Ex Parte Dost et alDownload PDFPatent Trial and Appeal BoardDec 28, 201613757817 (P.T.A.B. Dec. 28, 2016) 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. 13/757,817 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 Copy with citationCopy as parenthetical citation