Ex Parte Buckner

Patent Trial and Appeal Board

Nov 16, 2017

13568342 (P.T.A.B. Nov. 16, 2017)

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.
13/568,342 08/07/2012 DON M. BUCKNER 0121979 1004
73325 7590
Matthew G. McKinney
Allen, Dyer, Doppelt & Gilchrist, P.A.
255 South Orange Avenue
Suite 1401
Orlando, EL 32801
EXAMINER
LEE, CHEE-CHONG
ART UNIT PAPER NUMBER
3752
NOTIFICATION DATE DELIVERY MODE
11/20/2017 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):
mmckinney @ allendyer.com
creganoa @ allendyer. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DON M. BUCKNER
Appeal 2016-008057
Application 13/568,342
Technology Center 3700
Before BRETT C. MARTIN, MICHELLE R. OSINSKI, and
ERIC C. JESCHKE, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Don M. Buckner (“Appellant”) seeks review under 35 U.S.C. § 134(a)
of the Examiner’s decision, as set forth in the Final Office Action dated July
31, 2015 (“Final Act.”), and as further explained in the Advisory Action
dated September 17, 2015, rejecting claims 1—9, 11, and 21—23 as
anticipated by Holtsnider (US 6,848,637 B2, issued Feb. 1, 2005). We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal 2016-008057
Application 13/568,342
BACKGROUND
The disclosed subject matter “relates generally to a rotating high
pressure air and water nozzle.” Spec. 11. Claims 1 and 23 are independent.
Claim 1 is reproduced below, with emphasis added:
1. A nozzle comprising:
a head having a circular periphery;
a housing having the head secured therein;
a circular support ring adjoining an inside
wall of the housing and secured to the circular
periphery of the head in order for the head to rotate
therein;
a plurality of passageways disposed through
the head;
a supply port disposed at a first end of each
of the passageways; and
a discharge port disposed at an opposing end
of each of the passageways, wherein each discharge
port is offset from the respective supply port and
configured to cause the head to rotate when fluid
flows through the passageways.
DISCUSSION
A. Claims 1—9, 11,21, and 22
Independent claim 1 recites, among other limitations, “a circular
support ring . . . secured to the circular periphery of the head in order for the
head to rotate therein.” Appeal Br. 10 (Claims App.). In the Final Office
Action, the Examiner identified element 20 in Holtsnider as the “circular
support ring.” See Final Act. 3. The Examiner also provided an annotated
version of Figure 6 of Holtsnider (reproduced below), which identifies,
among other aspects, a “support ring” and a “periphery of the head”:
2
Appeal 2016-008057
Application 13/568,342
Final Act. 6. Figure 6 of Holtsnider (without the annotation by the
Examiner) depicts a sectional view of “an embodiment of a double outlet
hydrotherapy jet.” Holtsnider, col. 3,11. 4—7.
Appellant argues that “whatever the Examiner is pointing to as a
circular support ring is not secured to the circular periphery of the head.”
Appeal Br. 4.
The Examiner responds with another version of the annotated Figure
provided above, with additional shading to help identify the “support ring.”
See Ans. 7. The Examiner also provided an annotated version of Figure 7 of
Holtsnider, which identifies, among other aspects, a “circular support ring”
and a “circular periphery of the head.” Id. at 8.
We agree with Appellant that the record here does not support the
Examiner’s finding that the identified “circular support ring”—i.e., element
20 in Holtsnider—is “secured to” the identified “periphery of the head” as
3
Appeal 2016-008057
Application 13/568,342
required by the limitation at issue. More specifically, we agree with
Appellant that “[a]s shown in the Examiner’s own annotated Figure 6, the
‘circular support ring (20)[’] never touches the [identified] periphery of the
‘head (72 and 38).’” Reply Br. 2 (citing Ans. 7). As argued by Appellant,
“[i]f the circular support ring (20) never even touches the [identified]
periphery of the ‘head (72 and 38),’ then those elements certainly cannot be
secured to each other.” Id. Thus, we do not sustain the rejection of claim 1,
or the rejection of claims 2—9, 11,21, and 22, which depend from claim 1.
B. Claim 23
Independent claim 23 recites, among other limitations, “a rolling
bearing securing the annular support ring around a periphery of the head.”
Appeal Br. 12 (Claims App.). Addressing this clause in the Final Office
Action, the Examiner states: “a rolling bearing ([element] 40 [of Holtsnider],
Bearing is defined as a part of a machine that holds a moving part.
Macmillan Dictionary) securing the annular support ring around a periphery
(upper portion of the head as shown in Fig. 6 with additional annotation
below) of the head (Fig. 6).” Final Act. 5; see also Holtsnider Fig. 7
(showing circular base 40 of retaining pin 38). The Examiner refers to the
same annotated version of Figure 6 of Holtsnider provided above, which
identifies, among other aspects, a “support ring” and an “upper portion of
the head.” See Final Act. 6.
Appellant asserts that “[t]here is no description or suggestion in
Holtsnider that element 40 is any type of bearing.” Appeal Br. 7. Appellant
states that “the Examiner recited a definition of ‘bearing’ but Claim 23
recites a ‘rolling bearing.’” Id.
4
Appeal 2016-008057
Application 13/568,342
The Examiner responds that “the limitation ‘bearing’ has been
interpreted as (a part of a machine that holds a moving part)” and that “[t]he
limitation ‘rolling’ is obviously an adjective describing a motion of an
element (a moving part),” “[therefore, circular base 40 of Holtsnider is a
bearing that holds the moving part (the rolling head of eyeball 72).” Ans. 11
(citation omitted). The Examiner also states that “the limitation ‘rolling
bearing’ is broader that the limitation of ‘roller bearing’ because ‘roller
bearing’ is a term of... art that is frequently used in the industries, and the
term, ‘roller bearing,’ clearly describe[s] the need of having rollers as a
mechanism that holds a moving part (bearing).” Id. The Examiner notes
that claim 23, however, “recites ‘rolling bearing’ instead of ‘roller bearing.’”
Id.
We agree with Appellant that the Examiner has applied an
unreasonably broad construction of “rolling bearing,” when considering that
claim language in light of the Specification. See In re Bond, 910 F.2d 831,
833 (Fed. Cir. 1990). Specifically, we agree with Appellant that “rolling” in
“rolling bearing” describes the motion of one or more structures of the
bearing, and does not (as posited by the Examiner) describe the motion of
merely the structure(s) held by the bearing. Compare Appeal Br. 7
(discussing “the structural differences between element 40 [in Holtsnider]
(which does not roll or move) and a rolling bearing,” “which rolls”), with
Ans. 11 (“The limitation ‘rolling’ is obviously an adjective describing a
motion of an element (a moving part).”). This understanding is supported by
the Specification, which describes how, in a “ball bearing,” “[a]s one of the
bearing races rotates, the balls between the races rotate as well to reduce
friction” before stating that “[t]he purpose of the ball bearing {or other
5
Appeal 2016-008057
Application 13/568,342
rolling bearing) is to reduce rotational friction and support radial and axial
loads.” Spec. 121 (emphasis added).
Because the Examiner has not shown that element 40 of Holtsnider is
a “rolling bearing” under the proper understanding of that term (as provided
above), we do not sustain the rejection of claim 23.
DECISION
We reverse the decision to reject claims 1—9, 11, and 21—23.
REVERSED
6