Ex Parte Asbery et al

Patent Trial and Appeal Board

Dec 14, 2017

13841690 (P.T.A.B. Dec. 14, 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.
13/841,690 03/15/2013 Eric Asbery 127.1016 5650
35236 7590 12/18/2017
The r’lilhertsnn (Trotm P P
EXAMINER
2210 Western Trails Blvd., Unit 104
Austin, TX 78745
PRONE, JASON D
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
12/18/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC ASBERY and GILBERT GUTIERREZ
Appeal 2016-008189
Application 13/841,690
Technology Center 3700
Before JENNIFER D. BAHR, DANIEL S. SONG, and
FREDERICK C. LANEY, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Eric Asbery and Gilbert Gutierrez (Appellants)1 appeal under
35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1—16. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 The Appeal Brief (Jan. 19, 2016) [hereinafter “Appeal Br.”] identifies
Equalizer Industries, Inc. as the real party in interest. Appeal Br. 3.
Appeal 2016-008189
Application 13/841,690
THE CLAIMED SUBJECT MATTER
Claims 1 and 9 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter.
1. An apparatus for placing a sealant cutting wire through a
sealant material, the apparatus including:
(a) an elongated tool body having a handle end and a non­
tubular sealant piercing end opposite the handle end;
(b) a pulling element carrier structure located at the sealant
piercing end of the elongated tool body, the pulling element
carrier structure including a recess and at least one
piercing element having a configuration to pierce a sealant
material as a sealant piercing force is applied axially along
the elongated tool body in the direction from the handle end
to the sealant piercing end; and
(c) an elongated pulling element connected to the elongated
tool body at a location spaced apart from the sealant
piercing end of the elongated tool body and having a
pulling loop which is adapted to be movable between an
insertion position and a pulling position relative to the
pulling element carrier structure, a portion of the pulling
loop (i) being received in the recess when the pulling loop
is in the insertion position and (ii) being adapted to extend
beyond the recess at least an operational distance in the
direction from the handle end of the elongated tool body to
the sealant piercing end when the pulling loop is in the
pulling position.
REJECTIONS
I. Claims 1—16 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.2
2 In the Answer (June 28, 2016) [hereinafter “Ans.”], the Examiner
withdraws some of the indefmiteness rejections set forth in the Final Action
(Aug. 19, 2015). Ans. 4—6. The Examiner restates the indefmiteness
rejections that are maintained. Id. at 2—3.
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Application 13/841,690
II. Claims 1, 2, 9, and 10 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement.
DISCUSSION
Indefiniteness
The Examiner considers claims 1 and 9 to be indefinite because
“[tjhere is insufficient antecedent basis ... in the claim[s]” for “the
direction.” Ans. 3. The limitation in question is directed to a force “applied
axially along the elongated tool body in the direction from the handle end to
the sealant piercing end.” Appeal Br. 15, 17 (Claims App.). As Appellants
explain, there is only one direction from the handle end of the elongated tool
body to the sealant piercing end of the elongated tool body; “thus, the use of
the definite article ‘the’ does not raise any question as to which feature is
being referenced and does not render the claim indefinite.” Id. at 12.
Accordingly, we do not sustain this rejection.
The Examiner additionally considers claims 3 and 11 to be indefinite
on the basis that it is unclear whether the “two piercing elements” recited in
claims 3 and 11 are the same or different structures than the “at least one
piercing element” recited in their respective parent claims 1 and 9. Ans. 3;
see Appeal Br. 15—18 (Claims App.). According to the Examiner, “[t]he at
least one piercing element must first be defined as two piercing elements.”
Ans. 3. To the extent that the Examiner requires an explicit recitation that
the “at least one piercing element” set forth in claims 1 and 9 comprises two
piercing elements, this approach is unduly formalistic and rigid. Claims 1
and 9 each recite that the pulling element carrier structure includes “a recess
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and at least one piercing element.” Appeal Br. 15, 17 (Claims App.).
Claims 3 and 11 further limit that recitation such that “the recess is formed
between two piercing elements.” Id. at 16, 18. In other words, claims 3 and
11 are more limited, in that the “at least one piercing element” specifically
comprises two piercing elements, and the recess is formed between those
two piercing elements. There is no ambiguity in the scope of this claim
language. See Appeal Br. 12. Accordingly, we do not sustain this rejection.
The limitation “the longitudinal axis,” considered by the Examiner as
lacking sufficient antecedent basis in claim 5, appears within the recitation
“the elongated slot having a longitudinal axis aligned with the longitudinal
axis of the elongated tool body.” Id. at 16 (Claims App.). A person having
ordinary skill in the art would understand that an elongated body has a
longitudinal axis running in the length direction thereof. Thus, the scope of
the aforementioned “slot” recitation is clear; the elongated slot has a
longitudinal axis (running in the length direction of the slot) that extends in
the length direction of the elongated tool body. Much like the recitation that
the elongated slot has a longitudinal axis, claim 5 certainly could have been
drafted to explicitly recite that the elongated tool body has a longitudinal
axis, to provide an express antecedent for “the longitudinal axis.” However,
Appellants are correct that “the use of the definite term ‘the’ . . . does not
introduce any ambiguity.” Id. at 13. Accordingly, we do not sustain this
rejection.
For similar reasons, the reference to “the longitudinal axis of the
elongated tool body” in claim 9, without express antecedent, likewise does
not introduce ambiguity into the scope of claim 9. See Ans. 3; Appeal Br.
13. This language is contained with the recitation of “a support surface
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which extends transverse to the longitudinal axis of the elongated tool
body.” Appeal Br. 17 (Claims App.). The scope of this recitation is clear;
the support surface extends transverse to the length direction of the
elongated body. We do not sustain this rejection.
The Examiner points out that there is insufficient antecedent basis for
“the length” in claims 7 and 15. Ans. 3. However, as Appellants submit, an
elongated slot inherently has a length, so the reference to “the length of the
slot,” without express antecedent in the claim, does not introduce any
ambiguity into the claim. Appeal Br. 13. Accordingly, we do not sustain
this rejection.
Written Description
The Examiner finds that neither the “non-tubular sealant piercing end”
of claims 1 and 9 nor the “parallel planar faces” limitation of claims 2 and
10 is sufficiently supported in the present application to satisfy the written
description requirement of 35 U.S.C. § 112, first paragraph. Ans. 2—3.
The fundamental factual inquiry for ascertaining sufficient written
description is whether the specification conveys with reasonable clarity to
those skilled in the art that, as of the filing date sought, the inventor was in
possession of the invention as presently claimed. See Ariad Pharms., Inc. v.
Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (enbanc); Vas-Cath
Inc. v. Mahurkar, 935 F.2d 1555, 1562—64 (Fed. Cir. 1991). “This inquiry
... is a question of fact,” and “the level of detail required to satisfy the
written description requirement varies depending on the nature and scope of
the claims and on the complexity and predictability of the relevant
technology.” Ariad, 598 F.3d at 1351. “The specification must describe an
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Application 13/841,690
invention understandable to that skilled artisan and show that the inventor
actually invented the invention claimed.” Id.
With respect to the “non-tubular” limitation of claims 1 and 9, the
Examiner states that “[a] negative limitation must be supported in the
specification in a negative way in order to provide support for the negative
limitation” and finds that “[t]he Figures may not show a tube but this is not
support that it could not be a tube.” Ans. 2. The Examiner finds that “[o]ne
defining characteristic that would” determine whether an item is tubular is
whether “that item is hollow or hollow to some extent.” Ans. 6. The
Examiner finds that the Specification provides no insight on the interior
makeup of the piercing end and, in particular, whether or not it is solid or
hollow. Id.
Appellants direct our attention to the original drawings (particularly
Figures 6—8) and page 7 of the Specification as providing support for the
limitation that the sealant piercing end of the elongated tool body is “non­
tubular.” Appeal Br. 6. Figures 6—8 depict views of the piercing end (and
its pulling element carrier structure) from three orthogonal directions. Given
the dotted line in Figure 7 depicting the top of recess surface 111, and the
absence in Figures 6—8 of any other dotted lines, which might, for example,
indicate bores or hollows in the piercing end of the tool body, Figures 6—8
reasonably convey that the sealant piercing end of the tool body is a solid
structure and, thus, lacks the defining characteristic (i.e., a hollow) cited by
the Examiner for a tubular structure. Further, in describing Figures 6—8, the
Specification states that “the material making up elongated tool body 102 at
the sealant piercing end 105 is sharpened or otherwise tapered to a point to
make it easier for the tool to pierce a sealant material to be cut.” Spec. 9:4—
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6. Given the description of the structure and function of the sealant piercing
end, one of ordinary skill in the art would readily appreciate that a tubular
hollow in the material at the piercing end would not facilitate the piercing of
the sealant material and, more likely, would be detrimental thereto. Further,
by way of example, in the particular embodiment illustrated in the drawings,
the Specification describes elongated body 102 as comprising “a length of
flat spring steel approximately 1/2 mm thick.” Spec. 7:8—9. This
description likewise is consistent with a flat, thin, solid material, and not one
conducive to having a tubular hollow formed therein.
Appellants’ Specification does not use the term “non-tubular” to
describe the sealant piercing end of the elongate tool body. However, this is
not dispositive because “the description requirement does not demand any
particular form of disclosure, or that the specification recite the claimed
invention in haec verba.” Ariad, 598 F.3d at 1352. The description of the
sealant piercing end in the Specification and drawings discussed above is
sufficient to reasonably convey to a person of ordinary skill in the art that
the piercing end is a solid, thin, and flat structure for piercing the sealant
material, and not a structure with a tubular hollow. As such, we find that the
“non-tubular” limitation in claims 1 and 9 is supported sufficiently to satisfy
the written description requirement of 35 U.S.C. § 112, first paragraph.
Turning now to the “parallel planar faces” limitation of claims 2 and
10, the Examiner finds that the Specification does not address the
relationship between the faces of the tool body and that the drawings cannot
be relied on for support because they are not indicated as being drawn to
scale. Ans. 2. Appellants direct our attention to Figures 1—3, and Figure 2
in particular, as showing elongated tool body 102 as comprising a narrow
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piece of material having two opposing parallel faces. Appeal Br. 7.
Appellants additionally point to the description in the Specification of the
embodiment of the tool body “being formed from ‘a length of flat spring
steel approximately 1/2 mm thick’” as disclosing that the tool body defines
opposing parallel planar faces. Id. (citing Spec. 6:8—10). According to
Appellants, “a length of flat spring steel of a given thickness necessarily
defines opposing parallel planar faces.” Id.
Description via drawings and pictures can be relied upon alone as well
as by words to anticipate claimed subject matter if they clearly show the
structure claimed. In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972). Patent
drawings not designated as being drawn to scale cannot be relied upon to
define precise proportions of elements if the specification is completely
silent on the issue. Hockerson-Halberstadt, Inc. v. Avia Group Inti, Inc.,
222 F.3d 951, 956 (Fed. Cir. 2000). That does not mean, however, “that
things patent drawings show clearly are to be disregarded.” Mraz, 455 F.2d
at 1072.
The limitation in question is that “the elongated tool body includes a
length of rigid flat material which defines opposing parallel planar faces.”
Appeal Br. 15, 18 (Claims App.). Although the Specification may not
indicate that the drawings are to scale, the portion of elongated tool body
102 depicted in Figure 7 above tapered sealant piercing end 105 has
opposing faces that appear to be parallel to one another. This can be
ascertained without taking precise measurements from the drawing. Further,
when the depiction of Figure 7 is viewed in conjunction with the side view
of elongated tool body 102 in Figure 2, which also appears to show opposed
parallel planar faces, although less clearly than Figure 7, and the
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aforementioned description in the Specification of the tool body as
comprising “a length of flat spring steel approximately 1/2 mm thick” (Spec.
7:9), this reasonably conveys to those of ordinary skill in the art that the tool
body “includes a length of rigid flat material which defines opposing parallel
planar faces,” as recited in claims 2 and 10. As such, the disclosure
provided by the Specification and drawings of the present application
sufficiently supports the “parallel planar faces” limitation of claims 2 and 10
to satisfy the written description requirement of 35 U.S.C. § 112, first
paragraph.
For the above reasons, we do not sustain the rejections of claims 1, 2,
9, and 10 under 35 U.S.C. § 112, first paragraph.
DECISION
The Examiner’s decision rejecting claims 1—16 under
35 U.S.C. § 112, second paragraph, is REVERSED.
The Examiner’s decision rejecting claims 1, 2, 9, and 10 under
35 U.S.C. § 112, first paragraph, is REVERSED.
REVERSED
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