Ex Parte Jefferson et al

Patent Trials and Appeals Board

Mar 12, 2019

13965423 - (D) (P.T.A.B. Mar. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/965,423 08/13/2013
9961 7590 03/14/2019
V orys, Sater, Seymour and Pease LLP
500 Grant Street
Suite 4900
PITTSBURGH, PA 15219-2502
FIRST NAMED INVENTOR
Alvin L. Jefferson
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.
130188 8120
EXAMINER
DUNWOODY, AARON M
ART UNIT PAPER NUMBER
3679
NOTIFICATION DATE DELIVERY MODE
03/14/2019 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):
docket@beckthomas.com
vorys_docketing@cardinal-ip.com
USPTO_BT@vorys.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AL VIN L. JEFFERSON, DAVIDE. OVERDORFF II,
DUANE PETKO, BRANDEN BUTELLA, and DAVID AGEE
Appeal2017-005342
Application 13/965,423
Technology Center 3600
Before LINDA E. HORNER, LISA M. GUIJT, and LEE L. STEPINA,
Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1, 2, and 4-20. 2 An oral hearing was held on February
28, 2019. We have jurisdiction under 35 U.S.C. § 6(b).
1 Ductmate Industries, Inc. ("Appellant"), the applicant as provided for
under 37 C.F.R. § 1.46, is also identified as the real party in interest. Appeal
Br. 3.
2 Appeal is taken from the Non-Final Office Action dated March 31, 2016.
Appeal2017-005342
Application 13/965,423
We AFFIRM-IN-PART, and we enter a NEW GROUND OF
REJECTION of claims 13, 14, and 16-20 under 35 U.S.C. § 112, second
paragraph, pursuant to our authority under 37 C.F.R. § 4I.50(b).
STATEMENT OF THE CASE
Claims 1, 11, and 15 are the independent claims on appeal. Claim 1,
reproduced below with disputed limitations italicized for emphasis, is
exemplary of the subject matter on appeal.
1. A high efficiency fitting for conveying heated or
cooled air from a main duct to a branch duct comprising:
(a) a bottom flange adapted to be sealingly attached to
a rectangular cross-section main duct for conveying
conditioned air;
(b) a circular cross-section exit pipe receptor adapted to
sealingly mate with a circular branch duct conveying
conditioned air away from the main duct;
( c) a curved molded transitional body that changes the
direction of airflow within the curved molded transitional
body, the curved molded transitional body connects the
bottom flange and the exit pipe receptor to provide a
smooth transition of air flow from the rectangular cross-
section main duct to the exit pipe receptor wherein a center
line of the bottom flange is offset from a center line of the
circular cross-section exit pipe receptor; and
( d) the molded transitional body being formed of heat
resistant rigid material.
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Application 13/965,423
THE REJECTIONS 3
I. Claims 8-10 and 12 stand rejected under 35 U.S.C. § 112,
second paragraph, as indefinite.
II. Claims 1, 2, and 4--20 stand rejected under 35 U.S.C. § I02(b)
as anticipated by Johnson (US 2011/0232335 Al; published Sept. 29, 2011).
ANALYSIS
Rejection I
Dependent claim 8
The Examiner finds that claim 8 (which depends from claim 4, which
depends from independent claim 1) fails to further limit the structural
relationship of the offset of the bottom flange's center line from the
receptor's center line as recited in claim 1. Non-Final Act. 2-3.
Additionally, the Examiner finds that the meaning of the claim term
"traditional high efficiency fittings," as recited in claim 8, is unclear because
"no basis is provided to enable one of ordinary skill to determine whether or
not the air flow present in [the claimed] device constitutes an 'increase' over
the 'traditional' fitting." Ans. 8; Non-Final Act. 3.
Appellant argues that one skilled in the art knows the structure ( and
meaning) of "the typical HV AC structure," as depicted in Figures 5 and
described in Tables A and B of the Specification. Appeal Br. 8-9.
3 The Examiner's rejections of claims 1-20 as anticipated by Montpetit (US
4,627,648; issued Dec. 9, 1986) and Kosik (US 5,328,212; issued July 12,
1994) have been withdrawn. Ans. 7. Therefore, there is no standing
rejection of dependent claim 3. See Non-Final Act. 1-14.
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Our reviewing court has explained that§ 112(b) requires the claims
"to be cast in clear--as opposed to ambiguous, vague, indefinite--terms." In
re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). The rationale for
requiring such "reasonable precision" in claim language is because "[i]t is
the claims that notify the public of what is within the protections of the
patent, and what is not." Id.; see Ex parte McAward, Appeal No. 2015-
006416 at 4--12 (precedential) (PTAB Aug. 25 2017) (discussing the
approach to indefiniteness applied in proceedings at PTO).
Notably, the Examiner's rejection of claim 8 supra for failing to
further limit claim 1 is properly made pursuant to 35 U.S.C. § 112,fourth
paragraph. Notwithstanding, we find that claim 8, which depends from
claim 4, which depends from independent claim 1, does further limit the
fitting recited in claim 1 by functionally requiring an increase in the air flow
through the fitting, as defined in claim 1, over a certain threshold (i.e., " air
flow through the fitting over traditional high efficiency fittings."). Appeal
Br. 11 (Claims App.). However, the Examiner is correct in finding that the
value of such a threshold is unclear, because the claim term "traditional high
efficiency fitting," and more critically, the airflow through such a traditional
high efficiency fitting, is not particularly defined by the Specification or
claims. In other words, we decline to import into claim 8 values of "Actual
PPM" and/or "CFM" corresponding to apparent air flow thresholds of a
prior art "2x4 Duct," "6" Pipe", and/or "Trk Duct," as there appears to be
several differently sized ducts and pipes, and corresponding airflows,
representative of such traditional high efficiency fittings, as evidenced by
Table A. Spec., p. 7, Table A. SuperGuide Corp. v. DirecTV Enters., Inc.,
358 F.3d 870, 875 (Fed. Cir. 2004) ("Though understanding the claim
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Application 13/965,423
language may be aided by the explanations contained in the written
description, it is important not to import into a claim limitations that are not
a part of the claim.").
Accordingly, we sustain the Examiner's rejection of claim 8 under
35 U.S.C. § 112, second paragraph, as indefinite.
Dependent claims 9, 10, 12-14, and 16--20
The Examiner correctly finds that " [ c] laim 9 depends from claim 9,"
which renders claim 9 indefinite, as well as claim 10, which depends from
claim 9, and claims 12-14, which depend from claim 10. Non-Final Act. 3;
Appeal Br. 12-13 (Claims App.). Additionally, claim 17 depends from
itself, rendering claim 17 indefinite, as well as claims 16 and 18-20, which
depend from claim 17. Appeal Br. 13-14 (Claims App.).
The Examiner also correctly finds that claim 12, which further limits
"[t ]he method of claim 1 O," is indefinite because of lack of antecedent basis;
claim 10 recites, in relevant part, "[a] high efficiency fitting"-not a method.
Appeal Br. 12 (Claims App.) (emphasis added). Non-Final Act. 3. We also
agree that the claim term "traditional take-offs" as recited in claim 12 is
unclear ( and thus, indefinite) for essentially the same reasons as stated supra
with respect to claim 8. Non-Final Act. 3.
Accordingly, we sustain the Examiner's rejection of claim 9, 10, and
12 under 35 U.S.C. § 112, second paragraph, as indefinite, and we enter a
NEW GROUND OF REJECTION of claims 13, 14, and 16-20 under
35 U.S.C. § 112, second paragraph, as indefinite.
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Application 13/965,423
Rejection II
Independent claims 1 and 15, and dependent claims 2, 4-10, and 16--204
Regarding independent claims 1 and 15, the Examiner finds that
Johnson's fitting 11 discloses "a curved molded transitional body that
changes the direction of airflow within the curved molded transitional body,"
as required by claim 1, and "a curved body," as required by claim 15. Non-
Final Act. 3--4, 6 (citing Johnson, Figs. 2, 4) (emphasis added). The
Examiner finds that the claims do not recite "the specific manner in which
the body is curved," and thus, the Examiner determines that because Johnson
discloses a body that is "curved circumferentially" (i.e., a body that has a
circular cross-section), Johnson's body anticipates the curved body as
claimed. Ans. 10-11.
Appellant argues that claims 1 and 15 require "'a curved body' and
turning of the air flow" and that, with specific reference to Johnson's Figures
2 and 4, "[t]here is no curved body shown in Johnson that turns the direction
of air flow." Appeal Br. 6-7; see also Reply Br. 2 (arguing that the body in
Johnson is straight).
The Specification discloses that "transitional body 16 ... is molded to
form complex curves that ease the transition of air from flowing in the main
duct to that flowing into the branch ducts" and that "[t]he complex curves
are created by an offset from the center line of one opening with the center
line of the other opening in the direction of the duct that it is being attached
4 For purposes of this appeal, we assume that claims 9 and 10 are intended
to depend from independent claim 1, or intervening claims dependent upon
independent claim 1, and that claims 16-20 are intended to depend from
independent claim 15, or intervening claims dependent upon claim 15.
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Application 13/965,423
to," wherein "[i]f viewing an x, y, z plane, the offset would be in the z
direction, with an opening in the x-plane and the other opening in they-
plane." Spec. ,r 1 7.
Although claim 15 does not require the curved body to change the
direction of airflow within the curved body, as argued by Appellant supra
(see Appeal Br. 13 (Claims App.) (wherein claim 15 merely recites "a
curved body")), both claims 1 and 15 require a curved body, and in view of
the Specification, we are persuaded by Appellant's argument that the claims
require the body itself to be curved, for example, such that the ends of the
body are not in alignment. In other words, the Examiner's interpretation of a
curved body reading on the straight or linear body of Johnson's fitting 11,
notwithstanding the circular cross-section of Johnson's fitting 11, is
unreasonably broad. Cf Claim 1, supra (specifically reciting "a circular
cross-section exit pipe receptor").
Accordingly, we do not sustain the Examiner's rejection of
independent claims 1 and 15, and claims 2, 4--10, and 16-20 depending
therefrom, under 35 U.S.C. § 102(b), as anticipated by Johnson.
Independent claim 11 and dependent claims 12-145
Appellant argues claims 11-14 as a group. We select claim 1 as
representative, with claims 12-14 standing or falling with claim 11. See 3 7
C.F.R. § 4I.37(c)(l)(iv). Appeal Br. 6-7; Reply Br. 2.
The Examiner finds, inter alia, that Johnson is capable of meeting the
limitations of claim 11 requiring a sealed fitting to conduct air flow to
5 For purposes of this appeal, we assume that claims 12-14 are intended to
depend from independent claim 11, or intervening claims dependent upon
independent claim 11.
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reduce air leakage. Ans. 10 ("[t]he fact that [the claimed] invention is
intended to convey air does not impose any structure limitation that
differentiates it from [Johnson's] invention" and "[t]herefore, [Johnson's]
invention meets the claim limitations").
Appellant argues that Johnson "has nothing to do with conveying air,
which is required in claim 11." Appeal Br. 6; see also Reply Br. 2 ("Air is
not a liquid.").
To anticipate, every element and limitation of the claimed invention
must be found in a single prior art reference, arranged as in the claim.
Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
2001 ). "[T]he patentability of apparatus or composition claims depends on
the claimed structure, not on the use or purpose of that structure." Catalina
Mktg. Int'!, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir.
2002). If a prior art structure is capable of performing the intended use as
recited in the preamble, then it meets the claim. See, e.g., In re Schreiber,
128 F.3d 1473, 1477 (Fed. Cir. 1997).
Appellant's argument does not apprise us of error in the Examiner's
finding that Johnson's invention is capable of conveying air, as required by
claim 1. Thus, Appellant does not apprise us of error in the Examiner's
determination that claim 11 reads on Johnson's water hose connecting
fitting. See, e.g., Johnson, Abstract.
Notably, claim 11 does not recite a curved body, and we decline to
attribute a curved structure to the "high efficiency fitting" recited in claim
11. See Appeal Br. 12 (Claims App.).
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Accordingly, we sustain the Examiner's rejection of independent
claim 11 under 35 U.S.C. § 102(b), as anticipated by Johnson, and claims
12-14 fall therewith.
DECISION
The Examiner's rejection of claims 8-10 and 12 under 35 U.S.C.
§ 112, second paragraph, is AFFIRMED, and we enter a NEW GROUND
OF REJECTION of claims 13, 14, and 16-20 under 35 U.S.C. § 112, second
paragraph.
The Examiner's rejection of claims 1, 2, 4--10, and 15-20 under
35 U.S.C. § 102(b) is REVERSED.
The Examiner's rejection of claims 11-14 under 35 U.S.C. § 102(b) is
AFFIRMED.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 4I.50(b) also provides:
When the Board enters such a non-final decision, the 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. Submit 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 prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
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Application 13/965,423
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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-IN-PART; 37 C.F.R. § 4I.50(b)
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