Ex Parte Norman

Patent Trial and Appeal Board

Dec 8, 2016

12414648 (P.T.A.B. Dec. 8, 2016)

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.
12/414,648 03/30/2009 Ralph S. Norman PNORMHC 1308
7590
Thompson E. Fehr
Goldenwest Corporate Center
Suite 300
5025 Adams Avenue
Ogden, UT 84403
12/08/2016 EXAMINER
NGUYEN, VU Q
ART UNIT PAPER NUMBER
3657
MAIL DATE DELIVERY MODE
12/08/2016 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 RALPH S. NORMAN1
Appeal 2013-009485
Application 12/414,648
Technology Center 3600
Before STEFAN STAICOVICI, JAMES P. CALVE, and
AMANDA F. WIEKER, Administrative Patent Judges.
WIEKER, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellant requests rehearing of the new ground of rejection entered
the Decision mailed August 10, 2016 (“Dec.”), pursuant to 37 C.F.R.
§ 41.50(b). Requests for Rehearing are limited to matters overlooked or
misapprehended by a Panel in rendering a decision. See 37 C.F.R. § 41.52
The Request for Rehearing (“Req. Reh’g”) is DENIED.
In the Decision, the Board reversed the Examiner’s rejections of
claims 1—32, pro forma, under 35 U.S.C. §§ 102(e) and 103(a), as any
1 According to Appellant, the inventor, Ralph S. Norman, is the Real Party
in Interest. Appeal Br. 4.
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Application 12/414,648
analysis of the prior art would have involved a speculative interpretation of
the claims. Dec. 3. Pursuant to the Board’s authority under 37 C.F.R.
§ 41.50(b), the Board also entered new grounds of rejection of claims 1—32
as lacking written description and as indefinite under 35U.S.C. § 112, first
and second paragraphs. Id. at 4—9. Appellant argues that the Board erred in
rejecting the claims. See generally Req. Reh’g. We address each of
Appellant’s arguments.
Written Description under 35 U.S.C. § 112, First Paragraph
Appellant argues that in light of the Declaration of Ralph S. Norman,
the named inventor (the “Norman Declaration,” dated May 11, 2011), a
person of ordinary skill in the art “would understand the amended claim 1 to
have the same meaning as the original claim 1, for which support in the
original Specification is found at paragraph 0017.” Req. Reh’g 2—3.
Appellant also argues that the Board erred in finding that the Norman
Declaration does not demonstrate possession of the claimed subject matter
because “it is implausible that [Mr. Norman] did not, at that time, possess
the knowledge of one of ordinary skill in the field” and “[i]t cannot be
reasonably disputed that Mr. Norman, at the time the original application
was filed, knew the information provided in his Declaration.” Id. at 5—6.
We are unpersuaded by this argument. The written description
requirement of 35 U.S.C. § 112, first paragraph, requires that the original
disclosure “reasonably conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date.” Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc) (citation omitted). Importantly, “it is the specification itself that must
demonstrate possession. And while the description requirement does not
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Application 12/414,648
demand any particular form of disclosure, or that the specification recite the
claimed invention in haec verba, a description that merely renders the
invention obvious does not satisfy the requirement.” Id. at 1352 (citations
omitted) (emphasis added).
In this case, the original Specification does not discuss a range as
recited in amended claim 1, i.e., a range that relates to steering mechanism
rotation generally, or to a steering mechanism rotated by an operator versus
a steering mechanism rotated when a steerable portion of the vehicle hits an
obstacle. See Dec. 5—6. The Norman Declaration is insufficient to remedy
this deficiency for several reasons. First, the Norman Declaration fails to
establish that Mr. Norman, the inventor, is a person of ordinary skill in the
art. As our reviewing court has noted, “[ijnventors, as a class, according to
the concepts underlying the Constitution and the statutes that have created
the patent system, possess something—call it what you will—which sets
them apart from the workers of ordinary skill.” Standard Oil Co. v. Am.
Cyanamid Co., 11A F.2d 448, 454 (Fed. Cir. 1985). The relevant perspective
from which written descriptive support must be evaluated is that of a person
of ordinary skill in the art, e.g., the “hypothetical person who is presumed to
know the relevant art,” not the inventor himself, without evidence
establishing that the inventor is, indeed, a person of ordinary skill in the art
or can convey the perspective of such a person. In re GPAC Inc., 57 F.3d
1573, 1579 (Fed. Cir. 1995); see also id.
Second, the Declaration states simply that the claimed range was
“well known,” but does not establish that the claimed range was known “to
have the same meaning” as the range that was claimed and supported
originally, as argued by Appellant. Req. Reh’g 2—3; see also Norman
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Declaration 1—2. To this end, the Declaration states that the internal cross-
sectional area is selected to be within a range as now recited in claim 1
“because such rotation tends to be much faster at speeds which one of
ordinary skill in the art knows makes damping desirable.” Norman
Declaration 2. The Declaration continues on to state that the claimed range
“dampens the rotation of the steering mechanism and, consequently, the
rotation of the steerable portion of the vehicle.” Id. This language is not
commensurate with the language of original claim 1, which recited “a range
that will permit fluid placed in the circuit to flow freely at high speed but
that will also create the fluid pressure necessary for effective damping,” and
does not demonstrate that the original and amended claims have “the same
meaning.” Therefore, Appellant’s position that a person of ordinary skill in
the art “would understand the amended claim 1 to have the same meaning as
the original claim 1 ” is mere attorney argument that is unsupported by
persuasive evidence.2 Req. Reh’g 3; see also In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of
evidence.”).
In light of the foregoing, the Norman Declaration does not establish
that a person of ordinary skill in the art would recognize that the inventor
possessed the claimed subject matter from the original Specification.
2 Mr. Norman states that it was unknown that “the cross-sectional area for
every portion of the circuit must be maintained within the aforementioned
range” “when a control valve is located at an intermediate portion of the
circuit remote from the housing.” Id. However, he does not explain how
such artisans would understand him to possess this claimed feature when
original claim 1 did not recite this claimed range feature in this context when
used with the steering mechanism, as recited in current claim 1.
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Further, even if the Specification, read together with the Norman
Declaration, were argued to render obvious the claimed subject matter, that
too would be insufficient. Ariad, 598 F.3d at 1352.
Finally, the Norman Declaration is a self-serving statement from the
named inventor, without corroboration, to which we assign little weight as
compared to the language of the original disclosure. See A. B. Leach & Co.
v. Peirson, 275 U.S. 120, 128 (1927) (“A man cannot make evidence for
himself by writing a letter containing the statements that he wishes to
prove.”); Bell & Howell Document Mgmt. v. AltekSys., 132 F.3d 701, 706
(Fed. Cir. 1997) (“The testimony of an inventor is often a self-serving, after-
the-fact attempt to state what should have been part of his or her patent
application.”); Roton Barrier, Inc. v. Stanley Works, 79 F.3d 1112, 1126
(Fed. Cir. 1996) (“We have previously stated that an inventor’s ‘after-the-
fact testimony is of little weight compared to the clear import of the patent
disclosure itself.’”) (citation omitted); Reese v. Hurst, 661 F.2d 1222, 1239
(CCPA 1981) (discussing the weight to be given to self-serving declarations
made by an inventor in an interference proceeding).
Indefiniteness under 35 U.S.C. § 112, Second Paragraph
First, Appellant relies upon the arguments discussed above to support
Appellant’s contention that the original Specification adequately links
structure to the function now recited in claim 1. Req. Reh’g 6—7 (citing
Spec. 11 18, 62, 63).
For the same reasons discussed above, and for the reasons explained
in the Decision, we are not persuaded.
Second, Appellant contends that a person of ordinary skill in the art,
in light of the Norman Declaration, “would, thus, know to test the ‘free
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flow’ by determining that steering is proper and to test ‘resistance’ by
actually colliding with an obstacle or simulating such a collision to
determine whether a steerable portion of the vehicle is adequately dampened
after such a ‘collision.’” Id. at 8.
We are unpersuaded by Appellant’s argument because neither the
Specification nor the Norman Declaration discuss these “test[s]” or provide
any other workable standard by which a person of ordinary skill in the art
may determine whether fluid “flows freely” or whether “resistance . . .
arises.” See generally Spec.; Norman Declaration 1—2. Mere attorney
argument in the Request for Rehearing is insufficient. In re Pearson, 494
F.2d at 1405.
Finally, Appellant argues that the claimed “improvement” of claim 1,
written in Jepson-typQ format, is “the combination of every portion of the
circuit having the desired cross-sectional area and maintaining that cross-
sectional area.” Req. Reh’g 9. Appellant also contends that the format of
Jepson-typQ claims is not a proper basis for rejection and a person of
ordinary skill in the art “would know what was already known in the art and
what is an improvement.” Id. at 9—10.
We are unpersuaded by Appellant’s arguments. Claim 1 states,
“wherein the improvement comprises', having the internal cross-sectional
area for every portion of the circuit within a range such that fluid . . . flows
freely when an operator rotates the steering mechanism, but that when the
rotation of the steering mechanism is caused by a steerable portion of the
vehicle hitting an obstacle, resistance to the flow of the fluid arises; and a
means for maintaining the cross-sectional area . . . within such range.”
Appeal Br. 30 (Claims App.) (emphasis added). Therefore, Appellant’s
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argument is not persuasive because claim 1 states that such a range is part of
“the improvement,” but Appellant submitted an inconsistent Declaration
stating that the claimed range was “well known.” Id.', Norman Declaration
1—2. As a result, the metes and bounds of claim 1 are not understandable to
a person of ordinary skill in the art, because it is unclear whether such a
range is, indeed, an “improvement” as claimed, or whether such a range is
“well known” as Mr. Norman declared. We are also unpersuaded that the
format of a Jepson-type claim may not form the basis for rejection, because,
in this case, the scope of claim 1 would not be understood by a person of
ordinary skill in the art, as required by 35 U.S.C. § 112, second paragraph.
Miles Labs., Inc. v. Shandon, Inc., 997 F.2d 870, 875 (Fed. Cir. 1993) (“The
test for definiteness is whether one skilled in the art would understand the
bounds of the claim when read in light of the specification.”). Patent claims
must be definite, even if recited in Jepson-typQ format.
For all of the foregoing reasons, we do not believe that we overlooked
or misapprehended any matters in our Decision.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REHEARING DENIED
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