Ex Parte Kelly

Patent Trial and Appeal BoardAug 18, 2014

10737087 (P.T.A.B. Aug. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte THOMAS L. KELLY ________________ Appeal 2012-007263 Application 10/737,087 Technology Center 3600 ________________ Before STEFAN STAICOVICI, CHARLES N. GREENHUT, and MICHAEL L. HOELTER, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from a final rejection of claims 9, 21, and 22. App. Br. 4. Claims 1‒8 and 10‒20 have been cancelled. App. Br. 24, 25. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE CLAIMED SUBJECT MATTER The disclosed subject matter pertains to a “washer having parallel edges bent up like the edges of a cowboy hat brim” for securing metal roof Appeal 2012-007263 Application 10/737,087 2 decking. Spec. paras. 1 and 3. Independent method claim 9 is illustrative of the claims on appeal and is reproduced below: Claim 9. A method for fastening a corrugated metal roof deck comprising: depositing a washer consisting of an: expanse of metal material having a circular outer periphery if rendered flat with a first surface and a second surface remaining substantially the same distance from each other throughout the expanse of the washer; a single opening in the expanse of material of the washer dimensioned to closely receive a fastener therethrough, said single opening being defined by a flat area of the washer, a relatively upper surface of the flat area running substantially parallel to a relatively lower surface of the flat area; two bent areas disposed out of contact with each other, said two bent areas immediately adjoining and radially outwardly disposed of the flat area, the two bent areas disposing both the first and second surface of the washer out of plane with the flat area of the washer such that extended planes of said two bent areas intersect said plane of said flat area, said two bent area causing said washer to substantially nest with, and be used in conjunction with corrugations of the corrugated metal roof deck, wherein an entire major surface of the entire washer is configured to lie flush against of the corrugated metal roof deck; driving said fastener through a type B corrugated metal roof deck into a structural joist; orienting said washer complementarily to said roof deck such that said bent areas of the washer extend away from floors of the corrugations along and in contact with trough walls of the corrugations; and securing said washer and roof deck by tightening said fastener against the structural underlying joist. Appeal 2012-007263 Application 10/737,087 3 THE REJECTIONS ON APPEAL Claims 9, 21, and 22 have been rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Ans. 6. Claims 9, 21, and 22 have been 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 applicant regards as the invention. Ans. 7. ANALYSIS The rejection of claims 9, 21, and 22 as failing to comply with the written description requirement Each of independent claims 9, 21, and 22 recite the limitation “of the ‘extended planes of said two bent areas.’” The Examiner finds that this limitation “impl[ies] that the bent areas are planar,” but that “from the original specification and the original drawings, the bent areas are curved and have no planar feature.” Ans. 6, 7. Appellant disagrees. App. Br. 18; Reply Br. 3. The Examiner references the “original drawings” as disclosing a curved bent area and Appellant does not dispute this. Ans. 7. However, Appellant contends that in the original specification there is a disclosure of a washer shape that “closely approximates a shape of a trough 32 (Figure 3) in a corrugated metal deck 34 (such as a type “B” corrugated metal deck or other corrugated material).” App. Br. 18 referencing Spec. para. 11; see also Reply Br. 3. Appellant contends that a “curved deck is representative of the ‘or other corrugated material’ recited in paragraph 0011” but “does not represent any suggestion by Applicant that type ‘B’ corrugated roof decks include curved sidewalls.” App. Br. 18. This is because, according to Appeal 2012-007263 Application 10/737,087 4 Appellant, it is “well known in the art [that] type ‘B’ corrugated roof decks include bent areas (i.e. trough walls) with extended planes” (i.e., planar, not curved, sidewalls). App. Br. 18. “Accordingly, [Appellant] respectfully describes both roof decks including the well known bent areas via recitation of type ‘B’ corrugated roof decks, and roof decks including curved troughs via recitation of ‘or other corrugated material’ and [original] Figure 3.” App. Br. 18. Appellant also provides “[e]vidence of type ‘B’ corrugated roof decks including such a shape now and at the time of Applicant’s invention.” App. Br. 19. The Examiner finds that Appellant “supplied a few websites describing the type ‘B’ corrugated metal deck. It is a deck that has planar walls instead of the curved walls shown in figure 3 of the original specification.” Ans. 14 (emphasis added); see also Ans. 7. Despite this understanding of the planar nature of a type “B” deck, the Examiner still maintains a § 112, first paragraph rejection by focusing on the description, in Appellant’s Specification, of this washer resembling “a cowboy hat brim.” Spec. para. 11; see also Ans. 8‒17. The Examiner finds that “one of ordinary skill in the art can only conclude that the invention is directed to a washer having two bent areas extending from a planar central area, wherein the bent areas are in the shape of a curved brim of a cowboy hat.” Ans. 9. Because the Examiner acknowledges that “type ‘B’” decking is planer (see Ans. 7, 14), and because Appellant’s Specification describes a washer that “closely approximates” the shape of a “type ‘B’” deck, we are not persuaded that one skilled in the art at the time of the invention would fail to understand that Appellant’s Specification also describes a washer that has a Appeal 2012-007263 Application 10/737,087 5 planar bent area. We reverse the Examiner’s rejection of claims 9, 21, and 22 as failing to comply with the written description requirement. The rejection of claims 9, 21, and 22 as being indefinite The Examiner also rejects each of independent claims 9, 21, and 22 for being indefinite under § 112, second paragraph because “[a]ll three claims have been amended to include the limitation that the corrugated metal roof deck is a ‘type B’ corrugated metal roof deck.” Ans. 7. The Examiner finds [t]his limitation, ‘type B’, is indefinite. The scope of the term is not fixed and can change over time, i.e., the definition of the ‘type B corrugated metal roof deck’ can mean different things in the future and in the past, and it can also mean different things in different states or countries. The metes and bounds of the term ‘type B’ cannot be determined. Ans. 7. Appellant disagrees and references Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc) for stating “the ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” App. Br. 21 (additional citations omitted); see also Reply Br. 2. “Accordingly, the Examiner's allegation that the meaning could change over time is irrelevant, as the meaning ‘at the time of invention’ determines plain meaning.” App. Br. 21; see also Reply Br. 3. The Examiner seems to believe that because a term “is not fixed and can change over time” that this is a sufficient basis for a finding of indefiniteness. Ans. 7; see also Ans. 8. Here, Appellant provided extrinsic Appeal 2012-007263 Application 10/737,087 6 evidence of the meaning of the claim term “type ‘B’” “at the time of [Appellant’s] invention” which the Examiner does not dispute. App. Br. 19, 21. In fact, the Examiner specifically expresses an understanding of the planar nature of a type “B” deck which would seemingly belie any finding by the Examiner that the planar nature of a type “B” deck is indefinite. Ans. 7, 14. Even if the definition of the term “type B” deck should change over time, the meaning of the term as it would have been understood by one having ordinary skill in the art at the time of the invention controls. In other words, should the definition of the term “type B” deck change over time, the scope of the claims remains tied to the definition in effect at the time the application was filed. Accordingly, just because, over time, the meaning of a term may change, we are not persuaded that the meaning of a type “B” deck, as understood at the time of invention, renders claims 9, 20, and 21 indefinite or otherwise warrants the affirmance of the Examiner’s rejection. As such, we reverse the Examiner’s rejection of claims 9, 20, and 21 as being indefinite. DECISION The Examiner’s rejections of claims 9, 21, and 22 are reversed. REVERSED Klh