MUSASHI ENGINEERING, INC.

Patent Trials and Appeals BoardMar 24, 2021

2020000743 (P.T.A.B. Mar. 24, 2021)

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. 15/933,481 03/23/2018 Kazumasa Ikushima P20582US02 1235 38834 7590 03/24/2021 WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP 8500 LEESBURG PIKE SUITE 7500 TYSONS, VA 22182 EXAMINER ZHOU, QINGZHANG ART UNIT PAPER NUMBER 3752 NOTIFICATION DATE DELIVERY MODE 03/24/2021 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): patentmail@whda.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KAZUMASA IKUSHIMA Appeal 2020-000743 Application 15/933,481 Technology Center 3700 Before JENNIFER D. BAHR, CARL M. DEFRANCO, and MICHAEL L. WOODS, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–7.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter A NEW GROUND OF REJECTION. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as MUSASHI ENGINEERING, INC. Appeal Br. 2. 2 The Examiner withdrew the rejection of claims 8 and 9 under 35 U.S.C. § 103(a). Ans. 6. Appeal 2020-000743 Application 15/933,481 2 CLAIMED SUBJECT MATTER Appellant’s invention is directed to a liquid material ejector. Spec. ¶ 1. Claim 1, reproduced below from page 12 of the Appeal Brief (App. A), is illustrative of the claimed subject matter: 1. A liquid material ejector comprising: a liquid material supply port through which a liquid material is supplied; a nozzle for ejecting the liquid material; a valve block having a metering bore to be filled with the liquid material and a liquid material supply channel communicating with the liquid material supply port; a selector valve having a first position for allowing communication between the metering bore and the liquid material supply channel and a second-position for allowing communication between the metering bore and the nozzle; a plunger advancing and retracting in the metering bore; a plunger driver having a plunger actuator for driving the plunger to advance and retreat; a valve driver having a valve actuator for driving the selector valve to select the first position or the second position; and wherein the plunger actuator and the valve actuator are arranged in the longitudinal direction. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Hammerl US 5,671,873 Sept. 30, 1997 Voskuil US 6,811,058 B2 Nov. 2, 2004 Ikushima US 2005/0067438 A1 Mar. 31, 2005 Appeal 2020-000743 Application 15/933,481 3 REJECTIONS Claims 1 and 2 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Voskuil and Hammerl. Claims 3–7 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Voskuil, Hammerl, and lkushima.3 OPINION Indefiniteness (New Ground of Rejection) A claim is properly rejected as indefinite under 35 U.S.C. § 112, second paragraph, if, after applying the broadest reasonable interpretation in light of the specification, the metes and bounds of a claim are not clear because the claim “contains words or phrases whose meaning is unclear.” In re Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014) (per curiam) (approving, for pre-issuance claims, the standard from MPEP § 2173.05(e)); see also Ex parte McAward, Appeal 2015-006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (adopting the approach for assessing indefiniteness approved by the Federal Circuit in Packard). The meaning of “wherein the plunger actuator and the valve actuator are arranged in the longitudinal direction” in claim 1 (see Appeal Br. 12 (App. A)) is unclear. First, the claim does not define “the longitudinal direction,” so it is not clear from the context of the claim what direction this denotes relative to the structure recited in the claim. Further, even assuming that it were clear from the claim what direction is “the longitudinal direction,” there are several possible interpretations for the phrase “arranged 3 In the Final Action, the Examiner included claims 8 and 9 in this rejection (Final Act. 6–7). The Examiner withdrew this rejection as to claims 8 and 9 in the Answer. Ans. 6. Appeal 2020-000743 Application 15/933,481 4 in the longitudinal direction” within the context of the claim. For example, this phrase could be interpreted as defining the relative positioning of the plunger actuator and the valve actuator— that the plunger actuator and the valve actuator are located at two different points along a longitudinal axis. Alternatively, this phrase could be interpreted as defining the orientation of each of the plunger actuator and the valve actuator independently; for example, the plunger actuator extends (i.e., has its longest dimension) in the longitudinal direction and the valve actuator extends in the longitudinal direction. Another possible interpretation is that the direction of action, or movement, of each of the plunger actuator and the valve actuator is in the longitudinal direction. For the reasons set forth below, Appellant’s Specification and drawings are not sufficiently enlightening to resolve the aforementioned ambiguity, or lack of clarity, as to what the phrase “wherein the plunger actuator and the valve actuator are arranged in the longitudinal direction” means in claim 1. Appellant’s Specification discloses that a problem with a prior art apparatus is that “the valve driving source has a structure projecting in the horizontal direction with respect to the advancing/retracting direction of the plunger,” thereby making it “difficult to arrange a plurality of ejectors side by side.” Spec. ¶ 5. This suggests that, by “longitudinal direction,” Appellant may intend to refer to the advancing/retracting direction of the plunger. However, if “the longitudinal direction” were construed to mean the advancing/retracting direction of the plunger, the limitation in claim 1 that the plunger actuator extends in the longitudinal direction appears to be superfluous. Further, the Specification’s reference to “the horizontal direction with respect to the advancing/retracting direction of the plunger” is Appeal 2020-000743 Application 15/933,481 5 confusing because the term “horizontal” is generally understood as denoting a direction or plane parallel to the horizon, and at a right angle from the vertical. The Specification also discloses that, after appreciating the problem “attributable to the valve driving source being arranged in the horizontal direction, the inventor has realized saving of a space in the horizontal direction by arranging the valve driving source in the longitudinal direction of the base block.” Spec. ¶ 7. This reference to the horizontal and longitudinal directions suggests that Appellant’s use of “the longitudinal direction” may be intended to denote the vertical direction. The use of such references as vertical and horizontal is problematic in defining an apparatus because the orientation of any component of an apparatus relative to vertical or horizontal depends on the orientation of the apparatus itself. Appellant’s Specification describes “valve driving section 10” as comprising “a rotary actuator 11 having an air supply port A 12 and an air supply port B 13.” Spec. ¶ 15. According to the Specification, “rotary actuator 11 supplies air to one of the air supply port A 12 and the air supply port B 13 and discharges air from the other port, thus causing a rotary shaft A 14 to be rotated through a predetermined angle.” Id. By changing the location of the supply and discharge with respect to the ports, rotary shaft A 14 can be rotated in the reverse direction through a predetermined angle. Id. Rotary shaft A 14 is connected to main drive gear 17, thereby transmitting a force to transmission section 50. Id. It is not clear in what direction a rotary actuator would be considered to be arranged. One logical possibility would be the direction of the axis of rotation of the rotary actuator. However, the axis of rotation of Appellant’s Appeal 2020-000743 Application 15/933,481 6 rotary actuator 11 appears to be in the horizontal direction (see, e.g., Fig. 3), which Appellant’s Specification characterizes as problematic (see Spec. ¶ 7). Further, much like the prior art valve driving source that the Specification characterizes as problematic, Appellant’s valve driving source has a structure (rotary shaft A 14) projecting in the horizontal direction, which also is normal to the advancing/retracting direction of the plunger. See, e.g., Fig. 3. Inasmuch as Appellant’s Specification seeks to improve upon the prior art by arranging the valve actuator in the longitudinal direction, as distinguished from the horizontal direction, construing the direction in which rotary actuator 11 is arranged to be the longitudinal direction, given the sparse disclosure of rotary actuator 11,4 seems inconsistent with the Specification. Transmission section 50 comprises main drive gear 17, subordinate gear 16, and chain 51 extending between and around gears 16 and 17. Spec. ¶ 21. Chain 51 extends between gears 16 and 17 in the vertical direction, parallel to the advancing/retracting direction of plunger rod 25. See Figs. 3–5. It is not clear whether transmission section 50 is considered part of the “valve actuator.”5 To the extent that rotary actuator 11 and transmission section 50 together are considered to be the “valve actuator,” it is not clear in what direction this structure should be interpreted to be “arranged.” 4 Notably, Appellant’s Specification and drawings do not describe in any detail the structure of rotary actuator 11, aside from the air supply ports and rotary shaft A 14. See Spec. ¶¶ 15, 21, 25, 27, 29, 30, 32, 33, 35–37; Figs. 1–8, 10, 13. 5 Appellant and the Examiner disagree as to the proper construction of “actuator.” See Appeal Br. 5; Ans. 7; Reply Br. 3. Appeal 2020-000743 Application 15/933,481 7 In summary, the metes and bounds of claim 1 are not clear because the meaning of the phrase “wherein the plunger actuator and the valve actuator are arranged in the longitudinal direction” is unclear. Accordingly, claim 1 is indefinite. Claims 2–9, which depend from claim 1, do not contain language that remedies the lack of clarity of this phrase and, thus, are likewise indefinite. Thus, pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW GROUND of rejection of claims 1–9 under 35 U.S.C. § 112, second paragraph, as indefinite. Obviousness Rejections Having determined, for the reasons discussed above, that claims 1–7 are indefinite, we cannot sustain the rejections of these claims under 35 U.S.C. § 103(a), because to do so would require speculation as to the scope of the claims.6 See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962) (holding that the Board erred in affirming a rejection of indefinite claims 6 Indeed, the limitation “wherein the plunger actuator and the valve actuator are arranged in the longitudinal direction” is the only feature of claim 1 that the Examiner finds lacking in Voskuil, thereby precipitating the Examiner’s proposed combination of Voskuil with Hammerl, which Appellant contests. See Ans. 4 (finding that Voskuil does not disclose that “the plunger actuator and the valve actuator are arranged in the longitudinal direction due to the actuator not being shown”), 7 (determining that it would have been obvious to modify Voskuil’s device “by rearranging the plunger actuator and the valve actuator of Voskuil in the longitudinal direction as taught by Hammerl”); Appeal Br. 6–7; Reply Br. 3–6. Further it is not clear to us either how the Examiner construes the phrase in question or how the Examiner proposes to modify Voskuil in view of Hammerl to satisfy this limitation, assuming such modification even is necessary to satisfy the limitation. Thus, the meaning of the phrase in question is pertinent to the issues raised by Appellant in appealing the obviousness rejections and to our determination as to the propriety of these rejections. Appeal 2020-000743 Application 15/933,481 8 under 35 U.S.C. § 103(a), because the rejection was based on speculative assumptions as to the meaning of the claims). It should be understood, however, that our decision in this regard is based solely on the indefiniteness of the claimed subject matter, and does not reflect on the adequacy of the prior art evidence applied in support of the rejections. CONCLUSION We REVERSE the Examiner’s rejections of claims 1–7 under 35 U.S.C. § 103(a). We enter a NEW GROUND of rejection of claims 1–9 under 35 U.S.C. § 112, second paragraph, pursuant to our authority under 37 C.F.R. § 41.50(b). DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1, 2 103(a) Voskuil, Hammerl 1, 2 3–7 103(a) Voskuil, Hammerl, Ikushima 3–7 1–9 112, second paragraph 1–9 Overall Outcome 1–7 1–9 FINALITY OF DECISION This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides: Appeal 2020-000743 Application 15/933,481 9 When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise 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. REVERSED; 37 C.F.R. § 41.50(b)