Ex Parte Duescher

Patent Trial and Appeal Board

Mar 19, 2013

11029761 (P.T.A.B. Mar. 19, 2013)

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.
11/029,761 01/05/2005 INV001Wayne O. Duescher 638.015US1 1402
97462 7590 03/20/2013
Mark A. Litman & Associates, P.A.
7001 Cahill Road, Ste. 15A
Edina, MN 55439
EXAMINER
ELEY, TIMOTHY V
ART UNIT PAPER NUMBER
3723
MAIL DATE DELIVERY MODE
03/20/2013 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 WAYNE O. DUESCHER
____________

Appeal 2010-005084
Application 11/029,761
Technology Center 3700
____________

Before GAY ANN SPAHN, BARRY L. GROSSMAN, and
JILL D. HILL, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Wayne O. Duescher (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s rejection of claims 30, 31, and 46-69 under 35
U.S.C. § 103(a) as unpatentable over Birang (US 6,159,087, issued Dec. 12,
2000), Sung (US 6,368,198 B1, issued Apr. 9, 2002), and Appellant’s
Appeal 2010-005084
Application 11/029,761

2
Admitted Prior Art1 (hereinafter “AAPA”). Appellant cancelled claims 1-
29. The Examiner withdrew claims 32-45 from consideration. Appellant’s
representative presented arguments at oral hearing on March 12, 2013. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and ENTER A NEW GROUND OF REJECTION
UNDER 37 C.F.R. § 41.50(b).

CLAIMED SUBJECT MATTER
Claims 30, 49, 50, and 54 are the independent claims on appeal.
Claim 30, reproduced below, is illustrative of the appealed subject matter.
30. A method of forming a flexible abrasive sheet article
having an array of abrasive coated raised island structures
attached to a backing sheet, the abrasive article comprising:
a) islands comprising a first structural material, the
islands having raised island flat top surfaces;
b) the flat top island surfaces comprising a monolayer of
spherical abrasive beads supported in a polymeric resin;
c) the raised island structures having structural wall sides
free of adhered spherical abrasive beads;
d) the raised island structures having a structural base,
the structural base having a structure base area; and
e) recessed areas between structural bases of adjacent
raised island structures free of adhered spherical abrasive beads;
the method comprising pressing spherical beads while
they are in contact with a flat plate or roll to position all of the
beads into the polymeric resin on raised island fiat top surfaces
to level the top surface of the individual abrasive beads into
position within a common plane that is parallel to a bottom
surface of the backing sheet.

1 The Examiner identifies page 19, lines 13-21 of Appellant’s Specification
and Prior Art Figure 19 as constituting Appellant’s Admitted Prior Art. Ans.
2.
Appeal 2010-005084
Application 11/029,761

3
OPINION
First, independent claims 30, 49, 50, and 54 are all directed to “[a]
method of forming a flexible abrasive sheet article having an array of
abrasive coated raised island structures attached to a backing sheet, the
abrasive article comprising: . . . [and] the method comprising . . . .”
The test for definiteness under 35 U.S.C. § 112, second paragraph is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted). With regard to the second paragraph requirement for “particularly
pointing out and distinctly claiming the subject matter which the applicant
regards as his invention,” it has been stated that the “essence of that
requirement is that the language of the claims must make it clear what
subject matter they encompass.” In re Hammack, 427 F.2d 1378, 1382
(CCPA 1970).
In the present case, it would not be clear to a person of ordinary skill
in the art what subject matter the claims encompass, because the person of
ordinary skill in the art would not know how to give patentable weight to the
method steps if the claimed subject matter of claims 30, 31, and 46-69 is
directed to an article of manufacture (i.e., the abrasive article) and a person
of ordinary skill in the art would not know how to give patentable weight to
the structural limitations if the claimed subject matter of claims 30, 31, and
46-69 is directed to a method of making an article of manufacture (i.e.,
method of forming a flexible abrasive sheet article). Accordingly, since
independent claims 30, 49, 50, and 54 and their dependent claims 31, 46-48,
51-53, and 55-69 are amenable to two or more plausible claim constructions,
Appeal 2010-005084
Application 11/029,761

4
i.e., an abrasive article and a method of forming a flexible abrasive sheet
article, these claims are unpatentable under 35 U.S.C. § 112, second
paragraph, as indefinite. See Ex parte Miyazaki, 89 USPQ2d 1207, 1211
(BPAI 2008) (precedential) (“if a claim is amenable to two or more plausible
claim constructions, the USPTO is justified in requiring the applicant to
more precisely define the metes and bounds of the claimed invention by
holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as
indefinite.”).
Second, claim 46 (and claims 47, 48, 51-53, 55, 56, and 58 dependent
on claim 46) and independent claims 49, 50, and 54 (and 57, 61, 66, and 68
dependent on claim 54) all recite “in step b) . . . .” However, no step b) is
ever recited in any of the claims, but rather only a paragraph b) is recited and
paragraph b) does not recite a step. A person of ordinary skill in the art
would not know how to interpret the claim language of “in step b)” so as to
permit the metes and bounds of this claim limitation to be determined. Thus,
claim 46 (and claims 47, 48, 51-53, 55, 56, and 58 dependent on claim 46)
and independent claims 49, 50, and 54 (and 57, 61, 66, and 68 dependent on
claim 54) are insolubly ambiguous. See Exxon Rsrch. & Eng’g Co. v.
United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001).
Third, claim 46 (and claims 47, 48, 51-53, 55, 56, and 58 dependent
on claim 46) and independent claims 49, 50, and 54 (and 57, 61, 66, and 68
dependent on claim 54) all recite “in step f) . . . .” However, no step f) is
ever recited in any of the claims. A person of ordinary skill in the art would
not know how to interpret the claim language of “in step f)” so as to permit
the metes and bounds of this claim limitation to be determined. Thus, claim
46 (and claims 47, 48, 51-53, 55, 56, and 58 dependent on claim 46) and
Appeal 2010-005084
Application 11/029,761

5
independent claims 49, 50, and 54 (and 57, 61, 66, and 68 dependent on
claim 54) are insolubly ambiguous. See Exxon at 1375.
Fourth, claim 46 (and claims 47, 48, 51-53, 55, 56, and 58 dependent
on claim 46) and independent claims 49, 50, and 54 (and 57, 61, 66, and 68
dependent on claim 54) all recite “a step g) . . . .” However, the language
following “a step g)” does not recite any step. A person of ordinary skill in
the art would not know how to interpret the claim language of “a step g)” so
as to permit the metes and bounds of this claim limitation to be determined.
Thus, claim 46 (and claims 47, 48, 51-53, 55, 56, and 58 dependent on claim
46) and independent claims 49, 50, and 54 (and 57, 61, 66, and 68 dependent
on claim 54) are insolubly ambiguous. See Exxon at 1375.

NEW GROUND OF REJECTION
Pursuant to 37 C.F.R. § 41.50(b), we enter the following new ground
of rejection:
Claims 30, 31, and 46-69 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 Appellant regards as the invention
for the reasons discussed above.

PRIOR ART REJECTIONS
For the reasons discussed supra, we conclude that claims 30, 31, and
46-69 are indefinite. Thus, the prior art rejection must fall because it is
necessarily based on a speculative assumption as to the meaning of the
claims. See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962). It should be
understood, however, that our decision in this regard is based solely on the
Appeal 2010-005084
Application 11/029,761

6
indefiniteness of the claimed subject matter, and does not reflect on the
adequacy of the prior art evidence applied in support of the rejection.

DECISION
For the reasons discussed supra, we reverse the Examiner’s decision
to reject claims 30, 31, and 46-69 under 35 U.S.C. § 103(a) as unpatentable
over Birang, Sung, and AAPA, and pursuant to our authority under 37
C.F.R. § 41.50(b), we enter a NEW GROUND OF REJECTION for claims
30, 31, and 46-69 under 35 U.S.C. § 112, second paragraph, as indefinite.

FINALITY OF DECISION
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 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 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.…
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
Appeal 2010-005084
Application 11/029,761

7
review under 35 U.S.C. § 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
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)(1)(iv).

REVERSED; 37 C.F.R. § 41.50(b)

Klh