Ex Parte Trempala

Patent Trial and Appeal Board

Oct 30, 2013

11564201 (P.T.A.B. Oct. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DOHN J. TREMPALA
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Appeal 2011-013022
Application 11/564,201
Technology Center 3600
____________

Before STEFAN STAICOVICI, JEREMY M. PLENZLER, and
FRANCES L. IPPOLITO, Administrative Patent Judges.

IPPOLITO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1 and 2. Claims 3-14 have been allowed by the
Examiner. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
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CLAIMED SUBJECT MATTER
Claims 1 and 2 are the independent claims on appeal. Claims 1 and 2
recite, respectively:
1. A protective cover plate for a stortz connection of
a piping system, said cover plate comprising a front plate, a
stortz fitting extending rearward from said front plate, and a
sliding plate locking mechanism being disposed rearward of
said front plate and being adapted to engage a concealed portion
of said piping system when said cover plate is assembled to said
piping system, the sliding plate locking mechanism comprising
a sliding plate, said sliding plate moving in a first direction
when driven by rotation of an input member in a first direction
and said sliding plate moving in a second direction when driven
by rotation of the input member in a second direction, wherein
the sliding plate locking mechanism is configured to allow lost
motion between rotation of the input member and movement of
the sliding plate.

2. A method of installing a cover plate to a piping
system having a stortz fitting, said method comprising inserting
said cover plate into said stortz fitting, rotating said cover plate
to secure said cover plate to said stortz fitting, turning a cam
plate, translating a latch bar, indicating a movement of said
latch bar, and loading an actuator assembly with a tamper-
resistant torsion load after the latch bar is translated.

REJECTIONS
Claims 1 and 2 are rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite.
Claims 1 and 2 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Stehling (US 4,602,654, iss. Jul. 29, 1986) and Jones (US 4,100,629,
iss. Jul. 18, 1978).
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ANALYSIS
The rejection of claims 1 and 2 as indefinite
Claim 1
For claim 1, the Examiner found that “it is unclear how the
mechanism is configured to ‘allow lost motion’ since the claim does not
recite the arrangement of elements which would allow said lost motion in
excess of the inherent lost motion provided by manufacturing tolerances, i.e.
the elongate slot and pin arrangement (100/64).” (Ans. 4).
The Appellant contends that the Examiner appears to be objecting to
the breadth of the claim in seeking to have structural limitations added,
rather than objecting to the clarity or precision of the claims. (App. Br. 12).
Additionally, the Appellant argues that the Specification clearly describes
“lost motion” such that one of ordinary skill in the art would find the term
clear and definite. (App. Br. 13).
We agree with the Appellant that the Examiner appears to require that
the claim specify exactly what structure(s) of the sliding plate locking
mechanism allows the lost motion. However, not specifying the structural
component/element makes the claim merely broad, not indefinite. See In re
Johnson, 558 F.2d 1008, 1016 n.17 (CCPA 1977) (breadth is not
indefiniteness). That is to say, the claim clearly recites that “lost motion”
occurs “between rotation of the input member and movement of the sliding
plate;” no further detail is necessary to know the metes and bounds of the
claim. We also agree with the Appellant that Appellant’s Specification
describes at least two variations of a sliding plate locking mechanism
configured to allow “lost motion” such that one of ordinary skill in the art
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would understand what is claimed when read in light of the Specification.
(See Spec., paras. [0040], [0048]).
In view of the above, we do not sustain the §112, second paragraph,
rejection of claim 1.

Claim 2
The Examiner found claim 2 unclear in how the actuator is loaded
with a torsion load because the claim fails to recite the structural elements or
disposition of elements which would provide the tamper-resistant torsion
load in the intended manner. (Ans. 5).
The Appellant contends once more that the Examiner is objecting to
claim breadth rather than clarity or precision of claims in seeking to have
structural limitations added. (App. Br. 12). Moreover, the Appellant argues
that the term “tamper-resistant torsion load” is definite in light of the
Specification, which teaches the compression of a biasing member 77 to
increase friction loads and torsion loads on the drive bolt 70 to make it
harder to rotate the drive bolt 70 during unauthorized removal of the cover
plate. (App. Br. 14).
The Examiner responds that the Appellant mischaracterizes the
biasing member 77 as tamper-resistant because “while making it harder to
rotate the bolt 70….[it does] not prevent tampering with the bolt or the
assembly.” (Ans. 9).
We cannot agree with the Examiner that claim 2 (a method claim) is
indefinite without additional structural limitations. Rather, the omission of
additional structural components performing the step of “loading an actuator
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assembly with a tamper-resistant torsion load after the latch bar is
translated” merely makes the claim broad, and not indefinite.
Furthermore, as the Appellant explained, the Specification teaches
that the tamper-resistant torsion load “does not prevent anything from
turning. Rather, providing the torsion load makes it harder to turn…….”
(Reply Br. 4-5). The Examiner’s reading of “tamper-resistant torsion load”
as preventing rotation of the bolt (Ans. 9) is inconsistent with the
Specification, and, more importantly, does not persuade us that claim 2 as
written does not define the metes and bounds of the claimed invention such
that those skilled in the art would understand what is claimed when the claim
is read in light of the specification.
Thus, the rejection of claim 2 as indefinite is not sustained.

The rejections of claims 1 and 2 as unpatentable over Stehling and Jones
Claim 1
The Examiner found Stehling teaches a protective cover plate for a
stortz connection including a front plate 31 and a stortz fitting extending
from the front plate 45, 46. (Ans. 5). The Examiner did not find Stehling to
teach the claimed locking mechanism for the cover plate, but relied on the
Jones drain plug to teach:
a locking mechanism comprising a sliding plate/latch bar
locking mechanism 66 disposed rearward of the front plate 60
and adapted to engage a concealed portion 56 of a piping
system 52 (see Fig.2), the sliding plate/latch bar 66 moving in a
first direction when driven by rotation of an input member 102
in a first direction and moving in a second direction when
driven by rotation of the input member in a second direction.
Jones further teaches a cam plate 82 actuated by the input
member 102 to move the sliding plate/latch bar 66 and a spring
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assembly 40 which provides a torsion load between the actuator
assembly elements 32,38.

(Ans. 5-6). The Examiner further found that “due to manufacturing
tolerances, all assemblies will have some lost motion between the elements,
thus, the arrangement between the input member 102, cam plate 82 and the
sliding latch bars 66 will necessarily have some lost motion.” (Ans. 6).
To start, the Appellant contends that the Examiner’s interpretation of
“lost motion” as including “inherent manufacturing tolerances” is
unreasonably broad and inconsistent with the Specification because the
Specification describes “lost motion” as the rotational movement of the
drive bolt 70 that does not move the latch bar 72. (App. Br. 13). The
Appellant points to the Specification’s described rotation of the drive bolt 70
during the period when the cam plate 74 is not sufficiently translated in an
axial direction to engage the cam driver 78 between the cam plate and cam
driver. (App. Br. 13). Appellant argues that rotation of the drive bolt 70
during this period is lost motion in that it does not result in movement of the
latch bar 72. (App. Br. 13) (referring to Spec., paras. [0039], [0040],
[0048]). Additionally, the Appellant asserts that the Specification is
consistent with the well-known meaning of “lost motion,” which is “the
delay between the movement of a driver and the movement of a follower.”
(Reply Br. 3). Given this meaning of “lost motion,” the Appellant argues
that Jones does not disclose the recited “lost motion” between the rotation of
tool 102 and control shaft 82 or between rotation of the tool 102 and
translation of locking ears 66. (App. Br. 16).
We agree with the Appellant that the Examiner’s interpretation of
“lost motion” is inconsistent with the Specification and the ordinary
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meaning of “lost motion.” Although the Appellant’s Specification does not
provide a definition and Appellant does not cite to a source for the well-
known definition of “lost motion,” we find that the ordinary and customary
meaning of “lost motion” is “the lag between the motion of a driver and that
of a follower in a mechanism due to yielding or looseness.”1 This is
consistent with the Specification’s teaching that lost motion can exist
between: (1) the rotation of the drive bolt and movement of the latch bar;
and (2) the movement of pin 96 and that of the latch bar 72. (Spec., paras.
[0040], [0048]).
As such, we find the Examiner’s interpretation of “lost motion” as
“motion from manufacturing tolerances” unreasonably broad as this
interpretation is inconsistent with “lost motion” as described in the
Specification. Therefore, in a first instance, we agree with the Appellant that
Stehling fails to disclose “lost motion,” as called for by claim 1.
In the alternative, the Examiner finds that Jones discloses lost motion
between the input member 102, cam 82, and latch members 66. (Ans. 9).
However, the Examiner has not explained how the input member, cam, latch
members, or any other structure in Jones produces lost motion, as called for
by claim 1. Thus, the Examiner has not made the initial factual findings
required to demonstrate a prima facie case of obviousness of claim 1. See In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (the examiner has the initial
duty of supplying the requisite factual basis and may not, because of doubts
that the invention is patentable, resort to speculation, unfounded

1 WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY, found at
http://lionreference.chadwyck.com/searchFulltext.do?id=20266847&idType
=offset&divLevel=2&queryId=../session/1382377663_10486&area=mwd&f
orward=refshelf&trail=refshelf (last visited Oct. 21, 2013).
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assumptions, or hindsight reconstruction to supply deficiencies in the factual
basis).
In conclusion, for the foregoing reasons, we do not sustain the
rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over Stehling
and Jones.

Claim 2
The Examiner found that Stehling discloses the claimed method
except for providing a locking mechanism for the cover plate. (Ans. 6). The
Examiner relies on Jones for the locking mechanism having a sliding
plate/latch bar locking mechanism 66. (Ans. 7). In particular, the Examiner
found that Jones teaches a cam plate 82 actuated by the input member 102 to
move the sliding plate/latch bar 66 and a spring assembly 40 which provides
a torsion load between the actuator assembly elements 32, 38 during
unlocking. (Ans. 7). The Examiner further found that the torsion load
created by the spring during unlocking is tamper-resistant because the spring
is encased in the actuator. (Ans. 9).
The Appellant argues that the tamper-resistant torsion load is not
taught by Jones as the reference does not disclose applying a tamper-
resistant load after translation of the latch bar. (App. Br. 17). The Appellant
explains that the spring 40 relaxes and unloads in order to be installed into
the drain plug. (App. Br. 18). Moreover, Appellant contends that the spring
is compressed when the drain plug is in the unlocked configuration. (App.
Br. 18) (emphasis added). Essentially, the Appellant is arguing that neither
the relaxation of the spring during locking or the compression of the spring
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during unlocking teaches the step of loading of a tamper-resistant torsion
load after the latch bar is translated.
We agree with the Appellant. In construing “tamper-resistant torsion
load,” the Examiner separately interpreted “tamper-resistant” from “torsion
load.” The Examiner found that the actuator casing around the spring
member makes the spring 40 “tamper-resistant” and that the spring 40
creates a torsion load. (Ans. 7). Based on this, the Examiner concluded that
the torsion load created by spring 40 is therefore tamper-resistant. (Ans. 9-
10). However, claim 2 requires a “tamper-resistant torsion load” and not a
a tamper-resistant structure that happens to be loaded. As the Appellant
explained, the phrase “tamper-resistant torsion load” is described in the
Specification as “loading… sufficient to reduce the likelihood of
unauthorized removal [of the cover plate].” (App. Br. 13-14) (citing Spec.,
para. [0048]). The Examiner’s interpretation of “tamper-resistant load” as
merely an encased structure that happens to be loaded divorces the term
“tamper-resistant” from the term “torsion load” and does not encompass a
reasonable interpretation of the phrase “tamper-resistant torsion load” in
light of the Specification, which describes the torsion load as tamper-
resistant and not the structure as tamper-resistant, as the Examiner proposes.
Since the Examiner has not articulated a sound basis for the belief that the
torsion load of the spring 40 (rather than the spring itself) is tamper-resistant
(e.g., loading sufficient to reduce the likelihood of removal of the cover
plate), the Examiner has not shown by a preponderance of the evidence that
unlocking the Jones drain plug teaches the step of loading an actuator
assembly with a tamper-resistant torsion load after the latch bar is translated.
(See Ans. 7).
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For these reasons, we do not sustain the rejection of claim 2 as
unpatentable over Stehling and Jones.

DECISION
We REVERSE the rejections of claims 1 and 2 under 35 U.S.C.
§ 112, second paragraph, as being indefinite.
We REVERSE the rejections of claims 1 and 2 under 35 U.S.C.
§ 103(a) as unpatentable over Stehling and Jones.

REVERSED

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