Ex Parte Milka

Patent Trial and Appeal Board

Apr 3, 2015

11795666 (P.T.A.B. Apr. 3, 2015)

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.
11/795,666 07/19/2007 Anatoliy Dmytrovych Milka 12315-2 5704
7590 04/03/2015
Anatoliy Dmytrovych MILKA
Bobruiskaya Str., 46
Kharkov,, 61054
UKRAINE
EXAMINER
ADAMOS, THEODORE V
ART UNIT PAPER NUMBER
3635
MAIL DATE DELIVERY MODE
04/03/2015 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 ANATOLIY DMYTROVYCH MILKA
____________

Appeal 2013-0034361
Application 11/795,666
Technology Center 3600
____________

Before HUBERT C. LORIN, PHILIP J. HOFFMANN, and
ROBERT L. KINDER, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the rejection of
claim 3.2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and ENTER A NEW GROUND OF REJECTION
PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b).
According to the Specification, Appellant’s “invention belongs to
various areas of technique and industry where polyhedral shells are applied.”
1 Appellant identifies the real party in interest as “GST.” Br. 2.
2 Our decision references Appellant’s Specification (“Spec.,” filed July 19,
2007) and Appeal Brief (“Br.,” filed July 27, 2012), as well as the
Examiner’s Answer (“Answer,” mailed Oct. 15, 2012).

Appeal 2013-003436
Application 11/795,666

Spec. 1, ll. 5–6. We reproduce below claim 3, which is the only claim under
appeal.
3. A model elementary flexor in a form of
four-angle star-like pyramid formed by thin elastic
faces with hinge joints, having two symmetry
planes which intersect petals of flexor, wherein
each face in a projection of a middle polyhedron
into a plane of a boundary is mapped to a triangle
whose doubled intrinsic and extrinsic angles
adjacent to the boundary are equal to π/2-a and
π/2+a, respectively, for provide its well-defined
continuous free deformability inside the class of
polyhedral panels with a plane sliding of the
boundary and with a large transversal deflection,
which is caused by a non-rigid, either soft or slow,
loss of stability, characterised [sic] in that, each of
angles α, a third angle of the corresponding
triangle, is laid within the interval of (0,π/2),
during which the sizes in the plane and the height
of the flexor are general independent parameters.
Br., Claims App.
REJECTION AND PRIOR ART
Appellant appeals the Examiner’s rejection of claim 3 under 35
U.S.C. § 103(a) as unpatentable over Fredette (US 6,202,364 B1, iss. Mar.
20, 2001) and Anatoliy D. Milka, Linear bending of star-like pyramids,
Verkin Institute for Low Temperature Physics, 47, (2003), 805–810 Elsevier
SAS (received September 22, 2003), available at www.sciencedirect.com
(“Milka”).
ANALYSIS
Pursuant to 37 C.F.R. § 41.50(b), we ENTER A NEW GROUND OF
REJECTION of claim 3 under 35 U.S.C. §112, second paragraph, as the
2

Appeal 2013-003436
Application 11/795,666

claim is indefinite for failing to particularly point out and claim Appellant’s
invention.
“The specification shall conclude with one or more claims particularly
pointing out and distinctly claiming the subject matter which the applicant
regards as the invention.” 35 U.S.C. § 112, ¶ 2 (2011). In determining
whether a claim is indefinite, “we employ a lower threshold of ambiguity
when reviewing a pending claim for indefiniteness than those used by post-
issuance reviewing courts.” Ex parte Kenichi Miyazaki, 89 USPQ2d 1207,
1211 (BPAI 2008) (precedential). Our precedential Miyazaki decision
“hold[s] that if a claim is amenable to two or more plausible claim
constructions, the USPTO is justified in requiring the applicant to more
precisely define the metes and bounds of the claimed invention by holding
the claim unpatentable under 35 U.S.C. § 112, second paragraph, as
indefinite.” Id. We employ this standard because of our “duty to guard the
public against patents of ambiguous and vague scope” and “because the
applicant has an opportunity and a duty to amend the claims during
prosecution to more clearly and precisely define the metes and bounds of the
claimed invention and to more clearly and precisely put the public on notice
of the scope of the patent.” Id. at 1211–12.
Examples of indefinite language from claim 3 include, “for provide its
well-defined continuous free deformability inside the class of polyhedral
panels with a plane sliding of the boundary and with a large transversal
deflection, which is caused by a non-rigid, either soft or slow, loss of
stability,” and “each of angles α, a third angle of the corresponding triangle,
is laid within the interval of (0,π/2), during which the sizes in the plane and
the height of the flexor are general independent parameters.” Br., Claims
3

Appeal 2013-003436
Application 11/795,666

App. It is not understood, for example, whether “its” deformability refers to
the flexor, the pyramid, the faces, or something else, and thus the claim is
amenable to multiple constructions. Further, the terms “well-defined,”
“large,” “soft,” and “slow” appear to be terms of degree, and the
Specification does not appear to provide any standard to determine when
loss of stability is soft or slow, when continuous free form deformability is
well-defined, or when transversal deflection is large, and Appellant does not
provide evidence that the meaning of any of these terms may have been
ascertainable by one of ordinary skill in the art at the time of invention. By
way of further example, it is not clear to what the statements “the class of
polyhedral panels,” “a plane sliding of the boundary,” and “the sizes in the
plane,” among other statements, refer. Because several limitations of claim
3 are vague and amenable to multiple claim constructions, consistent with
our precedential holding of Miyazaki, we find that Appellant’s claim 3 is
indefinite.
We must be able to understand reasonably the subject matter
encompassed by the claim, without resorting to speculation, before we may
review properly the Examiner’s rejection under § 103(a). Because the claim
fails to satisfy the requirements of 35 U.S.C. § 112, second paragraph, and
considerable speculation would be required to understand the claim, we are
constrained to reverse, pro forma, the Examiner’s rejection under 35 U.S.C.
§ 103(a). See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art
rejection cannot be sustained if the hypothetical person of ordinary skill in
the art would have to make speculative assumptions concerning the meaning
of claim language).
4

Appeal 2013-003436
Application 11/795,666

DECISION
We REVERSE, pro forma, the Examiner’s obviousness rejection of
claim 3.
We ENTER A NEW GROUND OF REJECTION for claim 3 as
indefinite under 35 U.S.C. § 112, second paragraph.
Section 41.50(b) provides that “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” Thus,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION,
Appellant must exercise one of the following two options with respect to the
new ground of rejection to avoid termination of the appeal as to the newly-
rejected claim:
(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; or
(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)(1)(iv).

REVERSED; 37 C.F.R. § 41.50(b)

rvb
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