Ex Parte KinskeyDownload PDFBoard of Patent Appeals and InterferencesApr 30, 201211070203 (B.P.A.I. Apr. 30, 2012) 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. 11/070,203 03/03/2005 Terry Kinskey 2590 7590 04/30/2012 Terry Kinskey 1011 Tullamore Place Alpharetta, GA 30022-8077 EXAMINER MEISLIN, DEBRA S ART UNIT PAPER NUMBER 3727 MAIL DATE DELIVERY MODE 04/30/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte TERRY KINSKEY ____________ Appeal 2009-014585 Application 11/070,203 Technology Center 3700 ____________ Before JENNIFER D. BAHR, JOHN C. KERINS, and GAY ANN SPAHN, Administrative Patent Judges. SPAHN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Terry Kinskey (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 1-15, 17, and 18. Appellant cancelled claims 16 and 19. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE, and pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW GROUND OF REJECTION for claims 1-15, 17, and 18. Appeal 2009-014585 Application 11/070,203 2 The Claimed Subject Matter The claimed subject matter is directed to a ratcheting tool for bolt or nut removal, which is adjustable to accommodate varying sizes of bolt heads and nuts. Spec. 1, para. [0001]. Claims 1 and 10 are independent and claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A ratchet device comprising: a ratchet body; an adjustable dimension opening member to accommodate varying size bolt heads or nuts, said adjustable dimension opening member rotationally connected to said ratchet body; and a tool bit holder disposed on an end of said ratchet body opposite said adjustable dimension opening member, said tool bit holder extending in a longitudinal direction from said hatchet body. Independent claim 10 is directed to a tool for tightening or loosing a bolt or nut, including an adjustable dimension opening member, a handle, and “a tool bit holder extending in a longitudinal direction of said handle from an end of said handle opposite said adjustable dimension opening member.” The Rejections The following Examiner’s rejections are before us for review.1 1 In the “GROUNDS OF REJECTION TO BE REVIEWED ON APPEAL” section of the Brief, Appellant sets forth Grounds 1-8. Br. 5. Ground 7 is based upon 35 U.S.C. § 132(a) and discussed in Footnote 3 infra. Ground 8 is based upon 37 C.F.R. § 1.83(a) and will not be addressed for the reasons the Examiner articulated on page 10 of the Answer, i.e., the issue raised is a petitionable matter, and thus is not within the jurisdiction of the Board. See In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (citing In re Hengehold, 440 F.2d 1395, 1403-04 (CCPA 1971) (stating that there are many kinds of Appeal 2009-014585 Application 11/070,203 3 1. Claims 1-12 are rejected under 35 U.S.C. § 103(a) as unpatentable over Guimarin (US 4,112,792, issued Sep. 12, 1978) and Chen ʼ034 (US 6,431,034 B1, issued Aug. 13, 2002). Ans. 3-4. 2. Claims 1-12 and 15 are rejected under 35 U.S.C. § 103(a) as unpatentable over Guimarin and Chen ʼ034.2 Ans. 4-5. 3. Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable over Guimarin, Chen ʼ034, and Jenrich (US 928,764, issued Jul. 20, 1909). Ans. 5-6. 4. Claim14 is rejected under 35 U.S.C. § 103(a) as unpatentable over Guimarin, Chen ʼ034, and McFarland (US 3,635,654, issued Jan. 18, 1972). Ans. 6. 5. Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable over Guimarin, Chen ʼ034, and either Malkin (US 5,960,683, issued Oct. 5, 1999) or Bailey (US 5,007,312, issued Apr. 16, 1991). Ans. 6. 6. Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable over Guimarin, Chen ʼ034, and Chen ʼ167 (US 6,164,167, issued Dec. 26, 2000). Ans. 7. decisions made by examiners that are not appealable to the Board when they are not directly connected with the merits of issues involving rejections of claims, and holding that “the kind of adverse decisions of the patent examiner which are reviewable by the board of appeals must be those which relate, at least indirectly, to matters involving the rejection of claims”)); and In re Mindick, 371 F.2d 892, 894 (CCPA 1967) (holding that the refusal of an examiner to enter an amendment of claims is reviewable by petition under 37 C.F.R. § 1.181, and not by appeal to the Board). 2 This ground of rejection is presented separately from the first ground of rejection because the Examiner presents an alternative interpretation of Chen ʼ034 as is apparent from the annotated figures and the Examiner’s Response to Argument. See Ans. 3-5, 7-8. Appeal 2009-014585 Application 11/070,203 4 OPINION Claim 1-12 / 103 / Guimarin and Chen ʼ034 The Examiner finds that Guimarin discloses the subject matter of independent claims 1 and 10, “except for having a tool bit holder.” Ans. 3. The Examiner also finds that Chen ʼ034 discloses a ratchet body including a tool bit holder which extends in the longitudinal direction of the ratchet body and the Examiner attaches annotated Figures 1 and 3 of Chen ʼ 034 with an arrow labeled “tool bit holder” pointing toward the rear portion 103 of the base handle member 10 of Chen ʼ034’s tool device. Ans. 3-4. The Examiner states that “[t]he holes/cavities of Chen [ʼ034] disclose either the tray or the holder.” Ans. 7-8. The Examiner concludes that it would have been obvious to one of ordinary skill in the art “to provide the ratchet body of Guimarin with a tool bit holder that extends in a longitudinal direction of the ratchet body to allow for the storage of bits and the ready accessibility thereof as taught by Chen [ʼ034].” Ans. 4. Appellant contends that the combination of Guimarin and Chen ʼ034 does not render claim 1 unpatentable since none of Chen ʼ034’s “‘holes or cavities’ is disclosed as ‘extending in the longitudinal direction from said ratchet body’ as recited in claim 1.” Br. 7. Indeed, Appellant points out that all of Chen ʼ034’s holes or cavities are disposed transversely within the handle and thus, Appellant argues that “[t]here is no teaching or suggestion in Chen [ʼ034] of a tool bit holder extending in a longitudinal direction from the ratchet body.” Br. 8. With respect to claim 10, Appellant similarly argues that Chen ʼ034 “does not disclose a tool bit holder extending in a longitudinal direction of said handle from an end of said handle.” Br. 9. Appeal 2009-014585 Application 11/070,203 5 We agree with Appellant that Chen ʼ034’s holes or cavities do not extend in a longitudinal direction from the ratchet body as required by claim 1, and do not extend in a longitudinal direction of said handle from an end of said handle, but rather are disposed transversely of the longitudinal direction of the ratchet body. Thus, the Examiner’s finding that the holes or cavities constitute claim 1’s “tool bit holder extending in a longitudinal direction from said ratchet body” (Br., Clms. App’x.) is in error. Accordingly, we do not sustain the Examiner’s rejection of independent claims 1 and 10, and claims 2-9, 11, and 12 dependent thereon, under 35 U.S.C. § 103(a) as unpatentable over Guimarin and Chen ʼ034. Claim 1-12 and 15 / 103 / Guimarin and Chen ʼ034 The Examiner makes the same findings as discussed supra with respect to Guimarin, and additionally finds that Guimarin fails to disclose a tool bit tray; however, Chen ʼ034 discloses “a ratchet body including a tool bit tray and tool bit holder.” Ans. 4. The Examiner annotates Figures 1 and 3 of Chen ʼ034 to have an arrow leading from the words “tool bit tray” pointing toward the rear portion 103 of the base handle member 10 of Chen ʼ034’s tool device, and annotates Figure 3 of Chen ʼ034 with another arrow leading from the words “tool bit holder ‘50’” pointing to tool extension 50 which is located on the rear portion 103 of the ratchet body. Ans. 5. The Examiner alleges that “[t]he tool bit holder ‘50’ extends in a longitudinal direction from the ratchet body and is disposed on an end of the ratchet body.” Ans. 4-5. The Examiner’s position is that the “holes/cavities of Chen [ʼ034] disclose either the tray or the holder[; h]owever, when the claims define both the tray and the holder, the holes/cavities disclose the tray and the holder is disclosed as element ‘50’,” and “[e]lement ‘50’ clearly Appeal 2009-014585 Application 11/070,203 6 extends in a longitudinal direction of the handle on an opposite end from the opening member.” Ans. 8. The Examiner concludes that it would have been obvious to one of ordinary skill in the art to: (1) “provide the ratchet body of Guimarin with a tool bit tray to allow for the storage of bits and the ready accessibility thereof as taught by Chen [ʼ034];” and (2) “provide the ratchet body of Guimarin with a tool bit holder to allow for the driving of tool bits as taught by Chen [ʼ034].” Ans. 3-4. Appellant makes the same arguments as discussed supra. Since independent claim 1 and 10 only define a holder, not both a tray and a holder, the Examiner finds Chen ʼ034’s holes or cavities to constitute the holder and thus, for the same reasons as discussed supra, we do not sustain the Examiner’s rejection of independent claims 1 and 10, and claims 2-9, 11, 12, and 15 dependent thereon, under 35 U.S.C. § 103(a) as unpatentable over Guimarin and Chen ʼ034. Claim 13 / 103 / Guimarin, Chen ʼ034, and Jenrich The Examiner does not rely on Jenrich to cure the above-noted deficiency of the combination of Guimarin and Chen ʼ034 in rendering obvious claim 1, from which claim 13 indirectly depends. See Ans. 5-6, 9. Accordingly, we do not sustain the Examiner’s rejection of claim 13 under 35 U.S.C. § 103(a) as unpatentable over Guimarin, Chen ʼ034, and Jenrich. Claim 14 / 103 / Guimarin, Chen ʼ034, and McFarland The Examiner does not rely on McFarland to cure the above-noted deficiency of the combination of Guimarin and Chen ʼ034 in rendering obvious claim 1, from which claim 14 depends. See Ans. 6, 9-10. Accordingly, we do not sustain the Examiner’s rejection of claim 14 under Appeal 2009-014585 Application 11/070,203 7 35 U.S.C. § 103(a) as unpatentable over Guimarin, Chen ʼ034, and McFarland. Claim 17 / 103 / Guimarin, Chen ʼ034, and either Malkin or Bailey The Examiner does not rely on either Malkin or Bailey to cure the above-noted deficiency of the combination of Guimarin and Chen ʼ034 in rendering obvious claim 1, from which claim 17 depends.. Ans. 6, 10. Accordingly, we do not sustain the Examiner’s rejection of claim 17 under 35 U.S.C. § 103(a) as unpatentable over Guimarin, Chen ʼ034, and either Malkin or Bailey. Claim 18 / 103 / Guimarin, Chen ʼ034, and Chen ʼ167 The Examiner does not rely on Chen ʼ167 to cure the above-noted deficiency of the combination of Guimarin and Chen ʼ034 in rendering obvious claim 1, from which claim 18 depends.. Ans. 7, 10. Accordingly, we do not sustain the Examiner’s rejection of claim 13 under 35 U.S.C. § 103(a) as unpatentable over Guimarin, Chen ʼ034, and Chen ʼ167. REJECTION OF CLAIMS 1-15, 17, AND 18 UNDER 35 U.S.C. § 112, FIRST PARAGRAPH PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b) Based upon our consideration of the claimed ratchet device of independent claim 1 and tool for tightening or loosing a bolt or nut of independent claim 10 taken as a whole, claims 1-15, 17, and 18 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. The purpose of the written description requirement in 35 U.S.C. § 112, first paragraph, is to “‘clearly allow persons of ordinary skill in the art Appeal 2009-014585 Application 11/070,203 8 to recognize that [the inventor] invented what is claimed.’” Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (citing In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989)). “[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad at 1351. Independent claim 1, lines 6-8, and claims 2-9 and 13-15, 17, and 18 either directly or indirectly dependent thereon, recite “a tool bit holder disposed on an end of said ratchet body opposite said adjustable dimension opening member, said tool bit holder extending in a longitudinal direction from said ratchet body.” The recitation that the tool bit holder extends in a longitudinal direction “from said ratchet body” constitutes new matter as not being supported by the original disclosure. More particularly, on page 4, para. [0020], the original Specification states that: Handle 12 can be modified to include a tool bit tray for accommodating various tool bits such as screw driver bits or hex bits. Further, the handle 12 can be modified to include a tool bit holder extending in the longitudinal direction of the handle, at the end of the handle opposite the fork arms 20, 22. The tool bit holder accommodates various tool bits including those which can be disposed in the tool bit tray. This disclosure supports a tool bit holder extending in the longitudinal direction of the handle and located at an end of the handle opposite the fork arms 20, 22, but does not convey that Appellant was in possession of an invention in which the tool bit holder extends from the ratchet body, as distinguished from, for example, extending along the ratchet body. “[W]hile Appeal 2009-014585 Application 11/070,203 9 the description requirement does not demand any particular form of disclosure, or that the specification recite the claimed invention in haec verba, a description that merely renders the invention obvious does not satisfy the requirement. Ariad at 1352. When an explicit limitation in a claim “is not present in the written description whose benefit is sought it must be shown that a person of ordinary skill would have understood, at the time the patent application was filed, that the description requires that limitation.” Hyatt v. Boone, 146 F.3d 1348, 1353 (Fed. Cir. 1998). Thus, we find that the Specification’s disclosure in paragraph [0020] does not support that the tool bit holder extends in a longitudinal direction “from said ratchet body” as recited in claim 1. Br., Clms. App’x. Similarly, independent claim 10, and dependent claims 11 and 12 each directly dependent thereon, recite “a tool bit holder extending in a longitudinal direction of said handle from an end of said handle opposite said adjustable dimension opening member.” Br., Clms. App’x. For the same reason as discussed supra with respect to claim 1, we find that the originally filed Specification does not provide support for the tool bit holder extending in longitudinal direction of the handle “from an end of the handle opposite said adjustable dimension opening member” as recited in claim 10. Id. Accordingly, the claims do not comply with the written description requirement because the claims contain subject matter which was not described in the Specification in such a way as to reasonably convey to one skilled in the art that the inventor, at the time the application was filed, had possession of the claimed invention. Appellant’s disclosure would not reasonably convey to one of skill in the art that the inventor possessed: (1) a Appeal 2009-014585 Application 11/070,203 10 ratchet device of claim 1 having a ratchet body and a tool bit holder extending in a longitudinal direction “from said ratchet body;” and (2) a tool for tightening or loosing a bolt or nut of claim 10 having an adjustable dimension opening member, a handle, and a tool bit holder extending in a longitudinal direction of the handle “from an end of the handle opposite the adjustable dimension opening member.” In view of the foregoing, claims 1-15, 17, and 18 fail to comply with the written description requirement under 35 U.S.C. § 112, first paragraph.3 DECISION We reverse the Examiner’s rejections of: claims 1-12 under 35 U.S.C. § 103(a) as unpatentable over Guimarin and Chen ʼ034; claims 1-12 and 15 under 35 U.S.C. § 103(a) as unpatentable over Guimarin and Chen ʼ034; claim 13 under 35 U.S.C. § 103(a) as unpatentable over Guimarin, Chen ʼ034, and Jenrich; claim14 under 35 U.S.C. § 103(a) as unpatentable over Guimarin, Chen ʼ034, and McFarland; claim 17 under 35 U.S.C. § 103(a) as unpatentable over Guimarin, Chen ʼ034, and either Malkin or Bailey; and claim 18 under 35 U.S.C. § 103(a) as unpatentable over Guimarin, Chen ʼ034, and Chen ʼ167. 3 Appellant raises as an additional issue whether amended drawing Figure 2, submitted by Appellant in the Amendment, filed January 17, 2008, contains new matter. Br. 5, 16-17. (Ground 7). This issue is directed to the Examiner’s objection to and refusal to enter amended drawing Figure 2 on the basis that it introduces new matter into the disclosure. Final Rej. 5-6. This objection to and denial of entry of the drawings turn on the same issues as the rejection of claims 1-15, 17, and 18 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement, our decision with respect to the written description requirement likewise is dispositive as to the corresponding objection and denial of entry. Appeal 2009-014585 Application 11/070,203 11 Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection of claims 1-15, 17, and 18 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. FINALITY OF DECISION 37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Regarding the new ground of rejection, 37 C.F.R. § 41.50(b) also provides that Appellant must, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . 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)(1)(iv) (2007). REVERSED; 37 C.F.R. § 41.50(b) Klh Copy with citationCopy as parenthetical citation