Ex Parte WillimDownload PDFPatent Trial and Appeal BoardJun 8, 201713009966 (P.T.A.B. Jun. 8, 2017) Copy Citation 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. 13/009,966 01/20/2011 Hans-Dieter WILLIM 0709-821 1795 65363 7590 06/12/2017 Todd A. VAUGHN Jordan IP Law, LLC 12501 Prosperity Drive, Suite 401 Silver Spring, MD 20904 EXAMINER BOEHLER, ANNE MARIE M ART UNIT PAPER NUMBER 3611 NOTIFICATION DATE DELIVERY MODE 06/12/2017 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): tvaughn@jordaniplaw.com admin2 @ j ordaniplaw .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HANS-DIETER WILLIM Appeal 2016-004088 Application 13/009,966 Technology Center 3600 Before CARL W. WHITEHEAD JR., MICHAEL J. STRAUSS, and MICHAEL J. ENGLE, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2016-004088 Application 13/009,966 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection of claims 1, 2, 5—8, 10—12, and 14—22. Claims 3, 4, 9, and 13 are canceled. We have jurisdiction over the rejected claims under 35 U.S.C. § 6(b). We affirm. THE INVENTION The claims are directed to a crawler travel gear and crawler-mounted crane. Spec., Title. Claim 1, reproduced below with a disputed limitation emphasized in italics, is representative of the claimed subject matter: 1. A crawler travel gear for a crawler-mounted crane, the crawler travel gear comprising: a crawler carrier; rollers arranged at the crawler carrier, including first plurality of rollers connected thereto that are selectively vertically displaceable and which produce a first contact surface which contact an underlying surface at a front region of the crawler carrier, a second plurality of rollers that are selectively vertically displaceable and which produce a second contact surface which contact an underlying surface at a rear region of the crawler carrier, and a third plurality of rollers extending between the first and second plurality of rollers and which are not selectively vertically displaceable; a crawler chain surrounding the rollers and having a plurality of contact surfaces which contact an underlying surface, the contact surfaces being located at a front region and a rear region of the crawler carrier; adjustment means provided at the front region and the rear region of the crawler carrier for selectively spatially adjusting the contact surfaces relative to the underlying surface by selectively moving the first and second plurality of rollers; and a controller to monitor the stability of the crawler- mounted crane in dependence of at least one of a uniform ground pressure of the contact surfaces, the spatial location of tilting edges, and the spatial location of the total center of gravity of the 2 Appeal 2016-004088 Application 13/009,966 crawler-mounted crane, and align the crawler-mounted crane in a horizontal plane based upon the monitored at least one of the uniform ground pressure of the contact surfaces, the spatial location of tilting edges, and the spatial location of the total center of gravity of the crawler-mounted crane. REJECTIONS The Examiner made the following rejections: Claims 1, 2, 5—8, 10—12, and 14—22 stand rejected under 35 U.S.C. §112, first paragraph, as failing to comply with the written description requirement. Claims 21 and 22 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite.1 APPELLANT’S CONTENTION Applicant respectively contends that one of ordinary skill, based upon a harmonious reading of [cited portions of the Specification], would readily discern the controller feature expressed by claims 1, 12, and 16, namely, to align the crawler- mounted crane in a horizontal plane based upon the monitored at least one of the uniform ground pressure of the contact surfaces, the spatial location of tilting edges, and the spatial location of the total center of gravity of the crawler-mounted crane. Br. 13. 1 Although the Examiner lists only claim 22 in the statement of the rejection, the Examiner explains both claims 21 and 22 run afoul of 35 U.S.C. § 112, second paragraph, based on identical recitations of contact surfaces having the same center of gravity as the crane. Final Act. 3. For purposes of this appeal we consider both claims 21 and 22 to be rejected under 35 U.S.C. §112, second paragraph. 3 Appeal 2016-004088 Application 13/009,966 ANALYSIS Appellant’s contention is unpersuasive. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Final Act. 2—A) and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellant’s Appeal Brief (Ans. 2— 4), and concur with the conclusions reached by the Examiner. We highlight the following for emphasis. 35 U.S.C. § 112, First Paragraph The Examiner finds Appellant’s Specification discloses only that the controller monitors crane stability, but not that is also aligns the crawler- mounted crane in a horizontal plane as recited by the pending independent claims 1, 12, and 16. Final Act. 2. The Examiner finds “there is no indication that any automatic control is done by the controller and certainly not that an alignment control is done by the controller in response to any of the criteria claimed.” Id. According to the Examiner “[t]he controller could simply provide a display or signal that guides the operator when he is controlling the crane,” i.e., manual alignment of the crane rather than alignment performed by the controller. Final Act. 2—3; Ans. 3. Appellant argues “[t]here is a strong presumption that an adequate written description of the claimed invention is present when the application is filed.” Br. 10 (citing MPEP § 2163(1)). In support of the disputed limitation, Appellant directs attention to paragraphs 5, 11, 13, 16, 24, and 36 of the Specification, arguing, “[bjased upon a harmonious reading of at least these paragraphs, one having ordinary skill in the art would readily appreciate that the such features (of monitoring and aligning) were contemplated in light of the clear support discussed hereinabove.” Br. 15. 4 Appeal 2016-004088 Application 13/009,966 The Examiner has presented a clear explanation as to what claim limitations are found to be lacking from the disclosure. Final Act. 2—3 Ans. 2-4. By statute, 35 U.S.C. § 112, first paragraph, requires that “[t]he specification shall contain a written description of the invention.” Under this statue, a claim should be rejected for lack of written description when it recites elements found to be without support in the original disclosure. See In re Rasmussen, 650 F.2d 1212 (CCPA 1981). The test for written description is summarized in Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (parallel citations omitted): In order to satisfy the written description requirement, the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue. See Fujikawa v. Wattanasin, 93 F.3d 1559, 1570 (Fed. Cir. 1996). Nonetheless, the disclosure “must ... convey with reasonable clarity to those skilled in the art that ... [the inventor] was in possession of the invention.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). Put another way, one skilled in the art, reading the original disclosure, must “immediately discern the limitation at issue” in the claims. Waldemar Link GmbH & Co. v. Osteonics Corp., 32 F.3d 556, 558 (Fed. Cir. 1994). That inquiry is a factual one and must be assessed on a case-by-case basis. See Vas-Cath, 935 F.2d at 1561 (“Precisely how close the original description must come to comply with the description requirement of § 112 must be determined on a case-by-case basis.”). Because the sufficiency of the written description is evaluated by one of ordinary skill in the art, details that would be known by the skilled artisan need not be included in a patent specification. See Hyatt v. Boone, 146 F.3d 1348, 1353 (Fed. Cir. 1998). However, when an explicit limitation in a claim is not present in the written description, the burden is on the applicant to show that a person of ordinary skill in the art would have understood that 5 Appeal 2016-004088 Application 13/009,966 the description necessarily includes that limitation. Cf. id. at 1354—55. “One shows that one is ‘in possession’ of the invention by describing the invention, with all of its claimed limitations, not that which makes it obvious.” Lockwood v. Am. Airlines Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). Thus, the written description requirement is not satisfied if the disclosure merely would lead one to speculate as to “modifications that the inventor might have envisioned, but failed to disclose.” Id. The U.S. Patent and Trademark Office (USPTO) bears the initial burden of presenting a prima facie case of unpatentability. In re Glaug, 283 F.3d 1335, 1338 (Fed. Cir. 2002). The burden regarding the written description requirement is described in In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996) (parallel citations omitted): Insofar as the written description requirement is concerned, that burden is discharged by “presenting evidence or reasons why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims.” Wertheim, 541 F.2d at 263. Thus, the burden placed on the examiner varies, depending upon what the applicant claims. If the applicant claims embodiments of the invention that are completely outside the scope of the specification, then the examiner or Board need only establish this fact to make out a prima facie case. Id. at 263- 64. If, on the other hand, the specification contains a description of the claimed invention, albeit not in ipsis verbis (in the identical words), then the examiner or Board, in order to meet the burden of proof, must provide reasons why one of ordinary skill in the art would not consider the description sufficient. Id. at 264. Once the examiner or Board carries the burden of making out a prima facie case of unpatentability, “the burden of coming forward with evidence or argument shifts to the applicant.” Oetiker, 977 F.2d at 1445. We have reviewed the cited portions of Appellant’s Specification and agree with the Examiner in finding there is inadequate written description 6 Appeal 2016-004088 Application 13/009,966 support for the disputed limitation of the independent claims. Although the Specification describes both stability and alignment functionalities, only the stability function is clearly disclosed as attributable to a controller. See, e.g., Spec. 136. In contrast, the function of aligning the crawler-mounted crane is not disclosed as being performed by a controller, and is not inherently limited to a controller rather than, for example, a human operator. See Ans. 2—3. Thus, we find no express or inherent disclosure of the disputed limitation. See also MPEP § 2163(I)(B) [R-07.2015], We are further unpersuaded by Appellant’s argument “[t]here is a strong presumption that an adequate written description of the claimed invention is present when the application is filed.” Br. 10 (citing MPEP § 2163(I)).2 The quoted language is from a section discussing and titled “Original Claims.” MPEP § 2163(I)(A) [R-07.2015]. This is because “original claims are part of the original specification.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349 (Fed. Cir. 2010) (en banc). The disputed limitation, however, did not appear in the original claims but instead was added by the Amendment filed August 11, 2014. Thus, because the disputed limitation was not in the application as originally filed, no such presumption applies; instead, the standards discussed above apply. See also MPEP § 2163(I)(B) [R-07.2015] (titled “New or Amended Claims”). For the reasons discussed above, Appellant has failed to provide sufficient evidence to persuade us of the required support for the amended claim. Accordingly, Appellant’s contention the Examiner erred in finding the Specification fails to comply with the written description requirement of 35 2 We note the current version of the MPEP does not characterize the presumption as “strong.” See MPEP § 2163(I)(A) [R-07.2015]. 7 Appeal 2016-004088 Application 13/009,966 U.S.C. § 112, first paragraph, is not persuasive. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (explaining arguments of counsel cannot take the place of factually supported objective evidence); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (attorney argument is not evidence). Therefore, we sustain the rejection of independent claim 1 and, for the same reasons, the rejection of independent claims 12 and 16 under 35 U.S.C. § 112, first paragraph, together with the rejection of dependent claims 2, 5—8, 10, 11, 14, 15, and 17-22. 35 U.S.C. § 112, Second Paragraph Appellant does not contest the rejection of claims 21 and 22 under 35 U.S.C. § 112, second paragraph. Therefore, we summarily affirm those rejections. See MPEP § 1205.02 (“If a ground of rejection stated by the examiner is not addressed in the appellant’s brief, appellant has waived any challenge to that ground of rejection and the Board may summarily sustain it . . . .”); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI2010) (precedential) (“If an appellant fails to present arguments on a particular issue — or, more broadly, on a particular rejection — the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection.”). DECISION We affirm the Examiner’s decision to reject claims 1, 2, 5—8, 10—12, and 14—22. 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 8 Copy with citationCopy as parenthetical citation