13840151 (P.T.A.B. Oct. 30, 2018)

Ex Parte Fitzgerald

Patent Trial and Appeal BoardOct 30, 2018

13840151 (P.T.A.B. Oct. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/840,151 03/15/2013 Matthew Louis IV Fitzgerald 52774 7590 10/31/2018 MOMENTIVE PERFORMANCE MATERIALS INC. c/o Dilworth & Barrese, LLP 1000 Woodbury Road Suite 405 Woodbury, NY 11797 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. 1302-793 _5072049 7023 EXAMINER WEEKS, GLORIA R ART UNIT PAPER NUMBER 3731 MAIL DATE DELIVERY MODE 10/31/2018 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 MATTHEW LOUIS FITZGERALD IV Appeal2018-003562 Application 13/840, 151 1 Technology Center 3700 Before MICHAEL C. ASTORINO, TARA L. HUTCHINGS, and ROBERT J. SILVERMAN, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. Â§ 134(a), the Appellant appeals from the Examiner's decision rejecting claims 1, 3-9, 11, and 12 under (pre-AIA) 35 U.S.C. Â§ 103(a) as unpatentable over Shults (US 4,729,413, iss. Mar. 8, 1988) and Smith et al. (US 5,897,090, iss. Apr. 27, 1999) ("Smith"). We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b ). We REVERSE and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. Â§ 41.50(b). 1 According to the Appellant, "[ t ]he real party in interest of this application is Momentive Performance Materials Inc." Appeal Br. 1. Appeal 2018-003562 Application 13/840, 151 STATEMENT OF THE CASE Claimed Subject Matter Claims 1, 8, and 11 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A transport holder to vertically align a cartridge, nozzle- down, comprising: (i) a substantially solid lower plug portion, having a lead face that extends horizontally relative to a base and oriented vertically upward toward a caulking cartridge to be received by the transport holder, the caulking cartridge comprising a tubular barrel having a nozzle at one end thereof terminating in a nozzle tip, the transport holder further including an annular shoulder, a bottom face that extends vertically and is oriented horizontally and perpendicularly relative to the lead face, and a center passageway that is at least partially in the form of a side contact stop collar having an inclined side contact face that tapers directly from the lead face and extends directly to the bottom face, the bottom face defines a bottom face opening, wherein contact of the nozzle tip with the inclined side contact face leads the nozzle tip and nozzle toward; and into, a nozzle receiving channel; and (ii) an upper channel, shaped to receive the caulking cartridge in a desired vertical alignment to the lower plug portion. ANALYSIS Obviousness based on Shults and Smith In view of our determination that claims 1, 3-9, 11, and 12 are indefinite, infra, it follows that the rejection of these claims under 35 U.S.C. Â§ 103(a) must fall because they are necessarily based on a speculative assumption as to the meaning of the claims. See In re Steele, 305 F.2d 859, 862---63 (CCP A 1962). It should be understood, however, that our decision in this regard is proforma and based solely on the indefiniteness of the 2 Appeal 2018-003562 Application 13/840, 151 claimed subject matter set forth below, and does not reflect on the adequacy of the prior art evidence applied in support of the rejection. New Ground of Re} ection Claims 1, 3-9, 11, and 12 are newly rejected under 35 U.S.C. Â§ 112(b) as indefinite. A claim is indefinite when its metes and bounds are unclear because the claim contains words or phrases whose meaning is unclear. In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014) (during prosecution a claim is indefinite when it contains words or phrases whose meaning is unclear); Ex parte McAward, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) ( explaining that the US PTO considers a claim indefinite "when it contains words or phrases whose meaning is unclear"). Independent claim 1 recites "an inclined side contact face that tapers directly from the lead face and extends directly to the bottom face." Appeal Br. 16 (Claims App.). Independent claims 8 and 11 include a similar recitations. See id. at 17, 18 (Claims App.). The term "directly" is indefinite because it is unclear how the term "directly" modifies the terms "tapers" and "extends." The Specification does not provide a definition for the term "directly," so we tum to a dictionary to understand the meaning of the term. "Directly" is defined as "in a direct line, way, or manner; straight." Directly 3 Appeal 2018-003562 Application 13/840, 151 Definition 1, Dictionary.com, https://www.dictionary.com/browse/directly (last visited Oct. 29, 2018). 2 The Specification and Figures support this definition of the term "directly." Figure 3A is shown below: FICL 3i\ Figure 3A shows a perspective view of transfer holder 20, which includes lead face 36, inclined side contact face 40, and bottom face 26 and 38. 3 Spec. ,r,r 13, 29--30. In one sense, inclined side contact face 40 tapers in a 2 See also Directly Definition, Dictionary.Cambridge.org, https://dictionary.cambridge.org/us/dictionary/english/directly (last visited Oct. 29, 2018) ("without anything coming in between"). 3 The Specification identifies both element numbers 26 and 3 8 as a bottom face. Spec. ,r,r 30, 33. The Specification also identifies element number 38 as a nozzle receiving channel lower inner wall. Id. at 32. 4 Appeal 2018-003562 Application 13/840, 151 direct manner from lead face 3 6 and extends in a direct manner to bottom face 26 or 38. In this sense, the term "directly" pertains to an undeviating or uninterrupted character of inclined side contact face 40. In a different sense, inclined side contact face 40 tapers straight from lead face 3 6 and extends straight to bottom face 38. In this sense, the term "directly" pertains to the geometry of inclined side contact face 40. Because it is unclear how the term "directly" modifies the terms "tapers" and "extends," we determine that independent claims 1, 8, and 11 are indefinite under 35 U.S.C. Â§ 112. Additionally, claims 3-7, 9, and 12 are rejected on the same basis as the independent claim from which they depend. DECISION We REVERSE proforma the Examiner's rejections of claims 1, 3-9, 11, and 12 under 35 U.S.C. Â§ 103(a). We enter a NEW GROUND OF REJECTION of claims 1, 3-9, 11, and 12 under 35 U.S.C. Â§ 112(b) as indefinite pursuant to our authority under 37 C.F.R. Â§ 4I.50(b). 37 C.F.R. Â§ 4I.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. Â§ 4I.50(b) also provides that the Appellants, 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 5 Appeal 2018-003562 Application 13/840, 151 examiner, in which event the prosecution will be remanded to the examiner. ... (2) Request rehearing. Request that the proceeding be reheard under Â§ 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. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). REVERSED; 37 C.F.R. Â§ 4I.50(b) 6