Ex Parte Groves

Board of Patent Appeals and Interferences

Jul 13, 2010

10443771 (B.P.A.I. Jul. 13, 2010)

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.
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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withdrawn claims 14, 22 and 23 from consideration.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).
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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
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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
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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
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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).
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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
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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
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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
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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
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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
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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
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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
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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
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