Ex Parte Frye

Board of Patent Appeals and Interferences

Sep 7, 2011

10200734 (B.P.A.I. Sep. 7, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte D. E. FRYE
____________

Appeal 2009-013931
Application 10/200,734
Technology Center 3600
____________

Before LINDA E. HORNER, STEVEN D.A. McCARTHY, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
D. E. Frye (Appellant) seeks our review under 35 U.S.C. § 134 of the
Examiner’s decision rejecting claims 1, 3, 4, 6-15, and 17-24. Claims 2, 5,
16 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM-IN-PART and enter NEW GROUNDS OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
THE INVENTION
Appellant’s claimed invention is directed to “a device attached to a
towed vehicle for releasably coupling the towed vehicle to a towing vehicle,
and for actuating brakes on the towed vehicle.” Spec. 1, ll. 10-12. Claims
14 and 18, reproduced below, are representative of the subject matter on
appeal.
14. An actuator and coupler device attached to a towed
vehicle for releasably coupling the towed vehicle to a towing
vehicle, and for actuating brakes on the towed vehicle, said
device comprising:
a generally rectangular shaped housing for attachment to
the towed vehicle;
a generally hollow coupler correspondingly shaped for
telescopic attachment to said housing;
a brake actuator secured within said generally hollow
interior of said coupler, wherein said brake actuator is actuated
by movement of said coupler relative to said housing; and
a safety mechanism for actuating said brake actuator
comprising:
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a spring clip secured to a piston rod of said brake
actuator, wherein said safety clip is adapted for
attachment to a safety cable, wherein upon activation of
said safety mechanism said spring clip causes said piston
rod to actuate said brake actuator; and
a single piece safety catch and release plate
releasable secured to said piston rod, wherein upon
activation of said safety mechanism said plate secures
said piston rod to maintain actuation of said brake
actuator until said plate is released.
18. An actuator/coupler device attached to a towed vehicle
for releasably coupling the towed vehicle to a towing vehicle,
and for actuating brakes on the towed vehicle, wherein the point
of coupling is a coupler ball attached to the towing vehicle
thereby defining a front end of the device with a rear end
opposite thereto, said device comprising:
a generally rectangular shaped housing for attachment to
the towed vehicle;
a generally hollow coupler correspondingly shaped for
telescopic attachment to said housing;
a front roller shaft extending through a hole in said
housing and extending through an elongated slot in said coupler
thereby providing a point of attachment for said coupler and
said housing that allows for limited movement of said coupler
relative to said housing;
a pair of opposing front rollers secured to said front roller
shaft and completely enclosed within said generally hollow
interior of said coupler whereby said front rollers roll only on
an upper surface of an inner plate secured within said generally
hollow interior of said couple;
a brake actuator secured within said generally hollow
interior of said coupler, wherein a first end of said brake
actuator is secured to said front roller shaft and a second end of
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said brake actuator is fixed to said coupler, wherein said brake
actuator is in operable communication with the brakes of the
towed vehicle such that said brake actuator is actuated by
movement of said coupler relative to said housing; and
a coupler ball socket within said generally hollow interior
of said coupler for releaseable attachment of the coupler ball
attached to the towing vehicle.
THE EVIDENCE
The Examiner relies upon the following evidence:
Shumate US 2,954,104 Sep. 27, 1960
Goettker US 5,040,816 Aug. 20, 1991
Marasco US 5,771,996 Jun. 30, 1998
THE REJECTIONS
Appellant seeks review of the following rejections:
1. The Examiner rejected claims 14 and 17 under 35 U.S.C. § 102(b)
as being anticipated by Goettker.
2. The Examiner rejected claim 15 under 35 U.S.C. § 103(a) as
unpatentable over Goettker.
3. The Examiner rejected claims 1, 3, 4, 6-8, 10-13, and 18-23 under
35 U.S.C. § 103(a) as unpatentable over Goettker and Marasco.
4. The Examiner rejected claims 9 and 24 under 35 U.S.C. § 103(a)
as unpatentable over Goettker, Marasco, and Shumate.
ISSUES
The issues presented by this appeal are:
Whether Goettker discloses “a single piece safety catch and release
plate,” as called for in independent claim 14; and
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Whether Goettker discloses “a brake actuator” as called for in
independent claims 1 and 18.
ANALYSIS
Rejection of claims 14 and 17 as anticipated by Goettker and claim 15 as
unpatentable over Goettker
Appellant argues claims 14 and 17 as a group. App. Br. 19. We
select claim 14 as representative, and claim 17 stands or falls with claim 14.
See 37 C.F.R. § 41.37(c)(1)(vii). Appellant relies on the same arguments for
patentability of claim 15 as presented for claim 14. App. Br. 19. As such,
the patentability of claim 15 turns on our analysis of the patentability of
claim 14.
Appellant argues that claim 14 is not anticipated by Goettker because
“Goettker does not disclose a single piece safety catch and release plate” as
called for in claim 14. App. Br. 19. Appellant first contends that “the catch
and release function is performed by the combination of the rod clamping
member [66] and the pivotal latch member [124]” and thus Goettker does
not disclose a “single piece” safety catch and release plate. App. Br. 18.
Appellant then contends that “a plate means any flat plate like body structure
or part – i.e. a planer [sic planar] structure.” App. Br. 18.1 Thus, Appellant
argues that “[i]f the pivotal latch member [124] is a single piece, it cannot be
a plate because it is not planar.” App. Br. 19.

1 Appellant provides no citation to an authority in support of this definition
or to any objective evidence tending to show that a person of ordinary skill
in the art would understand “plate” to be limited to a planar structure.
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We determine the scope of the claims in patent applications not solely
on the basis of the claim language, but upon 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). Appellant’s Specification describes “a safety mechanism
that will allow the brakes of the towed vehicle to apply in the event that the
towed vehicle breaks away from the towing vehicle” that includes “[a] safety
catch 38 [that] captures the piston rod 52 to retain it in position to maintain
brake pressure until the safety catch 32 is manually released.” Spec. 8, ll. 8-
10 and 19-21. Appellant’s Specification further describes that “the piston 52
passes through holes in the safety catch 38, inner plate 46, and spring clip
50” and that the safety catch 38 is biased after release of the safety catch 38
by a spring 56, which surrounds the piston rod 52. Spec. 9, ll. 1-6.
“single piece”
Claim 14 recites “a safety mechanism for actuating said brake actuator
comprising: . . . a spring clip . . .; and a single piece safety catch and release
plate releasable secured to said piston rod, wherein upon activation of said
safety mechanism said plate secures said piston rod to maintain actuation of
said brake actuator until said plate is released.” By using the term
“comprising,” this claim limitation allows for components in addition to the
spring clip and single piece safety catch and release plate as part of the
safety mechanism. As such, the fact that Goettker’s safety mechanism
includes a rod clamping member 66 in addition to its single piece pivotal
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latch member 124 as part of its safety mechanism does not detract from the
Examiner’s finding that Goettker’s pivotal latch member 124, upon
activation of its safety mechanism, secures the piston rod to maintain
actuation of the brake actuator until the plate is released, as called for in
claim 14. See Ans. 5; Goettker, fig. 18 and col. 5, ll. 6-25 (describing that
“pivotal latch member 124 is installed in clamping member 66” and that a
latching wall 132 is pressed by spring 134 to a latching position in which the
walls of an opening 133 therein grasps spool end portion 108 to latch end
portion 108 and to restrain end portion 108 and piston rod 34 from moving
forwardly in coupler 24, and that pivotal latch member 124 can be pivoted
toward a position more nearly normal to the axis of piston rod 34 to release
spool end portion 108 by manual upward force applied to a foot 136) and
ll. 39-43 (“Latch 124 will hold spool end portion 108 and piston rod 34 in
braking position until pivotal latch 124 is pivoted to a more nearly normal
position relative to piston rod 34 by manual upward pressure on foot 136.”).
We do not find any description of clamping member 66 in Goettker which
supports Appellant’s contention that the guide opening 120 in the end wall
of clamping member 66 captures an end of the piston actuator and prevents
its release. Rather, Goettker describes that opening 133 in latching wall 132
performs this function. As such, we agree with the Examiner’s finding that
Goettker’s pivotal latch 124 secures the piston rod as claimed.
“plate”
While the embodiment of Appellant’s invention shown in Figure 15
appears to depict a planar structure for safety catch 38, Appellant’s
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Specification does not use the term “plate” when describing safety catch 38.
Appellant’s Specification employs the term “plate,” however, to describe
other components of the actuator/coupler device. Contrary to Appellant’s
proffered definition, Appellant’s use of the term “plate” in these contexts
does not refer to planar structures. For example, the Specification describes
element 46 as an “inner L-shaped plate 46.” Spec. 6, l. 12. The
Specification also uses “plate” to refer to “an extendable wedge plate 76”
which has “a wedge end 80” and a “hook 92.” Spec. 10, ll. 2-3 and 15. The
Specification further uses “plate” to refer to “lock plate 83” which includes
“a centrally located wedged shape portion 94” and “a rib [105] that extends
upwardly from the lock plate 83.” Spec. 10, ll. 14 and 22. As such,
Appellant’s own Specification uses the term “plate” to refer to structures that
include non-planar portions such as wedge shape portions and hooks
extending therefrom. Thus, we do not adopt Appellant’s definition of
“plate” as the broadest reasonable interpretation when read in light of
Appellant’s Specification. We decline to limit the term “plate” to the
structure shown in the embodiment of Figure 15. See Liebel-Flarsheim Co.
v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (“[T]his court has
expressly rejected the contention that if a patent describes only a single
embodiment, the claims of the patent must be construed as being limited to
that embodiment.” (citations omitted)); cf. SuperGuide Corp. v. DirecTV
Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (citation omitted) (“[A]
particular embodiment appearing in the written description may not be read
into a claim when the claim language is broader than the embodiment.”).
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As such, we agree with the Examiner that Goettker’s pivotal latching
member 124 anticipates the claimed “single piece safety catch and release
plate.” We sustain the rejection of claims 14 and 17 as being anticipated by
Goettker and the rejection of claim 15 as being unpatentable over Goettker.
NEW GROUNDS OF REJECTION
We enter new grounds of rejection of claims 1, 3, 4, 6-13, and 18-24
under 35 U.S.C. § 112, first paragraph, for lack of an adequate written
description of the claimed invention and under 35 U.S.C. § 112, second
paragraph for failure to particularly point out distinctly claim the subject
matter Appellant regards as the invention. In particular, we fail to find
adequate written descriptive support in Appellant’s original disclosure for
the “brake actuator” called for in independent claims 1 and 18, and further
find that a person of ordinary skill would not be able to comprehend what
subject matter is encompassed by the “brake actuator” called for in
independent claims 1 and 18.
The factual inquiry we apply for written descriptive support is
whether the Specification conveys with reasonable clarity to those skilled in
the art that, as of the filing date sought, applicant was in possession of the
invention as now claimed. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-
64 (Fed. Cir. 1991). Our reviewing court has since reaffirmed this standard.
Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010) (citing with approval the standard in Vas-Cath, and stating “the test
for sufficiency is whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
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possession of the claimed subject matter as of the filing date.” (citations
omitted)).
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). See also In re Cohn, 438 F.2d 989, 993 (CCPA 1971) (sustaining
rejection of claims under 35 U.S.C. § 112, second paragraph, as being
indefinite, where the claims were inherently inconsistent with the
description, definitions, and examples appearing in applicant’s specification)
and In re Hammack, 427 F.2d 1378, 1382 (CCPA 1970) (“the essence of
[the] requirement [under 35 U.S.C. § 112, second paragraph] is that the
language of the claims must make it clear what subject matter they
encompass.”)
Independent claims 1 and 18 call for a “brake actuator secured within
said generally hollow interior of said coupler.” The claims further call for a
first end of the brake actuator to be secured to the front roller shaft and a
second end of the brake actuator to be fixed to the coupler. The claims
further call for the brake actuator to be “in operable communication with the
brakes of the towed vehicle such that said brake actuator is actuated by
movement of said coupler relative to said housing.” We find no disclosure
of a structure in Appellant’s Specification that satisfies all of these
limitations.
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Appellant’s Specification describes an actuator/coupler device 10 that
includes a generally hollow three-sided housing 12 which telescopically
houses a coupler 14. Spec. 5, ll. 18-20; figs. 13 and 14. Forward and rear
coupler shafts 16, 20 secure through forward and rear housing holes 25, 27
in housing 12 and fix the movement of the shafts 16, 20 relative to the
housing 12. Spec. 5, l. 20 – Spec. 6, l. 1; fig. 13. Shafts 16, 20 pass through
forward and rear coupler slots 24, 26 in coupler 14 to allow for limited
lateral movement of the coupler 14 relative to the housing 12. Spec. 6, ll. 1-
4; fig. 14. A pair of forward rollers 18 is attached to forward shaft 16 and a
pair of rear rollers 22 is attached to rear shaft 20. Spec. 6, ll. 6-8; fig. 15.
Appellant’s Specification further describes that a dampener 32 is
affixed between the opposing pair of forward rollers 18 and through the
forward roller shaft 16, and that the opposite end of dampener 32 is secured
to the coupler 14 through a dampener shaft 34 that secures to a central
portion of the coupler 14. Spec. 6, ll. 8-11.
Appellant’s Specification also describes that “inner L-shaped plate 46
rigidly secures inside coupler 14,” and “[a] brake piston rod assembly 36
secures on one end to the inner L-shaped plate 46 and the other end of the
brake piston rod assembly 36 operationally integrates into a master cylinder
assembly 40 and is secured to the rear roller shaft 20 between the rear rollers
22.” Spec. 6, ll. 11-15; fig. 15. The master cylinder assembly 40 receives
the rear roller shaft 20 therethrough and has grooved slots 60 on its outer
side walls that align with protruding ribs on either side of the inner side
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walls of the coupler 14 to allow for lateral movement of the master cylinder
assembly 40 relative to the coupler 14. Spec. 6, ll. 15-19; fig. 11.
Appellant’s Specification describes that in response to decelerations
of the towing vehicle, the towed vehicle compresses housing 12 relative to
coupler 14, which forces the rear roller shaft 20 and rear pair of rollers 30
forward in rear slot 26 of coupler 14, which moves master cylinder assembly
40 forward and results in compression of a brake piston within master
cylinder assembly 40, thereby actuating a hydraulic connection to the brakes
of the towed vehicle. Spec. 7, ll. 4-14. An actuator spring 48 of brake
piston rod assembly 36 that surrounds a piston rod 52 provides sufficient
biasing force to counteract emergency actuation of the master cylinder’s
brake piston 124. Spec. 7, ll. 15-18.
Appellant’s Specification further describes that dampener 32 acts “in
response to movement of the coupler in both directions to return the front
pair of rollers 18, as well as the housing 12 and coupler 14, to a neutral
position.” Spec. 8, ll. 5-7. In particular, movement of housing 12 relative to
coupler 14 will result in movement of front pair of rollers 18, which moves
on the upper surface of inner plate 46, which is rigidly affixed to coupler 14.
Spec. 7, l. 20 – Spec. 8, l. 3. “This movement of the front rollers 18 will
translate to the dampener 32, which on its other end is rigidly fixed by the
dampener shaft 34 to the coupler 14.” Spec. 8, ll. 3-7.
In light of the description of the invention provided in Appellant’s
Specification, we understand the dampener 32 is secured within the interior
of the coupler and has a first end secured to the front roller shaft and a
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second end fixed to the coupler. Dampener 32, however, is not described in
Appellant’s Specification as being capable of acting as a brake actuator in
operable communication with the brakes of the towed vehicle such that the
brake actuator is actuated by movement of said coupler relative to the
housing, as called for in claims 1 and 18. Rather, dampener acts in response
to movement of the coupler to return rollers 18, housing 12, and coupler 14,
to a neutral position.
On the other hand, Appellant’s Specification describes that brake
piston rod assembly 36 in combination with master cylinder assembly 40 act
as a brake actuator in operable communication with the brakes of the towed
vehicle such that the brake actuator is actuated by movement of the coupler
relative to the housing. Brake piston rod assembly 36 in combination with
master cylinder assembly 40 does not, however, have a first end secured to
the front roller shaft and a second end fixed to the coupler, as called for in
the claims. Rather, brake piston rod assembly 36 secures on one end to
inner plate 46 and is operationally integrated with master cylinder assembly
40 on the other end, and master cylinder assembly 40 is secured to rear roller
shaft 20.
As such, we find inadequate written descriptive support in Appellant’s
original disclosure for the brake actuator called for in independent claims 1
and 18. In particular, we find no “brake actuator” described in Appellant’s
original disclosure that satisfies all of the elements of this claim limitation.
We consulted the Summary of Claimed Subject Matter section of
Appellant’s Appeal Brief for assistance in interpreting this portion of the
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claim, but the Summary was not helpful. Appellant provided an annotated
version of claims 1 and 18 in which Appellant pointed us “generally” to item
10 and Figures 13-15 for the claimed “brake actuator.” App. Br. 6, 8-9.
Item 10 in Appellant’s Specification refers generally to the entire
actuator/coupler device, which includes the housing 12 and coupler 14.
Clearly, actuator/coupler device 10 cannot correspond to the claimed “brake
actuator” because the housing and coupler are not “secured within” the
coupler, as called for in the claims.
Appellant attempted to distinguish Goettker’s device from the claimed
device, arguing that “in Applicant’s invention, the roller shafts (front 16 and
rear 20) secure to either end of the actuator and a dampener shaft 34 secures
the actuator to the coupler housing.” Reply Br. 5. This characterization of
the invention appears to be inconsistent with the written description of the
invention provided in Appellant’s disclosure, in which it is described that
dampener shaft 34 secures only dampener 32 to coupler 14. Brake piston
rod assembly 36 is secured to coupler 14 via inner plate 46, and master
cylinder assembly 40 is allowed to freely slide relative to coupler 14 via its
grooved slots 60 and the corresponding protruding ribs on coupler 14.
Further, we do not interpret the claimed “brake actuator” to correspond to
the combination of dampener 32, brake piston rod assembly 36, and master
cylinder assembly 40, because we can find no description in Appellant’s
Specification to show that dampener 32 is secured to brake piston rod
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assembly 36 or master cylinder assembly 40 or that it actuates the brakes of
the towed vehicle.2
Based on the above analysis, we find that a person skilled in the art
would not recognize in Appellant’s disclosure a description of the invention
defined by claims 1 and 18. We further find that those skilled in the art
would not understand what is claimed by the “brake actuator” when claims 1
and 18 are read in light of the Specification. Dependent claims 3, 4, 6-13,
and 19-24, by virtue of their dependency from claims 1 and 18, suffer from
these same shortcomings.
The prior art rejections of claims 1, 3, 4, 6-13, and 18-24 under
35 U.S.C. § 103(a) must fall because they are necessarily based on a
speculative assumption as to the meaning of these claims. See In re Steele,
305 F.2d 859, 862-63 (CCPA 1962) (holding that the examiner and the
board were wrong in relying on what at best were speculative assumptions
as to the meaning of the claims and basing a rejection under 35 U.S.C. § 103
thereon.) It should be understood, however, that our decision in this regard
is based 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.

2 We further note that dependent claim 4 calls for the device of claim 1
further comprising “a dampener secured within said generally hollow
interior of said coupler, wherein a first end of said dampener is secured to
said front roller shaft and a second end of said dampener is fixed to said
coupler, wherein said dampener dampens movement of said coupler relative
to said housing.”
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CONCLUSIONS
Goettker discloses “a single piece safety catch and release plate,” as
called for in independent claim 14.
Appellant’s Specification does not provide adequate written
descriptive support for the claimed “brake actuator” and the “brake actuator”
as recited in claims 1 and 18 renders the claims indefinite, and thus we do
not reach the merits of the rejections based on Goettker and the other cited
prior art.
DECISION
The decision of the Examiner to reject claims 14, 15, and 17 is
AFFIRMED.
The decision of the Examiner to reject claims 1, 3, 4, 6-13, and 18-24
under 35 U.S.C. § 103(a) is REVERSED based on the indefiniteness of the
claimed subject matter.
We enter NEW GROUNDS OF REJECTION of claims 1, 3, 4, 6-13,
and 18-24 under 35 U.S.C. § 112, first paragraph for lack of adequate
written description and under 35 U.S.C. § 112, second paragraph for
indefiniteness.

Regarding the affirmed rejections, 37 C.F.R. § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board.”
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
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§ 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 grounds 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
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.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
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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).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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