Dean Cerimeli et al.Download PDFPatent Trials and Appeals BoardOct 1, 20212021000740 (P.T.A.B. Oct. 1, 2021) 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. 15/018,007 02/08/2016 Dean Cerimeli 12521-167 4351 48276 7590 10/01/2021 Venjuris. P.C. 1938 E Osborn Road PHOENIX, AZ 85016 EXAMINER CHANG, RICK KILTAE ART UNIT PAPER NUMBER 3726 NOTIFICATION DATE DELIVERY MODE 10/01/2021 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): lmartin@venjuris.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DEAN CERIMELI, ROBERT A. DOLAN, MICHAEL H. DILGARD, JAVIER NOLASCO, and JEREMY DONOHUE Appeal 2021-000740 Application 15/018,007 Technology Center 3700 Before JILL D. HILL, CARL M. DEFRANCO, and LEE L. STEPINA, Administrative Patent Judges. STEPINA, 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 1–6.2 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(a). Appellant identifies the real party in interest as U-Haul International, Inc. Appeal Br. 4. 2 Claims 7–13 are withdrawn from consideration. Final Act. 1. Appeal 2021-000740 Application 15/018,007 2 CLAIMED SUBJECT MATTER Appellant’s invention relates to an apparatus for extending the length of a vehicle chassis and drive shaft without having to rebalance the lengthened drive shaft assembly. Sole independent claim 1, reproduced below with certain limitations emphasized, is representative of the claimed subject matter: 1. A drive shaft extension segment for installation into a vehicle to be extended in length, the drive shaft extension segment comprising: a rigid tubular shaft rotatable about a longitudinal axis and having a front end and a rear end; and a universal joint mounted at the tubular shaft front end and having a front flange configured for mounting to a transmission; wherein the tubular shaft rear end includes a rearward facing flange configured for mounting to a forward facing flange of a drive assembly that has been disengaged from a transmission of the vehicle to be extended in length; wherein the drive shaft extension segment is balanced separately from the drive assembly before installing the drive shaft extension segment into the vehicle; and wherein the drive shaft extension segment is configured for installation between the vehicle transmission and the forward facing flange of the drive assembly and for operation in the vehicle without rebalancing the drive assembly and without using a truss member extending longitudinally along a length of the tubular shaft from the front end to the rearward facing flange to form a triangular support structure with the drive shaft extension segment. Appeal 2021-000740 Application 15/018,007 3 REJECTION Claims 1–6 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. OPINION Appellant has not presented arguments for the patentability of claims 2–6 apart from claim 1. See Appeal Br. 6–18. Therefore, in accordance with 37 C.F.R. § 41.37(c)(1)(iv), we select claim 1 as the representative claim to decide the appeal of the rejection of these claims, with claims 2–6 standing or falling with claim 1. Claim 1 requires, inter alia, that the drive shaft extension segment is configured for installation “without using a truss member extending longitudinally along a length of the tubular shaft from the front end to the rearward facing flange to form a triangular support structure with the drive shaft extension segment.” Appeal Br. 19 (Claims App.). The Examiner finds that the above-noted limitation is a negative limitation that does not have a basis in the original disclosure. Final Act. 4 (citing Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983), aff’d mem., 738 F.2d 453 (Fed. Cir. 1984)). Appellant argues that the Examiner bears the burden of “showing why one of ordinary skill in the art would not recognize that the inventor possessed the concept behind the particular negative limitation.” Appeal Br. 9 (citing Ex parte Parks, 30 USPQ2d 1234, 1236 (BPAI 1993)). According to Appellant, the Examiner has not met this burden. Id. at 15–16; see also Reply Br. 5–6. Appellant explains that even if the Examiner met this burden, Appellant has provided sufficient rebuttal evidence that Appeal 2021-000740 Application 15/018,007 4 demonstrates possession of the claimed invention. Appeal Br 10. In particular, Appellant asserts that the Figures, specifically, Figure 14, depict a drive shaft extension that does not have a truss member, which is in contrast to the prior art drive shaft extensions. Id. at 10–13; see also Reply Br. 6–7. Appellant also asserts that the Specification provides reasons to exclude a truss member, because inclusion of a truss member contradicts the stated advantages of the invention of saving time, labor, and expense. Id. at 13–15 (citing Spec. ¶¶ 3, 39); see also Reply Br. 7–10. According to Appellant, the Declaration of Jeremy Donohue, dated July 3, 2019, the “Donohue Declaration,” provides further evidence that the figures and Specification sufficiently convey that truss members are not required. Id. at 15–16; see also Reply Br. 10–12. In response, the Examiner asserts that the paragraphs of the Specification on which Appellant relies relate to extending a vehicle drive shaft without the need for rebalancing. Ans. 5. According to the Examiner, neither these portions of the Specification nor any other portion provides a relationship between trusses and balancing or rebalancing. Id. In particular, the Examiner asserts that “the specification fails to link the stated purpose of avoiding rebalancing with the presence [or absence] of trusses.” Id. Thus, according to the Examiner, the reason for excluding trusses is not apparent, which is sufficient to establish a prima facie case. Id. (citing MPEP 2163.04 I). According to the Examiner, “if a system with truss members can extend a drive shaft without the need for rebalancing it will have achieved the cost savings laid out by the specification. Thus, the mere presence of a truss member does not negate the advantage unless appellant proves that a truss member necessitates rebalancing.” Id. at 6. The Examiner asserts, Appeal 2021-000740 Application 15/018,007 5 moreover, that the Donohue Declaration essentially reiterates Appellant’s arguments, and also “does not link the presence or absence of a truss member to a need to conduct a balancing operation.” Id. at 7. The purpose of the written description requirement in 35 U.S.C. § 112, first paragraph, is to “clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.” Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010 (citing In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989)). “[T]he test for sufficiency 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, 598 F.3d at 1351. This test “requires an objective inquiry into the four corners of the [S]pecification from the perspective of a person of ordinary skill in the art.” Id. In this case, we agree with the Examiner that the mere absence of a truss member in Appellant’s Figure 14 does not mean that Appellant had possession of a drive shaft extension segment configured for installation without using a truss member as of the filing date of the present application. See Ans. 4. The nonappearance of an element in Appellant’s disclosure does not amount to description of the specific missing element, and thus, does not constitute basis for an exclusion. Nor could we find any portion in Appellant’s Specification, and Appellant has not pointed to any portion, that explicitly describes drive shaft extension segment 50 as being installed “without using a truss member extending longitudinally along a length of the tubular shaft,” as recited by claim 1. In the January 24, 2017 amendment adding this limitation, Appellant pointed to ¶¶ 6, 9, and 34 of the Specification, but none of these Appeal 2021-000740 Application 15/018,007 6 paragraphs discloses a truss member, or any advantage of installation without using a truss member as a support structure. Moreover, the limitation Appellant attempts to exclude is specifically recited, i.e., it is not simply “without using a truss member.” Rather, Appellant attempts to claim a configuration of the drive shaft extension segment for installation without using a truss member in a particular location and without forming a triangular support structure. If we accept Appellant’s position, then Appellant has the right to claim installation without using a myriad of support structures, or any “additional parts.” See Ans. 6. Rather, as the Examiner correctly notes, the “additional time, labor, and expense” described in the above paragraphs relate to rebalancing the extended drive shaft assembly (“extended drive shaft assemblies have [previously] required rebalancing the entire assembly after the extension is added, resulting in additional time, labor and expense”), but does not link the presence or absence of a truss member to rebalancing. Ans. 5; see also Spec. ¶ 3. In particular, Appellant’s original disclosure reasonably conveys to a person of ordinary skill in the art that it supports saving time, labor, and expense by “extend[ing] the length of a vehicle chassis and corresponding drive shaft without the need to rebalance the extended drive shaft assembly.” Spec. ¶ 39. Although the Specification describes saving time, labor, and expense (see Spec. ¶¶ 3, 39), the Specification does not explicitly describe a “reason to exclude” a truss member in order to save time, labor, and expense, or even that relates rebalancing to a truss member. See Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012). In contrast to Santarus, where the disadvantage of the negatively claimed sucralfate compound was explicitly described in the Specification (see id. at 1350), Appeal 2021-000740 Application 15/018,007 7 here, Appellant’s Specification does not explicitly describe any disadvantage of having a truss member. Indeed, the Specification does not discuss a truss member at all, and any discussion regarding rebalancing relates to “alignment marks” (see Spec. ¶ 36) and using an increased diameter shaft. Spec. ¶ 38 (“This increased diameter helps to reduce the problem of runout tolerance and thereby helps to eliminate the need to rebalance the drive shaft assembly after it is assembled with the drive shaft extension segment 50.”). Therefore, the claimed negative limitation “without using a truss member” is not adequately supported. In conclusion, for the foregoing reasons, Appellant’s Specification fails to explicitly describe or reasonably convey to a person of ordinary skill in the art that Appellant had possession of a drive shaft extension segment configured for installation “without using a truss member extending longitudinally along a length of the tubular shaft from the front end to the rearward facing flange to form a triangular support structure with the drive shaft extension segment,” as recited by claim 1. Accordingly, we sustain the rejection under 35 U.S.C. § 112, first paragraph, of claim 1 as failing to comply with the written description requirement. Claims 2–6 fall with claim 1. CONCLUSION The Examiner’s rejection is affirmed. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–6 112 Written description 1–6 Appeal 2021-000740 Application 15/018,007 8 TIME PERIOD FOR RESPONSE 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) (2019). AFFIRMED Copy with citationCopy as parenthetical citation