Ex Parte Legori et al

Patent Trial and Appeal Board

Sep 28, 2018

13123993 (P.T.A.B. Sep. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/123,993 04/13/2011
21839 7590 10/02/2018
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Roberto Legori
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.
1000035-000104 2931
EXAMINER
CALVETTI, FREDERICK F
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
10/02/2018 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERTO LEGORI, MARCO NOVELLO,
ERIC KERDILES, RACHID YOUSFI, and ANDREA PROVES!
Appeal2017-001002
Application 13/123,993
Technology Center 3700
Before WILLIAM A. CAPP, LEE L. STEPINA, and
FREDERICK C. LANEY, Administrative Patent Judges.
Opinion for the Board filed by STEPINA, Administrative Patent Judge
Opinion Dissenting filed by CAPP, Administrative Patent Judge
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the rejection
of claims 1--4, 15-21, and 29-31. We have jurisdiction under 35 U.S.C. §
6(b). 2
We AFFIRM-IN-PART.
1 Appellants identify Saipem S.P.A. as the real party in interest. Appeal
Br. 2.
2 This matter came before the Board for a regularly scheduled hearing on the
merits on September 4, 2018.
Appeal2017-001002
Application 13/123,993
THE INVENTION
Appellants' invention relates to an apparatus for measuring alignment
between two pipes that are to be welded together. Spec. 1:5-8. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A clamping system, comprising:
an internal line-up clamp for maintaining alignment of a
first pipe section and a second pipe section to be welded
together at sea when laying a pipeline to the sea-bed, wherein
the internal line-up clamp includes a clamp body and a
plurality of clamp members;
the plurality of clamp members are mounted on the clamp
body and are operable to clamp the first pipe section and the
second pipe section in an end-to-end configuration relative to
each other in a fixed position before the first pipe section and
the second pipe section are welded together, the clamp
members being operable to engage with an inner surface of the
first pipe section and an inner surface of the second pipe
section;
the internal line-up clamp includes a hi-lo measurement
system mounted on the internal line-up clamp;
the hi-lo measurement system is configured to measure, in
the fixed position before the first pipe section and the second
pipe section are welded together, a hi-lo value at a plurality of
different points around the circumference of the first pipe
section and the second pipe section when the first pipe section
and the second pipe section are clamped together by the internal
line-up clamp; and
the hi-lo value at each of the plurality of different points
around the circumference of the first pipe section and the
second pipe section is the distance between the inner surface of
the first pipe section and the inner surface of the second pipe
section as measured in the radial direction.
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Application 13/123,993
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Siebert
Verkuijl3
Isao4
US 6,273,320 Bl
US 7,713,000 B2
JP 2000000691 A
Aug. 14, 2001
May 11, 2010
Jan. 7,2000
The following rejections are before us for review:
(I) Claims 1--4, 15-21, and 29-31 are rejected under 35 U.S.C.
§ 112, second paragraph, as indefinite.
(II) Claims 1--4, 15-21, and 29-31 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over Isao, Verkuijl, and Siebert.
OPINION
(I); Indefiniteness
Claims 1, 21, and 31
The Examiner states, "[t]he claims recite the phrase 'configured to' in
claims 1, 21, and 3 1 which is functional language in an apparatus claim and
not structure. The phrase covers any and every and all structures. This
raises written description and enablement issues relative to the
specification." Non-Final Act. 2. The Examiner characterizes the language
as "pure functional" claiming and inquires as to whether Appellants'
3 Verkuijl was published as US 2008/0193218 Al on August 14, 2008. A
foreign counterpart was published as WO 2006/112689 Al on October 26,
2006.
4 An English-language machine translation of this reference was made of
record on August 24, 2016. Appellants also provide an English-language
translation of Isao, as Appendix C of the Reply Brief. Our citations to the
text of Isao are to the English-language machine translation, and our
citations to the translation provided by Appellants refer to "Appendix C."
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Application 13/123,993
intended to invoke the means-plus-function provisions of Section 112. Id. at
3. The Examiner concludes that the scope of the claims is unclear. Id.
Appellants traverse the rejection by first arguing that there is no
prohibition against using functional language in an apparatus claim. Appeal
Br. 8.
Appellants respectfully submit that the present specification
supports an interpretation where the phrase "configured to"
denotes an actual state of configuration that fundamentally ties
the recited functions to the physical characteristics of the feature
preceding the phrase "configured to." As a result, the disputed
claim language reaches well beyond merely describing an ability
to perform since the claims actively recite an actual state of
configuration.
Id. at 9.
Id.
It is not at all clear why an ordinary skilled artisan, reading the
wording in Claims 1 or 21, would have difficulty understanding
what is meant by a hi-lo measurement system "configured to"
measure a hi-lo value at a plurality of points, where the hi-lo
value is defined in the claim as a distance between the inner
surface of the pipe sections in the radial direction.
Appellants note that, although the Examiner makes reference to
written description and enablement issues in the rejection, no formal
rejection under Section 112, first paragraph, is articulated in the rejection.
Appeal Br. 10.
Appellants next point out that: "The specification fully describes the
components and processing of the hi-lo measurement system." Id.
Appellants characterize hi-lo measurement systems as a mechanical
technology that is a "mature technology." Id. Appellants also concede that
the knowledge and level of skill in the art is "highly developed." Id.
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Turning to the claim term "hi-lo measurement system," Appellants
argue that the term is a well understood term of art in the industry. Appeal
Br. 11-12. Appellants further argue that the term is readily understood from
the context of the surrounding claim language. Id. ("The claims themselves
explicitly define both terms").
In response, the Examiner states, "[t]he term 'hi-low' is vague not
denoting a numerical value or structural characteristic." Ans. 10. The
Examiner takes the position that "hi-lo measurement system" does not
define and articulate any particular structure. Ans. 10. The Examiner
characterizes it as a "nonce phrase" and a substitute for a "means for"
expression. Id. The Examiner also states, "the claims, specification,
prosecution history, ... extrinsic evidence [ do not assist in providing]
clarity and definiteness of the recitation to hi-low measurement system or
the term hi-low." Id. at 11. The Examiner reiterates that the phrase "hi-lo
measurement system" is broad enough to cover any, every, and all
structures, but that the Specification does not enable all structures. Id. at 12.
In reply, Appellants oppose the Examiner's characterization of "hi-lo
measurement system" as a nonce phrase that arguably invokes the means-
plus-function provisions of 35 U.S.C. § 112, sixth paragraph. Reply Br. 3.
"Contrary to the assertions in the Examiner's Answer, a 'hi-lo measurement
system' is not a nonce phrase." Id.
The PTO can properly reject a claim as indefinite if the claim is
ambiguous, vague, incoherent, opaque, or otherwise unclear. In re Packard,
751 F.3d 1307, 1311 (Fed. Cir. 2014). The Examiner chose not to reject
claims 1--4, 15-21, and 29-31 under 35 U.S.C. § 112, first paragraph. See
Non-Final Act. 2-3. Accordingly, we address only the rejection under 35
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Application 13/123,993
U.S.C. § 112, second paragraph, before addressing the rejection based on
prior art.
A "measurement system ... configured to measure"
We disagree with the Examiner that the term "configured to," as set
forth in claims 1, 21, and 31, does not require structure. See Non-Final Act.
2. Rather, we agree with Appellants that this term, as used in claims 1, 21,
and 31, requires a particular configuration. See Appeal Br. 9. For example,
with respect to claim 1, the recited hi-lo measurement system is configured
to measure a hi-lo value at a plurality of different points around the
circumference while the first and section pipe sections are in a particular
arrangement. Claims App. 1. The use of the term "configured to" is not
improper, and this terminology is often used to define structure in terms of
its function. See In re Gianelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014) ("We
have noted that, "the phrase 'adapted to' is frequently used to mean 'made
to,' 'designed to,' or 'configured to."'); see also Sta-Rite Industries, LLC v.
ITT Corp., 682 F.Supp 2d 738, 753 (E.D. Tex. 2010) ("Because [Plaintiff's]
proposed construction is too broad and Defendants' proposed construction is
too narrow, the Court construes the term 'adapted to' to mean "designed or
configured to." The Court's construction gives the term the appropriate
amount of breadth consistent with the specification.").
The term "hi-lo value"
We also disagree with the Examiner's conclusion that the term "hi-lo"
is vague and does not denote a numerical value. See Ans. 10. In this regard,
the Specification states:
As can be seen in Fig. 1, there is a degree of misalignment
between the two ends of the pipes 10a, 10b. The interior surface
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Application 13/123,993
14a of one pipe 1 Oa is separated in the radial direction from the
interior surface 14b of other pipe 1 Ob, by a distance, d. The
distance dis commonly referred to simply as the "high-low", or
"hi-lo", or as the "high-low value" or "hi-lo value".
Spec. 1:25-30. 5 Accordingly, contrary to the Examiner's contention, the
Specification defines the term "hi-lo" as the distance between the transition
surfaces of the ends of two pipes, i.e., the degree of misalignment.
Additionally, we disagree with the Examiner's contention that
extrinsic evidence does not assist in providing clarity as to the meaning of
the term "hi-low." See Ans. 11. For example, one of the references cited by
the Examiner in Rejection (II) states:
If the pipe section is connected to the pipeline when the ends of
the pipe section and the pipeline do not fit very well, this will
result in a locally abrupt transition of the wall of the resulting
pipeline at the connection location, also indicated in the art as
'high-low' or eccentricity. The abrupt transition may occur on
the outer wall of the pipeline and/ or on the inner wall of the
pipeline.
Verkuijl, 1:48-54 (emphasis added).
In any event, as Appellants point out, claims 1 and 21 define the hi-lo
value, specifically, claims 1 and 21 recite that the hi-lo value "is the distance
between the inner surface of the first pipe section and the inner surface of
the second pipe section as measured in a radial direction." Claims App. 1, 3.
Accordingly, claims 1 and 21 further limit the hi-lo value (the degree of
misalignment) to be measured at the internal surfaces of the first and second
pipe sections. Thus, the meaning of the term "hi-lo value" in claims 1 and
21 is not vague as asserted by the Examiner.
5 This passage makes clear that the term "hi-lo" has various alternative
spellings.
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Claim 31 merely defines the tolerance at which the hi-lo value
introduced in claim 1 is measured. Id. at 4. The Examiner does not explain
why the use of "configured to" and "hi-lo value" in claim 31 is any less clear
than it was in claim 1, from which claim 31 depends. See Non-Final Act. 2-
3.
The Examiner erred in determining that the meaning of the term "hi-
lo" is not made clear in the extrinsic evidence (prior art), Specification, and
claims. The Examiner further erred in determining that, in the context of
claims 1 and 21, the recitation of a "measurement system ... configured to
measure" does not denote structure. Although the scope of claims 1 and 21
is broad, the Examiner has not shown that it is unclear. Accordingly, we do
not sustain the Examiner's rejection of independent claims 1 and 21 and
dependent claim 31 as indefinite.
Claims 2-4, 15-20, and 29-30
The rejection of claims 2--4, 15-20, and 29-30 is based on the
Examiner's analysis of independent claims 1 and 21. See Non-Final Act. 2-
3. Thus, for the same reasons discussed above regarding the rejection of
claims 1 and 21, we do not sustain the rejection of claims 2--4, 15-20, and
29-30 as indefinite.
(II); Unpatentability of Claims 1-4, 15-21, and 29-31
over Isao, Verkuijl, and Siebert
Claim 1
The Examiner finds that Isao discloses many of the elements recited
in claim 1, and, to the extent that Isao fails to disclose the recited hi-lo
measurement system, Verkuijl teaches this element. Non-Final Act. 4--5.
The Examiner reasons that using the hi-lo measurement system of Verkuijl
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Application 13/123,993
would "enhance measurement/alignment capability." Id. at 5. As support
for the above-noted motivation to combine, the Examiner refers to Siebert,
Figures 1, 2, and 8 and to paragraph 60 of Appellants' published application
(US 2011/0198316 Al, published on August 18, 2011), which states, "[t]he
laser light and camera system of the hi-lo measurement system may be in a
form similar to that utilised in W02006/112689 [Verkuijl]." 6
(a)
Appellants contend that Isao fails to disclose a "measurement system
[that is] configured to measure a distance to the inner surface of two pipe
sections." Appeal Br. 15. Appellants contend that "Paragraphs [0007] and
[0024]-[0032] in Isao describe how the Isao device positions the pipes, and
tries to ensure proper alignment between the two pipes," and "[t]he Isao
mini camera 42 is being utilized so that an operator may view the monitoring
screen and verify from the images that the pipes appear to be aligned," but
Isao does not disclose measuring a distance to an inner surface of either
pipe. Id. at 16.
This argument is unavailing because, although the Examiner finds that
Isao discloses a hi-lo measurement system, the Examiner ultimately relies on
Verkuijl for the explicit disclosure of a hi-lo measurement system that
performs a measurement. Non-Final Act. 5.
(b)
Appellants next contend that Isao fails to disclose "clamp members
for clamping two pipe sections in a fixed position." Appeal Br. 15.
Specifically, Appellants assert, that Isao "describes the spherical tip
6 This paragraph corresponds to page 15, lines 14--23 of Appellants'
Specification.
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Application 13/123,993
extension to the inner pipe surfaces as 'the springs 12 are compressed by
approximately 50% of the compression stroke.' Even when the springs 12
urge the spherical tips 11 against the inner surface of the pipes, the pipes are
still able to move radially." Appeal Br. 18 ( citing Isao ,r 30). Appellants
further contend that Isao allows the two pipe sections to move, in response
to deformation, during welding. Id. (citing Isao ,r,r 23, 35).
In response, the Examiner quotes paragraphs 10, 18, and 24--32 of
Isao, highlighting text from paragraphs 10, 18, 29, 30, and 32 and concludes,
"Isao teaches a measurement system configured to measure a distance ...
two pipe sections and clamping members in a fixed position. 43 is an
illumination light and 42 is a camera." Ans. 15-17. The Examiner goes on
to reproduce Figures 2, 4, and 5 of Isao and then quotes paragraphs 42--46
and 48, concluding "there is a measurement system and clamping in a fixed
position in Isao." Id. at 18-20. The Examiner further states, "[t]he clamping
action is taught to be fixed as quoted and emphasized above. A clamp is a
clamp; according to paragraphs 24+ [ of Isao,] the frame marches out. Fixed
is fixed." Id. at 20.
Appellants reply that, "[a]s explained in paragraph [0023], Isao's
pushing mechanism are said to include spherical tips, which are supported
by springs. This configuration permits the spherical tips, and by extension
the pipes themselves, to move in the radial direction relative to one another."
Reply Br. 7. In support of their arguments against Isao, Appellants provide
"Appendix C," an English-language translation of Isao different from the
machine-translation quoted by the Examiner in the Answer.
The Examiner has the better position on this point. Appendix C
states, "[t]he pipe-welding-bevel-alignment device (3) is inserted to the inner
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Application 13/123,993
surface of the pipes, guided by guide rollers (22) which are fixed to the rear
part of the pipe-welding bevel- alignment device, in three directions around
the circumference." Appendix C ,r 28; see also Isao Figs. 3, 4. Thus, guide
rollers 22 extend in three directions around the circumference of the
alignment device, and, as shown in Figure 3 and 4 of Isao, guide rollers 22
contact the inner surface of pipe 2 at three points. Appendix C next states:
Air supplied by the air supply (24) or baby compressor ( 5) is
regulated by the operation board (4), and firstly, in order to
operate the rear pushing mechanism (3a) of the pipe-welding-
bevel-alignment device (3), air is fed into the rear cylinder (7),
the rear cylinder shaft (13) is withdrawn into the rear cylinder
(7), and the spaces between the frames (14) and rear cylinder
control frames (25) are progressively decreased; the angles made
by each of the arms (8) then increase, the three rear compression
axles (9) slide in relation to the frames (14) and move outwards
in the radial direction of the pipe (2), and the spherical tips (11)
are pushed against the inner surface of the pipe (2), so the springs
(12) are compressed by approximately 50% of the compression
stroke, and the repulsive force due to said compression makes
the spherical tips (11) push against the inner surface of the pipe
(2). In this manner, the pipe (2) is restrained in three directions
around the circuniference of its inner surface.
Appendix C ,r 29 ( emphasis added). Thus, pipe 2 is restrained in three
directions around the circumference due to compressive force generated
through arms 8. See Isao, Fig. 4. Appendix C further states:
As a result of the restraint described above, the main shaft ( 15)
becomes one unit with the front pushing mechanism (3b) and
the rear pushing mechanism (3a). The central axes of pipes 1
and 2 therefore align as if pipes 1 and 2 had become a single
unit, and the welding bevels (Y) are aligned.
Appendix C ,r 31. Accordingly, Appendix C makes clear that Isao forces
alignment between the two pipes and restrains the pipes in this position. The
fact that springs are used as part of the mechanism and allow for some
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movement during welding, for stress relief (see Appendix C ,r,r 10, 13), does
not negate the fact that Isao discloses an apparatus specifically designed to
force the two pipes to align in the first place, before welding occurs. In this
regard, claim 1 requires that the clamp members "are operable to clamp the
first pipe section and the second pipe section in an end-to-end configuration
relative to each other in a fixed position before the first pipe section and the
second pipe section are welded together." Claims App. 1 (emphasis added).
(c)
Appellants next contend that a person of ordinary skill in the art
would not have found it obvious to modify the arrangement in Isao to
include a hi-lo measurement system as taught by Verkuijl. Appeal Br. 19.
Specifically, Appellants state, a person of ordinary skill in the art "would
not have arrived at the subject matter of independent claims 1 and 21. This
is because there is no teaching or suggestion in either of lsao or Verkuijl to
substitute Verkuijl's sensing device for Isao's monitoring system. Isao and
Verkuijl each describe markedly different systems." Reply Br. 6.
Appellants further assert, "At best, the ordinarily skilled artisan, having
considered the entirety of the disclosures in lsao and Verkuijl would have
been directed to modify Isao's device to incorporate Verkuijl's sensing
device on an exterior of pipes 1 and 2 in addition to Isao's monitoring
system, to allow for measurements to be captured with respect to the exterior
alignment of pipes 1 and 2.
Appellants' arguments on this point are unavailing. As the Examiner
correctly finds (see Non-Final Act. 5), Isao discloses a system for
monitoring the degree of misalignment around the perimeter of the joint
between the first and second pipe sections. See Isao ,r 44 ( discussing using a
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miniature camera to monitor the inner swface of the pipes); see also Appeal
Br. 16 ("The alignment status is monitored on a monitoring screen. The Isao
mini camera 42 is being utilized so that an operator may view the monitoring
screen and verify from the images that the pipes appear to be aligned.").
Thus, Isao intends to check the alignment from the interior of the pipes.
Verkuijl discloses a hi-lo measurement system for use in the interior
of two pipes that are to be connected via welding, as admitted in Appellants'
Specification. See Spec. 2:22-3:2, 15: 14--23. Appellants do not
persuasively challenge the Examiner's proposed reason for modifying the
apparatus of Isao, which is "to enhance measurement/alignment capability."
Non-Final Act. 5. Indeed, this is one of the disclosed benefits of the hi-lo
measurement system ofVerkuijl. See Verkuijl 3:1-7. Further, Isao is
concerned with monitoring misalignment via an interior camera, and,
therefore, has the same goal (proper alignment) as disclosed by Verkuijl.
Thus, we agree with the Examiner that a person of ordinary skill in the art
would have found it obvious to modify the clamping apparatus of Isao to
implement the hi-lo measurement system of Verkuijl.
We have considered all of Appellants' arguments for the patentability
of claim 1, but find them unavailing. Accordingly, we affirm the rejection
of claim 1 as unpatentable over Isao, Verkuijl, and Siebert.
Claims 2-4 and 15-20
Aside from arguments for the patentability of claims 29-31, which we
address below, Appellants make arguments for the patentability of no
dependent claims. Accordingly, claims 2--4 and 15-20 fall with claim 1.
Claim 21
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Appellants rely only on the arguments discussed above, regarding the
rejection of claim 1, in support of the patentability of independent claim 21.
See Appeal Br. 21. Accordingly, we affirm the rejection of claim 21 as
unpatentable over Isao, Verkuijl, and Siebert.
Claim 29
Claim 29 depends from claim 1 and requires that the hi-lo
measurement system mounted on the internal line-up clamp be arcuate in
shape. Claims App. 4.
The Examiner finds that Verkuijl's hi-lo measurement system is
arcuate in shape. Non-Final Act. 9.
Appellants assert that "[ e ]ven if an ordinarily skilled artisan were
motivated to modify Isao in view of Verkuijl, there is no reason that the
resulting alignment device would have an arc-shaped measurement system
mounted on Isao 's alignment device." Appeal Br. 22.
We disagree with Appellants' arguments because a preponderance of
the evidence supports the Examiner's finding that Verkuijl discloses a hi-lo
measurement system having an arcuate shape, and this is what is
incorporated by the Examiner's rejection. See Verkuijl Figs. 8B, 13D.
Claim 30
Claim 3 0 depends from claim 1 and requires that the hi-lo
measurement system mounted on the internal line-up clamp to extend
around only half of the circumference of the first pipe section and the second
pipe section when the plurality of clamp members engage with the inner
surface of the first pipe section and the inner surface of the second pipe
section. Claims App. 4.
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The Examiner's entire discussion in the Non-Final Office Action
regarding claim 30 is as follows:
For claim 30: where wherein the hi-lo measurement system
mounted on the internal line-up clamp extends around only half
of the circumference of the pipes first pipe section and the
second pipe section when the plurality of clamp members
engage with the inner surface of the first pipe section and the
inner surface of the second pipe section, see figures 9, 10 and
the commercial device depicted therein.
Non-Final Act. 9.
The Examiner does not specify that Figures 9 and 10 appear in
Verkuijl, not Isao, but as Isao includes only Figures 1-7, we understand that
the Examiner refers to Figures 9 and 10 of Verkuijl. We agree with
Appellants (Appeal Br. 23) that Figures 9 and 10 of Verkuijl do not disclose
the limitations added in claim 30. Accordingly, we reverse the rejection of
claim 30 as unpatentable over Isao, Verkuijl, and Siebert.
Claim 31
Claim 3 1 depends from claim 1 and requires that the hi-lo
measurement system mounted on the internal line-up clamp be configured to
measure the hi-lo value to within 0.1 mm. Claims App. 4.
The Examiner quotes the limitations recited in claim 3 1 and refers to
paragraph 32 and figure 4 of Isao. Non-Final Act. 9.
Paragraph 32 of Appendix C states:
At the time of the butt-welding of pipes 1 and 2, it is necessary
for the width of the gap (26) between pipe 2 and the insert ring
(27) tack welded to the side of pipe 1, as shown in Figure 4, to
be maintained within the range Oto 0.5 mm, as this is the range
within which problems do not occur with welding.
As Isao discusses the need to have alignment to within the range of 0
to 0.5 mm, and Appellants do not argue that there is any criticality to the
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claimed measurement accuracy of O .1 mm, we agree with the Examiner that
while implementing the measurement system of Verkuijl in the arrangement
disclosed by Isao, it would have been obvious to abide by the disclosed
requirements of Isao and that the recited accuracy would have been an
obvious extension of this. Indeed, Appellants' Specification indicates that
one possible hi-lo measurement device for use in Appellants' invention is
the one disclosed by Verkuijl. Spec. 15:14--23.
DECISION
The decision of the Examiner to reject claims 1--4, 15-21, and 29-31
under 35 U.S.C. § 112, second paragraph, is reversed.
The decision of the Examiner to reject claims 1--4, 15-21, and 29-31
under 35 U.S.C. § 103(a) is affirmed as to claims 1--4, 15-21, 29, and 31,
but reversed as to claim 30.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
16
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERTO LEGORI, MARCO NOVELLO,
ERIC KERDILES, RACHID YOUSFI, and ANDREA PROVES!
Appeal2017-001002
Application 13/123,993
Technology Center 3700
Before WILLIAM A. CAPP, LEE L. STEPINA, and
FREDERICK C. LANEY, Administrative Patent Judges.
CAPP, Administrative Patent Judge, dissenting.
OPINION DISSENTING
In my opinion, the Examiner is correct in determining that the
Appellants' claims are indefinite. The Examiner is correct that the "hi-lo
measurement system" that is "configured to measure" recites functional
language. Non-Final Action 2, Claims App. The Examiner is correct that
the claims are broader than the scope of the specification. Id. The Examiner
is also correct that "hi-lo measurement system" does not define any
particular structure. Ans. 10. The Examiner treats it as a "nonce phrase"
and a substitute for a "means for" expression. Id. The Examiner correctly
characterizes the language as "pure functional" claiming. Non-Final
Action 3.
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Application 13/123,993
The phrase "hi-low measurement system" is a nonce word and
verbal construct that is not art recognized to a person of
ordinary skill in the art. The specification is elusive as to its
meaning as set forth above.
Ans. 13. The Examiner is correct that "hi-lo measurement system" is broad
enough to cover any, every, and all structures. Id. at 12. The Examiner
notes that computer and software "may" be included in the claimed system,
but Appellants supply no description of it, only a "black box." Id.
Appellants' argument that "hi-lo measurement system" is a well
understood term of art in the industry misses the point. Appeal Br. 11-12.
Although the term may be well understood, it is, nevertheless, merely
descriptive of the function that it performs. It does not, however, define any
particular "well-understood" structure that performs such function. In other
words, any system or structure that performs the function of measuring a hi-
lo value may be understood to be a "hi-lo measurement system." Merely
stating that the term is "well-understood" in terms of the function that it
performs does not excuse Appellants from claiming it in a manner that
particularly points out and distinctly claims the subject matter which the
applicant regards as the invention. 35 U.S.C. § 112, second paragraph.
Section 112 places the burden of precise claim drafting on the
applicant. See In re Morris, 127 F.3d 1048, 1056-57 (Fed. Cir. 1997).
During patent prosecution when claims can be amended, ambiguities should
be recognized, scope and breadth of language explored, and clarification
imposed. See In re Zietz, 893 F.2d 319,321 (Fed. Cir. 1989). The patent
drafter is in the best position to resolve the ambiguity in the patent claims,
and it is highly desirable that patent examiners demand that applicants do so
in appropriate circumstances so that the patent can be amended during
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prosecution rather than attempting to resolve the ambiguity in litigation.
Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255 (Fed.
Cir. 2008) (cited with approval in Nautilus, 134 S. Ct. at 2129). Rigorous
application of the statutory standard to particularly point out and distinctly
claim the subject matter regarded to be the invention serve an important
public notice function. See Predicate Logic, Inc. v. Distributive Software,
Inc., 544 F.3d 1298, 1300 (Fed. Cir. 2008).
Claim 1 claims a clamping system that is comprised of two major
components: (1) a clamp; and (2) a "hi-lo measurement system." Claims
App. In the Specification, an embodiment of the hi-lo measurement system
is described as comprising an optical measurement system that may include
a camera and a light source. Spec. 4. The light source may be a reference
light source. Id. The light source may form a shape or pattern. Id. The
camera may be arranged to detect the reference light pattern as reflected by
the interior of the pipes. Id. The light source may be a laser light source.
Id. The camera may be mounted inside of the internal line-up clamp. Id.
The camera may be associated with mirrors. Id. The camera comprises an
image converter board, a camera lens, and CMOS camera chip. Id. The
system includes a motor that is powered by a local power supply. Id. The
system includes a converter board, an umbilical electronic communications
data conduit, and a computer. Id. at 11. Collected data is collected is
"processed and analyzed," which indicates that software may be
contemplated. Id.
However, none of the foregoing components is actually recited in
claim 1. Repeated use of the word "may" throughout the physical
description of the hi-lo measurement system confirms that the Specification
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describes one embodiment, but contemplates that other, undisclosed
embodiments are contemplated. See Spec. pp. 9-- 13 ("the invention lends
itself to many different variations not specifically illustrated herein"). Thus,
claim 1 leaves to the imagination whether the hi-lo measurement system
includes some, all, or none of the identified components.
In the case of Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed.
Cir. 2015), the Federal Circuit, sitting en bane, recognized that certain
"nonce" words can operate as a substitute for "means" in the context of
Section 112, paragraph 6. Id. at 1350. ng
Generic terms such as "mechanism " "element " "device " and
' ' ' other nonce words that reflect nothing more than verbal
constructs may be used in a claim in a manner that is
tantamount to using the word "means" because they "typically
do not connote sufficiently definite structure" and therefore
may invoke§ 112, para. 6. Mass. Inst. of Tech. & Elecs.for
Imaging, Inc. v. Abacus Software, 462 F.3d 1344, 1354 (Fed.
Cir. 2006); see generally M.P .E.P. § 2181.
Id. Here, given the context in which it is used in the Specification and the
claims, I agree with the Examiner that "system" should be treated as a nonce
word substitute for "means." Appellants' "hi-lo measurement system" is,
for all practical purposes, just a black box that performs the claimed
function. The claim is broad enough to encompass any and all means that
can accomplish the claimed function, including means that are not described
or enabled in the Specification. However, Appellants unequivocally oppose
treating "hi-lo measurement system" as a nonce phrase that invokes the
means-plus-function provisions of 35 U.S.C. § 112, sixth paragraph. Reply
Br. 3. "Contrary to the assertions in the Examiner's Answer, a "hi-lo
measurement system" is not a nonce phrase." Id.
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As a general principle, I agree with Appellants that functional
claiming, in appropriate circumstances, is permitted. See In re Swinehart,
439 F.2d 210, 212 (CCPA 1971) ("[T]here is nothing intrinsically wrong
with [ defining something by what it does rather than what it is] in drafting
patent claims."). However, such does not grant Appellants an unfettered
license to engage in pure functional claiming. Generally, when an applicant
desires to recite a claim in functional terms and without reciting sufficient
structure to perform the claimed function, the applicant should submit to the
statutory requirements of Section 112, paragraph 6, in which event the scope
of the claim is limited to corresponding structure described in the
Specification for performing such function, and equivalents thereof. 35
U.S.C. § 112, paragraph 6. However, in the instant case, Appellants
expressly disclaim invocation of the means-plus-function provisions of
paragraph 6. Reply Br. 3. This informs us that Appellants do not intend to
limit the scope of the claim to any corresponding structure in the
Specification and equivalents thereof, neither do they intend to limit the
scope of the claim to subject matter for which they have provided
enablement and written description support. See Aristocrat Tech. Australia
PtyLtd. v. Int'! Game Tech., 521 F.3d 1328, 1331-33 (Fed. Cir. 2008). In
the case of Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1383
(Fed. Cir. 2009), the Federal Circuit explains that limiting a claim to
corresponding structure and equivalents is to avoid pure functional claiming.
By finding the claim definite without invoking paragraph 6, the majority, in
effect, condones pure functional claiming in this case.
In the recent case of Ex parte McAward, Case No. 2015-006416, 2017
WL 3669566 (PTAB Aug. 25, 2017) (precedential), we pointed out that an
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Examiner's indefiniteness rejection begins what is intended to be an
interactive process in which the applicant has the opportunity to respond to
the examiner by amending the claims or by providing evidence or
explanation that shows why the claims are not indefinite. Id. at *2, citing
Packard, 751 F.3d at 1311-12. It appears to me that the Examiner has
endeavored to engage Appellants in a meaningful dialog concerning whether
the phrase "hi-lo measurement system" is intended to invoke means-plus-
function claiming or it otherwise overly broad so as to encompass every
conceivable system, past, present, or future. However, rather than engage
and address the Examiner's concerns, Appellants have simply dug in their
heels and adamantly insist, with insufficient reason, analysis, and evidence,
that the term does not invoke Section 112, paragraph, but, nevertheless,
otherwise is definite.
In short, a person of ordinary skill in the art desiring to weld pipe
joints but, nevertheless, design around Appellants' claims, is provided with
insufficient notice and information as to the metes and bounds of the claims.
This leaves an honest competitor in a state of uncertainty and risk as the
claim is sufficiently broad and vague that it arguably covers any apparatus
that is capable of generating a hi-lo value regardless of whether it is
supported by written description or an enabling disclosure in the
Specification and regardless of whether it conforms to any corresponding
structure in the Specification or its equivalents. Thus, in my opinion, the
claims are indefinite and I would sustain the Examiner's Section 112, second
paragraph, rejection of all pending claims.
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Unpatentability of Claim 1-4, 15-21, and 29-31
over Isao, Verkuijl, and Siebert 1
Because the pending claims are indefinite, I would proforma reverse
the prior art rejection because it is necessarily requires a speculative
assumption as to the meaning of the claims. In re Steele, 305 F.2d 859, 862
(CCPA 1962).
7