Ex Parte Besche

Patent Trial and Appeal Board

Jun 17, 2016

12806943 (P.T.A.B. Jun. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/806,943 08/24/2010
7590 06/17/2016
Sam Rosen, Esquire
HODES, PESSIN & KATZ, P.A.
Suite 400
901 Dulaney Valley Road
Towson, MD 21204
FIRST NAMED INVENTOR
Charles F. Besche
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
027340.002 6933
EXAMINER
NEWHOUSE, NATHAN JEFFREY
ART UNIT PAPER NUMBER
3782
MAILDATE DELIVERY MODE
06/17/2016 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 CHARLES F. BESCHE
Appeal2014-004185
Application 12/806,943
Technology Center 3700
Before CHARLES N. GREENHUT, LYNNE H. BROWNE, and
ERIC C. JESCHKE, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claim
11. 1 We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 All other outstanding rejections were withdrawn by the Advisory Action of
June 3, 2013.
Appeal2014-004185
Application 12/806,943
CLAIMED SUBJECT MATTER
Claim 11, reproduced below, is the sole claim before us:
11. A grommet or bushing through which wire or piping
can pass consisting essentially of a tubular portion forming a ring
through which is cut a series of grooves forming shoulders into
which is inserted an 0-ring which will protrude inwardly through
the grooves and project outwardly over the shoulders thereby
forming a grommet able to fit snugly into a hole whereby the
outward projections of the 0-ring are employed.
REJECTION
Claim 11 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Games (US 5,060,996, iss. Oct. 29, 1991), Saunders (US 3,435,987,
iss. Apr. 1, 1969) and Medley (US 2,758,762, iss. Aug. 14, 1956).
OPINION
Appellant's Appeal Brief takes the format of responding to the four
paragraphs of the Advisory Action dated October 18, 2013. App. Br. 10.
Appellant's first point of contention is that the Specification, by paragraphs
64 and 65 in particular, defines the "grommet" of claim 11. For
convenience, paragraphs 64 and 65 of the pre-grant publication are
reproduced below:
[0064] Referring to FIGS. 15 and 16, there are views of a
grommet 70 wherein the elemental unit 72, namely the three
grooves 74 and the three shoulders 76 of the 0-ring Elastic
Casing Article Holder 10 are used to make a grommet. See for
example FIG. 5 where lines 16-16 show the area from which the
elemental unit or grommet base 72 can be taken. Note also 0-
ring washer 71 which is inserted into grooves 7 4 and over
shoulders 76, with the backside of the shoulder 78 shown in FIG.
15.
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Appeal2014-004185
Application 12/806,943
[0065] The outer elastic portion of the grommet as described by
this invention can, for example, be fitted into a hole cut in wood
or other material to allow for a protective fit of wires or piping
passing through the inner portion of the grommet.
Like the Examiner, we find nothing in these paragraphs that rises to
the level of a lexicographic definition of the term "grommet." Although
these paragraphs may describe particular arrangements of the preferred
embodiment, there is nothing to indicate that the subject matter of claim 11
should be limited to an embodiment appearing only in the disclosure. Our
reviewing court has "cautioned against reading limitations into a claim from
the preferred embodiment described in the specification, even if it is the only
embodiment described, absent clear disclaimer in the specification." In re
Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Only the
best mode, as opposed to all modes of invention must be contained in the
disclosure; the claims define the scope of invention for which a patent is
sought. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
"[L] imitations are not to be read into the claims from the specification." Id.
Turning to the next issue, the transitional phrase "consisting
essentially of' is a term of art in patent claim drafting. It is used to "limit[]
the scope of a claim to the specified materials or steps 'and those that do not
materially affect the basic and novel characteristic(s)' of the claimed
invention." MPEP § 2111.03 (quoting In re Herz, 537 F.2d 549, 551-52
( CCP A 197 6)) (emphasis in original omitted and new emphasis added). Use
of this phrase does not, however, eliminate elements or teachings of the
prior art from the Examiner's consideration in judging obviousness. Reply
Br. 4 ("Appellant limited claim 11 to recite the expression 'consisting
essentially of' in order to limit the import of Saunders"). If a claim uses an
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Appeal2014-004185
Application 12/806,943
open-ended transitional phrase, it is sufficient to demonstrate unpatentability
if subject matter including all claim elements and additional elements would
have been obvious. If, as here, the claim uses a partially-closed transitional
phrase, the Examiner must consider whether the combination of the
specified elements and only those additional elements that do not materially
affect the basic and novel characteristics of the claimed subject matter would
have been obvious. This is exactly how the Examiner analyzed claim 11 in
light of the transitional phrase "consisting essentially of." Final Act. 11.
Appellant argues that tube 10 and openings 12 in Games are
additional structures that would materially affect the basic and novel
characteristics of the claimed invention. App. Br. 10. First, the claim recites
"a tubular portion" so we are not apprised of any reason why Appellant
considers the Games tube as additional structure. Second, even assuming
the holes in the tube are additional materials or structure, as opposed to the
absence thereof, the Examiner found that these holes would not materially
affect the basic and novel characteristics of the claimed subject matter. Ans.
5. "If an applicant contends that additional steps or materials in the prior art
are excluded by the recitation of 'consisting essentially of,' applicant has the
burden of showing that the introduction of additional steps or components
would materially change the characteristics of applicant's invention."
MPEP § 2111.03 (citations omitted). Appellant does not present arguments
or evidence to rebut the Examiner's findings in the appeal brief and we are
not apprised of any good cause to consider the untimely arguments on this
point presented in the reply brief. See 37 C.F.R. § 41.41.
Next, Appellant "maintains that the Examiner has not set forth a
rationale for the combination of these references." App. Br. 10. Appellant's
assertion in this regard is plainly inaccurate. See Ans. 6 (quoting Final Act.
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Application 12/806,943
7-8). The Examiner did not, and need not articulate a "motivation to strip
away structure such as the intermediate tube 10 and opening 12 of the
Games device." App. Br. 11. As discussed above, the Examiner's
conclusion of obviousness is not premised on such a modification to Games.
Appellant does not address the merits of the rationale for combining Games
with Saunders and Medley as set forth by the Examiner in the Final
Rejection. See Final Act. 7-8.
Lastly, as the Examiner correctly points out, "[t]he pin of Saunders is
immaterial to [the Examiner's proposed] modification." Ans. 8; see App.
Br. 11. "It is well-established that a determination of obviousness based on
teachings from multiple references does not require an actual, physical
substitution of elements." In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir.
2012).
DECISION
The Examiner's rejection of claim 11 is affirmed.
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)(l )(iv).
AFFIRMED
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