Ex Parte Willim

Patent Trial and Appeal Board

Jun 8, 2017

13009966 (P.T.A.B. Jun. 8, 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.
13/009,966 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
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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.
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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.
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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
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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
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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].
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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
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