Ex Parte Dost et al

Patent Trial and Appeal Board

Dec 28, 2016

13757817 (P.T.A.B. Dec. 28, 2016)

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.
13/757,817 02/03/2013 Hagen W. Dost 1576-0181CNT1 6321
10800 7590 12/29/2016
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
EXAMINER
JANESKI, PAUL MARTENS
ART UNIT PAPER NUMBER
3722
MAIL DATE DELIVERY MODE
12/29/2016 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 HAGEN W. DOST and JAVIER I. SANDOVAL
Appeal 2015-000533
Application 13/757,817
Technology Center 3700
Before CHARLES N. GREENHUT, THOMAS F. SMEGAL, and
BRENT M. DOUGAL, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Hagen W. Dost and Javier I. Sandoval (Appellants) seek our review
under 35 U.S.C. § 134 of the Examiner’s Final Rejection of claims 1—17.1
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and enter a new ground of rejection pursuant to
37 C.F.R. § 41.50(b).
1 According to Appellants, the real party in interest is Robert Bosch GmbH.
Appeal Br. 2.
Appeal 2015-000533
Application 13/757,817
CLAIMED SUBJECT MATTER
Claims 1 and 7 are independent claims. Claim 1 is reproduced below
and illustrates the claimed subject matter, with disputed limitations
emphasized.
1. A spade bit, comprising:
a shaft defining an axis about which the spade bit is
configured to be rotated; and
a blade operably connected to the shaft and extending
forwardly from the shaft, the blade having a first paddle portion
and a second paddle portion,
wherein the first paddle portion includes (i) a first leading
end portion defining a first cutting edge portion, and (ii) a first
lateral extension portion defining a first sloping surface which
slopes forwardly from a first outer portion to a first inner portion
closer to the axis,
wherein the first paddle portion defines a first relief space
positioned adjacent to both the first sloping portion and the first
leading end portion,
wherein the second paddle portion includes (i) a second
leading end portion defining a second cutting edge portion, and
(ii) a second lateral extension portion defining a second sloping
surface which slopes forwardly from a second outer portion to
a second inner portion closer to the axis, and
wherein the second paddle portion defines a second relief
space positioned adjacent to both the second sloping portion and
the second leading end portion.
REJECTIONS
The following Examiner’s rejections are before us for review.
1. Claims 1—17 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which the joint
inventors regard as the invention.
2
Appeal 2015-000533
Application 13/757,817
2. Claims 1—13, 15, and 16 are rejected under 35 U.S.C. §
103(a) as being unpatentable over Williams (US 4,682,917,
iss. July 28, 1987) and Shiga (US 5,909,985, iss. June 8,
1999).
3. Claims 14 and 17 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Williams, Shiga, and Durfee (US
2007/0092348 Al, pub. Apr. 26, 2007).
4. Claims 1—3, 6—12, 14, 15, and 17 are rejected on the ground
of nonstatutory double patenting as being unpatentable over
claims 1—4 of Dost (US 8,366,357 B2, iss. Feb. 5, 2013) and
Shiga.
5. Claims 4 and 5 are rejected on the ground of nonstatutory
double patenting as being unpatentable over claim 1 of Dost
and Williams.
6. Claims 13 and 16 are rejected on the ground of nonstatutory
double patenting as being unpatentable over claim 1 of Dost,
Shiga, and Williams.2
ANALYSIS
Rejection 1
We are persuaded by Appellants’ argument that the Examiner
erred in rejecting claims 1-17 under 35 U.S.C. §112, second
paragraph, as being indefinite for failing to particularly point out and
2 Appellants do not present arguments for the rejection on the ground of
nonstatutory double patenting of claims 13 and 16 over claim 1 of Dost,
Shiga, and Williams. See generally Appeal Br. and Reply Br.
3
Appeal 2015-000533
Application 13/757,817
distinctly claim the subject matter which Appellants regard as the
invention.
The Examiner contends that multiple recitations of the term
“forwardly” in independent claims 1 and 7, make it “unclear [as to]
what direction ‘forwardly’ is referring to with respect to the shaft and
the slopes.” Final Act. 6. For example, the Examiner reasons that
because claim 1 “recites ... a blade operably connected to the shaft
and extending forwardly from the shaft,’ that “[i]t is unclear from
which side of the shaft the blade is extending from.” Ans. 10.
Appellants respond that “[t]he word ‘forwardly’ is an adverb
which is defined as ‘[tjoward or tending to the front; forward,”’ and
that “the plain meaning of ‘forwardly’ is ‘toward the front.’” Appeal
Br. 6 (citing The American Heritage® Dictionary of the English
Language, Fourth Edition). We agree with Appellants that “one of
ordinary skill in the art, upon a reading of the claims and the
specification, would understand that the direction indicated by the
word ‘forwardly’ in claim 1 [and claim 7], is the upper left hand
direction when the bit is positioned in the manner shown in FIG. 1.”
Id. at 7.
We find that the scope of the claims is reasonably ascertainable
by those skilled in the art and therefore not indefinite. Energizer
Holdings Inc. v. Int’l Trade Comm ’n, 435 F.3d 1366 (Fed. Cir. 2006)
(holding that “anode gel” provided by implication the antecedent basis
for “zinc anode”); Ex parte Porter, 25 USPQ2d 1144, 1145 (BPAI
1992) (“controlled stream of fluid” provided reasonable antecedent
4
Appeal 2015-000533
Application 13/757,817
basis for “the controlled fluid”). For these reasons, we reverse the
rejection of claims 1-17 under 35U.S.C. §112, second paragraph.
Rejection 2
We are persuaded that the Examiner failed to establish a prima
facie showing of obviousness in rejecting claims 1—13, 15, and 16
under 35 U.S.C. § 103(a) as being unpatentable over Williams and
Shiga.
The Examiner acknowledges that “Williams does not disclose
[a spade bit with first and second blades having] lateral extensions
projecting radially outward [therefrom] wherein the distal ends of the
lateral extensions form sloped surfaces that are sloped radially inward
towards the distal end of the spade bit.” Final Act. 7. However the
Examiner looks to Shiga for disclosing a bit having ‘a blade (10) with
first and second leading end portions (24) formed on paddles (14)
[where] blade (10) has lateral extensions projecting radially outward
from the blade's outer periphery forming a sloping surface (18) which
slopes radially inward in a distal direction.” Id. (citing Shiga, Fig. 1).
Based on the foregoing findings, the Examiner reasons that
[i]t would have been obvious ... to modify the blade of Williams,
in view of Shiga, such that lateral extensions project radially
outward from the first and second paddle portions defining
sloped surfaces that slope radially inwards towards a distal end
of the spade bit in order to provide a means for widening the
opening of a hole being drilled with the blade.
Ans. 7—8 (emphasis added).
5
Appeal 2015-000533
Application 13/757,817
In taking issue with the analysis and conclusion presented in the Final
Office Action, as modified in the Answer, Appellants point out that “[t]he
Examiner has failed to identify [] any advantage of such a widening of a
portion of the spade bit of Williams.” Reply Br. 3. We agree. Accordingly,
we will not sustain the Examiner’s obviousness rejection of claims 1—13, 15,
and 16.
Rejection 3
Claims 14 and 17 depend from claim 1 and claim 7, respectively.
Appeal Br. 24—25 (Claims App.). The Examiner’s added reliance on Durfee
does not remedy the deficiencies discussed above (see supra Rejection 2).
Thus, for the same reasons discussed above, we do not sustain the rejection
of claims 14 and 17.
Rejection 4
In articulating the nonstatutory double patenting rejection of claims 1—
3, 6—12, 14, 15, and 17 as unpatentable over claims 1—4 of Dost and Shiga,
the Examiner states that claim 1 of Dost “teaches all the elements of claims
1 and 7 except for a blade extending forwardly from the shaft and wherein
the first and second sloping surfaces slope forwardly from an outer portion
to an inner portion closer to the axis.” Final Act. 3. However, the Examiner
determines that “Shiga teaches a blade (10) extending forwardly from a shaft
(12) and lateral extensions with sloping surfaces (18) that slope forwardly
from an outer portion to an inner portion,” and concludes that “[i]t would
have been obvious ... to have provided the apparatus of claim 1 of [Dost]
with a blade that extends forwardly from a shaft and sloping surfaces that
slope forwardly from an outer portion to an inner portion, since combining
6
Appeal 2015-000533
Application 13/757,817
prior art elements according to known methods yields predictable results.”
Id.
Appellants do not respond to this rejection. See generally Appeal Br.
In the Reply Brief at page 2, Appellants argue that “Shiga does not disclose
a forwardly sloping surface and a relief space adjacent the forwardly sloping
surface and a cutting edge.” However, Appellants did not present this
argument in the Appeal Brief, and it is not responsive to an argument raised
in the Answer. Thus, Appellants did not set forth this argument in a timely
manner prior to filing of the Reply Brief to permit the Examiner an
opportunity to fully respond. See 37 C.F.R. § 41.41(b)(2) (2014) (“Any
argument raised in the reply brief which was not raised in the appeal brief, or
is not responsive to an argument raised in the examiner’s answer . . . will not
be considered by the Board for purposes of the present appeal, unless good
cause is shown.”).
For this reason, we do not determine that the Examiner erred in
rejecting claims 1—3, 6—12, 14, 15, and 17 over claims 1—4 of Dost and
Shiga.
Rejection 5
In articulating the nonstatutory double patenting rejection of claims 4
and 5 as unpatentable over claim 1 of Dost and Williams, the Examiner
states that Dost “teaches all elements of claims 4 and 5 except for the blade
being interposed between the tip portion and the shaft,” while “Williams
teaches a spade bit (10) with a tip portion (30), a blade portion (16), and a
shaft (12) wherein the blade portion (16) is interposed between the tip
portion (30) and the shaft (12),” and concludes that “[i]t would have been
obvious ... to modify the apparatus of claim 1 of [Dost] such that the blade
7
Appeal 2015-000533
Application 13/757,817
portion is located between the tip portion and the shaft since combining prior
art elements according to known methods yields predictable results.” Final
Act. 4.
Appellants do not respond to this rejection. See generally Appeal Br.
In the Reply Brief at pages 2—3, Appellants argue that “the Examiner has
admitted that claim 1 of [Dost] fails to disclose the forwardly sloping
surfaces which define relief spaces required in the Appellants' claim 1, but
makes no allegation that Williams discloses any such relief spaces.”
However, Appellants did not present this argument in the Appeal Brief, and
it is not responsive to an argument newly raised in the Answer. Thus,
Appellants did not set forth this argument in a timely manner prior to filing
of the Reply Brief to permit the Examiner an opportunity to fully respond.
See 37 C.F.R. § 41.41(b)(2) (2014) (“Any argument raised in the reply brief
which was not raised in the appeal brief, or is not responsive to an argument
raised in the examiner’s answer . . . will not be considered by the Board for
purposes of the present appeal, unless good cause is shown.”).
For this reason, we do not determine that the Examiner erred in
rejecting claims 4 and 5 over claim 1 of Dost and Williams.
Rejection 6
Appellants do not separately argue the nonstatutory double patenting
rejection of claims 13 and 16 over claim 1 of Dost, Shiga, and Williams.
See generally Appeal Br. and Reply Br. Accordingly, we summarily sustain
the double-patenting rejection as uncontested. 37 C.F.R. § 41.37(c)(iv);
Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008)(“[T]he applicant can
waive appeal of a ground of rejection”)
8
Appeal 2015-000533
Application 13/757,817
NEW GROUND OF REJECTION
Anticipation of claims 1 and 7
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW
GROUND OF REJECTION of independent claims 1 and 7 under 35 U.S.C.
§ 102(b) as being anticipated by Shiga.
We find that Shiga discloses each and every feature limitation recited
in claims 1 and 7, including first and second “lateral extension portion[s]
defining a [] sloping surface which slopes forwardly from [an] outer portion
to [an] inner portion closer to the axis,” as recited by the claims. As the
Examiner points out, “Shiga discloses a bit comprising a blade (10) with first
and second leading end portions (24) formed on paddles (14),” noting that
“blade 10 is symmetric about an axis such that paddle portions are formed
on either side ... of the blade (10) defining cutting edges wherein the blade
(10) has lateral extensions projecting radially outward from the blade's outer
periphery forming a sloping surface (18) which slopes radially inward in a
distal direction,” so that “[t]he outside surfaces of the paddle portions (14)
are parallel to a center axis of the bit (10)” and “in conjunction with the
sloped surfaces (18) of the lateral extensions form first and second relief
spaces. Final Act. 7 (citing Shiga, Fig. 1). We agree with the Examiner that
Shiga teaches the claimed structure and find that it is inherently configured
to provide the “relief space” recited by the claims
Appellants contend that the claims distinguish from Shiga in that “the
‘relief spaces’ provide a pocket defined by the slopping surface 94 and the
outer edge of the paddle,” relying on an annotated version of Fig. 4 of the
9
Appeal 2015-000533
Application 13/757,817
Specification.3 See Appeal Br. 12—13. (emphasis added). Appellants then
argue that “there is no pocket formed by the device of Shiga.” Id. at 13.
However, the claims do not recite a “pocket defined by the slopping surface
94 and the outer edge of the paddle.” See Appeal Br. 21—23, Claims App.
Thus, Appellants’ argument is not commensurate with the scope of the
claims. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations not
appearing in the claims cannot be relied upon for patentability).
Furthermore, we determine the scope of the claims in a patent
application by giving claims “their broadest reasonable interpretation
consistent with the [Specification” and “in light of the specification as it
would be interpreted by one of ordinary skill in the art.” In re Am. Acad, of
Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted).
“Construing claims broadly during prosecution is not unfair to the applicant.
. . because the applicant has the opportunity to amend the claims to obtain
more precise claim coverage.” In re Am. Acad, of Sci. Tech Ctr., 367 F.3d at
1364.
In describing the embodiment illustrated in Fig. 4, the Specification
merely discloses that “blade portion 22 includes a lateral extension portion
88 (shown in phantom) that is configured to define a relief space 90 located
above a sloping surface 92 of the lateral extension portion 88,” and that
3 Appellants describe the annotated version, including an added “line ‘L’
parallel to the axis 18 [that] has been positioned on the outermost tip of the
cutting edge portion 40,” as illustrating “a configuration which forms an
open pocket within the boring footprint of the drill bit into which chips can
flow during drilling operations.” However, we agree with the Examiner that
“nowhere in the specification is a ‘pocket’ described, nor is the functionality
of chips flowing into [such a] pocket described anywhere in the
specification. See Ans. 14
10
Appeal 2015-000533
Application 13/757,817
“blade portion 24 includes a lateral extension portion 93 (shown in phantom)
that is configured to define a relief space 92 located above a sloping surface
94 of the lateral extension portion 93.” See Specification, page 9, line 45 to
page 10, line 7. See also mapping of claims 1 and 7. Appeal Br. 2—5.
Although we have exercised our discretion under 37 C.F.R. § 41.50(b)
in rejecting only claims 1 and 7 under this new ground, we leave dependent
claims 2-6 and 8-17 for the Examiner’s consideration in any further
prosecution. Although the Board is authorized to reject claims under 37
C.F.R. § 41.50(b), no inference should be drawn when the Board elects not
to do so. SeeMPEP 1213.03.
For the foregoing reasons, we determine claims 1 and 7 to be
anticipated by Shiga.
DECISION
The rejection of claims 1—17 under 35 U.S.C. § 112, second paragraph
is REVERSED.
The rejections under 35 U.S.C. § 103(a) of claims 1—13, 15, and 16 as
unpatentable over Williams and Shiga; and of claims 14 and 17 as
unpatentable over Williams, Shiga, and Durfee, are REVERSED.
The rejection of claims 1—3, 6—12, 14, 15, and 17 on the ground of
nonstatutory double patenting over claims 1—4 of Dost and Shiga, is
AFFIRMED.
The rejection of claims 4 and 5 on the ground of nonstatutory double
patenting over claim 1 of Dost and Williams, is AFFIRMED.
The rejection of claims 13 and 16 on the ground of nonstatutory
double patenting over claim 1 of Dost, Shiga, and Williams, is summarily
AFFIRMED.
11
Appeal 2015-000533
Application 13/757,817
We enter a NEW GROUND OF REJECTION of claims 1 and 7 under
35 U.S.C. § 102(b) as anticipated by Shiga.
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 “[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 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
proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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) (l)(iv).
AFFIRMED: 37 C.F.R, $ 41.50(b)
12