Ex Parte Thomas et al

Patent Trial and Appeal Board

Jun 15, 2017

13723983 (P.T.A.B. Jun. 15, 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.
13/723,983 12/21/2012 Steven Gerald Thomas 83330076 4546
28395 7590 06/19/2017
RROOKS KTTSHMAN P C /FfTET EXAMINER
1000 TOWN CENTER LE, HUAN G
22ND FLOOR
SOUTHFIELD, MI 48075-1238 ART UNIT PAPER NUMBER
3659
NOTIFICATION DATE DELIVERY MODE
06/19/2017 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):
docketing @brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN GERALD THOMAS,
DONALD EDWARD HOFFMAN, and
GREGORY DANIEL GOLESKI
Appeal 2016-003429
Application 13/723,983
Technology Center 3600
Before ALLEN R. MacDONALD, NABEEL U. KHAN, and
SHARON FENICK, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-003429
Application 13/723,983
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection
of claims 17 and 19—23. Final Act. 1. Claims 1—16 have been withdrawn
from consideration due to a restriction requirement. Claim 18 has been
cancelled. Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claims
Exemplary claims 17 and 20 under appeal read as follows (emphasis
added):
17. A method of operating a vehicle, the method comprising:
in response to selection of high range, launching the vehicle in
reverse at a first negative transmission ratio;
in response to selection of low range, launching the vehicle in
reverse at a second negative transmission ratio; and
shifting from the second negative transmission ratio to the first
negative transmission ratio.
20. The method of claim 17 further comprising:
in response to selection of high range, launching the vehicle
with a first positive transmission ratio; and
in response to selection of low range, launching the vehicle
with a second positive transmission ratio and then shifting to the first
positive transmission ratio.
Rejection on Appeal
The Examiner rejected claims 17 and 19—23 under 35 U.S.C. § 102(b)
as being anticipated by Boss et al. (US 8,062,164 B2; iss. Nov. 22, 2011).
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Application 13/723,983
Issue on Appeal
Did the Examiner err in rejecting claim 17 as being anticipated?
ANALYSIS
Appellants present arguments (Appeal Brief and Reply Brief) as to
why the Examiner has erred in rejecting claim 17 based on the prior art
references. Other than the claim construction issue discussed below, we do
not reach the merits of the Examiner’s rejections or the merits of the
references at this time. Rather, we reverse pro forma the outstanding
rejections of claims 17 and 19—23 under 35 U.S.C. §§ 102(b) because
appealed claims 17 and 19—23 fail to satisfy the requirements of the second
paragraph of 35 U.S.C. § 112. Before a proper review of the prior art
rejection can be performed, the subject matter encompassed by the claims on
appeal must be reasonably understood without resort to speculation.
Presently, we would be forced to engage in speculation and conjecture
to determine the scope of the claimed invention as the claims are indefinite
under 35 U.S.C. § 112, second paragraph. This we decline to do. See In re
Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art rejection cannot be
sustained if the hypothetical person of ordinary skill in the art would have to
make speculative assumptions concerning the meaning of claim language);
see also In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“If no reasonably
definite meaning can be ascribed to certain terms in the claim, the subject
matter does not become obvious- the claim becomes indefinite”).
Claim Construction of “launching the vehicle ”
Although we are unable to determine the scope of the claimed
invention, we do address the appropriate construction for the claim 17
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Application 13/723,983
limitations of “launching the vehicle.” As to these limitations, we find both
Examiner’s conclusions (Ans. 4) and Appellants’ arguments (Reply Br. 2)
citing to numerous unrelated patents to be unhelpful. Although Examiner
correctly points out that “[t]he term ‘launch’ has not been given a special
definition in the specification” (Ans. 4), this does not open the meaning of
the term to unsupported interpretations. The Examiner concludes “the
ordinary meaning of the word launch, [is] to set off or discharge with force;
propel.’ '’ However, the Examiner cites no authority for such an
interpretation. The Examiner then concludes that launching is shown if the
vehicle is “set into motion via the first reverse gear (e.g. Rl) and propelled
to the next gear reverse gear (e.g. R2).” Ans. 4 (emphasis added).
As the Examiner has provided no authority for the above
interpretation, we turn to a dictionary to determine the ordinary meaning of
the word “launch.’ Among the various definitions of “launch” we find none
that equates the verbs “launch” and “propel.” We determine the most
relevant definition to be “to send forth, catapult, or release, as a self-
propelled vehicle or weapon.”1 We conclude this definition is consistent
with Appellants’ construction of the limitations of “launching the vehicle.”
Although we agree with Appellants’ construction of “launching,” this
is insufficient for us to reach the ultimate merits of whether the Boss patent
anticipates the claimed invention due to the claim indefmiteness issues we
discuss in the new ground of rejection below.
1 launch. Dictionary.com. Dictionary.com Unabridged. Random House, Inc.
http://www.dictionary.com/browse/launch (accessed: June 6, 2017).
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Appeal 2016-003429
Application 13/723,983
NEW GROUND OF REJECTION
35 U.S.C. § 112, Second Paragraph
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection for claims 17 and 19—23 under 35 U.S.C. § 112, second
paragraph, for indefiniteness.
First, “[t]he scope of claim language cannot depend solely on the
unrestrained, subjective opinion of a particular individual purportedly
practicing the invention.” Datamize, LLC v. Plumtree Software, Inc., 417
F.3d 1342, 1350 (Fed. Cir. 2005). Appellants’ claims are replete with
undefined and subjective terms such as “high range” (as compared to what
criteria?) (Claims 17 and 20); and “low range” (as compared to what
criteria?) (Claims 17, 20, and 21).
Second, method claims 17 and 20 contain conditional limitations (e.g.,
claim 17 recites “in response to”), which may not need to be shown
for determining patentability. See Ex parte Schulhauser, No. 2013-007847,
2016 WE 6277792, at *4 (PTAB Apr. 28, 2016) (precedential) (holding
“[t]he Examiner did not need to present evidence of the obviousness of the
remaining method steps of claim 1 that are not required to be performed
under a broadest reasonable interpretation of the claim”). Appellants’
Specification at paragraphs 21—23 describes four independent options for
launching a vehicle. At paragraphs 21—23, each launch option may “singly”
be selected in the alternative to launch the vehicle. We do not find any
description of selecting plural distinct options simultaneously, nor do we
find description of selecting plural distinct options sequentially over time.
However, Appellants’ claims 17 and 20 are written broadly so as to
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Application 13/723,983
encompasses each of these variations (i.e., alternatively (based on
conditions), simultaneously (discussed below), and sequentially over time).
Third, when taken together, claims 17 and 20 each recite a singular
condition “in response to selection of high range” for launching the vehicle
in a particular way. The particular manner of launching the vehicle in claim
17 differs from the particular way in claim 20. Further, these two particular
ways are mutually exclusive. A similar problem is present for the singular
condition “in response to selection of low range.”
Claims 19 and 21—23 incorporate the problems of the claims from
which they depend.
The second paragraph of 35 USC § 112 requires a claim to
particularly point out and distinctly claim the subject matter which the
applicant regards as his invention. In discussing the requirements of the
second paragraph of 35 USC § 112, the Court of Customs and Patent
Appeals stated in In re Hammack, 427 F.2d 1378, 1382 (CCPA 1970), :
Its purpose is to provide those who would endeavor, in future
enterprise, to approach the area circumscribed by the claims of a
patent, with the adequate notice demanded by due process of law,
so that they may more readily and accurately determine the
boundaries of protection involved and evaluate the possibility of
infringement and dominance.
The problems we discuss above render it impossible for these claims to
provide competitors with an accurate determination of the “metes and
bounds” of protection involved so that an evaluation of the possibility of
infringement may be ascertained with a reasonable degree of certainty, as
discussed by the court in In re Hammack, supra. Accordingly, for this
reason we reject Appellants’ claims under 35 USC § 112, second paragraph.
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37 C.F.R. § 41.50(b)
This decision contains a new ground of rejection pursuant to 37
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 provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds 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. . . .
CONCLUSIONS
(1) We reject claims 17 and 19—23 as indefinite under 35 U.S.C.
§112, second paragraph.
(2) Claims 17 and 19—23 are not patentable.
DECISION
The Examiner’s rejection of claims 17 and 19—23 is reversed.
Claims 17 and 19—23 are newly rejected.
REVERSED
37 C.F.R, § 41,501b)
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