Ex Parte Tate et al

Patent Trial and Appeal BoardNov 27, 2012

11015741 (P.T.A.B. Nov. 27, 2012)

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. 11/015,741 12/20/2004 Diane Tate 8688.039.US0000 4297 74217 7590 11/28/2012 NOVAK, DRUCE + QUIGG L.L.P. - PERGO 300 New Jersey Ave, NW Fifth Floor Washington, DC 20001 EXAMINER PLUMMER, ELIZABETH A ART UNIT PAPER NUMBER 3635 MAIL DATE DELIVERY MODE 11/28/2012 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 DIANE TATE, SVEN KORNFALT, and NILS-ERIK ENGSTROM ____________ Appeal 2010-009290 Application 11/015,741 Technology Center 3600 ____________ Before STEVEN D.A. McCARTHY, GAY ANN SPAHN, and JOHN W. MORRISON, Administrative Patent Judges. SPAHN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-009290 Application 11/015,741 2 STATEMENT OF THE CASE Diane Tate et al. (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 3-5 and 7-9 under 35 U.S.C. § 102(b) as anticipated by Collette (US 3,707,061, issued Dec. 26, 1972). Appellants cancelled claims 1, 2, 6, and 10-20. An oral hearing was held on November 6, 2012. We have jurisdiction under 35 U.S.C. § 6(b). We do not sustain the Examiner’s sole rejection. Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter A NEW GROUND OF REJECTION against claims 3-5 and 7-9 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellants regard as the invention. We do not sustain the rejection of claims 3-5 and 7-9 under 35 U.S.C. § 102(b) as anticipated by Collette, because the rejection necessarily is based on speculative assumptions as to the meaning of the claims. See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962). The claimed subject matter relates to “a molding such as a floor strip.” Spec. 1, l. 4. Claim 3 (the sole independent claim), reproduced below, is representative of the subject matter on appeal. 3. A molding (1) having a length and a width, said length being longer than said width, and said molding being provided with a first and a second distal edge (3I and 3II, respectively), at opposite ends of the length wherein the distal edges (3I and 3II, respectively) being provided with means for locking a first distal edge (3I) of a first molding (1) to a second distal edge (3II) of an identical molding (1) with which it is in contact, wherein the first edge (3I) is provided with at least one recess (34) and that the second edge (3II) is provided with at least one recess (34) and that the Appeal 2010-009290 Application 11/015,741 3 moldings (1) are connected to each other by means of a joining plate (40) having protrusions (41) matching position of the recesses (34) of the first and second edges (3I and 3II, respectively). ISSUE This appeal turns of the following issue: Would one of ordinary skill in the art understand the scope and meaning of claim 3 to be reciting a single molding or the combination of two moldings and a joining plate? PRINCIPLES OF LAW The language of a claim satisfies 35 U.S.C. § 112, second paragraph, only if “one skilled in the art would understand the bounds of the claim when read in light of the specification.” Exxon Research & Eng’g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). “It is the applicants’ burden to precisely define the invention, not the PTO’s. See 35 U.S.C. § 112, ¶ 2 . . . [T]his section puts the burden of precise claim drafting squarely on the applicant.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). OPINION The preamble of Appellants’ independent claim 3 is directed to “a molding”; however, the body of the claim recites “that the moldings (1) are connected to each other by means of a joining plate (40).” App. Br., Clms. App’x. Emphasis added. It is not clear whether Appellant’s claims recite a single molding, with functional or intended use language as to a second molding and a joining plate, or a combination of two moldings and a joining Appeal 2010-009290 Application 11/015,741 4 plate. As claim 3 is a claim under examination that is susceptible of more than one reasonable interpretation, claim 3 is indefinite because the scope of the claim differs significantly depending on which of the reasonable interpretations one adopts. See Ex Parte Miyazaki, 89 USPQ2d 1207, 1211- 12 (BPAI 2008) (precedential). Accordingly, we conclude that claim 3, and claims 4, 5, and 7-9 dependent thereon, are indefinite under 35 U.S.C. § 112, second paragraph, for failing to particularly point out and distinctly claim the subject matter which Appellant regards as the invention. CONCLUSION One of ordinary skill in the art would not understand whether claim 3 is reciting a single molding or the combination of two moldings and a joining plate. DECISION We REVERSE the Examiner’s rejection of claims 3-5 and 7-9. Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter A NEW GROUND OF REJECTION against claims 3-5 and 7-9 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellants regard as the invention. 37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Regarding the new ground of rejection, 37 C.F.R. § 41.50(b) also provides Appeal 2010-009290 Application 11/015,741 5 that Appellants must, WITHIN TWO MONTHS, exercise one of the following options: (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). See 37 C.F.R. § 1.136(a)(1)(iv). REVERSED; 37 C.F.R. § 41.50(b) Klh