Ex Parte Sprague et al

Patent Trial and Appeal Board

Oct 6, 2017

13106420 (P.T.A.B. Oct. 6, 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.
13/106,420 05/12/2011 Robin D. Sprague 24NS247869 5220
33727 7590 10/11/2017
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 8910
RESTON, VA 20195
EXAMINER
WASIL, DANIEL D
ART UNIT PAPER NUMBER
3646
NOTIFICATION DATE DELIVERY MODE
10/11/2017 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):
dcmailroom@hdp.com
pshaddin@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBIN D. SPRAGUE, BRUCE J. LENTNER,
EMANUEL KLEIN, DAVID B. DRENDEL, and
BRET E. NELSON
Appeal 2016-002924
Application 13/106,420
Technology Center 3600
Before JENNIFER D. BAHR, WILLIAM A. CAPP, and
BRANDON J. WARNER, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 seek our review under 35 U.S.C. § 134 of the Final
Rejection of claims 1—10 and 21. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 Appellants identify General Electric Company as the real party in interest.
Appeal Br. 1.
Appeal 2016-002924
Application 13/106,420
THE INVENTION
Appellants’ invention relates to pipe clamp assemblies used in nuclear
power reactors. Spec. 11. Claim 1, reproduced below, is illustrative of the
subject matter on appeal.
1. A Boiling Water Reactor (BWR) jet pump inlet mixer
compliant stop, comprising:
a main body with a first longitudinal length in a first
direction, the main body including opposing front and rear
surfaces running along the first longitudinal length of the main
body;
a foot extending longitudinally along the rear surface of the
main body;
a spring attached to the main body and projecting beyond
the front surface of the main body in a second direction that is
about perpendicular to the first longitudinal length of the main
body; and
at least one jacking bolt connecting the main body to the
foot, a second longitudinal length of the at least one jacking
bolt being about parallel to the second direction, wherein the at
least one jacking bolt is configured to be tightened to compress
the spring to cause the spring to impart a controlled lateral force
in the second direction during installation of the compliant stop
between two stationary opposing surfaces.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Baversten US 2010/0098206 A1 Apr. 22,2010
Matsumoto US 8,210,491 B2 July 3,2012
Jensen US 8,548,114 B2 Oct. 1,2013
The following rejections are before us for review:
1. Claims 1 and 2 are rejected under 35 U.S.C. § 102(b) as anticipated
by Baversten.
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Application 13/106,420
2. Claims 1 and 2 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Baversten and Matsumoto.
3. Claim 10 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Baversten, Matsumoto, and Jensen.
4. Claims 3—9 and 21 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the applicant regards as the
invention.
OPINION
Anticipation by Baversten
Claim 1
The Examiner finds that Baversten discloses all of the limitations of
claim 1. Final Action 2—A. The Examiner provides an annotated version of
Baversten, Figure 2, a copy of which is reproduced below. Id. at 3.
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Application 13/106,420
The Examiner’s annotated figure is a partial reproduction of Baversten
Figure 2 that includes labels identifying structure that the Examiner finds
corresponds to Appellants’ claimed “main body,” main body front and rear
surfaces, foot, spring, and bolt. Id. at 3. The Examiner also furnishes
arrows indicating directions that purportedly correspond to Appellants’
claimed first and second directions. Id.
In traversing the rejection, Appellants argue, among other things, that
Baversten’s screw 24 is not configured to compress the spring when
tightened to cause the spring to impart a controlled lateral force in the
claimed “second direction,” as is required of the claimed jacking bolt.
Appeal Br. 7—11. In response, the Examiner provides an illustration that
purportedly shows how tightening screw 24 will cause the spring to “rise
upward” so that the spring is capable of exerting a lateral force in the
claimed “second” direction. Ans. 9.
To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either expressly or inherently. Blue
Calypso, LLCv. Groupon, Inc., 815 F.3d 1331, 1341 (Fed. Cir. 2016).
However, disclosure of each element is not quite enough, as anticipation also
requires the presence in a single prior art disclosure of all the elements
“arranged as in the claim.” Finisar Corp. v. Direct Group, Inc., 523 F.3d
1323, 1334 (Fed. Cir. 2008).
Claim 1 contains two directional limitations, namely, a “first
direction” and a “second direction.” Claims App. The second direction is
“about perpendicular” to the first direction. Id. In claim 1, the spring
projects beyond the front surface of the main body in the “second direction.”
Id. The claimed jacking bolts have a longitudinal length that extends “about
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Application 13/106,420
parallel” to the second direction. Id. Tightening the bolts compresses the
spring to impart a lateral force in the second direction. Id. In other words,
the spring is compressed in the same direction as the longitudinal length of
the jacking bolts.
For purposes of discussion, we will adopt the Examiner’s finding
regarding the purported “first direction” of Baversten, which is identified
and illustrated in the Final Action at page 3. The Examiner’s first direction
is labeled as the “direction of first longitudinal length” in the annotated
figure. Id. For discussion purposes, we will refer to this direction as the “x-
axis.” Baversten, at Figure 2, shows thermal sleeve 9 with an axis 15
(hereinafter “y-axis”) and riser pipe 12 with an axis 16 (hereinafter “z-
axis”). Id. Axis 15 (y-axis) and axis 16 (z-axis) are essentially
perpendicular to the x-axis as well as to each other.2 Id. Screws 24 are
arranged essentially parallel to axis 16 (z-axis) of riser pipe 12. Id. 140. In
the Examiner’s rejection, the “second direction” is along axis 16 (z-axis).
As shown in Figure 2 of Baversten, thermal sleeve 9 is encircled by
sleeve clamp 37. Id. Sleeve clamp 37 is comprised of lower sleeve clamp
part 22 and upper sleeve clamp part 23. Id. 140. The Examiner finds that
upper sleeve clamp part 23 corresponds to the “main body” of claim 1. Final
Action 3.
Baversten’s spring 28 is disposed between upper sleeve clamp part 23
and spring support 29. Baversten 141, Figs. 2, 3. Spring 28 is disposed in a
curved recess with a horizontal flat ledge in spring support 29. Id. The
height of spring 28 corresponds to the height of the curved recess above the
2 Because the three defined axes are perpendicular to each other, they define
a three-dimensional Cartesian coordinate system.
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Application 13/106,420
horizontal flat ledge. Id. Fig 2. Spring support 29 is sized and shaped to
cooperate with clamp part 23 in holding spring 28 in an operable position.
Id. We infer from the depictions of spring 28, clamp part 23, and spring
support 29, in Figures 2 and 3, that the side of clamp part 23 facing spring
support 29 also has a curved recess with a flat horizontal ledge that is
essentially a mirror image to the recess in spring support 29. Spring 28, as
shown in Figures 2 and 3, does not project beyond the front surface of
clamp 23 in a direction that is essentially perpendicular to the front surface
of claim 23, or, in other words, along the z-axis. See Baversten, Figs. 2, 3.
According to Baversten, spring 28 is fixed in relation to clamp
arms 27 and upper sleeve clamp part 23 and applies a force on elbow 11
towards thermal sleeve 9. Id. Thus, spring 28 supplies a biasing force
between the facing and opposing surfaces of clamp 23 and spring
support 29. Id. 141. The direction of this force is essentially perpendicular
to the side surface of clamp 23, rather than the front or rear surfaces. Id.
Stated differently, the direction of the biasing force of spring 28 is along the
y-axis, not the z-axis. Id.
Baversten’s screws 24, which the Examiner finds correspond to the
jacking bolts of claim 1, “are arranged essentially parallel to the length
axis 16 of the riser pipe 12” or, in other words, in the direction of the z-axis.
Id. 140. Screws 24 are used to fasten lower sleeve clamp part 22 to upper
sleeve clamp part 23. Id. As such, they have a length that runs parallel to
the z-axis running perpendicular, not parallel, to the direction of the biasing
force exerted by spring 28. Id. Thus, when tightened, they exert a force
parallel to the z-axis, not the y-axis. We have reviewed and considered the
Examiner’s analysis on page 8 and 9 of the Answer, which purports to
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Application 13/106,420
explain how spring 28 can exert a biasing force in a direction parallel to the
z-axis, essentially perpendicular to the y-axis direction we described in the
preceding paragraph. Even if we were to agree with the Examiner that
spring 28 might be capable of undergoing the movement attributed by the
Examiner, we are not persuaded that such could be accomplished by
tightening screws 24. Tightening screws 24 merely holds the pieces of
sleeve clamp 37 (lower part 22 and upper part 23) together. Such tightening
does not compress spring 28 in any direction. Thus, the limitation in claim 1
directed to a jacking bolt that is configured to be tightened to compress the
spring is not satisfied by Baversten and the Examiner’s finding to the
contrary is in error.
Accordingly, we do not sustain the Examiner’s anticipation rejection
of claim 1.
Claim 2
Claim 2 depends from claim 1. Claims App. The anticipation
rejection of claim 2 hereof suffers from the same infirmity that we have
identified with respect to claim 1 above. We do not sustain the anticipation
rejection of claim 2.
Unpatentability of Claims 1 and 2
over Baversten and Matsumoto
In this ground of rejection, the Examiner combines Matsumoto and
Baversten. Final Action 4 (incorporating by reference the March 5, 2015,
Non-Final Office Action). The Examiner relies on Matsumoto as teaching a
jacking bolt, which the Examiner substitutes for Baversten’s screws 24.
March 5 Office Action, 5.
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The Examiner’s unpatentability rejection of claims 1 and 2 suffers
from the same infirmity that we have identified with respect to the
anticipation ground of rejection of these same claims, discussed
hereinabove. This infirmity is not cured by the Examiner’s findings of fact
with respect to Matsumoto as a secondary reference. In view of the
foregoing, we do not sustain the unpatentability rejection of claims 1 and 2.
Unpatentability of Claim 10
over Baversten, Matsumoto, and Jensen
Claim 10 depends from claim 2 and adds a limitation directed to the
material used to make the spring. Claims App. The Examiner relies on
Jensen as meeting this limitation. Final Action 5 (incorporating by reference
the March 5, 2015 Non-Final Office Action). The Examiner’s
unpatentability rejection of claim 10 suffers from the same infirmity that we
have identified with respect to the anticipation ground of rejection of these
same claims, discussed hereinabove. This infirmity is not cured by the
Examiner’s findings of fact with respect to Jensen. See March 5 Office
Action, 6. Thus, we do not sustain the unpatentability rejection of claim 10.
Indefiniteness of Claims 3—9 and 21
Claim 3 depends from claim 2 and recites, with emphasis and
paragraph indentation added, as follows:
3. The compliant stop of claim 2, wherein
a front surface of the foot defines a first and second jacking
bolt retention hole configured to retain a distal end of a jacking
bolt, and
a first and second threaded hole in the main body, each
threaded hole configured to engage threads on each jacking bolt
to cause the main body to separate from the foot as the jacking
bolts are tightened.
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Claims App. The rest of the claims subject to this rejection depend, directly
or indirectly, from claim 3. See id. The Examiner considers the italicized
language unclear. Final Action 2. According to the Examiner, a “hole” is
just an empty space that is devoid of solid manner and empty space cannot
retain a bolt. Id.
By way of clarification, Appellants argue that the retention holes
retain the jacking bolts by preventing the jacking bolts from sliding along
the front surface of foot 23, especially while a torque force is applied to the
jacking bolts during installation. Appeal Br. 6. In response, the Examiner
reiterates that a “hole” is an empty space devoid of solid matter. Ans. 3.
The Examiner states that Appellants failed to clearly set forth a special
definition of hole in the Specification that differs from its plain and ordinary
meaning. Id.
The test for definiteness under 35 U.S.C. § 112, is whether “those
skilled in the art would understand what is claimed when the claim is read in
light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc.,
806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted).
Appellants’ Specification teaches that
jacking bolt retention holes 24g may be provided in a front
surface of foot 24 (the surface of the foot facing the main
body 22) to allow jacking bolts 30 (shown in FIG. 6A) to freely
rotate within foot 24 (bolt keeper 42, shown in FIG. 6A, may be
provided simply to retain a distal end of each jacking bolt 30).
Spec. 151. In addition, jacking bolt retention holes 24g are illustrated in
Figures 11A and 15 of Appellants’ disclosure. The size and shape of the
holes are defined by the structure that outlines the periphery of the holes in
the drawings. Given these disclosures, it is not necessary for Appellants to
set forth a special definition of “hole” as argued by the Examiner. Ans. 3.
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“Even when guidance is not provided in explicit definitional format, the
specification may define claim terms by implication such that the meaning
may be found in or ascertained by a reading of the patent documents.”
Irdeto Access, Inc. v. EchoStar Satellite Corp., 383 F.3d 1295, 1300 (Fed.
Cir. 2004) (citation omitted). A person of ordinary skill in the art, having
read the claims in light of Appellants’ Specification and drawings would
understand that “hole” does not merely refer to empty space, but also to
physical structure that defines the periphery of the hole.
Accordingly, we do not sustain the Examiner’s indefmiteness
rejection of claims 3—9 and 21.
DECISION
The decision of the Examiner to reject claims 1—10 and 21 is
REVERSED.
REVERSED
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