Ex Parte Dieter et al

Patent Trial and Appeal Board

Apr 19, 2018

13313657 (P.T.A.B. Apr. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/313,657 12/07/2011
67886 7590 04/23/2018
WOODLING, KROST AND RUST
9213 CHILLICOTHE ROAD
KIRTLAND, OH 44094
FIRST NAMED INVENTOR
JONATHAN WAYNE DIETER
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.
8680-SEVER-INSERT 2831
EXAMINER
KOEHLER, CHRISTOPHER M
ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
04/23/2018 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):
ken.mitchell@clevepat.com
clevepat@aol.com
clevepat@sbcglobal.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONATHAN WAYNE DIETER and
STEPHEN R. SELLE
Appeal2017-002526 1
Application 13/313,657
Technology Center 3700
Before EDWARD A. BROWN, ARTHUR M. PESLAK, and
ANTHONY KNIGHT, Administrative Patent Judges.
KNIGHT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-11. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUNDS OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b ).
1 According to Appellants, the real party in interest is Stafast Products, Inc.
Appeal Br. 3.
Appeal2017-002526
Application 13/313,657
CLAIMED SUBJECT MATTER
The claims are directed to an apparatus for severing and inserting
collated T-nuts. Claims 1 and 7 are independent. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. Apparatus for severing a T-Nut from the end of a strip of T-
Nuts, comprising:
said strip of T-Nuts being formed of a common strip of
metal;
each of said T-Nuts of said strip ofT-Nuts being integrally
connected together at a frangible portion with a next adjacent T-
Nut"
'
each of said T-Nuts includes a bore therein;
a mechanism to feed and sever said strip of T -Nuts in
endwise fashion, said mechanism includes a positioning
member, and an endmost T-Nut being in engagement with said
positioning member;
said mechanism to feed and sever said strip of T-Nuts in
endwise fashion further includes: a cutting blade positioned
vertically below the position of said frangible portion when said
endmost T-Nut is in engagement with said positioning member;
and,
said mechanism to feed and sever said strip of T-Nuts
includes a shearing ram having a guide finger positioned axially
in line with said cylindrical bore in said endmost T-Nut and
adapted to move vertically from an upper to a lower position to
engage said cutting blade with said frangible portion and sever
said endmost T-Nut from said strip of T-Nuts.
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Appeal2017-002526
Application 13/313,657
REJECTIONS
The Examiner made the following rejections:
I. Claims 1--4 and 6-10 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Bromley (US 5,299,686, issued Apr. 5,
1994).
II. Claims 5 and 11 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bromley.
OPINION
New Ground of Rejection
Pursuant to 37 C.F.R. § 41.50(b), we enter a New Ground of Rejection
against claims 1-11 under 35 U.S.C. § 112, second paragraph. For the
reasons stated below, we determine claims 1-11 are indefinite.
The preamble of claim 1 recites an "[a ]pparatus for severing a T-Nut
from the end of a strip ofT-Nuts." Appeal Br. 30, Claims App. We
construe the preamble as reciting an intended use of the apparatus, that is,
"for severing a T-Nut from the end of a strip ofT-Nuts." However, the body
of claim 1 recites that the apparatus comprises "said strip of T-nuts being
formed of a common strip of metal" and a mechanism including a
positioning member, a cutting blade, a feed mechanism, and a shearing ram.
The positive recitation of the strip of T-nuts in the claim body indicates that
the strip of T-Nuts is an element of the apparatus. Consequently, it is
unclear whether the claimed "apparatus" comprises the "mechanism," but
not also the strip of T-nuts, or whether the apparatus comprises the
combination of the "mechanism" and the strip of T-nuts. It is also unclear
how the strip of T-nuts could be a structural element of the apparatus, rather
than material that is worked on by the apparatus according to the intended
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Appeal2017-002526
Application 13/313,657
use recited in the preamble. Consequently, it is not clear what would be
required to infringe claim 1.
"Claims are required to be cast in clear-as opposed to ambiguous,
vague, indefinite-terms." In re Packard, 751F.3d1307, 1313 (Fed. Cir.
2014); see also In re Zietz, 893 F2d 319, 322 (Fed. Cir 1989) ("the inquiry
during examination is patentability of the invention as 'the applicant
regards' it; and if the claims do not 'particularly point[ ] out and distinctly
claim[],' in the words of section 112, that which examination shows the
applicant is entitled to claim as his invention, the appropriate PTO action is
to reject the claims for that reason" (alterations in original) (citation and
footnote omitted)). As claim 1 lacks clarity for the reasons discussed above,
claim 1 is indefinite because it does not reasonably apprise those of skill in
the art of the scope of the claimed invention. Likewise, claims 2---6 are also
indefinite because they depend from claim 1.
Similar to claim 1, the preamble of claim 7 recites an "[a ]pparatus for
severing a T-Nut from the end of a strip of T-Nuts and inserting said severed
T-nut into a substrate, said substrate includes an opening therein." Appeal
Br. 31, Claims App. Like for claim 1, we construe the preamble of claim 7
as reciting an intended use of the apparatus. However, also similar to claim
1, the body of claim 7 recites that the apparatus comprises "said strip of T-
nuts being formed of a common strip of metal" and a mechanism including a
plurality of elements. The positive recitation of the strip of T-nuts in the
claim body indicates that the strip of T-Nuts is an element of the apparatus.
As for claim 7, it is unclear whether the claimed "apparatus" comprises the
"mechanism," but not also the strip of T-nuts, or whether the apparatus
comprises the combination of both the "mechanism" and the strip of T-nuts.
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Application 13/313,657
Accordingly, claim 7 is also indefinite because it does not reasonably
apprise those of skill in the art of the scope of the claimed invention.
Likewise, claims 8-11 are also indefinite because they depend from claim 7.
Re} ections I and II
Having determined that claims 1-11 are indefinite for the reasons
discussed above, we cannot sustain the prior art rejections of these claims
because to do so would require speculation on our part as to the scope of the
claims. In re Aoyama, 656 F.3d 1293, 1300 (Fed. Cir. 2011) (holding that
the Board erred in affirming an anticipation rejection of indefinite claims);
In re Steele, 305 F.2d 859, 862---63 (CCP A 1962) (holding that the Board
erred in affirming a rejection of indefinite claims under 35 U.S.C. § 103(a),
because the rejection was based on speculative assumptions as to the
meaning of the claims). Accordingly, we reverse the rejection of claims 1--4
and 6-10 under 35 U.S.C. § 102(b) as anticipated by Bromley, and the
rejection of claims 5 and 11 under 35 U.S.C. § 103(a) as unpatentable over
Bromley. 2
2 It should be understood, however, that our decision is based solely on the
indefiniteness of the claimed subject matter, and does not reflect on the
adequacy of Bromley as applied in the rejections.
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Application 13/313,657
DECISION
For the above reasons, the Examiner's rejections of claims 1-11 are
reversed.
We enter a new ground of rejection of claims 1-11under35 U.S.C.
§ 112, second paragraph, as being indefinite.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the Appellant,
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 the appeal 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 prosecution will be remanded to the
examiner. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
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Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
REVERSED; 37 C.F.R. § 41.50(b)
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