FORD GLOBAL TECHNOLOGIES, LLCDownload PDFPatent Trials and Appeals BoardNov 18, 20202020000041 (P.T.A.B. Nov. 18, 2020) 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. 14/967,906 12/14/2015 HONG QIAO 83591452 2007 28866 7590 11/18/2020 MACMILLAN, SOBANSKI & TODD, LLC - FORD ONE MARITIME PLAZA - FIFTH FLOOR 720 WATER STREET TOLEDO, OH 43604 EXAMINER STERLING, AMY JO ART UNIT PAPER NUMBER 3631 NOTIFICATION DATE DELIVERY MODE 11/18/2020 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): MST@mstfirm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte HONG QIAO ____________ Appeal 2020-000041 Application 14/967,906 Technology Center 3600 ____________ Before HUBERT C. LORIN, NINA L. MEDLOCK, and MATTHEW S. MEYERS, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–9 and 11–19, which are all the pending claims in the application. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,” filed June 5, 2019) and Reply Brief (“Reply Br.,” filed September 30, 2019), and the Examiner’s Answer (“Ans.,” mailed July 30, 2019) and Non-Final Office Action (“Non-Final Act.,” mailed December 5, 2018). Appellant identifies Ford Global Technologies LLC as the real party in interest. Appeal Br. 1. Appeal 2020-000041 Application 14/967,906 2 CLAIMED INVENTION Appellant’s claimed invention relates to “automotive transmissions and in particular to transmission mount assemblies for use in securing a transmission in an automotive vehicle.” Spec. ¶ 1. Claims 1, 11, and 17 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A transmission mount comprising: a mount base having a first surface with a transmission attachment point; [and] a second surface opposite the first surface and with a vehicle attachment point, wherein the mount base has first and second end portions angled towards a middle portion of the second surface between the first and second end portions. Appeal Br. 16 (Claims Appendix). REJECTIONS Claims 1–9 and 11–19 are rejected under 35 U.S.C. § 112(b) as indefinite for failing to particularly point out and distinctly claim the subject matter that Appellant regards as the invention. Claims 1–9 and 11–19 are rejected under 35 U.S.C. § 102(a)(1) as unpatentable over Applicant Admitted Prior Art (“AAPA”). Appeal 2020-000041 Application 14/967,906 3 ANALYSIS Indefiniteness We are persuaded, as detailed below, that the Examiner erred in rejecting claims 1–9 and 11–19 under 35 U.S.C. § 112(b). Appeal Br. 7–8; see also Reply Br. 2–5. Claim 1, reproduced above, recites a transmission mount comprising “a first surface with a transmission attachment point” and “a second surface opposite the first surface . . . with a vehicle attachment point.” Independent claims 11 and 17 include substantially similar language. In rejecting claims 1–9 and 11–19 under 35 U.S.C. § 112(b), as indefinite, the Examiner asks, rhetorically, “[w]hen does literal infringement occur?” Non-Final Act. 3. The Examiner asserts,“[t]he prior art as shown in Figure 2 and the device as disclosed in Figure 3 are identical in structure.” Id. And the Examiner opines, “[t]he intended use such as the attachment point being for a transmission or a vehicle is indefinite because the attachment points are structurally identical,” i.e., “[t]here is no separating factor that makes one [attachment point] . . . vehicle[-]attaching or another [attachment point] transmission[-]attaching and this is indefinite in an apparatus claim.” Id. Appellant argues, inter alia, that the claim language is not indefinite and does not read on the prior art because “the transmission attachment point, and the surface that it is on, [are] specifically defined, as [are] the vehicle attachment point, and the surface that it is on.” Appeal Br. 7. According to Appellant, “[o]ne skilled in the art would readily understand the recitation of the different attachment points and the fact that they are on Appeal 2020-000041 Application 14/967,906 4 opposite sides of the mount base, thus these claim terms are not indefinite.” Reply Br. 3.2 “The legal standard for definiteness is whether a claim reasonably apprises those of skill in the art of its scope.” In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994). The “inquiry therefore is . . . to determine whether the claims do, in fact, set out and circumscribe a particular area with a reasonable degree of precision and particularity.” In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). The Examiner’s position here, as best understood, is that a person of ordinary skill in the art would not be able to determine whether or not a device infringes claims 1–9 and 11–19 because the claimed “transmission attachment point” and “vehicle attachment point” are identical, and, thus, a non-infringing device would be indistinguishable from the claimed device, i.e., whether a device infringes (or not) would depend on the (arbitrary) orientation of the device. The difficulty with the Examiner’s position is that it lacks evidentiary support. Appellant has made no admission that the transmission and vehicle attachments are structurally identical; to the contrary, Appellant has consistently disputed any such suggestion.3 And although the Specification 2 Appellant also argues that claims 4 and 11–19 are not indefinite for the additional reason that “claims 4 and 11–19 specifically include a transmission that is secured to the transmission attachment point.” Appeal Br. 8. The Examiner has not separately addressed these claims and does not address the Appellant’s argument in the Answer. Because we reverse the indefiniteness rejection as to all claims, we need not, and do not, consider Appellant’s additional arguments for claims 4 and 11–19. 3 See, e.g., Appeal Br. 7 (“[T]he [E]xaminer’s blanket statement as to ‘identical in structure’ appears to be misstating the claimed subject matter, Appeal 2020-000041 Application 14/967,906 5 describes that both types of attachment points may be “bolted connections,” we find no indication in the Specification that the transmission and vehicle attachment points are identical.4 Citing paragraph 15 of Appellant’s Specification, the Examiner notes in the Answer that the Specification describes the “transmission attachment points” as “first and second” attachment points, and the “vehicle attachment points” as “third and fourth” attachment points. Ans. 3–4. The Examiner reasons that “[t]he numbering of the attachment points as first, second, third and fourth shows that the attachment points are numerically within the same group,” i.e., that the claimed transmission and vehicle attachment points are identical. Id. at 4.5 But, we fail to see how the use of sequential numerical identifiers in the Specification amounts to an admission by Appellant or otherwise an indication that the claimed transmission and vehicle attachment points are identical. The Specification clearly discloses “first and second transmission attachment points 214 and 216,” as well as distinct “third and fourth vehicle attachment points 218 and 220.” Spec. ¶¶ 15, 18 (emphasis added). We agree with Appellant that a person of skill in the art would understand what is claimed when the claims are read in light of the Specification, including the claim language itself, namely that the claimed mount base has a first surface with a transmission attachment point and a and thus is in error.”), 10 (“[T]he [E]xaminer’s argument that there is no difference in the structure of the devices between figures 2 and 3 is in error.”). 4 Spec. ¶¶ 15 (discussing prior art Figure 2), 18 (discussing the embodiment of Figures 3 and 4). 5 See previous footnote. Appeal 2020-000041 Application 14/967,906 6 second surface with a vehicle attachment point. Therefore, we do not sustain the Examiner’s rejection of claims 1–9 and 11–19 under 35 U.S.C. § 112(b). See Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (The test for definiteness under 35 U.S.C. § 112, second paragraph, now 35 U.S.C. § 112(b), is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.”). Anticipation In rejecting claims 1–9 and 11–19 under 35 U.S.C. § 102(a)(1), the Examiner cites AAPA, namely Figure 2 of the Specification, as disclosing all the claim elements. Non-Final Act. 3–5. According to the Examiner, “[t]he prior art device[, shown in Figure 2] is identical to the [claimed] device in Figure 3”; i.e., “[t]he [claimed] device is just being used in an orientation 180° rotated from the prior art device shown in use.” Id. at 4. The Examiner’s rejection is, thus, premised on the Examiner’s finding that “[t]he devices have the exact same shape and the attachment points are also identical; [t]he difference is in the use” Id. Appellant argues, inter alia, that “the [E]xaminer’s argument that there is no difference in the structure of the devices between [F]igures 2 and 3 is in error, as these changes in the structure are relevant and specifically do change the equivalent elastic center of the transmission mounted in the vehicle.” Appeal Br. 10 (citing Spec. ¶ 7). Responding to Appellant’s argument, the Examiner maintains the position that “[t]he attachment points are no different in structure whether they are attached to a vehicle or a transmission or any other function” and “can be used interchangeably for both vehicles and transmissions because Appeal 2020-000041 Application 14/967,906 7 [both] the vehicle and the transmission[ ] . . . would have a corresponding hole for a bolt.” Ans. 5. But, as described above, we find no evidence of record to support that position. The Specification admittedly describes that both types of attachment points may be “bolted connections.” Spec. ¶ 15. But, we find nothing in Specification to support the Examiner’s finding that the vehicle and transmission attachment points are identical or interchangeable. Because the Examiner’s rejection is premised on a finding that is not adequately supported on the present record, we do not sustain the Examiner’s rejection of claims 1–9 and 11–19 under 35 U.S.C. § 102(a)(1). CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–9, 11–19 112(b) Indefiniteness 1–9, 11–19 1–9, 11–19 102(a)(1) AAPA 1–9, 11–19 Overall Outcome 1–9, 11–19 REVERSED Copy with citationCopy as parenthetical citation