Ex Parte Greenwood et alDownload PDFPatent Trial and Appeal BoardDec 14, 201613232111 (P.T.A.B. Dec. 14, 2016) 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. 13/232,111 09/14/2011 George Greenwood ACS-059E US 1067 23520 7590 MAURICE M KLEE 1951 BURR STREET FAIRFIELD, CT 06824 12/16/2016 EXAMINER FRISBY, KEITH J ART UNIT PAPER NUMBER 3616 NOTIFICATION DATE DELIVERY MODE 12/16/2016 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): mk @ maurieklee. com burr500 @ gmail .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GEORGE GREENWOOD, MICHAEL MCCARTHY, SCOTT J. MACKENZIE, and RICHARD PFEFFERLE Appeal 2014-007268 Application 13/232,1111 2 3 Technology Center 3600 Before STEFAN STAICOVICI, TARA L. HUTCHINGS, and AMEE A. SHAH, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE George Greenwood et al. (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting under 35 U.S.C. § 112, first paragraph, claims 3,5,6, and 8 as failing to comply with the written description requirement.2,3 Appellants’ representative presented oral 1 According to Appellants, ACS Industries, Inc. is the real party in interest. Appeal Br. 3 (filed Feb. 24, 2014). 2 Claims 1, 2, 4, 7, and 9-24 are canceled. See Appellants’ amendment filed Feb. 24, 2014, p.2-3. 3 The rejections under 35 U.S.C. § 103(a) are withdrawn by the Examiner. Ans. 2—3 (mailed Mar. 31, 2014); see also Final Act. 2—10 (mailed July 24, 2013). Appeal 2014-007268 Application 13/232,111 argument on December 7, 2016. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM. INVENTION Appellants’ invention relates to a vehicle filter made from expanded metal sheets. Spec. H 3, 42. Claim 3 is illustrative of the claimed invention and reads as follows: 3. A tubular filter for use with a housing for an airbag inflator, said housing having a chamber for receiving the tubular filter and a circumferential ring of apertures for allowing gas to exit the chamber, said circumferential ring of apertures being offset from the midplane of the chamber, said tubular filter comprising expanded metal that has been rolled on itself to form a multi-layered tube having a substantially cylindrical outer surface wherein the expanded metal comprises a multiplicity of openings and the substantially cylindrical outer surface comprises two grooves, each of which is a circumferential groove which does not cut the expanded metal, the two grooves being offset from the midplane of the filter so that only one groove is aligned with the circumferential ring of apertures of the housing when the filter is received in the housing, each groove having a width such that when aligned with the circumferential ring of apertures of the housing, the groove is over the apertures even if all tolerances affecting the location of the groove are in one direction, wherein the substantially cylindrical outer surface of the filter is free of axial grooves. 2 Appeal 2014-007268 Application 13/232,111 ANALYSIS Appellants have not presented arguments for the patentability of claims 5, 6, and 8 apart from claim 3. Therefore, in accordance with 37 C.F.R. § 41.37(c)(l)(iv), we select claim 3 as the representative claim to decide the appeal of the rejection of these claims, with claims 5, 6, and 8 standing or falling with claim 3. Independent claim 3 requires, inter alia, that “the substantially cylindrical outer surface of the filter is free of axial grooves.” Appeal Br. 16. The Examiner finds that “[t]he [Specification does not contain a written description of a filter having a substantially cylindrical outer surface that is free of axial grooves.” Final Act. 2. According to the Examiner, as Appellants’ Specification describes texturization grooves that can be axial grooves, “the [Specification does not limit the pattern of grooves to any particular configuration or orientation,” and “the original disclosure does not support the limitation that axial grooves are not formed in the outer surface of the filter.” Id. at 11 (citing Spec. 199, Fig. 15); see also Ans. 3. In other words, the Examiner finds that in addition to circumferential grooves 3, “texturization grooves are [also] provided on the surface of the expanded metal strip.” Final Act. 11; see also Ans. 4. In response, Appellants contend that as Figures 5, 12A, 12B, 13A, and 13B of its original disclosure show a filter 13 having circumferential grooves 3, but do not show an axial groove, Appellants’ disclosure supports the contested negative limitation. Appeal Br. 9. Appellants further assert that the Examiner has misinterpreted the meaning of the term “grooves” in claim 3 by interpreting the texturization 3 Appeal 2014-007268 Application 13/232,111 shown in Figure 15 of the Specification as “axial grooves.” Id. at 11. According to Appellants, the term “grooves” appearing in different portions of claim 3 should be given the same meaning, namely, “exit-protecting grooves.” Id. As such, Appellants contend that the texturization grooves “are designed to reduce laminar flow” to “improve a filter’s ability to capture particles,” and, thus, do not constitute “exit-protecting grooves.” Id. (citing Spec. Tflf 94, 96, 99). Moreover, Appellants argue that the texturization grooves also are not “axial grooves,” because the grooves are non-axially oriented at an angle of 45°. Id. at 11—12. Lastly, Appellants argue that circumferential grooves and texturization are independent features because they are described and claimed as separate features and are separated by the term “and/or” in their description in the Abstract. Id. at 12—14 (citing Spec. Tflf 11, 13, original claim 3, original claim 13, and Abstract). Accordingly, Appellants assert that “texturization is not required but is optional.” Reply Br. 7; see also id. at 8 (citing Spec. 194 (“To minimize the occurrence of [laminar] flow, the surface of the expanded metal making up the filter can be texturized.”)) (emphasis added). In other words, Appellants argue that in contrast to the Examiner’s position, Appellants’ disclosure supports a filter having circumferential grooves, but no texturization, and thus, such a filter “is free of axial grooves.” Id. at 7. During examination, “claims . . . are to be given their broadest reasonable interpretation consistent with the [Specification,[] and . . . claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990) (citation omitted). This means that the words of the 4 Appeal 2014-007268 Application 13/232,111 claim must be given their plain meaning unless the plain meaning is inconsistent with the specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). An ordinary and customary definition of the term “groove” is “a long narrow channel or depression.” Merriam Webster’s Collegiate® Dictionary (11th ed. 2005). Such an interpretation is consistent with Appellants’ Figure 5, which shows groove 3 as a narrow depression. Furthermore, it is well established that limitations not appearing in the claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). In this case, the term “exit-protecting” does not appear in the claims and as stated by our reviewing court in In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998), “the name of the game is the claim.” Moreover, claims are interpreted in light of the Specification, but limitations from the Specification are not read into the claims. Appellants’ Specification describes the function of circumferential groove 3 as allowing apertures 17 of housing 19 to function as an exit for gasses generated by the airbag’s explosive charge. Spec. Tflf 79-82. Hence, although the adjective “exit-protecting” describes the function of the claimed “circumferential groove,” it does not modify the structural features of the claimed “groove,” namely, that of being a “narrow depression.” We must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Accordingly, we agree with the Examiner that “[t]he term ‘grooves’ in claim 3 may clearly be applied to both the circumferential grooves 3 and the texturization grooves [of Appellants’ Figure 15].” Ans. 4. In other words, we construe the term “groove” such that the only difference between a 5 Appeal 2014-007268 Application 13/232,111 circumferential groove and an axial groove is the orientation of the groove, i.e., narrow depression, with respect to the longitudinal axis of the filter. The purpose of the written description requirement in 35 U.S.C. § 112, first paragraph, is to “clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.” Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010 (citing In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989)). “[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad, 598 F.3d at 1351. This test “requires an objective inquiry into the four comers of the [Specification from the perspective of a person of ordinary skill in the art.” Id. In this case, we agree with the Examiner that just because Figures 5, 12A, 12B, 13 A, and 13B of Appellants’ disclosure show a filter 13 having circumferential grooves 3, but do not show an axial groove, it does not mean that Appellants had possession of a filter free of axial grooves as of the filing date of the present application. See Ans. 3. The mere absence of an element from Appellants’ disclosure does not amount to an explicit description of the missing element and thus, does not constitute basis for an exclusion. Here, we could not find any portion in Appellants’ Specification, and Appellants have not pointed to any portion, that explicitly describes filter 13 as having a “substantially cylindrical outer surface [that] is free of axial grooves,” as recited by claim 3. The Examiner is correct in that if we accept Appellants’ position, then Appellants have the right to claim that the cylindrical outer surface of the claimed filter “is free of many other features not shown.” Id. 6 Appeal 2014-007268 Application 13/232,111 Nonetheless, we are mindful that Appellant’s Specification need not describe the claimed invention in ip sis verbis to comply with the written description requirement. In re Edwards, 568 F.2d 1349 (CCPA 1978). The test is whether the originally filed Specification disclosure reasonably conveys to a person having ordinary skill in the art that Appellants had possession of the subject matter later claimed. See In re Kaslow, 707 F.2d 1366 (Fed.Cir. 1983). Here, Appellants’ Abstract states that “filters (13) can include external circumferential grooves (3). . . textured surfaces (37). . . and/or tortuous internal paths” (emphasis added). In a first instance, the use of the term “and” in the conjunctive phrase “and/or” supports the Examiner’s position that Appellants’ disclosure describes a filter that in addition to circumferential grooves 3, “texturization grooves are [also] provided on the surface of the expanded metal strip.” Final Act. 11; see also Ans. 4. However, even if we arguendo accept Appellants’ argument that circumferential grooves and texturization are independent features, it does not mean that the original disclosure reasonably conveys to a person of ordinary skill in the art that it supports a filter having a cylindrical outer surface that “is free of axial grooves.” See Reply Br. 7—8. Rather, it means that the original disclosure supports a filter having a cylindrical outer surface that is free of a texturized surface that may include axial grooves. Appellants’ original disclosure reasonably conveys to a person of ordinary skill in the art that it supports a filter having a “groove” in the outer surface of filter 13. See Spec. 1 81 (“[A] groove formed in the outer surface of the filter will substantially retain its shape during the explosion.”). Although the Specification describes a circumferential groove (see Spec. 1 82), the 7 Appeal 2014-007268 Application 13/232,111 Specification does not explicitly describe a “reason to exclude” axial grooves. See Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012). In contrast to Santarus, where the disadvantage of the negatively claimed sucralfate compound was explicitly described in the Specification (see id. at 1350), here, Appellants’ Specification does not explicitly describe any disadvantage of having axial grooves in the cylindrical outer surface of Appellants’ claimed tubular filter. Therefore, the claimed negative limitation “free of axial grooves” is not adequately supported. In conclusion, for the foregoing reasons, Appellants’ Specification fails to explicitly describe or reasonably convey to a person of ordinary skill in the art that Appellants had possession of a filter having a “substantially cylindrical outer surface [that] is free of axial grooves,” as recited by claim 3. Accordingly, we sustain the rejection under 35U.S.C. § 112, first paragraph, of claim 3 as failing to comply with the written description requirement. Claims 5, 6, and 8 fall with claim 3. SUMMARY The Examiner’s decision to reject claims 3, 5, 6, and 8 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement is affirmed. 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). AFFIRMED 8 Copy with citationCopy as parenthetical citation