Ex Parte Meeks

Patent Trial and Appeal Board

Mar 14, 2016

12421420 (P.T.A.B. Mar. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/421,420 0410912009
27305 7590 03/16/2016
HOW ARD & HOW ARD ATTORNEYS PLLC
450 West Fourth Street
Royal Oak, MI 48067
FIRST NAMED INVENTOR
James W. Meeks
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.
065313.00086 4441
EXAMINER
STRIMBU, GREGORY J
ART UNIT PAPER NUMBER
3634
NOTIFICATION DATE DELIVERY MODE
03/16/2016 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):
IPDocket@HowardandHoward.com
dtrost@HowardandHoward.com
tmorris@Howardandhoward.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES W. MEEKS
Appeal2014-000565
Application 12/421,420
Technology Center 3600
Before: CHARLES N. GREENHUT, ERIC C. JESCHKE, and
MARK A. GEIER, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
3, 6, 7, 10-14, 17, 18,and21-25. Wehavejurisdictionunder35U.S.C.
§ 6(b ).
We affirm-in-part and enter new grounds of rejection.
The claims are directed to a seal for an adjustable threshold assembly.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. An adjustable threshold assembly for disposition below a
door, said adjustable threshold assembly comprising:
a sill;
Appeal2014-000565
Application 12/421,420
a rail spaced from said sill and configured to be vertically
adjustable relative to said sill between a minimum and a
maximum height;
and a seal comprising: a first portion which is plastic and engages
one of said sill and said rail;
a second portion which is plastic and engages the other of said
sill and said rail;
an intermediate portion which is an elastomer and connects said
first and second portions and is flexible relative to said first and
second portions;
and said second portion including a projection defined by an
upper comer, a lower comer, and a vertically extending portion
extending from said upper comer to said lower comer;
a bulb which is an elastomer, said bulb extending from said first
portion and maintaining contact with at least one of said upper
comer and said lower comer as said rail moves between said
minimum height and said maximum height;
wherein said bulb includes a first end extending from said first
portion and a second end extending from said first portion and
spaced from said first end, said bulb and said first portion
enclosing a cavity between said first and second ends;
said bulb rolling relative to said first portion of said seal as said
rail moves between said minimum height and said maximum
height;
said bulb being resiliently collapsed around said upper comer
when said rail is at said minimum height with said upper comer
deforming said bulb to match a shape of said upper comer to seal
between said bulb and said projection, and said bulb being
resiliently collapsed around said lower comer when said rail is at
said maximum height with said lower comer deforming said bulb
to match a shape of said lower comer to seal between said bulb
and said projection.
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Application 12/421,420
REJECTION 1
Claims 1-3, 6, 7, 10-14, 17, 18, and 21-25 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Pepper et al. (US 2006/0112644
Al, pub. June 1, 2006), which incorporates Geoffrey (US 5,230,181, iss.
July 27, 1993) in view of Trantina (US 3,344,271, iss. Sept. 26, 1967) and
Wruck et al. (US 5,408,784, iss. Apr. 25, 1995).
OPINION
We adopt the Examiner's factual findings concerning Pepper as our
own. See Final Act. 3--4; Ans. 2-3. Notably, Pepper, in part by
incorporating Geoffrey, discloses the basic threshold and/or seal as claimed,
with rib 74 (see Geoffrey, Fig. 4) in place of a bulb 66 (see, e.g., Application
Figures 3-5). As the Examiner correctly points out, insofar as material
selection for the various seal portions is concerned, Pepper and Geoffrey
expressly teach the use of a more rigid thermoplastic for the structural
portions 56, 58 and a more flexible thermoplastic for the bending 62 and
sealing rib 74 portions. Ans. 3 (citing Geoffrey col. 4 [sic col. 2], 11. 58-60
and col. 3, 11. 3-8). This is the same as in the embodiment covered by the
claims before us. See Spec. para. 28. The Examiner concluded that, in light
of Trantina, it would have been obvious to replace rib 7 4, as taught in
Geoffrey, with a bulb. Ans. 3.
Appellant's first argument focuses on the purported absence of any
teaching in Trantina to use a plastic and elastomer for the body portion 31
1 The Examiner withdrew a rejection under 35 U.S.C. § 112, first paragraph.
Ans. 2. For the reasons discussed below, we reinstate this rejection.
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Application 12/421,420
and bead or "bulb" 38, respectively. 2 App. Br. 8-10. As Appellant correctly
points out (App. Br. 14), this is a requirement of each of the independent
claims involved in this appeal, claims 1, 12, and 22. The Examiner correctly
points out that Appellant's attack on Trantina individually has little to do
with the Examiner's rejection, which relies on the combined teachings of
Pepper, Geoffrey, Trantina, and Wruck. Ans. 3. "Non-obviousness cannot
be established by attacking references individually where the rejection is
based upon the teachings of a combination of references." See In re Merck
& Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Were the proposed
substitution of a rib for a bulb made, we agree with the Examiner that one
skilled in art would maintain the materials used for their particular functions
as taught by Pepper and Geoffrey, thereby yielding the claimed subject
matter. The Examiner additionally relies on Wruck, which is somewhat
cumulative to the teachings of Geoffrey concerning using dissimilar
materiails. Final Act. 5; Ans. 4. Appellant has addressed only the absence
of particular features in Trantina but has not addressed the Examiner's
rejection, and therefore has not apprised us of any error.
Appellant's next argument is based on the limitation "a bulb
.maintaining contact with at least one of said upper and lower comer."
App. Br. 11. This limitation is only present in independent claim 1 and
dependent claim 23. Independent claim 12 contains a broader limitation in
that contact is maintained only "between said bulb and said second portion."
Claim 22 does not include any limitation concerning maintaining contact
2 Trantina discloses what Appellant acknowledges as an alternative
arrangement-modifying the thickness to obtain the desired rigidity or
elasticity at appropriate locations. Compare Spec. para 28, with Trantina
col. 2, 11. 49---61.
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Appeal2014-000565
Application 12/421,420
during movement (claim 1) or adjustment (claim 12). However, the last
limitation of claim 22 is similar to that of claim 1 and relates to the bulb
collapsing about a respective comer when the rail is at minimum and
maximum heights.
In arguing claims 12 and 22, Appellant only appears to rely on the
plastic/elastomer argument discussed above. App. Br. 14. As noted above,
the limitation relating to maintaining contact argued with respect to claim 1
is not present in either claim 12 or 22. Appellant does quote the last
limitation of claim 1 relating to collapsing about a respective comer when
the rail is at minimum and maximum heights. App. Br. 13. However,
Appellant does not provide any explanation concerning the Examiner's
position with regard to this limitation. At most, Appellant points out the
absence of comers in Trantina. However, the Examiner takes the position
that once Trantina's bulb is substituted for rib 74 in Pepper/Geoffrey, the
bulb, located similarly to the rib, would collapse around Pepper's comers
because those comers (see Pepper Fig. 2) would be at the sealing location of
the bulb when Pepper's rail is at the maximum (e.g., Geoffrey Fig. 2) and
minimum (e.g., Geoffrey Fig. 3) positions. Ans. 5. The Examiner's position
in this regard stands uncontroverted. Accordingly, we sustain the
Examiner's rejection of independent claims 12 and 22 along with those
claims argued as a group therewith.
The Examiner's explanation of the subject matter that the proposed
combination would yield (Ans. 5) clearly addresses the limitations of claims
12 and 22 as discussed above. However, the Examiner's explanation does
not address the language of claim 1 or 23 relating to maintaining contact
with a comer during movement. The Examiner's rejection (Final Act. 3) is
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Application 12/421,420
no more informative on this point. In order for contact with a comer to be
maintained presumably a particular relative location and size ratio between
the comers and bulb would need to exist. The Examiner does not provide an
explanation as to how these limitations would be met by the proposed
combination or why it would have been obvious to modify the prior art so as
to arrive at subject matter exhibiting this functional characteristic. We
therefore do not sustain the Examiner's§ 103(a) rejection of claim 1 and its
dependents or claim 23.
We employ the word "presumably" above because Appellant fails to
describe in their original disclosure any particular arrangement by which this
limitation is satisfied. The absence of a supporting disclosure in this regard
formed the basis for which the Examiner rejected claim 1 under 35 U.S.C.
§ 112, first paragraph. See Final Act. 2. The Examiner withdrew that
rejection, stating that "it would be better to recite that the bulb maintains
contact with at least one of the upper comer and the lower comer when the
rail is in a respective one of said minimum height and said maximum
height." Final Act. 2. This comment leads us to believe that the Examiner
interpreted the limitation relating to maintaining contact during movement as
the same as the limitation already present in claim 1 concerning collapsing
around a respective comer at maximum and minimum rail heights. To the
extent that this is the Examiner's understanding of the claimed subject
matter, perhaps leading to the Examiner's failure to address this limitation in
the prior art rejection, this interpretation is not consistent with the plain
language of claim 1. The Examiner is under no obligation to interpret a
claim inconsistently with the express language of that claim in an effort to
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Application 12/421,420
ensure the requirements of§ 112 are satisfied. The burden of claim drafting
rests with the applicant.
In addressing the Examiner's prior rejection under§ 112, first
paragraph, Appellant points to Figures 2-8 and paragraphs 36 and 40 of the
Specification. App. Br. 7. However, the cited disclosure relates only to the
maximum and minimum rail positions and not to movement therebetween.
The only disclosure relating to such movement appears to be in paragraph 35
of the Specification. We understand that paragraph to describe bulb 66
contacting one of three structures: the top comer 76 (Fig. 4), the bottom
comer 76 (Fig. 5) or vertically extending portion 78 (not shown). To
introduce, by way of amendment, a limitation requiring the bulb to maintain
contact with only two of those structures (the comers) during rail movement
is, as the Examiner originally found, a violation of the written description
requirement of 35 U.S.C. § 112, first paragraph. Appellant is attempting to
claim something for which there is no indication they had possession as of
the application filing date.
The purpose of the written description requirement is to prevent
an applicant from later asserting that he invented that which he
did not; the applicant for a patent is therefore required to "recount
his invention in such detail that his future claims can be
determined to be encompassed within his original creation."
Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1330 (Fed. Cir.
2003) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir.
1991) ). The fundamental factual inquiry is whether the specification
conveys with reasonable clarity to those skilled in the art that, as of the filing
date sought, applicant was in possession of the invention as now claimed.
See, e.g., Vas-Cath, Inc., 935 F.2d at 1563---64. If the originally filed
disclosure does not provide support for each claim limitation, a new or
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Application 12/421,420
amended claim must be rejected under 35 U.S.C. § 112, first paragraph, as
lacking adequate written description. Thus, pursuant to our authority under
37 C.F.R. § 41.50(b), we reinstate the Examiner's rejection of claims 1-3, 6,
7, 10, and 11under35 U.S.C. § 112, first paragraph as failing to comply
with the written description requirement. We further include claim 23 in this
same rejection.
DECISION
We reverse the Examiner's rejection of claims 1-3, 6, 7, 10, 11, and
23 under 35 U.S.C. § 103(a).
We affirm the Examiner's rejection of claims 12-14, 17, 18, 21, 22,
24, and 25 under 35 U.S.C. § 103(a).
We reject claims 1-3, 6, 7, 10, 11, and 23 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
FINALITY OF DECISION
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(l) provides
"Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board."
In addition to affirming the Examiner's rejections of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2008). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
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Application 12/421,420
the following two options with respect to the new grounds 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 proceeding will be remanded to
the Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record ....
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(l), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
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).
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
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