Ex Parte Wernimont et al

Patent Trial and Appeal BoardMar 12, 2019

13237115 (P.T.A.B. Mar. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/237, 115 09/20/2011 Chris Wernimont 30565 7590 03/14/2019 WOODARD, EMHARDT, HENRY, REEVES & WAGNER, LLP 111 MONUMENT CIRCLE, SUITE 3700 INDIANAPOLIS, IN 46204-5137 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. 024182-000005 6098 EXAMINER LIN,KO-WEI ART UNIT PAPER NUMBER 3762 NOTIFICATION DATE DELIVERY MODE 03/14/2019 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): DocketDept@uspatent.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRIS WERNIMONT, MARK NORDEMEYER, MICHAEL LA WREN CE, and CLARK BYRUM, JR. Appeal2017-010423 Application 13/237,115 Technology Center 3700 Before DANIELS. SONG, LEE L. STEPINA, and ARTHUR M. PESLAK, Administrative Patent Judges. PESLAK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Chris Wernimont et al. ("Appellants") appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 1 and 34--51. 1 We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. 1 Biologics Modular LLC is identified as the real party in interest. Appeal Br. 1. Appeal2017-010423 Application 13/237,115 THE CLAIMED SUBJECT MATTER Appellants' invention is directed "to cleanroom space that can be efficiently provided and moved between various research, development and production locations." Spec. 1: 13-15. Claim 1, reproduced below with italics added, is illustrative of the claimed subject matter. 1. A mobile, modular cleanroom facility comprising at least two pre-assembled modules, wherein each of said pre-assembled modules comprises a metal shipping container and is transportable by intermodal freight transport in its pre-assembled form, and wherein said modular cleanroom facility includes an air filtration system effective for cleaning air to at least an ISO 8 classification and for providing such air to an interior space of the facility; wherein each of said modules includes an opening in its side adapted to permit easy passage into and from the module; wherein the side opening of a first module is connected to the side opening of a second module by a module connector; wherein said module connector comprises a first connector frame assembly fixedly attached to said first module in a manner to completely surround the side opening of the first module, and a second connector frame assembly fixedly attached to said second module in a manner to completely surround the side opening of the second module, wherein said first connector frame assembly is connected directly to said second connector frame assembly in a manner effective to provide a smooth, seamless, and airtight passageway between the two modules through the adjacent and connected side openings. 2 Appeal2017-010423 Application 13/237,115 REJECTIONS 1) Claims 1, 34, 37, 39, and 51 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Hope (US 2009/0305626 Al, published Dec. 10, 2009) and Clark (US 4,854,094, issued Aug. 8, 1989). 2) Claim 35 is rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Hope, Clark, and Zeik (US 6,973,758 B2, issued Dec. 13, 2005). 3) Claim 36 is rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Hope, Clark, and Tucker (US 6,471,582 Bl, issued Oct. 29, 2002). 4) Claim 38 is rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Hope, Clark, and Platts (US 2009/0049795 Al, published Feb. 26, 2009). 5) Claims 40-46, 48, and 50 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Hope, Nakagawa (US 2002/0068524 Al, published June 6, 2002), and Clark. 6) Claim 47 is rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Hope, Nakagawa, Clark, and Tucker. 7) Claim 49 is rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Hope, Nakagawa, Clark, and Platts. DISCUSSION Rejection 1 The Examiner finds that Hope discloses many of the limitations of claim 1, but fails to disclose "the first module is connected to the second module by a module connector." Final Act. 2-3. The Examiner finds that "Clark teaches a first module (21) connected to a second module (23) by a module connector (combination of 27, 29, and 43)." Id. at 3. 3 Appeal2017-010423 Application 13/237,115 Appellants contend that the combination of Hope and Clark fails to disclose a module connector comprising a first connector frame assembly and second connector frame assembly fixedly attached respectively to the first module and second module as recited in claim 1. Appeal Br. 10. Appellants argue that a "connector frame assembly" should be interpreted to require "some structure 'fixedly attached' to the container wall." Id. at 12. According to Appellants, Clark's disclosure of "[s]imply bolting the side walls of two cleanroom modules together does not meet the requirements of a 'reasonable' interpretation of the claim term in view of the specification and drawings. . . . The cleanroom module's rails and walls are not 'attached' to the module, they are the module." Id. at 12-13. The Examiner responds that "the combination of steel beams 27, metal fitting 29 and the flanges 43 of the adjacent sidewalls of two containers 21 and 23 are the connectors for modules or containers." Ans. 13. In response to Appellants' claim interpretation, the Examiner submits that Appellant[s'] figure 34 and paragraphs [0192] and [0193] indicate that [the] module connector end is welded to [the] container bottom rail. Therefore, in light of the specification, the connector frame assembly is part of the container after it is welded to the container. Clark shows that each connector ( as indicated above) is fixedly attached to and part of a container. Therefore, Clark teaches the limitations about "connector frame assembly" and "fixedly attached". Id. at 14. For the following reasons, we do not sustain the rejection of claim 1. We give claim terms their broadest reasonable interpretation consistent with the Specification as it would be interpreted by one of ordinary skill in the art. See In re Suitco Surface, Inc., 603 F.3d 1255, 4 Appeal2017-010423 Application 13/237,115 1259---60 (Fed. Cir. 2010); In re Morris, 127 F.3d 1048, 1054--55 (Fed. Cir. 1997). Although the claims are interpreted in light of the Specification, limitations from the Specification are not read into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). However, "[t]he protocol of giving claims their broadest reasonable interpretation ... does not include giving claims a legally incorrect interpretation." In re Skvorecz, 580 F.3d 1262, 1267 (Fed. Cir. 2009). We begin our analysis with the claim language. In re Power Integrations, Inc., 884 F.3d 1370, 1376 (Fed. Cir. 2018) ("[C]laim construction must begin with the words of the claims themselves.") (internal citation and quotations omitted). Claim 1 requires "at least two pre- assembled modules ... wherein each of said modules includes an opening in its side." Appeal Br. 22 (Claims App.). Claim 1 also requires that "a first connector frame assembly fixedly attached to said first module in a manner to completely surround the side opening ... and a second connector frame assembly fixedly attached to said second module in a manner to completely surround the side opening." Id. ( emphasis added). The "fixedly attached" language of claim 1 indicates that the connector frame assembly is a separate structural part from the module. See Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1255 (Fed. Cir. 2010). Appellants' Specification supports this reading of claim 1 by providing that "[t]he opening may include a module connector that is separate and distinct from either of the two module containers, although the module connector may be fixedly attached to one or both [of the] containers." Spec. 28:8-10. Consequently, we determine that one of ordinary skill in the art, after reviewing the Specification, would conclude that the broadest reasonable 5 Appeal2017-010423 Application 13/237,115 interpretation of claim 1 requires that the recited connector frame assemblies are separate structural components from the respective modules. Elements 27, 29, and 43 of Clark, which the Examiner finds correspond to the recited connector frame assemblies, are disclosed as part of Clark's modules 21 and 23. See Clark 3:60-66, 4:28-32, Fig. 1. Clark further discloses that the containers 21 and 23 are either "welded together at their end walls with steel straps ( 41)" or "may be joined together with bolts through their adjacent inner side walls." Id. at 4:24--28. The Examiner, however, does not direct our attention to any element in Clark, separate from modules 21 and 23, that is fixedly attached to modules 21 and 23 that also surrounds the opening in the module sidewalls as required by claim 1. Consequently, the Examiner's finding that Clark discloses a first connector frame assembly and a second connector frame assembly as recited in claim 1 is based on an unreasonably broad claim interpretation. As the rejection is based on an erroneous factual finding, the conclusion of obviousness cannot stand. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (holding that "[t]he legal conclusion of obviousness must be supported by facts.[] Where the legal conclusion is not supported by facts it cannot stand."). We, therefore, do not sustain the rejection of claim 1 and claims 34, 37, 39, and 51 which depend from claim 1. Rejections 2, 3, and 4 Claims 35, 36, and 38 depend from claim 1. Appeal Br. 22-23. The Examiner's reliance on additional disclosure from Zeik, Tucker, and Platts does not cure the deficiencies in the rejection of claim 1 discussed above. Final Act. 5-7. Therefore, we do not sustain the rejections of claims 35, 36, and 3 8 for the same reasons discussed above in connection with claim 1. 6 Appeal2017-010423 Application 13/237,115 Re} ections 5, 6, and 7 Independent claim 40 contains the same limitation as claim 1 requiring first and second connector frame assemblies fixedly attached to the first and second modules. Appeal Br. 23-24 (Claims App.). Claims 41-50 depend directly or indirectly from claim 40. Id. at 24--25. In rejecting claim 40, the Examiner makes findings substantially similar to claim 1 based on Clark. Final Act. 9-10. The Examiner's reliance on additional disclosure from Nakagawa, Tucker, and Platts does not cure the deficiencies in the rejection of claim 1 discussed above. Final Act. 7-12. Therefore, we do not sustain the rejections of claims 40-50 for the same reasons discussed above in connection with claim 1. DECISION The Examiner's decision rejecting claims 1 and 34--51 is reversed. REVERSED 7