14638547 - (D) (P.T.A.B. Jan. 30, 2020)

William Q. Tingley et al.

Patent Trials and Appeals BoardJan 30, 2020

14638547 - (D) (P.T.A.B. Jan. 30, 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. 14/638,547 03/04/2015 William Q. Tingley III TEN001 P306B 5099 127512 7590 01/30/2020 Scutch Law, PLC 146 Monroe Center, Suite 604 Grand Rapids, MI 49503 EXAMINER NGUYEN, PHONG H ART UNIT PAPER NUMBER 3724 NOTIFICATION DATE DELIVERY MODE 01/30/2020 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): fscutch@scutchlaw.com uspto@dockettrak.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WILLIAM Q. TINGLEY III, WILLIAM Q. TINGLEY, and DANIEL R. BRADLEY Appeal 2019-002786 Application 14/638,547 Technology Center 3700 Before STEFAN STAICOVICI, CHARLES N. GREENHUT, and MICHAEL J. FITZPATRICK, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 3, and 4. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Tennine Corp. Appeal Br. 1. Appeal 2019-002786 Application 14/638,547 2 CLAIMED SUBJECT MATTER The claims are directed to a method and apparatus for non-rotary holemaking by means of controlled fracturing. Claim 4, reproduced below, is illustrative of the claimed subject matter: 4. A multi-axis holemaking machine using a method for producing a though-hole using the process of controlled fracturing, where the machine includes a base section for supporting a workpiece; a bridge section for holding at least one machine tool; and wherein the multi-axis machine creates a hole in plastic and metal materials using a non-rotary machining process comprising the steps of: fixturing a workpiece to a table of a non-rotary holemaking machine tool such that no die is used; fixturing the cutting tool to the column of the machine tool; positioning a face of the cutting tool perpendicular to a centerline of a proposed hole; approaching the surface of the workpiece with the cutting tool to a predetermined clearance level; providing an impact force of at least 20,000 lbs/sq-in to impact the location of a proposed hole in the workpiece; driving the cutting tool into the workpiece through the use of controlled fracturing by exceeding both the yield strength and the breaking strength of the workpiece material in a manner so to cause fracturing by adiabatic shear banding produced by the impact force; creating a plurality of adiabatic shear bands to emanate from the face of the cutting tool using the impact force of the cutting tool; forming connecting cracks using the plurality of adiabatic shear bands; forming a slug in the workpiece at the position of the hole using the force of the cutting tool such that a through-hole in the workpiece is formed at the position of the slug without a counterstrike, die or other counter-tool used on the opposite side of the workpiece to create the through-hole of a desired size and shape at the predetermined clearance level. Appeal 2019-002786 Application 14/638,547 3 REFERENCES CITED Name Reference Date Hekman US 4,860,419 Aug. 29, 1989 Schäfer US 5,460,026 Oct. 24, 1995 Shah US 5,666,840 Sep. 16, 1997 Julian US 5,669,866 Sep. 23, 1997 Someno US 6,581,269 B2 June 24, 2003 REJECTIONS Claims 1, 3, and 4 are rejected under 35 U.S.C. § 112(a) as failing to comply with the enablement requirement. Final Act. 2. Claims 1, 3, and 42 are rejected under 35 U.S.C. § 112(b) as being indefinite. Final Act. 3. Claims 1, 3, and 4 are rejected under 35 U.S.C. § 103 as being unpatentable over Julian, Schafer, and Someno.3 Final Act. 6. 2 In the body of the rejection under § 112(b) the Examiner includes a subheading “Claims 1, 3 and 4.” Final Act. 4. The paragraph that follows describes a problem common to claims 1, 3, and 4 and mentions all three claims by number. Final Act. 5. Thus, we understand claim 4 to be inadvertently omitted from the rejection statement. In response to this paragraph Appellant argues, “[i]f the Examiner's point is that function language makes the claims indefinite, then he has not clear made this rejection clear on the record and Appellant requests that prosecution should be reopened.” Appeal Br. 11. We do not think there was any lack of clarity and thus, lack of adequate notice, as to this particular grounds for rejecting claims 1, 3, and 4. As was done here (Final Act. 5), Examiners regularly point out the manner in which they are resolving ambiguities for the sake of practicing compact prosecution. MPEP§ 2173.06. Furthermore, issues related to the clarity of Examiner Office Actions prior to an appeal should be resolved by requesting an interview or filing a petition under 37 C.F.R. § 1.104 prior to taking the appeal. A request to reopen prosecution after filing an Appeal Brief is available under the procedures outlined in MPEP §§ 1215 and 1207. Appellant has not elected to pursue any of the available options outlined in those sections of the MPEP. 3 The Examiner withdrew reliance on Shah and Hekman. Ans. 11. Appeal 2019-002786 Application 14/638,547 4 OPINION Claims 1, 3, and 4 are indefinite for being directed to multiple statutory classes. The Examiner rejected claims 1, 3, and 4 on the grounds that “[c]laims 1, 3 and 4 are apparatus claims. While latter parts of them have the styling of a method claim, it cannot be considered both an apparatus claim and also a method claim, it must be one or the other.” Final Act. 4–5. Appellant argues this grounds of rejection as a group, for which we select claim 4, reproduced above, as representative under 37 C.F.R. § 41.37(c)(1)(iv). We select claim 4 as representative in part because claims 1 and 3 contain language making claims 1 and 3 unclear for additional reasons, discussed below, that prevent us from addressing this issue with sufficient certainty. Appellant’s argument is premised on Mastermine Software Inc. v. Microsoft Corporation, 874 F.3d 1307 (Fed. Cir. 2017). Appeal Br. 11. However, Appellant misreads Mastermine. According to Appellant, in Mastermine, “the court explained that claims directed to both a method and apparatus are not necessarily indefinite for using functional language.” This is not correct. What the court stated in this regard was, “while a claim directed to both a method and an apparatus may be indefinite, ‘apparatus claims are not necessarily indefinite for using functional language.’” Functional language is perfectly acceptable in an apparatus claim, for example, when “the functional language tells us something about the structural requirements of the [apparatus].” K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1363 (Fed. Cir. 1999). Here, rather than reciting functional language that informs the reader about the structural requirements of the claimed apparatus, claim 4 recites manipulative steps that obfuscate the Appeal 2019-002786 Application 14/638,547 5 reader regarding the requirements for infringement of the claim. The claim recites the active step that the “machine creates a hole” by “using” the recited steps. Indeed, even the first clause of the preamble is directed to “A multi-axis holemaking machine using a method.”4 Claim 4, in its present form, makes it impossible for the potential infringer to ascertain whether infringement occurs and the possibility of liability for contributory infringement “because a buyer or user of the apparatus later performs the claimed method of using the apparatus.” See IPXL Holdings v Amazon.com, 430 F.3d 1377, 1384 (Fed. Cir. 2005); MPEP § 2173.05(p)(II). Accordingly, we sustain the Examiner’s rejection of claims 1, 3, and 4 on this grounds. Additional issues related to the clarity of claims 1 and 3. We agree with the Examiner that the scope of “without pre- processing or modification” is unclear. Final Act. 3; Ans. 13. The Examiner provides examples involving workpiece setup, such as fixturing the workpiece, to question what is or is not included in the scope of the negative limitation “without pre-processing.” Final Act. 3. Appellant responds by arguing “the plain meaning of these words is clear and unambiguous.” Appeal Br. 9. Appellant describes a number of processes such as flattening and softening that clearly fall within the scope of “pre- processing.” However Appellant never addresses whether activities such as fixturing constitute pre-processing. Appellant acknowledges pre-processing 4 Claim 3 contains similar language, “A multi-axis machining apparatus utilizing a method. . .” (Emphasis added), as does the present title of the application, “Method And Apparatus For Non-Rotary Holemaking. . .” when Appellant contends all the claims are directed to apparatuses as opposed to methods. See MPEP § 606 (The title of the invention should be descriptive of the invention claimed). Appeal 2019-002786 Application 14/638,547 6 can include “otherwise prepar[ing] the material.” Appeal Br. 9. The scope of what “otherwise prepare” can cover is not readily discernable and is similar to language generally regarded as too uncertain for purposes of particularly pointing out the scope of the claimed subject matter. See, e.g., MPEP § 2173.05(d), 706.03(d) (“or the like”). We therefore sustain the rejection of claim 1 under § 112(b) on this grounds as well. We also agree with the Examiner that the language of claim 3 “without a counterstrike, die or other counter-tool used on the opposite side of the workpiece” is unclear for similar reasons as those discussed in the preceding paragraph with regard to claim 1. Final Act. 4; Ans. 15. Namely, it is unclear what is encompassed by “other counter-tool.” The Examiner questions whether a workpiece table, for example, can be regarded as a “counter-tool.” Appellant argues that “no die or other counter-tool” is permissible under the claim language Appeal Br. 11. However, Appellant does not provide any explanation of how the claim language should be construed specifically responding to the issue raised by the Examiner. It remains unclear what is encompassed by “other counter-tool.” We therefore sustain the rejection of claim 3 under § 112(b) on this ground as well. Also with regard to claim 3, it is not clear why the Examiner determines that “‘repositioning’ implies that the cutting tool is not perpendicular to the workpiece” because repositioning can include rotation or translation which, depending on the shape of the workpiece, do not preclude the cutting tool from being perpendicular after repositioning. Accordingly, we do not sustain the rejection of claim 3 under § 112(b) on this grounds. Turning back to claim 1, the Examiner considers the limitations in claim 1 requiring the table to support the workpiece without obstructing the Appeal 2019-002786 Application 14/638,547 7 hole area as contradictory. Final Act. 3–4; Ans. 14. We agree with Appellant that “[t]he table [can] support the workpiece [and] not obstruct the area where the though hole is created.” This is dependent on the configuration of the workpiece and location of the hole. The fact that Figure 3 and the disclosure might not, respectively, illustrate or describe exactly how this is achieved could, respectively, create issues under 37 C.F.R. § 1.83(a) (discussed at MPEP § 608.02(d)) and § 112(a). However, this does not present any clarity issues addressable under § 112(b). See MPEP § 2174 (Relationship between the Requirements of 35 U.S.C. § 112(a) and (b)). We therefore do not sustain the Examiner’s § 112(b) rejection of claim 1 on this grounds. We point out the following additional issues related to claims 1 and 3 for the sake of advancing any further prosecution of this Application. We note that while the Board is authorized to enter new grounds of rejection under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See MPEP § 1213.02. In claim 1, the phrase “wherein the non-rotary holemaking machine used to produce a hole in metal and plastic material without pre-processing or modification of the material” appears to be either missing language somewhere or has used an incorrect form of the verb “used.” In claim 3 the phrase, “wherein the multi-axis machining apparatus operates to adjust the non-rotary machine tool about its longitudinal axis for optimizing the force of the machine tool for producing a hole in nonmetallic material using non-rotary machining comprising the steps of” is ambiguous because it is not clear to what process “comprising the steps of” is referring back to, the “operates to adjust” process, the “optimizing” process, or the “producing a hole” process. The claim recites steps that result in a hole. Appeal 2019-002786 Application 14/638,547 8 However, the language in question only requires “operat[ing] to adjust” “for optimizing” (emphasis added) the force “for producing a hole.” If the recited steps are directed to the hole producing process, it is unclear what effect, if any, reciting specific steps associated with a hypothetical process, hypothetically optimized, has on the structure of the claimed apparatus. Enablement The Examiner rejected claims 1, 3, and 4 for failure to comply with the enablement requirement. Final Act. 2. According to the Examiner, “it appears that there is not enough information so that one skilled in the art to make use of the invention. The thickness of the workpiece is lacking. That amount of force cannot work on every thickness.” Final Act. 2; see also Ans. 12–13. The Examiner has established that some experimentation is required to practice the invention. However, the Examiner has not established that such experimentation would be undue, as is required for establishing a lack of enablement. The Examiner has not sufficiently address the various factors outlined in MPEP § 2164 and cases cited therein to demonstrate the absence of an enabling disclosure. Accordingly, we do not sustain this rejection. Obviousness We do not reach the merits of the rejections under 35 U.S.C. § 103 at this time. Before a proper review of the rejection under 35 U.S.C. § 103 can be performed, the subject matter encompassed by the claims on appeal must be reasonably understood without resort to speculation. Since claims 1, 3, and 4 fail to satisfy the requirements of the second paragraph of 35 U.S.C. § 112 we are constrained to reverse, pro forma, the rejection under Appeal 2019-002786 Application 14/638,547 9 35 U.S.C. § 103 without reaching the merits of that rejection. See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art rejection cannot be sustained if the hypothetical person of ordinary skill in the art would have to make speculative assumptions concerning the meaning of claim language.); see also In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“If no reasonably definite meaning can be ascribed to certain terms in the claim, the subject matter does not become obvious-the claim becomes indefinite.”). CONCLUSION The Examiner’s rejections under § 112(b) are AFFIRMED, but only on the grounds specifically indicated above.5 The Examiner’s rejections under §§ 112(a) and 103 are REVERSED. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 4 112(a) enablement 1, 3, 4 1, 3, 4 112(b) indefinite 1, 3, 4 1, 3, 4 103 Julian, Schafer, Someno 1, 3, 4 Overall Outcome 1, 3, 4 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). 5 “The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim, except as to any ground specifically reversed.” 37 C.F.R. § 41.50(a). Appeal 2019-002786 Application 14/638,547 10 AFFIRMED6 6 See Note 5.