Ex Parte Claudio

Patent Trial and Appeal Board

Jul 31, 2017

12817367 (P.T.A.B. Jul. 31, 2017)

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.
12/817,367 06/17/2010 ANGEL L. CLAUDIO SR. B3-3904 5423
27127 7590 08/02/2017
HARTMAN GLOBAL IP LAW
2621 CHICAGO ST., STE A
VALPARAISO, IN 46383
EXAMINER
SNELTING, JONATHAN D
ART UNIT PAPER NUMBER
3652
NOTIFICATION DATE DELIVERY MODE
08/02/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
domenic a @ hartmanglobal-ip .com
gayle@hartmanglobal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANGEL L. CLAUDIO, SR.
Appeal 2015-0082481
Application 12/817,3 672
Technology Center 3600
Before KENNETH G. SCHOPFER, TARA L. HUTCHINGS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SCHOPFER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the Examiner’s rejection
of claims 1—11. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references the Appeal Brief (“Appeal Br.,” filed Apr. 23,
2015) and Reply Brief (“Reply Br.,” filed Sept. 21, 2015), and the
Examiner’s Answer (“Ans.,” mailed July 20, 2015) and Final Office Action
(“Final Act.,” mailed Oct. 15, 2014).
2 According to Appellant, the real party in interest is Appellant Angel L.
Claudio, Sr. Appeal Br. 3.
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Application 12/817,367
BACKGROUND
The Specification “relates, in general, to devices for transporting and
operating heavy tools and, more particularly, ... to an apparatus for
facilitating the use of traveling welding and/or torch cutting tools.” Spec. 1,
11. 7-10.
CLAIMS
Claims 1—11 are on appeal. Claim 1 is the only independent claim on
appeal and recites:
1. An apparatus for transporting a track having a machine
secured thereto, the machine being adapted to slide along the
track, the said apparatus comprising:
a pair of wheel assemblies each comprising:
a receiving member having an opening sized and
shaped to slidably receive an end of the track;
at least two wheels secured to an axle; and
at least one brace member securing the axle to the
receiving member;
wherein the apparatus is adapted to be reversibly arranged
in at least first and second configurations, in the first
configuration the pair of wheel assemblies are separated with no
interconnection therebetween and are wholly separate from the
track, in the second configuration the receiving member of a first
of the pair of wheel assemblies releasably receives a first end of
the track and the receiving member of a second of the pair of
wheel assemblies releasably receives a second end of the track
such that the first and second of the pair of wheel assemblies are
directly and solely connected by the track.
Appeal Br. 28.
REJECTIONS
1. The Examiner rejects claims 1—11 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement.
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2. The Examiner rejects claims 2 and 4 under 35U.S.C. § 112, second
paragraph, as indefinite.
3. The Examiner rejects claims 1—11 under 35 U.S.C. § 103(a) as
unpatentable over McCoy.3
DISCUSSION
Written Description
The Examiner rejects claims 1—11 as follows:
The limitation “the first and second of the pair of wheel
assemblies are directly and solely connected by the track” in
claim 1, all of claim 2, all of claim 3, all of claim 4, and the
limitation “the apparatus is configured to rest on a surface
positioned with the wheels of one of the pair of wheel assemblies
resting on the surface and the other of the pair of wheel
assemblies projecting above the surface” in claim 10 were not
sufficiently described in the original disclosure. Regarding the
negative limitations (the limitation “solely” is considered a
negative limitation because it attempts to exclude other
possibilities), any negative limitation or exclusionary proviso
must have basis in the original disclosure. The mere absence of
a positive recitation is not basis for an exclusion
Final Act. 4.
“Adequate written description means that the applicant, in the
specification, must ‘convey with reasonable clarity to those skilled in the art
that, as of the filing date sought, he or she was in possession of the [claimed]
invention.’” Agilent Techs., Inc. v. Asymetrix, Inc., 567 F.3d 1366, 1379
(Fed. Cir. 2009).
3 McCoy et al., US 5,249,823, iss. Oct. 5, 1993 (“McCoy”).
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Application 12/817,367
Claim 1
We are persuaded of reversible error by Appellant’s arguments with
respect to the written description rejection of claim 1. See Appeal Br. 13—
15. In particular, we agree that Figures 1 and 5 both show wheel assemblies
that are solely connected to one another by a track. Id. at 14. Although the
term “solely” may be considered a negative limitation, we find that the
Figures cited by Appellant provide specific embodiments in which the wheel
assemblies are solely connected by the track. We disagree that more is
required to support the claim language as the configuration shown in Figures
1 and 5 conveys with reasonable clarity that Appellant was in possession of
the claimed configuration at the time of filing. Further, we disagree with the
Examiner that “the wheel assemblies in the first configuration would be also
connected at least by the ground.” Ans. 2. Again, the embodiments shown
in Figures 1 and 5 show wheel assemblies only connected by the track and
do not depict a connection by the ground. Accordingly, we do not sustain
the rejection of claim 1 here, and we also do not sustain the rejection of
claims 5—9 and 11, which the Examiner rejects only based on their
dependence from claim 1.
Claims 2—4
Appellant does not directly respond to the Examiner’s rejection of
claims 2—4 for lack of written description. Rather, Appellant first asserts
only that “[cjlaims 2, 3, and 4 are believed to be rejected for depending from
claim 1.” Appeal Br. 13. However, the rejection specifically notes that
claims 2—4 are separately rejected in their entirety for lacking written
description support, and the Examiner indicates that the limitations
regarding “rotation or frictional fit” are not supported by the original
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disclosure. Final Act. 4, 9. Appellant does identify support for the claim
limitations of claims 2 and 4 in response to the indefmiteness rejection. As
discussed below, we agree with Appellant that claims 2 and 4 are adequately
supported in the Specification, but we do not agree that claim 3 is supported
by the Specification as originally filed.
Regarding claim 2, Appellant argues that “a non-limiting example of
[the claim 2] limitation may be readily understood by one of ordinary skill in
the art in view of Figures 2—5.” Appeal Br. 17—18. For example, Appellant
asserts:
For example, Figure 2 represents a wheel assembly as having a
structure such that the receiving member is only supported by a
rotatable axle 14. As such, when the receiving members are
releasably coupled to oppositely disposed ends of a track, such
as represented in Figures 3-5, the weight of the track will be
distributed between the pair of wheel assemblies. The weight of
the track will create a downward force on the receiving members
of the pair of wheel assemblies and, since there is nothing other
than the axles 14 supporting the receiving members, the
downward force will cause the wheel assemblies to rotate about
an axis of the axle 14 of each of the wheel assemblies in a
direction towards the opening of their respective receiving
members.
Id. at 18. Based on this description, we are persuaded that the Specification
conveys, with reasonable clarity, that Appellant was in possession of the
subject matter of claim 2 at the time of filing. Thus, we do not sustain the
rejection of claim 2 here.
Regarding claim 3, the Examiner finds that the entirety of the claim
lacks written description support and further finds:
Regarding the limitations regarding the weight of the
device providing ... a frictional fit, the Applicant appears to
rely on what one skilled in the art would know just by looking at
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Application 12/817,367
the drawings. However, [this] limitation[ is] dependent on the
shape and relative size of the elements and, therefore, the fit of
the elements together, which were not explicitly shown or stated
in the original disclosure.
Final Act. 9. As noted, Appellant does not provide an indication of where
the limitation of claim 3 is supported in the Specification. We have
reviewed the Specification and note that the Specification states that the
track may be frictionally retained in the wheel assemblies. Spec. 5,11. 9—11.
However, it is not apparent from this disclosure that the weight of the track
causes the frictional engagement between the track and the wheel
assemblies. Thus, without further explanation from Appellant, we agree
with the Examiner that claim 3 lacks written description support.
Accordingly, we sustain the written description rejection of claim 3.
Regarding claim 4, Appellant argues:
Appellant respectfully believes that a non-limiting
example of this limitation is clearly represented in Figure 2,
which discloses axle braces 13 arranged at a predetermined angle
between the receiving member and the axle 14 such that the
receiving member is vertically offset from the relative to the axle
14 in a direction towards the opening of the receiving member.
As such, Appellant is merely reciting a structural limitation of
the apparatus that is self-evident from the drawings. The claim
does not recite forces, bending moments, or movement of any
component.
Appeal Br. 19. Based on this description, we are persuaded that the
Specification conveys, with reasonable clarity, that Appellant was in
possession of the subject matter of claim 4 at the time of filing. Thus, we do
not sustain the rejection of claim 4 here.
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Claim 10
We are not persuaded of reversible error by Appellant’s arguments
with respect to claim 10. Appellant asserts that Figure 7 shows a
configuration in which two wheel assemblies are releasably attached to one
another and that Figure 8 shows that the wheel assembly may include a prop
for allowing it to rest on a surface with the receiving member directed
upwards relative to the surface. Appeal Br. 16. Based on these figures,
Appellant “believes that one of ordinary skill in the art would readily
understand that a second wheel assembly could be releasably attached to the
wheel assembly in Figure 8 as represented in Figure 7.” Id. Although one
may readily understand that a second wheel assembly could be attached in
Figure 8, adequate written description requires that the Specification convey
with reasonable clarity that Appellant was actually in possession of the
claimed invention at the time of filing. We agree with the Examiner that
Appellant’s argument, at best, only shows that the configuration claimed
would have been obvious in light of the Specification and does not show,
with reasonable clarity, that Appellant actually possessed the configuration
claimed. See Ans. 3^4. Though the claimed subject matter need not be
described literally, we are not persuaded that the cited portions of the
Specification adequately support the claim as required under 35 U.S.C.
§112, first paragraph. Accordingly, we sustain the rejection of claim 10
here.
Indefiniteness
With respect to claims 2 and 4, the Examiner finds as follows:
Claims 2 and 4 describe a rotation and an offset of the
apparatus. As these limitations are not sufficiently described in
the disclosure (see rejections above), it is not clear whether
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Applicant is claiming that elements of the apparatus exert forces
and/or bending moments on each other or that elements of the
apparatus actually move with respect to each other.
Final Act. 4—5. As discussed above, we disagree with the Examiner that the
limitations of claims 2 and 4 are not sufficiently described in the disclosure.
Appellant has identified where those claim limitations are supported in the
Specification, and based on such disclosure and Appellant’s arguments, we
are not persuaded of any ambiguity in these claims. Accordingly, we do not
sustain the rejection of claims 2 and 4 here.
Obviousness
Claims 1—5 and 7—11
Appellant groups claims 2—5 and 7—11 with independent claim 1.
Appeal Br. 21. Thus, claims 2—5 and 7—11 stand or fall with claim 1.
Regarding claim 1, the Examiner finds that McCoy discloses an
apparatus including a pair of wheel assemblies as claimed, except that
McCoy does not disclose that the apparatus is reversibly arranged in first
and second configurations as claimed. Final Act. 5—6. The Examiner
concludes that “[i]t would have been obvious to a person having ordinary
skill in the art to make the apparatus reversibly arranged in first and second
configurations, since it has been held that constructing a formerly integral
structure in various elements involves only routine skill in the art.” Id. at 6.
Further, the Examiner clarifies that elements 46 and 50 are collectively
considered the track and the proposed modification to McCoy would make
elements 46 and 50 entirely separable from the wheel assemblies, which is
considered to be within the level of ordinary skill in the art. Ans. 5—6.
As discussed below, we are not persuaded of error in the rejection of
claim 1 by Appellant’s arguments.
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Appellant first argues that McCoy does not disclose or suggest an
apparatus adapted to be reversibly arranged in at least first and second
configurations as recited in the claim. Appeal Br. 21. Appellant asserts
“that McCoy’s cart 1 is not reversible between the two configurations since,
once assembled, McCoy’s front section 48 is permanently fixed to the
sliding section 50, and the rear sections 45 are permanently fixed to the
intermediate sections 46.” Id. at 22. We disagree that McCoy’s cart may
not be disassembled.
McCoy discloses that track member 46 is slidably arranged within
front sections 44 and fixed in position with respect to rear sections 45.
McCoy col. 4,11. 40-46. Similarly, track member 50 is in a fixed
relationship with section 48 and is in a locking and slidable relationship with
respect to section 49. See id. at col. 4,11. 47—65. We see no indication that
track members 46 and 50 may not be removed from members 44 and 49,
respectively. Thus, we find that McCoy at least suggests that the cart may
be disassembled.
Next, we note that the claim requires more than the ability for the
apparatus to be disassembled and further requires that the “wheel assemblies
are separate with no interconnection therebetween and are wholly separate
from the track.” Appeal Br. 28. However, we are not persuaded by
Appellant’s argument that such a configuration would not have been obvious
because it would reduce the structural integrity of the cart. Id. at 22. We
agree with the Examiner that making track elements 46 and 50 separable
from the cart would be within the level of ordinary skill in the art and one of
ordinary skill in the art would be motivated to do so “in order to ship the
apparatus or to service or replace individual components.” Ans. 5—6.
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Although separation of parts may result in some loss of structural integrity, a
person having ordinary skill in the art would recognize both the advantages
and disadvantages of the proposed modification and plan accordingly when
making modifications.
Next, Appellant argues that elements 46 and 50 in McCoy are not a
track as defined in claim 1. Appeal Br. 23. In support, Appellant asserts
that elements 46 and 50 are not wholly separate from the wheel assemblies.
Id. We are not persuaded by this argument. The proposed modification of
McCoy in the rejection, as discussed above, would make elements 46 and 50
wholly separable from the wheel assemblies in McCoy’s cart. Appellant
does not otherwise explain why elements 46 and 50 may not be considered a
track as required by the claims.
Based on the foregoing, we are not persuaded of reversible error with
respect to the rejection of claim 1 as obvious over McCoy. Accordingly, we
sustain the rejection of claim 1. We also sustain the rejection of claims 2—5
and 7—11, which fall with claim 1.
Claim 6
Claim 6 depends from claim 1 and further requires:
wherein the apparatus is adapted to be reversibly arranged in at
least a third configuration wherein the pair of wheel assemblies
are releasably coupled to each other by an interconnection on at
least the first of the pair of wheel assemblies and the pair of wheel
assemblies are wholly separate from the track.
Appeal Br. 30.
With respect to this claim, the Examiner finds:
McCoy’s apparatus is capable of being reversibly arranged in at
least a third configuration wherein the pair of wheel assemblies
are releaseably coupled to each other by an interconnection on at
least the first of the pair of wheel assemblies and the pair of wheel
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assemblies are wholly separate from the track (48 and 49
connected by another member). Please see MPEP 2114 and
2115.
Final Act. 7.
Here, Appellant argues that the Examiner’s proposed “arrangement is
not possible since the sliding sections 46 are permanently fixed in position
relative to the rear section 45 and the sliding section 50 is permanently fixed
in position relative to the front section 48.” Appeal Br. 26. We are not
persuaded by this argument because, like Appellant’s argument with respect
to claim 1 discussed above, it fails to consider that the proposed
modification to McCoy in the rejection that would make elements 46 and 50
wholly separable from McCoy’s wheel assemblies. Accordingly, we sustain
the rejection of claim 6.
CONCLUSION
For the reasons set forth herein, we conclude as follows:
We REVERSE the rejection of claims 1, 2, 4—9, and 11 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
We AFFIRM the rejection of claims 3 and 10 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
We REVERSE the rejection of claims 2 and 4 under 35 U.S.C. § 112,
second paragraph, as indefinite.
We AFFIRM the rejection of claims 1—11 under 35 U.S.C. § 103(a) as
unpatentable over McCoy.
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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)(l)(iv).
AFFIRMED
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