Ex Parte Lawyer et al

Patent Trial and Appeal Board

Jun 8, 2017

13591432 (P.T.A.B. Jun. 8, 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.
13/591,432 08/22/2012 Jerry D. Lawyer HISEN.008P1 1000
20995 7590 06/12/2017
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
EXAMINER
KIM, CHRISTOPHER S
ART UNIT PAPER NUMBER
3752
NOTIFICATION DATE DELIVERY MODE
06/12/2017 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):
jayna.cartee@knobbe.com
efiling @ knobbe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JERRY D. LAWYER and DONALD E. SMITH
Appeal 2016-000180
Application 13/591,432
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jerry D. Lawyer and Donald E. Smith (Appellants)1 appeal under
35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1—3 and 5—11
under 35 U.S.C. § 112, second paragraph, as indefinite. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and designate the affirmance as a NEW GROUND OF
REJECTION pursuant to 37 C.F.R. § 41.50(b).
1 According to Appellants, the real party in interest is Senninger Irrigation,
Inc. Br. 1.
Appeal 2016-000180
Application 13/591,432
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is the sole independent claim and is
illustrative of the claimed subject matter.
1. A sprinkler comprising:
a sprinkler housing having a housing passageway
therethrough having an inlet for connecting to a source of water
and an outlet therefrom, said outlet having a side window for
inserting a nozzle from the side of said housing passageway;
an auxiliary nozzle carrier having an angled flexible center
portion having two two end portions, one end portion being
attached to each end of said angled flexible center portion, and
each end portion having a nozzle mounted thereto, said angled
flexible center portion holding said two end portions in a
generally parallel plane to each other by a predetermined
distance, said angled flexible center portion being shaped to
allow flexing thereof and movement of one auxiliary nozzle
carrier end portion relatively to said sprinkler housing when
attached to said sprinkler housing, each said nozzle having a
nozzle passageway therethrough, and being shaped to fit through
said housing side window and axially aligned with said housing
passageway, said auxiliary nozzle carrier having latching means
for removably latching one end portion of said auxiliary nozzle
carrier to said sprinkler housing to allow said auxiliary nozzle
carrier angled flexible center portion and other end portion to
extend from said sprinkler housing to thereby allow said
auxiliary nozzle carrier angled flexible center portion to flex
relative to said sprinkler housing;
whereby said sprinkler auxiliary nozzle carrier angled
flexible center portion can have one said nozzle attached in said
sprinkler housing while flexibly holding said second nozzle
therein adjacent said sprinkler housing to absorb impact without
damaging said second nozzle.
DISCUSSION
The stated basis for the Examiner’s rejection is that the limitation “an
angled flexible center portion having two two end portions” renders claim 1,
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Application 13/591,432
and its dependent claims, indefinite because “[i]t is uncertain whether the
claim is limited to two end portions or four end portions.” Final Act. 2. The
Examiner explains that “[t]he claim requires two end portions, and it
requires two of those two end portions,” or, “[alternatively, the claim
requires four end portions.” Ans. 3.
Appellants argue that the Examiner’s rejection is “based on an
obvious typographical error.” Br. 3. According to Appellants, the claims
Amendment dated November 10, 2014, intended for claim 1 to recite that
the angled flexible center portion has “two end portions,” but misplaced
bracketing resulted in an extra “two.” See id. 4—5 (further noting that the
Examiner denied entry of correcting amendments submitted after the Final
Action).2 Appellants also argue that, regardless of the purported
typographical error, “the claim would still be clear to a person of ordinary
skill when reading the entire claim or when read in connection with the
[Specification or viewing the drawings.” Id. at 8. For example, Appellants
point to additional language in the claim reciting “each end portion” and
“said two end portions,” and assert that “[t]he claim is perfectly clear that
there are only two end portions.” Id. at 5; see also id. at 6 (explaining that
the Specification describes the auxiliary nozzle carrier as having only two
end portions (citing Spec., paras. 11, 12; Figs. 1—7)).
2 We note that an examiner’s decision not to enter an amendment after final
rejection is a matter that is reviewable by petition to the Director under
37 C.F.R. § 1.181. See In re Mindick, 371 F.2d 892, 894 (CCPA 1967)
(holding that the refusal of an examiner to enter an amendment of claims is
reviewable by petition under 37 C.F.R. § 1.181, and not by appeal to the
Board); see also 37 C.F.R. § 41.37(c)(2).
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Appeal 2016-000180
Application 13/591,432
We recognize Appellants’ position that the language “two two end
portions” simply includes an unintended typographical error and the claim
should be read as requiring only two end portions. Given the prosecution
history,3 the Specification, and the language of the claim as a whole, it is
reasonable to interpret the duplicate “two” as a mere typographical error
and, thus, read the claim as requiring only two end portions. However, we
agree with the Examiner (see Ans. 3) that “two two end portions” also could
be reasonably interpreted as requiring four ends. In other words, if one
infers a hyphen in the phrase (i.e., “two two-end portions”), the language
requires two portions, each having two ends (i.e., four ends total). As such,
the limitation “two two end portions” in claim 1 is amenable to more than
one plausible construction, rendering the metes and bounds of this limitation
unclear. See Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
(precedential) (“if a claim is amenable to two or more plausible claim
constructions, the USPTO is justified in requiring the applicant to more
precisely define the metes and bounds of the claimed invention by holding
the claim unpatentable under 35U.S.C. § 112, second paragraph, as
indefinite”).
Claim 1 further recites “one end portion being attached to each end of
said angled flexible center portion.” Br., Claims App. It is unclear what is
meant by one end portion being attached to each end of the angled flexible
center portion. The Specification describes that “[t]he nozzle carrier body
has two end portions spaced by a generally stepped or offset center portion,”
3 Appellants’ intent for claim 1 to require an “angled flexible center portion
having two end portions” is evident based on the proposed claims
Amendments filed December 8, 2014, and February 12, 1015, in which
Appellants attempted to remove one of the duplicate terms.
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Appeal 2016-000180
Application 13/591,432
and “[e]ach end portion has means for attaching a nozzle thereto.” Spec.,
para. 11. Figures 1—4 of the Specification appear to show the angled flexible
center portion (angled flexible area 13) as a single unitary piece having two
end portions (openings 11 and 12) to which nozzles 15 and 16 removably
attach. See also id., para. 22 (describing Figures 1 and 2). To the extent that
each end of the angled flexible center portion includes an end portion, the
end portions appear to be integrally-formed with, rather than attached to, the
angled flexible center portion. Notably, claim 1 positively recites end
portions, but not ends, of the angled flexible center portion. The recitation
of an end portion being attached to each end suggests that the angled flexible
center portion has ends, which are distinct from the end portions. However,
it is not sufficiently clear what element of Appellants’ disclosed structure
corresponds to the ends alluded to in claim 1. Moreover, in view of the
disclosure in Appellants’ Specification and drawings, it is unclear how one
end portion of the angled flexible center portion would be “attached to each
end of said angled flexible center portion.” Consequently, the claims are
indefinite because they do not reasonably apprise those of skill in the art of
the scope of the claimed invention. See In re Packard, 751 F.3d 1307, 1313
(Fed. Cir. 2014) (claims, when read in light of the specification, must
“reasonably apprise those skilled in the art both of the utilization and scope
of the invention” using language “as precise as the subject matter permits”).
Accordingly, we sustain the rejection of claims 1—3 and 5—11 under
35U.S.C. § 112, second paragraph, as indefinite. However, because the
basis of our conclusion expands upon that articulated by the Examiner, we
designate our affirmance as a new ground of rejection pursuant to 37 C.F.R.
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Application 13/591,432
§ 41.50(b) in order to provide Appellants with an opportunity to respond
thereto.
DECISION
The Examiner’s decision rejecting claims 1—3 and 5—11 is affirmed.
FINALITY OF DECISION
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 “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(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. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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Appeal 2016-000180
Application 13/591,432
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED; 37 C.F.R, $ 41.50(b)
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