Ex Parte Trevisani

Patent Trial and Appeal Board

Aug 9, 2017

14448137 (P.T.A.B. Aug. 9, 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.
14/448,137 07/31/2014 Davide Trevisani 37225-0002002 1087
26231 7590 08/11/2017
FISH & RICHARDSON P.C. (DA)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
JONES, DAVID B
ART UNIT PAPER NUMBER
3725
NOTIFICATION DATE DELIVERY MODE
08/11/2017 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
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UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVIDE TREVISANI
(Applicant: Soilmec SpA)
Appeal 2016-004704
Application 14/448,137
Technology Center 3700
Before STEVEN D.A. McCARTHY, THOMAS F. SMEGAL and
LISA M. GUIJT, Administrative Patent Judges.
McCARTHY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1—15 under 35 U.S.C. § 112(a) for lack of
enablement. (See Final Act. 3; App. Br. 9 & 10; Reply Br. 2 4). We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The Appellant also seeks to appeal the Examiner’s objection to the
drawings under 37 C.F.R. § 1.83(a), for failure to show an embodiment
falling within the appealed claims. (See Final Act. 2 & 3; App. Br. 6—8;
Reply Br. 2). An Examiner’s objection to the drawings is reviewable by
petition. As such, a drawing objection is not appealable to the Board unless
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Appeal 2016-004704
Application 14/448,137
the objection is related, at least indirectly, to matters involving a rejection of
claims. See Ex parte Frye, 94 USPQ2d 1072, 1078 (BPAI 2010). In the
present case, the Examiner’s objection to the drawings is not tantamount to a
rejection of the appealed claims; and we may address the rejection of the
appealed claims under § 112(a) without addressing the merits of the drawing
objection.
On this basis, we DISMISS the appeal as to the Examiner’s objection
to the drawings under 37 C.F.R. § 1.83(a).
THE CLAIMED SUBJECT MATTER
The claims are directed to devices mountable on cranes, rope
excavators or drilling machines, for supporting and guiding electrical or
hydraulic supply lines. (See Spec. 1,11. 2—5). Such devices, as described in
the Specification, support piping 22 associated with the electrical or
hydraulic lines by means of crosspieces 42 mounting cylindrical seats for
engaging the piping; and branch sections 4 assembled from spacer elements
3 and ropes or tie-rods 16 for supporting and spacing the crosspieces. (See
Spec 6,1. 25 —7,1. 2; Spec. 8,1. 28 — 9,1. 6; & Fig. 4). One such spacer
element is depicted in Figures 2A—2D; and a chain of such spacers, in
engagement with a rope or tie-rod 16, is depicted in Figure 3 A.
Claims 1 is the sole independent claim on appeal:
1. Device for supporting and guiding supplying lines
intended to be used in combination with a digging tool mounted
on a drilling machine, said device comprising:
at least one support branch, formed by a plurality of
spacers adjacent to one another, wherein a rope or tie-rod is
inserted through a housing of each spacer of the plurality of
spacers;
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Appeal 2016-004704
Application 14/448,137
wherein a pair of adjacent spacers in the plurality of
spacers comprises retaining means, the retaining means
comprising:
at least one retaining element or hook associated to
a first spacer of said pair of adjacent spacers; and
at least one slot, having a shape substantially
matching the shape of said at least one retaining element or hook,
associated to a second spacer of said pair of adjacent spacers,
wherein said at least one retaining element or hook during
use engages with said at least one slot, allowing a relative axial
movement in a longitudinal direction of the rope or tie rod of a
predetermined amount.
DISCUSSION
Chapter 21 of the Manual of Patent Examining Procedure
(“MPEP”) says that the “standard for determining whether the specification
meets the enablement requirement was cast in the Supreme Court decision of
Minerals Separation Ltd. v. Hyde, 242 U.S. 261, 270 (1916)[,] which
postured the question: is the experimentation needed to practice the
invention undue or unreasonable?” MPEP § 2164.01. The presence or
absence of working examples in the specification is one factor to be
considered in determining whether undue experimentation would have been
required, but is not dispositive. (See MPEP § 2164.02).
The Examiner rejects the appealed claims for lack of enablement
because the claims are sufficiently broad to encompass devices including
spacers, each spacer having a single retaining element or hook and a single
slot; and because the Specification fails to describe or depict an example of a
spacer having only one hook and only one slot. (See Final Act. 3; Ans. 4 &
5). Despite acknowledging the Appellant’s arguments that one of ordinary
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Appeal 2016-004704
Application 14/448,137
skill in the art familiar with the Specification could have made and used the
claimed device without engaging in undue experimentation (see App. Br. 9;
Ans. 4 & 5), the Examiner does not find that one familiar with the
Specification would have had to perform undue experimentation in order to
make or use the claimed device. In the absence of such a finding, or of a
reason why the absence of such a finding is not dispositive, we do not
sustain the rejection.
DECISION
We REVERSE the Examiner’s decision rejecting claims 1—15 under
§ 112(a) for lack of enablement. We dismiss the appeal as to the remaining
issues raised by the Appellant.
REVERSED
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