Ex Parte Kimmet

Board of Patent Appeals and Interferences

Mar 28, 2011

11069252 (B.P.A.I. Mar. 28, 2011)

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.
11/069,252 03/01/2005 Stephen G. Kimmet V/O - Pro Se 8734
31027 7590 03/29/2011
STEPHEN G. KIMMET
118 GROSS STREET
TIFFIN, OH 44883
EXAMINER
PATEL, KIRAN B
ART UNIT PAPER NUMBER
3612
MAIL DATE DELIVERY MODE
03/29/2011 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 STEPHEN G. KIMMET
____________________

Appeal 2009-009069
Application 11/069,252
Technology Center 3600
____________________

Before WILLIAM F. PATE III, STEVEN D.A. McCARTHY and
MICHAEL W. O’NEILL, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-009069
Application 11/069,252

2
STATEMENT OF THE CASE 1
The Appellant appeals under 35 U.S.C. § 134 from the decision of the 2
Examiner rejecting claims 1-5 and 11-15. The Examiner rejects claims 1-5 3
and 11-15 under 35 U.S.C. § 102(b) as being anticipated by Pietryga (US 4
6,641,201 B1, issued Nov. 4, 2003). The Examiner also rejects claims 11-15 5
under 35 U.S.C. § 112, second paragraph, as being indefinite. We have 6
jurisdiction under 35 U.S.C. § 6(b). 7
We sustain the rejections of claims 1-5. We do not sustain the 8
rejections of claims 11-15. 9
Claims 1 and 11 are independent. The Appellant contests the 10
rejections of dependent claims 2-5 only on the basis of the dependency of 11
claims 2-5 from claim 1. (See, e.g., App. Br. 14). Claim 1 is illustrative of 12
the claimed subject matter: 13
1. A four door automobile, comprising: 14
a trunk disposed at the rear of a four door 15
automobile; and 16
a gate pivotably attached to the four door 17
automobile near the lower rear portion of the 18
trunk; 19
wherein, the four door automobile gate 20
being in a raised position forms the generally 21
vertical rear back panel of the trunk, and the four 22
door automobile gate being in a lowered position 23
extends substantially horizontally beyond the rear 24
of the four door automobile. 25
Appeal 2009-009069
Application 11/069,252

3
ISSUES 1
Only issues and findings of fact contested by the Appellant have been 2
considered. See Ex Parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010). 3
Three issues raised in this appeal are: 4
First, is the vehicle described by Pietryga not an 5
“automobile” so that Pietryga does not anticipate claims 1-5? 6
(See App. Br. 9-14; Reply Br. 2-3). 7
Second, are claims 11-15 indefinite because certain 8
limitations recited in the claims are not clearly shown or labeled 9
in the Appellant’s drawing figures or lack support in the 10
Specification? (See App. Br. 14-25; Ans. 3-4 and 6). 11
Third, does Pietryga fail to disclose a trunk gate 12
pivotably attached to the rear of a trunk lid, so that Pietryga 13
does not anticipate claims 11-15? (See App. Br. 6-9; Ans. 5). 14
15
FINDINGS OF FACT 16
The record supports the following findings of fact (“FF”) by a 17
preponderance of the evidence. 18
1. Pietryga describes a vehicle. Pietryga identifies the body of the 19
vehicle by the reference numeral 10 in Pietryga’s drawing figures. (See, 20
e.g., Pietryga, col. 5, ll. 37-39). 21
2. We adopt the Examiner’s finding that the ordinary usage of the 22
term “automobile” is sufficiently broad to include a “four-wheeled 23
automotive vehicle designed for passenger transportation.” (Ans. 6). The 24
Appellant does not identify any more limited usage of the term “automobile” 25
within the Appellant’s field of endeavor. The Appellant provides examples 26
Appeal 2009-009069
Application 11/069,252

4
of vehicles which the Appellant believes to be “automobiles” and other 1
examples of vehicles which the Appellant does not believe to be 2
“automobiles.” Nevertheless, the Appellant has not identified vehicle 3
characteristics which either characterize “automobiles” or exclude vehicles 4
from the scope of the term “automobile.” 5
3. The vehicle described by Pietryga is an “automobile” within the 6
ordinary usage of the term. 7
4. Pietryga’s vehicle includes a cargo compartment 14 enclosed at 8
the rear by a tailgate 18 and a cargo cover 20. (Pietryga, col. 5, ll. 42-44). 9
Pietryga does not appear to expressly describe how the tailgate 18 is 10
supported. Nevertheless, Figures 1-4 of Pietryga indicate that the tailgate 18 11
is pivotally supported by the vehicle near the lower rear portion of the trunk 12
or cargo compartment 14. 13
5. Figures 1-4 of Pietryga indicate that the tailgate 18 is not 14
pivotably attached to the rear of the trunk lid or cargo cover 20. 15
6. Pietryga does not describe a vehicle including a “trunk lid 16
having a trunk gate pivotably attached to the rear of the trunk lid.” 17
18
ANALYSIS 19
First Issue 20
The Appellant’s contention that Pietryga does not anticipate claim 1 21
because the vehicle described by Pietryga is not a “four door automobile” is 22
not persuasive. (See App. Br. 10-12). The Appellant has not formally 23
defined the term “automobile” in the Specification or otherwise disclaimed 24
an interpretation of the term sufficiently broad to encompass the vehicle 25
described by Pietryga. The Appellant’s drawing figures and examples 26
Appeal 2009-009069
Application 11/069,252

5
provided in the Specification do not constitute a formal definition of the 1
term. The examples provided in the drawing figures and the Specification 2
do not identify which features either characterize an “automobile” or 3
exclude a vehicle from the scope of the term “automobile.” (FF 2). 4
In the absence of an express definition of a claim term in the 5
specification or a clear disclaimer of scope, the claim term is interpreted as 6
broadly as the ordinary usage of the term by one of ordinary skill in the art 7
reasonably would permit. In re ICON Health & Fitness, Inc., 496 F.3d 8
1374, 1379 (Fed. Cir. 2007); In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 9
1997). The vehicle described by Pietryga is an “automobile” within the 10
ordinary usage of the term. (FF 2 and 3). We sustain the rejection of claim 11
1 as well as the rejections of its dependent claims 2-5 under § 102(b) as 12
being anticipated by Pietryga. 13
14
Second Issue 15
The Examiner rejects claims 11-15 under § 112, second paragraph, as 16
being indefinite. (Ans. 3-4). The Examiner concludes that the claims are 17
indefinite because certain limitations recited in the claims are not clearly 18
shown or labeled in the Appellant’s drawing figures or lack support in the 19
Specification. (Id.) The Examiner advises the Appellant 20
to go through the whole application and ensure that 21
the claimed matter has been described in the 22
specification and shown/labeled in the drawing in 23
such a way as to convey to one skilled in the art 24
that the inventor(s), at the time the application was 25
filed, had possession of the claimed invention. 26
(Ans. 4). 27
Appeal 2009-009069
Application 11/069,252

6
Inadequate written disclosure in the Specification is an issue under the 1
first paragraph of § 112 rather than under the second paragraph of § 112. 2
See In re Moore, 439 F.2d 1232, 1235-36 (CCPA 1971). More specifically, 3
lack of support in the Specification or a failure of the Specification to show 4
possession of the invention raises issues of lack of written description under 5
the first paragraph of § 112 rather than issues of indefiniteness under the 6
second paragraph of § 112. See Ariad Pharmas., Inc. v. Eli Lilly & Co., 598 7
F.3d 1336, 1351 (Fed. Cir. 2010)(identifying the question of “whether the 8
disclosure conveys to those skilled in the art that the inventor had possession 9
of the claimed subject matter as of the filing date” as a traditional test for 10
lack of written description under § 112, first paragraph). It is inappropriate 11
to confuse the standards under the first and second paragraphs of § 112 when 12
rejecting a claim. Moore at 1235. Since the Examiner has not stated an 13
adequate reason for rejecting claims 11-15 under the second paragraph of 14
§ 112, we do not sustain the rejection of claims 11-15 under § 112, second 15
paragraph, as indefinite. 16
17
Third Issue 18
The Appellant contends that Pietryga does not anticipate claims 11-15 19
because Pietryga fails to disclose a “trunk gate pivotably attached to the rear 20
of the trunk lid.” (App. Br. 15). Since the Appellant is factually correct (FF 21
4-6), we do not sustain the rejection of claims 11-15 under § 102(b) as being 22
anticipated by Pietryga. 23
24
DECISION 25
We AFFIRM the Examiner’s decision rejecting claims 1-5. 26
Appeal 2009-009069
Application 11/069,252

7
We REVERSE the Examiner’s decision rejecting claims 11-15. 1
No time period for taking any subsequent action in connection with 2
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 3
§ 1.136(a)(1)(iv). 4
5
AFFIRMED-IN-PART 6
7
8
9
Klh 10