FORD GLOBAL TECHNOLOGIES, LLC

Patent Trials and Appeals Board

Nov 18, 2020

14967906 - (D) (P.T.A.B. Nov. 18, 2020)

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.
14/967,906 12/14/2015 HONG QIAO 83591452 2007
28866 7590 11/18/2020
MACMILLAN, SOBANSKI & TODD, LLC - FORD
ONE MARITIME PLAZA - FIFTH FLOOR
720 WATER STREET
TOLEDO, OH 43604
EXAMINER
STERLING, AMY JO
ART UNIT PAPER NUMBER
3631
NOTIFICATION DATE DELIVERY MODE
11/18/2020 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):
MST@mstfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HONG QIAO
____________

Appeal 2020-000041
Application 14/967,906
Technology Center 3600
____________

Before HUBERT C. LORIN, NINA L. MEDLOCK, and
MATTHEW S. MEYERS, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–9 and 11–19, which are all the pending claims in
the application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the term “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Our decision references Appellant’s Appeal Brief
(“Appeal Br.,” filed June 5, 2019) and Reply Brief (“Reply Br.,” filed
September 30, 2019), and the Examiner’s Answer (“Ans.,” mailed July 30,
2019) and Non-Final Office Action (“Non-Final Act.,” mailed December 5,
2018). Appellant identifies Ford Global Technologies LLC as the real party
in interest. Appeal Br. 1.
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CLAIMED INVENTION
Appellant’s claimed invention relates to “automotive transmissions
and in particular to transmission mount assemblies for use in securing a
transmission in an automotive vehicle.” Spec. ¶ 1.
Claims 1, 11, and 17 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A transmission mount comprising:
a mount base having
a first surface with a transmission attachment point;
[and]
a second surface opposite the first surface and with
a vehicle attachment point, wherein the mount base
has first and second end portions angled towards a
middle portion of the second surface between the
first and second end portions.

Appeal Br. 16 (Claims Appendix).
REJECTIONS
Claims 1–9 and 11–19 are rejected under 35 U.S.C. § 112(b) as
indefinite for failing to particularly point out and distinctly claim the subject
matter that Appellant regards as the invention.
Claims 1–9 and 11–19 are rejected under 35 U.S.C. § 102(a)(1) as
unpatentable over Applicant Admitted Prior Art (“AAPA”).
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ANALYSIS
Indefiniteness
We are persuaded, as detailed below, that the Examiner erred in
rejecting claims 1–9 and 11–19 under 35 U.S.C. § 112(b). Appeal Br. 7–8;
see also Reply Br. 2–5.
Claim 1, reproduced above, recites a transmission mount comprising
“a first surface with a transmission attachment point” and “a second surface
opposite the first surface . . . with a vehicle attachment point.” Independent
claims 11 and 17 include substantially similar language.
In rejecting claims 1–9 and 11–19 under 35 U.S.C. § 112(b), as
indefinite, the Examiner asks, rhetorically, “[w]hen does literal infringement
occur?” Non-Final Act. 3. The Examiner asserts,“[t]he prior art as shown in
Figure 2 and the device as disclosed in Figure 3 are identical in structure.”
Id. And the Examiner opines, “[t]he intended use such as the attachment
point being for a transmission or a vehicle is indefinite because the
attachment points are structurally identical,” i.e., “[t]here is no separating
factor that makes one [attachment point] . . . vehicle[-]attaching or another
[attachment point] transmission[-]attaching and this is indefinite in an
apparatus claim.” Id.
Appellant argues, inter alia, that the claim language is not indefinite
and does not read on the prior art because “the transmission attachment
point, and the surface that it is on, [are] specifically defined, as [are] the
vehicle attachment point, and the surface that it is on.” Appeal Br. 7.
According to Appellant, “[o]ne skilled in the art would readily understand
the recitation of the different attachment points and the fact that they are on
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opposite sides of the mount base, thus these claim terms are not indefinite.”
Reply Br. 3.2
“The legal standard for definiteness is whether a claim reasonably
apprises those of skill in the art of its scope.” In re Warmerdam, 33 F.3d
1354, 1361 (Fed. Cir. 1994). The “inquiry therefore is . . . to determine
whether the claims do, in fact, set out and circumscribe a particular area with
a reasonable degree of precision and particularity.” In re Moore, 439 F.2d
1232, 1235 (CCPA 1971).
The Examiner’s position here, as best understood, is that a person of
ordinary skill in the art would not be able to determine whether or not a
device infringes claims 1–9 and 11–19 because the claimed “transmission
attachment point” and “vehicle attachment point” are identical, and, thus, a
non-infringing device would be indistinguishable from the claimed device,
i.e., whether a device infringes (or not) would depend on the (arbitrary)
orientation of the device.
The difficulty with the Examiner’s position is that it lacks evidentiary
support. Appellant has made no admission that the transmission and vehicle
attachments are structurally identical; to the contrary, Appellant has
consistently disputed any such suggestion.3 And although the Specification

2 Appellant also argues that claims 4 and 11–19 are not indefinite for the
additional reason that “claims 4 and 11–19 specifically include a
transmission that is secured to the transmission attachment point.” Appeal
Br. 8. The Examiner has not separately addressed these claims and does not
address the Appellant’s argument in the Answer. Because we reverse the
indefiniteness rejection as to all claims, we need not, and do not, consider
Appellant’s additional arguments for claims 4 and 11–19.
3 See, e.g., Appeal Br. 7 (“[T]he [E]xaminer’s blanket statement as to
‘identical in structure’ appears to be misstating the claimed subject matter,
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describes that both types of attachment points may be “bolted connections,”
we find no indication in the Specification that the transmission and vehicle
attachment points are identical.4
Citing paragraph 15 of Appellant’s Specification, the Examiner notes
in the Answer that the Specification describes the “transmission attachment
points” as “first and second” attachment points, and the “vehicle attachment
points” as “third and fourth” attachment points. Ans. 3–4. The Examiner
reasons that “[t]he numbering of the attachment points as first, second, third
and fourth shows that the attachment points are numerically within the same
group,” i.e., that the claimed transmission and vehicle attachment points are
identical. Id. at 4.5 But, we fail to see how the use of sequential numerical
identifiers in the Specification amounts to an admission by Appellant or
otherwise an indication that the claimed transmission and vehicle attachment
points are identical. The Specification clearly discloses “first and second
transmission attachment points 214 and 216,” as well as distinct “third and
fourth vehicle attachment points 218 and 220.” Spec. ¶¶ 15, 18 (emphasis
added).
We agree with Appellant that a person of skill in the art would
understand what is claimed when the claims are read in light of the
Specification, including the claim language itself, namely that the claimed
mount base has a first surface with a transmission attachment point and a

and thus is in error.”), 10 (“[T]he [E]xaminer’s argument that there is no
difference in the structure of the devices between figures 2 and 3 is in
error.”).
4 Spec. ¶¶ 15 (discussing prior art Figure 2), 18 (discussing the embodiment
of Figures 3 and 4).
5 See previous footnote.
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second surface with a vehicle attachment point. Therefore, we do not
sustain the Examiner’s rejection of claims 1–9 and 11–19 under 35 U.S.C.
§ 112(b). See Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986) (The test for definiteness under 35 U.S.C.
§ 112, second paragraph, now 35 U.S.C. § 112(b), is whether “those skilled
in the art would understand what is claimed when the claim is read in light
of the specification.”).
Anticipation
In rejecting claims 1–9 and 11–19 under 35 U.S.C. § 102(a)(1), the
Examiner cites AAPA, namely Figure 2 of the Specification, as disclosing
all the claim elements. Non-Final Act. 3–5. According to the Examiner,
“[t]he prior art device[, shown in Figure 2] is identical to the [claimed]
device in Figure 3”; i.e., “[t]he [claimed] device is just being used in an
orientation 180° rotated from the prior art device shown in use.” Id. at 4.
The Examiner’s rejection is, thus, premised on the Examiner’s finding that
“[t]he devices have the exact same shape and the attachment points are also
identical; [t]he difference is in the use” Id.
Appellant argues, inter alia, that “the [E]xaminer’s argument that
there is no difference in the structure of the devices between [F]igures 2
and 3 is in error, as these changes in the structure are relevant and
specifically do change the equivalent elastic center of the transmission
mounted in the vehicle.” Appeal Br. 10 (citing Spec. ¶ 7).
Responding to Appellant’s argument, the Examiner maintains the
position that “[t]he attachment points are no different in structure whether
they are attached to a vehicle or a transmission or any other function” and
“can be used interchangeably for both vehicles and transmissions because
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[both] the vehicle and the transmission[ ] . . . would have a corresponding
hole for a bolt.” Ans. 5. But, as described above, we find no evidence of
record to support that position.
The Specification admittedly describes that both types of attachment
points may be “bolted connections.” Spec. ¶ 15. But, we find nothing in
Specification to support the Examiner’s finding that the vehicle and
transmission attachment points are identical or interchangeable.
Because the Examiner’s rejection is premised on a finding that is not
adequately supported on the present record, we do not sustain the
Examiner’s rejection of claims 1–9 and 11–19 under 35 U.S.C. § 102(a)(1).
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–9, 11–19 112(b) Indefiniteness 1–9, 11–19
1–9, 11–19 102(a)(1) AAPA 1–9, 11–19
Overall
Outcome
1–9, 11–19
REVERSED