Ex Parte FryeDownload PDFBoard of Patent Appeals and InterferencesSep 7, 201110200734 (B.P.A.I. Sep. 7, 2011) Copy Citation 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 Appeal 2009-013931 Application 10/200,734 2 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: Appeal 2009-013931 Application 10/200,734 3 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 Appeal 2009-013931 Application 10/200,734 4 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 Appeal 2009-013931 Application 10/200,734 5 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. Appeal 2009-013931 Application 10/200,734 6 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 Appeal 2009-013931 Application 10/200,734 7 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 Appeal 2009-013931 Application 10/200,734 8 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.”). Appeal 2009-013931 Application 10/200,734 9 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 Appeal 2009-013931 Application 10/200,734 10 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. Appeal 2009-013931 Application 10/200,734 11 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 Appeal 2009-013931 Application 10/200,734 12 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 Appeal 2009-013931 Application 10/200,734 13 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 Appeal 2009-013931 Application 10/200,734 14 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 Appeal 2009-013931 Application 10/200,734 15 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.” Appeal 2009-013931 Application 10/200,734 16 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. Appeal 2009-013931 Application 10/200,734 17 § 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. Appeal 2009-013931 Application 10/200,734 18 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) nlk Copy with citationCopy as parenthetical citation