Ex Parte Jones et al

Patent Trial and Appeal Board

Apr 30, 2014

12134671 (P.T.A.B. Apr. 30, 2014)

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.
12/134,671 06/06/2008 D. PATRICK JONES 295888-00048-1 2113
3705 7590 05/01/2014
ECKERT SEAMANS CHERIN & MELLOTT
600 GRANT STREET
44TH FLOOR
PITTSBURGH, PA 15219
EXAMINER
TROY, DANIEL J
ART UNIT PAPER NUMBER
3641
MAIL DATE DELIVERY MODE
05/01/2014 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 D. PATRICK JONES, MICHAEL WAYNE KELLEY,
RICHARD DUANE POLLICK, LOUIS CART SHAW,
DAVID L. BERTIERI JR., JASON LEE LASSINGER,
MARK P. NOAH and JAMES J. MARRACCINI
____________

Appeal 2012-004465
Application 12/134,671
Technology Center 3600
____________

Before JENNIFER D. BAHR, ANNETTE R. REIMERS and
BRANDON J. WARNER, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

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Application 12/134,671

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STATEMENT OF THE CASE
D. Patrick Jones et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision to reject: (1) claim 6 under 35 U.S.C. § 112,
second paragraph, as being indefinite1; (2) claims 1-4 and 6 under 35 U.S.C.
§ 102(b) as anticipated by Bardell (US 2,356,966; iss. Aug. 29, 1944); and
(3) claims 1-6 under 35 U.S.C. § 102(b) as anticipated by Gaynor (US
1,234,653; iss. Jul. 24, 1917). Claims 7-26 have been withdrawn from
consideration. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to a dual sided work piece, which
may be coupled to a bandolier. See, e.g., Spec. 3, ll. 5-11; figs. 1-2.
Claim 1, the sole independent claim, is representative of the claimed
subject matter and recites:
1. A dual sided work piece structured to be carried by
a bandolier along a progressive die, said progressive die
having a plurality of work stations disposed on opposite
sides of said bandolier, said work piece comprising:
a body having a first end, a medial portion, and a
second end;
each of said first end and second end being a blank
structured to be acted upon by said work stations; and
said medial portion being a stem structured to
support said blanks.

1 We note that the Examiner acknowledges that “[t]here is no rejection of
claim 3 under 35 U.S.C. [§] 112 second paragraph, the inclusion in the final
office action dated 7/21/2011 was a typographical error.” Ans. 8. See also
App. Br. 5.
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ANALYSIS
Indefiniteness
Claim 6
Dependent claim 6 calls for “wherein the blank at the first end and the
blank at the second end are formed into cooperative components.” App. Br.
18, Clms. App’x. The Examiner found that “it is unclear how ‘have been
formed into cooperative components’ is being used to limit the claim.” Ans.
5. The Specification describes that
[t]he work piece 1 has an elongated body 60 with a
first end 62, a medial portion 64, and a second end
66. The first and second ends 62, 66 are structured
to act as blanks 68 upon which forming operations
may be performed. . . . In this configuration, the
blanks 68 are conveniently disposed at the lateral
sides of the bandolier 50, wherein the blanks 68
may be acted upon by the work stations 12.
Spec. 9, ll. 13-18; see also App. Br. 6. The Specification further describes
that “the blanks 68 may be formed into cooperative components. That is,
two components, which may or may not be substantially similar, may be
structured to be joined after the forming is complete.”2 Spec. 12, ll. 8-10,
see also App. Br. 7.
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the

2 Appellants sought to depict an embodiment of the first and second blanks
formed into different cooperative components by submitting a new Figure
2A in the Amendment filed May 18, 2011. The Examiner objected to this
proposed new Figure 2A as containing new matter in the Final Rejection
mailed July 21, 2011. An objection is a petitionable matter, not an
appealable matter, and is not within the jurisdiction of the Board. See
MANUAL OF PATENT EXAMINING PROCEDURE (MPEP) §§
1002.02(c)(4) and 1201; In re Mindick, 371 F.2d 892, 894 (CCPA 1967).
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claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted). Based on Appellants’ disclosure, we agree with Appellants that
the Specification adequately describes how the first and second ends 62, 66,
(i.e., the “blanks” 68) when acted upon by the work stations 12, could be
formed into cooperative components. See App. Br. 6-7. We further
conclude that one of ordinary skill in the art would understand this claim
when read in light of the Specification.3
For these reasons, we do not sustain the Examiner’s rejection of claim
6 for indefiniteness.
Anticipation by Bardell
Claim 1
Claim 1 calls for a work piece including (1) “each of said first end and
second end being a blank structured to be acted upon by said work stations;”
and (2) “said medial portion being a stem structured to support said blanks.”
App. Br. 18, Clms. App’x. The Examiner found that Bardell teaches “a
work piece (10) which includes first and second blank ends (A) and a medial
stem portion (B).”4 Ans. 9. The Examiner further took the position that
the bandolier, progressive die, and work stations
are all intended use limitations not specifically
required by the claim because of the language
“structured to be”. The work piece disclosed by
Bardell is capable of being used in a bandolier,
progressive die, and work stations as described in

3 The Examiner acknowledges that the Specification “serves as evidence the
first and second blank ends . . . are no longer present and [are] replaced by
cooperative components.” Ans. 8.
4 The Examiner provided an annotated version of bar 10 in Figure 1 of
Bardell. See Ans. 9.
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the claim. The [E]xaminer further notes that the
claim 1 can be reasonably interpreted only a length
of cylindrical rod (see [Appellants’] figure 1 which
shows the work piece 1 to the right of station 23 as
a bar with blank ends 68).
Id. at 6.
Appellants contend that “contrary to the Examiner’s assertion, the
Bardell bar is not capable of performing the intended use as recited in the
present application. That is, in this application, the preamble helps define
the structure of the claimed work piece.” App. Br. 9.
In general, a preamble limits the claimed invention “if it recites
essential structure or steps, or if it is ‘necessary to give life, meaning, and
vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc.,
289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-
Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). The preamble limits
claim scope when it is essential to understand limitations or terms in the
claim body. Id. Conversely, a preamble is not limiting where a structurally
complete invention is defined in the claim body and the preamble only states
a purpose or intended use for the invention. Id.
The preamble of claim 1 does not explain the meaning of any claim
terms in the body of the claim. The body of the claim sets forth a
structurally complete invention, which can be readily understood without
resorting to the preamble of claim 1. In this instance, the preamble of claim
1 merely sets forth an intended use for the structure (i.e., work piece)
defined in the body of claim 1. Therefore, the Examiner’s treatment of the
preamble language “the bandolier, progressive die, and work stations” as
intended use limitations is proper. See Ans. 6.
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Appellants contend that “Bardell fails to disclose a stem that is a
middle portion of a body and a body having blanks at its ends.” App. Br. 11.
Specifically, Appellants contend that
a “blank” is a work piece structured to be altered
so as to become a finished article. The round bar
disclosed in Bardell is converted into two shots.
That is, 50% of the bar forms one shot and the
other 50% of the bar forms the other shot. Thus, in
Bardell, the round bar is either a single blank that
is formed into two shots, or, two conjoined blanks.
In this configuration, no part of the round bar is
used to support the blanks.
Further, the present specification is clear
that a “stem” is a construct that supports a blank
and which is separated from the blank at some
point. . . . Thus, based on the specification, the
word “stem” means a support for a blank. Such a
support stem is not part of the blank as the support
stem does not become a part of the finished
product.
. . . [N]o part of the Bardell round bar is ever
separated from the blank and, as such, no part of
the Bardell round bar is a “stem.”
App. Br. 8-9; see also Reply Br. 3.
“It is well settled that the recitation of [an] intended use for an old
product does not make a claim to that old product patentable.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (ciations omitted). At the
outset, we agree with the Examiner that “[claim 1] is not a method but a
product with structural limitations that can be broadly and reasonably
interpreted as bar or rod which is clearly disclosed by Bardell.” Ans. 10.
Moreover, we note that claim 1 merely recites “said medial portion being a
stem structured to support said blanks” and does not require that the stem be
separated from the blank at some point or that the stem not become part of
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the finished product. See App. Br. 18, Clms. App’x. Although the claims
are interpreted in light of the Specification, limitations from the
Specification are not read into the claims. See In re Van Geuns, 988 F.2d
1181, 1184 (Fed. Cir. 1993). We agree with the Examiner that Bardell’s
work piece5 is structurally identical to the work piece 1 of the subject
invention, in that Bardell’s work piece and the work piece 1 of the subject
invention each include first and second blank ends and a medial stem
portion. See Ans. 9. We further agree with the Examiner that
the blank ends ‘A’ of Bardell’s work piece are
pieces of material capable of being shaped into
finished articles. There is no indication why the
ends ‘A’ structurally would not be considered
blanks; they are simply ends of a round bar the
same as the claimed work piece. It is not clear
what portion of blank ends ‘A’ would preclude
them from being considered articles structured to
be altered so as to become a finished product. . . .
Similarly the middle portion ‘B’ of Bardell
can reasonably be considered a stem; it is a middle
portion which supports the left and right blank
ends ‘A’. The structure is identical to that of the
claim, the middle portion of a rod . . . there is no
structural difference or other reason why the
middle portion ‘B’ does not reasonably disclose
the limitation of a stem.
Id. at 10; see also id. at 9 (including the Examiner’s annotated version of the
bar 10 of Figure 1 of Bardell). Accordingly, we agree with the Examiner’s
finding that Bardell’s work piece includes each and every structural

5 All references to Bardell’s work piece in the instant appeal refer to the
Examiner’s annotated version of the bar 10 of Figure 1 of Bardell. See Ans.
9.

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limitation recited in the body of claim 1 and that Bardell’s work piece is
capable of performing the recited functional limitations. Appellants do not
provide convincing arguments or evidence to show that (1) the work piece 1
of the subject invention differs structurally from Bardell’s work piece; or (2)
Bardell’s work piece is not capable of performing the functional limitations
recited in claim 1.
Appellants contend that
[c]ontrary to the Examiner’s assertion that the
central portion of the Bardell work piece may be
used as a medial stem, Bardell actually states that
the medial portion of the bar is “red hot” and that
the metal is so soft that forming of the shots are
accomplished by “hammering” the dies together.
Reply Br. 3.
Appellants’ arguments are directed to the disclosed use of Bardell’s
device and not to any structural feature of Bardell’s work piece that would
render it incapable of performing the functional limitations recited in claim
1. See In re Casey, 370 F.2d 576, 580 (CCPA 1967) (The manner or method
in which a machine is to be utilized is not germane to the issue of
patentability of the machine itself).
On the record before us, we find no error in the Examiner’s finding
that Bardell’s work piece anticipates the subject matter of claim 1.
Accordingly, the Examiner’s rejection of claim 1 as anticipated by Bardell is
sustained.
Claim 2
Appellants contend that “[g]iven the description of the bandolier
set forth in the specification, and as recited more specifically in the preamble
to Claim 2, it is clear that the Bardell bar cannot be supported as suggested
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by the Examiner and still form the two nose-to-nose shots as disclosed.”
App. Br. 10. Appellants’ arguments are again directed to the disclosed use
of Bardell’s device and not to any structural feature of Bardell’s work piece
that would render it incapable of performing the functional limitations
recited in claim 2. We agree with the Examiner that
[c]laim 1 states that the work piece is “structured
to be carried by a bandolier” and “wherein” is used
to describe the bandolier in claim 2; these
statements render the bandolier as an intended use
for the work piece. The work piece of Bardell . . .
includes an elongated rod with a circular cross
section which is capable of being supported by and
removed from the retention members of a
bandolier[, as recited in claim 2].
Ans. 11 (emphasis omitted).
Appellants further present similar arguments for claim 2 as those
presented above in reference to claim 1. App. Br. 11. As discussed above,
these arguments are not persuasive. Accordingly, for similar reasons, we
sustain the Examiner’s rejection of claim 2 as anticipated by Bardell.
Claims 3 and 4
Appellants do not present arguments for claims 3 and 4 separate from
those presented above in reference to claim 1. App. Br. 11. Accordingly,
for the same reasons, we sustain the Examiner’s rejection of claims 3 and 4
as anticipated by Bardell.
Claim 6
Appellants next express
disagree[ment] with the Examiner that two
identical bullets are “cooperative components.”
There is no apparent configuration that would
allow the two shots to be “joined after the forming
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is complete” as cooperative components. Not all
components that may be joined are “cooperative
components” as such a definition is overly broad.
App. Br. 11.
At the outset, we note that claim 6 does not require “joining after the
forming is complete.” See App. Br. 18, Clms. App’x. Further, we agree
with the Examiner that the Specification describes that the cooperative
components “may be structured to be joined after the forming is complete,”
which “does not require the components to be joined.” Ans. 11 (emphasis
omitted); See Spec. 12, ll. 8-10. Moreover, the Examiner’s position is not
that “two identical bullets are ‘cooperative components,’” as Appellants
contend. The Examiner specifically states that “in the summary of claimed
subject matter for claim 6” in the Appeal Brief, Appellants “indicate[]
identical ends 68 as shown in figure 2 as substantially [similar] bullets as the
structure to be formed into cooperative components.” Ans. 11 (citing App.
Br. 4). In other words, according to the Examiner, identical ends 68 of the
subject invention could form substantially similar bullet cooperative
components.6
Appellants further contend that
[i]t is noted that the Examiner may be asserting
that the Bardell blanks could be formed into
“cooperative components.” That is, the Examiner
may be asserting that the ability to be formed into
“cooperative components” is inherent in all blanks.
. . . In this instance, the Examiner could be
asserting that blanks may be formed into
cooperative components. That is, the Examiner

6 The Specification describes that “two components . . . may or may not be
substantially similar.” Spec. 12, l. 9 (emphasis added); see also fig. 2.
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may be asserting that the Bardell bar could be
formed into something other than shot.

App. Br. 12. Appellants’ argument does not apprise us of error in the
Examiner’s position. As correctly pointed out by the Examiner, “the claims
are to a product (‘a dual sided work piece’) and not a process of forming
articles.” Ans. 10. Appellants provide no persuasive evidence or reason
why the blanks at the first and second ends of Bardell’s work piece, which
are structurally identical to the blanks at the first and second ends of the
subject invention and are “structured to be acted upon by work stations,” as
discussed above in addressing the rejection of claim 1, would not inherently
be “structured to be shaped into a finished item” (i.e., formed into
cooperative components).7,8
Accordingly, the Examiner’s rejection of claim 6 as anticipated by
Bardell is sustained.
Anticipation by Gaynor
Claim 1
The Examiner found that Gaynor discloses a work piece “Z” having a
medial stem “X” and first and second end blank stuctures “Y.”9 See Ans.
12.
Appellants contend that

7 The Specification describes that “the blanks 68 may be formed into
cooperative component.” Spec. 12, l. 8 (emphasis added).
8 Appellants state that a “blank” is “a piece of material that is structured to
be shaped into a finished item.” App. Br. 6; see also id. at 8.
9 The Examiner provided an annotated version of one of the blanks 10 in
Figure 1 of Gaynor. See Ans. 12.

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Gaynor clearly identifies both wire
segments as “blanks” and discloses that the entire
wire segment is formed into a bullet. Thus, not
only does Gaynor state that the wire segments are
blanks, but Gaynor describes the blanks in a
manner that comports with the use of the word
“blank” in the present application. As such, other
than relabeling a figure, the Examiner has
presented no evidence that Gaynor discloses a
work piece having two blanks and a medial stem.
Rather, the Examiner asserts that portions of the
Gaynor blank are “capable” of being a medial stem
and end blanks. The Examiner cites no law in
support of this argument. Thus, Appellants believe
that the Examiner is again asserting that the nature
of the asserted Gaynor work piece as having two
blanks and a medial stem is inherent.
Reply Br. 4-5; see also App. Br. 15.
Similar to the discussion above in reference to Bardell, Appellants’
arguments are directed to the disclosed use of Gaynor’s device and not to
any structural feature of Gaynor’s work piece10 that would render it
incapable of performing the functional limitations recited in claim 1.
We agree with the Examiner’s finding that Gaynor’s work piece
includes each structural limitation in the body of claim 1 and that Gaynor’s
work piece is capable of performing the recited functional limitations.
On the record before us, we find no error in the Examiner’s finding
that Gaynor’s work piece anticipates the subject matter of claim 1.
Accordingly, the Examiner’s rejection of claim 1 as anticipated by Gaynor is
sustained.

10 All references to Gaynor’s work piece in the instant appeal refer to the
Examiner’s annotated version of the blank 10 of Figure 1 of Gaynor. See
Ans. 12.
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Claim 2
Appellants’ present similar arguments for claim 2 as those presented
above in reference to claim 1. App. Br. 15. As discussed above, these
arguments are not persuasive. Accordingly, for similar reasons, we sustain
the Examiner’s rejection of claim 2 as anticipated by Gaynor.
Claims 3, 4 and 5
Appellants do not present arguments for claims 3, 4 and 5 separate
from those presented above in reference to claim 1. App. Br. 15.
Accordingly, for the same reasons, we sustain the Examiner’s rejection of
claims 3, 4 and 5 as anticipated by Gaynor.
Claim 6
Appellants contend that “Gaynor discloses two blanks that are formed
into bullets. . . . [T]wo bullets are not ‘cooperative components’11 and, as
Gaynor fails to disclose that the blanks can be used for anything other than
bullets, Gaynor does not inherently disclose ‘cooperative components.’”
App. Br. 15-16.
As discussed above, Appellant’s arguments are directed to the
disclosed use of Gaynor’s device. As correctly pointed out by the Examiner,
“[t]he claims are to the product of the work piece essentially being a bar or
rod and not to the method of converting the work piece into finished
articles.” Ans. 13. Appellants provide no persuasive evidence or reason
why the blanks at the first and second ends of Gaynor’s work piece, which
are structurally similar to the blanks at the first and second ends of the

11 The Specification describes that (1) “the blanks 68 are formed 218 into
bullets 90” (Spec. 10, l.13; see also figs. 2, 5); and (2) “two components . . .
may or may not be substantially similar” (Spec. 12, l. 9) (emphasis added);
see also fig. 2.
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subject invention and are “structured to be acted upon by work stations,” as
discussed above in addressing the rejection of claim 1, would not inherently
be “structured to be shaped into a finished item” (i.e., formed into
cooperative components).
Accordingly, the Examiner’s rejection of claim 6 as anticipated by
Gaynor is sustained.
DECISION
We REVERSE the decision of the Examiner to reject claim 6 under
35 U.S.C. § 112, second paragraph, as indefinite.
We AFFIRM the decision of the Examiner to reject claims 1-4 and 6
under 35 U.S.C. § 102(b) as anticipated by Bardell.
We AFFIRM the decision of the Examiner to reject claims 1-6 under
35 U.S.C. § 102(b) as anticipated by Gaynor.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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