Ex Parte Gaddes et alDownload PDFPatent Trial and Appeal BoardAug 29, 201714208627 (P.T.A.B. Aug. 29, 2017) 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. 14/208,627 03/13/2014 Shane Gaddes 030075.51438 7275 104982 7590 08/31/2017 Waller Lansden Dortch & Davis, LLP 511 Union Street Suite 2700 Nashville, TN 37219 EXAMINER MATTEI, BRIAN DAVID ART UNIT PAPER NUMBER 3633 NOTIFICATION DATE DELIVERY MODE 08/31/2017 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): patentdocket@wallerlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SHANE GADDES, STEPHEN WOOLVERTON, and ROBERT WESTERLUND Appeal 2017-004685 Application 14/208,627 Technology Center 3600 Before MICHAEL J. STRAUSS, LARRY J. HUME, and JASON M. REPKO, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2017-004685 Application 14/208,627 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). THE INVENTION The claims are directed to a modular concrete form panel. Spec., Title. Claim 1, reproduced below with disputed language emphasized in italics, is illustrative of the claimed subject matter: 1 A modular form panel apparatus for assembly with at least one adjacent modular form panel for forming a concrete structure at a building site, comprising: a modular form panel; a first panel section on the modular form panel; a second panel section comprising foam on the modular form panel, the second panel section positioned opposite the first panel section; a filling gap defined between the first and second panel sections, the filling gap configured to receive concrete poured into the filling gap at the building site; one or more support ties spanning the filling gap between the first and second panel sections; and a barrier layer disposed on the first panel section, wherein the first panel section, second panel section, one or more support ties and barrier layer are pre-assembled on the modular form panel prior to shipment of the modular form panel to the building site, and wherein the modular form panel is configured for placement beside the adjacent modular form panel prior to concrete being poured into the filling gap at the building site. 2 Appeal 2017-004685 Application 14/208,627 REFERENCES The prior art relied upon by the Examiner as evidence in rejecting the claims on appeal is: Westerlund US 5,799,453 Sept. 1, 1998 Martella et al. US 6,041,562 Mar. 28, 2000 Ciuperca US 2013/0074433 Al Mar. 28, 2013 REJECTIONS The Examiner made the following rejections: Claims 1—6, 17, 19, and 20 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Westerlund. Final Act. 2—5. Claims 7—9 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Westerlund. Final Act. 5—6. Claims 10-16 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Westerlund and Martella. Final Act. 6—9. Claim 18 stands rejected under 35 U.S.C. §103(a) as being unpatentable over Westerlund and Ciuperca. Final Act. 9—10. ANALYSIS New Ground of Rejection and Anticipation and Obviousness Rejections Appellants argue claim 1 was rejected erroneously because Westerlund does not teach the disputed language requiring “the first panel section, second panel section, one or more support ties and barrier layer are pre-assembled on the modular form panel prior to shipment of the modular form panel to the building site.” App. Br. 8. According to Appellants “none of the cited portions of Westerlund teaches the recited ‘pre-assembled’ panel of Claim 1. Id. Appellants explain “Westerlund merely discloses that the 3 Appeal 2017-004685 Application 14/208,627 individual components of the building form work listed can be fabricated or made offsite and then assembled on site, or the components can be both fabricated and assembled on site. In either case, the components are assembled on site, in direct contrast to the recitations of Claim 1.” Id. at 9. The Examiner responds by explaining how Westerlund is interpreted so as to disclose the disputed limitation. Ans. 2-4. Furthermore the Examiner concludes the requirement of “being ‘pre-assembled on the modular form panel prior to shipment of the modular form panel to the building site’ [describes] a method of forming the panel and the claim is directed to the panel itself.” Id. at 4. Therefore, according to the Examiner, “[a]s long as the panel is capable of being formed by the method then it meets the limitations of the claim.” Id. The Examiner concludes “being preassembled in a factory is not a positive limitation since [claim 1] is an apparatus claim.” Id. Appellants reply, arguing the term “pre-assembled” is a positive limitation “even though the claims [are] directed to apparatus claims.” Reply Br. 8 (citing Ex parte Berger, Appeal No. 2012-008476, Serial No. 11/804,303 (hereafter “Berger”) (non-precedential)). For the reasons discussed below, we do not 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 Aoyama, 656 F.3d 1293, 1300 (Fed. Cir. 2011) (holding that the Board erred in affirming an anticipation rejection of indefinite claims); In re Steele, 305 F.2d 859, 862—63 (CCPA 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). 4 Appeal 2017-004685 Application 14/208,627 During examination, an applicant must “clearly and precisely set out the metes and bounds of the claimed [subject matter].” Ex parte Miyazaki, 89 USPQ2d 1207, 1211—13 (BPAI 2008) (precedential). Our reviewing court instructs us that an applicant “is in the best position to resolve the ambiguity in the patent claims, and it is highly desirable that patent examiners demand that applicants do so in appropriate circumstances so that the patent can be amended during prosecution rather than attempting to resolve the ambiguity in litigation.” Halliburton Energy Servs. v. M-ILLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008). Our decision regarding the rejections under 35 U.S.C. §§ 102(b) and 103(a) is based solely on the indefmiteness of the claims. We emphasize that our decision does not mean the claims are patentable. Rather, we leave the patentability determination of these claims to the Examiner. See MPEP § 1213.02. New Ground of Rejection—35 U.S.C. § 112(b) We enter a new ground of rejection with respect to claims 1,10, and 17 under 35 U.S.C. § 112(b). Claims 1—20 are rejected under 35 U.S.C. § 112(b) as being indefinite for failure to particularly point out and distinctly claim the subject matter which Appellants regard as the invention. A claim fails to comply with 35 U.S.C. § 112, second paragraph, “when it contains words or phrases whose meaning is unclear.” In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014) (approving, for pre-issuance claims, the standard from MPEP§ 2173.05(e)). Independent claim 1 recites the limitation “wherein the first panel section, second panel section, one or more support ties and barrier layer are pre-assembled on the modular form panel prior to shipment of the modular 5 Appeal 2017-004685 Application 14/208,627 form panel to the building site.” Independent claims 10 and 17 each include a similar limitation. The requirement that the listed structures be “pre assembled . . . prior to shipment” describes actions and their sequence, i.e., assembly and shipment occur in that order. As such, claim 1 includes a method or process limitation. That is, the disputed language does not clearly limit the structure of the claimed modular form panel but, instead, recites an intended use of the claimed structure, i.e., assembly to achieve the claimed structure at a location other than the building site. Appellants’ argument that the “pre-assembled” language is a “positive limitation . . . even though the claims [are] directed to apparatus claims” (Reply Br. 9 (citing Berger)) is unpersuasive. Berger is not a precedential decision of the Board and is, therefore, not binding on this panel. See Patent Trial and Appeal Board, Standard Operating procedure 2 (Rev. 8): Publication of Opinions and Designation of Opinions as Precedential, p. 4 (August 12, 2013), https://www.uspto.gov/patents/process/appeal/ sop_2_revision_8_dated_8_12_2013_final.pdf (discussing a routine opinions). Furthermore, in Berger, the claims at issue did not include the disputed pre-assembled language. The panel in Berger did not address whether being pre-assembled was a proper limitation when appearing in an apparatus claim or even whether the language imposed a structural limitation by, for example, defining a structural property or arrangement of the constituent structural elements of the claim. Instead, the panel in Berger found “the preamble of claim 25 recites a ‘kit,’ which supports a construction of claim 25 requiring the recited arrangement to exist prior to installation, and we accept Appellant’s assertion that claim 25 requires such pre-assembly and connection of the recited cable.” Berger at 6. Thus, the 6 Appeal 2017-004685 Application 14/208,627 issue in dispute in Berger was whether a positive structural limitation, i.e., fixing the cable ends to two different drive means, referred to but not claimed as a pre-assembled feature, was taught by the prior art.1 Because the claims in Berger did not include the disputed pre-assembled language, the Berger decision is further inapposite to the issues in the present appeal. A claim that recites both a system (or apparatus) and a method of using that system (or apparatus) does not apprise one of ordinary skill in the art of its scope, and thus, is indefinite under 35 U.S.C. § 112, second paragraph. See IPXL Holdings, LLC v. Amazon.com, Inc., 430 F.3d 1377, 1383—84 (Fed. Cir. 2005) (holding that a claim that recites both a system and the method for using that system does not apprise a person of ordinary skill in the art of its scope); see also MPEP § 2173.05(p)(II) (“A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite . . . .”). Claim 1 recites both structural elements and a method of using those structures, i.e., “a modular form panel”, “a first panel section”, “a second panel section”, “a filling gap”, “one or more support ties”, and “a barrier layer” wherein these components are “pre-assembled . . . prior to shipment.” Claims App. We find, based on this claim language, that one of ordinary skill in the art at the time of the invention would not understand the scope of the invention recited in claim 1 because it is unclear whether infringing the claim requires merely the structure as arranged according to claim 1 or, in addition, a method of off-site assembly of the individual components. See IPXL, 430 F.3d at 1384. Stated differently, one 1 In Berger the Board reversed the prior art rejection, concluding that merely because “the references are capable of being modified to be pre-assembled is not sufficient, by itself, to establish that this arrangement would have been obvious at the time the claimed invention was made.” Berger at 7. 7 Appeal 2017-004685 Application 14/208,627 of ordinary skill in the art could reasonably consider the “pre-assembled” language as “directed to user actions, not system capabilities.” In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1318 (Fed. Cir. 2011), quoted in Ultimate Pointer, L.L.C. v. Nintendo Co., 816 F.3d 816, 827 (Fed. Cir. 2016). Alternatively, if we consider the disputed “pre-assembled” language to define a property of the structure, we again conclude claim 1 is indefinite. In particular, Appellants argue “the inner wall form structure of Westerlund does not have the structural integrity to maintain its shape if the inner wall form structure was separated from the base foundation.” Reply Br. 11. According to Appellants “if the form work of Westerlund were to be preassembled offsite, the inner wall form structure upon lifting or transport of the assembled form work would bend or twist such that the form work would lose its desired shape, and would fall apart upon transport.” Id. Thus, Appellants emphasize Westerlund’s form is incapable of being pre assembled for transport in contrast to claim l’s recitation of pre-assembly prior to shipment. However, rather than describing structure for enabling the intended result (i.e., a shippable or transportable pre-assembled modular form panel), at best, claim 1 functionally imposes any transportability feature through recitation of pre-assembly prior to shipment to the building site. As such, claim 1 improperly “recites what has already been seen, and then uses conveniently functional language at the exact point of novelty.” Halliburton Energy Servs., Inc. v. M-ILLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008). Therefore, Appellants’ reliance on functional language in claim 1 fails “to provide a clear-cut indication of the scope of the subject matter 8 Appeal 2017-004685 Application 14/208,627 embraced by the claim,” and thus renders the claim indefinite. See In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). Furthermore, the “modular form panel” recited amongst the structural elements of claims 1 and 102 additionally renders those claims indefinite. Appellants indicate both (i) the modular form panel apparatus recited by the preamble and (ii) the constituent modular form panel element recited in the body of the claim correspond to element 10 of the drawings and Specification. App. Br. 3. The Specification discloses “an embodiment of a modular form panel is generally illustrated in FIG. 1 and is designated by the numeral 10” and “includes [inter alia] an inner side 12 and an outer side 14.” Spec. 127. Thus, it is unclear what structure corresponds to the recited “modular form panel”, i.e., the entire structure or an individual element. Furthermore, if the modular form panel apparatus of the preamble is the same as the modular form panel element of the claim body, it is unclear how a claimed structure can include itself as a constituent structural element in addition to other structural elements. This indefmiteness is further compounded by the first wherein clause’s reference to pre-assembly of the first and second panel sections, support ties, and barrier layer on the modular form panel prior to shipment of the modular form panel to the building site. Thus, it is unclear whether the recited components are preassembled to each other and thereby to the overall modular form panel or to a particular modular form panel element. For the foregoing reasons, independent claims 1,10 and 17 do not apprise a person of ordinary skill in the art of their scope, and thus, fail to 2 Independent claim 17, although not necessarily indefinite based on the rationale infra, is nonetheless indefinite for the reasons discussed supra. 9 Appeal 2017-004685 Application 14/208,627 comply with 35 U.S.C. § 112(b) in failing to particularly point out and distinctly claim the subject matter which Appellants regard as the invention. Packard, 751 F.3d at 1313 (“It is the claims that notify the public of what is within the protections of the patent, and what is not.”). DECISION We reverse the Examiner’s rejection of claims 1—20 under 35 U.S.C. §§ 102(e), 103(a). We newly reject claims 1—20 under 35 U.S.C. § 112(b). NEW GROUND OF REJECTION This Decision contains a new ground of rejection pursuant to our authority under 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 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. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state 10 Appeal 2017-004685 Application 14/208,627 with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. 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)(l)(iv). See 37 C.F.R. § 41.50(f). REVERSED 37 C.F.R, $ 41.50(b) 11 Copy with citationCopy as parenthetical citation