Pat Fore

Patent Trials and Appeals BoardDec 4, 2020

2020002914 (P.T.A.B. Dec. 4, 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. 14/492,431 09/22/2014 Pat Halton Fore III 33003-RA-DIV 9237 13543 7590 12/04/2020 Next IP Law Group LLC 131 S. Cortez St. New Orleans, LA 70119 EXAMINER IHEZIE, JOSHUA K ART UNIT PAPER NUMBER 3633 NOTIFICATION DATE DELIVERY MODE 12/04/2020 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): bbalser@nextiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte PAT HALTON FORE III ____________ Appeal 2020-002914 Application 14/492,431 Technology Center 3600 ____________ Before EDWARD A. BROWN, BENJAMIN D. M. WOOD, and WILLIAM A. CAPP, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final rejection of claims 1, 2, 5, 7–9, 12, and 14–18. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Université Laval as the real party in interest. See Application Data Sheet filed Sept. 25, 2013. Appeal 2020-002914 Application 14/492,431 2 THE INVENTION Appellant’s invention relates to precast concrete structures. Spec. ¶ 2. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. An apparatus comprising: a reinforcement cage shaped in the form of a desired structure; at least one lifter, the at least one lifter incorporated into a lateral side of the reinforcement cage by continuous interweaving with the reinforcement cage in an over and under method from one end of the lifter to the other, the lifter further configured to fold down during pouring of concrete over the reinforcement cage in position in a mold and to spring up after the mold is removed; and concrete molded around the reinforcement cage, the lifter protruding from a smooth surface of the concrete with no voids. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: NAME REFERENCE DATE Hoyer US 4,262,951 Apr. 21, 1981 Dial US 2002/0083658 A1 July 4, 2002 Bennett US 2007/0186492 A1 Aug. 16, 2007 The following rejections are before us for review: 1. Claims 1, 2, 5, 7–9, 12, and 14–18 are rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. 2. Claims 1, 2, 5, 7–9, 12, and 14–18 are rejected under 35 U.S.C. § 112(b) as indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention. 3. Claims 1, 2, 5, 7–9, 12, and 14–18 are rejected under 35 U.S.C. § 103 as being unpatentable over Bennett, Hoyer, and Dial. Appeal 2020-002914 Application 14/492,431 3 OPINION Indefiniteness In accordance with prevailing case law, we review the Examiner’s Section 112(b) indefiniteness rejection before reaching the Section 112(a) written description rejection. See Ex parte Moore, 439 F.2d 1232, 1235 (CCPA 1971) (explaining that definiteness should be determined before conducting an analysis under the written description requirement). During prosecution, Appellant amended independent claims 1, 7, and 14 to add limitations reciting that the lifter is incorporated into the reinforcement cage by “continuous interweaving” from “end to end.” Compare Claims App. with Spec. 8–10. The Examiner determines such amended claim language to be indefinite. Final Act. 3. All of the claims rejected under this ground of rejection share common subject matter and are argued as a group. Appeal Br. 5. We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv). In examining an application under 35 U.S.C. § 112(b), the PTO is obliged to test the claims for “reasonable precision.” In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). The PTO can properly reject a claim as indefinite if the claim is ambiguous, vague, incoherent, opaque, or otherwise unclear. Id. at 1311. “If no reasonably definite meaning can be ascribed to certain terms in the claim, the subject matter does not become obvious–the claim becomes indefinite.” In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). The test for definiteness under 35 U.S.C. § 112, is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). Appeal 2020-002914 Application 14/492,431 4 Section 112 places the burden of precise claim drafting on the applicant. See In re Morris, 127 F.3d 1048, 1056–57 (Fed. Cir. 1997). Rigorous application of the statutory standard to particularly point out and distinctly claim the subject matter regarded to be the invention serves an important public notice function. Predicate Logic, Inc. v. Distributive Software, Inc., 544 F.3d 1298, 1300 (Fed. Cir. 2008). Appellant directs our attention to two passages in the Specification as purportedly providing sufficient guidance to render the claim language at issue definite, namely: (1) “Lifter 240 may be incorporated into reinforcement cage 230 by interweaving in an over and under method”; and (2) “Lifter 240 may be separate from reinforcement cage 230.” Spec. ¶ 24; Appeal Br. 5. Appellant respectfully submits that the ordinary meaning of being continuously interwoven is for the interweaving to have no break between the beginning of the interweaving and the end of the interweaving. Fig. 2 shows no break in the lifter. Reply Br. 2. Appellant furnishes a drawing that shows reinforcement cage 230 with first open end 220 and second open end 210. Spec. ¶ 24, Fig. 2. In the drawing, lifter 24 is disposed approximately mid-way between the two opposing ends and has very little length with respect to the axial dimension of the cage. Lifter 24 also appears to be configured as a loop with no discernable “ends.” Id. Nowhere in the Specification, as originally filed, is lifter 240 described as having ends. See generally Spec. During prosecution, Appellant submitted a new drawing, labeled Figure 2A, and simultaneously amended the Specification to introduce disclosure of a Appeal 2020-002914 Application 14/492,431 5 lifter 240 with discernable “ends.” See Specification Amendment filed November 18, 2015, Fig. 2A.. Furthermore, at least a portion of lifter 240 protrudes above reinforcement cage 230 in Figure 2. Substantially the same portion of lifter 240 protrudes above concrete pipe 100 after the concrete is poured into a mold. Spec. ¶ 25, Fig. 3. In order for us to determine whether Appellant’s claimed “interweaving” is “continuous,” there would need to be some disclosure in the Specification and/or persuasive argument in Appellant’s briefs that would allow us to differentiate between interweaving that is discontinuous as opposed to continuous and do so from “end to end.” For example, Appellant’s Figure 2 embodiment is described in paragraph 24 of the Specification. Spec. ¶ 24, Fig. 2. Paragraph 24 merely describes interweaving as being in an “over and under method.” Id. ¶ 24. There is no description or explanation as to whether such over and under weaving takes place with respect to each and every lengthwise element of the reinforcement cage, or every other lengthwise element, or some other regular or irregular interval. Figure 2 shows that at least one or more of the lengthwise elements is skipped where lifter 240 protrudes above the reinforcement case. Id. Fig. 2. It is unclear to us whether such irregularity in the interweaving process is intended to be consistent or inconsistent with interweaving that is “continuous.” Also, considering that lifter 240 as depicted in Figure 2 appears to be configured as a loop with no discernible “ends,” it is unclear to us what it means for interweaving to be continuous from “end to end” as recited in claim 1. Appeal 2020-002914 Application 14/492,431 6 In view of the described vagaries and uncertainties in the claim language, we sustain the Examiner’s Section 112(b) indefiniteness rejection of claims 1, 2, 5, 7–9, 12, and 14–18. See In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (explaining that during patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed). Written Description All of the claims rejected under this ground of rejection share common subject matter and are argued as a group. Final Act. 2; Appeal Br. 4–5. Claim 1 is representative. See 37 C.F.R. § 41.37(c)(1)(iv). The written description requirement of 35 U.S.C. § 112 provides, in pertinent part, that “[t]he specification shall contain a written description of the invention.” That requirement is satisfied only if the inventor “convey[s] with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention,’ and demonstrate[s] that by disclosure in the specification of the patent.” Centocor Ortho Biotech, Inc. v. Abbott Labs., 636 F.3d 1341, 1348 (Fed. Cir. 2011) (quoting Carnegie Mellon Univ. v. Hoffmann–La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008)). “The essence of the written description requirement is that a patent applicant, as part of the bargain with the public, must describe his or her invention so that the public will know what it is and that he or she has truly made the claimed invention.” AbbVie Deutschland GmbH & Co. v. Janssen Biotech, Inc., 759 F.3d 1285, 1298 (Fed. Cir. 2014); Nuvo Pharmaceuticals (Ireland) Designated Activity Company v. Dr Reddy’s Labs Inc., 923 F.3d 1368, 1377 (Fed. Cir. 2019). New or amended claims that introduce elements or limitations which are not supported by the as filed Appeal 2020-002914 Application 14/492,431 7 disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967 (CCPA 1971). In the instant case, the Examiner determines that the amended claim language directed to “continuous interweaving” from “end to end” constitutes new matter and otherwise lacks written description support. Final Act. 2. We have previously determined hereinabove that this claim language is indefinite. In view of our inability to determine, with the requisite precision, what the disputed claim language means, we are unable to properly analyze whether there is written description support for such ambiguous, vague, opaque, and confusing claim language. We, therefore, do not reach the Examiner’s Section 112(a) written description ground of rejection. See 37 C.F.R. § 41.50(a)(1) (The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the Examiner on that claim, except as to any ground specifically reversed). Unpatentability Bennett, Hoyer, and Dial All pending claims are rejected under 35 U.S.C. § 103 as being unpatentable over Bennett, Hoyer, and Dial. Final Act. 3–7. In traversing the rejection, Appellant argues, with respect to each independent claim, that the prior art fails to disclose “continuous interweaving” from “end to end” as claimed. Appeal Br. 6–12. Because we have concluded that each independent claim is indefinite by reason of the very claim language that Appellant added by amendment and now argues distinguishes the claims over the prior, the prior art rejection of these claims must fall because it necessarily requires us to examine the Appeal 2020-002914 Application 14/492,431 8 prior art based on a speculative assumption as to the meaning of the claims. In re Steele, 305 F.2d 859, 862 (CCPA 1962). Accordingly, we reverse the Examiner’s prior art rejection of claims 1, 2, 5, 7–9, 12, and 14–18. We further note that our decision is pro forma in nature and does not reach the merits of the rejection nor should it be otherwise construed as indicating that we consider the claims to be patentable over the prior art. CONCLUSION Claims Rejected § Reference(s)/Bases Affirmed Reversed 1, 2, 5, 7-9, 22, 14-18 112(a) Written Description See note 2 below2 1, 2, 5, 7-9, 22, 14-18 112(b) Indefiniteness 1, 2, 5, 7-9, 22, 14-18 1, 2, 5, 7-9, 22, 14-18 103 Bennett, Hoyer, Dial 1, 2, 5, 7-9, 22, 14-183 Overall Outcome 1, 2, 5, 7-9, 22, 14-18 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED 2 In view of our determination that these claims are indefinite, we do not reach the Examiner’s Section 112(a) written description rejection. 3 Our reversal of the art rejection is procedural in nature and based on Steele, 305 F.2d at 862. We do not reach the merits of the Examiner’s rejection.