Ex Parte Holba et al

Patent Trial and Appeal Board

May 16, 2017

13234253 (P.T.A.B. May. 16, 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.
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