Ex Parte Morrow

Patent Trial and Appeal Board

Dec 31, 2018

12315778 (P.T.A.B. Dec. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/315,778 12/05/2008
39208 7590 12/31/2018
CR MILES, P.C.
CRAIG R. MILES
405 MASON COURT, SUITE 119
FORT COLLINS, CO 80524
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
William David Morrow
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.
MorrowContIIScreen 8148
EXAMINER
ARYANPOUR, MITRA
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
12/31/2018 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 DAVID MORROW
Appeal 2018-001103
Application 12/315,778 1
Technology Center 3700
Before MICHAEL C. ASTORINO, BRUCE T. WIEDER, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
William David Morrow (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner's final rejection claims 36 and 43--48, as set forth in
the Final Office Action ("Final Act.," mailed Nov. 1, 2016) 2-10. We have
jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 Appellant identifies "Morrow Sports, LLC" as the real party in interest.
Appeal Br. 4 (filed May 1, 2017).
Appeal 2018-001103
Application 12/315,778
THE INVENTION
Appellant's invention is directed to "[a] pitching screen which
provides a first pitching lane and a second pitching lane in a single pitching
screen configuration to allow both left-handed pitchers and right-handed
pitchers to pitch without repositioning the pitching screen." Spec., Abstract.
Claim 36, the sole independent claim reproduced below, is
representative of the subject matter on appeal.
36. A pitching screen, comprising:
a first arcuate support element having a first end and a
second end;
a second arcuate support element having a first end and a
second end, said first and second supports having a radius of
about 36 inches to about 120 inches;
a base coupled to said second end of said first arcuate
support element and said second end of said second arcuate
support element to dispose said second ends a distance apart,
each of said first arcuate support element and said second
arcuate support element curving inwardly from said base to
dispose said first ends in uncoupled relation to establish said
first ends at a lesser distance apart at a height above said base of
about 60 inches to about 120 inches; and
an object deflection material having a plurality of
apertures, said object deflection material coupled to said first
arcuate support element and to said second arcuate support
element to provide a continuous substantially planar object
deflection surface between said first arcuate support element
and said second arcuate support element.
Appeal Br. 50, Claims App.
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Application 12/315,778
THE REJECTIONS
1. Claims 36 and 43--48 2 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement. Answer 2 ("Ans.," mailed Sept. 12, 2017).
2. Claims 36 and 43--48 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement. Id.
3. Claims 36 and 43--47 3 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Respini (US 3,195,898, iss. July 20, 1965), and,
alternatively, by Bownet (Bownet Portable Pitching Screen,
http://www.hittingworld.com/Bownet_Portable_Pitching_Screen_p/bo
w-psc.htm (last visited Oct. 7, 2011). Id.
ANALYSIS
Written Description Requirement
We have reviewed the Examiner's rejection against Appellant's
arguments (Appeal Br. 10-17; Reply Br. 2-7), and we are not persuaded the
Examiner erred in rejecting independent claim 36 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
The written description requirement is separate and distinct from the
enablement requirement. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d
2 We treat as inadvertent error the Examiner's inclusion of canceled claim 42
in the statement of rejection. See Final Act. 2; see also Ans. 2.
3 "Claim 48 would be allowable if rewritten to overcome the rejection(s)
under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), 1st paragraph, set forth
in this Office action and to include all of the limitations of the base claim
and any intervening claims." Final Act. 10.
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1336, 1340 (Fed. Cir. 2010) (en bane). To satisfy the written description
requirement, the disclosure must reasonably convey to skilled artisans that
the patentee possessed the claimed invention. Vas-Cath Inc. v. Mahurkar,
935 F.2d 1555, 1562---63 (Fed. Cir. 1991)). "[T]he test for sufficiency is
whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date." Ariad, 598 F.3d at 1351 (citing Vas-
Cath, 935 F.2d at 1563).
In rejecting claims 36 and 43--48 as failing to comply with the written
description requirement, the Examiner determines ( 1) "[ t ]he newly added
limitation in line[] 8 [of claim 36, which recites 'to dispose said first ends in
uncoupled relation'] 4 has no support in the application as filed" (Final
Act. 2). In particular, the Examiner finds "the originally filed drawings,
specification and claims fail to disclose in any of the disclosed embodiments
the option of having the first ends of the first and second arcuate members
being positioned in an 'uncoupled' relation." Id. According to the
Examiner, "there is no suggestion that the first ends of the arcuate members
would be in any other position other than the disclosed and shown position
which is coupled together or formed of one-piece." Id.
A written description question frequently arises when an applicant,
after filing a patent application, adds "new matter" to the claims not present
in the original application. Vas-Cath, 935 F.2d at 1560. When an applicant
amends or adds claims during prosecution, for example, the newly claimed
subject matter must find written description support in the original
4 Amendments to the Claims filed September 29, 2015.
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Application 12/315,778
specification. Id.; see also Turbo Care Div. of Demag Delaval
Turbomachinery Corp. v. Gen. Elec. Co., 264 F.3d 1111, 1118 (Fed. Cir.
2001 ). Compliance with the written description requirement ensures that the
applicant fully possessed the entire scope of the claim as of the original
filing date. TurboCare, 264 F.3d at 1118.
Here, claim 3 6 was amended to functionally define the structural
relationship of the first ends of the first and second arcuate support elements
by adding the limitation "to dispose said first ends in uncoupled relation."
See Amendment filed Sept. 29, 2015. Prior to this amendment, claim 36
defined the structural relationship of the first ends of the arcuate support
elements as being 'joined." See Amendment filed Dec. 10, 2010. The
Specification provides that the "first arcuate support ( 5) and said second
arcuate support element (6) are coupled ... [via] a coupler (10)." Spec. 7.
As such, in amending the claim to change the relationship of the first ends
from a coupled to an "uncoupled relation," Appellant ostensibly introduced a
negative limitation that speaks to the absence of a feature. It is undisputed
that this negative limitation is not expressly disclosed in the Specification.
Nevertheless, it is well settled that negative limitations are permissible
forms of expression to define the scope of a claimed invention. See, e.g.,
Animal Legal Def Fund v. Quigg, 932 F.2d 920, 923 (Fed. Cir. 1991). The
mere absence of a positive recitation in the original disclosure is not basis to
exclude the limitation because "[ n ]egative claim limitations are adequately
supported when the specification describes a reason to exclude the relevant
limitation." Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed.
Cir. 2012). But Appellant's original disclosure fails to convey such a reason
for this limitation. In other words, Appellant's original disclosure fails to
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Application 12/315,778
convey a reason for excluding a coupler to "dispose said first ends in
uncoupled relation." For example, in Santarus, the negative limitation at
issue was adequately supported because the excluded compound was already
described in the specification as a less advantageous alternative, and its
disadvantages were provided. Id. at 1351. By contrast, here, Appellant fails
to provide sufficient evidence that the Specification discloses any
embodiment excluding or even discouraging the coupling of the first ends.
Rather, Appellant's negative limitation effectively introduces a new concept
that is not reasonably supported by the original disclosure. See, e.g., Omega
Eng'g, Inc. v. RaytekCorp., 334 F.3d 1314, 1323 (Fed. Cir. 2003) (finding no
express disclaimer or independent lexicography in the written description to
justify adding negative limitation); Ex parte Grasselli, 231 USPQ 393, 394
(BPAI 1983) (affd mem., 738 F.2d 453 (Fed. Cir. 1984)) ("[T]he express
exclusion of certain elements implies the permissible inclusion of all other
elements not so expressly excluded. This clearly illustrates that such
negative limitations do, in fact, introduce new concepts."). Accordingly, we
agree with the Examiner that there is no written support for the limitation "to
dispose said first ends in uncoupled relation."
We disagree with the Examiner's additional finding that "the
application as filed fails to support providing 'a base' coupled to said second
end of said first and second arcuate support elements" because the disclosure
"fails to show both arcuate elements being attached to a single base."
Ans. 5. The language of claim 36 does not recite a "single" base. And, the
Specification provides that the base "can comprise a first tee element ( 1 7)
and a second tee element (18) ... [and] could alternately be configured as
round, square, or oval pedestals; or include additional legs; stakes (with or
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Application 12/315,778
without guy wires); or any base configuration which can be utilized to orient
the support structure of the pitching screen to the support surface." Spec. 8.
In fact, claim 44 recites that "[t]he pitching screen as described in claim 36,
wherein said base comprises: a first tee element; and a second tee element."
Appeal Br. 51, Claim App.
In view of the foregoing, we sustain the rejection of claims 36 and 42-
48 as failing to comply with the written description requirement only with
respect to the negative limitation "to dispose said first ends in uncoupled
relation."
Enablement
In rejecting claims 36 and 43--48 as failing to comply with the
enablement requirement, the Examiner finds:
The claims are directed to "a pitching screen having uncoupled
first or upper ends i.e. isosceles frame". While the claims cover
an "isosceles frame", the specification only teaches the skilled
artisan how to make or use an "A" frame. The specification
fails to enable the full scope of the claims because the skilled
artisan cannot substitute an "A" frame for an "isosceles" frame.
One skilled in the art can not apply the teachings of the
specification to make the structure of the claimed "isosceles
frame", because the structure required to maintain the
"isosceles" frame in an upright working configuration is not
met by the disclosed "A" frame structure which uses a coupler
to maintain and support the "A" frame in an upright arcuate
configuration.
Final Act. 4. The Examiner concludes "[t]he claims cannot be considered
enabling because the specification has not provided teaching [sic] as to how
the substitution and integration of the 'A' frame for an 'isosceles' frame
would be accomplished without the use of the coupler." Id.
Alleging error in the rejection, Appellant argues that
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Application 12/315,778
enablement is not determined based on whether Appellant has
explicitly disclosed how to make and use each and every
embodiment, but on undue experimentation, which Examiner
has not shown, then the enablement requirement has been
complied with. Examiner has made no findings or articulated
any reason as to why the specification and claims are not
enabling, forgoing a proper application of the Wands factors.
Appeal Br. 32-33. We are persuaded by Appellant's argument.
A Specification is not enabling if a person of ordinary skill in the art
would be unable to practice the invention without "undue experimentation."
In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). Factors relevant to a
determination of whether undue experimentation would be necessary
include:
(1) the quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of
working examples, (4) the nature of the invention, (5) the state
of the prior art, ( 6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth
of the claims.
Id. The initial burden is on the Examiner to set forth "a reasonable
explanation" of why the Examiner believes a person of ordinary skill in the
art, given what the Specification discloses, would be unable to practice the
invention without "undue experimentation." See In re Wright, 999 F.2d
1557, 1561-62 (Fed. Cir. 1993).
The problem with the Examiner's explanation is that upon finding that
the Specification "only teaches the skilled artisan how to make an 'A'
frame" instead of the "isosceles" frame claimed (Final Act. 4), the Examiner
prematurely ends the analysis by concluding that the claims fail to comply
with the enablement requirement because "the specification has not provided
teaching as to how the substitution and integration of the 'A' frame for an
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'isosceles' frame would be accomplished without the use of the coupler."
Id. Determining what a specification does not disclose is merely a first step
in determining whether a claimed invention is enabled because an applicant
need not disclose what is already well known in the art. See In re Wands,
858 F.2d at 737 ("Whether undue experimentation is needed is not a single,
simple factual determination, but rather is a conclusion reached by weighing
many factual considerations."). Thus, the next step in the Examiner's
analysis would require consideration of the relevant fVands factors in
determining whether undue experimentation would be necessary. But
neither the Office Action nor the Answer5 provides any discussion of the
Wands factors, either explicitly or implicitly, to properly make the
determination that a person of ordinary skill in the art would be unable to
practice the invention without "undue experimentation." In other words, the
Examiner has failed to adequately analyze and explain why a person of
ordinary skill in the art, given what the Specification discloses, would be
unable to practice the invention without undue experimentation. As such, a
prima facie case for lack of enablement has not been established in the first
place.
Accordingly, we do not sustain the rejection of claims 36 and 43--48
as failing to comply with the enablement requirement.
5 The Examiner's response to Appellant's arguments states: "With regards to
referring to the pitching screen as an 'A' frame or an 'isosceles' frame, this
is just simple geometry, appellant need not explicitly define the shape of the
frame in the specification, the 'A' frame is clearly shown in figure 2A and
the 'isosceles' frame is claimed. No further explanation is deemed
necessary." Ans. 28.
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Anticipation by Respini
We are persuaded by Appellant's arguments (Appeal Br. 6-11; Reply
Br. 3-7) that the Examiner erred in finding Respini discloses "said first and
second supports having a radius of about 36 inches to about 120 inches," as
required by claim 36. Appeal Br. 50, Claims App.; Spec. 6 (The first and
second arcuate support elements (i.e., elements 5 and 6) as shown in Figure
2A define a portion of a circle.).
In rejecting this disputed limitation, the Examiner finds "the net as
shown in the figures [of Respini] can be 7'x9', therefore, the height of the
first and second supports would have to be at least 7' which falls within the
claimed range." Final Act. 5 (citing Respini Fig. 1). In response to
Appellant's arguments, the Examiner states:
It is further noted, that the netting dimensions disclosed by
Respini does not form a circle, but rather forms an elliptical-
shape and since the width and height are not the same
dimension i.e. a short radius and a long radius. The short radius
disclosed by Respini is roughly half the width of the net which
is about 3.5' (roughly 42") and the long radius is roughly half
the height which is about 4.5' (roughly 108"). Therefore,
since the radius disclosed by Respini is 3.5' (roughly 42") or
4.5' (roughly 108"), then the Respini reference "inherently"
meets the claimed range of about 36 inches and about 120
inches;
Id. at 29. According to the Examiner, "[t]he figures disclosed by Respini are
not to scale, therefore, the drawings cannot possibly result in an accurate
calculation of what the radius of an imaginary circle could be." Ans. 30.
A prior art reference may anticipate when the claim limitations not
expressly found in that reference are nonetheless inherent in it, but "[t]o
establish inherency, the extrinsic evidence 'must make clear that the missing
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Application 12/315,778
descriptive matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of ordinary skill."'
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (quoting Continental
Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991)).
Respini does describe "a seven foot by nine foot net" (Respini 5:7-8)
but neither discloses a radius for its side poles 12 nor provides netting
dimensions that form an elliptical shape. Respini merely shows a
rectangular shaped net and discloses that the "upper ends of the side poles
are deflected inwardly to assume the bowed positions [as] illustrated" in
Figure 1. Respini 2:30-32. We agree the proffered inherency theory falls
short because
[ t ]he Examiner's attempt to characterize the deflection of the
side poles (12) shown in Figure 1 of Respini by various
relationships between the length of the side poles and the
dimensions of the netting amounts to mere speculation about
possibilities and probabilities, but is not, however, sufficient to
evidence that the deflection of the side poles as shown in Figure
1 of Respini falls within the claimed radius of Claim 3 6.
Reply Br. 16.
Accordingly, we do not sustain the rejection of claim 36, including
dependent claims 43--48, as anticipated by Respini.
Anticipation by Bownet
As a preliminary matter, we address Appellant's argument that the
Bownet reference, which is a disclosure on the Internet, cannot qualify as
prior art because the priority date of the application filing is October 4, 2004,
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well before the publication of Bownet. 6 See Appeal Br. 44--48; Reply Br. 5-
6.
"Whether [a] ... document qualifies as a 'printed publication' ... is a
legal conclusion based on underlying factual determinations." Cooper
Cameron Corp. v. Kvaerner Oilfield Prods., Inc., 291 F.3d 1317, 1321 (Fed.
Cir. 2002). In determining whether a reference is a "printed publication"
within the meaning of§ 102, "the key inquiry is whether or not a reference
has been made 'publicly accessible."' In re Klopfenstein, 380 F.3d 1345,
1348 (Fed. Cir. 2004). \Ve make this factual determination by weighing the
evidence of record to ascertain whether the preponderance of the evidence
demonstrates that the publication retrieved by the Examiner was publicly
accessible to render it a printed publication.
On this record, the Examiner has not established that Bownet qualifies
as a printed publication because there is no evidence that Bov.net was
publicly accessible prior to the effective filing date of the application.
Bownet expressly discloses a copyright date of 2010, which is well after the
effective filing date. In response to Appellant's arguments, the Examiner
reasons:
On the waybackmachine print out the Bownet reference also
showed the date going back to 2004. As noted to appellant's
attorney in writing and during several phone conversation, the
2004 date is directed to archery but disclose and shows
substantially the same structure, so the archery reference could
also be used to reject the pending claims. In short, appellant has
6 The present application claims priority to Application 10/958,536 filed
October 4, 2004. Spec. Amendment 2 (filed Dec. 5, 2008). For purposes of
this appeal, we take Appellant's priority claims at face value, as we need not
resolve whether the claims of the present application are entitled to the
asserted priority date under 35 U.S.C. § 120.
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failed to provide adequate support for the claimed subject
matter, therefore, the rejection of claims over the Bownet
reference has been maintained irrespective of the reference
date.
Ans. 34. The Examiner's reasoning is flawed because relying on the public
accessibility of a different reference (directed to archery), even if some
similarities exist, cannot demonstrate that the publication at hand was
publicly accessible to render it a printed publication within the meaning of
§ 102. Because the Examiner has not established that Bownet qualifies as a
printed publication, Bownet cannot properly anticipate the claimed
invention.
Accordingly, we reverse the rejection of claims 36 and 43--48 as being
anticipated by Bownet.
CONCLUSIONS
The rejection under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement, is sustained.
The rejection under 35 U.S.C. § 112, first paragraph, as failing to
comply with the enablement requirement, is not sustained.
The rejections under 35 U.S.C. § 102(b) are not sustained.
DECISION
The decision to reject claims 36 and 43--48 is affirmed.
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
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