Ex Parte 6659375 et al

Board of Patent Appeals and Interferences

May 11, 2010

90007333 (B.P.A.I. May. 11, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte RPM SOLUTIONS, INC.1
____________________

Appeal 2009-010646
Reexamination Control 90/007,333
Patent US 6,659,375 B12
Technology Center 3900
____________________

Decided: May 12, 2010
____________________

Before KEVIN F. TURNER, DANIEL S. SONG and KEN B. BARRETT,
Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

1 RPM Solutions, Inc. is the real party in interest (App. Br. 4).
2 Patent US 6,659,375 B1 (hereinafter “‘375 patent”) issued December 9,
2003 to Mudge et al.
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The Patent Owner (hereinafter “Appellant”) appeals under 35 U.S.C.
§§ 134(b) and 306 (2002) from a Final Rejection of claims 1-5. Claims 6
and 7 have been confirmed and/or found patentable. (Advisory Action
mailed January 9, 2008). We have jurisdiction under 35 U.S.C. §§ 134(b)
and 306 (2002).
The Patentee claims a lid assembly for an atomizer wheel including a
wear ring and a lid member, representative claim 1 (sole independent claim)
reading as follows (App. Br. 29; Claims App’x):
1. (Currently Amended) A lid assembly for a rotatable atomizer
wheel having an atomizing chamber therein, said lid assembly
comprising:
a lid member adapted to fit onto the rotatable atomizer
wheel over the atomizing chamber, said lid member having an
first opening there through into the atomizing chamber when
said lid member is positioned on the atomizer wheel; and
a wear ring for protecting the first opening through said
lid member, said wear ring being independent of said lid
member and fitted inside and extending through the first
opening through said lid member, said wear ring having a
second opening there through into the atomizing chamber when
said lid member with said wear ring fitted therein is positioned
on the atomizer wheel[.]

The Examiner rejected claims 1-2 under 35 U.S.C. § 102(b) as
anticipated by the 1999 Dry Scrubber Users Conference publications
(hereinafter “Conference 1999”), or alternatively, the 2000 Dry Scrubber
Users Conference publications (hereinafter “Conference 2000”).
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The Examiner rejected claims 2-5 under 35 U.S.C. § 103(a) as
unpatentable over admissions in the ‘375 patent and Conference 2000.3
We AFFIRM.

ISSUE
The dispositive issue is whether the Examiner erred in construing the
limitation “said wear ring being independent of said lid member” to
encompass a separate lid member and a wear ring which are secured
together by a fastener.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. The term “independent” does not appear in the Specification of
the ‘375 patent, this term having been added by Amendment After Final
filed November 21, 2007 which was entered into the record by Advisory
Action dated January 9, 2008.
2. Compact Oxford English Dictionary defines “independent” as
“1 free from outside control or influence . . . 4 not connected with another;
separate . . . .” (Appeal Br. Exhibit A).
3. The Radom House Dictionary (1980) defines “independent,”
inter alia, as “1. not influenced or controlled by others. 2. not subjected to

3 The Examiner’s rejection of claims 1-7 under 35 U.S.C. § 112, first
paragraph, as lacking written description (Final Office Action 3) has been
withdrawn (Advisory Action mailed Jan. 9, 2008).
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another’s authority or jurisdiction. 3. not depending on something else for
existence, operation, etc. 4. not relying on another or others for aid or
support. 5. free from party commitments in politics. . . .” (emphasis added).
4. Dictionary.com defines “independent,” inter alia, as “4. not
dependent; not depending or contingent upon something else for existence,
operation, etc.” (Independent,
http://dictionary.reference.com/browse/independent (last visited May 6,
2010); emphasis added).
5. The Specification of the ‘375 patent states:
A. “Reshaping and extending the wear ring 114 to surround
the atomizer lid member 112 results in important benefits that increase
the life of the lid assembly as a whole, and in particular[,] the lives of
the wear ring 114 and the lid member 112, individually.” (Col. 4, ll.
55-59; emphasis added).
B. “However, by providing this newly shaped wear ring 114
that is replaceable, it is no longer necessary to constantly replace the
atomizer lid member 112 because of wearing of the surface of the
central opening of the lid member.” (Col. 5, ll. 47-52; emphasis
added).
C. “Moreover, because the wear ring 114 has always been
and still is comprised of wear resistant material such as silicon-carbide
material, tool steel, and heat treated stainless steel or carbide casting
that is much more resistant to abrasion caused by the slurry than the
atomizer lid, the wear ring 114 is far less susceptible to wear than the
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atomizer lid member that is made of metal or alloy.” (Col. 6, ll. 24-
31).
D. “This ability to reuse, rather than discard the worn lid
member, and the ability to continue to reuse the lid member since no
further abrasion of it will take place is a definite savings over having
to replace the entire lid member every time the central opening
becomes worn.” (Col. 6, ll. 52-57).

PRINCIPLES OF LAW
We determine the scope of the claims in patent applications not solely
on the basis of the claim language, but upon giving claims their broadest
reasonable construction in light of the specification as it would be
interpreted by one of ordinary skill in the art. In re Prater, 415 F.2d 1393,
1404-05 (CCPA 1969); In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). This is the standard for claim interpretation in both
original examination and re-examination. See In re Yamamoto, 740 F.2d
1569, 1571 (Fed. Cir. 1984); see also In re ICON Health and Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007) (“During reexamination, as with
original examination, the PTO must give claims their broadest reasonable
construction consistent with the specification. Therefore, we look to the
specification to see if it provides a definition for claim terms, but otherwise
apply a broad interpretation.”). Giving broad construction to claim terms is
not unreasonable during examination because the applicant can amend the
claims. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d at 1364.
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In construing a claim, particular embodiment appearing in the written
description must not be read into the claim if the claim language is broader
than the embodiment. See Superguide Corp. v. DirecTV Enter., Inc., 358
F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language
may be aided by the explanations contained in the written description, it is
important not to import into a claim limitations that are not a part of the
claim. For example, a particular embodiment appearing in the written
description may not be read into a claim when the claim language is broader
than the embodiment.”).
Although an applicant is entitled to be his or her own lexicographer of
patent claim terms, the applicant must do so by placing such definitions in
the Specification with sufficient clarity to provide a person of ordinary skill
in the art with clear and precise notice of the meaning that is to be construed.
See In re Corr, 347 F.2d 578, 580 (CCPA 1965) (“very complete definition”
of the disputed term was in the appellant’s specification); see also In re
Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (“[a]lthough an inventor is
free to define the specific terms used to describe the invention, this must be
done with reasonable clarity, deliberateness, and precision.”).

ANALYSIS
Rejection of claims 1-2 under 35 U.S.C. § 102(b)
The Examiner rejects these claims as anticipated by Conference 1999
or Conference 2000. These prior art references are the same with respect to
the disclosure relied upon by the Examiner, and hence, we refer to the earlier
Conference 1999 in our discussion infra. Conference 1999 discloses a lid
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assembly including a lid member and a wear ring where the lid member and
the wear ring are secured together by a fastener (such as a bolt) when in use.
The disagreement between the Examiner and the Appellant is whether
Conference 1999 discloses “said wear ring being independent of said lid
member” as specifically recited in claim 1 in view of the fact that a fastener
is used to secure these components together. As the Appellant has
summarized, “[t]he outcome of this appeal appears to be clearly dependent
upon the meaning to be attributed to the term ‘independent’ as used by the
Appellant[] in amended Claim 1.” (Reply Br. 1).
The Appellant contends that “independent” should be construed to
mean “free from external control and constraint”, “free from outside control
or influence” and “not connected with another; separate”, referring to select
dictionary definitions (App. Br. 24; FF 2). The Appellant contends that
Figure 2 of the presently reexamined ‘375 patent clearly shows that “the
atomizer lid 112 and the wear ring 114 are not joined or connected together,
and indeed are independent of each other.” (App. Br. 22; emphasis in
original). Hence, the Appellant argues that the wear ring and lid member
“cannot be considered to be independent of each other when they are
specifically connected to each other[]” as shown in Conference 1999 (App.
Br. 25; emphasis in original).
The Examiner asserts that recitation of the term “independent” does
not distinguish the claimed invention from the lid assembly of Conference
1999 because in Conference 1999, the wear ring is not unitary with the lid
member, and thus, “independent” from the lid member. (Ans. 4; Final Office
Action 10). The Examiner further asserts that provision of the bolts in the
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lid assembly of Conference 1999 “‘only illustrates the independence of the
structures as the structures would clearly be detachable from one another.’”
(Ans. 4 (citing Final Office Action 10)).
We find no error in the Examiner’s finding that the wear ring and the
lid member of the lid assembly described in Conference 1999 are
“independent” thereby disclosing the recited limitation. First, the term
“independent,” or variations thereof, is not utilized in the Specification and
was first introduced by the Appellant by amendment during the present
reexamination proceeding (FF 1). Significantly, the Appellant
acknowledges that the term “independent” is “subject to a number of
definitions” (App. Br. 24; Reply Br. 3). Indeed, one of the definitions of
“independent” proffered by the Appellant includes “separate” (FF 2). Other
dictionary definitions for the term “independent” include “not depending
upon something else for existence . . .”. (FF 3; see also FF 4). Clearly, the
wear ring and the lid member described in Conference 1999 are
“independent” in that these components are separate and do not depend on
each other for their existence (i.e., are not unitary in construction).
Furthermore, the Examiner’s construction is entirely consistent with,
and supported by, the Specification of the reexamined ‘375 patent. In
particular, the Specification of the reexamined ‘375 patent highlights and
emphasizes the benefits of providing a separate, individual, lid member and
wear ring, such as separate replaceability and improved wear resistance by
using different materials to thereby realize cost savings (FF 5A-5D). These
benefits of the Appellant’s claimed invention are attributable to the fact that
the lid member and the wear ring (which now defines the opening of the lid
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assembly) are separate and individually replaceable. These benefits of the
Appellant’s claimed invention are not attributable to the fact that these
components may be “unconnected” or “unattached” to each other by a
fastener such a bolt. In this regard, the Specification of the reexamined ‘375
patent appears to be silent as to any function or benefit of providing lid
member and wear ring that are unconnected or unattached with respect to
each other by a fastener.
The Appellant’s arguments that “independent” must be construed to
mean “not joined or connected together” (App. Br. 22); “not affix[ed]”
(App. Br. 23); and “no way connected or joined together” (App. Br. 24;
emphasis in original) are not persuasive. While such language elaborates on,
and limits the meaning of the term “independent,” it does not appear in the
claim itself. As noted by the Examiner, the claim 1 does “not require that
the structures not be bolted, affixed or screwed together.” (Ans. 4).
Consistent with the proffered arguments and construction advocated, the
Appellant could have amended claim 1 to recite that the lid member and the
wear ring are “unsecured to each other,” “unaffixed to one another,” or
similar, for example. If the Appellant insists on using the term
“independent” despite the term’s multiple meanings, the Appellant could
also limit the applicable definition of “independent” so that the claim can
reasonably construed only in the manner now argued. For instance, the
Appellant could have clarified that the wear ring is “retained independent of
said lid member,” “secured independent of said lid member,” or similar, for
example. Instead, claim 1 merely recites a “wear ring being independent of
said lid member.”
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In our view, to construe “independent” in the manner suggested by the
Appellant based solely on Figure 2 of the ‘375 patent would be tantamount
to improperly reading the specific embodiment of Figure 2 into claim 1 to
narrow the claim meaning although the language of claim 1 can be
reasonably construed broader. See Superguide Corp., 358 F.3d at 875. It is
the Appellants’ burden to precisely define the invention, and absent a
specific definition set forth in the Specification, a broadest reasonable
interpretation standard applies in the present reexamination proceeding. See
In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997); In re Yamamoto, 740
F.2d at 1571.
The Appellant further argues that he can be his own lexicographer and
that the Appellant has set forth a definition for the term “independent” that is
applicable (Reply Br. 3). However, definitions must be provided within the
Specification with reasonable clarity and precision so as to provide a person
of ordinary skill in the art with clear and precise notice of the meaning that is
to be construed. See In re Corr, 347 F.2d at 580; In re Paulsen, 30 F.3d at
1480. The term “independent” is not even used in the Specification of the
‘375 patent, much less defined therein. Attorney arguments advocating one
construction of a term at issue are not the same as setting forth a definition
for the term in a specification of a patent.
In view of the above, we discern no reversible error in the Examiner’s
rejection of claim 1 as lacking novelty over Conference 1999 or Conference
2000. The Appellant relies on the same arguments submitted with respect to
claim 1 for the patentability of claim 2 (App. Br. 25). Hence, we discern no
reversible error in the Examiner’s rejection of claim 2 as well.
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Rejection of claims 2-5 under 35 U.S.C. § 103
The Appellant relies on the same arguments regarding the term
“independent” which were submitted with respect to claim 1 in support of
patentability of claims 2-5 (App. Br. 27-28). However, as discussed supra,
the Appellant’s arguments with respect to claim 1 are not persuasive.
Hence, we are not persuaded of Examiner error in rejecting claims 2-5 for
substantially the same reasons already discussed.

CONCLUSION
We find no error in the Examiner’s construction of the limitation
“wear ring being independent of said lid member” to encompass a separate
lid member and a wear ring which are secured together by a fastener.

DECISIONS
1. The Examiner’s rejection of claims 1-2 under 35 U.S.C.
§ 102(b) as anticipated by Conference 1999 or Conference 2000 is
AFFIRMED.
2. The Examiner’s rejection of claims 2-5 under 35 U.S.C.
§ 103(a) as unpatentable over admissions in the ‘375 patent and Conference
2000 is AFFIRMED.

Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

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AFFIRMED

ack

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