Ex Parte Lefavour et al

Patent Trial and Appeal Board

Nov 15, 2017

12590217 (P.T.A.B. Nov. 15, 2017)

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.
12/590,217 11/04/2009 John D. Lefavour 087A.0143.U1 (US) 1891
29683 7590 11/17/2017
Harrington & Smith, Attorneys At Law, LLC
4 RESEARCH DRIVE, Suite 202
SHELTON, CT 06484-6212
EXAMINER
LEE, LAURA MICHELLE
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
11/17/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
USPTO@HSPATENT.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN D. LEFAVOUR, THOMAS R. FAUCHER,
LAWRENCE N. BROWN, and SHANE M. HOPPS
Appeal 2016-005557
Application 12/590,2171
Technology Center 3700
Before LINDA E. HORNER, GORDON D. KINDER, and
BRENT M. DOUGAL, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
John D. Lefavour et al. (Appellants) seek our review under 35 U.S.C.
§ 134(a) of the Examiner’s decision rejecting claims 1-5, 14, and 23-27.
Final Office Action (January 22, 2015) [hereinafter “Final Act.”]. Claims 6-
13, 15, and 16 are withdrawn from consideration, and claims 17-22 are
canceled. Appeal Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify Hubbell Incorporated as the real party in interest.
Appeal Brief 2 (September 8, 2015) [hereinafter “Appeal Br.”].
Appeal 2016-005557
Application 12/590,217
CLAIMED SUBJECT MATTER
Appellants’ claimed subject matter relates to “a tool having cutting
dies.” Specification 12 (filed November 4, 2009) [hereinafter “Spec.”].
Independent claim 1 is representative of the subject matter on appeal and is
reproduced below.
1. Hydraulic tool cutting dies comprising:
a first cutting die having a first mounting section and a first
blade cutting edge, wherein the first mounting section is sized
and shaped to removably attach to a hydraulic tool;
a second cutting die having a second mounting section and
a second blade cutting edge, wherein the second mounting
section is sized and shaped to removably attach to the hydraulic
tool;
wherein the first cutting die comprises a post extending
past the first cutting edge and the second cutting die comprises a
post receiving hole which has a different cross-sectional shape
than the post, where the post contacts a side of the post receiving
hole in a closed position of the first and second cutting dies
relative to each other, where the first blade cutting edge does not
extend into the post receiving hole in the closed position, where
the post is at least partially located in a plane with the first blade
cutting edge, where the post and the first blade cutting edge are
located one behind the other.
Appeal Br. 14 (Claims Appendix).
EVIDENCE
The Examiner’s decision relies upon the following evidence:
McCasland
Wiener
Yamada
US 3,597,775
US 4,381,661
US 6,487,887 B2
Aug. 10, 1971
May 3, 1983
Dec. 3, 2002
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Appeal 2016-005557
Application 12/590,217
REJECTIONS2
The Final Office Action includes the following rejections:
1. Claims 1-5, 14, and 23-27 stand rejected under 35 U.S.C. § 112,
second paragraph, as indefinite.
2. Claims 1-5, 14, 24, 25, and 27 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Yamada.
3. Claim 23 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Yamada, Wiener, and McCasland.
ANALYSIS
First Ground of Rejection: Indefiniteness
The Examiner determines that claim 1 is unclear because the preamble
is directed to dies, but the body of the claim defines the dies in terms of their
location on a hydraulic tool, and thus, “[i]t is not clear if the applicant is
trying to claim both the dies and the hydraulic tool.” Final Act. 3. The
Examiner further explains that “when the structure of the dies is dependent
upon the structure of the unclaimed hydraulic tool. . . the recitations are
improper and indefinite.” Ans. 8.
Appellants contend that the first ground of rejection should not be
sustained because “[cjlaim 1 uses a functional limitation to define something
by what it does, rather than by what it is” and this functional language is
“acceptable” and does not render the claim “vague or indefinite.” Appeal
Br. 8.
2 The Examiner withdrew a rejection of claims 1-5, 14, and 23-27 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. Examiner’s Answer 6 (February 29, 2016)
[hereinafter “Ans.”].
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Application 12/590,217
Claim 1 recites that the cutting dies are “sized and shaped to
removably attach to a hydraulic tool.” Claim 1 does not define the hydraulic
tool to which the cutting dies are capable of being attached. As such, the
claim is broad, in that the claim limitations are met as long as the cutting
dies are sized and shaped to removably attach to any hydraulic tool. This
breadth does not, in our view, render the claims indefinite.3
Claim 1 further recites that, in a “closed position,” the post extending
from the first cutting die contacts a side of a post receiving hole in the
second cutting die and the first blade cutting edge does not extend into the
post receiving hole. Appellants’ Specification describes that Figures 4 and 5
show jaws of a hydraulic tool in an open position, and that when the tool is
actuated, the jaws can pivot towards a closed position. Spec. 146; see also
id. 162 (discussing the arced path of the pin as the jaws are pivoted closed).
When these limitations of claim 1 are read in light of the Specification, they
define the “closed position” in terms of the relative positions of the first and
second cutting dies when the dies are attached to a hydraulic tool. Thus,
although the tool itself is not claimed, the limitations regarding the
interrelationship of the cutting dies when they are attached to a tool add
structural limitations to the claimed cutting dies. Although the claim
language is broad, in that the claim limitations are met as long as the cutting
3 Further, as noted by Appellants, the Examiner’s statement that the
hydraulic tool is not being claimed is incorrect for claim 14. Reply Br. 1.
Claim 14 recites a cutter comprising a hydraulic tool having pivoting jaws
and the hydraulic tool cutting dies of claim 1 mounted to the jaws. Appeal
Br. 15 (Claims Appendix).
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Appeal 2016-005557
Application 12/590,217
dies are capable of engaging in the manner claimed when attached to any
hydraulic tool, this breadth does not render the claims indefinite.
For these reasons, we do not sustain the rejection of claims 1-5, 14,
and 23-27 under 35 U.S.C. § 112, second paragraph.
Second Ground of Rejection: Anticipation by Yamada
Appellants argue that the second ground of rejection should not be
sustained because in Yamada, “both guiding protruding piece 35 and the
male blade 31 extend into the same gap 36” and, thus, the Examiner erred in
finding that Yamada discloses a first blade cutting edge which does not
extend into a post receiving hole in a closed position. Appeal Br. 10.
The Examiner explains that the limitation argued by Appellants to
distinguish over Yamada is “an intended use recitation of the interaction of
the two dies” and Yamada’s structure is capable of performing the recited
function. Ans. 8-9. In particular, the Examiner states that based on the
broadest reasonable interpretation, “closed position . . . does not necessarily
mean a cutting position,” and the Examiner finds that Figure 9 of Yamada
shows the cutting jaws in a closed position in which the protruding piece 35
is set into the post receiving hole 36 and the blade 31 does not extend into
the hole 36. Id. at 8.
Appellants respond that the Examiner’s interpretation of a “closed
position” as not being limited to a cutting position is unreasonably broad.
Reply Br. 4 (“A person skilled in the art clearly knows that ‘hydraulic
cutting dies’ have a ‘closed position’ to cut”). According to Appellants,
“[t]o state that cutting dies are not in a cutting position when they are in a
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Application 12/590,217
closed position relative to one another is not consistent with the reasonable
understanding of a person skilled in the art.” Id.
As we discussed supra, Appellants’ Specification discusses the
“closed position” of the jaws of the hydraulic tool to which the cutting dies
are attached. Spec. 146. The Specification describes that the jaws pivot
from an open position, shown in Figures 4 and 5, towards a closed position,
as indicated by arrows 100. Id. Figure 6A shows that the two blades pivot
relative to each other into a final cutting position. Id.
We find that a person having ordinary skill in the art would
understand the “closed position” of claim 1, when interpreted in light of the
Specification, to refer to a cutting position in which the cutting edges of
cutting dies engage the workpiece to cause the cutting action. Based on this
understanding, Yamada does not anticipate claim 1, because in Figure 9 of
Yamada, the blades 31, 32, and 33 are not in a closed position. Rather, in
Figure 9 of Yamada, the blades 31, 32, and 33 have not engaged the band
blade 1 to cause the cutting action. Further, as described in Yamada, when
the blades 31, 32, and 33 are in a closed position to cut band blade 1, the
male blade 31 extends into the gap portion 36 of female cutting portion 22.
Yamada, col. 3,11. 16-18, 23-25.
For these reasons, we do not sustain the anticipation rejection of
claims 1-5, 14, 24, 25 and 27, based on Yamada.
Third Ground of Rejection: Obviousness
The Examiner rejects dependent claim 23 as unpatentable over
Yamada, Wiener, and McCasland. Final Act. 6. The Examiner does not
rely on either Wiener or McCasland to remedy the deficiency in Yamada
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Application 12/590,217
discussed above. Id. at 6-7 (proposing to modify the Yamada die to have a
non-integral post). Accordingly, we do not sustain the rejection under
35 U.S.C. § 103(a) of claim 23 for the same reasons discussed above.
DECISION
The Examiner’s rejection of claims 1-5, 14, and 23-27 under
35 U.S.C. § 112, second paragraph is reversed.
The Examiner’s rejection of claims 1-5, 14, 24, 25, and 27 under
35 U.S.C. § 102(b) is reversed.
The Examiner’s rejection of claim 23 under 35 U.S.C. § 103(a) is
reversed.
REVERSED
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