Ex Parte Miller

Patent Trials and Appeals BoardJan 25, 2019

14313969 - (D) (P.T.A.B. Jan. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/313,969 06/24/2014 Keith Alan Miller 36787 7590 01/29/2019 BL YNN L. SHIDELER THE BLK LAW GROUP 3500 BROKKTREE ROAD SUITE 200 WEXFORD, PA 15090 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. FCA-0701CIP2 2433 EXAMINER KUHFUSS,ZACHARYL ART UNIT PAPER NUMBER 3617 NOTIFICATION DATE DELIVERY MODE 01/29/2019 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): patents@BLKLawGroup.com cbelleci@BLKLawGroup.com blynn@BLKLawGroup.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KEITH ALAN MILLER Appeal2018-002743 1 Application 14/313,9692 Technology Center 3600 Before HUBERT C. LORIN, NINA L. MEDLOCK, and BRADLEY B. BAY AT, Administrative Patent Judges. BAY AT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. Â§ 134(a) from the Examiner's final decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. 1 Our Decision references Appellant's Appeal Brief ("App. Br.," filed July 13, 2017) and Reply Brief ("Reply Br.," filed January 16, 2018), the Examiner's Answer ("Ans.," mailed November 16, 2017), and Final Office Action ("Final Act.," mailed December 13, 2016). 2 Appellant identifies "JAC Operations Inc." as the real party in interest. (App. Br. 3). Appeal2018-002743 Application 14/313,969 THE INVENTION Claim 1, reproduced below with added emphasis, is illustrative of the claims on appeal. 1. A railroad double stack container well car comprising: a plurality of spaced trucks; at least one railcar body supported on a pair of the trucks, each body comprising a pair of spaced end structures, each end structure supported on one truck, and a well structure extending between the end structures, wherein the well structure comprises (i) a pair of top chord members extending between the end structures; (ii) a pair of side sills extending between the end structures; (iii) a pair of end chords extending between the side sills, one at each end of the well structure; (iv) four corner container support members, each secured to one end chord and one side sill at four corners of the well structure and each having a lower planar load supporting structure, wherein each support member is a casting and each lower planar load supporting structure extending inwardly beyond the associated end chord and side sill; and (v) a plurality of side truss members extending between one side sill and one top chord on each side. (App. Br. 24 (Claims Appendix)). 2 Appeal2018-002743 Application 14/313,969 THE REJECTIONS The following rejections are before us for review: I. Claims 1-17 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Tylisz et al. (US 5,085,152, iss. Feb. 4, 1992) ("Tylisz") and Forbes (US 6,584,912 B2, iss. July 1, 2003). 3 II. Claims 1-20 are rejected under non-statutory double patenting as being unpatentable over claims 1-20 of Miller (US 7,954,437 B2, iss. June 7, 2011) and Tylisz. ANALYSIS Rejection I In rejecting claim 1, the Examiner finds that comer reinforcement members 111 of Tylisz meet the claimed "four comer container support members ... each having a lower planar load supporting structure." (Final Act. 6). According to the Examiner, "Tylisz does not specifically identify the comer container support member 111 as a 'lower planar load supporting structure,' but the planar bottom structure of comer reinforcing member 111 can be broadly interpreted as a 'lower planar load supporting structure."' (Id. at 7). The Examiner explains that [c]omer reinforcing member 111 is a structure which helps "support" the load by reinforcing other members, and it is substantially "planar." The claims do not recite that the container makes contact with the "lower planar load supporting structure", nor do the claims recite that this structure is a square, raised surface. 3 Claims 18-20 are subject to a non-statutory double patenting rejection, but are otherwise considered allowable over the prior art of record. Final Act. 10. 3 Appeal2018-002743 Application 14/313,969 (Id. at 11; see also Ans. 4--5). Appellant argues that Tylisz does not disclose "four comer container support members" as called for in claim 1. (App. Br. 10-18). According to Appellant, "comer reinforcing members 111 [ of Tylisz] clearly do not support the containers and do not teach or suggest the planar load supporting structure." (Id. at 13). Responding to Appellant's arguments in the Answer, the Examiner states: The broadest reasonable interpretation of the "comer container support members" may include either Tylisz' s comer reinforcing members 111 or Tylisz's container support members 120. Both of these members provide support and are located near the comer of the container ( container support members 120 are located on beams 90). The claim language does not require that the container makes contact with the "lower planar load supporting structure." Thus, the Examiner's interpretation of Tylisz' s comer reinforcing members 111 as the "comer container support members" is reasonable. Ans. 5. During examination, claims are to be given their broadest reasonable interpretation consistent with the specification, and the language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) ( citations omitted). In interpreting claim language, we apply the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the specification. This means that the words of the claim must be given their plain meaning unless the plain meaning is inconsistent 4 Appeal2018-002743 Application 14/313,969 with the specification. In re Zletz, 893 F.2d 319,321 (Fed. Cir. 1989). And "[ w ]hen the applicant states the meaning that the claim terms are intended to have, the claims are examined with that meaning, in order to achieve a complete exploration of the applicant's invention and its relation to the prior art." Id. Here, the plain meaning of "container support member" is a member that supports a container. This plain meaning is consistent with Appellant's disclosure. See, e.g., Spec. ,r 37 ("Each comer container support member is a steel casting that is positioned to support a container therein."), ,r 39 ("Each center container support member is a steel casting that is positioned to support containers therein."). We agree that the Examiner's interpretation is unreasonably broad in light of the plain meaning of the claim language and Appellant's corresponding disclosure in the Specification. Under the Examiner's interpretation, any part of a railroad car that "helps" support a load by reinforcing other members is a "container support member," regardless of its position or function. Although the Examiner is correct that the claim does not require "contact" with a container (Ans. 5), we do not see how that alters the plain meaning of the term "container support." The Examiner's unreasonably broad interpretation of the claim language appears to be focused on the term "support" in a vacuum instead of each of the claim elements as recited within the context of the claim as a whole, which defines the structural configuration of the railroad car. Because the Examiner's finding in Tylisz relies upon an interpretation that is inconsistent with the plain language of claim 1, we are persuaded of Examiner error. As Appellant points out (App. Br. 13), there is no evidence that comer reinforcing members 111 of Tylisz support containers. Tylisz 5 Appeal2018-002743 Application 14/313,969 discloses that "[t]he comer reinforcement member 111 connects the end beam 39 between the side walls 27 and 28 generally and specifically interconnects the members at the side sills 69." (Tylisz col. 3, 11. 19-22). Each comer reinforcing member 111 is also referred to as a "comer brace 111." (Id. at col. 4, 1. 37). Although the Examiner is correct (Ans. 4) that comer braces 111 are located in the comers of the car in Tylisz, the Examiner does not direct us to any evidence that Tylisz's comer braces 111 are positioned to support a container, as required by claim 1. To the extent that the Examiner alternatively relies on container support 120 of Tylisz to meet this disputed limitation (Ans. 5), the Examiner does not provide sufficient analysis to support the alternative position. For example, the Examiner does not explain how container support 120 of Tylisz is "secured to one end chord and one side sill," as required by claim 1. In view of the forgoing, we do not sustain the rejection of independent claim 1. For the same reasons, we also do not sustain the rejection of dependent claims 2-17. Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims are nonobvious if the independent claims from which they depend are nonobvious"). Rejection II Rejection II relies on the same deficient finding in Tylisz discussed above. (Final Act. 4--5; see also Ans. 7). Independent claim 18 contains a similar limitation as claim 1 (App. Br. 27 (Claims Appendix)). For the same reasons discussed above with respect to the obviousness rejection of independent claim 1, we do not sustain the rejection of claims 1-20 on the ground of non-statutory double patenting. 6 Appeal2018-002743 Application 14/313,969 DECISION The Examiner's decision to reject claims 1-17 under 35 U.S.C. Â§ 103(a) is reversed. The Examiner's decision to reject claims 1-20 under non-statutory double patenting is reversed. REVERSED 7