Ex Parte Oesch et al

Patent Trial and Appeal BoardMar 6, 2015

10592207 (P.T.A.B. Mar. 6, 2015)

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. 10/592,207 06/25/2008 Marc Oesch 10139/09202 2777 76960 7590 03/09/2015 Fay Kaplun & Marcin, LLP 150 Broadway, suite 702 New York, NY 10038 EXAMINER AMIRI, NAHID ART UNIT PAPER NUMBER 3679 MAIL DATE DELIVERY MODE 03/09/2015 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 MARC OESCH and ANDREAS LANZ ____________ Appeal 2013-002330 Application 10/592,207 Technology Center 3600 ____________ Before LINDA E. HORNER, MICHAEL L. HOELTER, and ERIC C. JESCHKE, Administrative Patent Judges. JESCHKE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from a final rejection of claims 16–35. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER The disclosed subject matter “relates to the mutual positioning of longitudinal building components . . . .” Spec., Abstract. Independent claim 30, shown below with certain language in italics, is representative of the claims on appeal: Appeal 2013-002330 Application 10/592,207 2 30. A clamp for securing longitudinal elements comprising: a substantially S-shaped clamp body including three clamping arms defining two diametrically opposed clamp openings for accommodating the longitudinal building elements, and a borehole traversing the three clamping arms along a first axis, wherein elastic deformation of the clamp body permits constriction and expansion of the clamp openings. Appeal Br. 23–24 (Claims App.) (emphasis added). EVIDENCE RELIED ON BY THE EXAMINER Roth US 2,651,026 Sept. 1, 1953 Riead US 4,426,805 Jan. 24, 1984 Babb US 4,526,023 July 2, 1985 Dobrovolny ’899 US 5,727,899 Mar. 17, 1998 Dobrovolny ’046 US 5,792,046 Aug. 11, 1998 Biller US 7,159,626 B2 Jan. 9, 2007 REJECTIONS ON APPEAL 1. Claim 30 is rejected under 35 U.S.C. § 102(b) as anticipated by Roth. 2. Claims 31 and 32 are rejected under 35 U.S.C. § 103(a) as unpatentable over Roth and Biller. 3. Claim 33 is rejected under 35 U.S.C. § 103(a) as unpatentable over Roth and Babb. 4. Claim 34 is rejected under 35 U.S.C. § 103(a) as unpatentable over Roth and Dobrovolny ’899. Appeal 2013-002330 Application 10/592,207 3 5. Claims 16, 19–23, and 35 are rejected under 35 U.S.C. § 103(a) as unpatentable over Dobrovolny ’899 and Roth. 6. Claims 17 and 18 are rejected under 35 U.S.C. § 103(a) as unpatentable over Dobrovolny ’899, Roth, and Biller. 7. Claim 24 is rejected under 35 U.S.C. § 103(a) as unpatentable over Dobrovolny ’899, Roth, and Babb. 8. Claims 16, 19, 21, 25, 27–29, and 35 are rejected under 35 U.S.C. § 103(a) as unpatentable over Dobrovolny ’046 and Roth. 9. Claim 26 is rejected under 35 U.S.C. § 103(a) as unpatentable over Dobrovolny ’046, Roth, and Riead. ANALYSIS Rejection 1 – The rejection of claim 30 under 35 U.S.C. § 102(b) A. Appellants’ Positions Appellants assert that Roth “does not disclose or suggest ‘three clamping arms defining two diametrically opposed clamp openings,’ as recited in claim 30.” Appeal Br. 5. According to Appellants, the phrase “diametrically opposed” “requires that the [clamp] openings be aligned.” Id. at 6. In support of this position, Appellants provide two definitions of the term “diametric”: (1) “of, pertaining to, or along a diameter” and (2) “in direct opposition; being at opposite extremes.” Id. (quoting Random House Dictionary (Random House, Inc. 2012)). Appellants contend that, under both definitions, claim 30 requires “that the [clamp] openings be aligned with another, in particular, directly opposite to each other at end points of a common diameter.” Appeal Br. 6. Appellants assert that bends 17a and 17b Appeal 2013-002330 Application 10/592,207 4 in Figure 1 of Roth have openings that cannot be diametrically opposed to each other “due to the lateral separation.” Id. at 7. In response to a statement in an Advisory Action in which the Examiner allegedly “questions whether diametrically opposite directions of openings can be applied to an S-shape,” Appellants assert that one skilled in the art “will understand that an S-shape merely indicates that a starting position of the shape extends in a first direction, curves around in a second direction opposite the first direction, curves around again in the first direction, and extends in the first direction.” Id. (citing Adv. Act. 2 (mailed Mar. 22, 2012)). B. The Examiner’s Positions In response, the Examiner states that “while the first stated definition of the term [diametric] may be said to require alignment, the second does not.” Ans. 3. The Examiner finds that the openings in Roth satisfy the claim language at issue under the second definition because “one [opening] opens to the left as viewed in Fig. 1 while the other opens to the right as viewed in Fig. 1.” Id. The Examiner contends that openings defined by the “legs” of an “S” shape are “in diametrically opposite directions” but “are not aligned . . . .” Id. With that, the Examiner questions whether Appellants are “asserting that the body claimed in claim 30 is not actually an ‘S’ shape.” Id. C. Discussion We are persuaded that the construction of “diametrically opposed” applied by the Examiner—which did not require alignment of the recited “clamp openings”—was unreasonably broad. We conclude, in light of the dictionary definitions of “diametric” discussed by the parties, that, under the Appeal 2013-002330 Application 10/592,207 5 proper construction of “diametrically opposed,” the recited “clamp openings” must be aligned, oriented in opposing directions, and located at end points of a common diameter. 1 See Appeal Br. 6 (proposing a similar construction). As to the first definition of “diametric” discussed by the parties—“of, pertaining to, or along a diameter”—the Examiner concedes that this definition requires alignment and provides no reason why this definition does not apply here. Ans. 3. And as to the second definition—“in direct opposition; being at opposite extremes”—we conclude that it also requires alignment for the reasons set forth by Appellants (Appeal Br. 6; Reply Br. 3–4). By not requiring alignment, the Examiner’s interpretation of the second definition essentially reads out “direct” from “direct opposition.” Further, for the reasons set forth by Appellants (Appeal Br. 7; Reply Br. 4–5), we do not agree with the Examiner’s position that the “S-shape[]” of the clamp body recited in claim 30 inherently precludes alignment between the “clamp openings.” Instead, we are persuaded by Appellants’ interpretation of the term “S-shaped,” which, as supported by the Specification, does not preclude alignment of the “clamp openings.” See 1 Here, neither party has identified intrinsic evidence to aid in the construction of “diametrically opposed,” and we have identified no such evidence in conflict with the construction provided by the combined dictionary definitions discussed above. See Phillips v. AWH Corp., 415 F.3d 1303, 1322–23 (Fed. Cir. 2005) (en banc) (stating that judges may “‘rely on dictionary definitions when construing claim terms, so long as the dictionary definition does not contradict any definition found in or ascertained by a reading of the patent documents’”) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 n.6 (Fed. Cir. 1996)). Appeal 2013-002330 Application 10/592,207 6 Appeal Br. 7 (citing Spec., Figs. 1, 2); see also Spec. 5 (“upper clamp 1a is S-shaped”). We now apply the construction of “diametrically opposed” to the prior art reference at issue. Figure 1 of Roth is reproduced below: Figure 1 depicts an “improved clamp connector used between conductors of substantially the same diameter.” Roth, col. 1, ll. 46–48. We agree with the Examiner’s implicit finding that the clamp openings associated with bends 17a and 17b in Figure 1 of Roth are not aligned. See Ans. 3–4. For at least that reason, we conclude that Roth does not disclose “diametrically opposed” clamp openings, as recited in claim 30. Therefore, we do not sustain the decision to reject claim 30. Appeal 2013-002330 Application 10/592,207 7 Rejections 2–4 – The rejection of claims 31–34 under 35 U.S.C. § 103(a) Claims 31–34 depend, directly or indirectly, from claim 30. Appeal Br. 24 (Claims App.). The Examiner does not rely on Biller, Babb, or Dobrovolny ’899 to remedy the deficiency discussed above with regard to Roth. Final Act. 11–12 (mailed Dec. 27, 2011); Ans. 6. For the reasons set forth above with regard to claim 30, we therefore do not sustain the decision to reject claims 31–34. Rejections 5–9 Similar to independent claim 30, the two other independent claims— claims 16 and 35—recite “wherein at least one of the first and second clamps has an S-shaped profile defining two diametrically opposed clamp openings.” Appeal Br. 21, 25 (Claims App.) (emphasis added). Claims 17– 29 depend, directly or indirectly, from claim 16. Id. at 21–23. The Examiner relies on the same deficient findings and conclusions with regard to Roth for claim 16 (and its dependent claims) and claim 35 as discussed above with regard to claim 30. Compare Final Act. 3–10 with id. at 2–3; Ans. 3–6. Moreover, the Examiner does not rely on the other prior art references to remedy the deficiency discussed above with regard to Roth. Final Act. 3–10; Ans. 4–6. Thus, for the reasons set forth above with regard to claim 30, we do not sustain the decision to reject claim 16 (and its dependent claims) and claim 35. CONCLUSION For the reasons set forth above, we REVERSE the Examiner’s decision to reject claims 16–35. REVERSED Ssc