12627235 - (R) (P.T.A.B. Dec. 11, 2014)

Ex Parte Berkowitz et al

Patent Trials and Appeals BoardDec 11, 2014

12627235 - (R) (P.T.A.B. Dec. 11, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte BARBARA BERKOWITZ, GREGORY F. JACOBS, BRETT THIBODEAU, and HUSNU M. KALKANOGLU ____________________ Appeal 2012-006543 Application 12/627,235 Technology Center 3600 ____________________ Before JOHN C. KERINS, MICHAEL L. HOELTER, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE Barbara Berkowitz et al. (Appellants) filed a Request for Rehearing pursuant to 37 C.F.R. § 41.52, received December 1, 2014 (hereinafter “Request” or “Req.”), in response to our Decision on Appeal mailed September 30, 2014 (hereinafter “Decision” or “Dec.”), affirming the Examiner’s rejection of claims 1–7, 9, 11, 15, and 16 under 35 U.S.C. § 112, second paragraph, as indefinite.1 1We note that Appellants filed, on October 28, 2014, an Amendment proposing to amend pending claim 1, indicating that agreement has been reached between Appellants and the Examiner on claim language that would obviate the § 112 rejection. Because there is no indication to date that the Amendment has been entered and the rejection withdrawn (over which we Appeal 2012-006543 Application 12/627,235 2 ANALYSIS Appellants contend that the Board “incorrectly applied the standard set forth in by [sic] the Supreme Court in Nautilus, Inc. v. Biosig Instruments, Inc., 1343 S. Ct. 2120 (2014), in affirming the section 112, second paragraph rejection of claim 1 and the claims dependent therefrom[,]” noting that the Court states that [t]he definiteness requirement, so understood, mandates clarity, while recognizing that absolute precision is unattainable. The standard we adopt accords with opinions of this Court stating that ‘the certainty which the law requires in patents is not greater than is reasonable, having regard to their subject- matter.’ Req. 1 (citing Nautilus,134 S. Ct. at 2129). Appellants submit that the Board’s conclusion that “the Section 112, second paragraph standard is not met because [A]ppellants have failed to identify any definition or corresponding structure at least with respect to the claim language ‘means whereby . . . the transverse member will comprise a resistance means’” is in error because one of ordinary skill in the art reading the Specification at page 3, last paragraph, and viewing Figure 4 “would understand immediately the meaning of the challenged claim language.” Id. at 2. Appellants contend that “[i]n this case the subject matter is a simple device, which is easily understood to one of ordinary skill in the art by reference to the drawings,” and that “the Board departs from the Nautilis [sic] standard, in that it appears to require definitions or explicit identifications of corresponding structures when the term ‘means’ is used in have no jurisdiction), the Request for Rehearing remains ripe for decision, and we address the claims as originally presented in Appellants’ Appeal Brief. Appeal 2012-006543 Application 12/627,235 3 the claims, whereas, especially for simple mechanical devices such as the subject matter of the present invention, no such definitions or explicit identifications are required for one of ordinary skill in the art to understand the scope of the claims.” Id. The Specification at page 3, last paragraph, states “Fig. 4 is a sectional view, through another portion of a roof, wherein a different embodiment of end treatment for a roll roofing material is shown, having a transverse member preventing rolling of the same relative to the roof.” Spec. 3. Figure 4 from Application 12/627,235 is reproduced below. Figure 4 depicts roof 51, cylindrical roll 50, and transverse bar 54. More specifically, Figure 4 depicts “transverse bar 54” having “a transverse dimension that is greater than the diametral dimension of the exterior of the cylindrical roll 50, to inhibit the rolling of the same along the roof 51.” See Spec. 6. Claim 1 recites, inter alia, Appeal 2012-006543 Application 12/627,235 4 an anti-roll device comprising a transverse member of a transverse dimension greater than said given diametric dimension, carried by said cylindrical roll and protruding generally outwardly of said cylindrical surface; with the anti- roll device comprising means whereby, when the generally cylindrical roll is disposed on a sloped roof with its outer cylindrical surface against the surface of the sloped roof, the transverse member will comprise resistance means resisting rolling of the cylindrical roll off the roof. Appeal Br. 15, Claims App. (emphasis added). Thus, claim 1, as written, requires an anti-roll device to have, first, a transverse member protruding outwardly of the cylindrical surface of the roll, and second, “means whereby . . . the transverse member will comprise resistance means resisting rolling.” The language of claim 1 is indefinite because an unreasonable amount of uncertainty exists, having regard to the subject matter of claim 1, in accord with the Nautilus standard, as to what structure corresponds to the two “means” terms separate from the recited structure of the protruding transverse member. Moreover, contrary to Appellants’ assertion above, it is not the Nautilus standard, but rather 37 C.F.R. § 41.37 that requires Appellants to expressly indicate, by particular reference to page and line numbers in the Specification, the structure, material or acts corresponding to each claimed function for any limitation that Appellants regard as a means plus function limitation permitted by 35 U.S.C. § 112, sixth paragraph. See 37 C.F.R. § 41.37(c)(1)(v) (July 1, 2011).2 This requirement is intended to aid the PTAB in determining the proper scope of any means-plus-function 2 We cite to the version of the Code of Federal Regulations in effect when Appellants filed their Appeal Brief on August 29, 2011. Appeal 2012-006543 Application 12/627,235 5 limitation. Appellants’ Summary of Claimed Subject Matter section of the Appeal Brief states that the anti-roll device comprising means whereby . . . the transverse member (pg. 3 L 9-13; 54 of Fig.4) will comprise resistance means resisting rolling (pg. 2 L 20-24) of the cylindrical roll off the roof (pg. 3 L 17-19 and 26-28; 50, 51 and 54 of Fig. 4; pg. 3 L 8-11; pg. 6 L 1-2; 24 of Fig. 1; pg. 6 L 23-26). Appeal Br. 4. Such citations, which relate to an openable band, transverse bar 54, a transverse member with protruding portions, transverse members, an end treatment for a roll roofing material having a transverse member, roof 24, roofing material 50, roof 51, and projecting ends 65, 66 having slots 67, 68 for bars 70, 71, do not clearly identify, link, or associate what structures correspond to the “means whereby” claim term and the “resistance means” claim term. See Telcordia Techs., Inc. v. Cisco Systems, Inc., 612 F.3d 1365, 1376 (Fed. Cir. 2010) (written description must clearly link or associate structure, material or acts to claimed function in order to meet definiteness requirement under 35 U.S.C. § 112). We have considered our decision in light of Appellants’ arguments in the Appellants’ request; however, we see no compelling reason to justify a different result. The written description fails to clearly link or associate a disclosed structure, material or acts to the claimed “means whereby . . . the transverse member will comprise resistance means” and “resistance means resisting rolling of the cylindrical roll off the roof,” apart from the separately recited transverse member that protrudes beyond the surface of the cylindrical roll of claim 1. Accordingly, we decline to modify our original decision. Appeal 2012-006543 Application 12/627,235 6 No time period for taking any subsequent action in connection with this appeal may be extended under 37 CFR §1.136(a). DECISION REHEARING DENIED Klh