Ex Parte Gaddes et al

Patent Trial and Appeal Board

Aug 29, 2017

14208627 (P.T.A.B. Aug. 29, 2017)

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.
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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
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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).
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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
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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
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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.
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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
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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.
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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
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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)
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