Ex Parte Moore

Patent Trial and Appeal Board

Oct 30, 2017

13320344 (P.T.A.B. Oct. 30, 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.
13/320,344 11/14/2011 Philip Moore 6078
7590 10/30/2017
Quine Intellectual Property Law Group, P.C.
P.O. Box 458
Alameda, CA 94501
EXAMINER
PERREAULT, ANDREW D
ART UNIT PAPER NUMBER
3788
MAIL DATE DELIVERY MODE
10/30/2017 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 PHILIP MOORE
____________

Appeal 2016-000913
Application 13/320,344
Technology Center 3700
____________

Before STEFAN STAICOVICI, KEN B. BARRETT, and
FREDERICK C. LANEY, Administrative Patent Judges.

LANEY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Philip Moore (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner’s final decision rejecting claims 15–21.1 We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
We REVERSE.

1 Claims 1–14 have been canceled. Appeal Br. 9 (Claims App.).
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INVENTION
Appellant’s invention relates “to a scaffold tray adapted for holding
tools and for use on a scaffold tower.” Spec. 1.
Claim 15 is independent and demonstrative of the claimed inventions,
and reads as follows:
15. A scaffold tool tray comprising:
a base with four edges;
four sides comprising bottom edges and mounted
peripherally around the base forming a tray with lips extending
up from each of the base edges; and,
two recesses in the bottom edges of each of two of the
sides, which two sides oppose each other across the tray;
wherein the tray is adapted to receive and be supported
by a pair [of] poles each in separate pairs of the recesses.

REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 18–20 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
II. The Examiner rejected claims 15–21 under 35 U.S.C. § 112,
second paragraph, as indefinite.
III. The Examiner rejected claims 15–17 under 35 U.S.C. § 102(b)
as anticipated by Carlin (US 5,265,729, iss. Nov. 30, 1993).
IV. The Examiner rejected claims 18–20 under 35 U.S.C. § 103(a)
as unpatentable over Carlin and Korten (US 3,889,805, iss. June
17, 1975).
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V. The Examiner rejected claim 21 under 35 U.S.C. § 103(a) as
unpatentable over Carlin and Harris (US 6,357,616 B1, iss.
Mar. 19, 2002).

ANALYSIS
Rejection I – Written Description
The Examiner finds the limitation in claims 18–20 for “opposing sides
not comprising the recesses” lacks support in the Specification. Final Act.
2–3; Appeal Br. 9 (Claims App.). More specifically, the Examiner finds this
language is a “negative limitation” that the Specification does not support.
Id. at 2. Appellant argues this finding by the Examiner is error. See Appeal
Br. 3; Reply Br. 2. For the following reasons, we agree.
The standard for determining whether the written description
requirement has been met has been stated as follows:
Although [the applicant] does not have to describe exactly the
subject matter claimed, . . . the description must clearly allow
persons of ordinary skill in the art to recognize that [he or she]
invented what is claimed. . . . The test for sufficiency of
support in [an] application is whether the disclosure of the
application relied upon reasonably conveys to the artisan that
the inventor had possession at that time of the later claimed
subject matter.
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991) (citations
and quotations omitted). Here, Appellant’s Figure 1 shows clearly a tray
with two recesses within two opposing sides and two other opposing sides
without recesses. See Spec., Fig. 1. As a result, a preponderance of the
evidence does not support the Examiner’s finding that the Specification fails
to demonstrate Appellant had possession of the claimed subject matter.
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Therefore, we do not sustain the written description rejection of claims 18–
20.

Rejection II – Indefiniteness
The Examiner concludes claims 15–21 are indefinite for two reasons.
First, the Examiner finds “forming a tray” in the body of claim 15 creates
uncertainty regarding whether the subsequent references to “the tray” are
referring to the “scaffold tool tray” in the preamble or the body, which the
Examiner concludes may or may not be a tray. Final Act. 4. Second, the
Examiner determines the phrase “two recesses in the bottom edges of each
of two of the sides, which two sides oppose each other across the tray,” also
in claim 15, is ambiguous because claim 15 never specifically recites that
two sides oppose each other. Id. Claims 16–21 are held indefinite because
they each depend from claim 15. Id. at 4, 5.
The preamble of claim 15 describes the intended use for the claimed
invention as a “scaffold tool tray.” Appeal Br. 9 (Claims App.). The body
of the claim describes a structure that has, inter alia, “a base with four
edges; four sides . . . mounted peripherally around the base forming a tray
with lips extending up from each of the base edges.” Id. The Examiner
asserts that the phrase “forming a tray” fails to positively recite a tray
structure and, therefore, a tray is not required by the body of claim 15. Final
Act. 4. As a result, the Examiner reaches the conclusion that it is not clear
whether the subsequent claim references to “the tray” are referring to the
scaffold tool tray in the preamble or the base recited in body, which only
needs to be capable of being constructed as a tray, but is not necessarily a
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tray. Id. The Examiner’s conclusion that the body of claim 15 fails to
positively recite a tray is unfounded, however.
Immediately preceding the “forming a tray with lips extending up
from each of the base edges” limitation in claim 15, the claim expressly
recites “a base with four edges” and “four sides” that are “mounted
peripherally around the base.” In this context, the plain meaning of the
phrase “forming a tray” requires a tray structure having a base surrounded
by four sides that are connected to the four peripheral edges of the base.
Consistent with this interpretation, the Specification describes a tray as a
rectangular structure that has a base and surrounding walls. See Spec. 5–6,
Fig. 1. The Examiner notably does not cite to any legal authority, intrinsic
evidence, or extrinsic evidence that supports construing “forming” as simply
meaning “capable of” or “suitable for,” nor are we able to find any support.
As a result, even the broadest reasonable interpretation of claim 15 requires
a tray structure and the Examiner’s contrary interpretation was error.
Because the references to “the tray” in claim 15, as well as the dependent
claims, are directed to the tray structure previously described in the claim
body, we are not persuaded the use of “a tray” in the body of claim 15
renders the claim indefinite.
Likewise, we are not persuaded the phrase “two recesses in the bottom
edges of each of two of the sides, which two sides oppose each other across
the tray” in claim 15 is ambiguous. Ambiguity exists with this phrase,
according to the Examiner, because the claim does not affirmatively recite
that two of the four sides oppose each other. Final Act. 4. Although claim
15 does not use the express words “two sides oppose each other,” it does
recite “a base with four edges” and “four sides” that are “mounted
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peripherally around the base.” Appeal Br. 9 (Claims App.) (emphasis
added). Because the base is surrounded by the recited four sides mounted to
the four base edges, a person of ordinary skill in the art would readily
understand that the claim describes a pair of sides that oppose each other. In
addition, even if this could be disputed, any reasonable ambiguity is erased
by the express recitation that the recesses are in “each of two of the sides”
that “oppose each other across the tray.”
Therefore, for the foregoing reasons, the Examiner has not established
persuasively ambiguities exist with the limitations of claim 15.
Accordingly, we do not sustain the Examiner’s indefiniteness rejection of
claims 15–21.

Rejection III – Anticipation
In determining Carlin anticipates claims 15–17, the Examiner finds
element “33” in Carlin constituting the recess limitations claim 15 recites.
Final Act. 5. Carlin describes a tray with side walls 28 that each include “a
pair of transversely spaced inner and outer parallel side webs 29 and 30
respectively and are joined [at] their top edges by [a] cross web[] 32. Carlin,
col. 2, ll. 63–66. Carlin identifies reference 33 as a “notch” that is formed in
the outer side web 30. Id. col. 2, 66–68, Figs. 1, 2. Notably, a notch 33 is
not formed in the inner side web 29 and, as such, the notch is only formed in
a portion of side wall bottom edge. See id. Appellant challenges whether
the notches 33 that Carlin discloses constitute the claimed recesses because
they do not extend entirely through the opposing side walls in a
configuration that is designed to receive a pole to support the tray structure.
Appeal Br. 5; Reply Br. 3–4. Although not framed expressly as a claim
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construction dispute, Appellant’s challenge rests on the appropriate scope of
the recesses that claim 15 recite. More specifically, the dispositive issue is
whether the claimed “recesses” broadly covers notches that extend through
only a portion of the bottom edges of the sides.
The relevant part of claim 15 recites, “two recesses in the bottom
edges of each of two of the sides, which two sides oppose each other across
the tray; wherein the tray is adapted to receive and be supported by a pair
[of] poles each in separate pairs of the recesses.” The Federal Circuit
described recently the inquiry we should follow to determine the broadest
reasonable construction:
The correct inquiry in giving a claim term its broadest reasonable
interpretation in light of the specification is not whether the
specification proscribes or precludes some broad reading of the
claim term adopted by the examiner. And it is not simply an
interpretation that is not inconsistent with the specification. It is
an interpretation that corresponds with what and how the
inventor describes his invention in the specification, i.e., an
interpretation that is consistent with the specification.
In re Smith, 871 F.3d 1375, 1383–84 (Fed. Cir. 2017) (internal quotation
marks and citation omitted). Applying this inquiry, we conclude the claimed
recesses must define a throughway in the bottom edges of the respective tray
sides.
The Specification in this case summarizes the invention as
provid[ing] a lipped tray, intended for use on scaffold towers
and adapted to hold builders' tools in use, and characteri[z]ed
by the feature that it incorporates on each of its two opposite
side edge regions a means which, when the tray is in use,
locates the tray between horizontally successive rails of the
tower in a manner which also causes the tray to engage with
one at least of those rails and be supported, in use, by each of
them.
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Spec. 3–4. The Specification describes an exemplary embodiment in which
the means for securing and engaging the scaffold rails are recessed arcs 26a,
26b, 28a, and 28b that are designed to receive scaffolding poles 27. Id. at 5–
6, Fig. 1. “When in use, the tray 10 is positioned to engage two substantially
horizontally successive scaffolding poles, within the arcs 26a, 26b, 28a and
28b.” Id. at 6, Fig. 1. The Specification explains that, as a result of the
recesses, the “tray is . . . held between the scaffolding poles, creating a
substantially horizontal lipped surface for holding tradesman's tools.” Id.
Turning now to the language of claim 15, with the above Specification
description in mind, the meaning of the term “recess” in the context of “two
recesses in the bottom edges of each of two of the sides, which two sides
oppose each other across the tray” is clear. We note that there is an absence
of any language indicating the recess can be in only a portion of the bottom
edge of the side. To the contrary, the claim refers to the side and bottom
edge a whole unit. While we also acknowledge there is no language that
expressly excludes the recess from being in only a portion of the bottom
edge of the side, the broadest reasonable interpretation of the term “recess,”
which is guided by the Specification and how the inventor describes the
invention, is a space or gap within the entire bottom edge of the side.
In view of the proper interpretation of “recesses” within the context of
claim 15, notches 33 in Carlin do not constitute the claimed recesses. Carlin
expressly teaches that these notches only extend through the outer web 30 of
each sidewall 28 and there are no recesses in the inner web 29 of the
sidewall 28. Carlin col. 2, 63–68, Figs. 1, 2. As a result, a preponderance of
the evidence fails to support the Examiner’s finding Carlin discloses each
and every element of claim 15. Therefore, we do not sustain the Examiner’s
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anticipation rejection of claim 15, as well as claims 16 and 17 depending
therefrom.

Rejections IV and V – Obviousness
In the obviousness determinations of claims 18–21 in Rejections IV
and V, the Examiner incorporates the previous findings that Carlin discloses
each and every element claim 15 recites. See Final Act. 5–6. Because these
rejections do not rely on either Korten or Harris to cure the deficiencies with
the Examiner’s reliance on Carlin to disclose the recess limitations claim 15
recites and because claims 18–21 depend from claim 15, for the reasons
discussed above (see supra Rejection III) we do not sustain the rejections of
claims 18–21.

DECISION
The Examiner’s decision to reject claims 15–21 is reversed.

REVERSED