Ex Parte Moore

Patent Trials and Appeals Board

Jan 18, 2019

12863182 - (D) (P.T.A.B. Jan. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/863, 182 07/08/2011
27885 7590
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
01/18/2019
FIRST NAMED INVENTOR
Simon Garry Moore
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.
PUKU 200005US01 4237
EXAMINER
LINFORD, JAMES ALBERT
ART UNIT PAPER NUMBER
3679
MAIL DATE DELIVERY MODE
01/18/2019 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 SIMON GARRY MOORE
Appeal2018-004825
Application 12/863,182
Technology Center 3600
Before STEFAN STAICOVICI, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Simon Garry Moore ("Appellant") appeals under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 1-3, 8, 9, 12-17, 34--41, 43,
and 44. 1 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 DMOTM Limited is identified as the real party in interest. Appeal Br. 1.
Appeal2018-004825
Application 12/863,182
THE CLAIMED SUBJECT MATTER
The claims are directed to an adjustable connection mechanism for
connecting two or more shafts. Spec. 1:5. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A mechanism for connection of two or more shafts in an
adjustable position relative to one another, comprising
at least a first shaft having at least a portion which is a
rigid tube having an external surface with an outer diameter,
and
a second shaft having at least a portion which is a rigid
tube and which is hollow at least in a portion at a first end,
wherein a spring is anchored to the first end of the second
shaft,
the spring having an inner diameter of similar dimensions
to the outer diameter of the first shaft,
the spring configured such that when a force is applied to
the spring its inner diameter is greater than the outer diameter
of the first shaft enabling the second shaft to be moved over the
first shaft to a desired position relative to the first shaft, said
hollow portion of the second shaft receiving at least a portion of
said first shaft, and
when the force is no longer applied to the spring it is
biased to return to its original inner diameter to bear against the
external surface of the first shaft,
and wherein the mechanism includes
a second spring anchored to an end of the first shaft, the
second spring having an outer diameter of similar dimensions to
the hollow portion of the second shaft
to inhibit rotation of the shafts relative to one another
when in the desired position.
REJECTIONS
1. Claim 43 is rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
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Application 12/863,182
2. Claim 43 is rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite.
3. Claims 1-3, 8, 9, 12-17, 34, 35, 39--41, 43, and 44 are rejected
under 35 U.S.C. § I03(a) as being unpatentable over Woolldridge (US
809,880, issued Jan. 9, 1906) and Safarevich (US 6,293,594 Bl, issued Sept.
25, 2001.
4. Claims 36-38 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Woolldridge, Safarevich, and Moore (WO 2007/086757
Al), published Aug. 2, 2007.
DISCUSSION
Rejection 1
The Examiner finds that the limitation "the 'second spring is received
within the rigid tube portion of the second shaft[,]'" as recited in claim 43 is
not represented by the elected species of Figures 5a---6c. Final Act. 4.
According to the Examiner, for the elected species, "the second spring is
element 38 and the second shaft is element 36, thus, [the] second spring is
not received within the rigid tube portion of the second shaft, and therefore,
the issue of new matter appears to have been raised." Id.
Appellant argues that the limitation in question "is fully illustrated in
Figures 6( a }-6( c) ... a spring 3 7 associated with the first shaft is received
within a hollow rigid tube portion of the second shaft 36." Appeal Br. 6
( citing Spec. ,r 190). 2
2 Appellant refers to paragraph numbers of the U.S. Publication of the
present application (US 2011/0306438 Al, published Dec. 15, 2011).
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Application 12/863,182
The Examiner responds that because the Specification denotes
element 38 as "the second spring" and because spring 38 is shown in Figure
5(b) on second shaft 36, the second spring is not within the second shaft.
Ans. 6.
Although we appreciate the Examiner's position that the Specification
refers to spring 38 as "the second spring 38" (Spec. 38: 18)3, we understand
this one instance to be an inadvertent typographical error in that other
instances of "spring 3 8" require "the first shaft 3 5 to be inserted into the
interior of the spring 38 and second shaft 36" (Spec. 39:7-8) and "spring 38,
following its natural bias to return to its original diameter, forms a friction fit
against the external surface of the first shaft 35" (Spec. 39:16-17). Based on
what is depicted in Figures 5(a}-6( c ), particularly Figure 6(b ), it is apparent
that shaft 35 is the first shaft having second spring 37 and that shaft 36 is the
second shaft having first spring 38. Thus, we agree with Appellant that the
Drawings, as filed, illustrate a second spring received within the rigid tube
portion of the second shaft, as required by claim 43.
For these reasons, we do not sustain the Examiner's rejection under
35 U.S.C. § 112, first paragraph of claim 43 as failing to comply with the
written description requirement.
Rejection 2
The Examiner's basis for the rejection of claim 43 as indefinite is
based on the same findings noted above for Rejection 1. Final Act. 4--5. For
the same reasons stated above for Rejection 1, we also do not sustain the
Examiner's indefiniteness rejection of claim 43.
3 We refer to the Specification as filed July 15, 2010.
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Application 12/863,182
The Examiner also objected to the drawings with respect to the
subject matter of claim 43 under 37 C.F.R. § 1.83(a). Final Act. 2. In
particular, the Examiner objected to the drawings because "for the elected
species the second spring is element 38 and the second shaft is element 36,
there is no illustration which shows what is claimed." Id. Normally, an
objection is not an appealable matter. See In re Mindick, 371 F.2d 892, 894
(CCPA 1967). However, if our disposition of a rejection also disposes of an
issue in an objection, we may address the objection. See MPEP §1201. In
this case, we are reversing the Examiner's rejections under 35 U.S.C. § 112,
first and second paragraphs for failure to comply with the written description
requirement and for indefiniteness based on our finding that Appellant's
drawings show a second spring received within the rigid tube portion of the
second shaft, as required by claim 43. The Examiner's objection with
respect to the limitations of claim 43 is, thus, moot. 4
Rejection 3
The Examiner finds that W oolldridge discloses many of the features
of claim 1 including first and second shafts each having a spring anchored to
the shaft, but that neither of the shafts of W oolldridge includes a rigid
portion. Final Act. 6-7. The Examiner finds that Safarevich discloses a
spring anchored to a rigid tube, and considers that it would have been
obvious to one having ordinary skill in the art at the time the invention was
made to modify the shafts of W oolldridge to each have a portion which is a
4 The Examiner also objected to the drawings for failing to show the
limitations of claim 44. Final Act. 2. We do not reach this part of the
Examiner's objection to the drawings because our decision regarding the
Examiner's rejections does not address it, and, therefore, it is a petitionable
matter, not an appealable matter. In re Mindick, 371 F.2d at 894.
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Application 12/863,182
rigid tube with a spring anchored at an end thereof. Id. at 7. The Examiner
concludes that the modification would be
for the purpose of providing a means to form a handle to better
grip the device, or to aid in the prevention of getting ones hand
pinched in the coils during use of the device, or for providing a
device that increases the ability to apply force to the structure
without the force applying portion flexing under load.
Id. at 8.
Appellant argues, inter alia, that Safarevich is non-analogous art
because it is in a different field of endeavor and is not reasonably pertinent
to the particular problem with which the inventor is involved. Appeal Br. 8.
As to the field of endeavor, Appellant asserts that "the present invention is
directed to a mechanism for adjustedly connecting two shafts (such as golf
club shafts) while Safarevich is directed to pacemaker leads." Id. As to the
pertinence of Safarevich to the inventor's problem, Appellant submits that
although Safarevich has a shaft connected to a coiled member, "it is use of a
coiled member to connect two shafts that is the focus of the present
invention." Id. Appellant argues that the problem to be solved by the
claimed invention is to adjustably mate two shafts, whereas Safarevich "is
directed to pacemaker leads" and "[ w ]elding a coil to a shaft in a manner
that provides no adjustability ... is not Appellant's field of endeavor." Id.
According to Appellant, "Safarevich has nothing to do with adjustable
mating and it can provide no teaching relevant to Appellant's problem." Id.
The Examiner responds that "Safarevich is in the same field because
Safarevich is related to a shaft being connected to a coiled metal member,
similar to that of this instant application, emphasis added." Ans. 10.
According to the Examiner, Safarevich is "pertinent or addressing the same
issues/problem because such is related to a shaft member being connected to
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Application 12/863,182
a coiled member ( spring member) where the shaft is connecting to another
structure via a spring joint connection, similar to that of this instant
application, emphasis added." Id.
The analogous art test requires that a reference either be in the field of
the applicant's endeavor or reasonably pertinent to the problem with which
the inventor was concerned in order to rely on that reference as a basis for
the rejection. In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992).
References are selected as being reasonably pertinent to the problem based
on the judgment of a person having ordinary skill in the art. Id. ("[I]t is
necessary to consider 'the reality of the circumstances,' --in other words,
common sense--in deciding in which fields a person of ordinary skill would
reasonably be expected to look for a solution to the problem facing the
inventor." (quoting In re Wood, 599 F.2d 1032, 1036 (CCPA1979))).
Furthermore, the scope of analogous art is to be construed broadly. Wyers v.
Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) ("The Supreme
Court's decision in KSR International Co. v. Teleflex, Inc., 550 U.S. 398
(2007), directs us to construe the scope of analogous art broadly, stating that
'familiar items may have obvious uses beyond their primary purposes, and a
person of ordinary skill often will be able to fit the teachings of multiple
patents together like pieces of a puzzle.' Id. at 402 ( emphasis added).").
We do not agree with the Examiner that Safarevich is in Appellant's
field of endeavor or that it is reasonably pertinent to the problem solved by
the claimed invention. As Appellant correctly notes, Safarevich' s "invention
relates generally to lead assemblies for connecting implantable medical
devices ... namely, cardiac pacemakers." Safarevich 1:5-21. Although we
appreciate that Safarevich connects wound member 36 to shaft 37 (see
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Application 12/863,182
Safarevich 7:8-9; Fig. 4), even if one of ordinary skill in the art were to
equate a coiled wire strand (Safarevich 7:11-12) that electrically connects a
pacemaker to heart tissue (Safarevich 1 :25--41) with a spring, Appellant
adjustably connects two shafts to each other, each having a spring. See
Spec. Figs. 5(a}-6(c). We agree with Appellant that Safarevich's depiction
of one shaft connected to a coiled wire in Figure 4 is insufficient to support a
conclusion that Safarevich is in Appellant's field of endeavor of connectors
that connect two shafts to each other.
As to whether Safarevich is reasonably pertinent to the problem with
which Appellant was concerned, the claimed invention seeks to "improve
the reliability of connection devices," because prior art devices are subject to
failure by prematurely separating when subject to vibration. Spec. 1:12-18.
To address this problem, Appellant invented a mechanism that resists
separation forces acting on the two shafts, but the two shafts are still able to
be separated so that the mechanism is an adjustable connection mechanism.
See Spec. Figs. 5(a}-5(c) (disengaged) and Figs. 6(a}-6(c) (engaged). As
discussed above, Safarevich is not directed to connecting two shafts. Nor is
Safarevich intended to be separable, or adjustable. Rather, Safarevich
provides a permanent connection between coiled wire 36 and shaft 37 by
welding. See Appeal Br. 9. Specifically, Safarevich uses a thermal fusing
process to form "weld joint 64 between wound element 36 and the transition
component 50" and to form spot welds 66 at "the joint between the transition
component and the mating connector 37." Safarevich 7:25-53. Given that
Safarevich does not connect two shafts and does not have an adjustable
connection, we agree with Appellant that Safarevich is not reasonably
pertinent to improving an adjustable connection between two shafts. We,
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thus, do not sustain the Examiner's rejection of claims 1-3, 8, 9, 12-17, 34,
35, 39--41, 43, and 44 as unpatentable over Woolldridge and Safarevich
because we do not agree with the Examiner that Safarevich is analogous art
to the claimed invention.
Rejection 4
Claims 36, 37, and 38 depend from claims 1, 8, and 13, respectively.
Appeal Br. 20 (Claims App.). The Examiner does not rely on the disclosure
of Moore in any manner that would remedy the deficiencies in the rejection
of claims 1, 8, and 13 discussed above based on W oolldridge and
Safarevich. For the same reasons, we do not sustain the rejection of claims
36-38 as unpatentable over Woolldridge, Safarevich, and Moore.
DECISION
The Examiner's decision to reject claim 43 as failing to comply with
the written description requirement, and as being indefinite, is reversed.
The Examiner's decision to reject claims 1-3, 8, 9, 12-17, 34--41, 43,
and 44 as unpatentable is reversed.
REVERSED
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