Ex Parte Coffield et alDownload PDFPatent Trial and Appeal BoardNov 6, 201713393969 (P.T.A.B. Nov. 6, 2017) Copy Citation 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. 13/393,969 03/02/2012 Timothy P. Coffield 14827-72(713-2454) 6130 27889 7590 11/08/2017 TT T TNOTS TOOT WORKS TNO EXAMINER PATENT DEPARTMENT AUNG, SAN M 155 HARLEM AVENUE GLENVIEW, IL 60025 ART UNIT PAPER NUMBER 3657 NOTIFICATION DATE DELIVERY MODE 11/08/2017 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): itwuspatents @itw.com mgawlik@itw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TIMOTHY P. COFFIELD, ROBERT K. STRATING, DEAN A. ZIMMERMAN, and ANDREW B. HARTMANN Appeal 2016-008188 Application 13/393,9691 Technology Center 3600 Before DENISE M. POTHIER, JOHN P. PINKERTON, and JASON J. CHUNG, Administrative Patent Judges. CHUNG, Administrative Patent Judge. Opinion Concurring filed by POTHIER, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. INVENTION The invention is directed to thermoplastic springs, such as railroad air hose support straps. Spec. 12. Claim 1 is illustrative of the invention and is reproduced below: 1. A thermoplastic spring, comprising: 1 According to Appellants, the real party in interest is Illinois Tool Works Inc. App. Br. 3. Appeal 2016-008188 Application 13/393,969 a thermoplastic body; at least one non-deformed region in said body having dimensions established by molding of the body; and at least one deformed region in said body, the deformed region extending fully across a cross-section of the body, the deformed region being deformed by stretching and having a first deformed dimension, in a stretched state, greater than the dimension thereof created by molding, the deformed region having a second deformed dimension in a non-stretched state greater than the dimension thereof created by molding and less than the dimension thereof in the stretched state; said deformed dimension resulting from elongation beyond a final in-use dimension of the thermoplastic spring. REJECTIONS AT ISSUE2 Claims 1—14 stand rejected under 35U.S.C. § 112, second paragraph, as being indefinite. Final Act. 2—3. Claims 1—20 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Joyce (U.S. Patent No. 4,136,148; issued Jan. 23, 1979) (hereinafter, “Joyce”). Final Act. 3—8. ANALYSIS Claim Construction To determine the scope of independent claims 1,10, and 15, the limitations at issue must be construed to have their broadest reasonable interpretation “in light of the specification as it would be interpreted by one 2 In the event of further prosecution, the Examiner should consider whether claim 1 has an antecedent basis issue in the recitation “said deformed dimension.” Stated differently, claim 1 recites “a first deformed dimension” and “a second deformed dimension” while also reciting “said deformed dimension” (emphases added). 2 Appeal 2016-008188 Application 13/393,969 of ordinary skill in the art.” See In re Am. Acad. OfSci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (internal citations and quotations omitted). Independent claim 1 recites three different dimensions: (1) “dimensions established by molding of the body” (hereinafter, “first dimension”); (2) “a stretched state, greater than the dimension thereof created by molding” (hereinafter, “second dimension”); and (3) “a second deformed dimension in a non-stretched state greater than the dimension thereof created by molding and less than the dimension thereof in the stretched state” (hereinafter, “third dimension”). Independent claims 10 and 15 also recite these three different dimensions. Rejection of Claims 1—14 under 35 U.S.C. § 112, second paragraph The Examiner finds it is not clear how to get two non-stretched dimensions that are different in claims 1 and 10. Ans. 3. Moreover, the Examiner finds that claims 1 and 10 are “end product by using apparatus” claims so “[i]t is not clear what structure is imparted by the limitation.” Id. at 3—5; Final Act. 2. The Examiner also finds that the third dimension recited in claims 1 and 10 renders claims 1 and 10 indefinite because it is an intended use, which does not differentiate claims 1 and 10 from a prior art apparatus. Final Act. 2. Appellants contend that claims 1 and 10 are clear and definite because there are three dimensions: (1) a first dimension, which is the shortest; (2) a second dimension, which is the longest dimension and occurs when stretched; and (3) the third dimension, which is intermediate in length relative to the first dimension and second dimension when released from the relaxed from stretching. App. Br. 7; Reply Br. 2—5. In addition, Appellants contend claims 1 and 10 are clear and definite because they recite that the 3 Appeal 2016-008188 Application 13/393,969 third dimension is a guidepost for the physical deformation of the spring; not as a final use or intended use of the product. App. Br. 6—8. We agree with Appellants. At the outset, to the best of our understanding, the Examiner’s theory of “end product by using apparatus” (emphasis added) is that the claims are directed to “product by process.” Ans. 3—5; Final Act. 2. Applying our understanding, the metes and bounds of claims 1 and 10 are clear and definite because they describe the three different dimension lengths relative to each other. Moreover, even if claims 1 and 10 are product-by-process claims, such product by process claim does not invoke necessarily a rejection under 35 U.S.C. § 112, second paragraph. See, e.g., the Manual of Patent Examining Procedure (MPEP) § 2173.05(p). Regarding the Examiner’s intended use theory, the third dimension serves as a guidepost for the physical deformation of the spring, and not as an intended use. See id. Accordingly, for the reasons stated supra, we do not sustain the Examiner’s rejection of: (1) independent claims 1 and 10; and (2) dependent claims 2—9 and 11—14 for similar reasons. Rejection of Claims 1—20 under 35 U.S.C. § 102(b) The Examiner finds Joyce teaches a strap that is molded of a stretch reorientable material and stretching the strap, which the Examiner maps to the first dimension and second dimension, respectively. Ans. 5—6. Furthermore, the Examiner reasons that because the Appellants’ “thermoplastic spring” and Joyce’s webbed harnessing device are substantially the same, Joyce performs the same as Appellants’ invention. Id. at 6. Moreover, the Examiner finds this same performance leads to 4 Appeal 2016-008188 Application 13/393,969 Joyce’s unstretching the stretched material to a dimension that is “greater than the molded dimension and less than the stretched dimension,” which the Examiner maps to the third dimension. Id. Appellants argue Joyce fails to show three different dimensions, as required by claims 1,10, and 15, and instead teaches a molded webbed harnessing device that has a molded dimension and a stretched dimension. App. Br. 9—11; Reply Br. 5—6. We agree with Appellants. At the outset, the cited portions of Joyce relied upon by the Examiner teach only two dimensions: (1) a molded dimension; and (2) a stretched dimension. Ans. 5—6 (citing Joyce, Abstract, Figs. 2A & 3A). Thus, the cited portions of Joyce fail to teach three different dimensions (i.e., first dimension, second dimension, and third dimension) as required by claims 1, 10, and 15. See Joyce, Abstract, Figs. 2A & 3A. And, we find the Examiner’s statement that Appellants’ thermoplastic spring and Joyce’s webbed harnessing device (1) “are substantially [the] same” and (2) leads to Joyce performing the same as Appellants’ invention is flawed. Ans. 6. The Examiner’s statement is flawed because the Examiner fails to provide sufficient evidence or reasoning demonstrating that Appellants’ claimed thermoplastic spring is substantially the same (i.e., close to the same, but not the same) as Joyce’s webbed harnessing device, which causes Appellants’ thermoplastic spring and Joyce’s webbed harnessing device to perform the same. Stated differently, the Examiner has not shown sufficiently how two devices that are not the same, as acknowledged by the Examiner (see Ans. 6), leads to the same performance between the two devices. 5 Appeal 2016-008188 Application 13/393,969 Unlike our esteemed concurring colleague, we need not construe whether claims 1 and 10 recite a “product by process” because: (1) we are uncertain the Examiner’s theory of “end product by using apparatus” (emphasis added) is that claims 1 and 10 are directed to “product by process” (Ans. 3—5; Final Act. 2); and (2) even if claims 1 and 10 are directed to a product by process, the Examiner’s statement that Appellants’ thermoplastic spring and Joyce’s webbed harnessing device “are substantially [the] same” (i.e., close to the same, but not the same) and causes Joyce’s webbed harnessing device to perform the same as Appellants’ invention (Ans. 6) is flawed, as explained in the preceding paragraph and as acknowledged by our esteemed concurring colleague. Accordingly, for the reasons stated supra, we do not sustain the Examiner’s rejection of: (1) independent claims 1, 10, and 15; and (2) the dependent claims for similar reasons. DECISION The Examiner’s decision rejecting claims 1—14 under 35 U.S.C. §112, second paragraph, is reversed. The Examiner’s decision rejecting claims 1—20 under 35 U.S.C. § 102(b) is reversed. REVERSED 6 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TIMOTHY P. COFFIELD, ROBERT K. STRATING, DEAN A. ZIMMERMAN, and ANDREW B. HARTMANN Appeal 2016-008188 Application 13/393,969 Technology Center 3600 Before DENISE M. POTHIER, JOHN P. PINKERTON, and JASON J. CHUNG, Administrative Patent Judges. POTHIER, Administrative Patent Judge, concurring. I agree with the Majority’s conclusion that the Examiner has failed to provide sufficient evidence or reasoning to demonstrate the claimed thermoplastic spring (claim 1), thermoplastic body (claim 10), or process of making a thermoplastic spring (claim 15) are anticipated by Joyce’s webbed harnessing device. Given that these claims are rejected under only 35 U.S.C. § 102 and not alternatively § 103,1 write separately to underscore that Joyce’s webbed harness device and the method of making Joyce’s device must be necessarily the same as the claims. The Examiner is correct that claims 1 and 10 are product-by-process claims. See Final Act. 5. Patentability of such claims is based on the end Appeal 2016-008188 Application 13/393,969 product and not the claims’ method of production. See In re Thorpe, 111 F.2d 695, 697—98 (Fed. Cir. 1985). Even so, if Joyce’s webbed harnessing device are not the same as claims 1 and 10, claims 1 and 10 are not anticipated by Joyce. The Examiner states “the function of instant application (thermoplastic spring) and Joyce (Webbed harnessing device) invention are substantially same” and “Joyce[‘s] invention also can perform [the] same as [the] instant invention that is a stretched dimension and a third non-stretched dimension.” Ans. 6 (emphasis added). These statements related to how Joyce’s device functions do not indicate clearly the Examiner has found Joyce’s webbed harnessing device is substantially the same as the claimed invention as the Majority signals. In any event, I agree with the Majority that a device that is substantially the same as claim l’s or 10’s end product would not anticipate the claims. The Examiner alternatively may be taking the position that Joyce’s webbed harnessing device behaves substantially the same (e.g., functions substantially the same) as the claimed thermoplastic spring/body when subjected to the claimed production method (e.g., stretched and elongated as recited in claim 1). See id. If so, the record fails to demonstrate adequately how Joyce’s harnessing device will result necessarily in claim l’s or 10’s end product, including Joyce’s harnessing device will have necessarily a deformed region with a second deformed dimension in a non-stretched state that is greater than the dimension created by molding and less than the dimension in the stretched state after being stretched and elongated as recited in claim 1. 2 Copy with citationCopy as parenthetical citation