Ex Parte GrovesDownload PDFBoard of Patent Appeals and InterferencesJul 13, 201010443771 (B.P.A.I. Jul. 13, 2010) 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. 10/443,771 05/23/2003 Oliver J. Groves 02-1203 1101 77028 7590 07/14/2010 NovaTech IP Law 1001 Ave. Pico, Suite C500 San Clemente, CA 92673 EXAMINER STERLING, AMY JO ART UNIT PAPER NUMBER 3632 MAIL DATE DELIVERY MODE 07/14/2010 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte OLIVER J. GROVES ____________________ Appeal 2009-006191 Application 10/443,771 Technology Center 3600 ____________________ Before JOHN C. KERINS, STEVEN D.A. McCARTHY and FRED A. SILVERBERG, Administrative Patent Judges. McCARTHY, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-006191 Application 10/443,771 2 STATEMENT OF THE CASE 1 The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s 2 decision finally rejecting claims 1-9, 11-13 and 15-21. The Examiner has 3 withdrawn claims 14, 22 and 23 from consideration. We have jurisdiction 4 under 35 U.S.C. § 6(b). 5 We sustain the rejections of claims 17-20 under 35 U.S.C. § 112, 6 second paragraph, as being indefinite; the rejections of claims 1-6, 9, 11-13 7 and 15-21 under 35 U.S.C. § 103(a) as being unpatentable over Van der 8 Sluis (US 6,085,432, issued Jul. 11, 2000), Suh (US 5,649,700, issued Jul. 9 22, 1997) and McCord (US 3,681,969, issued Aug. 8, 1972); and the 10 rejections of claims 7 and 8 under § 103(a) as being unpatentable over Van 11 der Sluis, Suh, McCord and Davidson (US 4,846,173, issued Jul. 11, 1989). 12 We do not sustain the rejections of claims 1-9, 11-13 and 15-21 under 13 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement 14 requirement; and the rejections of claims 1-9, 11-13, 15, 16 and 21 under 35 15 U.S.C. § 112, second paragraph, as being indefinite.2 16 Claim 1 is illustrative of the claimed subject matter: 17 1. A leveling support apparatus, comprising: 18 a frame; 19 a retractable roller assembly to move the leveling 20 support apparatus from a first location to a second 21 location, the retractable roller assembly having a 22 first position and a second position; 23 2 We do not address the Examiner’s objections to the drawing under 37 C.F.R. § 1.83(a). As the Examiner points out (see Ans. 8), the objections to the drawing are a petitionable matter not subject to Board review. See Ex Parte Wolf, 65 USPQ 527, 528 (Bd. Pat. App. 1945). Appeal 2009-006191 Application 10/443,771 3 a low friction bearing disposed below the frame to 1 adjust movement of the leveling support apparatus 2 relatively more precisely than the retractable roller 3 assembly; 4 a platform disposed below the low friction bearing 5 and capable of supporting the low friction bearing, 6 the platform having a first surface area, wherein 7 the leveling support apparatus is operable to move 8 via the retractable roller assembly in response to 9 the roller assembly being in the first position and 10 the leveling support apparatus is operable to rest 11 upon the platform and slide within the confines of 12 the first surface in response to the roller assembly 13 being in the second position; 14 at least one adjustable leveler that at least partially 15 supports said platform and is adjustable to adjust a 16 level condition of said platform; and 17 at least one level measurement device that 18 measures a level condition of said platform. 19 Only issues and findings of fact contested by the Appellant have been 20 considered in this opinion. See Ex Parte Frye, 94 USPQ2d 1072, 1075-76 21 (BPAI 2010). 22 23 OPINION 24 Sustained Rejections 25 The definiteness requirement under the second paragraph of § 112 is 26 met only if “one skilled in the art would understand the bounds of the claim 27 when read in light of the specification.” Exxon Research & Eng’g Co. v. 28 United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). The propriety of the 29 rejections of claims 17-20 under § 112, second paragraph, turns on one 30 issue: 31 Appeal 2009-006191 Application 10/443,771 4 Is the term “relatively course movement” as recited in 1 claim 17 indefinite because it is unclear what is meant by the 2 word “course?” (See Ans. 5; Br. 18-19). 3 The Specification provides no guidance as to the meaning of the word 4 “course” in this context. Furthermore, it does not appear that the word 5 “course” has any ordinary meaning in this context. Since the Appellant has 6 had an opportunity before the Examiner to proofread and amend claim 17, 7 we do not speculate as to whether the use of the word “course” was 8 intentional. We sustain the rejection of claim 17 and its dependent claims 9 18-20 under § 112, second paragraph, as indefinite. 10 The Appellant does not separately argue any of the rejections of any 11 of claims 1-6, 9, 11-13 and 15-21 under § 103(a) as being unpatentable over 12 Van der Sluis, Suh and McCord. (See Br. 22). The Appellant does not 13 appear to contest the rejections of claims 7 and 8 under § 103(a) at all. 14 The Examiner finds (see Ans. 5), and the Appellant does not appear to 15 dispute, that Van der Sluis discloses TEFLON bearings 10, 14. The 16 Examiner further finds (see Ans. 5 and 11-12) that each of the TEFLON 17 bearings 10, 14 is “a low friction bearing disposed below the frame to adjust 18 movement of the leveling support apparatus relatively more precisely than 19 the retractable roller assembly” as recited in claim 1; “a low friction bearing 20 disposed on said platform and resting on said first surface area, wherein the 21 low friction bearing facilitates relatively finer movements than the 22 retractable roller assembly” as recited in claim 15; and “a low friction 23 bearing for providing relatively fine movement of the support system” as 24 recited in claim 21. 25 Appeal 2009-006191 Application 10/443,771 5 With respect to the rejections of claims 1-6, 9, 11-13 and 15-21 under 1 § 103(a), the Appellant contends that the term “low friction bearing” as 2 recited in independent claims 1, 15 and 21 is synonymous with a fluid 3 bearing, fluid caster, fluid film bearing and the like (Br. 21). The Appellant 4 appears to imply that the term excludes TEFLON bearings such as those 5 disclosed by Van der Sluis. 6 A claim under examination is given its broadest reasonable 7 interpretation consistent with the underlying specification. In re Am. Acad. 8 of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Therefore, the 9 propriety of the rejections of claims 1-6, 9, 11-13 and 15-21 under § 103(a) 10 as being unpatentable over Van der Sluis, Suh and McCord, as well as the 11 propriety of the rejections of claims 7 and 8 under § 103(a) as being 12 unpatentable over Van der Sluis, Suh, McCord and Davidson, turns on one 13 issue: 14 Does the broadest reasonable interpretation of the term 15 “low friction bearing” as used in independent claims 1, 15 and 16 21 exclude TEFLON bearings? 17 The Appellant’s Specification states that the low friction bearing 18 mechanism may be a conventionally available air bearing. The Specification 19 goes on to state that, “[a]dditionally, other low friction bearing mechanisms 20 may be used, as deemed suitable, such as, non-ambient gas bearings, 21 polytetrafluoroethylene, Deltrin AF, Teflon® surfaced bearings, or liquid 22 bearings, etc., for example.” (Spec. 7, para. [0028]; see also id. 2, para. 23 [0004] (“Likewise, polytetrafluoroethylene, Teflon®, or Delrin AF, with or 24 without fluid interface, are commonly used in the industry as low friction 25 Appeal 2009-006191 Application 10/443,771 6 bearings.”)). Therefore, it appears that the Appellant uses the term “low 1 friction bearing” sufficiently broadly to encompass TEFLON bearings. 2 Since the broadest reasonable interpretation of the term “low friction 3 bearing” as used in independent claims 1, 15 and 21 does not exclude 4 TEFLON bearings and since Van der Sluis discloses the use of TEFLON 5 bearings in combination with a leveling support apparatus, the Appellant’s 6 contention is not persuasive. We sustain the rejections of claims 1-6, 9, 11-7 13 and 15-213 under § 103(a) as being unpatentable over Van der Sluis, Suh 8 and McCord, as well as the rejections of claims 7 and 8 under 9 § 103(a) as being unpatentable over Van der Sluis, McCord, Suh and 10 Davidson. 11 3 Although claim 17 recites “means for supporting a low friction bearing,” claims 17-20 do not positively recite any low friction bearing. That is, claims 17-20 as written are sufficiently broad to include leveling support apparatuses which might be made, used or sold independently of any low friction bearings which the apparatuses ultimately might support. For this reason, the Appellant’s sole argument for the patentability of claims 17- 20 over Van der Sluis, McCord and Suh is not based on a limitation appearing in any of claims 17-20. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982). This is true regardless how (or whether) the term “relatively course movement” might be interpreted. Since the Appellant does not appear to contend that any interpretation of the term “relatively course movement” might affect the determination whether the subject matter of claims 17-20 would have been obvious over the teachings of Van der Sluis, McCord and Suh, we sustain the rejections of claims 17-20 under § 103(a) on the merits notwithstanding our agreement with the Examiner that the claims are indefinite. Cf. Ex Parte Ionescu, 222 USPQ 537, 540 (Bd. App. 1984)(endorsing the practice of rejecting claims under both § 112, second paragraph and § 103(a) to avoid piecemeal review). Appeal 2009-006191 Application 10/443,771 7 Rejections Not Sustained 1 The Examiner concludes that the recitation of “a low friction bearing 2 disposed below the frame” as used in claim 1 is indefinite under § 112, 3 second paragraph, because “it is unclear how this bearing is attached or 4 helps the device ‘adjust movement.’” (Ans. 4). The Appellant disagrees. 5 (Br. 17-18). 6 The term “low friction bearing disposed below said frame” as recited 7 in claim 1 is not indefinite. Claim 1 does not positively recite any 8 attachment of the low friction bearing to the frame. Furthermore, the claim 9 need not describe how to make and use the claimed subject matter, that is, 10 how a low friction bearing might be attached to a frame in a commercially-11 acceptable leveling support apparatus, as this is the role of the Specification. 12 See Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1575 13 (Fed. Cir. 1986). 14 A specification meets the enablement requirement under § 112, first 15 paragraph, if the specification enables one of ordinary skill in the art to make 16 and use the subject matter of a claim without undue experimentation. In re 17 Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). The Examiner concludes that 18 the Appellant’s Specification fails to satisfy the enablement requirement of 19 § 112, first paragraph, with respect to the limitation of the “low friction 20 bearing disposed below said frame” recited in claim 1 because “the original 21 disclosure fails to disclose how the ‘low friction bearing’ is structurally 22 related to or attached to the device in such a way that one of ordinary skill 23 could make or use the invention.” (Ans. 3). The Appellant disagrees. (Br. 24 14-15). 25 Appeal 2009-006191 Application 10/443,771 8 The Specification does not fail to satisfy the enablement requirement 1 with respect to the limitation of the “low friction bearing disposed below 2 said frame” recited in claim 1. “[T]he level of disclosure necessary to 3 satisfy section 112 of title 35 varies according to the scope of the claimed 4 invention.” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1338 (Fed. 5 Cir. 2003). At least paragraphs [0039]-[0040] on pages 11-12 of the 6 Specification, read in conjunction with Figure 4 of the Appellant’s drawing, 7 disclose how to dispose a low friction air bearing 430 below a frame 410, 8 420. Since claim 1 does not positively recite an attachment of the low 9 friction bearing to the frame, the Appellant need not describe how to make 10 such an attachment in order to satisfy the enablement requirement. 11 The Examiner concludes that the recitation of “threadably engaged 12 feet” as used in claim 4 is indefinite under § 112, second paragraph, because 13 “it is unclear how reference numeral ‘150’ [in the Appellant’s Specification 14 and drawing] can be considered ‘threaded’ or ‘feet.’” (Ans. 4). Once again, 15 the Appellant disagrees. (Br. 18). 16 The term “threadably engaged feet” as recited in claim 4 is not 17 indefinite. One of ordinary skill in the art would understand what is meant 18 by “threadably engaged feet.” As the Appellant points out (see id.), this 19 understanding of one of ordinary skill in the art is evidenced by column 2, 20 lines 48-58 of Davidson, read together with reference numeral 14 in Figures 21 2, 4 and 5 of Davidson. Since one of ordinary skill in the art would 22 understand the meaning of the term, claim 4 is not indefinite. 23 The Examiner concludes that the Specification fails to enable how the 24 levelers recited in claim 4 are “threadably engaged” under § 112, first 25 Appeal 2009-006191 Application 10/443,771 9 paragraph, because “the Specification fails to show how or where the 1 levelers are threaded.” (Ans. 3). The Appellant disagrees. (Br. 15). 2 The Specification does not fail to enable how the levelers recited in 3 claim 4 are “threadably engaged.” As the Appellant points out (see id.), the 4 Specification discloses that, 5 [t]o accommodate an out-of-level condition, an 6 operator may adjust the appropriate leveling feet 7 150 to adjust the assembly 100 to place an upper 8 surface of the substructure 110 within a 9 substantially level plane as assisted by monitoring 10 of the bubble levels 160. Adjustment of the 11 leveling feet 150 may occur manually, for example 12 by rotating threadably engaged leveling feet 150. 13 (Spec. 8, para. [0031]). 14 “[A] patent need not teach . . . what is well known in the art” in order 15 to comply with the enablement requirement. Hybritech Inc. v. Monoclonal 16 Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986). Suitable structures 17 for leveling screws are well known in the art, as once again evidenced by 18 Davidson as well as Suh. In view of this knowledge, it is not apparent that 19 one of ordinary skill in the art familiar with Davidson and Suh would require 20 undue experimentation to determine how or where to thread the levelers for 21 vertical adjustment. The evidence here does not show that one of ordinary 22 skill in the art would have required undue experimentation to make or use 23 the “threadably engaged” feet. 24 The Examiner concludes that the Specification fails to enable either 25 the “retractable roller assembly” recited in claim 1 or the “retractable caster 26 wheel” as recited in claim 11 under § 112, first paragraph, because the 27 Appeal 2009-006191 Application 10/443,771 10 Specification “fails to adequately teach how the device retracts.” (Ans. 3). 1 The Appellant disagrees. (Br. 15-16). 2 The Specification does not fail to enable the “retractable roller 3 assembly” recited in claim 1 or the “retractable caster wheel” as recited in 4 claim 11. As the Appellant points out (see id.), at least paragraph [0030] on 5 pages 7-8 of the Specification, read in conjunction with Figure 1 of the 6 Appellant’s drawing, discloses how to retract the retractable roller or the 7 retractable caster wheel. Furthermore, the Appellant asserts in paragraph 8 [0030] of the Specification, and the Examiner does not find to the contrary, 9 that lockable load/no load type wheel assemblies capable of such retraction 10 are commonly available in the industry. These statements imply that one of 11 ordinary skill in the art could make (or procure) and use a retractable roller 12 assembly or a retractable caster wheel without undue experimentation. 13 The Examiner concludes that the limitation “wherein the low friction 14 bearing facilitates relatively finer movements than the retractable roller 15 assembly” in claim 15 is indefinite under § 112, second paragraph, because 16 “it is unclear what is meant by ‘finer movement’” as well as because “[i]t is 17 unclear by what mechanism the [low] friction bearing accomplishes finer 18 movements than the roller assembly.” (Ans. 5). Once again, the Appellant 19 disagrees. (Br. 18). 20 The term “wherein the low friction bearing facilitates relatively finer 21 movements than the retractable roller assembly” as recited in claim 15 is not 22 indefinite. The terms “fine” and “finer” have ordinary meanings consistent 23 with the usage of the terms in the Specification, as at paragraphs [0051] and 24 [0052] on page 16. The term “fine,” for example, means “very small.” (See 25 WEBSTER’S THIRD NEW INT’L DICTIONARY 852 (G&C Merriam Co. 26 Appeal 2009-006191 Application 10/443,771 11 1971)(“fine, entry 3, def. 2(a)(1)). The term “relatively fine movement” 1 means a very small movement relative to a movement which might be 2 facilitated by the retractable roller assembly. Claim 15 is definite, even 3 assuming, for purposes of this appeal only, that the claim does not describe 4 how the low friction bearing might facilitate or provide for relatively fine 5 movements. 6 The Examiner concludes that the Specification fails to enable the 7 limitation “wherein the low friction bearing facilitates relatively finer 8 movements than the retractable roller assembly” in claim 15 or the limitation 9 “wherein the low friction bearing provides for relatively fine movement of 10 the leveling support” in claim 17 under § 112, first paragraph, because “[t]he 11 original disclosure does not adequately teach this concept, does not teach 12 ‘finer movements’ and does not teach the movements of both devices 13 relative to each other.” (Ans. 4). The Appellant disagrees. (Br. 14-15). 14 The Specification discloses that the low friction bearing may be a low 15 friction air bearing mechanism. (E.g., Spec. 7, para. [0028]). The 16 Specification describes an air bearing mechanism as creating “an air pocket 17 with a ‘leaking’ film of air between the assembly floor and a platform above 18 the air bearing, which platform operates to support the object being moved.” 19 (Spec. 1, para. [0003]). It follows that the lateral domain of motion of an 20 object supported by the air pocket is limited by the lateral extent of the air 21 pocket. The Specification acknowledges this limitation when it describes 22 providing a restraining ring 130 “to prevent out-of-domain operation.” 23 (Spec. 7, para. [0029]). 24 On the other hand, the Appellant correctly points out that the 25 Specification indicates that the retractable roller assembly may be used to 26 Appeal 2009-006191 Application 10/443,771 12 move heavy objects such as multi-ton turbine engines several tens of yards 1 or more along a tarmac or aircraft hangar floor which has not been leveled to 2 the extent necessary to mount a low friction air bearing directly on the floor. 3 (Br. 14; see, e.g., Spec. 10, para. [0035]). Such “coarse” movement is 4 beyond the lateral domain of movement achievable over the low friction air 5 bearing mechanism alone. By comparison with such “coarse” movements, 6 the range of movement provided or facilitated by the low friction air bearing 7 mechanism is relatively “fine.” (See, e.g., Spec. 16, para. [0052]). Although 8 the Specification is not a model of clarity on this point, one of ordinary skill 9 in the art would understand from reading the Specification how to use the 10 low friction bearing to facilitate or provide for relatively finer movements 11 than the roller assemblies. 12 The Examiner concludes that the Specification fails to enable the 13 “means for supporting said bearing,” “wheeled means,” “means for 14 retracting the wheeled means,” “means for adjusting a level condition of said 15 supporting means” and “measuring means” recited in claim 21. (See Ans. 16 4). The Examiner also concludes that the Specification fails to enable 17 similar “means-plus-function” recitations in claim 17. (See id.) The 18 Appellant disagrees. (Br. 15-16 and 17). 19 As the Appellant points out (see Br. 9-10), the substructure 110 20 described at page 6, paragraphs [0026]-[0027] of the Specification, and 21 shown in Figure 1 of the Appellant’s drawing, corresponds to the “means for 22 supporting a low friction bearing” of claim 17 and the “means for supporting 23 said bearing” of claim 21. The wheel assemblies 170 described at page 7, 24 paragraph [0030] and page 8, paragraph [0032] of the Specification, and 25 shown in Figure 1 of the Appellant’s drawing, correspond to the “wheeled 26 Appeal 2009-006191 Application 10/443,771 13 means” of claims 17 and 21. The adjustable screws 175 described at page 8, 1 paragraph [0030] of the Specification, and shown in Figure 1 of the 2 Appellant’s drawing, correspond to the “means for retracting the wheeled 3 means” of claims 17 and 21. The leveling feet 150 described at page 8, 4 paragraph [0031] of the Specification, and shown in Figure 1 of the 5 Appellant’s drawing, correspond to the “means for adjusting a level 6 condition of said support means” of claims 17 and 21. The bubble levels 7 160, also described at page 8, paragraph [0031] of the Specification, and 8 shown in Figure 1 of the Appellant’s drawing, correspond to the “measuring 9 means” of claims 17 and 21. 10 Since the Specification describes corresponding structure for each 11 means recited in claims 17 and 21, the Examiner’s conclusion that “the 12 specification fails to adequately teach what is meant by all of these” (Ans. 4) 13 is not sufficiently detailed to explain how the Specification might fail to 14 enable these limitations. 15 Finally, the Examiner concludes that the Specification fails to enable 16 claims 17-21 because “the specification does not adequately teach how the 17 rolling means is ‘locked.’” (Ans. 4). The term “locked” does not appear in 18 any of appealed claims 17-21. Consequently, there is no requirement for the 19 Specification to describe how to make or use “locked” rolling means in 20 order for claims 17-21 to be enabled. Even assuming, for purposes of this 21 appeal only, that the Specification must describe how to “lock” the rolling 22 means to adequately enable claims 17-21, the Appellant asserts that lockable 23 load/no load type wheel assemblies are commonly available in the industry. 24 (Spec. 7 para. [0030]). The Examiner does not appear to find to the 25 contrary. This supports the Appellant’s assertion that “lockable” wheel 26 Appeal 2009-006191 Application 10/443,771 14 assemblies are well known to one of ordinary skill in the art. (See Br. 15-1 16). Since “a patent need not teach . . . what is well known in the art” in 2 order to comply with the enablement requirement, Hybritech, 802 F.2d at 3 1384, it has not been shown that the Specification fails to enable the 4 “wheeled means” or the “means for retracting the wheeled means” recited in 5 claims 17 and 21. 6 For these reasons, we do not sustain the rejections of claims 1-9, 11-7 13 and 15-21 under 35 U.S.C. § 112, first paragraph, or the rejections of 8 claims 1-9, 11-13, 15, 16 and 21 under 35 U.S.C. § 112, second paragraph. 9 10 DECISION 11 We AFFIRM the Examiner’s decision rejecting claims 1-9, 11-13 and 12 15-21. 13 No time period for taking any subsequent action in connection with 14 this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 15 § 1.136(a)(1)(iv) (2007). 16 17 AFFIRMED 18 19 mls 20 21 NOVATECH IP LAW 22 1001 AVE. PICO, SUITE C500 23 SAN CLEMENTE, CA 92673 24 Copy with citationCopy as parenthetical citation