Ex Parte Holba et alDownload PDFPatent Trial and Appeal BoardMay 16, 201713234253 (P.T.A.B. May. 16, 2017) Copy Citation 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. 1576-0793 1246 EXAMINER ALIE, GHASSEM ART UNIT PAPER NUMBER 3724 MAIL DATE DELIVERY MODE 13/234,253 09/16/2011 10800 7590 05/17/2017 Maginot, Moore & Beck LLP One Indiana Square, Suite 2200 Indianapolis, IN 46204 John Holba 05/17/2017 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 JOHN HOLBA and CHAD KEAN RICHART Appeal 2015-006064 Application 13/234,253 Technology Center 3700 Before JENNIFER D. BAHR, WILLIAM A. CAPP, and ANTHONY KNIGHT, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35U.S.C. § 134 from the final rejection of claims 1—12, 14—17, 19, 20, 24, and 25. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2015-006064 Application 13/234,253 THE INVENTION Appellants’ invention relates to a tool guide for a cutting tool. Spec. 11. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A tool guide for guiding a cutting tool comprising: a cuff assembly including a body member, an arm member extending from said body member and defining a guide edge, and an opposing arm member extending from said body member, said body member, said arm member, and said opposing arm member configured to define a workpiece channel; a first resilient clamp member configured to extend from said arm member into said workpiece channel; a second resilient clamp member configured to extend from said opposing arm member into said workpiece channel; and at least one alignment opening extending through said arm member to said workpiece channel, said at least one alignment opening being independent of said first resilient clamp member and located a first predetermined distance from said guide edge. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: Jewers US 4,745,688 May 24, 1988 Susumu JP2005016116 (A) Jan. 20,2005 Shih US 2008/0198091 A1 Aug. 21,2008 The following rejections are before us for review: 1. Claim 19 is rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the applicant regards as the invention. 2. Claims 1—7, 19, 24, and 25 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Susumu and Shih. 2 Appeal 2015-006064 Application 13/234,253 3. Claims 1—12, 14—17, 19, 20, 24, and 25 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Susumu, Shih, and Jewers. OPINION 35 U.S.C. § 112, second paragraph Indefiniteness of Claim 19 The Examiner rejected claim 19 as indefinite, because “said clamp opening” lacks antecedent basis. Final Action 3. Appellants do not challenge this ground of rejection. Consequently, we summarily affirm the Examiner’s rejection of claim 19 on the grounds of indefmiteness. See 37 C.F.R. § 41.37(c)(iv) (failure to argue a ground of rejection). Unpatentability of Claims 1—7, 19, 24, and 25 over Susumu and Shih Claim 1 The Examiner finds that Susumu discloses the invention substantially as claimed except for a second resilient clamp member. Final Action 4. The Examiner relies on Shih as disclosing a second resilient clamp member extending as claimed. Id. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time of the invention to provide Susumu’s guide member with a second resilient member, as taught by Shih. Id. According to the Examiner, a person of ordinary skill in the art would have done this to ensure that the workpiece is tightly gripped. Id. Appellants traverse the Examiner’s rejection by arguing that Susumu fails to disclose an alignment opening that is “independent” of the first resilient clamp member. Appeal Br. 6. Appellants argue that this alleged deficiency is not cured by Shih. Id. at 7. With respect to the lack of independence of Susumu’s alignment opening, Appellants argue: 3 Appeal 2015-006064 Application 13/234,253 As shown in FIGs. 1 and 2 of Susumu, the opening 8 is formed in the arm 17 to define the holding piece 7 and the tab 9. During use of the cutting implement 1, the holding piece 7 is moved through the opening 8. Therefore, the opening 8 is not independent of the holding piece 7 because (i) the opening 8 is required to form the holding piece 7, and (ii) the opening 8 is necessary for proper function and even the existence of the holding piece 7. In other words, the only structure in Susumu that can correspond to the claimed “first resilient clamping member” must include both the holding piece 7 and the opening 8. Susumu does not disclose any other opening in the arm 17. Id. at 6. “Stated differently, the holding piece (7) depends on the opening (8) or else the holding piece (7) would not be movable relative to the arm (17)”. Reply Br. 2 (emphasis added). In response, the Examiner takes the position that Susumu’s opening 8 is “independent” from the first resilient member, since it is not located in the first resilient clamp member. Ans. 12. The Examiner further observes that claim 1 does not recite any particular manner in which the alignment opening must be “independent” from the first resilient member. Id. The dispute between Appellants and the Examiner boils down to a question of what it means for an alignment opening to be “independent of said first resilient clamp member” within the context of claim 1. This is a matter of claim construction. During examination of a patent application, pending claims are given their broadest reasonable construction consistent with the specification. In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under the broadest reasonable interpretation standard, claim terms are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., 4 Appeal 2015-006064 Application 13/234,253 Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). “Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). Upon review of Appellants’ disclosure, we note that the word “independent” was added to claim 1 by amendment and did not appear in the version of claim 1 originally filed with Appellants’ disclosure. We further note that the word “independent” does not appear anywhere in the text of Appellants’ Specification in relation to the structure, configuration, and features of an alignment opening. In the absence of any definition of “independent of said first resilient clamp member” in the Specification, either express or implied, we apply the broadest reasonable construction consistent with the Specification. Am Acad. ofSci. Tech, 367 F.3d at 1364. We consider that Appellants’ proposed construction of “independent” is reasonable. However, so also is the Examiner’s construction. Where both proposed constructions are reasonable, we are directed to apply the broadest reasonable construction. Id. We will apply the Examiner’s construction as the broadest reasonable construction. Susumu discloses a holding piece 7, which the Examiner finds corresponds to a first resilient clamp member. Final Action 3^4; Susumu, Fig. 1. Opening 8 is adjacent to holding piece 7 and surrounds holding piece 7 on three of its four sides. Susumu, Figs. 1, 2. Although the two structures are situated in close proximity to each other, we do not discern that the function of one in any manner depends upon the other. The Examiner’s findings of fact are consistent with the Examiner’s broad, but reasonable, construction of “independent.” 5 Appeal 2015-006064 Application 13/234,253 In view of the foregoing discussion, we determine the Examiner’s findings of fact are supported by a preponderance of the evidence and that the Examiner’s legal conclusion of unpatentability is well-founded. Accordingly, we sustain the Examiner’s unpatentability rejection of claim 1 over Susumu and Shih. Claims 2—7 and 19 These claims depend, directly or indirectly, from claim 1. Claims App. Appellants do not argue for the separate patentability of these claims apart from arguments presented with respect to claim 1 which we have previously considered. Accordingly, we sustain the Examiner’s unpatentability rejection of claims 2—7, and 19 over Susumu and Shih. Claim 24 In traversing the rejection of independent claim 24, Appellants rely solely on arguments that we have previously considered and found unpersuasive with respect to claim 1 and find equally unpersuasive here. Appeal Br. 8—9. We sustain the rejection of claim 24 over Susumu and Shih. Claim 25 Claim 25 depends from claim 24. Claims App. Appellants do not argue for the separate patentability of claim 25 apart from arguments presented with respect to claims 1 and 24 which we have previously considered. Accordingly, we sustain the Examiner’s unpatentability rejection of claim 25 over Susumu and Shih. 6 Appeal 2015-006064 Application 13/234,253 Unpatentability of Claims 1—12, 14—17, 19, 20, 24, and 25 over Susumu, Shih, and Jewers Claim 1 With respect to this ground of rejection, the Examiner makes findings that are substantially similar to the ground of rejection over Susumu and Shih discussed hereinabove. Final Action 7. In anticipation of an argument that Susumu’s opening 8 is not an alignment opening, the Examiner relies on Jewers as disclosing an alignment opening that is independent of the aperture in the center of each clamp member. Id. at 8. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time of the invention to modify Susumu/Shih with alignment openings as taught by Jewers. Id. According to the Examiner, a person of ordinary skill in the art would have done this to determine that the workpiece is correctly positioned. Id. Appellants traverse the rejection by first repeating their argument, asserted against the Susumu/Shih ground, that Susumu and Shih do not disclose an alignment opening as claimed. Appeal Br. 10. We find that argument unpersuasive for the same reasons expressed above with respect to the Susumu/Shih ground of rejection. Next, Appellants argue that there is no motivation to combine Susumu and Shih with Jewers. Id. There is no motivation or rational basis to combine Susumu and Shih with Jewers, because the addition of the alignment apertures 32, 34 does not assist in aligning the implement 3 of Susumu with an eaves gutter 2. Id. at 11. In addition, Appellants argue that, since Susumu already features opening 8, there is no reason to modify it with additional openings. Id. at 11-12. 7 Appeal 2015-006064 Application 13/234,253 In response, the Examiner states that the use of alignment openings to view the alignment of a workpiece within a clamp is old and well known as taught by Jewers. Ans. 13. With respect to Appellants’motivation argument, the Examiner states that the alignment openings of Jewers assist an operator to view a workpiece in the same way that the alignment openings in the instant application assist the operator to view a workpiece. Id. We think the Examiner states the correct position. It is well settled that “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). We are of the opinion that a person of ordinary skill in the art would have recognized that Susumu could be improved by using Jewers’ alignment openings. Appellants present no evidence that adapting Jewers’ alignment openings to Susumu’s clamp requires more than ordinary skill. Appellants’ argument that Susumu already has an opening and, therefore, does not need to be modified by Jewers is not persuasive. Just because a primary reference teaches an operable invention does not mean that a person of ordinary skill in the art would not take advantage of an opportunity to improve it with the teachings of a secondary reference. A motivation to combine can be found in “any need or problem known in the field of endeavor at the time of invention and addressed by the patent.” KSR, 550 U.S. at 420. “[T]he analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court 8 Appeal 2015-006064 Application 13/234,253 can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. Moreover, an implicit motivation to combine exists when the improvement is technology- independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. DyStar Textilfarben GmbH & Co. v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006). Because the desire to enhance commercial opportunities by improving a product or process is universal—and even common-sensical—we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves. Id. We agree with the Examiner that a person of ordinary skill in the art would have had a good reason to modify Susumu with the teachings of Jewers’ alignment openings. This is an adequate reason to combine the references in the manner proposed by the Examiner. In view of the foregoing discussion, we determine the Examiner’s findings of fact are supported by a preponderance of the evidence and that the Examiner’s legal conclusion of unpatentability is well-founded. Accordingly, we sustain the Examiner’s unpatentability rejection of claim 1 over Susumu, Shih, and Jewers. Claims 2—7 and 19 Appellants do not argue for the separate patentability of these claims apart from arguments presented with respect to claim 1 which we have previously considered. Accordingly, we sustain the Examiner’s unpatentability rejection of claims 2—7, and 19 over Susumu, Shih, and Jewers. 9 Appeal 2015-006064 Application 13/234,253 Claim 8 In traversing the rejection of independent claim 8, Appellants rely solely on arguments that we have previously considered and found unpersuasive with respect to claim 1 and find equally unpersuasive here. Appeal Br. 12—13. We sustain the rejection of claim 8 over Susumu, Shih, and Jewers. Claims 9—12 Claims 9—12 depend, directly or indirectly, from claim 8. Claims App. Appellants do not argue for the separate patentability of these claims apart from arguments presented with respect to claims 1 and 8 which we have previously considered. Accordingly, we sustain the ’Examiner’s unpatentability rejection of claims 9-12 over Susumu, Shih, and Jewers. Claim 24 In traversing the rejection of independent claim 24, Appellants rely solely on arguments that we have previously considered and found unpersuasive with respect to claims 1 and 8 and find equally unpersuasive here. Appeal Br. 13—14. We sustain the rejection of claim 24 over Susumu, Shih, and Jewers. Claims 14^17 and 25 Claims 14—17 and 25 depend from claim 24. Claims App. Appellants do not argue for the separate patentability of these claims apart from arguments presented with respect to claims 1,8, and 24 which we have previously considered. Appeal Br. 14—15. Accordingly, we sustain the Examiner’s unpatentability rejection of claims 14—17, and 25 over Susumu, Shih, and Jewers. 10 Appeal 2015-006064 Application 13/234,253 DECISION The decision of the Examiner to reject claims 1—12, 14—17, 19, 20, 24, and 25 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 11 Copy with citationCopy as parenthetical citation