AMERICAN STERILIZER COMPANY

Patent Trials and Appeals BoardAug 26, 2021

2020005636 (P.T.A.B. Aug. 26, 2021)

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. 15/914,512 03/07/2018 Lance Clark BELLOWS ST11673US 4901 22203 7590 08/26/2021 KUSNER & JAFFE Paragon Center II 6150 Parkland Boulevard Suite 105 Mayfield Heights, OH 44124 EXAMINER COLEY, ZADE JAMES ART UNIT PAPER NUMBER 3775 NOTIFICATION DATE DELIVERY MODE 08/26/2021 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): mail@kusnerjaffe.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LANCE CLARK BELLOWS and DAMON JURKIEWICZ Appeal 2020-005636 Application 15/914,512 Technology Center 3700 Before JENNIFER D. BAHR, CHARLES N. GREENHUT, and MICHELLE R. OSINSKI, 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 and 7–13. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as American Sterilizer Company. Appeal Br. 2. Appeal 2020-005636 Application 15/914,512 2 CLAIMED SUBJECT MATTER The claims are directed to an aerodynamically shaped surgical lighting suspension. Spec. para. 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A support arm for supporting a surgical light head, comprised of: an elongated, tubular extrusion having an inverted, generally tear-drop shaped cross-section, said cross-section having an outer surface that is symmetrical about a vertical axis, said outer surface comprised of an arcuate top surface section having a surface radius RT, an arcuate bottom surface section having a surface radius RB, and opposing side surface sections, each side surface section defining a section of an airfoil wherein said radius RB of said bottom surface section is less than half said radius RT of said top surface section, and wherein the ends of bottom surface section intersect the end of said side surface sections tangent to said ends of said side surface sections to form a continuous smooth profile. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Abri US 2012/0267499 Al Oct. 25, 2012 Lyatkher US 2018/0245569 Al Aug. 30, 2018 Mangiardi US 2008/0192483 Al Aug. 14, 2008 REJECTIONS Claims 1 and 8–12 are rejected under 35 U.S.C. § 103 as being unpatentable over Abri and Lyatkher. Final Act. 4, 6. Claims 7 and 13 are rejected under 35 U.S.C. § 103 as being unpatentable over Abri and Lyatkher, in view of Mangiardi. Appeal 2020-005636 Application 15/914,512 3 OPINION It is undisputed that Abri discloses the subject matter of independent claims 1 and 8 with the exception of: in claim 1: “an arcuate bottom surface section,” and by virtue of not having “an arcuate bottom surface section,” an arcuate bottom surface section having a “radius RB of said bottom surface section [being] less than half said radius RT of said top surface section”; and “the ends of the bottom surface section intersect the end of said side surface sections tangent to said ends of said side surface sections to form a continuous smooth profile”; and in claim 8: “said trailing edge of said airfoil shape having a round contour.” Final Act. 4, 6. For both claims 1 and 8 the Examiner cites Lyatkher to account for these deficiencies. Final Act. 5, 6–7. On page 6 of the Final Action, from which this appeal was taken, the Examiner provides an annotated version of Figure 4 of Lyatkher. The Examiner’s annotations indicate that the Examiner regards the rightmost tip of the airfoil in that figure as the “intersection of side surfaces with the bottom surface section.” Final Act. 6. It is not apparent and the Examiner does not explain how the combination of side surface sections and the bottom surface section are, in Figure 4 of Lyatkher, arranged to “form a continuous smooth profile.” Reply Br. 2. The only way the Examiner addresses this language in the Final Action is to say “see the diagram below.” Final Act. 5. Appeal 2020-005636 Application 15/914,512 4 A rejection must be set forth in sufficiently articulate and informative manner as to meet the notice requirement of § 132, such as by identifying where or how each limitation of the rejected claims is met by the prior art references. In re Jung, 637 F. 3d 1356, 1363 (Fed. Cir. 2011). “The pertinence of each reference, if not apparent, must be clearly explained.” 37 C.F.R. § 1.104(c)(2). This has not been done with respect to claim 1 and we will not speculate as to the basis for rejecting claims on appeal. In re Stepan, 660 F. 3d 1341, 1345 (Fed. Cir. 2011) (It is the PTO’s obligation to provide timely notice to an appellant of all matters of fact and law asserted.). Accordingly, we do not sustain the Examiner’s rejection of claim 1 and of claim 7 depending therefrom. Turning to claim 8, the Examiner explains, again referencing an annotated version of Figure 4 of Lyatkher: As shown below and in the Final Rejection, the trailing end is defined as the rounded end. Under broadest reasonable interpretation, either end could be the leading end or the trailing end since they are not referenced to anything in particular. Someone standing below the support arm would see the leading end as being the end closest to them, so the rounded upper end would be the trailing end. Ans. 4–5. Although the PTO must give claims their broadest reasonable interpretation, this interpretation must be consistent with the one that those skilled in the art would reach. In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999). The entirety of the evidence of record presently before us, including Appellant’s Specification (para. 22), and several excerpts from Wikipedia reproduced by Appellant (Reply Br. 5–7) suggests that the skilled artisan would understand the “trailing edge” of an airfoil to be that where the airflow initially separated by the leading edge meets again. Reply Br. 6 Appeal 2020-005636 Application 15/914,512 5 (citing https://en.wikigedia.org/wiki/Trailing edge). The Examiner does not present any evidence to support the Examiner’s position that a skilled artisan would understand the region regarded as a trailing edge of an airfoil to be based on which end is furthest from them as an observer. See Ans. 4. Accordingly, the rejection of claim 8 being predicated on an unreasonable claim construction, we cannot sustain the Examiner’s rejection of claim 8 or the rejections of those claims depending therefrom. CONCLUSION The Examiner’s rejections are reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 8–12 103 Abri, Lyatkher 1, 8–12 7, 13 103 Abri, Lyatkher, Mangiardi 7, 13 Overall Outcome 1, 7–13 REVERSED