Ex Parte Groves

Patent Trial and Appeal Board

Apr 17, 2017

13553641 (P.T.A.B. Apr. 17, 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.
13/553,641 07/19/2012 Mark Groves 20519.001US01 5702
67559 7590
Parsons Behle & Latimer
Attn: Docketing
800 W. Main Street, Suite 1300
Boise, ID 83702
EXAMINER
CHIN-SHUE, ALVIN CONSTANTINE
ART UNIT PAPER NUMBER
3634
MAIL DATE DELIVERY MODE
04/18/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK GROVES
Appeal 2015-008155
Application 13/553,6411
Technology Center 3600
Before MICHAEL C. ASTORINO, BRUCE T. WIEDER, and
BRADLEY B. BAYAT, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1—11. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellant, “GRID MANUFACTURING
CORPORATION” is the real party in interest. Appeal Br. 3.
Appeal 2015-008155
Application 13/553,641
STATEMENT OF THE CASE
Claimed Subject Matter
Claims 1 and 8 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A device for hoisting or lowering a load, comprising:
a main body comprising a top end and a bottom end;
a front plate, movable between a closed position and an
open position relative to the main body, the open position
revealing a chamber between the main body and the front plate;
a bolt connecting the main body to the front plate;
a sheave located between the main body and the front plate
and rotatable about the bolt and shaped to receive a bight of cord
thereupon; and
a friction accessory protruding from the bottom end of the
main body and comprising an elongated shank, at least one bend
connected to the elongated shank, and a distal end of the at least
one bend spaced apart from the elongated shank and forming a
gap therebetween, wherein when the front plate is in the closed
position it does not cover the friction accessory, and wherein the
elongated shank and the at least one bend are shaped to be
encircled by at least a portion of the bight of cord, and wherein
the friction accessory and the main body form a unitary piece.
Petitionable Matters
The Appellant seeks review of the Examiner’s objections (Appeal Br.
6—7), which include: an objection to the drawings under 37 C.F.R. § 1.83(a)
because they fail to show claim 9’s features (Final Act. 7); and an objection
to a Specification amendment (filed July 31, 2014) under 35 U.S.C. § 132(a)
because it introduces new matter into the disclosure (Final Act. 2).
Normally, such matters are reviewable by petition under 37 C.F.R. § 1.181
(see Manual of Patent Examining Procedure (MPEP) §§ 1002 and 1201) and
are not within the jurisdiction of the Board. See also In re Mindick, 371
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Appeal 2015-008155
Application 13/553,641
F.2d 892, 894 (CCPA 1967). However, there is an exception when the issue
of new matter is the subject of both an objection and a rejection, then the
issue is appealable. Manual of Patent Examining Procedure (MPEP)
§ 2163.06 II. Review of New Matter Objections and/or Rejections (9th Ed.
Rev. 7, Nov. 2015) (“If both the claims and specification contain new matter
either directly or indirectly, and there has been both a rejection and objection
by the examiner, the issue becomes appealable and should not be decided by
petition.”). See also MPEP § 608.04(c); 35 U.S.C. § 134(a); 37 C.F.R.
§ 1.181(a)(1). The exception does not apply in this case.
The rejection of claim 9 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement, is not a “new
matter” rejection. Rather, the rejection of claim 9 is based on its original
language and not on “new matter.” Further, we note that the subject matter
associated with the new matter objection to the Specification (Amendment,
filed July 31, 2014) includes considerably broader disclosure than the
limited subject matter associated with rejection of claim 9. The former is
directed to the assembly of the entire device (i.e., device 100), whereas the
latter is directed to a single, very specific connection between the “friction
accessory” and “bottom portion of the body.” Thus, the foregoing matters
are petitionable, not appealable.
Rejections2
Claim 9 is rejected under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement. Final Act. 3.
2 Despite the appearance that the Examiner maintained the rejection of
claims 8—11 under 35 U.S.C. § 112, second paragraph (Final Act. 4; Ans. 4),
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Appeal 2015-008155
Application 13/553,641
Claims 1—11 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Wright and Bentley. Final Act. 5.
ANALYSIS
Written Description Rejection
The Examiner finds “the friction accessory is connected to a bottom
portion of the body,” as recited in claim 9, fails to comply with the written
description requirement because “[t]he specification as originally filed does
not provide an adequate description of the friction assembly being connected
to the main body.” Final Act. 3.
The Appellant requests withdrawal of the Examiner’s rejection
because the aforementioned recitation of claim 9 is an original claim that a
person of ordinary skill in the art would understand as an adequate
description. See Appeal Br. 8. The Appellant’s request persuasively points
out a lack of explanation in the Examiner’s rejection.
We note that the PTO has the initial burden of presenting evidence or
reasons why persons skilled in the art would not recognize in the disclosure
a description of the invention defined by the claims. In re Wertheim, 541
F.2d 257, 263 (CCPA 1976). We also note that the original claims are part
of the disclosure. In re Roller, 613 F.2d 819 (CCPA 1980) (original claims
can constitute their own description).
we understand that the rejection is withdrawn. Our understanding is based
on an amendment to claim 8 (amendment, filed Dec. 19, 2014; entered by
the Examiner, Advisory Act., mailed Dec. 30, 2014), which removed claim
language identified by the Examiner as indefinite. See Reply Br. 2.
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Appeal 2015-008155
Application 13/553,641
Although the Examiner does address other portions of the original
written description (e.g., Figs. 1—8) as lacking adequate description of the
claimed invention (see Ans. 14—15), the Examiner fails to explain why the
original language of claim 9, by itself, does not reasonably convey to one
skilled in the relevant art that the inventor, at the time the application was
filed, had possession of the claimed invention. See Ariad Pharms., Inc. v.
Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (enbanc). Further,
despite the fact that the written description as originally filed does not point
out with particularly how the “friction accessory” and the “bottom portion of
the body” are “connected,” we find that one of ordinary skill in the relevant
art would understand that these two structures are “joined, linked, or
fastened together.” Connect Definition 1, DICTIONARY.COM
UNABRIDGED, http://www.dictionary.com/browse/ connected ((verb (used
with object)), last visited Apr. 10, 2017); see Appeal Br. 8.
Thus, we do not sustain the Examiner’s rejection of claim 9, under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
Obviousness based on Wright and Bentley
The Appellant argues claims 1—11 as a group. See Appeal Br. 8—11.
We select claim 1 as the representative claim from the group. See 37 C.F.R.
§ 41.37(c)(l)(iv).
The Appellant argues that the Examiner’s finding that “friction
accessory,” as recited in claim 1, reads on the Wright’s hook 8 (see Final
Act. 5) is incorrect because hook 8 supports a load and “is not encircled by
at least a portion of the bight of cord that is received by the sheave.” Appeal
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Application 13/553,641
Br. 9. The Appellant supports this argument by pointing out that “Wright
discloses a hook 8 that includes a space 19 through which ‘a clevis or link
for supporting a load may be passed on its way to its seat in the hook 8.’
Wright, lines 55[—]65.” Id. And, the Appellant adds that “[a]s shown in
Wright, FIG. 1, the Tine 16’ goes around grooved sheave 6 without ever
touching, let alone encircling, load bearing hook 8.” Id. at 10. The
Appellant’s argument is not persuasive.
At the outset, we note that claim 1 is directed to “device for hoisting
or lowering a load” and requires, in relevant part, a friction accessory
including an elongated shank and at least one bend that “are shaped to be
encircled by at least a portion of the bight of cord.” Appeal Br., Claims
App. (emphasis added). The foregoing recitation, is directed to the shape of
the elongated shank and the at least one bend. In other words, the shape of
the elongated shank and the at least one bend is defined by reference to a
bight of a cord.3 Moreover, a cord (or a bight thereof) is not part of the
claimed invention.
Accordingly, the Appellant’s argument is not persuasive because it is
based on a premise that claim 1 requires a structure (i.e., “a friction
assembly”) that is encircled by a bight of cord. This premise is invalid. As
explained above, the reference to a “bight of cord” in the claim further limits
the shape of the friction assembly’s elongated shank and at least one bend.
Furthermore, we agree with the Examiner’s finding that “friction accessory,”
3 The “bight of cord” is similarly referenced to define the shape of the
“sheave” of claim 1; i.e., “a sheave located between the main body and the
front plate and rotatable about the bolt and shaped to receive a bight of cord
thereupon.” Appeal Br., Claims App. (emphasis added).
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Application 13/553,641
as recited in claim 1, reads on the Wright’s hook 8 because the structure of
the claimed friction assembly is the same as hook 8. See Wright, Figs. 2, 5
(hook 8); Spec. Fig. 1 (friction accessory 115). In other words, the
elongated shank and at least one bend of hook 8 are shaped to be encircled
by at least a portion of line 16.
We have considered the remainder of the Appellant’s arguments in the
Appeal and Reply Briefs and determine that they are not persuasive. Thus,
we sustain the Examiner’s rejection of claims 1—11 as unpatentable over
Wright and Bentley.
DECISION
We REVERSE the Examiner’s decision rejecting claim 9 under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
We AFFIRM the Examiner’s decision rejecting claims 1—11 under 35
U.S.C. § 103(a) as unpatentable over Wright and Bentley.
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)(l)(iv).
AFFIRMED
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