Ex Parte BLUE

Patent Trial and Appeal Board

Aug 24, 2018

13735287 (P.T.A.B. Aug. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/735,287 01/07/2013 RODNEY ADOLPH BLUE
3705 7590 08/28/2018
ECKERT SEAMANS CHERIN & MELLOTT LLC
U.S. Steel Tower
600 Grant Street, 44th Floor
Pittsburgh, PA 15219
UNITED ST A TES OF AMERICA
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
291448-00894US 1516
EXAMINER
RUPPERT, ERIC S
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
08/28/2018 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):
ipmail@eckertseamans.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RODNEY ADOLPH BLUE
Appeal2017-006853
Application 13/735,287
Technology Center 3700
Before JENNIFER D. BAHR, BRANDON J. WARNER, and
SEAN P. O'HANLON, Administrative Patent Judges.
O'HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Rodney Adolph Blue ("Appellant") 1 appeals under 35 U.S.C. § 134(a)
from the Examiner's decision, as set forth in the Final Office Action dated
May 19, 2016 ("Final Act."), rejecting claims 1-14. We have jurisdiction
over this appeal under 35 U.S.C. § 6(b). We REVERSE.
1 The Appeal Brief identifies Stolle Machinery Company, LLC as the real
party in interest. Appeal Br. 1.
Appeal2017-006853
Application 13/735,287
SUMMARY OF THE INVENTION
Appellant's claimed invention is directed to a fluid cooling system for
a ram bushing. Spec. 1: 12-13. Claims 1 and 14 are independent. Claim 1,
reproduced below from page 36 (Claims Appendix) of the Appeal Brief, is
illustrative of the claimed subject matter:
1. A ram bushing cooling system for a ram bushing, said
ram bushing having at least one first cooling inlet and at least
one second cooling inlet, said cooling system comprising:
a cooling fluid reservoir;
a low pressure pump;
a conduit system structured to provide fluid
communication between said low pressure pump and said ram
bushing at least one first cooling inlet, said conduit system
having a plurality of conduits including at least a primary
cooling conduit, a secondary inlet conduit, and at least one side
conduit;
said low pressure pump disposed on said primary cooling
conduit;
said at least one side conduit coupled to, and in fluid
communication with, said primary cooling conduit at a
T-coupling;
said secondary inlet conduit coupled to, and in fluid
communication with, said ram bushing at least one second
cooling inlet; and
at least one check valve disposed on said at least one side
conduit, said at least one check valve structured to allow a
cooling fluid to pass through said at least one side conduit upon
the event of an over pressure condition downstream of said low
pressure pump.
REJECTIONS
Claims 1-14 stand rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite.
Claims 1-11 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Crabtree (WO 2010/066606 A2, published June 17,
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Application 13/735,287
2010), Shah (US 3,577,753, issued May 4, 1971), Portela (EP 1 672 189 A2,
published June 21, 2006), and Nightingale (US 4,471,687, issued Sept. 18,
1984).
Claims 12 and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Crabtree, Shah, Portela, Nightingale, and Phalin (US
4,502,313, issued Mar. 5, 1985).
ANALYSIS
Indefiniteness
The Examiner determines claims 1-14 to be indefinite, citing eight
recitations of claims 1, 2, and 14 (collectively), which boil down to two
reasons: 1) recitations such as "a conduit system structured to provide fluid
communication between said low pressure pump and said ram bushing at
least one first cooling inlet" of claim 1 "do[] not make grammatical sense"
because "[i]t is unclear how the 'ram bushing' and the 'at least one first
cooling inlet' are related" (Final Act. 2), and 2) recitations of a "low
pressure pump" are indefinite because "low" is not defined in the claims and
the Specification, in describing the low pressure pump, "use[ s] the relative
term 'about,' which is not defined in the [S]pecification" (id. at 3). 2
A claim is indefinite when it contains language that is "ambiguous,
vague, incoherent, opaque, or otherwise unclear in describing and defining
the claimed invention." In re Packard, 751 F.3d 1307, 1311 (Fed. Cir.
2014); see also In re McAward, Appeal 2015-006416, 2017 WL 3669566,
*5 (PTAB Aug. 25, 2017) (precedential). The indefiniteness determination
2 A rejection based on a lack of antecedent basis was withdrawn. Final Act.
5; Ans. 17.
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Application 13/735,287
is "based on the perspective of one of ordinary skill in the art in view of the
entire written description and developing prosecution history." Packard,
751 F.3d at 1312. For the reasons set forth below, we do not sustain the
Examiner's indefiniteness rejection.
Lack of Grammatical Sense
The preamble of claim 1 recites, in relevant part, "a ram bushing ...
having at least one first cooling inlet." Appeal Br. 36 (Claims App.). The
plain meaning of this claim language means the ram bushing has a first
cooling inlet, and may have additional first cooling inlets. See Spec. Fig. 1
(illustrating two first cooling inlets 22 ( only one of which is labeled) and two
second cooling inlets 24 ). One of ordinary skill in the art would readily
understand the subsequent recitation of "ram bushing at least one first
cooling inlet" to refer to the first cooling inlet (as well as additional cooling
inlets, should the ram busing include them) of the ram bushing. Such a
skilled artisan would also, therefore, readily understand "a conduit system
structured to provide fluid communication between said low pressure pump
and said ram bushing at least one first cooling inlet" to require that the
conduit system is structured to provide fluid communication between the
low pressure pump and the first cooling inlet(s) of the ram bushing. See
Appeal Br. 9--16; Spec. Fig. 1. Thus, the claim language is not unclear, and
the Examiner's determinations to the contrary are not sustained.
"Low Pressure Pump"
A claim under examination is given its broadest reasonable
interpretation consistent with the underlying specification as it would be
interpreted by one of ordinary skill in the art. See In re Am. Acad. of Sci.
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Application 13/735,287
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Suitco Surface, Inc.,
603 F.3d 1255, 1259---60 (Fed. Cir. 2010); In re Morris, 127 F.3d 1048,
1054--55 (Fed. Cir. 1997). As noted by the Examiner, the Specification
explains: "As used herein, a 'low pressure pump' is a pump structured to
pump a fluid at a pressure of about 50 psi and at a rate of about 17 gpm. A
'low pressure pump' utilizes a current of less than about 4 amps." Spec.
3 :6-8. The mere fact that the Specification does not expressly define the
word about does not render the claims indefinite, as determined by the
Examiner; the Specification need not provide a definition for every term
contained therein. One of ordinary skill in the art would readily understand
the definition of about. See Appeal Br. 19 (presenting dictionary definitions
of about). Pointing to the absence of a definition of about in the
Specification does not persuade us that one skilled in the art would not be
able to determine the scope of the claimed invention. Therefore, we do not
sustain the Examiner's determinations based on the "low pressure pump"
recitations.
Obviousness Based on Crabtree, Shah, Portela, and Nightingale
Each of independent claims 1 and 14 requires "a low pressure pump."
Appeal Br. 36, 41 (Claims App.). Indeed, using a low pressure system,
rather than a high pressure lubrication system, to cool the ram bushing is one
of the primary features touted by Appellant. See, e.g., Spec. 1 :22-2: 11.
The Examiner relies on Nightingale to teach a low pressure pump.
Final Act. 7-8, 15. Appellant argues that the recited "low pressure pump"
has a specific definition, and Nightingale does not disclose such a pump.
Appeal Br. 25-26; see also Spec. 3:6-8. The Examiner determines that
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Application 13/735,287
"'low pressure pump' is not adequately defined in the [S]pecification for
ascertaining the requisite degree and one of ordinary skill in the art would
not be reasonably apprised of the scope of the invention." Ans. 28; Final
Act. 25. The Examiner further determines that "utilizing less than 4 amps is
considered functional language" and an indication of intended use. Id.
When an applicant assigns a special meaning to a term, the meaning
must be set forth in the specification "with reasonable clarity, deliberateness,
and precision ... so as to give one of ordinary skill in the art notice of the"
special definition. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
Additionally, "when a patent [application] 'repeatedly and consistently'
characterizes a claim term in a particular way, it is proper to construe the
claim term in accordance with that characterization." GPNE Corp. v. Apple
Inc., 830 F.3d 1365, 1370 (Fed. Cir. 2016) (citing VirnetX, Inc. v. Cisco Sys.,
Inc., 767 F.3d 1308, 1318 (Fed. Cir. 2014); ICU Med., Inc. v. Alaris Med.
Sys., Inc., 558 F.3d 1368, 1374--75 (Fed. Cir. 2009)).
Here, as correctly noted by Appellant, the Specification sets forth a
definition of "low pressure pump":
As used herein, a "low·pressure pump" is a pump
structured to pump a fluid at a pressure of about 50 psi and at a
rate of about 17 gpm. A "low pressure pump" utilizes a current
of less than about 4 amps.
Spec. 3:6-8; see also id. at 2:14 ("A low pressure, and low current, pump,
hereinafter a 'low pressure pump"' (emphasis added)). As the Specification
sets forth this definition with reasonable clarity, deliberateness, and
precision (see our discussion of the indefiniteness rejections above), the
recitation of a "low pressure pump" requires a pump that is structured to
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Application 13/735,287
pump a fluid at a pressure of about 50 psi and a rate of 17 gpm and using a
current of about 4 amps. As stated by Appellant,
[T]o disclose a "low pressure pump" as defined in the present
application, a reference must disclose a pump with
characteristics of fluid pressure of "about 50 psi," fluid flow
rate of "about 17 gpm," and which utilizes a current of "less
than about 4 amps." Only two characteristics of the
Nightingale pump are described, and only one of these is
similar to a "low pressure pump" as defined. As the
Nightingale pump has a fluid flow rate of 6.5 gpm ( which is
significantly below 17 gpm) and fails to identify an associated
current, the Nightingale pump is not a "low pressure pump" as
defined in the present application.
Appeal Br. 26 (emphases added). Thus, a "low pressure pump," within the
context of the present application, requires three parameters-pressure, flow
rate, and amperage-to have specific values. The Examiner's
determinations to the contrary do not give proper consideration to the
Specification and do not explain adequately how Nightingale discloses such
values, and, thus, are in error. Nor do we agree that "utilizes a current of
less than about 4 amps" is functional language or an indication of intended
use. Rather, the language sets forth a specific definition of the claim term.
Nightingale appears to disclose a container/can forming press that
utilizes lubricating oil to cool its bearings. See, e.g., Nightingale 5:41-50.
Nightingale's description of its pumps is limited, but in a portion relied upon
by the Examiner, Nightingale does disclose the pumps as being "capable of
moving 6.5 gallons per minute at 45 psi." Id. at 15:55-56; Final Act. 7. As
correctly noted by Appellant (see Appeal Br. 26), Nightingale does not
describe a pump having the requisite flow rate and amperage to qualify as
the claimed "low pressure pump," as defined by Appellant's Specification.
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Nor do we agree with the Examiner's conclusory determination that
the pump pressure, flow rate, and amperage are result-effective variables the
required values of which would be achieved through routine optimization.
Final Act. 8, 26; Ans. 28-29. In order to rely on routine optimization to
render the value of a claimed variable obvious, the variable must first be
recognized in the art as one affecting the result. In re Antonie, 559 F.2d 618,
620 (CCPA 1977); In re Applied Materials, Inc., 692 F.3d 1289, 1295, 1297
(Fed. Cir. 2012). The Examiner has made no showing that pump pressure,
flow rate, and amperage are recognized in the art as variables to achieve any
stated result, nor has the Examiner explained how "optimizing" such
parameters would achieve the required values. Thus, the Examiner's
determination is in error. See also Reply Br. 5---6.
Accordingly, for the foregoing reasons, we do not sustain the rejection
of claims 1 and 14, or of claims 2-11, which depend from claim 1, as being
unpatentable over Crabtree, Shah, Portela, and Nightingale.
Obviousness Based on Crabtree, Shah, Portela, Nightingale, and Phalin
Claims 12 and 13 depend, directly or indirectly, from claim 1. The
Examiner does not rely on Phalin in any manner that would remedy the
deficiencies noted above with respect to the rejection of claim 1. Therefore,
the rejection of claims 12 and 13 is not sustained.
DECISION
The Examiner's decision to reject claims 1--4 is reversed.
REVERSED
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