Ex Parte LeBlanc et al

Patent Trials and Appeals BoardJul 21, 2014

12000619 - (D) (P.T.A.B. Jul. 21, 2014)

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. 12/000,619 12/14/2007 Ronald LeBlanc 015766-0005 5053 25243 7590 07/21/2014 KELLEY DRYE & WARREN LLP 3050 K STREET, NW SUITE 400 WASHINGTON, DC 20007 EXAMINER ROST, ANDREW J ART UNIT PAPER NUMBER 3753 MAIL DATE DELIVERY MODE 07/21/2014 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 RONALD LEBLANC and ALFRED BABINEAU ____________________ Appeal 2012-006175 Application 12/000,619 Technology Center 3700 ____________________ Before: STEFAN STAICOVICI, ANNETTE R. REIMERS, and JILL D. HILL, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Ronald LeBlanc and Alfred Babineau (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1–5. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2012-006175 Application 12/000,619 2 Claimed Subject Matter Independent claim 1, reproduced below, represents the claimed subject matter. 1. A device for locking a valve having an integrated stopper on the valve body and a valve handle with a locking hole in an open and a closed position, said valve handle being adapted to pivot about a central valve post to rotate the valve between the open and closed positions, said device comprising: a rigid body having a central portion and first and second arms extending outward from the central portion; a first hole provided in the first arm such that said first hole registers with the locking hole in the valve handle when the first arm and the valve handle are aligned to place the valve in the open position; a second hole provided in the second arm such that said second hole registers with the locking hole in the valve handle when the second arm and the valve handle are aligned to place the valve in the closed position; a third hole provided in the central portion of the rigid body, said third hole being adapted to receive the central valve post; and a notch provided in the central portion of the rigid body, said notch being sized to securely receive the integrated stopper such that the rigid body is substantially prevented from rotating in any direction in the event that a lateral force is applied to the rigid body. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Clade US 2,271,475 Jan. 27, 1942 Appeal 2012-006175 Application 12/000,619 3 REJECTIONS Claim 5 stands rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Ans. 4. Claim 5 stands rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. Id. at 4-5. Claim 5 stands rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Id. at 5. Claims 1–5 stand rejected under 35 U.S.C. § 102(b) as anticipated by Clade. Id. at 6. OPINION Rejection of Claim 5 under 35 U.S.C. § 112, ¶¶ 1 and 2 Claim 5, as amended, recites “horizontal axes of portions of the first and second arms are inclined relative to a horizontal axis of the central portion of the rigid body.” Claims App’x. The Examiner finds that a horizontal axis is a single axis defined relative to the horizon, so that “it is unclear as to how a horizontal axis can be inclined relative to another horizontal axis since both of the horizontal axes would be parallel to the horizon and thus, each other,” and that “it is unclear as to what applicant is referring to as a ‘horizontal axis’ since, by definition, a horizontal axis is parallel to the horizon.” Ans. 3–6. Thus, according to the Examiner, “[i]t is unclear how there can be multiple horizontal axes.” Ans. 5. The Examiner also finds that “[i]t is unclear as to the support in the originally filed disclosure as for the horizontal axis of the first and second arms to be inclined relative to the horizontal axis [of the] central portion of the rigid body.” Ans. 4. Appeal 2012-006175 Application 12/000,619 4 Appellants argue that the “horizontal axis” recited in claim 1 “is also commonly known to one reasonably skilled in the art as the x-axis of a two- dimensional Cartesian coordinate system or one of the three axes in a three- dimensional Cartesian coordinate system.” App. Br. 19 (citing The American Heritage Dictionary of the English Language (Houghton Mifflin Company 4th Ed. 2009) (defining the x-axis as 1. The horizontal axis of a two-dimensional Cartesian coordinate system. 2. One of three axes in a three-dimensional Cartesian coordinate system.)) Appellants also argue that “[i]t is also commonly known to one reasonably skilled in the art that if the horizontal axis or the x-axis of a portion of a rigid body is inclined with respect to the center of the rigid body as illustrated in Figures 1A, 1 B, and 3, then the rigid body would have bends, such as, the bends 312 on the valve handle 300 and the valve locking device 100.” App. Br. 20. We are not persuaded by Appellants’ arguments. Even if the horizontal axis can be defined as an axis in a Cartesian coordinate system, the rigid body exists in a single coordinate system and therefore it is unclear as to how a horizontal axis can be inclined relative to another horizontal axis within a single coordinate system when both the origin and the plane of each horizontal axis is not defined in such a way as to reasonably convey to one skilled in the relevant art that the inventors had possession of the claimed invention. We therefore sustain the rejection of claim 5 under 35 U.S.C. § 112, ¶¶ 1 and 2. Appeal 2012-006175 Application 12/000,619 5 Rejection of Claims 1-5 under 35 U.S.C. § 102(b) Claims 1–4 Appellants argue claims 1–4 as a group. App. Br. 15. We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claims 2–4 stand or fall with claim 1. The Examiner finds that Clade teaches, among other things, a notch (40, 42) provided in the central portion of the rigid body wherein the notch is sized to securely receive the integrated stopper such that the rigid body is substantially prevented from rotating in any direction in the event that a lateral force is applied to the rigid body. Ans. 6. Appellants allege that Clade’s slots 40, 42 each extend through an arc of approximately 45 degrees “such that the position of the lock plate B relative to the valve may be varied by approximately 45 degrees,” and that the Examiner therefore erred in finding that Clade’s slots 40, 42 are “sized to securely receive the stopper [44] such that the rigid body is substantially prevented from rotating” as recited by claim 1. App. Br. 11-12 (citing Clade, col. 2, ll. 33-41). However, although Clade teaches that the position of lock plate B may be varied by approximately 45 degrees relative to the valve, Clade’s allowance of varied lock plate positioning does not necessarily lead to a conclusion that Clade’s lock plate B will rotate relative to the valve in use, once the lock plate and wrench have been installed on the valve. Indeed, contrary to Appellants’ argument, Clade teaches that varying the position of the lock plate B relative to the valve allows variance of the wrench handle sweep (col. 2, l. 60 – col. 3, l. 5), while still allowing the lock plate slots 40, 42 to selectively engage “with said stop [44] whereby said lock plate is restrained against rotation relative to the valve casing” (col. 4, Appeal 2012-006175 Application 12/000,619 6 ll. 66-70). We therefore agree with the Examiner’s findings and sustain the rejection of claims 1-4 under 35 U.S.C. § 102(b) as anticipated by Clade. Claim 5 Because we determine that claim 5 is indefinite, we reverse the prior art rejection of claim 5, as analysis would be based on a speculative interpretation of the meaning of the claim. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970); In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) (determinations as to obviousness cannot be made for indefinite claims). DECISION We AFFIRM the rejection of claim 5 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. We AFFIRM the rejection of claim 5 under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. We AFFIRM the rejection of claim 5 under 35 U.S.C. § 112, second paragraph, as indefinite. We AFFIRM the rejection of claims 1–4 under 35 U.S.C. § 102(b) as anticipated by Clade. We REVERSE the rejection of claim 5 under 35 U.S.C. § 102(b) as anticipated by Clade. AFFIRMED Klh