Ex Parte Ondrovic et al

Patent Trial and Appeal Board

Feb 8, 2016

12126497 (P.T.A.B. Feb. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/126,497 05/23/2008 Jay Jon Ondrovic
21324 7590 02/10/2016
HAHN LOESER & PARKS, LLP
One GOJO Plaza
Suite 300
AKRON, OH 44311-1076
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.
201141.00370 6536
EXAMINER
YOON, KEVIN E
ART UNIT PAPER NUMBER
1735
NOTIFICATION DATE DELIVERY MODE
02/10/2016 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@hahnlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAY JON ONDROVIC, ERIC FULBRIGHT, and
KATSUMINAKAYAMA
Appeal2013-008433
Application 12/126,497
Technology Center 1700
Before, BEYERL YA. FRANKLIN, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
decision rejecting claims 1-24. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
Appeal2013-008433
Application 12/126,497
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants' subject matter on appeal and is
set forth below (with text in bold for emphasis):
1. A method of producing thin cast strip with controlled cooling
comprising the steps of:
a. assembling a thin strip caster having a pair of casting rolls having a
nip there between capable of delivering cast strip downwardly from the nip;
b. forming a casting pool supported on casting surfaces of the casting
rolls above the nip with side dams adjacent the ends of the nip to confine the
casting pool;
c. assembling adjacent the thin strip caster a hot rolling mill having
work rolls with work surfaces forming a gap between them through which
hot strip delivered from the casting rolls is rolled, the work rolls having
work surfaces relating to the desired strip profile across the work rolls; and
d. positioning misting jets in intervals along the path of the cast strip
exiting from the hot rolling mill to form a cooling zone; and
e. directing toward surfaces of the cast strip through the misting jets
a mixture of gas and water having a volume ratio of gas over water
between 9 and 90 cooling the cast strip at more than 1.6 °C per liter of
water used.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Osada et al.
(hereinafter "Osada")
Glutz et al.
(hereinafter "Glutz")
Arvedi
Yamashita
us 5,720,335
US 2002/0153124 Al
WO 2004/026497 Al
JP 01-306058
2
Feb.24, 1998
Oct. 24, 2002
Apr. 1, 2004
Dec. 11, 1989
Appeal2013-008433
Application 12/126,497
THE REJECTIONS
1. Claims 1-8, 12-20, and 24 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Osada in view of Glutz and Yamashita.
2. Claims 9-11 and 21-23 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Osada in view of Glutz and Yamashita as applied to
claim 6 or 18 above, and further in view of Arvedi.
ANALYSIS
At dispute in this appeal is the meaning of the term "mistingjets"1 and
whether or not Osada' s nozzle groups are capable of functioning as "misting
jets" according to the claims.
The Examiner interprets this aspect of the claims as meaning nozzles
that are capable of delivering a mixture of gas and water, and refers to
paragraph [0043] of the Specification in this regard. Ans. 9. The Examiner
states that Appellants have not claimed a specific structure of the nozzles. 2
Ans. 13. The Examiner also states that the claims do not recite the size or
the velocity of the droplets produced by the misting jets, and the
Specification does not indicate what constitutes a "small droplet" and
"sufficient velocity". 3 Ans. 14. The Examiner then finds that Osada's
1 We note that each of independent claims 1, 6, 13, and 18 recites the term
"misting jets".
2 The term "misting jets" may have an associated structure, known to those
of ordinary skill in the art, but Appellants have not raised this in the record.
3 Based upon the disclosure found in paragraphs [0043---0045] of the
Specification, we agree with the Examiner that there is uncertainty
surrounding the phrase "misting jets", for example, regarding the size of the
droplets produced by them or their specific nozzle construction.
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Appeal2013-008433
Application 12/126,497
nozzles are capable of functioning as "misting jets" according to the claims.
Ans. 4, 9, and 10.
It is Appellants' position that the nozzles of Osada are hydraulic
nozzles, and therefore cannot direct, through misting nozzles, a mixture of
gas and water as claimed. Appellants argue that their spray misting jets
force gas and coolant from separate streams to mix in a nozzle body
specifically constructed so that the exiting mixture is coolant and gas in a
very fine mist. Appeal Br. 10. Declaration filed January 9, 2012.
During examination, claim terms must be given their broadest
reasonable construction consistent with the Specification. In re ICON
Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). The
broadest reasonable interpretation of the claims must also be consistent with
the interpretation that those skilled in the art would reach. In re Cortright,
165 F.3d 1353, 1358 (Fed. Cir. 1999). Under a broadest reasonable
• ' ' ,. 1 l".i1 1 • '1 • .1 • 1 • • 1 imerpremnon, woras or 1ne crn1m mus1 oe given 1neir prnm meanmg, umess
such meaning is inconsistent with the Specification. See generally MPEP
§ 2111. The plain meaning of a term means the ordinary and customary
meaning given to the term by those of ordinary skill in the art at the time of
the invention. The ordinary and customary meaning of a term may be
evidenced by several different sources, including the words of the claims
themselves, the Specification, drawings, and prior art. Id. However, the
best source for determining the meaning of a claim term is the Specification.
Id. The words of the claim must be given their plain meaning unless the
plain meaning is inconsistent with the Specification. In re Zletz, 893 F.2d
319, 321 (Fed. Cir. 1989); Chef America, Inc. v. Lamb-Weston, Inc., 358
F.3d 1371, 1372 (Fed. Cir. 2004).
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Appeal2013-008433
Application 12/126,497
In the instant case, Appellants refer to a Declaration filed on January
9, 2012, throughout the Appeal Brief and Reply Brief. In this Declaration,
Mr. Ondrovic, who is one of the inventors of the instant application, offers
his opinion that "spray misting jets force gas and coolant from separate
streams to mix in a nozzle body specifically constructed so that the exiting
mixture is coolant and gas in a very fine mist ... ". Declaration filed
January 9, 2012. However, the Declaration is not persuasive as it does not,
for example, adequately provide evidence4 pertaining to 1) how one of
ordinary skill in the art would have understood the meaning of the claim
term "misting jets" as used in the Specification or 2) the ordinary and
customary meaning of the claim term "misting jets" given by those skilled in
the art. Within this context, we agree with the Examiner's position as stated
on page 19 of the Answer pertaining to the Ondrovic Declaration (that is, the
Declarant' s mere opinion is insufficient, especially in light of the record
1. 1 1 • ~ mscussea neremJ.
In view of the above, including footnotes 2 and 3, we conclude that
the metes and bounds of the claims are unclear and indefinite to the extent
that, it is impossible to ascertain the propriety of the grounds of rejection of
these claims. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970); In re
Steele, 305 F.2d 859, 862-63 (CCPA 1962).
Where claims do not particularly point out and distinctly claim the
invention as required by the second paragraph of 35 U.S.C. § 112, a§ 102 or
a§ 103 rejection of the claims can be reversed as impermissibly involving
4 We add that Appellants' stated position throughout the record also does
not adequately provide any insight or sufficient evidence of the meaning of
the disputed term.
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Appeal2013-008433
Application 12/126,497
speculative assumptions as to the meaning of the claims. Steele, F .2d at
862-63. Because the claims fail to particularly point out and distinctly claim
Appellants' invention as required by the second paragraph of
35 U.S.C. § 112, the§ 103 rejections (Rejections 1and2) of the pending
claims necessarily involves speculative assumptions as to the meaning of the
claims. Under these circumstances, we must reverse Rejections 1 and 2.
However, we emphasize that our reversal of these rejections is
because the claims are indefinite; hence, a decision has not been made based
on the technical merits of Rejections 1 and 2 respecting these claims.
We introduce a new ground of rejection of claims 1-24 under the
second paragraph of 35 U.S.C. § 112, for failing to particularly point out and
distinctly claim the subject matter which Appellants regard as their
invention; hence, we reject these claims as running afoul of the requirements
of the second paragraph of 35 U.S.C. § 112, second paragraph (37 C.F.R.
§ 41.50(b)).
DECISION/ORDER
The decision of the Examiner to reject the claims on appeal
(Rejections 1 and 2) is reversed. We enter a new ground of rejection
pursuant to our authority under 3 7 C.F .R. § 41. 50(b) of claims 1-24 under
35 U.S.C. § 112, second paragraph.
This decision contains a new ground of rejection pursuant to 3 7
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provide that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
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Application 12/126,497
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the Examiner, in which event the
proceeding will be remanded to the Examiner ....
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(v).
REVERSED; § 41.50(b)
cdc
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