Ex Parte Ronald et al

Patent Trial and Appeal BoardOct 30, 2017

13120268 (P.T.A.B. Oct. 30, 2017)

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. 13/120,268 03/22/2011 Keith Ronald 148949 8850 27049 7590 11/01 OLIFF PLC P.O. BOX 320850 ALEXANDRIA, VA 22320-4850 EXAMINER DEONAUTH, NIRVANA ART UNIT PAPER NUMBER 3727 NOTIFICATION DATE DELIVERY MODE 11/01/2017 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): OfficeAction27049@oliff.com j armstrong @ oliff.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KEITH RONALD and JOHN PHILIP LAURENCE TAYLOR Appeal 2016-000307 Application 13/120,268 Technology Center 3700 Before LINDA E. HORNER, ANNETTE R. REIMERS, and ERIC C. JESCHKE, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1 Keith Ronald and John Philip Laurence Taylor (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner’s decision to reject (1) claims 1—28 and 31 under 35 U.S.C. § 112, second paragraph, for indefiniteness, 1 The Examiner states that (1) “[cjlaim 24 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), 2nd paragraph, set forth in this Office action,” and (2) “[c]laim[s] 25-28 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.” Final Act. 13. Appeal 2016-000307 Application 13/120,268 (2) claims 1—6, 8—23, and 312 under 35 U.S.C. § 102(b) as anticipated by Engibarov (US 5,056,766, issued Oct. 15, 1991), and (3) claim 7 under 35 U.S.C. § 103(a) as unpatentable over Engibarov and Madlener (US 2008/0047155 Al, published Feb. 28, 2008). An Oral Hearing in accordance with 37 C.F.R. § 41.47 was held on October 19, 2017. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER The claimed subject matter “relates to an apparatus for mounting a machine tool accessory to a workpiece mounting surface of a machine tool.” Spec. 1:6—7, Figs. 1, 4, 9. Claims 1, 24, and 31 are independent. Claim 1 is illustrative of the claimed subject matter and recites: 1. An apparatus for mounting a coordinate positioning apparatus accessory to a workpiece mounting surface of a coordinate positioning apparatus, the workpiece mounting surface having a slot formed therein, the apparatus comprising: an insert comprising means for fixing the insert within the slot; and a mount attachable to the coordinate positioning apparatus accessory, the mount comprising at least one protruding member for engaging the insert when contained within the slot, thereby fixing the mount to the workpiece mounting surface of a coordinate positioning apparatus, wherein the means for fixing the insert within the slot is configured to retain the insert fixed within the slot with the insert lying flush or sub-flush with the workpiece mounting surface, when the mount is detached from the insert. 2 The Examiner does not include claim 31 in the heading of this rejection but discusses claim 31 in the body of the rejection. See Final Act. 5,11; see also Appeal Br. 10, n.2. We consider this a typographical error. 2 Appeal 2016-000307 Application 13/120,268 ANALYSIS Indefiniteness3 Claims 1—28 and 31 The Examiner determines that the term “sub-flush” recited in independent claims 1, 24, and 31 “is unclear and indefinite. In addition[,] it can be interpreted by the users’ perspective and orientations of the apparatus.” Final Act. 4. The Examiner also states that “[cjlaims 2-23, and 25-28 are rejected under 112 as a result of being dependent on [a] rejected claim.” Id. Appellants contend that “[t]he term ‘sub-flush’ is obviously clear and definite based on a plain reading of the claims and when read in light of the specification.” Appeal Br. 9. In particular, Appellants contend that [t]he term “flush” is clear because one skilled in the art would clearly understand the meaning of an insert lying flush with the workpiece mounting surface. Likewise, the term “sub-flush” is clear in the context of an insert lying sub-flush with the workpiece mounting surface. The prefix “sub-” has the normal meaning of “at a lower level or position.” In the above phrase, using the prefix “sub-” with “flush” clearly means at a lower position than that in which the insert is flush with the workpiece mounting surface. One skilled in the art would clearly understand that within the context of the insert being fixed within the slot, lower means in a direction into the slot. This definition is clear no matter the perspective of the user or orientation of the apparatus. Appeal Br. 9—10. 3 Appellants point out that “[t]he rejection under 35 U.S.C. § 112(b) [35 U.S.C. § 112 (pre-AIA), second paragraph] based on antecedent basis has already been addressed as noted in the January 6, 2015 Advisory Action.” See Appeal Br. 9, n.l; see also Advisory Act. (dated January 6, 2015); Final Act. 4. 3 Appeal 2016-000307 Application 13/120,268 As an initial matter, we note that the Examiner does not respond to Appellants’ contention other than to state that the “term [‘sub-flush’] is interpreted as being below flush.” Ans. 15; see also Reply Br. 8. In this case, the Specification discloses that: Figure 4 shows an insert according to the present invention being positioned within a tee-slot of a machine tool bed. .. . The insert 40 [is] lowered into the tee slot 18 until the setting disc 62 lies flat against the machine tool bed 16. In this position the exposed face 40b of the insert thus lies substantially flush with the machine tool bed 16. Spec. 14:1—7 (emphasis added), Fig. 4. The Specification further discloses that: In an alternative embodiment^] the exposed face 40b of the insert 40 may have a raised central portion 52 such that when setting the position of the insert 40 in the slot, as described above, the central portion 52 lies substantially flush with the machine tool bed 16 and the remainder of the exposed face 40b of the insert 40 lies substantially sub-flush with the machine tool bed 16. The fact that the exposed face 40b of the insert 40 lies flush or sub-flush with the bed of the machine tool prevents rocking of the machine tool accessory when the accessory’s mount is engaged with the insert in the tee slot. If the machine tool accessory has a substantially flat base it can thus sit substantially flat on the machine tool bed and is consequently more stable. The insert lying flush or sub-flush with the machine tool bed also has the effect that it is not in the way or easily knocked out of position when not engaged with a machine tool accessory mount. Spec. 14:14—26 (emphasis added); id. at 2:10-15; see also Appeal Br. 10. Upon review of Appellants’ disclosure and figures, we agree with Appellants that a skilled artisan would understand that (1) “the prefix ‘sub-’ with ‘flush’ clearly means at a lower position than that in which the insert is 4 Appeal 2016-000307 Application 13/120,268 flush with the workpiece mounting surface,” (2) “within the context of the insert being fixed within the slot, lower means in a direction into the slot,” and (3) “[t]his definition is clear no matter the perspective of the user or orientation of the apparatus.” See Reply Br. 8; see also Appeal Br. 10; Ans. 14. Consequently, we agree with Appellants that “the term ‘sub-flush’ is clear and definite based on a plain reading of the claims and when read in light of the specification.” Appeal Br. 10. Accordingly, we do not sustain the Examiner’s rejection of claims 1— 28 and 31 for indefmiteness. Anticipation by Engibarov Claims 1—6, 8—23, and 31 Regarding claim 1, the Examiner finds that Engibarov discloses “an insert (62) comprising means for fixing [legs on the insert held by friction and/or screws, as described in column 5 lines 38-42].” Final Act. 5. The Examiner further notes that: [T]he insert (62) is located sub-flush with the workpiece mounting surface, as required by [Appellants]. In addition, the means for fixing by friction (legs on the insert) are also located sub-flush the workpiece mounting surface]. However, the means of fixing being screws, are not located flush or sub[-]flush the workpiece mounting surface, however, the claim only require[s] the insert being located sub-flush or flush, not the means for fixing being located flush or sub-flush]. Final Act. 6; see also id. at 14 (“[T]he claim recites only the insert being flush or sub-flush, which is disclosed by the prior art of record. In addition, the legs on the insert, which is a means of fixing by friction, is also sub flush with the workpiece mounting surface.”); Ans. 15. 5 Appeal 2016-000307 Application 13/120,268 Appellants contend that “[t]he feature ‘means for fixing the insert within the slot’ is a means-plus function limitation” and that “the Examiner has failed to show that Engibarov’s structure is the same as or equivalent to the structure, material, or acts described in the specification which has been identified as corresponding to the claimed means-plus function as required by MPEP §2182.” Appeal Br. 11—12; see also Reply Br. 5—6. In response to Appellants’ contention, the Examiner determines that Appellants’ disclosure “recites the ‘means for fixing’ in numerous alternatives and the structure of the ‘means for fixing’ is unclear and indefinite.” Ans. 14. As an initial matter, we agree with Appellants that “the Examiner’s Answer does not explain why the recited ‘means for fixing the insert within the slot’ is unclear and indefinite.” Reply Br. 2; see also Ans. 14—15. In particular, the Examiner “fail[s] to explain why any of [the] alternatives [described in the Specification] are unclear, and thus why the recited means for fixing the insert within the slot is unclear and indefinite.” Reply Br. 2; see also Ans. 14—15. Appellants’ Specification describes that (1) “[t]he means for fixing the insert within a slot in a workpiece mounting surface of a coordinate positioning apparatus can comprise an expandable member, such that the insert is fixed within the slot by friction,” and (2) “[t]he means for fixing the insert within a slot can comprise, for example, screws or adhesive.” Spec. 8:8-11. Upon review of Appellants’ disclosure, we agree with Appellants that “the recited ‘means for fixing the insert within the slot’” “is clear in view of Appellants’ [Specification,” and “thus [is] clear and definite.” Reply Br. 2. 6 Appeal 2016-000307 Application 13/120,268 Moreover, we agree with Appellants that the Examiner does not “explain how Engibarov’s clamping member [62], by itself, can be fixed within the slot in order to be the same as or equivalent to the recited means for fixing the insert within the slot.” See Reply Br. 3-4; see also Appeal Br. 14; Final Act. 5—6, 14; Ans. 15. Appellants correctly point out that “the means for fixing is part of the insert. Claim 1 clearly recites an insert comprising means for fixing the insert within the slot (i.e., the means for fixing the insert within the slot is clearly part of the insert).” Appeal Br. 15. As such, we agree with Appellants that claim 1 requires that “[t]he entire insert, comprising means for fixing the insert within the slot, must be flush or sub-flush.” See Reply Br. 6; see also Appeal Br. 16 (“If the means for fixing the insert within the slot is not flush or sub-flush, then the insert (which includes the means for fixing the insert within the slot) is not flush or sub-flush.”). Engibarov discloses that: The means for clamping the jaw support 16 against table 10 in a desired position, as well as to provide adjustment of the vertical position of wedge member 50, comprises an elongated clamping member 62 of inverted T-shape cross-section conforming to the cross-section of T-slot 12. Member 62 may be slideably inserted within T-slot 12 to any desired position and has three spaced threaded recesses 64, 66, 68 along its upper surface into which bolts 70, 72, 74 may be threaded. Bolts 70 and 72 have enlarged heads with central sockets 71, 73, are located within two spaced holes 76, 78 along a centerline of jaw support 16, and are respectively threaded into recesses 64, 66 of clamping member 62. When these bolts 70, 72 are tightened, the clamping member 62 is raised against the shoulders of the T-slot and the jaw support 16 is drawn downwardly by the enlarged heads of the bolts 70, 72 to become clamped firmly against the upper surface 10a of table 10. 7 Appeal 2016-000307 Application 13/120,268 Engibarov 5:33—50 (emphasis added), Figs. 2, 3. In view of Engibarov’s disclosure, we agree with Appellants that “Engibarov’s clamping member 62 and the legs on Engibarov’s clamping member 62, by itself, are not capable of fixing the clamping member 62 within the slot 12” that “Engibarov’s bolts 70, 72, 74 and jaw support 16 are also part of the means for fixing the clamping member 62 within the slot 12” and “[wjithout Engibarov’s bolts 70, 72, 74 and jaw support 16 attached to the clamping member 62, the clamping member 62 would be loosely placed in the slot 12 when the mount is detached” thus “clamping member 62 would not be fixed within the slot 12 and the clamping member 62 would not be fixed and retained within the slot 12[.]” Appeal Br. 14. Stated differently, “Engibarov’s clamping member 62 is not frictionally fixed into the slot without the bolts 70, 72, 74 and jaw support 16.” Reply Br. 5. Further, Appellants correctly point out that Engibarov’s means for fixing insert 62 within slot 12 (i.e., “bolts 70, 72, 74 and jaw support 16”) “are not lying flush or sub-flush with the workpiece mounting surface (of the table 10).” Appeal Br. 15; see also Reply Br. 5 (“As is obvious from Engibarov’s Fig[ure] 3, the top of the bolts 70, 72, 74 and the jaw support 16 are clearly above the T-slot 12.”). Based on the foregoing reasons, we agree with Appellants that Engibarov “fails to disclose means for fixing the insert within the slot that is configured to retain the insert fixed within the slot with the insert (that comprises the means) lying flush or sub-flush with the workpiece mounting surface, as recited in claim 1.” Appeal Br. 17; see also Reply Br. 5. In the Answer, the Examiner states that “in the event that the legs and screws of (62) are interpreted as being the ‘the means for fixing’, at least a 8 Appeal 2016-000307 Application 13/120,268 portion of both the legs and screws of the ‘means for fixing’ would still lay sub-flush the workpiece mounting surface.” Ans. 15 (citing Engibarov, Fig. 3) (emphasis added). Here, Appellants correctly point out that based upon Appellants’ Specification, “it is not reasonable to assert that only part of Engibarov’s means for fixing the insert within the slot must be flush or sub- flush” and that claim 1 requires, “[t]he entire insert, comprising means for fixing the insert within the slot, must be flush or sub-flush.” See Reply Br. 6 (emphasis added); see also Appeal Br. 15—16; id. at A-l, Appendix A - Claims App.; Final Act. 6, 14; Ans. 15. Independent claim 31 is directed to an apparatus including “an insert comprising a fixing device operable to retain the insert fixed within the slot; . . . wherein the fixing device is configured to retain the insert fixed within the slot with the insert lying flush or sub-flush with the workpiece mounting surface.” Appeal Br. A-4, Appendix A - Claims App. The Examiner relies on the same unsupported findings for claim 31 as those discussed above for claim 1. See Final Act. 11—12. Thus, the Examiner’s findings with respect to Engibarov are deficient for claim 31 as well. Accordingly, for the foregoing reasons, we do not sustain the Examiner’s rejection of independent claims 1 and 31 and dependent claims 2—6 and 8—23 as anticipated by Engibarov. Obviousness over Engibarov and Madlener Claim 7 The Examiner’s rejection of claim 7 is based on the same unsupported findings in Engibarov. See Final Act. 12. The Examiner does not rely on Madlener to remedy the deficiencies of Engibarov. Accordingly, for reasons 9 Appeal 2016-000307 Application 13/120,268 similar to those discussed above for claim 1, we do not sustain the Examiner’s rejection of claim 7 as unpatentable over Engibarov and Madlener. DECISION We REVERSE the decision of the Examiner to reject claims 1—28 and 31 for indefiniteness. We REVERSE the decision of the Examiner to reject claims 1—6 and 8—23 as anticipated by Engibarov. We REVERSE the decision of the Examiner to reject claim 7 as unpatentable over Engibarov and Madlener. REVERSED 10