Ex Parte Chene et al

Patent Trial and Appeal Board

Apr 25, 2013

10509994 (P.T.A.B. Apr. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte RICHARD CHENE, DOMINIQUE DELAMOUR, and
OLIVIER RODI
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Appeal 2011-002848
Application 10/509,994
Technology Center 3600
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Before BENJAMIN D. M. WOOD, HYUN J. JUNG, and
ADAM V. FLOYD, Administrative Patent Judges.

FLOYD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 16-20. Claims 1-15, 21, 22, 26, and 28
have been cancelled. Claims 23-25 and 27 have been withdrawn. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2011-002848
Application 10/509,994

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CLAIMED SUBJECT MATTER
Claim 16 is the sole independent claim on appeal, and it recites:
16. A spectacle frame having a side-piece and a spectacle face
interconnected by comprising at least one pivot point between
one end of the side-piece and an end of the spectacle face, said
ends having bearing faces fit for pairing up respectively one on
top of the other, elastic means for maintaining the bearing
contact between said faces, wherein said system comprises two
pivot parts, each having a recessed zone limited by an at least
partially curved surface, each of said pivot parts depending
respectively on one of the side-piece and spectacle face, said
pivot parts being substantially orthogonal to each other, and
engaged one in the other through interlocking of their
respective recessed zone, thereby to be able to pivot relative to
each other, with the result that said system comprises two
intangible pivot points movable in the two orthogonal planes of
said pivot parts within the limits permitted by said recessed
zones, and means which allow pivoting only in one or two
predetermined planes.

REJECTIONS
Claims 16-20 are rejected under 35 U.S.C. § 112, second paragraph,
as indefinite.
Claims 16-20 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Morton (US 1,674,983, iss. Jun. 26, 1928) and Warshawsky (US
4,492,488, iss. Jan. 8, 1985).

Appeal 2011-002848
Application 10/509,994

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ANALYSIS
The rejection of claims 16-20 as indefinite
The Examiner rejects claim 16 and its dependent claims 17-20 as
indefinite because “said system” lacks antecedent basis. Ans. 3. The
Appellants state that the preamble of claim 16 previously recited “[a] system
of articulation” before being amended to recite “[a] spectacle frame,” but
maintain that the claims are not indefinite because it is clear that “said
system” refers to the spectacle frame recited in the preamble. App. Br. 4-5.
Without explicitly stating it, the Appellants appear to argue that one of skill
would understand “said system” means “said spectacle frame” because the
prosecution history reveals that the preamble had been amended from “‘[a]
system of articulation’” to “‘[a] spectacle frame.’” App. Br. 4. As the
Examiner correctly points out the claim must be definite standing apart from
the prosecution history. Ans. 5.
The Appellants also argue that one of skill would understand “said
system” is inherent to a “spectacle frame,” thus, the antecedent basis need
not be explicitly stated. App. Br. 5. The Examiner finds that one of skill
would not understand “said system” to be an inherent component of a
spectacle frame because spectacle frames do not have a component
commonly referred to as a “system.” Ans. 5. We agree that it is unclear
what the “said system” refers to in claim 16, and we could find no reference
in the Specification to a spectacle frame as a “system.” Therefore, because
those skilled in the art would not understand what is claimed when claim 16
is read in light of the Specification, claim 16 also fails the test for
definiteness. See Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986). Thus, the rejection of claims 16-20 as
Appeal 2011-002848
Application 10/509,994

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indefinite is sustained. In view of the indefinite nature of the claims it is not
possible to reach the merits of the rejection of claims 16-20 under 35
U.S.C. § 103(a) as unpatentable over Morton and Warshawsky.

DECISION
We AFFIRM the rejection of: claims 16-20 under 35 U.S.C. § 112,
second paragraph, as indefinite.
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)(1)(iv).

AFFIRMED

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