Ex Parte Jackson et al

Patent Trial and Appeal Board

Nov 26, 2018

13914080 (P.T.A.B. Nov. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/914,080 06/10/2013
34431 7590 11/28/2018
HANLEY, FLIGHT & ZIMMERMAN, LLC
150 S. WACKER DRIVE
SUITE 2200
CHICAGO, IL 60606
FIRST NAMED INVENTOR
Trenton Frank Jackson
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.
20040/56-12840 9724
EXAMINER
BALLMAN, CHRISTOPHER D
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
11/28/2018 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):
mailroom@hfzlaw.com
jflight@hfzlaw.com
mhanley@hfzlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TRENTON FRANK JACKSON and
MEREDITH JAN BELL
Appeal 2018-001853
Application 13/914,080 1
Technology Center 3700
Before CHARLES N. GREENHUT, PAUL J. KORNICZKY, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
5, 7, 8, 10-15, 18-20, and 23-26. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We reverse and enter a new ground of rejection.
1 Appellants identify Fisher Controls International LLC as the real party in
interest. App. Br. 2.
Appeal 2018-001853
Application 13/914,080
CLAIMED SUBJECT MATTER
The claims are directed to actuator bushings having integral seals.
Claim 1, reproduced below, with emphasis added, is illustrative of the
claimed subject matter:
1. An apparatus comprising:
a bushing having a central bore to receive a stem;
an annular groove at a longitudinal end of the bushing, the
annular groove defining inner and outer radial portions of the
bushing at opposite sides of the groove, the inner radial portion
surrounding the bore to define an integral flexible ring, the inner
radial portion defining at least a portion of an inner diameter of
the bushing, the outer radial portion of the bushing defining an
outer diameter of the bushing; and
an axisymmetric recess disposed on the inner diameter of
the bushing, the recess to define a tapered hinge portion disposed
on the inner radial portion, the tapered hinge portion to increase
a flexibility of the integral flexible ring, wherein the tapered
hinge portion is to contact the stem to form a circumferential seal
against the stem.
REJECTI0NS 2
Claims 24 and 25 are rejected under 35 U.S.C. § 112(a), as failing to
comply with the written description requirement.
Claims 1-5, 7, 8, 10-15, 18-20, and 23-26 are rejected under 35
U.S.C. § 102(a)(l) as being anticipated by Gronwick (U.S. Patent 5,730,415
iss. Mar. 24, 1998).
2 The Advisory Action of August 30, 2017 indicates that the amendment
overcoming the rejection of claims 11-13 under 35 U.S.C. § 112(b) would
be entered for purposes of appeal. Accordingly, we do not consider this
rejection before us for review.
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Appeal 2018-001853
Application 13/914,080
Anticipation
OPINION
In order to meet the limitation of claim 1 emphasized above and the
similar limitations in independent claims 10 and 18, the Examiner takes the
position that:
there need not be a disclosure stating the material from which the
bushing 66 is made, because regardless of the material bushing
66 is made from, the bushing 66 is flexible. Given the geometric
design of the bushing 66, the bushing 66 would flex at the
recessed portion where the spring is seated. Inwardly directed
pressure applied within the recess to the bushing 66 would result
in flexing. Even the most rigid materials are subject to flexing
given the proper amount of force.
Ans. 9.
To the extent the Examiner takes the position that the recited
flexibility, as it pertains to the ring defined by the inner radial portion of the
bushing, is a term of degree, that degree, read in light of the Specification, is
that necessary to create a seal. Spec. para. 11; see MPEP § 2173.05
("[W]hen a term of degree is used in the claim, the examiner should
determine whether the specification provides some standard for measuring
that degree." (citation omitted)). Where, as here, the Examiner predicates a
rejection based on a theory of inherency, "the examiner must provide a basis
in fact and/or technical reasoning to reasonably support the determination
that the allegedly inherent characteristic necessarily flows from the teachings
of the applied prior art." MPEP § 2112(IV) (quoting Ex parte Levy, 17
USPQ2d 1461, 1464 (BPAI 1990)).
As Appellants point out, the presence of elastomeric seal element 78
to perform the sealing function, while not necessarily dispositive, is at least
some evidence that the ring of bushing 66 surrounded by the coil spring does
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Appeal 2018-001853
Application 13/914,080
not flex to provide a seal. App. Br. 13-14. In any case, as the necessary
flexibility to create a seal is dependent upon the material and dimensions of
Gronwick's inner ring of bushing 66, it cannot be determined that, based on
the evidence before us, Gronwick' s bushing necessarily exhibits the recited
flexibility. Thus, the Examiner does not provide sufficient evidence or
technical reasoning to establish inherent flexibility of Gronwick' s inner ring
as required by each of the independent claims before us. Accordingly, the
anticipation rejection cannot be sustained on the basis set forth by the
Examiner.
§112(a)
The issue raised by the Examiner with regard to claim 24 relates to
"[c]laiming 'a second recess' while not disclosing 'a second recess' in the
specification." Ans. 14. Although claim terms must find support in the
specification as originally filed, there is no in haec verba requirement that
the exact same language be used. MPEP § 2163(I)(B). The terms "first" and
"second" pertaining to the recesses are merely descriptive names used to
identify and distinguish the recesses from each other. It is not clear why the
Examiner believes the claim recitation relating to "a second recess" would
be interpreted as covering the admitted prior art recess elements 212, 216
depicted in Figure 2 that are not present in Appellants' invention. See Ans.
14. It is also unclear why the Examiner believes recess 412 must be
construed as the "second recess" when recess 412 is not "on an outer
diameter of the inner radial portion" as required by claim 24. The Examiner
offers no explanation as to why the Examiner disregards recess 410 in the
Specification as providing support for the "second recess" of claim 24. See
App. Br. 22-23; Reply. Br. 7-8. Accordingly, we are not apprised by the
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Appeal 2018-001853
Application 13/914,080
Examiner of any reasons why the Specification fails to comply with the
requirements of 35 U.S.C. § 112(a).
§ 112 (b) - New ground of re} ection
Claim 24 does, however, contain an ambiguity, which may have
presented a source of confusion. It is not clear based on the chosen claim
language whether the term "further including" is used to further define an
additional element of the recess or of the apparatus. Based on the
Specification and the language of claim 1, we believe it was intended to be
the latter because the recess of claim 1 3 must be on the inner diameter as
opposed to the outer diameter, and it is not clear that a recess can be on both.
We will not speculate further as to what Appellants intended to claim
because "[i]t is the applicants' burden to precisely define the invention, not
the PTO's." In re Morris, 127 F. 3d 1048, 1056 (Fed. Cir. 1997) ("35
U.S.C. § 112[b] ... puts the burden of precise claim drafting squarely on the
applicant."). Accordingly, we reject claim 24 under 35 U.S.C. § 112(b) so as
to require Appellants to resolve this ambiguity during prosecution while
Appellants have the opportunity to do so. See Ex Parte Miyazaki, 89
USPQ2d 1207, 1211 (BPAI2008)accordlnrePackard, 751 F.3d 1307,
(Fed. Cir. 2014). Claim 25 is similarly rejected based on dependency.
3 It is also noted that the "axisymmetric recess" of claim 1 appears to refer to
a structure described in the Specification as "relief' 316, 420. Spec. paras.
16-19. Although this instance does create sufficient confusion to rise to the
level of noncompliance with 35 U.S.C. § 112(b) (see, e.g., MPEP
§ 2173.05(e)), there should be correspondence between the Specification and
claims (MPEP § 2173.03) so as to insure certainty when construing the
claims in light of the Specification (MPEP § 608.0l(o)). Appellants and the
Examiner may wish to consider clarification in any further prosecution. See,
e.g., 37 CPR 1.75(d)(l); MPEP § 1302.01.
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Appeal 2018-001853
Application 13/914,080
DECISION
The Examiner's rejections are reversed.
We enter a new ground of rejection for claims 24 and 25 under 35
U.S.C. § 112(b ).
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). Section 4I.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:
When the Board enters such a non-final decision, the appellant,
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 examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
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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Appeal 2018-001853
Application 13/914,080
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)(l )(iv).
REVERSED; 37 C.F.R. § 4I.50(b)
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