Ex Parte Dvorscak

Patent Trial and Appeal BoardOct 24, 2017

14271448 (P.T.A.B. Oct. 24, 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. 14/271,448 05/06/2014 PETER A. DVORSCAK PD-201 8633 25628 7590 10/25/2017 William TT Holt EXAMINER Law Offices of William H. Holt VU, STEPHEN A 14584 West Dartmouth Avenue Lakewood, CO 80228 ART UNIT PAPER NUMBER 3652 MAIL DATE DELIVERY MODE 10/25/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PETER A. DVORSCAK Appeal 2017-001864 Application 14/271,448 Technology Center 3600 Before JOHN A. EVANS, AARON W. MOORE, and DAVID J. CUTITTAII, Administrative Patent Judges. MOORE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2017-001864 Application 14/271,448 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of claims 1, 2, 4, 5, and 8. Claim 3 has been canceled and claims 6 and 7 have been withdrawn. We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter a NEW GROUND OF REJECTION. THE INVENTION The application is directed to a “puller including a plurality of pivoted members carrying gripper members for securely gripping a mat, pad, carpet, or the like for aiding in movement and placement thereof.” (Abstract.) Claim 1, reproduced below,1 is representative: 1. A puller for gripping a mat, or pad, for aiding in the movement and placement thereof, said puller including a plurality of gripper members mounted upon first and second pivoted lever members, each said first and second pivoted lever member having at least a first gripper member secured thereto that cooperates with a second gripper member carried by said second pivoted lever member, each said gripper member having gripping surfaces thereon for securely gripping said mat or pad, wherein each said pivoted lever member is comprised of a [sic] first and second generally rectangular frames, each said rectangular [sic, frame] carrying at least one of said gripper members positioned for mating with said second gripper. 1 The version of claim 1 included in Appellant’s Claim Appendix is outdated. We review this appeal based on the claims as listed in the March 14, 2016 Amendment, which was entered on April 15, 2016. 2 Appeal 2017-001864 Application 14/271,448 THE REJECTIONS 1. Claim 8 stands rejected under 35 U.S.C. § 112(b) “as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor . . . regards as the invention.” (See Final Act. 2.) 2. Claims 1, 2, 4, 5, and 8 stand rejected under 35 U.S.C. § 102(a)(1) as anticipated by Key et al. (US 7,537,255 B2; issued May 26, 2009). (Final Act. 3^1.) ANALYSIS Appellant describes and claims a puller for moving a mat or pad, one embodiment of which is shown in, for example, Fig. 5, reproduced below: V1G. 5 Figure 5 is an embodiment of a puller. As described in the Specification, “[t]he puller is comprised of a pair of generally rectangular frames 52 and 54.” (Spec. 5:7—8.) “Frame 52 is slightly narrower in width than frame 54 and fits within frame 54” and “frames 52 and 54 are pivotally secured to each other by pivot pins 56 and 3 Appeal 2017-001864 Application 14/271,448 58 to provide for relative rotation from an open position to a closed position.” (Id. 5:8—12.) Indefiniteness The Examiner finds insufficient antecedent basis for the limitation “the other frame” in claim 8. (Final Act. 2; Ans. 2.) This rejection is moot, and therefore reversed pro forma, because the term “other frame” in claim 8 was replaced with “second frame” in the March 14, 2016 Amendment that was entered on April 15, 2016. Anticipation Appellant argues Key does not describe “generally rectangular frames,” as recited in claim 1, because Key’s gripper jaws 32a and 32b are “generally triangular shaped.” (App. Br. 4.) The Examiner responds that “the pivoted lever members (32a, 32b) each . . . have a generally rectangular frame” and finds “in addition, that each of the pivoted lever member[s] further has a generally rectangular cross-sectional shape.” (Ans. 3.) We agree with Appellant, as we conclude the Examiner fails to show why or how Key’s gripper jaws, which are U-shaped, having an open side, would be considered by one of skill in the art to be “generally rectangular.” We also do not agree that a portion of a gripper jaw having a “rectangular cross-sectional shape” would mean that the gripper jaw, as a whole, would be “generally rectangular,” as recited in the claim. For this reason, we do not sustain the anticipation rejection of claim 1 or, for the same reason, the same rejection of dependent claims 2, 4, 5, and 8. Because this issue is dispositive, we do not reach Appellant’s additional arguments directed at individual dependent claims. 4 Appeal 2017-001864 Application 14/271,448 New Ground of Rejection Claim 1 recites, inter alia, a puller that “include[s] a plurality of gripper members mounted upon first and second pivoted lever members” but further recites that “each said pivoted lever member is comprised of a [sic] first and second generally rectangular frames.'1'’ In other words, the claim requires that each of the pivoted lever members include two generally rectangular frames, where the application (e.g., Figure 5 above and the related description) describes that each of the pivoted lever members is a single rectangular frame (e.g., rectangular frames 52 and 54). Because we find no disclosed embodiment that includes two lever members, each of which include two rectangular frames, we determine that the present claims lack support in the original application2 and, therefore, newly reject claims 1, 2, 4, 5, and 8 under 35 U.S.C. § 112(a), for failure to comply with the written description requirement. DECISION The rejection of claim 8 under 35 U.S.C. § 112(b) as indefinite is reversed. The rejection of claims 1, 2, 4, 5, and 8 under 35 U.S.C. § 102(a) as anticipated is reversed. Claims 1, 2, 4, 5, and 8 are newly rejected under 35 U.S.C. § 112(a), as lacking adequate written description support. 2 Original claim 1 did not recite pivoted lever members comprised of first and second generally rectangular frames. Instead, it claimed only pivoted lever members and the gripper members. Appellant does not account for the “lever members” in the Appeal Briefs Summary of the Invention, only equating the frames 52 and 54 to the claimed frames. (See App. Br. 2.) 5 Appeal 2017-001864 Application 14/271,448 TIME PERIOD This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review” and that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) reopen prosecution by submitting an appropriate amendment of the claims so rejected, or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner; or (2) request that the proceeding be reheard under § 41.52 by the Board upon the same Record. REVERSED 37 C.F.R. $ 41.50(B) 6