Ex Parte Franke

Patent Trial and Appeal Board

May 10, 2016

13123802 (P.T.A.B. May. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/123,802 06/09/2011
28289 7590 05/12/2016
THE WEBB LAW FIRM, P,C
ONE GATEWAY CENTER
420 FT. DUQUESNE BL VD, SUITE 1200
PITTSBURGH, PA 15222
FIRST NAMED INVENTOR
Boris Franke
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.
3988-111212 1095
EXAMINER
BAXTER, GWENDOLYN WRENN
ART UNIT PAPER NUMBER
3632
NOTIFICATION DATE DELIVERY MODE
05/12/2016 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):
patents@webblaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BORIS FRANKE
Appeal2014-004671
Application 13/123,802
Technology Center 3600
Before JENNIFER D. BAHR, LINDA E. HORNER, and
BRANDON J. WARNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Boris Franke (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner's decision rejecting claims 1-20. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION.
Appeal2014-004671
Application 13/123,802
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A connection bracket, which is provided in order to connect a
connection means to a flange of a tower element of a wind
turbine, comprising:
two fixing sections, which are arranged at a distance from
each other and each have a support surface for laying the
connection bracket against a flange and a connection section,
wherein the connection section is formed from two
supporting sections each firmly connected to one of the fixing
sections and standing thereon, and a center section carried by
these supporting sections and firmly connected to them, such that
the connection section ( 4) bridges the distance (D) between the
fixing sections at a distance from the plane of the support surface,
and
wherein, in a top view seen from the side of the connection
bracket ( 1) remote from the support surface, a center line of the
center section of the connection section is arranged outside an
envelope of the fixing sections.
REJECTIONS
I. Claims 1-7, 9-15, and 17-20 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Siegel (US 3,414,219, iss. Dec. 3,
1968).
II. Claim 8 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Siegel and Scott (US 5,072,901, iss. Dec. 17,
1991 ).
III. Claim 16 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Siegel and Button (US 2,550,001, iss. Apr.
24, 1951).
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Application 13/123,802
DISCUSSION
For the reasons set forth below in the new ground of rejection, claims
1-20 are indefinite. Accordingly, we cannot sustain the rejections of these
claims under 35 U.S.C. §§ 102(b) and 103(a) because to do so would require
speculation as to the scope of the claims. See 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). It should
be understood, however, that our decision in this regard is based solely on
the indefiniteness of the claimed subject matter, and does not reflect on the
adequacy of the prior art evidence applied in support of the rejection.
NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b ), we reject claims
1-20 under 35 U.S.C. § 112, second paragraph, as indefinite.
Claim 1 recites "wherein, in a top view seen from the side of the
connection bracket (1) remote from the support surface, a center line of the
center section of the connection section is arranged outside an envelope of
the fixing sections." Appeal Br. 15, Claims App.
It is unclear what is meant by "a center line of the center section"
because the claim does not specify how the center line is defined with
respect to the center section. For example, although Figures 1, 2, and 4 of
the present application depict line MM extending in the longitudinal (i.e.,
length) direction of center section 6 and connection bracket 1, neither claim
1 nor the Specification explicitly defines the orientation of the "center line,"
as recited in the claim. See Spec. 14. "[E]ven where a patent describes only
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Application 13/123,802
a single embodiment, claims will not be 'read restrictively unless the
patentee has demonstrated a clear intention to limit the claim scope using
'words or expressions of manifest exclusion or restriction"'). Innova/Pure
Water, Inc. v. Safari Water Filtration Sys., Inc., 381F.3d1111, 1117 (Fed.
Cir. 2004. Further, it is not clear whether the "center line" of the center
section bisects the full width (or length) of the center section (a three-
dimensional element having tapered, irregular sides and ends) or the center
of the asymmetrical flat portion atop the center section. See Figs. 1, 2, 4.
It is also unclear what is meant by the center line of the center section
being "arranged outside an envelope of the fixing sections" because the
metes and bounds of the "envelope" are not clearly defined. Although the
Specification identifies line MM of center section 6 and envelope U of
fixing sections 3a, 3b (see Spec. 14; Figs. 1, 2, 4), neither the Specification
nor claim 1 provides sufficient guidance from which one might ascertain the
structural points of reference used to define the extents of the "envelope" of
the fixing sections, as recited in claim 1. Notably, claim 1 recites that the
"fixing sections ... are arranged at a distance from each other." Appeal Br.
15, Claims App. Thus, an "envelope" encompassing both fixing sections
must encompass more than just the fixing sections themselves; the
"envelope" must also include, for example, the spacing between the fixing
sections, and perhaps some portion of the "connection section," or at least a
projection thereof. However, it is not clear how far beyond the boundaries
of the fixing sections themselves the "envelope" extends.
Further, there is ambiguity in the recited "top view seen from the side
of the connection bracket (1) remote from the support surface." Specifically,
"a top view" that is also "seen from the side" could be reasonably interpreted
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Application 13/123,802
as a perspective view, thereby creating confusion over the particular
orientation of the view relative to the structure of the bracket. See Ans. 6
(discussing a perspective view). Appellant contends that the Examiner "is
incorrectly interpreting" the language as covering a perspective view, and
submits that the claim language "'a top view seen from the side of the
connection bracket remote from the support surface' describes the view
shown in Fig. 2 ... , which shows a top plan view from the side of the
connection bracket opposite and remote from the side of the connection
bracket that has support surface 3c." Reply Br. 2; see Ans. 6. This appears
to be another plausible construction of the claim language. This does not
mean that the Examiner's construction is unreasonable; rather, it means that
the claim language is amenable to more than one construction and is,
therefore, vague. "[I]f 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." Ex parte Miyazaki, 89 USPQ2d 1207, 1211(BPAI2008)
(precedential). However, even accepting Appellant's submission that "a top
view seen from the side of the connection bracket remote from the support
surface" describes a top plan view, and, more specifically, the view shown in
Figure 2 of the present application, there is still ambiguity as to the required
orientation, if any, in claim 1, of the "top view" relative to the "support
surface." Appellant's Specification describes "a planar support surface."
Spec. 13. However, claim 1 does not specify that the claimed "support
surface" is planar, and, further, does not define an orientation (e.g., parallel,
normal, inclined) of the "top view" relative to the "support surface."
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Appeal2014-004671
Application 13/123,802
Moreover, because claim 1 defines the relationship between the center line
of the center section and the envelope of the fixing sections according to a
specific point of view, the ambiguity in the recited "top view seen from the
side of the connection bracket (1) remote from the support surface"
exacerbates the lack of clarity in the claim.
For the above reasons, claim 1 is indefinite. Claims 2-20 depend
from claim 1 and, thus, likewise are indefinite.
DECISION
The Examiner's decision rejecting claims 1-20 is reversed.
We enter a new ground of rejection of claims 1-20 under 35 U.S.C.
§ 112, second paragraph.
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:
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. ...
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Application 13/123,802
(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).
REVERSED; 37 C.F.R. § 41.50(b)
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