Victor Equipment Company

Patent Trials and Appeals Board

Mar 8, 2022

2021004949 (P.T.A.B. Mar. 8, 2022)

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. 15/426,598 02/07/2017 Michael E. Stephens 1485.0118CIP 9760 13866 7590 03/08/2022 EDELL, SHAPIRO & FINNAN, LLC 9801 Washingtonian Boulevard Suite 750 Gaithersburg, MD 20878 EXAMINER CHOU, JIMMY ART UNIT PAPER NUMBER 3761 NOTIFICATION DATE DELIVERY MODE 03/08/2022 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): epatent@usiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MICHAEL E. STEPHENS and JEFFREY S. HENDERSON ____________ Appeal 2021-004949 Application 15/426,598 Technology Center 3700 ____________ Before EDWARD A. BROWN, MICHAEL L. HOELTER, and JAMES A. WORTH, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s decision rejecting claims 2, 5, 7, and 9-15.2 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 Victor Equipment Company as the real party in interest. Appeal Br. 3. 2 Claims 1, 3, 4, 6, 8, and 16-20 are withdrawn from consideration. Final Act. 1. Appeal 2021-004949 Application 15/426,598 2 CLAIMED SUBJECT MATTER “The present disclosure relates generally to a gouging torch. More particularly, the present disclosure relates to a gouging torch having a torch handle with a pneumatically operated jaw.” Spec. ¶ 1. Claim 10, reproduced below, is the sole independent claim on appeal. 10. A system for distributing gas within a torch handle, comprising: a pneumatic cylinder disposed within a main housing, the pneumatic cylinder including a shaft for actuating a first member of a jaw relative to a second member of the jaw; a gas passageway through the main housing, the gas passageway including an exit orifice disposed within the second member of the jaw; and a valve assembly including a first valve operable to deliver a gas to the pneumatic cylinder and a second valve operable to deliver the gas to the gas passageway and the exit orifice, wherein the first valve and the second valve are oriented substantially perpendicular to one another. Appeal Br. 21 (Claims App.). REJECTION ON APPEAL Claims 2, 5, 7, and 9-15 are rejected under 35 U.S.C. § 112(b) as being indefinite. Final Act. 2. ANALYSIS Claim 10 recites the limitation “a valve assembly including a first valve . . . and a second valve . . ., wherein the first valve and the second valve are oriented substantially perpendicular to one another.” Appeal Br. 21 (Claims App.) (emphasis added; herein “valve assembly limitation”). The Examiner interprets the term “substantially perpendicular” as a relative Appeal 2021-004949 Application 15/426,598 3 term which renders the claim indefinite. Final Act. 2. The Examiner submits that “substantially perpendicular” is not defined in claim 10, the Specification does not provide a standard for ascertaining the requisite degree (i.e., the term “is between what range”), and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Id. The Examiner submits that some objective standard is required to allow the public to determine the scope of the claim. Id. (citing MPEP § 2173.05(b)). In contrast, Appellant submits that the term “substantially perpendicular” is definite. Appeal Br. 15. Appellant contends that the Examiner has not applied the proper legal standard. Id. Appellant contends that the acceptability of claim language that uses relative terminology depends on whether one of ordinary skill in the art would understand what is claimed. Id. (citing MPEP § 2173.05(b), which cites Seattle Box Co., Inc. v. Industrial Crating & Packing, Inc., 731 F.2d 818 (Fed. Cir. 1984)). Appellant contends that “the MPEP specifically states that the term ‘substantially’ is definite because one of ordinary skill in the art would know what was meant by it when used in conjunction with another term (e.g., substantially perpendicular).” Appeal Br. 15 (citing MPEP § 2173.05(b)(III)(D) (emphasis added)). As noted by Appellant, the Federal Circuit determined that the limitation “which produces substantially equal E and H plane illumination patterns’ was definite because one of ordinary skill in the art would know what was meant by “substantially equal.’” Id. (quoting MPEP § 2173.05(b)(III)(D), which cites Andrew Corp. v. Gabriel Electronics, 847 F.2d 819 (Fed. Cir. 1988)). Appellant asserts, “since the Federal Circuit has found the term ‘substantially equal’ to be definite, Appeal 2021-004949 Application 15/426,598 4 Appellant respectfully submits that, under the same rationale, the term ‘substantially perpendicular’ is also definite.” Id. at 16. We disagree with this reasoning. First, we disagree that, because the Federal Circuit held that the term “substantially equal” was definite in Andrew, it necessarily follows that the term “substantially perpendicular” is likewise definite in claim 10 because it is “similar to” “substantially equal.” Appeal Br. 15-16; see Andrew, 847 F.3d at 821-822. Second, MPEP § 2173.05(b)(III)(D) does not state that the term “substantially” is definite whenever it is used in conjunction with another term. Appellant also contends that, according to MPEP § 2173.05(b), the term “substantially” is a “term of approximation,” and “an ‘objective standard’ is not required to be provided in order for one of ordinary skill in the art to understand the meaning of the term.” Reply Br. 3. We agree with Appellant that the term “substantially perpendicular” denotes approximation in claim 10. See MPEP § 2173.05(b)(III)(D).3 We also agree that MPEP § 2173.05(b) does not explicitly require a “range of values” to define the term “substantially.” Reply Br. 2. 3 The term “substantially” has also been described as a “term of degree.” See MPEP § 2173.05(b)(I) (“Terms of Degree”) (citing Seattle Box). In Seattle Box, the court addressed whether the claimed term “substantially equal” was definite. See Seattle Box, 731 F.3d at 826. The court described this term as a “word of degree,” and explained: “When a word of degree is used the district court must determine whether the patent’s specification provides some standard for measuring that degree. The trial court must decide, that is, whether one of ordinary skill in the art would understand what is claimed when the claim is read in light of the specification.” Id. (emphasis added). Appeal 2021-004949 Application 15/426,598 5 Appellant contends that the term “sufficiently perpendicular” is definite because one of ordinary skill in the art would understand that “substantially perpendicular” recited in independent claim 10 means that the valves of the valve assembly are sufficiently perpendicular to one another such that they function the same as though they are precisely perpendicular to one another. Appeal Br. 17 (emphasis added). In response, the Examiner states that “[t]he function of the valves as claimed could be operated in any orientation and that appellant’s position would lead to any angle reading on the limitation of ‘substantially perpendicular.’” Ans. 5. Appellant replies: in accordance with Appellant’s proffered definition for ‘substantially perpendicular,’ one of ordinary skill in the art would understand to what orientations the two valves may be with respect to one another such that they no longer function the same as though they are precisely perpendicular to one another. In other words, based on the given definition, one of ordinary skill the art would understand that substantially perpendicular does not apply to any and all angles. Reply B. 4-5 (emphasis added). We agree with Appellant that construing “substantially perpendicular” as encompassing “any angle” between the first and second valves is unreasonably broad. However, Appellant does not explain adequately what is meant by the first and second valves “function the same as though they are precisely perpendicular to one another.” See Appeal Br. 17 (emphasis added); Reply Br. 4-5. Appellant does not explain what the “function” of the combination of these valves is, or what exactly would be considered a change in the “function.” Nor does Appellant explain whether any measurable deviation from the “function” provided when the valves are “precisely perpendicular to each other” would make the corresponding Appeal 2021-004949 Application 15/426,598 6 orientation of the first and second valves having the changed function outside the scope of claim 10. Appellant submits that one of ordinary skill in the art would understand the meaning of “substantially perpendicular” upon a review of the Specification and drawings. Appeal Br. 16 (citing Spec. ¶¶ 6, 7, 34; Figs. 3A, 3B, 4). Paragraph 34 of the Specification discloses: In some embodiments, the first valve 82 and the second valve 84 of the valve assembly 79 are oriented perpendicular, or generally perpendicular, to one another. That is, a lengthwise central longitudinal axis 57 of the first valve 82 may be perpendicular to a lengthwise central longitudinal axis 59 of the second valve 84. As shown, the lengthwise central longitudinal axis 57 is generally perpendicular to a lengthwise axis (not shown) of the torch handle 10. By orienting one of the first valve 82 on its side relative to the second valve 84, the first valve 82 may be made larger, which improves performance of the torch handle 10 by increasing gas flow through the gas passageway 68. See Spec. ¶ 34 (emphasis added). Figure 3B shows first valve 82, second valve 84, lengthwise central longitudinal axis 57 of first valve 82, and lengthwise central longitudinal axis 59 of second valve 84. Paragraph 34 uses the term “generally perpendicular,” not “substantially perpendicular.” According to paragraph 34, the larger size of first valve 82 relative to second valve 84, rather than the specific orientation of these valves relative to each other, is the factor that affects gas flow performance through gas passageway 68. In view of this disclosure, it is unclear how the orientation of the first and second valves relative to each other affects the “function” of the valve combination, such that one of ordinary skill in the art would understand when “the valves of the valve assembly are sufficiently Appeal 2021-004949 Application 15/426,598 7 perpendicular to one another such that they function the same as though they are precisely perpendicular to one another” according to Appellant’s definition of “substantially perpendicular. See Appeal Br. 17. Appellant contends that its proffered definition of “substantially perpendicular” is supported by the Board’s reasoning in Ex parte Ogura, Appeal No. 2014-009489 (March 21, 2017). See Appeal Br. 17; Reply Br. 4-5. We note, however, that the term “substantially perpendicular” was not subject to a rejection under 35 U.S.C. § 112(b) (or § 112, second paragraph) in Ogura. Rather, the Board addressed the issue of the broadest reasonable interpretation of the claimed term “substantially perpendicular” in light of Ogura’s specification. See Ogura, pp. 7-8. We are not convinced that Ogura supports Appellant’s definition. To the extent Appellant believes that the term “substantially perpendicular” is defined in the Specification as having the proffered meaning (i.e., Appellant is acting as its own lexicographer), we disagree. As noted by Appellant, the term “substantially perpendicular” is found in the Specification. Appeal Br. 16; see, e.g., Spec. ¶¶ 6-8, 43. However, these usages of the term provide no guidance as to its meaning. “To act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citation omitted). “[T]he patentee must ‘clearly express an intent’ to redefine the term.” Id. (citation omitted). Here, Appellant does not direct us to any disclosure that expresses a clear intent to define “substantially perpendicular” as having the proffered meaning. Appeal 2021-004949 Application 15/426,598 8 Appellant also contends that the term “substantially perpendicular” appears in claims of numerous issued patents. Appeal Br. 18. In support, Appellant provides several examples and submits that the specifications of these patents provide the “same level of disclosure” as the present Specification for the term “substantially perpendicular.” Id. Therefore, Appellant submits, one of ordinary skill in the art would understand the meaning of this term. Id. We agree with Appellant that the term “substantially perpendicular” is not inherently indefinite. Appeal Br. 18. However, we are not convinced that the cited patents support Appellant’s position. These patents may be considered evidence that the Patent and Trademark Office has not treated the term “substantially perpendicular” as inherently indefinite. Nonetheless, the definiteness of this term in claim 10 must be evaluated in view of the present Specification. We are not persuaded that the Specification supports Appellant’s proffered definition. For the foregoing reasons, we sustain the rejection of claims 2, 5, 7, and 9-15 under 35 U.S.C. § 112(b) as being indefinite. CONCLUSION We affirm the rejection of claims 2, 5, 7, and 9-15 under 35 U.S.C. § 112(b) as being indefinite. Appeal 2021-004949 Application 15/426,598 9 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 2, 5, 7, 9-15 112(b) Indefiniteness 2, 5, 7, 9- 15 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED