Ex Parte Whitehouse et al

Patent Trial and Appeal Board

Dec 11, 2017

13502175 (P.T.A.B. Dec. 11, 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.
13/502,175 04/16/2012 Ian Roy Whitehouse 4928-202 (XA3155) 5753
22429 7590 12/18/2017
HAUPTMAN HAM, LLP
2318 Mill Road
Suite 1400
ALEXANDRIA, VA 22314
EXAMINER
WONG, JESSICA BOWEN
ART UNIT PAPER NUMBER
3644
NOTIFICATION DATE DELIVERY MODE
12/18/2017 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 @ ipfirm. com
pair_lhhb @ firsttofile. com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IAN ROY WHITEHOUSE, CARSTEN WEBER,
MARKUS FISCHER, and ALAIN TANGUY
Appeal 2016-000996
Application 13/502,1751
Technology Center 3600
Before CHARLES N. GREENHUT, LEE L. STEPINA, and
JASON W. MELVIN, Administrative Patent Judges.
Opinion of the Board filed by MELVIN, Administrative Patent Judge.
Opinion dissenting-in-part filed by GREENHUT, Administrative Patent
Judge.
DECISION ON APPEAL
This appeal arises under 35 U.S.C. § 134(a), from a final rejection of
claims 1—30.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part, designating our affirmances as new grounds of
rejection pursuant to 37 C.F.R. § 41.50(b).
1 Appellants identify Airbus Operations Ltd., Airbus Operations GMBH, and
Airbus Operations SAS as the real parties in interest. Appeal Br. 2.
2 An oral hearing was conducted on November 21, 2017.
Appeal 2016-000996
Application 13/502,175
BACKGROUND
The claims are directed to an aircraft horizontal stabiliser fitted with a
leading-edge strake. Claim 1, reproduced below, is illustrative:
1. An adjustable, or all-moving, horizontal stabiliser for an
aircraft, the stabiliser having a leading edge, a trailing edge, a
root and a tip, and a strake fixed with respect to the stabiliser
and attached to, or integrally formed with, the stabiliser
leading edge adjacent the root.
Appeal Br. 108 (Claims App.).
REJECTIONS
Appellants seek review of the following rejections:
1. Claims 24 and 29 stand rejected under 35 U.S.C. § 112(b) or 35
U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite for
failing to particularly point out and distinctly claim the subject
matter the inventor or a joint inventor, or for pre-AIA the
applicant, regards as the invention. Final Act. 2—3.
2. Claims 1, 7—9, 12—15, 19, and 20 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Adamson (US 2006/0157613 Al, pub.
July 20, 2006). Final Act. 3^4.
3. Claims 2—6, 10, and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Adamson and Ishimitsu (US 4,231,536, iss.
Nov. 4, 1980). Final Act. 4—5.
4. Claims 16—18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Adamson, Ishimitsu, and Lohse (US 6,113,028,
iss. Sept. 5, 2000). Final Act. 5—6.
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5. Claims 1 and 21—28 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Jones (US 6,698,688 Bl, iss. Mar. 2, 2004).
Final Act. 6—7.
6. Claims 1, 21, 29, and 30 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Jones and Ishimitsu. Final Act. 7—8.
7. Claims 1, 21, 29, and 30 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Morgan (US 2007/0102575 Al, pub. May 10,
2007) and Ishimitsu. Final Act. 8—10.
DISCUSSION
Indefmiteness
Claim 21 recites a device comprising “a horizontal stabiliser of an
aircraft.” Appeal Br. 111. Claim24 depends from claim21 and further
recites that “the stabiliser is attached to a tail end of an aircraft.” Appeal
Br. 111. Claim 29 recites “[a]n aircraft comprising: a main lifting wing; and
the device of claim 21 separate from the main lifting wing.” Appeal Br. 112.
The Examiner concludes that the phrase “an aircraft” in claims 24 and
29 “is indefinite because it is unclear whether this refers to an
additional/altemate aircraft or the same aircraft recited previously in
claim 21.” Final Act. 3. Appellants argue that the rejection is based on an
improper distinction between “a” and “the” and that “the independent claims
at issue are directed to a device for an aircraft, and the dependent claims are
directed to an aircraft with that device.” Appeal Br. 11.
“A claim is indefinite when it contains words or phrases whose
meaning is unclear.” In re Packard, 751 F.3d 1307, 1310-14 (Fed. Cir.
2014) (bracketed alteration omitted); Ex parte McAward, Appeal 2015-
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Application 13/502,175
006416, 2017 WL 3669566, at *5-6 (PTAB Aug. 25, 2017) (precedential)
(adopting the Packard standard for claims in examination). Here, we agree
with Appellants that the claims are sufficiently clear because the phrase “of
an aircraft” in claim 21 merely describes an aspect of the claimed
stabilizer—that it must be for use on an aircraft. Stated differently, the
phrase “of an aircraft” serves as an adjective or capability of the stabilizer,
and the claim language would have the same meaning if written “an aircraft
horizontal stabilizer.” No aircraft structure is required by claim 21. Claims
24 and 29, on the other hand, do recite an aircraft structure as an element of
the claim.
Accordingly, we do not sustain the rejection under § 112.
Adamson;
Adamson and Ishimitsu;
Adamson, Ishimitsu, and Lohse
The Examiner finds that Adamson teaches an “adjustable horizontal
stabilizer” as “wings of aircraft 600h, being adjustable via the flaps shown in
figure 6H.” Final Act. 3.
Appellants argue that Adamson does not teach an “adjustable
horizontal stabilizer” because the word “adjustable” requires that the entire
stabilizer be adjustable, not just flaps on the stabilizer. Appeal Br. 17—18.
Appellants point to the Specification, which states: “An ‘adjustable’
horizontal stabiliser is hinged so that its setting (angle of incidence) can be
altered with respect to the aircraft fuselage in flight.” Spec. 4:1—2. The
Specification clarifies that a hinged flap does not itself make a stabilizer
“adjustable” within the context of the described invention: “Both adjustable
and fixed horizontal stabilisers typically have a moveable control surface
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(elevator) hinged at the stabiliser trailing edge.” Id. at 4:3—5. The Examiner
does not address this argument in the Answer.
We agree with Appellants. The Examiner has not shown a teaching in
Adamson of a stabilizer where the entire stabilizer is hinged to make its
angle of incidence adjustable. Thus, Adamson does not teach “[a]n
adjustable, or all-moving, horizontal stabiliser” as claimed. Accordingly, we
do not sustain the anticipation rejection of claims 1, 7—9, 12—15, 19, and 20.
Because the Examiner relies on the same finding regarding Adamson
for the obviousness rejections including Adamson (see Final Act. 4—6;
Appeal Br. 36), we also do not sustain the rejection of claims 2—6, 10, and
11 over Adamson and Ishimitsu or the rejection of claims 16—18 over
Adamson, Ishimitsu, and Lohse.
Jones
The Examiner finds that Jones substantially teaches the limitations of
claim 1, but “does not specifically teach a strake fixed with respect to the
stabiliser, wherein the strake is attached to the stabiliser leading edge
adjacent the root, or integrally formed with the stabiliser.” Final Act. 6. The
Examiner finds that Jones teaches “a strake fixed with respect to another
horizontal stabiliser (101 figure 3), wherein the strake is attached to the
stabiliser leading edge adjacent the root, or integrally formed with the
stabiliser (shown near 100 in figure 3)” and that a skilled artisan would have
found it obvious “to provide the claimed strake on the claimed horizontal
stabiliser, since it has been held that rearranging parts of an invention
involves only routine skill in the art, and supplying a strake would provide
increase [d] aerodynamic performance as does the strake on the other
horizontal stabiliser.” Id.
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Appellants argue that the case law does not support the Examiner’s
conclusion regarding “rearranging parts” and that the Examiner fails to
adequately applying any case law to the facts of this case. Appeal Br. 39-
43. We agree that the Examiner has not provided adequate justification for
using Jones’s main-wing strake on Jones’s horizontal stabilizer. As here, the
various subcomponents of an aerodynamic surface interact with one another,
thus the Examiner has not demonstrated obviousness by relying on
rearranging those subcomponents being per se obvious in place of the fact-
specific inquiry required by § 103(a). In re Ochiai, 71 F. 3d 1565, 1571
(Fed. Cir. 1995).
Appellants also dispute the Examiner’s stated rationale that a skilled
artisan would use a strake on Jones’s stabilizer to “provide increased
aerodynamic performance,” noting that the Examiner has not provided
evidence that the strake would in fact improve performance of Jones’s
stabilizer. Appeal Br. 45—48. We agree that the Examiner has not provided
adequate support for the finding that the proposed modification of Jones
would provide increased aerodynamic performance. The Examiner states
that the modification would increase performance “as does the strake on the
other horizontal stabilizer” but does not support that Jones’s main-wing
strake in fact provides increased performance.
Accordingly, we do not sustain the rejection of claims 1 and 21—28
over Jones.
Jones and Ishimitsu
The Examiner finds that a skilled artisan would have found it obvious
“to incorporate the strake taught by Ishimitsu into the stabilizer of Jones in
order to enhance aerodynamic capabilities of the horizontal stabilizer where
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enhancement of stabilisers within aircrafts are well known to be desirable
within the art of aircraft design.” Final Act. 7. Appellants challenge this
finding, asserting first that Ishimitsu does not disclose a horizontal stabilizer.
The Examiner, however, does not rely on Ishimitsu for teaching a horizontal
stabilizer, so Appellants’ argument focuses on an inapposite distinction. The
Examiner relies on Ishimitsu as teaching a strake that will improve
aerodynamic performance.
Additionally, we do not agree with Appellants that Ishimitsu’s
aerodynamic surface is meaningfully distinguishable from the claimed
horizontal stabilizer. Appellants argue that “a stabilizer is something for
stabilizing, whereas an elevator or a rudder is something used for control”
and that “[t]hey are two different things in the conventional arts.” Appeal
Br. 72—73. Appellants’ Specification, however, does not support the
distinction Appellants attempt to draw. The Specification distinguishes “all-
moving” (as claimed) stabilizers, as “combin[ing] the functions of an
elevator and horizontal stabiliser.” Spec. 4:9-12. Further, the Specification
states that the horizontal stabilizer must satisfy “handling criteria” in order
“to provide the pitch necessary for carrying out the desired manoeuvres.”
Id. at 2:8—9. Thus, the Specification supports that a “horizontal stabiliser” as
claimed does not exclude surfaces that exert control over an aircraft’s
attitude.
Appellants also argue that Ishimitsu does not teach a strake, because it
refers to the aspect of its design as a “strake-like member.” Appeal Br. 73—
74. But Appellants provide no cognizable distinction between Ishimitsu’s
“strake-like member” and the claimed strake, other than the label.
Additionally, Ishimitsu is not fully consistent in this regard. It does refer to
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its invention as just “strake” in at least certain instances. Ishimitsu 8:52—53
(“It can be seen that the performance is substantially better than the same
airfoil without the strake.”); 9:37—39 (“Some separation is also evident on
the inboard portion between the trailing vortices from the strakes.”); Fig. 11
(“SMALL STRAKE,” “LARGE STRAKE”). The Specification broadly
uses the term “strake” as having “many synonyms, e.g. apex, fillet, vortex
generator, chine, fence, leading edge extension (LEX), leading edge root
extension (LERX), vane, etc.” Spec. 4:19-23. It also states that “the strake
as defined above has a sweep angle at the root which is significantly greater
than that of the horizontal stabiliser.” Id. at 5:9—10. That broad usage, in
combination with Ishimitsu’s range of teachings, supports the Examiner’s
finding that Ishimitsu teaches a strake.
Next, Appellants assert that the Examiner has not provided an
adequate rationale to support combining Ishimitsu’s strake with Jones’s
horizontal stabilizer. Appeal Br. 75—88. The argument takes several forms,
the first of which we understand to be that the Examiner has not supported
the assertion of improved aerodynamic performance from Ishimitsu’s strake.
Id. at 75—78. We agree to the extent that the Examiner does not explain the
support for that finding, but we find that Ishimitsu specifically teaches the
benefit of its strake. In particular, Ishimitsu presents its Figure 11, outlining
the overall aerodynamic performance as “BOOM ELEVATION MOMENT
COEFFICIENT,” a measure that Ishimitsu describes as encompassing both
lift and drag of the surface. Ishimitsu Fig. 11, 9:7—13 (“[Tjhese test results
take into account any increased drag which might result by the addition of
the strake-like members and of increased drag resulting from increased angle
of incidence, which would tend to cancel out the effects of the increased
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lift.”). Ishimitsu graphs the moment coefficient as a function of the
“incidence angle, which is the angle of attack with respect to the air stream.”
Id. at 8:34—38. From the test results depicted in Figure 11, Ishimitsu draws
two conclusions:
a. with both types of advanced technology airfoils tested, the
addition of the strake-like member improved performance with
regard to the net force imparted to the boom, in that the
ruddevators with the strake-like extension improved lift over a
wider range of angles of attack, [and]
b. the addition of a larger strake-like member improved lift
performance beyond what was achieved by the smaller strake-
like member.
Id. at 8:66—9:6. Thus, Ishimitsu amply supports a finding that its strake will
provide increased aerodynamic performance to a moveable aerodynamic
surface.
Appellants also argue that any aerodynamic enhancement to
Ishimitsu’s “ruddervator” would not translate to a horizontal stabilizer.
Appeal Br. 78—81. In this regard, Appellants point out that Ishimitsu’s
surfaces are positioned with a dihedral angle of 42° from horizontal. Id. at
78; Ishimitsu 5:39-41. Appellants provide no explanation or evidence,
however, supporting why a person of skill would expect that angle to change
the strake’s behavior. Absent such support, we are not apprised of a reason
that the dihedral angle impacts the issues before us. As an aerodynamic
surface, the dihedral angle will affect the forces that the surface imparts to
the body it is connected to, but we do not understand the changed direction
of gravity relative to the surface as a significant factor in the surface’s
performance itself. Separate from the dihedral angle, Appellants also assert
that Ishimitsu’s “strake-like component enables the refueling boom to
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operate at particularly large angles of attack (around 40 degrees)” and that
“[tjhese performance features are irrelevant to Jones, because such an angle
of attack would result in stall irrespective of the strake-like component.”
Appeal Br. 80. Ishimitsu’s Figure 11, however, shows that the aerodynamic
surface itself (as opposed to the refueling boom to which the surface is
connected) operates at much more moderate angles of attack. Appellants’
argument regarding the boom angle does not apprise us of error in the
Examiner’s rejection.
Appellants argue that because Jones is “directed to supersonic
transport,” the teachings of Ishimitsu cannot apply. Appeal Br. 82. But
Appellants accept that Jones also operates “at low speeds, such as landing
and takeoff.” Id. Thus, we do not agree with Appellants’ argument that
Ishimitsu’s strake is inapplicable to Jones because Jones can fly at
supersonic speeds. In addition, Appellants’ claims relate primarily to the
stabilizer itself and do not require any particular characteristics of an aircraft
with which the stabilizer is used.
Considering all of Appellants’ arguments, we are not apprised of error
in the Examiner’s rejection of claim 1 over Jones and Ishimitsu. Appellants
rely on the same argument for independent claim 21 (Appeal Br. 89), and do
not separately address dependent claims 29 or 30. We therefore affirm the
rejection of claims 1, 21, 29, and 30 over Jones and Ishimitsu. Because the
Examiner did not rely on Ishimitsu’s support for improved aerodynamic
performance from its strake, however, we designate this affirmance
regarding claims 1, 21, 29, and 30 as a new ground of rejection. In all other
regards, we adopt the Examiner’s findings regarding Jones and Ishimitsu.
See Final Act. 7—8.
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Morgan and Ishimitsu
The Examiner finds that Ishimitsu teaches a strake “attached or
integrally formed with the leading edge adjacent the root.” Final Act. 9-10.
The Examiner further finds that it would have been obvious to incorporate
Ishimitsu’s strake “into the stabilizer of Morgan.” Id. at 10.
Appellants argue that, once combined, any strake of Ishimitsu would
not be “attached or integrally formed with the stabiliser leading edge
adjacent the root” as claimed because Morgan teaches a stabilizer with a
fixed inboard (root) section and an adjustable outboard section. Appeal
Br. 92—95. We agree that the Examiner has not adequately explained how
the combination of Morgan and Ishimitsu would satisfy the claim language
above. Accordingly, we do not sustain the rejection of claim 1, or of claim
30, which depends from claim 1.
Claim 21, also subject to the rejection over Morgan and Ishimitsu,
does not contain the same “adjacent the root” language. Other than that
language, Appellants rely on the same arguments made against the rejection
over Jones and Ishimitsu. See Appeal Br. 90-106. Accordingly, we sustain
the rejection of claim 21 over Morgan and Ishimitsu for the same reasons
described above regarding Jones and Ishimitsu. We likewise sustain the
rejection of claim 29, which depends from claim 21. As with our
affirmances regarding Jones and Ishimitsu, we designate these affirmances
over Morgan and Ishimitsu as new grounds. In all regards other than the
reason for using Ishimitsu’s teachings, we adopt the Examiner’s findings
regarding Morgan and Ishimitsu. See Final Act. 9.
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NEW GROUNDS OF REJECTION
Our affirmance of the rejection of claims 1, 21, 29, and 30 over Jones
and Ishimitsu discussed above is based on explanation of the reason that a
person of skill would have looked to Ishimitsu that expands somewhat from
the Examiner’s statement. We therefore designate our affirmance as a new
ground of rejection under 37 C.F.R. § 41.50(b) to provide Appellants with a
full and fair opportunity to respond. Because our affirmance of the rejection
of claims 21 and 29 over Morgan and Ishimitsu relies on the same expanded
explanation, we also designate that rejection as a new ground.
DECISION
For the above reasons, the Examiner’s rejection of claims 1—30 is
affirmed-in-part. We reverse: the rejection of claims 24 and 29 as
indefinite; the rejection of claims 1, 7—9, 12—15, 19, and 20 as anticipated by
Adamson; the rejection of claims 2—6, 10, and 11 as unpatentable over
Adamson and Ishimitsu; the rejection of claims 16—18 as unpatentable over
Adamson, Ishimitsu, and Lohse; the rejection of claims 1 and 21—28 as
unpatentable over Jones; and the rejection of claims 1 and 30 as
unpatentable over Morgan and Ishimitsu. We affirm and designate as
including new grounds: the rejection of claims 1, 21, 29, and 30 as
unpatentable over Jones and Ishimitsu; and the rejection of claims 21 and 29
as unpatentable over Morgan and Ishimitsu.
Section 41.50(b) provides “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
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one of the following two options with respect to the new ground
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 prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under §41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01 (9th Ed.,
Rev. 07.2015, Nov. 2015).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART; 37 C.F.R, § 41.50(b)
GREENHUT, Administrative Patent Judge, dissenting-in-part.
In rejecting claims 24 and 29 under § 112, second paragraph, the
Examiner raised a legitimate concern regarding the double inclusion of the
phrase “an aircraft.” See, e.g., MPEP § 2173.05(o). It is true that there are no
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per se rules that double inclusion renders a claim indefinite. See Id.
However, contrary to Appellants’ argument simply dismissing this issue as
the Examiner’s overly mechanical application of a per se rule, the Examiner
did not apply a per se rule in making this rejection. The Examiner provided a
specific example of why, in this particular context, the double recitation of
“an aircraft” renders the scope of claims 24 and 29 unclear. Ans. 9. The
Examiner explained, with reference to Ishimitsu, that, for example,
ruddervator 24 could be considered a “stabiliser for” the boom’s expanded
housing 22, “an aircraft,”3 according to claim 1, while being “attached to the
tail end of’ a different aircraft, tanker 10, according to claim 24, or a
component of that different aircraft according to claim 29. Id. The Examiner
correctly pointed out, and Appellants do not dispute, that nothing in the
Specification suggests the claims should be interpreted to cover a stabilizer
“for” one aircraft that is “attached to the tail end of,” or a component of,
another aircraft. Appellants simply dismiss the Examiner’s reliance on
Ishimitsu as “meaningless.” App. Br. 8—9. However, this is not correct. Prior
art references can often provide useful examples of why the scope of the
claimed subject matter may not be sufficiently definite because the very
purpose of the definiteness requirement is so that a claim may be evaluated
against the prior-art or a potentially infringing product. In re Hammack, 427
F.2d 1378, 1382 (CCPA 1970).
One might consider this situation to relate only to the breadth of the
claim, in that it seems evident that the “aircraft” of claim 1 can simply be a
3 The potential issue of whether the housing 22 and ruddervator 24 could be
considered “an aircraft” does not detract from the Examiner’s example
which could similarly apply to any towed aircraft.
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different aircraft that that of claims 24 and 29. See, e.g., MPEP § 2174
(citing In re Borkowski, 422 F.2d 904 (CCPA 1970)). However such a
construction requires reading the claims in isolation, as broadly as possible
while our task is to read the claims in light of the Specification, only as
broadly as reasonable. The PTO should not be applying a claim construction
so remote from the Specification that it results a breadth that renders the
claim lacking sufficient supporting disclosure under § 112, first paragraph.
See, e.g., In re Wolfensperger 302 F. 2d 950, 954 (CCPA 1962). It is this
inability to give meaning to the express language of the claims while at the
same time interpreting them in light of the Specification that results in an
unreasonable degree of uncertainty as to the claim scope. See, e.g., MPEP
§ 2173.03 (citing, inter alia, In re Cohn, 438 F.2d 989, (CCPA 1971)).
The majority attempts to resolve this issue by recasting the claim
phrase “horizontal stabiliser for an aircraft” to read “an aircraft horizontal
stabiliser.” First, I cannot agree that these phrases necessarily have the same
meanings. The phrase actually recited attributes the stabilizer’s use,
presumably for stabilization, to a particular aircraft, whereas the majority’s
language could more reasonably be regarded as referring to aircraft
generally. Ignoring the word “an” so that claim 1 recited “a horizontal
stabiliser for aircraft” would have a similar effect. Second, and more
importantly, these issues are not ripe for our review because it is not our
charge to ignore words in a claim or recast claims on behalf of Appellants.
In prosecution before the PTO “it is the applicants’ burden to precisely
define the invention, not the PTO’s.” In re Morris, 127 F. 3d 1048, 1056
(Fed. Cir. 1997). The Examiner was justified in requiring the Appellants to
resolve this ambiguity during prosecution while Appellants have the
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opportunity to do so. See Ex Parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI
2008) accord In re Packard, 751 F.3d 1307, (Fed. Cir. 2014). “An essential
purpose of patent examination is to fashion claims that are precise, clear,
correct, and unambiguous. Only in this way can uncertainties of claim scope
be removed, as much as possible, during the administrative process.” In re
Zletz, 893 F. 2d 319, 322 (Fed. Cir. 1989). Rejections under § 112, second
paragraph, are the appropriate, if not the only, mechanism by which the
Examiner can raise these types of issues of claim clarity. Appellants’
arguments are simply dismissive and do not provide any meaningful analysis
of the legal issues raised by the Examiner. If the Examiner’s articulation of
the basis for the rejection was not sufficiently informative, we have recourse
to resolve any potential issues of notice under 37 C.F.R. § 41.50(b).
For the foregoing reasons, I respectfully dissent from the majority’s
decision to reverse the Examiner’s rejection under 35U.S.C. § 112, second
paragraph. I join in the remainder of the majority’s well-reasoned analysis.
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