Ex Parte Norman

Patent Trial and Appeal Board

Aug 10, 2016

12414648 (P.T.A.B. Aug. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/414,648 0313012009
7590
Thompson E. Fehr
Goldenwest Corporate Center
Suite 300
5025 Adams A venue
Ogden, UT 84403
08/10/2016
FIRST NAMED INVENTOR
Ralph S. Norman
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.
PNORMHC 1308
EXAMINER
NGUYEN,VUQ
ART UNIT PAPER NUMBER
3657
MAILDATE DELIVERY MODE
08/10/2016 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 RALPH S. NORMAN1
Appeal2013-009485
Application 12/414,648
Technology Center 3600
Before STEFAN STAICOVICI, JAMES P. CALVE, and
AMANDA F. WIEKER, Administrative Patent Judges.
WIEKER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Ralph S. Norman ("Appellant") appeals under 35 U.S.C. § 134(a)
from the Examiner's final rejection of claims 1-32. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b ).
We REVERSE and enter a NEW GROUND OF REJECTION under
37 C.F.R. § 41.50(b).
1 According to Appellant, the inventor, Ralph S. Norman, is the Real Party
in Interest. Appeal Br. 4.
Appeal2013-009485
Application 12/414,648
CLAIMED SUBJECT MATTER
The invention concerns a fluidic stabilizer with remote control. Spec.,
Abstract. Claim 1, the sole independent claim, is illustrative of the subject
matter on appeal, and recites:
1. An improved fluidic stabilizer of the type having a
housing containing a rotatable wiper within an interior chamber
of the housing wherein the wiper has a bottom wherein the
rotatable wiper sealingly divides the interior chamber into a first
side and a second side, a circuit having an internal cross-sectional
area and connecting the first side of the interior chamber to the
second side of the interior chamber so that the first side of the
interior chamber and the second side of the interior chamber are
in fluid communication with one another, a remote control valve
located at an intermediate portion of the circuit, and an arm
connected to the wiper and available for connection to a portion
of a vehicle that remains stationary with respect to a longitudinal
axis of the vehicle when a steering mechanism of the vehicle
rotates, in order to produce relative motion between the wiper
and the housing when the housing is attached to a portion of a
vehicle that rotates with respect to a longitudinal axis of the
vehicle as part of the steering of the vehicle, wherein the
improvement comprises:
having the internal cross-sectional area for every portion
of the circuit within a range such that fluid that has been placed
in the circuit flows freely when an operator rotates the steering
mechanism, but that when the rotation of the steering mechanism
is caused by a steerable portion of the vehicle hitting an obstacle,
resistance to the flow of the fluid arises; and
a means for maintaining the cross-sectional area for every
portion of the circuit within such range.
Appeal Br. 30 (Claims App.).
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Application 12/414,648
REJECTIONS2
The claims stand rejected as follows:
I. Claims 1and6 under 35 U.S.C. § 102(e) as anticipated by
Morgan (US 6,802,519 B2, iss. Oct. 12, 2004).
II. Claims 9, 14, 17, 22, 25, and 30 under 35 U.S.C. § 103(a) as
unpatentable over Morgan.
III. Claims 2, 3, 10, 11, 18, 19, 26, and 27 under 35 U.S.C. § 103(a)
as unpatentable over Morgan and Anderfaas (US 2004/0195062
Al, pub. Oct. 7, 2004).
IV. Claims 4, 5, 12, 13, 20, 21, 28, and 29 under 35 U.S.C. § 103(a)
as unpatentable over Morgan, Anderfaas, and Gustafsson (US
4,773,514, iss. Sept. 27, 1988).
V. Claims 7, 8, 15, 16, 23, 24, 31, and 32 under 35 U.S.C. § 103(a)
as unpatentable over Morgan and Gustafsson.
ANALYSIS
Rejections of Claims 1-32 as Anticipated or Obvious over
Asserted Prior Art
Because we determine that claims 1-32 are indefinite, as discussed
below, we proforma reverse the Examiner's rejections under 35 U.S.C.
§§ 102(e) and 103(a), as any analysis of the prior art would involve a
speculative interpretation of the claims. See In re Wilson, 424 F.2d 1382,
1385 (CCPA 1970); In re Steele, 305 F.2d 859, 862---63 (CCPA 1962)
(determinations as to obviousness cannot be made for indefinite claims).
2 The Examiner withdrew the rejection of claims 1-32 under 35 U.S.C.
§ 112, second paragraph. Ans. 2.
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Application 12/414,648
New Grounds of Rejection of Claims 1-32 as Lacking Written Description
and Indefinite under 35 U.S. C. § 112, First and Second Paragraphs
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection of claims 1-32 under 35 U.S.C. § 112, first paragraph, as
lacking adequate written description, and under 35 U.S.C. § 112, second
paragraph, as indefinite. We conclude that Appellant's original disclosure
would not reasonably convey to a person of ordinary skill in the art that the
inventor had possession of the subject matter of claim 1 as of the filing date
of the application. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336,
1351 (Fed. Cir. 2010) (en bane). We also conclude that a person of ordinary
skill in the art would not understand the metes and bounds of claim 1, when
read in light of Appellant's Specification. See Miles Labs., Inc. v. Shandon,
Inc., 997 F.2d 870, 875 (Fed. Cir. 1993).
Independent claim 1 requires, inter alia, that the claimed fluidic
stabilizer includes "a means for maintaining the cross-sectional area for
every portion of the circuit within such range," wherein that "range" is
defined by claim 1 as a range "such that fluid that has been placed in the
circuit flows freely when an operator rotates the steering mechanism, but
that when the rotation of the steering mechanism is caused by a steerable
portion of the vehicle hitting an obstacle, resistance to the flow of the fluid
arises." Appeal Br. 30 (Claims App.). Appellant and the Examiner appear
to conclude, and we agree, that the phrase "means for maintaining the cross-
sectional area ... within such range" invokes 35 U.S.C. § 112, sixth
paragraph, as reciting a means-plus-function element. Appeal Br. 5; Ans. 3.
"The first step in the construction of a means-plus-function claim
element is to identify the particular claimed function. The second step in the
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Appeal2013-009485
Application 12/414,648
analysis is to look to the specification and identify the corresponding
structure for that function." Med. Instrumentation & Diagnostics Corp. v.
Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003). However, "structure
disclosed in the specification is 'corresponding' structure only if the
specification or prosecution history clearly links or associates that structure
to the function recited in the claim." B. Braun Medical, Inc. v. Abbott Labs.,
124 F.3d 1419, 1424 (Fed. Cir. 1997). "If an applicant fails to set forth an
adequate disclosure, the applicant has in effect failed to particularly point
out and distinctly claim the invention as required by the second paragraph of
[35 U.S.C. §] 112." In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir.
1994) (en bane).
35 U.S.C. § 112, First Paragraph
The function recited in claim 1 is: "maintaining the cross-sectional
area for every portion of the circuit within such range," wherein "such
range" is defined by claim 1 as a range "such that fluid that has been placed
in the circuit flows freely when an operator rotates the steering mechanism,
but that when the rotation of the steering mechanism is caused by a steerable
portion of the vehicle hitting an obstacle, resistance to the flow of the fluid
arises." Appeal Br. 30 (Claims App.). However, Appellant's originally
filed Specification does not disclose a "range" in a manner commensurate
with this claim language. Specifically, Appellant's originally filed
Specification discloses that the "range" is such that it "will permit fluid to
flow freely at high speed but that will also create the fluid pressure necessary
for effective damping." Spec. i-fi-f 11, 17, 59 (filed Mar. 30, 2009). We find
no support in Appellant's original disclosure for a range that relates in any
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Application 12/414,648
manner to rotation of the steering mechanism, whether such rotation is
caused by the operator or caused by a steerable portion of the vehicle hitting
an obstacle, as claimed.
Appellant's claims and Specification were amended during
prosecution to recite that the claimed range is "such that fluid that has been
placed in the circuit flows freely when an operator rotates the steering
mechanism, but that when the rotation of the steering mechanism is caused
by a steerable portion of the vehicle hitting an obstacle, resistance to the
flow of the fluid arises." See Amendment, 2-5 (filed May 13, 2011). In
conjunction with this amendment, Appellant submitted a Declaration of
Ralph S. Norman, the named inventor, pursuant to 37 C.F.R. § 1.132. See
Norman Deel. (filed May 13, 2011). The Norman Declaration states that the
amended language was, "on the filing date of the earliest patent application
to which the present application claims priority, well known to one of
ordinary skill in the art." Id. at 1-2.
Although the Norman Declaration purports to establish that the
claimed subject matter was known to a person of ordinary skill in the art at
the time of filing, such evidence is not sufficient to establish that the original
disclosure of the application would have "reasonably convey[ ed] to those
skilled in the art that the inventor had possession of the claimed subject
matter as of the filing date," as required by the first paragraph of 35 U.S.C.
§ 112. Ariad, 598 F.3d at 1351 (emphasis added). Indeed, many things may
have been "well known" at the time of filing, but that alone does not
establish that the original disclosure would have conveyed the possession of
those things by the inventor, at the time of filing. Therefore, we conclude
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Application 12/414,648
that independent claim 1, and claims 2-32, which depend therefrom, fail to
comply with the written description requirement of 35 U.S.C. § 112.
35 U.S.C. § 112, Second Paragraph
Because the originally filed Specification does not disclose the
claimed function of "maintaining the cross-sectional area for every portion
of the circuit within such range," wherein that "range" is "such that fluid that
has been placed in the circuit flows freely when an operator rotates the
steering mechanism, but that when the rotation of the steering mechanism is
caused by a steerable portion of the vehicle hitting an obstacle, resistance to
the flow of the fluid arises," it follows that the original Specification also
fails to "clearly link[] or associate ... structure to the function recited in the
claim," in violation of the definiteness requirement of 35 U.S.C. § 112,
second paragraph. See Braun Medical, 124 F.3d at 1424; Donaldson, 16
F.3d at 1195; see also In re Knowlton, 481F.2d1357, 1366 (CCPA 1973)
("[35 U.S.C. § 112, sixth paragraph] cannot be read as creating an exception
either to the description requirement of the first paragraph [of 35 U.S.C. §
112] ... or to the definiteness requirement found in the second paragraph of
section 112.").
Furthermore, we note that the claim language requiring the fluid
"flows freely" when the operator rotates the steering mechanism, and
requiring that "resistance to the flow of the fluid arises" when rotation is
caused by the vehicle hitting an obstacle, is also indefinite. Appellant's
Specification does not provide any workable objective standard by which a
person of ordinary skill in the art may determine whether fluid "flows
freely" or whether "resistance ... arises." Understanding the scope of this
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Application 12/414,648
language depends solely on the "unrestrained, subjective opinion of a
particular individual purportedly practicing the invention," in violation of 35
U.S.C. § 112, second paragraph. Datamize, LLC v. Plumtree Software, Inc.,
417 F.3d 1342, 1350 (Fed. Cir. 2005); Interval Licensing LLC v. AOL, Inc.,
766 F.3d 1364 (Fed. Cir. 2014). Such purely subjective terms fail to notify
the public of the right to exclude, "since the meaning of the claim language
would depend on the unpredictable vagaries of any one person's opinion"
regarding when fluid "flows freely" or when "resistance ... arises."
Datamize, 417 F.3d at 1350.
Finally, we note also that the Norman Declaration submitted during
prosecution states that the claim language describing the "range" was well
known at the time of filing. Norman Deel. 1-2. However, this language is
recited as part of "the improvement" of claim 1, which is written in Jepson-
type format. Appeal Br. 30 (Claims App.). The claimed range cannot be
both "well known" and an "improvement" over the prior art. See MPEP
§§ 608.0l(m); 37 C.F.R. § 1.75(e) ("[I]n the case of an improvement, any
independent claim should contain in the following order: (1) A preamble
comprising a general description of all the elements or steps of the claimed
combination which are conventional or known, (2) A phrase such as
'wherein the improvement comprises,' and (3) Those elements, steps, and/or
relationships which constitute that portion of the claimed combination which
the applicant considers as the new or improved portion.").
Accordingly, for all of these reasons, we conclude that claim 1, and
claims 2-32 which depend therefrom, are indefinite under 35 U.S.C. § 112,
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Application 12/414,648
second paragraph, as failing to particularly point out and distinctly claim
Appellant's invention.
DECISION
The Examiner's rejections of claims 1-32 are REVERSED.
We enter NEW GROUNDS OF REJECTION for claims 1-32 under
35 U.S.C. § 112, first and second paragraphs.
This decision contains new grounds 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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Application 12/414,648
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.
REVERSED; 37 C.F.R. § 41.50(b)
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