaped configuration” with “an elongate portion
18 having two side walls 20” and “[t]wo opposing projections 22 . . .
extend[ing] beyond the side walls 20 of the elongate portion form the
enlarged portion 24 at a distal end of the shoe body 12.” Spec. 5. Those
features, however, are not required by the claim. We decline to read those
limitations into the claim.
Based on the record before us, we determine that the “enlarged
portion” recited in claim 29 adds an unacceptable level of ambiguity into the
claim because we are unable to determine what structure is required for that
limitation. Rather than speculate, or assign some meaning not required by
the language of the claim, we determine that the most appropriate course of
action is to enter a new ground of rejection under 35 U.S.C. § 112, second
paragraph. See In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014) (per
curiam) (A claim is properly rejected as indefinite if, after applying the
broadest reasonable interpretation in light of the specification, the metes and
bounds of a claim are not clear because the claim contains words or phrases
whose meaning is unclear.); see also Ex parte McAward, Appeal No. 2015-
006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential)
(adopting the approach for assessing indefiniteness approved by the Federal
Circuit in Packard). Appellant has the opportunity to resolve ambiguities
during prosecution. See, e.g., McAward, at *6–7.
Because we determine the claims to be indefinite, and addressing the
“enlarged portion” recited in claim 29 would require speculation on our part,
we do not reach the merits of the anticipation and obviousness rejections
related to claims 29–31. Instead, we reverse those rejections pro forma. See
In re Aoyama, 656 F.3d 1293, 1300 (Fed. Cir. 2011) (holding that the Board
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erred in affirming an anticipation rejection of indefinite claims); 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).
Claims 36–38, 42, and 43
Claim 36 is independent and does not include the issues noted above
with respect to the “enlarged portion,” as that feature is not recited. The
Examiner finds that Tuller discloses each limitation of claim 36. Non-Final
Act. 3–4. With respect to claim 36, Appellant disputes only whether Tuller
discloses the “groove defined within a front surface of the elongate shoe
body” that “terminates at a first end adjacent to at least a portion of the coil
spring and is separated from the coil spring via the front surface,” as recited
in the claim. Appeal Br. 31. Specifically, Appellant contends that Tuller’s
“recess 72 appears to terminate at a location below the curl spring 30 at a
rear surface that matches the upper surface of recess 72.” Id. That does not
apprise us of Examiner error. There is no dispute that Tuller’s groove
(recess 72) is defined within the front surface of Tuller’s shoe body 11, and
Appellant offers no explanation as to why termination of Tuller’s groove
(recess 72) immediately below the spring is not “terminat[ion] . . . adjacent
to at least a portion of the coil spring” with the groove “separated from the
coil spring via the front surface,” as required by the claim.
Claims 42 and 43 depend from claim 36. Appellant does not provide
separate argument for those claims. For at least the reasons set forth above,
we are not apprised of error in the rejection of claims 36, 42, and 43.
Claim 37 depends from claim 36 and further recites that “the elongate
shoe body further comprises an enlarged portion disposed at a distal end, the
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second end of the groove is disposed in the enlarged portion of the elongate
shoe body that contains the cam.” Unlike claim 29, discussed above, the
“elongate portion” recited in claim 37 is clearly part of the elongate shoe
body and it is located at a distal end of the elongate shoe, and is “enlarged”
relative to at least the portion of the elongated shoe body from which it
extends. Although broad, this does not render claim 37 indefinite like the
similar limitation does in claim 29.
The Examiner finds that Tuller discloses “the elongate shoe body . . .
further comprises an enlarged portion (as annotated above) disposed at a
distal end.” Non-Final Act. 5–6. The annotated figure referenced by the
Examiner is reproduced below.

The figure reproduced above is Tuller’s Figure 2, which “is an isometric
view of a shoe cassette, including a curl spring, a spring mount, and optional
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locking pads to counter balance an opposite side of a window sash” (Tuller
¶ 5), with the Examiner’s annotations labeling the various portions
corresponding to the claim elements, including a box around the “enlarged
portion” (Non-Final Act. 4).
Appellant responds that the “boxed portion does not appear enlarged
(at least relative to any other portion of the shoe body 11),” and “[m]ore
accurately, the figures of Tuller appear to depict a shoe body 11 that is fairly
uniform in width, depth, and height, along each of those dimensions.”
Appeal Br. 32. Appellant contends that “[t]he Examiner is entirely silent as
to how the portion of the housing bounded by the box in annotated FIG. 2 is
‘enlarged’ relative to anything.” Id. at 33.
In the Answer, the Examiner explains that “[s]ince appellant does not
require that this portion be ‘enlarged’ as compared with any particular
feature, examiner contends that this portion is enlarged as compared to other
parts including bracket 50.” Ans. 4. The portion of the Answer noted above
addresses claim 29, and the Examiner references this same explanation for
the discussion of claim 37. As noted above, however, claims 29 and 37 are
different in scope. The Examiner makes no finding that Tuller’s “enlarged
portion” is “enlarged” relative to at least the portion of the elongated shoe
body 11 from which it extends, as required by claim 37, as we discuss
above. Accordingly, the Examiner’s rejection of claim 37 fails.
Claim 38 depends from claim 36 and recites that “the groove is
tapered along a longitudinal axis of the elongate shoe body.” The Examiner
states that “Tuller discloses . . . the groove 72 is tapered along a longitudinal
axis of the elongate shoe body,” without further explanation. Non-Final Act.
6. Appellant notes this lack of explanation and further responds that “Tuller
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fails to teach or suggest that the recess 72 has such structure,” and “[e]very
figure of Tuller . . . depicts the recess 72 having a constant wi[d]th from the
top to the bottom thereof.” Appeal Br. 33–34. In the Answer, the Examiner
provides an annotated figure from Tuller, reproduced below, to explain the
finding noted above.

The figure reproduced above is a portion of Tuller’s Figure 7, which is an
illustration of a “shoe half includ[ing] a . . . recess” (Tuller ¶ 10), and the
Examiner’s annotation indicating where Tuller’s groove taper is located
(Non-Final Act. 5). The claim does not specify an orientation of the taper
(e.g., along the width or the depth of the groove). As seen above, the groove
is tapered along its depth and along the longitudinal extent of the shoe body.
Without further explanation from Appellant, we are not apprised of error in
the rejection of claim 38.
CONCLUSION
The Examiner’s rejection of claims 36, 38, 42, and 43 is affirmed, and
the rejection of claims 29–31, and 37 is reversed. We enter a new ground of
rejection of claims 29–31 under 35 U.S.C. § 112 ¶ 2 as being indefinite.
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DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed New
Ground
29, 31,
36–38,
42, 43
102(b) Tuller 36, 38,
42, 43
29, 31,
37

30 103(a) Tuller 30
29–31 112 ¶ 2 Indefiniteness 29–31
Overall
Outcome
36, 38,
42, 43
29–31,
37
29–31

TIME PERIOD FOR RESPONSE
Section 41.50(b) provides “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM
THE DATE OF THE DECISION, must 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.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED IN PART; 37 C.F.R. § 41.50(b)