Ex Parte 7866134 et alDownload PDFPatent Trial and Appeal BoardJul 28, 201690013329 (P.T.A.B. Jul. 28, 2016) Copy Citation MOD PTOL-90A (Rev.06/08) APPLICATION NO./ CONTROL NO. FILING DATE FIRST NAMED INVENTOR / PATENT IN REEXAMINATION ATTORNEY DOCKET NO. EXAMINER ART UNIT PAPER NUMBER DELIVERY MODE 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. UNITED STATES DEPARTMENT OF COMMERCE U.S. Patent and Trademark Office Address : COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov UNITED STATES PATENT AND TRADEMARK OFFICE _____________________________________________________________________________________ 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. 90/013,329 09/03/2014 7866134 HUSQ.008X1 1094 20995 7590 07/29/2016 KNOBBE MARTENS OLSON & BEAR LLP 2040 MAIN STREET FOURTEENTH FLOOR IRVINE, CA 92614 EXAMINER ENGLISH, PETER C ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 07/29/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte HUSQVARNA AB, Appellant and Patent Owner. ____________________ Appeal 2016-001569 Reexamination Control 90/013,329 Patent 7,866,134 B2 Technology Center 3900 ____________________ Before JAMES T. MOORE, MICHAEL L. HOELTER, and JENNIFER L. McKEOWN, Administrative Patent Judges. McKEOWN, Administrative Patent Judge. DECISION ON APPEAL Husqvarna AB (“Patent Owner”) appeals from the decision in the Examiner’s Final Action, mailed March 27, 2015, rejecting claims 1, 2, 7, 8, 22– 28, and 30–34 of U.S. Patent No. 7,866,134 B2 (the “’134 patent”). App. Br. 1–2.1 1 Throughout this opinion, we refer to (1) the Final Action, mailed March 27, 2015 (“Final Act.”); (2) Patent Owner’s Appeal Brief, filed July 24, 2015 (“App. Br.”); (3) the Examiner’s Answer, mailed August 28, 2015 (“Ans.”), and (4) Patent Owner’s Reply Brief, filed October 28, 2015 (“Reply Br.”). Appeal 2016-001569 Reexamination Control 90/013,329 Patent 7,866,134 B2 2 I. STATEMENT OF CASE This proceeding arose from an ex parte reexamination request (the “Request”) of the ’134 patent, issued to Matt Lambert and Nicholas Hansen on January 11, 2011. We have been informed that the ’134 patent was the subject of a district court proceeding, namely Husqvarna AB v. The Toro Company, U.S. District – North Carolina Western, No. 3:14cv103. See App. Br. 1. An oral hearing was conducted on May 4, 2016. The transcript of the oral hearing was made of record on July 14, 2016. We have jurisdiction under 35 U.S.C. §§ 134(b) and 315 (pre-AIA). We reverse. II. THE ’134 PATENT The ’134 patent relates generally to mower for cutting grass and collecting the cut grass. The mower includes a main body, two handle brackets, a handle, a collector element, and two collector brackets. ’134 patent, Abstract. One embodiment of the invention includes two handle brackets 118a and 118b oppositely mounted on lateral sides of the main body and coupled to the handle. Annotated Figures 3A and 3B below depict the frame 126 which defines the collector element for the mower. See also ’134 patent, col. 3, ll. 7–22. Appeal 2016-001569 Reexamination Control 90/013,329 Patent 7,866,134 B2 3 Annotated Figures 3A and 3B of the ’134 Patent Depicting an Exemplary Embodiment of the Claimed Invention The frame 126 includes at least two limb elements 132 located on opposite sides of the collector element. As shown, the two collector brackets 134 are respectively mounted to the two handle brackets 118a and 118b and are configured to respectively accommodate the limb elements 132 of the collector frame 126. Thus, the collector element (secured to the collector brackets) is mounted on the mower free from the handle. ’134 patent, col. 1, ll. 40–41. Claim 1 is illustrative and reads as follows: 1. A walk-behind grass mower for cutting grass and collecting cut grass including: a main body including a deck, an engine operatively coupled to a grass cutting blade, and ground engaging wheels, a chute being provided at a rear of the main body such that grass cut by the blade within the main body is directed through the chute to a discharge opening at an end of the chute; Appeal 2016-001569 Reexamination Control 90/013,329 Patent 7,866,134 B2 4 two handle brackets oppositely mounted on lateral sides of the main body; a maneuvering handle coupled to the two handle brackets to allow operation of the mower in a direction desired by a user of the grass mower who is located at a walk behind location; a collector element attached to the discharge opening at the end of the chute collects the cut grass cut by the blade within the main body and directed through the chute to the discharge opening at an end of the chute, the collector element being defined by a frame, the frame including at least two limb elements located on substantially opposite sides of the collector element; and two collector brackets respectively mounted to the two handle brackets and configured to respectively accommodate the limb elements, wherein the collector element is mounted on the mower free from the handle. App. Br., Claims App’x. III. REJECTIONS A. Evidence Relied Upon The Examiner relies on the following as evidence of unpatentability: Booher et al. US 3,176,453 Apr. 6, 1965 (“Booher”) Meyer et al. US 3,636,686 Jan. 25, 1972 (“Meyer”) Plamper US 4,203,276 May 20, 1980 (“Plamper”) Edwards et al. US 4,522,019 June 11, 1985 (“Edwards”) Kiteley AU 402,989 Oct. 24, 1968 (“Kiteley”) Toro, 22in Recycler® Lawn Mower, Parts Catalog (2007) (“Toro”). Patent Owner relies on the Declaration of Robert Fancher, dated March 12, 2015 (“Fancher Decl.”), the Declaration of Matt Lambert, dated March 10, 2015 Appeal 2016-001569 Reexamination Control 90/013,329 Patent 7,866,134 B2 5 (“Lambert Decl.”), the Declaration of Dan Nielson, dated March 9, 2015 (“Nielson Decl.”), and the Declaration of Stu Sandstrom, dated March 11, 2015 (“Sandstrom Decl.”). B. The Adopted Rejections The Examiner maintains the following rejections: 1. Claims 1, 2, 7, 8, 24, 25, and 30–34 are rejected under 35 U.S.C. § 102(b) as anticipated by, or in the alternative, under 35 U.S.C. § 103(a) as being unpatentable over Plamper. 2. Claims 1, 2, 7, 8, 24, 25, and 30–34 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Plamper, Edwards, and Booher. 3. Claims 1, 2, 7, 8, 22, 24, 25, and 31–33 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Kiteley, Edwards, and Booher. 4. Claims 23, 26–28, 30, and 31 are rejected under 35 U.S.C. § 103(a) as unpatentable over Kiteley, Edwards, Booher, Meyer, and Toro. 5. Claims 27, 28, 31, and 33 are rejected under 35 U.S.C. § 112 (pre-AIA), first paragraph for failing to comply with the written description requirement. 6. Claims 26–28 are rejected under 35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the applicant regards as the invention. Appeal 2016-001569 Reexamination Control 90/013,329 Patent 7,866,134 B2 6 7. Claims 26, 29, 30, 32, and 34 are rejected under 35 U.S.C. § 112 (pre- AIA), first paragraph for failing to comply with the written description requirement.2 IV. ANALYSIS A. The Anticipation and Obviousness Rejections Based on Plamper Based on the record before us, we are persuaded that the Examiner erred in rejecting claims 1, 2, 7, 8, 24, 25, and 30–34 under 35 U.S.C. § 102 as anticipated by, or alternatively under 35 U.S.C. § 103 as unpatentable over, Plamper. The Examiner relies on Figures 5 and 6 of Plamper for disclosing “two collector brackets respectively mounted to the two handle brackets and configured to respectively accommodate the limb elements.” Final Act. 4. Specifically, the Examiner finds that While not discussed in the written description, Fig. 6 of Plamper illustrates the two collector brackets 27 as extending inwardly from and mounted to the handle brackets. See the marked-up copies of Figs. 5 and 6 below, and the enlarged, highlighted portions of Fig. 6 showing the collector brackets mounted to the handle brackets. Thus, in a first interpretation, Plamper is considered to teach collector brackets mounted to handle brackets. 2 We note that the Examiner does not explicitly identify this rejection and, instead, sets forth an objection to the Specification under 35 U.S.C. § 132(a) because it introduces new matter into the disclosure. See Final Act. 15. However, as Patent Owner points out, the referenced amendment, filed on March 12, 2015, does not amend the Specification and only adds new claims 22–34. As such, we understand the Examiner to be rejecting the recited claims for lack of written description support as outlined at pages 15 and 16 of the Final Action. Further, because the Examiner separately identifies a rejection of claims 31 and 33 under 35 U.S.C. § 112 (pre-AIA), first paragraph (listed rejection 5), we do not repeat the rejection of those claims. Appeal 2016-001569 Reexamination Control 90/013,329 Patent 7,866,134 B2 7 Final Act. 4; see also Ans. 3. The Examiner’s marked-up versions of Figure 6 and the enlarged, highlighted portion of Fig. 6 are reproduced below. The Examiner Annotated Copy of Plamper’s Figure 6 Identifying the Collector Brackets and Handle Brackets Appeal 2016-001569 Reexamination Control 90/013,329 Patent 7,866,134 B2 8 The Examiner’s Enlarged, Highlighted Portions of Figure 6 Final Act. 5; Ans. 4. In the annotated figures, the Examiner identifies the handle brackets and collector brackets (hooks 27), and also appears to draw in black lines depicting a connection between the collector brackets to the handle brackets. Patent Owner rebuts the Examiner’s findings, contending that Plamper does not disclose the claimed mounting of collector brackets to the handle brackets. According to Patent Owner, “the Examiner filled in and expanded the size of hook 27” in modified Fig. 6 of Plamper “to show a physical connection that simply does not exist.” App. Br. 12. Patent Owner further points out that Plamper expressly describes that the hooks (i.e. collector brackets) are mounted to the housing. App. Br. 13–14. Specifically, Plamper states that “[t]wo laterally spaced downwardly directed hooks 27 are mounted on the housing 12 near the upper portion of the rear wall 13.” Plamper, col. 3, ll. 51–53; see also App. Br. 14; Plamper, col. 3, ll. 56–58, col. 4, ll. 61–62. We find Patent Owner’s arguments persuasive. Notably, Plamper expressly identifies that the collector brackets, or hooks, are mounted to the housing. Plamper, col. 3, ll. 51–53. This is also supported by Figures 5 and 6 that depict a portion of hooks 27 extending parallel to the surface of housing 12. See, e.g., Figures 5 and 6; App. Br. 15–16; Nielsen Decl. ¶ 8. As shown in enlarged, unmodified portions of Figure 6 reproduced below, there is no clear connection depicted between the hooks and the handle brackets as asserted by the Examiner, nor does Plamper express such a connection. See supra. Appeal 2016-001569 Reexamination Control 90/013,329 Patent 7,866,134 B2 9 Enlarged, Unmodified Portions of Figure 6 of Plamper While we recognize that there are some lines in Figure 6 extending past the side bars 20C of the collector frame (or the rearward projecting portions 20D) towards the handle bracket, neither Plamper’s Figure 6 or the accompanying written description makes abundantly clear what those lines are and whether the lines represent a connection or mounting of the hooks to the handle bracket. For example, in the enlarged portion of Figure 6 on the left above, there is a line that extends from collector frame side bar 20C (or item 20D) to the bolt of the handle bracket that appears to correspond to the upper horizontally extending hook surface, but there is no similar corresponding line for the bottom horizontally extending hook surface. Similar issues are found with the enlarged portion of Figure 6 on the right above with numerous lines extending between the side bar 20C (or maybe 20D) of the collector frame to the bolt of the handle bracket, without any clear identification of what those lines represent. Appeal 2016-001569 Reexamination Control 90/013,329 Patent 7,866,134 B2 10 Moreover, as Patent Owner also explains, further extending the horizontal surface of hooks 27 in Figure 6 would result in the hooks meeting the bolts of the handle brackets, not the handle brackets. See App. Br. 16. As such, we agree with Patent Owner that Plamper fails to disclose “two collector brackets respectively mounted to the two handle brackets and configured to respectively accommodate the limb elements.” The Examiner alternatively concludes that, in view of Plamper alone, it would have been obvious to mount the two collector brackets to the handle brackets as required by the claims. Final Act. 5–6; Ans. 4–5. According to the Examiner, given the illustration in Fig. 6 which appears to show the collector brackets mounted to the handle brackets, and given the need to provide a secure mounting for the collector brackets which bear the weight of the grass catcher/collector, it would have been obvious to one of ordinary skill in the art to mount Plamper’s collector brackets to the handle brackets so as to provide a secure and convenient mounting for the collector brackets on the mower. Further, by mounting the collector brackets on the handle brackets, these elements can be mounted together onto the mower, thereby facilitating assembly. Final Act. 5–6; see also Ans. 22–24. First, we note that we disagree that Plamper “appears to show the collector brackets mounted to the handle brackets.” As discussed above, Plamper expressly discloses that the collector brackets are mounted to the housing, not the handle brackets, and Figures 5 and 6 are consistent with this teaching. Second, Patent Owner explains that the Examiner’s proposed modification would increase the complexity of Plamper’s design. App. Br. 16. Additionally, Patent Owner asserts that “connecting the hook 27 to the handle bracket would be a very unlikely design” because “[f]rom a design and manufacturing standpoint, a Appeal 2016-001569 Reexamination Control 90/013,329 Patent 7,866,134 B2 11 design that goes out to the handle bracket would not be a good design as the head of the pin would have to be worked around, thus requiring the hook 27 to be notched to provide clearance.” App. Br. 16 (citing Nielsen Decl. ¶ 8). Patent Owner also points out, based on Figure 6 of Plamper, the type of connection between the hook and the handle bracket would be a “‘very weak’” “‘butt weld’” “‘that would tend to shear load the joint.’” App. Br. 16 (citing Nielsen Decl. ¶ 8). We agree with Patent Owner. The Examiner fails to provide sufficient articulated reasoning with a rational underpinning to support the legal conclusion of obviousness. Merely stating that the proposed arrangement would be “secure and convenient” and “facilitate assembly,” without supporting reasoning, is insufficient. As the Examiner acknowledges, the collector brackets bear the weight of the grass catcher/collector. It seems illogical, then, for a skilled artisan modify the secure mounting of the collector brackets to the housing to the weaker or less secure mounting to the handle brackets. The Examiner also does not adequately explain why a skilled artisan would mount the collector brackets to the handle brackets in addition to the already secure mounting to the housing. See App. Br. 16. As Patent Owner points out, this modification would complicate an already simple direct connection design. App. Br. 19. Further, Patent Owner explains that “the connection of the hooks 27 to the housing 12 is more convenient than mounting to the handle bracket for the purposes required in Plamper, namely coupling the collector to the housing 12 [to provide Plamper’s hinged connection].” App. Br. 18–19; see also App. Br. 14; App. Br. 19 (“Making an already simple and straightforward connection (directly to the housing) more complex by adding an additional (and from everything learnable from Plamper also unnecessary) part between the housing and the Appeal 2016-001569 Reexamination Control 90/013,329 Patent 7,866,134 B2 12 collector bracket would not be rational.”); App. Br. 22 (noting that “there would be nothing further to be gained, and to the contrary only an addition of further design complication and material cost, by extending additional metal out to the handle bracket to attach thereto” and that the Examiner proposed connection “is extraneous, more costly and more complex (as also admitted) and cannot also reduce the complication by enabling mounting ‘them’ together when considered in this full context.”). As such, we determine that the Examiner erred in concluding that Plamper renders the disputed limitation obvious. Accordingly, for the reasons discussed above, we do not sustain the rejections of claims 1, 2, 7, 8, 24, 25, and 30–34 based on Plamper. B. The Obviousness Rejection Based on Plamper, Edwards, and Booher Based on the record before us, we are persuaded that the Examiner erred in rejecting claims 1, 2, 7, 8, 24, 25, and 30–34 under 35 U.S.C. § 103 as unpatentable over Plamper, Edwards, and Booher. Namely, we agree with Patent Owner that the Examiner fails to provide a rational basis as to why a skilled artisan would modify Plamper in accordance with Edwards and Booher to arrive at the claimed invention. See, e.g., App. Br. 25. The Examiner finds that each of Edwards and Booher teaches “two collector brackets respectively mounted to the two handle brackets and configured to respectively accommodate the limb elements” and then concludes the combination would be obvious. Final Act. 8–9; Ans. 7–8. Specifically, the Examiner determines that it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Plamper by forming the collector brackets separately from the handle brackets and then mounting the Appeal 2016-001569 Reexamination Control 90/013,329 Patent 7,866,134 B2 13 collector brackets to the handle brackets that are positioned immediately adjacent to the collector brackets. Such a construction (a) allows the collector brackets and handle brackets to be manufactured separately, thereby reducing the complexity of the parts which must be produced, (b) enables the collector brackets and handle brackets to be replaced separately, at a lower cost, when repairs are needed, and (c) provides a secure and convenient mounting for the collector brackets on the mower. Final Act. 9; see also Ans. 25–26 The Examiner’s reasons (a) and (b), regarding separate manufacturing and the ability to separately replace the collector brackets and the handle brackets, lack merit. Plamper’s collector brackets (i.e. hooks) and handle brackets are already separate components. It is the Examiner, not Plamper, that suggests assembling the collector bracket and handle bracket together and then mounting the combined brackets to the housing (as discussed in the obviousness rejection based on Plamper alone). See Final Act. 6. Plamper, though, does not support this suggestion. To the contrary, Plamper describes that the collector brackets are mounted to the housing. Plamper, col. 3, ll. 51–53. Figures 5 and 6 also depict the collector brackets and handle brackets as separate components. As such, any benefit achieved by making the collector brackets and handle brackets separate components is already achieved by Plamper’s invention. More importantly, having the collector brackets and handle brackets as separate components does not provide any explanation as to why a skilled artisan would modify Plamper’s collector brackets to be mounted to the handle brackets, instead of being mounted to the housing. The Examiner’s third reason, that the proposed modification would provide a secure and convenient mounting for the collector brackets on the mower, is similarly insufficient. Essentially, the Examiner’s proposed combination requires Appeal 2016-001569 Reexamination Control 90/013,329 Patent 7,866,134 B2 14 moving the collector brackets mounting from the housing to the handle bracket resulting in a less secure mounting and less convenient mounting for Plamper’s hinged connection of the collector frame. See, e.g., App. Br. 16, 18–19; Nielson Decl. ¶ 8. As discussed above with respect to the obviousness rejection based on Plamper alone, merely stating that the alternative mounting to the handle brackets would be a secure and convenient mounting, without a supporting explanation, fails to provide adequate rationale to support the combination. Accordingly, for the reasons discussed above, we do not sustain the rejections of claims 1, 2, 7, 8, 24, 25, and 30–34 based Plamper, Edwards, and Booher. C. The Obviousness Rejections Based on Kiteley, Edwards, and Plamper For similar reasons, based on the record before us, we determine that the Examiner erred in rejecting claims 1, 2, 7, 8, 22, 24, 25, and 31–33 under 35 U.S.C. § 103 as unpatentable over Kiteley, Edwards, and Booher and rejecting claims 23, 26–28, 30, and 31 under 35 U.S.C. § 103 as unpatentable over Kiteley, Edwards, Booher, Meyer, and Toro. Kiteley is directed to a lawn mower and grass catcher including handle brackets, each with a slot to receive a laterally bent extremity 15 of metal bracket 14. Kiteley, Figs. 1, 2, and 5, p. 4. The Examiner relies on Edwards and Booher to modify Kiteley such that each handle bracket is broken into two separate brackets, a handle bracket and a collector bracket (that receives the lateral extremity), and then is mounted together. Final Act. 10–11; Ans. 9–10. The Examiner then repeats the same reasoning, discussed above with respect to Plamper, Edwards, and Booher, to support the combination. Namely, the Examiner determines that a Appeal 2016-001569 Reexamination Control 90/013,329 Patent 7,866,134 B2 15 skilled artisan would modify Kiteley, in view of Edwards and Booher, (a) to allow separate manufacturing of the collector brackets and handle brackets, (b) to enable the ability to separately replace each bracket, and (c) to provide a secure and convenient mounting for the collector brackets on the mower. Final Act. 11; Ans. 10. We agree with Patent Owner that Examiner fails to provide some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. While the Examiner’s points regarding separate manufacturing and replace ability of the bracket components are at least applicable here, we disagree with the Examiner’s reasoning. For example, Patent Owner explains how separating the handle bracket into two brackets adds complexity to the manufacturing process and increases cost. App. Br. 29 (citing Lambert Decl. ¶ 13). Further, Patent Owner points out that “the collector brackets and handle brackets are not prone to excessive wearing and, in fact, are expected to last the entire life of the lawn mower” and thus would not benefit from allegedly being able to be separately replaced. App. Br. 29–30 (citing Lambert Decl. ¶ 15). Further, we fail to see how separating the handle brackets into separate handle and collector brackets creates a secure and convenient mounting. This modification again replaces one secure mounting with a weaker or less secure mounting. As such, we determine that the Examiner’s conclusory assertions, without more, fails to provide sufficient rationale to support the combination. See, e.g., Reply Br. 33. Accordingly, for the reasons discussed above, we do not sustain the rejection of claims 1, 2, 7, 8, 22, 24, 25, and 31–33 based Plamper, Edwards, and Booher Appeal 2016-001569 Reexamination Control 90/013,329 Patent 7,866,134 B2 16 and the rejection of claims 23, 26–28, 30, and 31 based on over Kiteley, Edwards, Booher, Meyer, and Toro. D. The Written Description Rejection of claims 27, 28, 31, and 33 The Examiner rejects claims 27, 28, 31, and 33 as failing to comply with the written description requirement. Final Act. 14. According to the Examiner claims 27 and 28 each recite new matter because the claims recite “downward path” while the Specification only describes a “substantially downward path.” Final Act. 14. Patent Owner, however, contends that if support exists for “substantially downward path,” Appellant contends that support also exists for “downward path.” Indeed, the term “substantially” is a “descriptive term commonly used to ‘avoid a strict numerical boundary to the specified parameter.’” See Ecolab, Inc. v. Envirochem, Inc., 264 F.3d 1358 (Fed. Cir. 2001)(quoting Pall Corp. v. Micron Seps., 66 F.3d 1211, 1217 (Fed. Cir. 1995). As such, a “substantially downward path” necessarily includes a “downward path” and a range of values nearby, just as “substantially 3 mph” would include “3 mph” and a range of values nearby. For at least these reasons, the written description rejections of claims 27 and 28 should be reversed. App. Br. 46. We find Patent Owner’s argument persuasive. We similarly agree with Patent Owner that the Specification disclosure of substantially U-shaped is adequate written description support the U-shaped limitation, as recited in claim 31. See App. Br. 47. As such, we determine that the Examiner erred in rejecting claims 27, 28, and 31 for lack of written description support. The Examiner rejects claim 33 as reciting new matter because, according to the Examiner, the widths shown in Figs. 3B-4A include portions of the collector brackets defined by projections 138. Final Act. 14. As Patent Owner points out though, claim 33 does not recite the collector brackets having any projections. As Appeal 2016-001569 Reexamination Control 90/013,329 Patent 7,866,134 B2 17 such, we agree with Patent Owner that “[i]t seems the Examiner has imported the projections 138 shown in Fig. 4A into the structure of the collector brackets recited in claim 33.” App. Br. 47. Further, “[r]egardless, any collector bracket, whether or not it also includes integral or non-integral projections, will have a width.” Id. As such, we determine that the Examiner erred in rejecting claims 33 for lack of written description support. Accordingly, for the reasons discussed above, we do not sustain the rejection of claims 27, 28, 31, and 33 under 35 U.S.C. § 112 (pre-AIA), first paragraph. D. The Indefiniteness Rejection We similarly agree with Patent Owner that the Examiner erred in rejecting claims 26–28 as indefinite. Namely, the Examiner finds that the references to a “respective . . . collector brackets” and “a corresponding limb element” in claims 26–28 is unclear because two collector brackets or two limb elements are introduced in claim 1 and “it is unclear whether the ‘collector brackets’ of claim 26 correspond to the collector brackets of claim 1, or if this term refers to different collector brackets.” Final Act. 14–15. We disagree. A skilled artisan would understand that claim 1 recites two collector brackets and two limb elements and “[c]laim 26 [] clarifies that the ends of the limb elements are received in the ‘respective ... collector brackets’. Given this entire context, one of ordinary skill in the art would appreciate that the ‘respective ... collector brackets’ in claim 26 do in fact correspond to the ‘two collector brackets’ in claim 1.” App. Br. 47; see also App. Br. 47–48 (presenting similar arguments with respect to claims 27 and 28). In other words, a skilled artisan would easily appreciate the meaning of the disputed limitations. Appeal 2016-001569 Reexamination Control 90/013,329 Patent 7,866,134 B2 18 With respect to claims 27 and 28, the Examiner also finds that the term “passage” recited in claims 27 and 28 indefinite because each collector bracket defines a passage and it is unclear whether the singular “passage” refers to one of the two passages or both passages. Final Act. 15. Similarly, the Examiner finds the term “the end” in claim 28 is indefinite because “each of the limb elements has been defined as having a corresponding end (see ll. 1-3). Since there is more than one end, it is unclear what the singular term ‘the end’ refers to, e.g., one of the two ends or both of the ends.” Final Act. 15. We find Patent Owner’s arguments persuasive. Patent Owner “submits that one of skill in the art would easily appreciate that after defining that ‘each of the collector brackets defines a passage’ it is clear that the further reference to ‘the passage’ relates to each of the passages.” App. Br. 48. And Patent Owner contends that “one of skill in the art would easily appreciate that after defining that the limb elements each have a corresponding end it is clear that the further reference to ‘the end’ relates to each of the limb element ends.” App. Br. 48. As such, a skilled artisan would easily understand the language of claims 26–28 and we determine that the Examiner erred in rejecting claims 26–28 as indefinite. Accordingly, for the reasons discussed above, we do not sustain the rejection of claims 26–28 under 35 U.S.C. § 112 (pre-AIA), second paragraph. E. The Written Description Rejection of Claims 26, 29, 30, 32, and 34 We also agree with Patent Owner that the Specification provides adequate written description support for claims 26, 29, 30, 32, and 34. Namely, the identification of issues with these claims rely on minor discrepancies between the language of the claim and the disclosure of the Specification. See Final Act. 15– Appeal 2016-001569 Reexamination Control 90/013,329 Patent 7,866,134 B2 19 16. For example, the Examiner notes that claim 26 recites inward facing while the Specification describes “mounted on inner sides” and claim 30 recites “flared” while the Specification refers to “sloped portions” or “tapered.” Final Act. 15–16. As Patent Owner explains, a skilled artisan would easily appreciate the recited claim limitations based upon the similar disclosure of the Specification. See, e.g., App. Br. 49–51. Accordingly, for the reasons discussed above, we do not sustain the rejection of claims 26, 29, 30, 32, and 34 under 35 U.S.C. § 112 (pre-AIA), first paragraph. VI. CONCLUSION We reverse the Examiner’s decisions to reject claims 1, 2, 7, 8, 22–28, and 30–34. REVERSED Appeal 2016-001569 Reexamination Control 90/013,329 Patent 7,866,134 B2 20 PATENT OWNER: KNOBBE, MARTENS, OLSON & BEAR LLP 2040 Main Street 14TH Floor Irvine, CA 92614 FOR THIRD-PARTY REQUESTER: JAMES W. MILLER, ATTORNEY 527 MARQUETTE A VENUE SUITE 1960, RAND TOWER MINNEAPOLIS, MN 55402 Copy with citationCopy as parenthetical citation