Ex Parte Mochizuki et al

Patent Trial and Appeal Board

Sep 11, 2017

13701373 (P.T.A.B. Sep. 11, 2017)

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.
13/701,373 11/30/2012 Takahisa Mochizuki GOT-373NP 1076
23995 7590
Rabin & Berdo, PC
1101 14TH STREET, NW
SUITE 500
WASHINGTON, DC 20005
09/25/2017 EXAMINER
NGUYEN, XU AN LAN T
ART UNIT PAPER NUMBER
3657
NOTIFICATION DATE DELIVERY MODE
09/25/2017 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):
firm @ rabinberdo .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKAHISA MOCHIZUKI and YUUKI AMANO
Appeal 2016-005794
Application 13/701,373
Technology Center 3600
Before JUSTIN BUSCH, JOYCE CRAIG, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1 and 3 under 35 U.S.C. § 103(a). Final Act. 2—5. Claims 4—7 are
objected to as being dependent upon a rejected base claim, but otherwise
allowable if rewritten in independent form. Id. at 6. Claims 8—11 are
indicated as allowed. Id. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection.
Appeal 2016-005794
Application 13/701,373
CLAIMED SUBJECT MATTER
Claims 1 and 3 are the only claims subject to this Appeal. Claim 1 is
independent. The claims relate generally to a joint structure including an
insertion shaft and a reception side shaft and, more specifically, “to a joint
structure used to join an insertion shaft that is driven to rotate and a
reception side shaft to which a rotation of the insertion shaft is transmitted.”
Spec. 11. Claim 1 is reproduced below:
1. A joint structure that joins an insertion shaft that is driven
to rotate to a reception side shaft having an insertion groove into
which the insertion shaft is inserted so that a rotation of the
insertion shaft is transmitted to the reception side shaft, the joint
structure comprising:
a pair of opposing arc-shaped portions included at the
insertion shaft, the pair of opposing arc-shaped portions being
formed on an outer periphery of the insertion shaft; and
a pair of opposing planar portions included at the insertion
shaft, the pair of opposing planar portions being formed on an
outer periphery of the insertion shaft;
the insertion groove including:
an axial hole that is formed to open roundly onto
only one end surface of the reception side shaft and
coincides with the pair of arc-shaped portions; and
a radial hole that is formed to penetrate the reception
side shaft in a radial direction and coincides with the pair
of planar portions;
wherein the radial hole is formed such that a width
dimension is substantially identical to a dimension of a
width that is flat across the pair of planar portions;
a radius of curvature of an entire inner peripheral surface
of the axial hole that is substantially identical to a radius of
curvature of the pair of arc-shaped portions; and
a bottom portion of the axial hole and an end portion of the
radial hole overlapping with each other.
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Appeal 2016-005794
Application 13/701,373
REJECTION
Claims 1 and 3 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Imaizumi (FR 2 621 663; Apr. 14, 1989). Final Act. 2—5.
ANALYSIS
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Prater, 415 F.2d 1393, 1404—05 (CCPA 1969); In re Am. Acad. ofSci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The patent statute requires
that a claim “particularly point[] out and distinctly claim[] the subject matter
which the applicant regards as [the] invention.” 35 U.S.C. § 112 12.1
Every word or phrase used in a claim must have a clear meaning. In re
Packard, 751 F.3d 1307, 1309 (Fed. Cir. 2014); Ex parte McAward, Appeal
2015-006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017)
(precedential) (explaining that the USPTO considers a claim indefinite
“when it contains words or phrases whose meaning is unclear.” (quoting
Packard, 751 F.3dat 1314)). Furthermore:
[W]hen the USPTO has initially issued a well-grounded rejection
that identifies ways in which language in a claim is ambiguous,
vague, incoherent, opaque, or otherwise unclear in describing
and defining the claimed invention, and thereafter the applicant
fails to provide a satisfactory response, the USPTO can properly
reject the claim as failing to meet the statutory requirements of
§ H2(b).
McAward, 2017 WL 3669566, at *6 (quoting Packard, 751 F.3d at 1311).
1 The Leahy-Smith America Invents Act (“ALA”), Pub. L. No. 112-29, 125
Stat. 284 (2011), amended 35 U.S.C. § 112, e.g., to rename § 112’s
subsections. Because Appellants filed Application 13/701,373 before the
AIA’s effective date for applications, this decision refers to the pre-AIA
version of § 112.
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Appeal 2016-005794
Application 13/701,373
Given the vague and ambiguous language used, we are unable to
determine the broadest reasonable interpretation of “a dimension of a width
that is flat across the pair of planar portions,” as recited in independent claim
1. Attempting to break down the clause, we are unable to discern what the
claim means by a dimension of a width, which is itself a dimension of an
object represented by a scalar quantity (i.e., a one-dimensional
measurement). Moreover, even assuming the claim intends to recite merely
a width, which would read “a dimension of’ out of the claim, it is still
unclear how a width can be “flat.” As discussed, a width is, by its nature, a
one-dimensional measurement; thus, reciting a “width that is flat” is
incoherent.
Moreover, even if we understand the phrase “flat across the pair of
planar portions,” taken as a whole, modifies the “dimension of a width,” we
still are uncertain what dimension is measured. The phrase “flat across the
pair of planar portions” provides no guidance regarding the two points
between which the width would be measured and is, at best, ambiguous.
Because the planar surfaces are “a pair of opposing planar portions,” it is
possible each planar surface to be identical to the other. Thus, “a width that
is flat across the pair of planar portions” could at least mean either a distance
from one edge of a planar surface to another edge of the planar surface or a
distance from one planar surface to the other. Neither the term “flat” nor the
term “across” provides any clarity to the dimension that is recited.
Furthermore, using either of the two previously mentioned
understandings could lead two people to different measurements because the
phrase is vague regarding whether the distance is measured along a line that
is orthogonal to any particular surface. Cf
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Appeal 2016-005794
Application 13/701,373
Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005) (“The scope of claim
language cannot depend solely on the unrestrained, subjective opinion of a
particular individual purportedly practicing the invention. Some objective
standard must be provided in order to allow the public to determine the
scope of the claimed invention.” (internal citation omitted)), abrogated on
other grounds by Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120
(2014).
Given the vague and ambiguous nature of the recited phrase “a
dimension of a width that is flat across the pair of planar portions,” we find
the phrase is unclear regarding Appellants’ intended meaning. Thus, we
conclude the phrase is indefinite under 35 U.S.C. § 112 12.
We do not analyze the teachings of the asserted prior art because, for
the reasons stated above, we cannot determine the scope of independent
claim 1 or claim 3, which depends therefrom. Before a proper review of the
rejection can be performed, the subject matter encompassed by the claims on
appeal must be reasonably understood without resort to speculation. See In
re Steele, 305 F.2d 859, 862—63 (CCPA 1962) (holding a prior-art rejection
cannot be sustained if a person of ordinary skill in the art would have to
make speculative assumptions concerning the meaning of claim language).
Because we cannot discern the proper construction of the claims, we are
constrained to reverse, pro forma, the prior-art rejection of claims 1 and 3.
See also In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“If no reasonably
definite meaning can be ascribed to certain terms in the claim, the subject
matter does not become obvious—the claim becomes indefinite.”).
For these same reasons, we enter a new ground of rejection under 35
U.S.C § 112 12 because claims 1 and 3 are indefinite. Packard, 751 F.3d at
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Appeal 2016-005794
Application 13/701,373
1309 (affirming Board’s conclusion, in context of ex parte appeal, that
claims were indefinite because they contained words or phrases whose
meaning was unclear); McAward, 2017 WL 3669566, at *5—6.
DECISION
For the above reasons, we reverse the Examiner’s decision to reject
claims 1 and 3 under 35 U.S.C. § 103(a).
We enter a new ground of rejection for claims 1 and 3 under
35 U.S.C. § 11212.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(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
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Appeal 2016-005794
Application 13/701,373
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.
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).
REVERSED
37 C.F.R, $ 41.50(b)
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