Ex Parte Morton-Finger

Patent Trial and Appeal Board

Feb 6, 2014

12104476 (P.T.A.B. Feb. 6, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JURGEN MORTON-FINGER
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Appeal 2012-009049
Application 12/104,476
Technology Center 1700
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Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and
GEORGE C. BEST, Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-009049
Application 12/104,476
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On April 15, 20112, the Examiner finally rejected claims 1-14 of
Application 12/104,476 under 35 U.S.C. § 112, ¶ 1 as not enabled and under
35 U.S.C. § 112, ¶ 2 as indefinite. Appellant1 seeks reversal of the rejections
of claims 1-11 and 13 pursuant to 35 U.S.C. § 134(a).2 We have jurisdiction
under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
BACKGROUND
The ’476 application describes an improved artificial turf for use in
sports fields and lawns. Spec. 1. In particular, the application describes an
improved infill material that fills the space between the blades of artificial
grass. Id. at 2.
Claim 1 is the only independent claim in the ’476 application and is
reproduced below:
1. An artificial turf comprising:
a base layer;

1 Motech GMBH Technology + Systems is identified as the real party in
interest. (App. Br. 1.)
2 Along with the Appeal Brief, Appellant filed an amendment renumbering
claims 12-14 to claims 11-13 and cancelling claim 12 (formerly claim 13).
Third Amendment 2 (Sept. 13, 2011). Although we cannot locate a
statement from the Examiner entering this amendment, the Examiner’s
Answer uses the amended numbering scheme and treats claim 12 as
cancelled. (See, e.g., Ans. 5.) We note that the renumbering of claims 12-14
is improper, 37 C.F.R. § 41.33(b) (2010) (allowing amendments only to
cancel claims or to rewrite dependent claims into independent form), but we
shall overlook this technicality due to the ministerial nature of the
amendment. Thus, we shall treat the amendment as entered.
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Application 12/104,476
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a multiplicity of blades fixed to and projecting upward from the
base layer; and
a mass of infill between the blades and on the base layer, the
infill being formed of elongated plastic fibers each having a
longitudinally extending inner part of a predetermined first
plastic and a longitudinally extending outer part bonded to the
inner part and of a predetermined second plastic different from
the first plastic.
(App. Br. 10 (Claims App’x).)
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1-11 and 13 are rejected under 35 U.S.C. § 112, ¶ 1 as not
enabled. (Ans. 5.)
2. Claims 1-11 and 13 are rejected under 35 U.S.C. § 112, ¶ 2 as
indefinite. (Ans. 7-8.)
DISCUSSION
Rejection 1. The Examiner rejected claims 1-11 and 13 under 35
U.S.C. § 112, ¶ 1 as not enabled. (Ans. 5.) For the following reasons, we
reverse this rejection.
A specification complies with the 35 U.S.C. § 112, ¶ 1 enablement
requirement if it allows a person of ordinary skill in the art to make and use
the claimed invention without undue experimentation. See In re Wright, 999
F.2d 1557, 1561 (Fed. Cir. 1993); Atlas Powder Co. v. E.I. du Pont De
Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984). Illustrative factors
to be considered in determining whether a disclosure would require undue
experimentation “include (1) the quantity of experimentation necessary,
(2) the amount of direction or guidance presented, (3) the presence or
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Application 12/104,476
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absence of working examples, (4) the nature of the invention, (5) the state of
the prior art, (6) the relative skill of those in the art, (7) the predictability or
unpredictability of the art, and (8) the breadth of the claims.” Amgen, Inc. v.
Chugai Pharm. Co., 927 F.2d 1200, 1213 (Fed. Cir. 1991); In re Wands, 858
F.2d 731, 737 (Fed. Cir. 1988). Enablement is a question of law based on
underlying factual determinations. In re Swartz, 232 F.3d 862, 863 (Fed.
Cir. 2000).
The Examiner concluded that
The claimed subject matter of ‘a mass of infill between the
blades and on the base layer, the infill being formed of
elongated plastic fibers’ is not described in the specification is
[sic, in] such a way as to enable one to make the invention.
Specifically, the specification does not describe how the infill
fibers are incorporated into the turf (i.e., the structural
relationship of the infill fibers to the turf base and blades). In
the artificial turf art, ‘infill’ commonly refers to loose particles
interspersed between the turf pile fibers. However, the broader
general definition of ‘infill,’ even within the artificial turf art,
includes any material filling space between another material
(i.e., pile fibers). The specification does not describe whether
the infill fibers are (a) unattached, short (i.e., flock length)
fibers loosely dispersed between the pile fibers, (b) longer
fibers (i.e., staple length or continuous filament length)
entangled with each other to form a batting but not physically
attached to the base, or (c) pile fibers attached to the base
forming tufts between the turf blades. The length and structural
relationship of the fibrous filler to each other and to the
artificial turf, is critical or essential to the practice of the
invention. However, such information is not included in the
claims and is not enabled by the disclosure. See In re Mayhew,
527 F.2d 1229, 188 USPQ 356 (CCPA 1976).
(Ans. 5.)
Claim construction often is a necessary step in determining whether
an application’s claims are enabled. AK Steel Corp. v. Sollac & Ugine, 344
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F.3d 1234, 1241 (Fed. Cir. 2003) (“Because a patent specification must
enable the full scope of a claimed invention, an enablement inquiry typically
begins with a construction of the claims.” (internal citation omitted)).; see
also Wands, 858 F.2d at 857 (identifying claim breadth as a factor to be
considered in an enablement analysis); MPEP § 2164.08 (“All questions of
enablement are evaluated against the claimed subject matter. The focus of
the examination inquiry is whether the substantial scope of the claim is
enabled. Accordingly, the first analytical step requires that the examiner
determine exactly what subject matter is encompassed by the claims.”
(emphasis added)). In this case, neither the Examiner nor Appellant has
provided a clear interpretation of the claim term “a mass of infill.” We,
however, believe that claim construction is a necessary first step in
determining whether the ’476 application’s claims are enabled.
During prosecution, an application’s claims are given their broadest
reasonable scope consistent with the specification. In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The words used in a claim
must be read in light of the specification, as it would be interpreted by one of
ordinary skill in the art. Id. In this case, our review of the Specification
convinces us that a person of ordinary skill in the art would understand that
Appellant’s claims are limited to longer fibers that are entangled with each
other to form a batting but which are not physically attached to the base
layer of the artificial turf. See, e.g., Spec. 2 (describing the infill as formed
of elongated plastic fibers), 3 (stating that infill fibers are “knotted
together”), 6 (describing formation of fibers into a textured yarn), 8
(discussing advantage of claimed invention relative to prior art regarding
loss of infill material), Fig. 2.
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Thus, the rejection is based on an incorrect interpretation of the ’476
application’s claims. Accordingly, the Examiner’s conclusion regarding
obvious cannot be sustained, and we reverse this rejection.
Rejection 2. The Examiner rejected claims 1-11 and 13 under U.S.C.
§ 112, ¶ 2 as indefinite. Final Rejection 5 (April 15, 2011).
Appellant failed to address this rejection in the Appeal Brief. Indeed,
Appellant stated that “[t]he sole rejection in the case is under §[ ]112 for
‘failing to comply with the enablement requirement . . .’.” (App. Br. 5.)
The Examiner maintained this rejection in the Examiner’s Answer.
(Ans. 7-8.) The Examiner further noted that “Appellant fails to specifically
argue the two 112, 2nd rejections in the Brief. However, the examiner relies
upon the arguments in support of the rejections presented in the Final
Rejection of April 15, 2011, sections 5 and 6 and the Advisory Action filed
June 10, 2011, 8th paragraph.” (Ans. 13.)
Appellant opted not to file a Reply Brief.
Despite the Examiner’s repeated and unambiguous rejection of claims
1-11 and 13 as indefinite, Appellant did not contest this rejection. Due to
this failure, we affirm the Examiner’s rejection of claims 1-11 and 13 under
35 U.S.C. § 112, ¶ 2. See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir.
2008) (holding that waiver doctrine applies in Board appeals).
CONCLUSION
We reverse the rejection of claims 1-11 and 13 under 35 U.S.C. § 112,
¶ 1 as not enabled. Because Appellant did not contest the rejection of these
claims under 35 U.S.C. § 112, ¶ 2 as indefinite, we are constrained to affirm
that rejection.

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Application 12/104,476
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

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