Ex Parte Lewis et al

Patent Trial and Appeal Board

Oct 24, 2018

13774283 (P.T.A.B. Oct. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/774,283 02/22/2013
42419 7590 10/24/2018
PAULEY ERICKSON & KOTTIS
2800 WEST HIGGINS ROAD
SUITE 365
HOFFMAN ESTATES, IL 60169
FIRST NAMED INVENTOR
William James Lewis
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.
AFC-llO 1014
EXAMINER
PATTERSON, MARC A
ART UNIT PAPER NUMBER
1782
MAIL DATE DELIVERY MODE
10/24/2018 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 WILLIAM JAMES LEWIS, MARC W. F. LEWIS,
MALCOLM M. SWIFT, LAMBERT ALLEN TERPSTRA, and
WILLIAM CHRISTOPHER LEWIS
Appeal2017-011501
Application 13/774,283
Technology Center 1700
Before KAREN M. HASTINGS, DONNA M. PRAISS, and
DEBRA L.DENNETT, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1, 2, 4--8, 10-15, 24--29, and 31-37
under 35 U.S.C. § 103(a) as being unpatentable over at least the combined
prior art of Johnston et al. (US 2006/0156598 Al, published July 20, 2006)
1 The real party in interest is stated to be Advanced Flexible Composites,
Inc. (Appeal Br. 2).
Appeal 2017-011501
Application 13/774,283
and Higashinaka (US 5,231,738, issued Aug. 3, 1993). 2 The Examiner also
rejects claims 5, 11, 12, and 25 under 35 U.S.C. § 112 (Final Action 2--4;
Ans. 2--4).
We have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
Claims 1, 25, and 32 are illustrative of the claimed subject matter
( emphasis added to highlight key disputed limitations):
1. A flexible belt wrapper for a continuous conveyor
belt, comprising:
a flexible substrate having a first face and a second face
opposite the first face;
a coating on the first face of the flexible substrate; and
a clip attached to the second face of the flexible
substrate, the clip including a base with a first end, wherein the
first end of the base is curved to form an engagement surface
that is curved outward from the flexible substrate and curved
back over the base, and that is adapted to secure the clip to a
portion of the conveyor belt to drive the belt wrapper at a same
speed as the conveyor belt.
25. A flexible belt wrapper for a continuous conveyor
belt, the belt wrapper comprising:
a flexible substrate having a first face and a second face
opposite the first face;
a polymer coating on the first face of the flexible
substrate; and
a clip fastened to the second face of the flexible substrate,
the clip comprising a base including opposing side edges each
curved outward from the second face and curved inward
toward each other to form two oppositely and inwardly facing
2 The Examiner applies various prior art references in addition to Johnston
and Higashinaka to claims 2, 5, 10, 14, 15, 24, 26, 27, 29, and 31-37 (Final
Action 8-16; see also Appeal Br. 7, 8).
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Application 13/774,283
curved hooks each adapted to directly engage around a
corresponding chain, cross-wire, or crossbar of the conveyor
belt to attach the belt wrapper to the conveyor belt.
32. A flexible belt wrapper for a continuous conveyor
belt, the belt wrapper comprising:
a flexible substrate having a first face and a second face
opposite the first face, the flexible substrate comprising
polymer coated fiberglass;
a silicone coating on the first face of the flexible
substrate; and
a metal clip fastened to the second face of the flexible
substrate by a rivet, screw, or bolt through the flexible
substrate, the clip comprising a base including opposing side
edges each curved outward from the second face and each
curved inward back toward each other to form two opposing
curved engagement swfaces each adapted to engage partially
around a corresponding chain, cross-wire, or crossbar of the
conveyor belt to drive the belt wrapper at a same speed as the
conveyor belt.
ANALYSIS
The§ 112 Rejections
As an initial matter, the Examiner's rejection of claim 12 under
35 U.S.C. § 112 for containing the phrase "the the" has not been appealed or
addressed by Appellants ( e.g., Appeal Br. 7). Accordingly, we summarily
affirm this rejection.
The Examiner rejected claim 11 under 35 U.S.C. § 112, first and
second paragraphs, for failing to comply with the written description
requirement and for being indefinite, both due to the phrase "along an
entirety of the first end of the base." The Examiner rejected claim 5 as
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Application 13/774,283
infinite for the phrase "directly connects" and claim 25 similarly for the
phrase "directly engage".
Appellants convincingly explain why one of ordinary skill would have
appreciated that Appellants were in possession of the claimed subject matter
and would have also understood the meaning of the phrase "along an
entirety of the first end of the base" in view of the Specification, including
the figures (Appeal Br. 8-10). Notably, to satisfy the written description
requirement, the claim need not use the same words as the specification; it is
enough that one of ordinary skill in the art would recognize that the inventor
invented what is claimed. Union Oil Co. of Cal. v. Atl. Richfield Co., 208
F.3d 989, 997 (Fed. Cir. 2000). For all the reasons presented by Appellants,
we conclude Appellants' Specification and drawings conveys with
reasonable clarity to those skilled in the art that, as of the filing date sought,
Appellants were in possession of the invention as now claimed in claim 11.
Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563---64 (Fed. Cir. 1991).
With respect to the § 112 rejections based on indefiniteness, claims
are definite if they "set out and circumscribe a particular area with a
reasonable degree of precision and particularity. It is here where the
definiteness of the language employed must be analyzed-not in a vacuum,
but always in light of the teachings of the prior art and of the particular
application disclosure as it would be interpreted by one possessing the
ordinary level of skill in the pertinent art." In re Moore, 439 F.2d 1232,
1235 (CCPA 1971).
Appellants likewise reasonably explain why one of ordinary skill in
the art would have understood the meaning of the phrases "directly
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Application 13/774,283
connects" and "directly engage" ( as well as the disputed phrase of claim 11)
in light of the Specification, including its figures (Appeal Br. 10, 11 ).
While the Examiner repeats conclusory rejections (Ans. 2--4 (e.g.,
"'directly engage' is indefinite as its meaning is unclear")), he does not
meaningfully respond to any of the Appellants' explanations (e.g., the
Response to Argument Section of the Answer does not mention or address
Appellants' arguments regarding the§ 112 rejections of claims 5, 11, and
25).
In light of these circumstances, we reverse the Examiner's§ 112
rejections of claims 5, 11, and 25.
The§ 103 Rejections
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
"[R ]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), quoted with
approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007).
After review of the respective positions provided by Appellants and
the Examiner, we conclude that the preponderance of the evidence supports
Appellants' position that the Examiner has not met the burden in this
case for substantially the reasons set forth by Appellants in the Briefs.
Accordingly, we reverse the Examiner's§ 103 rejections of all the claims
on appeal.
We add the following primarily for emphasis.
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Application 13/774,283
All of the § 103 rejections rely upon the basic combination of
Johnston and Higashinka, and rely upon Higashinka to teach the recited clip
structure. "[D]uring examination proceedings, claims are given their
broadest reasonable interpretation consistent with the specification." In re
Translogic Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re
Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). See also In re Am. Acad. of
Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (The scope of the
claims in patent applications is not determined solely on the basis of the
claim language, but upon giving claims their broadest reasonable
construction in light of the specification as it would be interpreted by one of
ordinary skill in the art.); cf Phillips v. AWHCorp., 415 F.3d 1303, 1315
(Fed. Cir. 2005). ("[T]he specification 'is always highly relevant to the claim
construction analysis. Usually, it is dispositive; it is the single best guide to
the meaning of a disputed term."' (Internal citation omitted)).
We agree with Appellants that the broadest reasonable interpretation
of "a clip ... including a base with a first end, wherein the first end of the
base is curved to form an engagement surface that is curved outward from
the flexible substrate and curved back over the base" as recited in claim 1
and a "clip comprising a base including opposing side edges each curved
outward from the second face and curved inward toward each other to form
two oppositely and inwardly facing curved hooks each adapted to directly
engage around a corresponding chain, cross-wire, or crossbar" as recited in
claim 25 (and similar language in claim 32) and consistent with the
Specification does not encompass Higashinaka' s hooks of its hook and loop
fastener. As pointed out by Appellants, Higashinaka's base fabric 2 has
hook fasteners 3 located on it (as depicted in Fig. 2(a)); base fabric 2 does
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Application 13/774,283
not per se have curved ends that function to secure the clip to a portion of a
conveyor belt as recited in each independent claim (Appeal Br. 15, 16;
Reply Br. 2, 3; see also Reply Br. 4 (Appellants further state "one of
ordinary skill in the art refers to Velcro as a hook-and-loop fastener, and
would not consider Velcro a 'clip."')). Notably, Appellants' Specification
describes a hook and loop fastener as a different embodiment of their
invention from a clip (Spec. 7, describing Figs. 2-5 as depicting a clip, as
compared to the hook and loop fastener of Fig. 103). Accordingly, we agree
with Appellants that it is unreasonable to rely upon a hook and loop fastener
to teach or suggest the curved clip as recited herein and as described in the
Specification (id.). Thus, the Examiner's reliance on a hook and loop
fastener as depicted in Higashinaka to teach the claimed clip is unfounded.
The Examiner does not proffer sufficient reasoning or rely upon any
other reference to cure these deficiencies. 4
3 It appears that Fig. 9 depicts the hook and loop fastener, and Fig. 10
depicts the snap protrusion with a male and female portion attributed to Fig.
9 (Spec. 7 last line to Spec. 8 line 3). Appellants may wish to clarify and/or
correct this in any further prosecution.
4 While a clip as claimed and described in Appellants' Specification may
well be a known alternative fastener to a hook and loop fastener, the
Examiner did not rely upon any applied prior art to exemplify that these may
be known alternatives. The Board relies on the involved parties to focus the
issues and decides only those issues based on facts and arguments presented
by the involved parties. See Ex Parte Frye, 293 F. 1013 (BPAI 2010
(precedential)). While the Board is authorized to enter
a new ground of rejection, this authority is discretionary. See 37 C.F.R.
§ 41. 77 (b ). We leave it to the Examiner to determine whether any such
teachings of the alternative use of clips versus hook and loop fasteners may
be found, and decide whether any such new ground of rejection should be
made.
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Accordingly, we reverse the § 103 rejections of all the claims on
appeal, which all rely upon the Examiner's flawed interpretation of the claim
language.
CONCLUSION
The Examiner's § 112 rejection of claim 12 is affirmed.
The Examiner's§ 112 rejections of claims 5, 11, and 25 are reversed.
The Examiner's § 103 rejections of all the claims on appeal are
reversed.
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
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