Ex Parte Nelson

Board of Patent Appeals and Interferences

Apr 6, 2011

11387609 (B.P.A.I. Apr. 6, 2011)

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.
11/387,609 03/23/2006 Lance Nelson NELSON-4 4262
7590 04/06/2011
ROBERT NATHANS
36 STAG DRIVE
BILLERICA, MA 01821
EXAMINER
WILSON, LEE D
ART UNIT PAPER NUMBER
3727
MAIL DATE DELIVERY MODE
04/06/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte LANCE NELSON
____________________

Appeal 2009-009615
Application 11/387,609
Technology Center 3700
____________________

Before STEVEN D.A. McCARTHY, KEN B. BARRETT and
FRED A. SILVERBERG, Administrative Patent Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Lance Nelson (Appellant) seeks our review under 35 U.S.C. § 134 of
the final rejection of claims 25-40 and 42-52. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.

Appeal 2009-009615
Application 11/387,609

2
THE INVENTION
Appellant’s claimed invention is directed to a clamping apparatus for
a work-piece support table, wherein a work-piece is clamped between a
slidable clamping member and a work-piece stop member (Spec. 3:2-19).
Claim 25, reproduced below, is representative of the subject matter on
appeal.
25. Clamping apparatus comprising:
(a) a work-piece support table having an array of
precisely spaced threaded holes for receiving clamping screws
therein;
(b) an elongated clamping member having a longitudinal
axis, and movable over said work-piece support table along its
longitudinal axis for pressing an edge portion of said elongated
clamping member against a work-piece upon said work-piece
support table in turn pressed against a work-piece stop member;
and
(c) wherein a plurality of interconnected screw head
receiving portions are formed within a slot within said
elongated clamping member extending along said longitudinal
axis for receiving a screw-head of a clamping screw that presses
against a part of a particular selected screw-head receiving
portion of said plurality of screw head receiving portions, that
in turn causes a first edge portion of said clamping member to
press against a work-piece upon said work-piece support table.

THE REJECTIONS
The following rejections by the Examiner are before us for review:
1. Claims 25-39 are rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite for failing to particularly point out and distinctly
claim the subject matter which Appellant regards as the invention.
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2. Claims 25, 37, 39, 401 and 42-45 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Weber (US 5,961,108, issued Oct. 5,
1999).
3. Claims 46-52 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Weber in view of DuVernay (US 6,530,566 B1,
issued Mar. 11, 2003)2.

ISSUES
The issues before us are: (1) whether the Examiner erred in
concluding that claims 25-39 are indefinite for failing to particularly point
out and distinctly claim Appellant’s invention (App. Br. 10); (2) whether the
Examiner erred in finding that Weber describes a clamping member having a
plurality of screw head receiving portions extending in a direction which is
along the direction of movement of the clamping member, as called for in
independent claims 25, 37 and 40 (App. Br. 13); and (3) whether the
Examiner erred in concluding that the combined teachings of Weber and
DuVernay would have led a person having ordinary skill in the art to the odd
shaped work-piece member having flats positioned at progressively
increasing distances, as called for in independent claim 46 (App. Br. 16).

1 In any further prosecution on the application, in claim 40, lines 7-8, as
presented in the Claims Appendix, “said single elongated” should be
replaced by - - said - - since only “a clamping member” is called for on line
4.
2 While the statement of the rejection refers to Weber in view of DuVernay,
the Examiner’s conclusion of obviousness refers to Bernstein in view of
DuVernay (Ans. 4). Appellant states that the “use of Bernstein appears to be
in error” (App. Br. 10, 15). We agree. Accordingly, we will refer to the
rejection of the claims as being over Weber in view of DuVernay, not
Bernstein in view of DuVernay, in our analysis.
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ANALYSIS
Rejection of claims 25-39 under 35 U.S.C. § 112
The Examiner found that independent claims 25 and 27 are vague,
indefinite, awkward, and confusingly worded since the word “its” is recited
in claim 25, line 5 and claim 27, line 5 (Ans. 3). We find that the word “its”
is also recited in independent claim 37, line 5. Appellant contends that
claims 25-39 are not indefinite (App. Br. 10).
The test for definiteness under 35 U.S.C. § 112, second paragraph is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted)
We conclude that independent claims 25, 27 and 37 are clear, and that
the longitudinal axis that is being recited in line 5 of the claims is the
longitudinal axis recited in line 4 of the claims (see also Spec. 5:11-13 and
fig. 2).3
We reverse the rejection of claims 25-39 under 35 U.S.C. § 112.

Rejection of claims 25, 37, 39, 40 and 42-45 under 35 U.S.C. § 102(b) over
Weber
Appellant contends that “Weber makes it clear that his gripper moves
at right angles to its length and not along the longitudinal axis” (App. Br.
13).

3 Although we find that the language called for in independent claims 25, 27
and 37 is clear, in any future prosecution on the application, the word “its”
as called for in line 5 of independent claims 25, 27 and 37 should be
replaced by the word - - the - - or - - said - -.
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The Examiner found that Weber describes an elongated clamping
member with a plurality of receiving portions 20 in a slot 18a (Ans. 3). The
Examiner found that “[t]he portion received in a slot is shown in figure 5
and Weber is slidable as well” and that “[t]he movement as well is not really
being claimed outside of intended use.” (Ans. 6).
Independent claims 25, 37 and 40 call for, inter alia, a clamping
member having a longitudinal axis, being movable over a work-piece
support table along the longitudinal axis, wherein a plurality of screw head
receiving portions are formed within the clamping member along the
longitudinal axis.
Weber describes (1) that “[g]ripping member 12 has a first block
portion 14 and a second block portion 16 where first block portion 14 is
joined to second block portion 16 for relative movement” (col. 3, ll. 53-55);
(2) that when fastener 10 is secured to hole 6 in the fixture 2, each block
portion 14, 16 slides away from the center of bore 20 toward stop 8 to hold a
work piece W (col. 3, l. 67-col. 4, l. 14); and (3) in Figure 5 that gripper
member 12a includes a plurality of through bores 20, and first and second
block portions 14a, 16a (col. 5, ll. 58-65, and fig. 5). Weber shows in
Figure 5 that the bores 20 extend along the block portions 14a, 16a.
We find that in Figure 5 of Weber, (1) block portions 14a, 16a of
gripper 12a move relative to each other, and (2) bores 20 extend in a
direction which is perpendicular to the movement of gripper member 12a,
that is, to the movement of the block portions 14a, 16a.
Since Weber’s bores 20 extend in a direction which is perpendicular
to the movement of the block portions 14a, 16a, we reverse the rejection of
independent claims 25, 37 and 40, and dependent claims 39 and 42-45.
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Rejection of claims 46-52 under 35 U.S.C. § 103(a) as being unpatentable
over Weber and DuVernay
Claims 46-48
Appellant contends that neither Weber nor DuVernay describes the
odd shaped work-piece member (App. Br. 16).
The Examiner found that “Weber discloses the claimed invention
except for a bevel washer” (Ans. 4). Previously, in regards to the rejection
of, inter alia, claim 25, the Examiner found that Weber describes a stop
portion 8 (Ans. 3).
Claim 46 calls for, inter alia, “an odd shaped work-piece stop member
having several flats . . ., the flats being positioned at progressively increasing
distances from each flat to a central portion of said work-piece stop
member.”
Weber describes a two-sided gripping device A for holding a work-
piece W comprising stops 8, wherein the stops 8 are fastened to a fixture 2
via conventional methods or are integral with fixture 2 (col. 3, ll. 46-52).
Weber is silent as to whether stops 8 include “flats positioned at
progressively increasing distances,” as called for in independent claim 46.
The Examiner has not relied on DuVernay for any teaching regarding
“the flats being positioned at progressively increasing distances,” as called
for in claim 46 (Ans. 4).
As such, it becomes incumbent upon the Examiner to provide an
adequate basis in fact and/or technical reasoning that would support a
finding that Weber included the claimed flats. The Examiner opined, inter
alia, that “Weber discloses the claimed invention except for a bevel washer”
(Ans. 4). The Examiner has not explained what element(s) in Weber was
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considered as meeting the claimed flats. Thus, we find that the Examiner’s
statement that “Weber discloses the claimed invention except for a bevel
washer” is a conclusory statement not supported by Weber’s actual
disclosure, and is, thus, based upon speculation. We conclude that
Examiner’s rationale, which is based on the conclusory statement, is also
defective. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.”) (citation omitted). In re Warner, 379 F.2d 1011, 1017
(CCPA 1967) (“The legal conclusion of obviousness must be supported by
facts. Where the legal conclusion is not supported by facts it cannot stand.”)
Thus, we are constrained to reverse the rejection of independent claim
46 and dependent claims 47 and 48.
Claims 49-52
The Examiner has not relied on DuVernay for any teaching that would
remedy the deficiency in Weber regarding independent claims 25 and 37, as
set forth supra (see Ans. 4). Thus, we reverse the rejection of claims 49-52
which depend from independent claims 25 and 37.

CONCLUSIONS
The Examiner erred in concluding that claims 25-39 are indefinite for
failing to particularly point out and distinctly claim Appellant’s invention.
The Examiner erred in finding that Weber describes a clamping
member having a plurality of screw head receiving portions extending in a
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direction which is along the direction of movement of the clamping member,
as called for in independent claims 25, 37 and 40.
The Examiner erred in concluding that the combined teachings of
Weber and DuVernay would have led a person having ordinary skill in the
art to the odd shaped work-piece member having flats positioned at
progressively increasing distances, as called for in independent claim 46.

DECISION
The decision of the Examiner to reject claims 25-40 and 42-52 is
reversed.

REVERSED

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