Ex Parte Jones

Patent Trial and Appeal Board

Sep 21, 2012

11122753 (P.T.A.B. Sep. 21, 2012)

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.
11/122,753 05/05/2005 William Lewis Jones FKC-102-A 4704
29296 7590 09/21/2012
JULIA CHURCH DIERKER
DIERKER & ASSOCIATES, P.C.
3331 W. BIG BEAVER RD. SUITE 109
TROY, MI 48084-2813
EXAMINER
JAYNE, DARNELL M
ART UNIT PAPER NUMBER
3637
MAIL DATE DELIVERY MODE
09/21/2012 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 WILLIAM LEWIS JONES
____________

Appeal 2010-009417
Application 11/122,753
Technology Center 3600
____________

Before JENNIFER D. BAHR, LINDA E. HORNER, and
SCOTT A. DANIELS, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
William Lewis Jones (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 6, 13, and 14. Claims 1-5
and 7-9 are canceled and claims 10-12 are withdrawn from consideration.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
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THE INVENTION
Appellant’s claimed invention relates to a flooring element locator
including a separating member and a spacing member. Spec. 3, ll. 6-7.
Claims 6, 13, and 14 are independent. Claim 6, reproduced below, is
representative of the subject matter on appeal.
6. A flooring element locator, comprising:
a separating member having first and second faces
inclined at an angle to one another, so that at least a part of the
separating member is in the form of a wedge having a wider
end and a narrower end; and
a spacing member having a substantially circular cross
section,
the separating member being drivable between the
spacing member and a flooring element in a direction passing
from the wider end thereof to the narrower end thereof, thereby
exerting forces on the flooring element and the spacing member
in directions to separate the flooring element and the spacing
member, wherein the spacing member makes rolling contact
with the separating member, and wherein very little effort is
required to overcome friction between the spacing element and
the separating member.
Independent claim 13 is similar to claim 6 except that it recites the
spacing member has “a circular cross section.” All three claims recite
“wherein very little effort is required to overcome friction between the
spacing element and the separating member.” All three claims also recite “a
separating member having first and second faces inclined at an angle to one
another, so that at least a part of the separating member is in the form of a
wedge having a wider end and a narrower end” wherein the separating
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member is, or is configured to be, drivable between the spacing member and
a flooring element in a direction passing from the wider end thereof to the
narrower end thereof, thereby exerting forces on the flooring element and
the spacing member in directions to separate the flooring element and the
spacing member.
THE REJECTIONS
Appellant seeks review of the following rejections:
1. Claims 6, 13, and 14 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement.
2. Claims 6, 13, and 14 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
3. Claims 6, 13, and 14 are rejected under 35 U.S.C. § 102(b) as
anticipated by Gould (US 2,948,507; iss. Aug. 9, 1960).
ISSUES
The issues presented by this appeal are:
Does Appellant’s original disclosure reasonably convey to those
skilled in the art that Appellant had possession of a spacing member having
“a circular cross section” as of the filing date?
Does Appellant’s original disclosure reasonably convey to those
skilled in the art that Appellant had possession of a flooring element locator
“wherein very little effort is required to overcome friction between the
spacing member and the separating member” as of the filing date?
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Would a person having ordinary skill in the art understand what is
claimed by the flooring element locator being such that “very little effort is
required to overcome friction between the spacing member and the
separating member” when the claims are read in light of the Specification?
Does Gould disclose “a separating member” as called for in the
claims?
ANALYSIS
Rejection under 35 U.S.C. § 112, first paragraph
The Examiner rejected claim 13 on the basis that the recitation of “a
spacing member having a circular cross section” is not supported by the
original disclosure. Ans. 4. The original disclosure describes that the
spacing member has “a substantially circular cross section.” See Spec. 4,
ll. 13-14; Spec. 5, ll. 4-5. See also Spec. 6, l. 15 (describing separating
member 3 shown in Figure 1 as being “substantially circular in cross
section”). The term “substantially” as used in the context of Appellant’s
Specification denotes approximation. As such, one of ordinary skill in the
art would understand the Specification to convey that Appellant invented a
spacing member having a cross section that is to a great extent or degree
circular.1 This understanding would include a cross section that is fully
circular as well as cross sections that are nearly circular. As such, we find
that the original disclosure reasonably conveys to those skilled in the art that

1 An ordinary meaning of “substantially” is “[f]ully, amply; to a great extent
or degree; considerably, significantly, much.” OED Online. September
2012. Oxford University Press. 19 September 2012
.
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Appellant had possession of a spacing member having “a circular cross
section” as of the filing date.
The Examiner also rejected claims 6, 13, and 14 on the basis that the
recitation of “wherein very little effort is required to overcome friction
between the spacing element and the separating member” is not supported
by the original disclosure. Ans. 4. The original disclosure describes a prior
art flooring element locator where the spacing member “is not circular in
cross section, but has a quadrilateral cross section, two opposing sides of
which are substantially parallel, and the other two opposing sides of which
are inclined at an angle to one another.” Spec. 8, ll. 15-17; fig. 2. The
original disclosure describes:
[S]ince the separating element 2 and the spacing member 3
must slide past each other as the separating element 2 is driven,
large quantities of friction must be overcome to drive the
separating element 2. It will be appreciated that this will lead to
the need for a greater force to drive the separating element.
Spec. 8, ll. 24-28. By contrast, the original disclosure describes that when
force is applied to the separating member 2 of Appellant’s invention, “the
spacing member 3[, which is substantially circular in cross section,] will
rotate with respect to the fixed element 8 and to the separating member 2,
thereby facilitating the relative motion of these two components and
reducing the friction that must be overcome to effect the motion.” Spec. 7,
ll. 15-23; fig. 1. Based on this contrast provided in the original disclosure
between the prior art spacing member and the substantially circular spacing
member of Appellant’s invention, one of ordinary skill in the art would
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understand the original disclosure to convey that Appellant invented a
flooring element locator that reduces the friction that must be overcome to
effect motion between the spacing member and the separating member as
compared to the disclosed prior art flooring element locator, and thereby
reduces the force necessary to drive the separating element. As such, the
original disclosure contains adequate written descriptive support for the
recitation that “very little effort is required to overcome friction between the
spacing element and the separating member.” Accordingly, we do not
sustain the rejection of claims 6, 13, and 14 under 35 U.S.C. § 112, first
paragraph.
Rejection under 35 U.S.C. § 112, second paragraph
The Examiner rejected claims 6, 13, and 14 on the basis that the
recitation of “wherein very little effort is required to overcome friction
between the spacing element and the separating member” is vague in that the
Specification fails to provide an indication of how much effort is
encompassed by “very little effort.” Ans. 5-6.
Appellant notes that the prior version of this claim language recited
“substantially no effort” and that in an Office Action “the Examiner
suggested using the phrase ‘very little effort’ in place of the phrase
‘substantially no effort’ in the claims.” App. Br. 12. See Non-Final Office
Action dated August 14, 2008 (stating, “Perhaps Applicant should amend to
something similar to – very little effort --.”) Further, Appellant points to the
discussion in the Specification of the effort required to overcome friction in
the present invention as compared to the prior art, and asserts that based on
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this discussion, one skilled in the art would understand what is meant by
“very little effort.” App. Br. 13.
We examine the Specification to determine whether it provides a
standard for measuring “very little effort” as claimed.
Definiteness problems often arise when words of degree are
used in a claim. That some claim language may not be precise,
however, does not automatically render a claim invalid. When a
word of degree is used the [factfinder] must determine whether
the patent’s specification provides some standard for measuring
that degree. The [factfinder] must decide, that is, whether one
of ordinary skill in the art would understand what is claimed
when the claim is read in light of the specification.
Seattle Box Co. v. Indust. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed.
Cir. 1984) (affirming the trial court's determination that an expert would
know the limitations of the claims because the specification clearly sets forth
a standard for measuring the degree used in the claim language).
As set forth supra in our review of the original disclosure, the
Specification compares the amount of force required to overcome the
friction between the prior art spacing member and separating element with
the amount of force required to overcome the friction between Appellant’s
spacing member and separating element. Compare Spec. 7, ll. 15-23; fig. 1
and Spec. 8, ll. 13-30; fig. 2. We find that this comparison in the
Specification provides a sufficient standard by which to guide one of
ordinary skill in the art to an understanding of what is encompassed by the
claimed “very little effort.” Accordingly, we do not sustain the rejection of
claims 6, 13, and 14 under 35 U.S.C. § 112, second paragraph.
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Rejection under 35 U.S.C. § 102(b)
Claims 6, 13, and 14 call for “a separating member having first and
second faces inclined at an angle to one another, so that at least a part of the
separating member is in the form of a wedge having a wider end and a
narrower end” wherein the separating member is, or is configured to be,
drivable between the spacing member and a flooring element in a direction
passing from the wider end to the narrower end, thereby exerting forces on
the flooring element and the spacing member in directions to separate the
flooring element and the spacing member.
The Examiner found that Gould’s lever 26 is a separating element and
that the rightmost part of lever 26 is in the form of a wedge having a wider
end and a narrower end. Ans. 6. Appellant argues that “[a]s understood by
one skilled in the art, a wedge is a solid article that is usable as an inclined
plane and is often pushed between two items in order to separate them” and
that the right hand side of Gould’s lever 26 “does not appear to have
geometry sufficient to perform the same function as a wedge.” App. Br. 15.
Thus, Appellant argues that “the lever arm disclosed in Gould is not
structurally analogous to Appellant’s claimed separating member.” Reply
Br. 10.
Gould discloses a tool 14 having a plate 20 and a lever or arm 26
secured to the underside of the plate 20 by a pivot pin 25. Col. 2, ll. 43-44,
49-50, 56-58; fig. 1. The outer bottom edge 28 of lever 26 is straight and
constitutes a pressure surface adapted to engage the edge of a flooring board.
Col. 2, ll. 60-64. The right hand side of lever 26 is provided on its upper
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edge with a curved or cam surface 58. Col. 3, ll. 32-35; fig. 1. The plate 20
is likewise provided with an inclined camming surface 54. The tool also
includes a pivotable lever arm 42 having journaled to its underside “a wedge
in the form of an eccentric wheel or roller 48.” Col. 3, ll. 11-20. Gould
describes that as wheel 48 encounters the camming surfaces 54 and 58, “it
initiates an accelerated movement of the lever 26.” Col. 3, ll. 39-41. In
other words, it is wheel 48, and not lever 26, that acts as a wedge. The
movement of lever 26 about pivot 25 compels pressure edge 28 of lever 26
to press against the flooring board and force it against previously laid
boards. As such, we agree with Appellant that Gould’s lever 26 is not
structurally analogous to the claimed separating member in that it is not
drivable between the spacing member and a flooring element in a direction
passing from a wider end to a narrower end to thereby exert forces on the
flooring element and the spacing member in directions to separate the two
elements. For this reason, we do not sustain the rejection of claims 6, 13,
and 14 as anticipated by Gould.
CONCLUSIONS
Appellant’s original disclosure reasonably conveys to those skilled in
the art that Appellant had possession of a spacing member having “a circular
cross section” as of the filing date.
Appellant’s original disclosure reasonably conveys to those skilled in
the art that Appellant had possession of a flooring element locator “wherein
very little effort is required to overcome friction between the spacing
member and the separating member” as of the filing date.
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A person having ordinary skill in the art would understand what is
claimed by the flooring element locator being such that “very little effort is
required to overcome friction between the spacing member and the
separating member” when the claims are read in light of the Specification.
Gould does not disclose “a separating member” as called for in the
claims.
DECISION
We REVERSE the decision of the Examiner to reject claims 6, 13,
and 14.
REVERSED

JRG