Ex Parte Beers et alDownload PDFPatent Trial and Appeal BoardDec 19, 201813443667 (P.T.A.B. Dec. 19, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/443,667 04/10/2012 87521 7590 12/21/2018 Cantor Colburn LLP - Hamilton Sundstrand 20 Church Street, 22nd Floor Hartford, CT 06103 FIRST NAMED INVENTOR Craig M. Beers 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. 61346US01 7925 EXAMINER KRUPICKA, ADAM C ART UNIT PAPER NUMBER 1784 NOTIFICATION DATE DELIVERY MODE 12/21/2018 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): usptopatentmail @cantorcolburn.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CRAIG M. BEERS and VICTORIA S. RICHARDSON Appeal2018-001385 Application 13/443,667 Technology Center 1700 Before ADRIENE LEPIANE HANLON, KAREN M. HASTINGS, and MICHAEL G. MCMANUS, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 request review under 35 U.S.C. § 134(a) of the Examiner's final decision rejecting claims 1, 4--7, 10-13, and 15 under pre- AIA 35 U.S.C. § 102(b) as anticipated by Bell (US 1,993,430, issued March 5, 1935), and claims 4, 5, 8, and 9 under 35 U.S.C. § 103(a) as being unpatentable over Bell in view of Wipasuramonton (US 4,938,501, issued July 3, 1990). We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 The Real Party in Interest is stated to be Hamilton Sundstrand (Br. 2). Appeal2018-001385 Application 13/443,667 Claim 1 is representative of the claimed invention ( emphasis added to highlight key limitations in dispute): 1. An article, comprising: a first part having a first edge defined at an intersection of first and second surfaces where the first and second surfaces form a right first angle; a second part having a second edge defined at an intersection of third and fourth surfaces where the third and fourth surfaces form a second angle which is different from and larger than the first angle, the second annular part including a planar section and an annular end section having a curvilinear cross-section, the third surface and the fourth surface disposed at a first end of the annular end section and the annular end section connected to the planar section at a second end of the annular end section opposite the first end; and a weld joint formed at locations where the first surface contacts the third surface such that the second and fourth surfaces form an obtuse angle and the weld joint is disposed at a junction of the first and second edges to extend along the first and third surfaces from the obtuse angle, the weld joint and the first and second parts being annular and having a common central longitudinal axis, the first and third surfaces respectively being annular, radially outwardly and inwardly facing surfaces that respectively face away from and toward the common central longitudinal axis. At the outset, we note that independent claims 1 and 7 are not argued separately, nor are any arguments directed to any dependent claims. Accordingly, claims 1 and 7 and all their dependent claims, including those separately rejected, stand or fall together. ANALYSIS We have reviewed Appellants' argument for patentability. However, we determine that a preponderance of the evidence supports the Examiner's 2 Appeal2018-001385 Application 13/443,667 finding that the claimed subject matter of representative claim 1 (as well as claim 7) is anticipated within the meaning of§ 102 in view of the applied prior art of Bell. Accordingly, we will sustain the Examiner's rejections for essentially those reasons expressed in the Examiner's Response to Argument section in the Answer, and we add the following primarily for emphasis. Appellants' arguments are that Bell does not describe, within the meaning of§ 102, "where the first and second surfaces form a right first angle" as recited in claims 1 and 7 (Br. 5), or "the second part including a planar section and an annular end section having a curvilinear cross-section" as recited in claims 1 and 7 (Br. 6). However, the Examiner points out in the Answer how Bell indeed discloses these features (Ans. 7-9). Appellants' mere assertions to the contrary (Br. 5, 6) are not persuasive of reversible error in the Examiner's anticipation rejection. Rather, a preponderance of the evidence supports the Examiner's position that one of ordinary skill in the art would have readily recognized/inferred that the article described in Bell is indeed encompassed by the claim language in dispute (Ans. 7 (the Examiner explains that since Bell describes that the edges of the relevant surfaces may, or may not be, beveled, an artisan would have immediately appreciated that a right angle may be formed)) Ans. 4, 8; see the Examiner's annotated Figure 3 from Bell); In re Preda, 401 F.2d 825, 826 (CCPA 1968) (In determining whether a reference anticipates the subject matter recited in a claim, "it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom."). Cf In re Schaumann, 572 F.2d 312, 317 (CCPA 1978) (In order to anticipate, a reference must identify something 3 Appeal2018-001385 Application 13/443,667 falling within the claimed subject matter with sufficient specificity to constitute a description thereof within the purview of§ 102.). Notably, Appellants have not presented any cogent arguments sufficient to address the Examiner's position (Br. 5, 6 (merely asserting without sufficient analysis that Bell does not disclose certain claim limitations)). Cf In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art. Because Lovin did not provide such arguments, the Board did not err in refusing to separately address claims 2-15, 17-24, and 31-34."). Thus, a preponderance of the evidence supports the Examiner's position that one of ordinary skill in the art would have at once envisaged or inferred from Bell's disclosure the disputed features recited in each of claims 1 and 7 (Ans. generally; no responsive brief has been filed by Appellants). Accordingly, we affirm the Examiner's anticipation rejection. No further substantive arguments were made regarding the§ 103 rejections. Thus, we also affirm the § 103 rejections. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136. ORDER AFFIRMED 4 Copy with citationCopy as parenthetical citation