Ex Parte Milka

Patent Trial and Appeal Board

Apr 26, 2016

11795666 (P.T.A.B. Apr. 26, 2016)

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.
11/795,666 07/19/2007 Anatoliy Dmytrovych Milka 12315-2 5704
7590 04/27/2016
Anatoliy Dmytrovych MILKA
Bobruiskaya Str., 46
Kharkov,, 61054
UKRAINE
EXAMINER
ADAMOS, THEODORE V
ART UNIT PAPER NUMBER
3635
MAIL DATE DELIVERY MODE
04/27/2016 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 ANATOLIY DMYTROVYCH MILKA
____________

Appeal 2013-0034361
Application 11/795,666
Technology Center 3600
____________

Before HUBERT C. LORIN, PHILIP J. HOFFMANN, and
ROBERT L. KINDER, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

STATEMENT OF THE CASE
Appellant filed a Request for Rehearing (“Req.”) on July 7, 2015, of
our Decision (“Decision” or “Dec.”) mailed April 3, 2015.2 In the Decision,
we reversed, pro forma, the Examiner’s rejection of claim 3 under 35 U.S.C.
§ 103(a) as unpatentable over Fredette (US 6,202,364 B1, iss. Mar. 20,
2001) and Anatoliy D. Milka, Linear bending of star-like pyramids, Verkin
Institute for Low Temperature Physics, 47, (2003), 805–810 Elsevier SAS

1 Appellant identifies the real party in interest as “GST.” Appeal Brief 2,
(filed July 27, 2012) (hereinafter “Br.”).
2 On March 1, 2016, the Office of Petitions mailed a decision granting
Appellant’s petition to revive the unintentionally-abandoned application.
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(received September 22, 2003), available at www.sciencedirect.com
(“Milka”). Dec. 4. Also, pursuant to 37 C.F.R. § 41.50(b), we entered a
new ground of rejection of claim 3 under 35 U.S.C. § 112, second
paragraph, as indefinite for failing to particularly point out and distinctly
claim the invention. Id. at 2–4.
In accordance with 37 C.F.R. § 41.52(a)(1), the Request for Rehearing
includes certain points, in particular, which Appellant believes the Board
misapprehended or overlooked in reaching its Decision to enter the new
ground of rejection. Based on our review of the Request and the record, we
grant-in-part Appellant’s Request, but we do not withdraw the new ground
of rejection under 35 U.S.C. § 112, second paragraph.

ANALYSIS
Initially, we note that although we reversed the Examiner’s
obviousness rejection of claim 3 in our Decision, we did so pro forma; i.e.,
as a matter of form. Dec. 4, 5. That is, we reversed the § 103 rejection
because the hypothetical person of ordinary skill in the art would have to
make speculative assumptions concerning the meaning of certain claim
language. Id. at 4. We did not reach the merits of the question of whether
the claimed subject would have been obvious over the cited prior art
combination to one of ordinary skill in the art. The merits of the rejection of
claim 3 as being obvious under § 103 over the combination of Fredette and
Milka still remains an open question. Our concern is with claim 3’s lack of
clarity from the perspective of one of ordinary skill in the art, in view of the
entire written description and developing prosecution history. Because of
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this concern, we are not in position to consider the merits of the § 103
rejection.
We think it important to observe that the Examiner did not include a
claim construction analysis as part of the determination to reject the claims
for obviousness. It would have been helpful in deciding this appeal had
various claim terms been construed under the broadest reasonable
interpretation standard from the start.   
Analysis begins with a key legal question—what is the invention
claimed? Courts are required to view the claimed invention as a
whole. 35 U.S.C. § 103. Claim interpretation, in light of the
[S]pecification, claim language, other claims, and prosecution
history, is a matter of law and will normally control the
remainder of the decisional process.
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567–68 (Fed. Cir.
1987) (emphasis omitted) (footnote omitted). As we stated in our Decision,
the terms “well-defined,” “large,” “soft,” and “slow” appear to
be terms of degree, and the Specification does not appear to
provide any standard to determine when loss of stability is soft
or slow, when continuous free form deformability is well-
defined, or when transversal deflection is large, and Appellant
does not provide evidence that the meaning of any of these terms
may have been ascertainable by one of ordinary skill in the art at
the time of invention.
Dec. 4. In our view, one skilled in the art would not understand the bounds
of the claim when read in light of the Specification. Upon further
prosecution, it is incumbent on the Examiner to reasonably broadly construe
relevant claim terms before making any patentability determination.
Turning to the merits of Appellant’s Request for Rehearing, we
reproduce below claim 3.
3. A model elementary flexor in a form of four-
angle star-like pyramid formed by thin elastic faces
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with hinge joints, having two symmetry planes
which intersect petals of flexor, wherein each face
in a projection of a middle polyhedron into a plane
of a boundary is mapped to a triangle whose
doubled intrinsic and extrinsic angles adjacent to
the boundary are equal to π/2-a and π/2+a,
respectively, for provide its well-defined
continuous free deformability inside the class of
polyhedral panels with a plane sliding of the
boundary and with a large transversal deflection,
which is caused by a non-rigid, either soft or slow,
loss of stability, characterised [sic] in that, each of
angles α, a third angle of the corresponding triangle,
is laid within the interval of (0,π/2), during which
the sizes in the plane and the height of the flexor are
general independent parameters.
Br., Claims App.
Appellant argues the new ground of rejection is in error because
“[c]laim 3 does not contain indefinite language.” Req. 2; see also id. at 2–6.
We are persuaded only as to the claim term “its” in relation to
“deformability.” In our Decision, we concluded that “[i]t is not understood
. . . whether [claim 3’s recitation of] ‘its’ deformability refers to the flexor,
the pyramid, the faces, or something else, and[,] thus the claim is” indefinite.
Dec. 4. Appellant contends that it is “clear[] that ‘its deformability’. . .
refers uniquely to the flexor, i.e., the possessive pronoun ‘its’ substitutes the
term ‘model elementary flexor.’” Req. 3. We have reviewed the
Specification and agree with Appellant that in light of the Specification it is
clear that the phrase “its deformability” refers to the flexor’s deformability.
See, e.g., Spec. 3, l. 16.
However, we are not persuaded as to error in finding that
the terms “well-defined,” “large,” “soft,” and “slow” appear to
be terms of degree, and the Specification does not appear to
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provide any standard to determine when loss of stability is soft
or slow, when continuous free form deformability is well-
defined, or when transversal deflection is large, and Appellant
does not provide evidence that the meaning of any of these terms
may have been ascertainable by one of ordinary skill in the art at
the time of invention.
Dec. 4; see Req. 4–6. In that regard, we note that although Appellant seeks
to establish that the claim terms “large,” “soft,” and “slow” are definite,
Appellant does not attempt to establish that “well-defined” is definite. See
Req. 5.
Nonetheless, Appellant argues that the claim recitation of “large”
deformations are not indefinite because one of ordinary skill would have
understood that large deformations are “deformations comparable to sizes of
the pyramid.” Req. 5. But that does not help matters because whether a
particular deformation would be considered “comparable” to the size of the
pyramid would also be unclear to one of ordinary skill. We have a similar
problem with the arguments as to when one of ordinary skill would consider
a particular loss of stability to be “soft” or “slow.” Id.
We also stated that “it is not clear to what the statements ‘the class of
polyhedral panels,’ ‘a plane sliding of the boundary,’ and ‘the sizes in the
plane,’ among other statements, refer.” Dec. 4. Appellant’s arguments in
that regard do not make these phrases any more clear. In response to the
new ground of rejection, Appellant argues that this recitation is understood
to mean that “[a] closed polygon, which is the boundary of the flexor, moves
along the plane that contains this boundary, and the segments of the polygon
move like solid rods (slide).” Req. 4. We note, however, that Appellant
does not point to any evidence in the record, or provide a technical line of
reasoning, sufficient to persuade us that one of ordinary skill would have
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understood that the claim recitation refers to movement of polygon segments
“like solid rods,” for example.
As set forth by our reviewing court, the Court of Appeals for the
Federal Circuit:
It makes good sense, for definiteness and clarity as for other
validity requirements, for the USPTO initially to reject claims
based on a well-founded prima facie case of lack of clarity (in its
several forms) based on the perspective of one of ordinary skill
in the art in view of the entire written description and developing
prosecution history. Then, if the applicant does not adequately
respond to that prima facie case, to confirm that rejection on the
substantive basis of having failed to meet the requirements of
§ 112(b).
In re Packard, 751 F.3d 1307, 1312 (Fed. Cir. 2014). As we stated, upon
further prosecution, the claim should first be properly construed before a
rejection is made based on anticipation or obviousness. Only then should
the claimed subject matter be subject to a patentability determination.

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DECISION
We have considered the arguments raised by Appellant in the
Request. We grant the Request to the extent that we have reconsidered our
Decision. We further grant the Request to the extent that we acknowledge
that the claim term “its” does not render claim 3 indefinite. Inasmuch as we
do not find Appellant’s arguments persuasive to show error in our entering a
new ground of rejection of claim 3 as indefinite, we deny the Request with
respect to making any other changes to our Decision.

REHEARING GRANTED-IN-PART