Ex Parte Mabe

Board of Patent Appeals and Interferences

Feb 24, 2010

10796806 (B.P.A.I. Feb. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JAMES H. MABE
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Appeal 2009-006014
Application 10/796,806
Technology Center 3600
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Decided: February 24, 2010
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Before: JENNIFER D. BAHR, MICHAEL W. O'NEILL, and KEN B.
BARRETT, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-006014
Application 10/796,806

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STATEMENT OF THE CASE
James H. Mabe (Appellant) appeals under 35 U.S.C. § 134 (2002)
from the Examiner's decision rejecting claims 35-45. Claims 1-34 have been
cancelled. We have jurisdiction over this appeal under 35 U.S.C. § 6 (2002).

The Invention
Appellant's claimed invention is directed to a hinge actuated by a two-
way shape memory alloy (SMA). Spec., para. 0002.
Claim 35, reproduced below, is illustrative of the claimed invention.
35. A piano hinge defining a hinge line, the
piano hinge comprising a two-way shape memory
alloy (SMA) positioned along the hinge line to
form a pin that at least partially twists when the
two-way SMA pin changes between an austenite
temperature and a martensite temperature, first and
second hinge leafs defining a passage into which
the two-way SMA pin fits, and a key-spline
arrangement rigidly securing each respective end
portion of the two-way SMA pin to the first and
second hinge leafs respectively to provide for
transfer of torque in both clockwise and
counterclockwise directions from the two-way
SMA pin to one of the hinge leafs relative to the
other of said hinge leafs, whereby the piano hinge
leafs do not pivot about the SMA pin but pivot
when a torque is applied in response to the two-
way SMA pin twisting as the temperature of the
two-way SMA pin changes between the austenite
temperature to the martensite temperature.

The Rejections
The Examiner relies upon the following as evidence of
unpatentability:
Appeal 2009-006014
Application 10/796,806

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Nishino1 JP 8-228910 Sep. 10, 1996
Perret, Jr. US 5,617,377 Apr. 1, 1997

Appellant seeks review of the Examiner's rejections under 35 U.S.C.
§ 112, second paragraph, of claims 35-45 as indefinite; under § 102(b) of
claims 35 and 36 as being anticipated by Nishino2; and under § 103(a) of
claims 41-43 and 45 as unpatentable over Nishino and Perret, Jr.3, and of
claims 37-40 and 44 as unpatentable over Nishino.

SUMMARY OF DECISION
We AFFIRM.

ISSUE
Independent claims 35 and 41 require a hinge with a two-way SMA
pin, wherein the "hinge leafs do not pivot about the SMA pin but pivot when
a torque is applied in response to the two-way SMA pin twisting as the
temperature of the two-way SMA pin changes." The Examiner concluded
that these claims are ambiguous because it is unclear how the hinge leaves
on one hand cannot pivot about the pin yet on the other hand can pivot about
the pin. Ans. 4. Appellant argues that the hinge leaves do not "freely" pivot,
but only pivot in response to the SMA pin twisting. Appeal Br. 6.

1 The Examiner and Appellant refer to this Japanese patent application as
"JP 408228910 A" or "JP '910."
2 Appellant identifies claims 41-43 and 45 as rejected under an anticipation
rejection. Appeal Br. 5. However, the Examiner rejected these claims as
unpatentable over Nishino and Perret, Jr. in an obviousness rejection. Ans.
6-7.
3 Appellant addresses the obviousness rejections together. Appeal Br. 5, 10-
11.
Appeal 2009-006014
Application 10/796,806

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The Examiner further concluded that claims 41-45 are indefinite on
the basis that the limitation "NiTinol" is a trademark, as evidenced by the
Appellant's use of the term in the Appeal Brief. Ans. 4-5; Appeal Br. 11
(referring to "NiTinol" as "NITINOL®"). Appellant does not contest this
conclusion.
Therefore, the dispositive issue is whether the language alluded to by
the Examiner renders claims 35 and 41 indefinite.

OPINION
Appellant argues that the hinge leaves do not "freely" pivot, but only
pivot in response to the SMA pin twisting. Appeal Br. 6. However, the
Appellant's proffered explanation is not commensurate with the claim
language, and does not clarify the metes and bounds of the limitation
requiring that the hinge leaves "do not pivot … but pivot." It is impossible
to give weight to both the "do not pivot" limitation and "but pivot"
limitation. See Bicon Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir.
2006) ("claims are interpreted with an eye toward giving effect to all terms
in the claim."); Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362
(Fed. Cir. 2007) (denouncing claim constructions that render phrases in
claims superfluous). Therefore, claims 35 and 41 are insolubly ambiguous.
See Exxon Research & Eng'g Co. v. United States, 265 F.3d 1371, 1375
(Fed. Cir. 2001) (a claim is indefinite if it is "insolubly ambiguous" and not
"amenable to construction").
The prior art rejections must fall because they are necessarily based
on a speculative assumption as to the meaning of the claims. See In re
Steele, 305 F.2d 859, 862-63 (CCPA 1962). It should be understood,
Appeal 2009-006014
Application 10/796,806

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however, that our decision in this regard is based solely on the indefiniteness
of the claimed subject matter, and does not reflect on the adequacy of the
prior art evidence applied in support of the rejection.
Furthermore, the Examiner concluded that claims 41-45 are indefinite
for the additional reason that the Appellant appears to use a trademark as a
claim limitation. Ans. 4-5. Appellant did not present any argument
contesting this conclusion.

CONCLUSION
Claims 35-45 are indefinite because the metes and bounds of the
"hinge leafs" that "do not pivot … but pivot" is insolubly ambiguous.
Accordingly, we sustain the Examiner's rejection of claims 35-45 as
indefinite. We do not sustain the Examiner's prior art rejections of claims
35-45 because they are necessarily based on a speculative assumption as to
the meaning of the claims.

DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007).

AFFIRMED
Appeal 2009-006014
Application 10/796,806

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