McCue Corporation

Patent Trials and Appeals Board

Jul 8, 2020

2019000892 (P.T.A.B. Jul. 8, 2020)

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.
14/573,204 12/17/2014 Thomas Ustach 40039-121001 2638
69713 7590 07/08/2020
OCCHIUTI & ROHLICEK LLP
50 Congress Street
Suite 1000
Boston, MA 02109
EXAMINER
KWIECINSKI, RYAN D
ART UNIT PAPER NUMBER
3635
NOTIFICATION DATE DELIVERY MODE
07/08/2020 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):
INFO@ORPATENT.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte THOMAS USTACH, DAVID S. McCUE, and AMANDA GENE
MELTZER
____________________

Appeal 2019-0008921
Application 14/573,2042
Technology Center 3600
____________________

Before ERIC S. FRAHM, BETH Z. SHAW, and MATTHEW J. McNEILL,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE

1 Throughout this Opinion, we refer to: (1) the Final Office Action mailed
November 2, 2017 (“Final Act.”); (2) the Appeal Brief filed May 23, 2018
(“Appeal Br.”); (3) the Examiner’s Answer mailed September 14, 2018
(“Ans.”); and (5) the Reply Brief filed November 14, 2018.
2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284 (2011), amended 35 U.S.C. § 112, e.g., to rename the first
paragraph therein as 35 U.S.C. § 112(a). The filing date of the present
application is December 17, 2014, after the AIA’s effective date for
applications (i.e., March 16, 2013). Accordingly, this Decision refers to the
post-AIA version of 35 U.S.C. § 112.
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Introduction
Appellant3 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 4–11, 13–24, and 26–30.4 Claims 2, 3, 12, and 25 have been
canceled (see Final Act. 2; Appeal Br. 10, 12, 14, Claims Appendix). We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse the rejection under 35 U.S.C. § 112(a).
Appellant’s Disclosed and Claimed Invention
Appellant’s disclosed and claimed invention, entitled “Bumper
Assembly” (Title), is a bumper assembly for use in a commercial
environment, such as a retail store (see Spec. ¶¶ 1, 2). The use of bumper
assemblies mitigates damage to product storage fixtures “by deflecting
and/or absorbing the force of impact by objects such as shopping carts,
shopping baskets, and customers” (see Spec. ¶ 3).
Appellant recognized that although bumpers made of “flexible plastic
material ha[ve] the advantage of absorbing forces of impact from objects
such as shopping carts, shopping baskets, and customers without breaking or
becoming permanently deformed” (Spec. ¶ 10), they “are generally

3 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. “The word ‘applicant’ when used in this title refers to the
inventor or all of the joint inventors, or to the person applying for a patent as
provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant
identifies the real party in interest as McCue Corporation (Appeal Br. 1).
4 Throughout this Opinion, we refer to: (1) the Final Office Action mailed
November 2, 2017 (“Final Act.”); (2) the Appeal Brief (“Appeal Br.”) filed
May 23, 2018; (3) the Examiner’s Answer mailed September 14, 2018
(“Ans.”); and (4) the Reply Brief filed November 14, 2018. The oral
hearing scheduled for April 17, 2020, and rescheduled for July 29, 2020,
was waived by Appellant’s paper filed June 24, 2020.
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susceptible to sustaining unsightly abrasions when they are hit by an object”
and “suffer from problems such as shrinkage over time due to temperature,
material degradation over time, and customer concerns that the plastic
material may include dangerous materials (e.g., bisphenol-A)” (Spec. ¶ 10).
Appellant also recognized that bumpers made of metallic materials
like stainless steel “are unlikely to break or sustain abrasions when hit by an
object” (Spec. ¶ 11), but “are susceptible [to] becoming dented or otherwise
permanently deformed when hit by an object” (Spec. ¶ 11) and are difficult
to install (see Spec. ¶ 11).
Accordingly, Appellant’s invention pertains to a two-piece bumper
assembly 100 (see Fig. 2), that is made up of an elongate rigid shell 102
mounted on an elongate base 104 having a flexible latching element 222 (see
also Fig. 3, 346) for latching the shell 102 to the base 104. This two-piece
construction, using a rigid outer shell and a flexible base/latch assembly,
provides a bumper assembly that is (i) abrasion and deformation resistant
(see Spec. ¶ 15); and (ii) simple to install (see Spec. ¶ 16), and “more
aesthetically pleasing than some conventional bumpers due to the two-piece
bumper assembly” (Spec. ¶ 17), due to its two piece construction.
Exemplary Claim
Independent claim 1 under appeal is exemplary. Claim 1, with
bracketed lettering/numbering, formatting, and emphases added to key
portions of the claim at issue, reads as follows:
l. A bumper assembly comprising:
[A] an elongate rigid shell formed of a metallic material
and having a first degree of rigidity, the shell including
[A1] an inner surface;
[A2] an outer surface;
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[A3] a first shell edge; and
[A4] a first flange protruding from the first shell
edge in a direction toward the inner surface of the
elongate rigid shell,
[B] an elongate base including
[B1] a base body including a first base edge;
[B2] a first flexible latching element extending
from the first base edge of the base body, the first
flexible latching element including a first latching
protrusion having a first inclined outer surface and a first
shoulder, the first flexible latching element having a
second degree of rigidity less than the first degree of
rigidity; and
[B3] a plurality of support members extending
from the base body, each support member including a
proximal end attached to the base body, a distal end
including a contact portion for substantially preventing
deformation of the elongate rigid shell, the contact
portion configured to lie adjacent to the elongate rigid
shell when the elongate base is inserted into the elongate
rigid shell, and a shaft extending between the proximal
end and the distal end,
wherein the contact portion has a width greater
than a width of the shaft;
wherein the elongate base is configured for
insertion into the elongate rigid shell ,with the first flange
causing deflection of the first flexible latching element
and engaging the first shoulder of the first latching
protrusion.
Appeal Br. 10, Claims Appendix (emphases, formatting, and bracketed
lettering/numbering added). Remaining independent claim 11 recites
commensurate limitations pertaining to a bumper assembly, and includes an
end cap (see Figs. 6–14; Spec. ¶¶ 9, 25–33).
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Examiner’s Rejection
The Examiner rejected claims 1, 4–11, 13–24, and 26–30 under 35
U.S.C. § 112(a) as failing to comply with the written description
requirement, i.e., to provide an adequate written description of the claimed
invention so as to reasonably convey to one skilled in the relevant art that
the inventors had possession of the claimed invention at the time the
application was effectively filed (Final Act. 2–3). Specifically, the
Examiner determined that the Specification lacks support for the recitations
of “flexible” and “rigid” as used to describe the elongated shell (see e.g.,
claim 1, limitation A) and the flexible latching element (see e.g., claim 1,
limitation B2) of the elongated base (see e.g., claim 1, limitation B), as
recited in claims 1 and 11 (see Final Act. 3; Ans. 3–5). The Examiner also
determined that “[t]he disclosure does not provide an explanation or support
for the degrees of rigidity of the different elements of the claimed invention
relative to one another” (Final Act. 3).
Appellant’s Contentions
With regard to the written description rejection of claims 1, 4–11, 13–
24, and 26–30, Appellant presents arguments on the basis of independent
claim 1, and relies on those arguments as to the patentability of the
remaining claims (see Appeal Br. 5–9; Reply Br. 1–8).
Appellant contends paragraphs 4 and 46 of the Specification provide
adequate support for limitations A and B2 recited in claim 1 (see Appeal Br.
6; Reply Br. 1, 3–5). Appellant also contends the following:
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(1) That “it would not have been unreasonable for the ordinary artisan
to recognize that obviously the cantilever has a lesser degree of
rigidity than the flange” (Appeal Br. 7);
(2) “[T]hat the meanings of ‘flexible’ and ‘rigid’ are well known
enough so that no express definitions should be required” (Appeal
Br. 8);
(3) “There is the consistent use of ‘rigid’ and ‘flexible’ to describe the
relevant parts. And the description of how the device operates
would only be possible if the latch and shell had the rigidity
relationship as claimed” (Appeal Br. 9);
(4) “Although the text does not state that the shell is more rigid than
the latch, this would be the most obvious explanation for the
phenomenon described in ¶ 46” (Reply Br. 3), with the result
being that “the latch flexes because it is less rigid than the shell”
(Reply Br. 4);
(5) “[I]t is entirely reasonable for one of ordinary skill in the art to
infer from ¶ 46 that the shell must be more rigid than the latch,”
and “[s]uch an inference would be entirely consistent with the
described phenomenon of the shell’s flange deflecting the latch
rather than the other way around” (Reply Br. 4);
(6) “[O]ne of ordinary skill in the art would have understood from
¶ 46 that [Appellant] was in possession of an invention in which
the flexible latching element is less rigid than the shell, which is
precisely what the claim recites” (Reply Br. 5);
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(7) The shell “is formed from a metallic material” as disclosed in
paragraph 4 of the Specification (Reply Br. 1);
(8) “[O]ne of ordinary skill in the art would recognize that most
metals at room temperature are fairly rigid” (Reply Br. 2); and
(9) Accordingly, there are plenty of good reasons for why one of
ordinary skill in the art would have understood Applicant to be in
possession of the claimed invention. There is the reference to
“‘shell,’ which suggests something more rigid than what it
encloses. There is the consistent use of ‘rigid’ and ‘flexible’ to
describe the relevant parts. And the description of how the device
operates, would only be possible if the latch and shell had the
rigidity relationship as claimed” (Appeal Br. 9).
Claims 1 and 11, as independent claims, each recite commensurate
limitations regarding “an elongate rigid shell formed of a metallic material
and having a first degree of rigidity” (see, e.g., claim 1, limitation A), and
“an elongate base” (see, e.g., claim 1, limitation B) having a “first flexible
latching element having a second degree of rigidity less than the first degree
of rigidity” (see, e.g., claim 1, limitation B2). Therefore, we find the
arguments regarding claim 1 dispositive of all claims rejected for written
description.
Principal Issue on Appeal
Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 5–9)
and the Reply Brief (Reply Br. 1–8), the following issue is presented on
appeal:
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Did the Examiner err in rejecting claims 1, 4–11, 13–24, and 26–30 as
lacking written description support for the recitations in claims 1 and 11 of
“an elongate rigid shell formed of a metallic material and having a first
degree of rigidity” (see, e.g., claim 1, limitation A), and “an elongate base”
(see, e.g., claim 1, limitation B) having a “first flexible latching element
having a second degree of rigidity less than the first degree of rigidity” (see,
e.g., claim 1, limitation B2), on the basis that the Specification as originally
filed did not reasonably convey to one skilled in the relevant art that the
inventor had possession of the claimed invention at the time the application
was effectively filed?

ANALYSIS
We agree with (i) Appellant’s contentions one through nine listed
above, and as a result, (ii) Appellant’s conclusions that the Examiner erred
in rejecting claims 1, 4–11, 13–24, and 26–30 under 35 U.S.C. § 112(a) as
failing to provide an adequate written description of the invention.
The test for compliance with the written description requirement is
whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date. Ariad Pharm., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “[T]he level of detail
required to satisfy the written description requirement varies depending on
the nature and scope of the claims and on the complexity and predictability
of the relevant technology.” Id.; cf. U.S. v. Telectronics, Inc., 857 F.2d 778,
785 (Fed. Cir. 1988) (“The test of enablement is whether one reasonably
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skilled in the art could make or use the invention from the disclosures in the
patent coupled with information known in the art without undue
experimentation.”).
However, “actual ‘possession’ or reduction to practice outside of the
specification is not enough. Rather, . . . it is the specification itself that must
demonstrate possession.” Ariad, 598 F.3d at 1352; see also PowerOasis,
Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306-07 (Fed.Cir.2008)
(explaining that § 112, first paragraph, “requires that the written description
actually or inherently disclose the claim element”). “[I]t is not a question of
whether one skilled in the art might be able to construct the patentee’s
device from the teachings of the disclosure. . . . Rather, it is a question
whether the application necessarily discloses that particular device. . . . A
description which renders obvious the invention for which an earlier filing
date is sought is not sufficient.” Lockwood v. American Airlines, Inc., 107
F.3d 1565, 1572 (Fed. Cir. 1997) (quoting Jepson v. Coleman, 314 F.2d 533,
536 (CCPA 1963)).
The “elongate rigid shell” and “first flexible latching element” are
functional terms, defined by what these elements do rather than what the
elements are, and as such do not inherently render claim 1 indefinite. See
Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir.
2008). In fact, functional language can “promote[] definiteness because it
helps bound the scope of the claims by specifying the operations that the
[claimed invention] must undertake.” Cox Commc’ns, 838 F.3d at 1232.
When a claim limitation is defined in “purely functional terms,” a
determination of whether the limitation is sufficiently definite is “highly
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dependent on context (e.g., the disclosure in the specification and the
knowledge of a person of ordinary skill in the relevant art area).”
Halliburton, 514 F.3d at 1255. The ambiguity inherent in functional terms
may be resolved where the Specification “provides a general guideline and
examples sufficient to enable a person of ordinary skill in the art to determine
the scope of the claims.” Enzo Biochem. Inc. v. Applera Corp., 599 F.3d
1325, 1335 (Fed. Cir. 2010).
Here, paragraphs 4 and 46 and original claim 1 of the Specification
support not only (i) the use of the terms “rigid” and “flexible” in claims 1
and 11, but also (ii) the degrees of rigidity of the different elements of the
claimed invention relative to one another.
Paragraphs 4 and 46 of the Specification describe the relationship
between the elongate rigid shell and first flexible latching element in the
following manner:
In a general aspect, a bumper assembly includes an
elongate rigid shell formed of a metallic material and an
elongate base. The elongate rigid shell includes an inner
surface, an outer surface, a first shell edge, and a first flange
protruding from the first shell edge in a direction toward the
inner surface of the elongate rigid shell. The elongate base
includes a base body including a first base edge and a first
flexible latching element extending from the first base edge of
the base body, the first flexible latching element including a
first latching protrusion having a first inclined outer surface and
a first shoulder. The elongate base is configured for insertion
into the elongate rigid shell with the first flange compressing
the first flexible latching element and engaging the first
shoulder of the first latching protrusion.

Spec. ¶ 4 (emphases added).
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Focusing first on the first latching element 222, as the
elongate rigid shell 102 is lowered onto the elongate base
104, the first flange 212 makes contact with the first inclined
surface 348 of the first latching protrusion 346. As the
elongate rigid shell 102 continues to be lowered onto the
elongate base 104, the first flange 212 maintains contact
with the first inclined surface 348. Since the first flange 212
is made of a rigid material, and the first latching element
222 is flexible, the first cantilevered portion 342 is deflected
inward toward the base body 221 as the first flange 212
moves along the first inclined surface 348.

Spec. ¶ 46 (emphases added).
And, original claim 1 sets forth the concept of the general relationship
between the shell and latching element by using the terms “rigid” and
“flexible” as follows:
1. A bumper assembly comprising:
an elongate rigid shell formed of a metallic material, the
shell including
an inner surface;
an outer surface;
a first shell edge; and
a first flange protruding from the first shell edge in a
direction toward the inner surface of the elongate rigid shell;
an elongate base including
a base body including a first base edge; and
a first flexible latching element extending from the
first base edge of the base body, the first flexible latching
element including a first latching protrusion having a first
inclined outer surface and a first shoulder;
wherein the elongate base is configured for insertion into the
elongate rigid shell with the first flange compressing the first
flexible latching element and engaging the first shoulder of
the first latching protrusion.

Spec. ¶ 16, Claim 1 (emphases added).
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Based on the foregoing disclosures, one of ordinary skill in the art at
the time of the invention would understand that the rigid shell has a higher
degree of rigidity than the flexible latching element, as recited in limitations
A and B of claim 1, and as commensurately recited in claim 11. Because
original claim 1 and paragraphs 4 and 46 of the Specification show and
describe the concept of a rigid shell having a higher degree of rigidity than
the flexible latching element of the base, the originally filed Specification
reasonably conveys to one of ordinary skill in the art that Appellant had
possession of the disputed limitation recited in claims 1 and 11. In this light,
we agree with Appellant’s arguments (see Appeal Br. 5–9; Reply Br. 1–8)
that the originally filed Specification fully supports the limitations recited in
claims 1, 4–11, 13–24, and 26–30 of “an elongate rigid shell formed of a
metallic material and having a first degree of rigidity” (see, e.g., claim 1,
limitation A), and “an elongate base” (see, e.g., claim 1, limitation B) having
a “first flexible latching element having a second degree of rigidity less than
the first degree of rigidity” (see, e.g., claim 1, limitation B2).
Therefore, based upon the findings above, on this record, we are
persuaded of error in the Examiner’s determinations that the disputed
limitations, as well as the concept of relative rigidity of the shell and
latching element of the base, lack written description support. We cannot
agree with the Examiner that (i) the terms “rigid” and “flexible” are not well
known enough, and thus express definitions of these terms are required (see
Ans. 5); or (ii) more detail is needed in the Specification as to “the extent of
how the shell is rigid, and the specific degree of rigidity” (Ans. 4).

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CONCLUSION
In summary, on the record before us on appeal, Appellant has
persuaded us that the Examiner erred in rejecting claims 1, 4–11, 13–24, and
26–30 as being unpatentable under 35 U.S.C. § 112(a) for lack of written
description support in the Specification. Therefore, we do not sustain the
Examiner’s written description rejection.
For all of the reasons above, we hold as follows:

Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 4–11,
13–24,
26–30
112(a) Written
Description
1, 4–11,
13–24, 26–
30

REVERSED