Ex Parte Campbell et al

Patent Trial and Appeal Board

Dec 17, 2014

12150255 (P.T.A.B. Dec. 17, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/150,255 04/25/2008 David M. Campbell 1644-001 5726
7590 12/18/2014
Lawson & Persson, P.C.
P.O. Box 712
Laconia, NH 03247-0712
EXAMINER
HAWK, NOAH CHANDLER
ART UNIT PAPER NUMBER
3636
MAIL DATE DELIVERY MODE
12/18/2014 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 DAVID M. CAMPBELL and WILLIAM HIRSCH
____________________

Appeal 2012-009133
Application 12/150,255
Technology Center 3600
____________________

Before: EDWARD A. BROWN, MICHAEL L. HOELTER, and
JAMES J. MAYBERRY, Administrative Patent Judges.

MAYBERRY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
David M. Campbell and William Hirsch, Appellants, appeal under 35
U.S.C. § 134 from a rejection of claims 1–6, 8–15, and 17–29. An oral
hearing was held on December 9, 2014. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).

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CLAIMED SUBJECT MATTER
The claims are directed to a crutch cushion, crutch system, and kit.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A crutch cushion comprising:
a body comprising a rear surface, a front surface, a rear
transition portion, a front transition portion, a right side surface,
a left side surface, a top surface, a bottom surface, and a hollow
chamber proximate to said bottom surface;
wherein said top surface intersects said rear surface, said
front surface, said right side surface and said left side surface
and slopes continuously downward from said front surface to
said rear surface such that said rear surface is disposed below
said front surface;
wherein said top surface intersects said rear surface at
said rear transition portion and said top surface intersects said
front surface at said front transition portion, and said rear
transition portion is disposed below said front transition
portion;
wherein said right side surface and said left side surface
each have a substantially concave shape;
wherein said bottom surface comprises an oblong
opening therethrough, said oblong opening being proximate to
said hollow chamber and dimensioned to be smaller than a
dimension of said hollow chamber;
wherein said body is manufactured of at least one
viscoelastic material and is dimensioned such that said body
will not collapse completely against a head of a crutch and will
not roll over said head of said crutch when a weight is placed
on said top surface of said cushion.

REJECTIONS
Claims 1, 2, 5, 6, 8–10, 12, 15, 17–19, 22–23, 24–26, 28, and 29 stand
rejected under 35 U.S.C. § 102(b) as being anticipated by Davis (WO
2006047413 A2, published May 4, 2006). Ans. 4.
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Claims 3, 11 and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Davis. Id. at 13.
Claims 4 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Davis and Chen (US 6,333,374 B1, issued Dec. 25, 2001).
Id. at 14.
Claims 20 and 21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Davis and Silverstein (US 2002/0129845 A1, published
Sept. 19, 2002). Id. at 16.

ANALYSIS
Indefiniteness
Independent claims 1, 12, and 24—the only independent claims under
appeal—each recites a body of a crutch cushion that includes “a rear surface,
a front surface, a rear transition portion, a front transition portion . . . [and] a
top surface.” Appeal Br. 22, 24, 28, Claims App. These three independent
claims also each recites “wherein said top surface intersects said rear surface
[and] said front surface . . . and slopes continuously downward from said
front surface to said rear surface.” Id. at 22, 24–25, 28. These three
independent claims also each recites “wherein said top surface intersects
said rear surface at said rear transition portion and said top surface intersects
said front surface at said front transition portion.” Id.
In determining whether a claim is definite under 35 U.S.C. § 112,
second paragraph, “[t]he USPTO, in examining an application, is obliged to
test the claims for reasonable precision . . . .” In re Packard, 751 F.3d 1307,
1313 (Fed. Cir. 2014). As is apparent from the claim language quoted
above, each claim under appeal defines a “front surface” both as a unique
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element and also as the combination of both the “front surface” and “front
transitional portion.” Similarly, each claim under appeal defines a “rear
surface” both as a unique element and also as the combination of both the
“rear surface” and “rear transitional portion.” This claiming structure casts
the claim in ambiguous—as opposed to clear—terms. See id.
Each claim requires the “top surface” to intersect the “rear surface”
and “front surface” and to slope continuously downward from the “front
surface” to the “rear surface.” Each claim also requires the “top surface” to
intersect the “front surface” at the “front transitional portion” and the “top
surface” to intersect the “rear surface” at the “rear transitional portion.” This
claim structure requires the “front surface” and “front transitional portion” to
be unique components of the crutch cushion body. The claim structure also
requires the “front surface” to be directly adjacent the “top surface” so that
they intersect and yet have the “front transitional portion” situated between
the “front surface” and “top surface” where they intersect. The claim
structure imposes a similar ambiguous relationship between the “rear
surface,” “rear transition portion,” and “top surface.”
We further note that the principal dispute between Appellants and the
Examiner with respect to the prior-art-based rejections of the claims under
appeal stems from construing what constitutes a “top surface,” “front
transition portion,” and “front surface”—where one element ends and the
other begins. See generally Ans.; Appeal Br. This dispute highlights the
ambiguity in the claims. We suggest Appellants consider this issue when
addressing our new ground of rejection under 35 U.S.C. § 112, second
paragraph. As our reviewing court has made clear:
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during patent prosecution when claims can be amended,
ambiguities should be recognized, scope and breadth of
language explored, and clarification imposed. The issued
claims are the measure of the protected right. An essential
purpose of patent examination is to fashion claims that are
precise, clear, correct, and unambiguous. Only in this way can
uncertainties of claim scope be removed, as much as possible,
during the administrative process.
In re Zletz, 893 F.2d 319, 321–22 (Fed. Cir. 1989) (citations omitted).
For the reasons above, we find that the claims under appeal are
indefinite. We enter a New Ground of Rejection of claims 1–6, 8–15, and
17–29 under 35 U.S.C. § 112, second paragraph, pursuant to our authority
under 37 C.F.R. § 41.50(b).

Prior Art Rejections
We do not reach the merits of the rejections under 35 U.S.C. § 102(b)
and 35 U.S.C. § 103(a) at this time. Before a proper review of the rejections
under 35 U.S.C. § 102(b) and 35 U.S.C. § 103(a) can be performed, the
subject matter encompassed by the claims on appeal must be reasonably
understood without resort to speculation. Because we find that all claims
under appeal fail to satisfy the requirements of the second paragraph of 35
U.S.C. § 112, we are constrained to reverse, pro forma, the prior-art-based
rejections under 35 U.S.C. § 102(b) and 35 U.S.C. § 103(a). See In re
Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art rejection cannot be
sustained if the hypothetical person of ordinary skill in the art would have to
make speculative assumptions concerning the meaning of claim language.);
see also In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“If no reasonably
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definite meaning can be ascribed to certain terms in the claim, the subject
matter does not become obvious—the claim becomes indefinite.”).

DECISION
For the above reasons, we REVERSE, pro forma, the Examiner’s
rejection of claims 1–6, 8–15, and 17–29 under 35 U.S.C. §§ 102(b) and
103(a).
We also enter a New Ground of Rejection of claims 1–6, 8–15, and
17–29 under 35 U.S.C. § 112, second paragraph, pursuant to our authority
under 37 C.F.R. § 41.50(b).
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that, “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of proceedings (37 C.F.R. § 1.197(b)) as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded
to the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under 37 C.F.R. § 41.52 by the Board upon the
same record. . . .
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

REVERSED; 37 C.F.R. § 41.50(b)

rvb