Ex Parte Perruso

Patent Trials and Appeals Board

Jun 26, 2019

13086727 - (D) (P.T.A.B. Jun. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/086,727 04/14/2011 Anthony P. Perruso JR.
21917 7590 06/28/2019
MCHALE & SLAVIN, P.A.
2855 PGA BL VD
PALM BEACH GARDENS, FL 33410
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
3716U.001 4763
EXAMINER
NGUYEN, MAI T
ART UNIT PAPER NUMBER
3671
NOTIFICATION DATE DELIVERY MODE
06/28/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
uspatents@mchaleslavin.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTHONY P. PERRUSO JR.
Appeal2019-000052
Application 13/086,727
Technology Center 3600
Before EDWARD A. BROWN, CHARLES N. GREENHUT, and
MICHELLE R. OSINSKI, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1,
5, 9, 11, 13, and 16. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm and enter new grounds of rejection.
CLAIMED SUBJECT MATTER
The claims are directed to a lawn mower blade. Claim 1, reproduced
below, with emphasis added, is illustrative of the claimed subject matter:
1. A rotary lawn mower blade for cutting grass comprising:
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Application 13/086,727
a generally elongated rigid rectangular body having an
aperture for attachment to a drive shaft of a lawn mower to
provide said rectangular body rotary movement, said aperture
dividing said body into a first end and a second end, a
longitudinal axis extending through a central portion of said
elongated rectangular body, a vertical axis extending
perpendicular with respect to said longitudinal axis;
said first end having a first leading cutting edge having a
cutting surface extending substantially parallel to said
longitudinal axis, extending to the distal edge of said first end
and arranged opposite a first trailing edge, a generally planar
surface therebetween, a notched section positioned along said
trailing edge, said notched section defining a rectangle along
said first trailing edge extending between said notch and said
distal edge of said first end, said notched section including a first
edge located in proximity to said aperture and a second edge
positioned toward said distal edge, said first trailing edge having
an integrally formed upturned portion defined by said rectangle
being at least half the length of said first end and extending
between said second edge of said notched section to the distal
edge of said first end so that said rectangle including second edge
of said notched section is positioned at an angle and above said
generally planar surface of said blade so that an innermost
portion of said upturned portion includes a height above said
generally planar surface, said upturned portion having a forward
pitch angle, said forward pitch angle measured with respect to
said longitudinal axis, said forward pitch angle about five
degrees, said upturned portion being bent upwardly at an angle
of less than forty five degrees with respect to said vertical axis,
said upturned portion having sufficient height, and configuration
to impart energy to the circulating air causing the air to exit out
the lawn mower at a greater velocity than when it started, said
distal edge of said first end being substantially blunt, said first
trailing edge being substantially square and free from chamfers,
whereby an uppermost edge of said upturned portion is
substantially sharp;
said second end having a second leading cutting edge
having a cutting surface extending substantially parallel to said
longitudinal axis, extending to the distal edge of said second end
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Application 13/086,727
and arranged opposite a second trailing edge and a generally
planar surface there between, a second notched section positioned
along said trailing edge, said notched section defining a rectangle
along said first trailing edge extending between said notch and
said distal edge of said first end, said notched section including
a first edge located in proximity to said aperture and a second
edge positioned toward said distal edge, said second trailing edge
having an integrally formed upturned portion extending between
said second edge of said second notched section to the distal edge
of said second end, so that said second edge allows a bottom
surface of the innermost portion of said upturned portion to
extend above a top surface of said blade, said upturned portion
being at least half the length of said second end and having a
forward pitch angle, said forward pitch angle measured with
respect to said longitudinal axis, said forward pitch angle about
five degrees, said upturned portion being bent upwardly at an
angle of less than forty five degrees with respect to said vertical
axis, said upturned portion having sufficient height, length and
configuration to impart energy to the circulating air causing the
air to exit out the lawn mower at a greater velocity than when it
started, said distal edge of said second end being substantially
blunt, said second trailing edge being substantially square and
free from chamfers, whereby an uppermost edge of said upturned
portion is substantially sharp.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Beers
Bonsor
Lindblad
Thorud
us 2,737,003
us 3,514,935
us 4,214,426
us 4,951,449
3
Mar. 6, 1956
June 2, 1970
July 29, 1980
Aug. 28, 1990
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Application 13/086,727
REJECTIONS
Claims 1, 5, 9, 11, 13 1, and 16 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite ..
Claims 1, 5, 9, 132, and 16 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lindblad and Beers.
Claim 11 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Lindblad, Beers, and Thorud.
Claim 13 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Lindblad, Beers, and Bonsor.
OPINION
The basis for the Examiner's§ 112 indefiniteness rejection is that "it
is unclear how the upturned portion is considered rectangular since the
upturned portion does not appear to have opposite parallel sides and 90
degree angles between adjacent sides." Final Act. 3. Appellant
mischaracterizes the Examiner's position: "[i]t appears from the Office
Action that the Examiner is arguing that the word 'rectangular' is
indefinite." App. Br. 8. There is no dispute in this record concerning the
meaning of the words rectangle or rectangular themselves. As the Examiner
correctly points out, "as clearly seen in figs. 3-8, the upturned portions 46
1 In the Answer the Examiner stated that the § 112 rejection of claim 13 is
withdrawn. Ans. 7. We understand the Examiner to have meant that the
independent grounds for rejecting claim 13 under§ 112, second paragraph,
as set forth in the Final Action (pg. 3), has been withdrawn, and that claim
13 still remains rejected under§ 112, second paragraph, by virtue of its
dependency from claim 1.
2 The Examiner added claim 13 to this rejection in the Answer. Ans. 7.
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Application 13/086,727
and 56 are not defined by a rectangle since they do not have four right
angles, and are actually trapezoidal in shape." Ans. 8. We do not consider
the Examiner's analysis as improperly importing limitations from the
Specification into the claims. See Reply Br. 2-3. Rather, the Examiner is
pointing out an inconsistency between the claimed subject matter and
Appellant's disclosure. A lack of supporting disclosure typically raises
issues under the first paragraph of§ 112 (MPEP § 2174). This is because it
is the written description requirement that prevents an applicant from later
asserting that he invented that which he did not. Amgen Inc. v. Hoechst
Marion Roussel Inc., 314 F.3d 1313, 1330 (Fed. Cir. 2003). However,
internal inconsistencies between the Specification and claims can also raise
issues of definiteness when trying to read claims in light of the Specification
(MPEP § 2173.03). It can be challenging in instances such as these to give
meaning to all words in a claim while at the same time not excluding the
preferred embodiment, or all embodiments, of the invention appearing in the
Specification. Appellant's arguments neither apprise us of where there exists
a supporting disclosure for the subject matter now claimed nor provide
sufficient clarification to resolve the ambiguities associated with the claims
as they are presently before us.
Appellant appears to argue that claim 1 is directed to the embodiment
shown in Figure 10, not having a forward pitch. App. Br. 10. However, this
is inconsistent with the express language of claim 1 which calls for a
"forward pitch angle about five degrees." As far as we are aware of, with
regard to the present invention the terms "forward" and "pitch" are used,
individually or together, only in the final sentence of paragraph 37 of the
Specification: "[t]he upturned portion 46 is preferably constructed with a
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slight forward pitch, 69, preferably at approximately 5 degrees." The terms
forward and pitch, alone or together, are not expressly defined by the
Specification. According to claim 1 "forward pitch" is measured with
respect to the longitudinal axis of the blade, as opposed to with respect to a
horizontal plane in a manner consistent with the ordinary meaning of
"pitch." Considering this in view of Figure 3 renders the meaning of
"forward pitch" unclear because Figure 3 illustrates dashed lines associated
with reference numeral 69 that do not appear related to the bend lines
adjacent the termination of the lead line for reference numeral 46. It is those
bend lines that seem to define the angle of the upturned portion with respect
to the longitude of the blade as viewed in Figure 3. It is unclear exactly what
relationship "forward pitch" has to the bend lines which create the
trapezoidal shape with which the Examiner raises concerns (best illustrated
in Figure 5). The description of the embodiment depicted in Figure 10 does
not mention any distinctions from the embodiment depicted in Figures 3-8
related to "forward pitch." The main distinction described with regard to
Figure 10 relates to the angle 8: "Unlike the upturned portions 46 and 56
illustrated in Figures 3 and 4, upturned portions 246 and 256 are generally
linear, thus forming right angles with the generally planer surfaces 244 and
258. In this manner, the angle 8 is zero or close to zero degrees." Spec. ,i 39.
Appellant also references angle 8. App. Br. 10. However, first, it is not
apparent exactly what is meant by describing two or three dimensional
regions of the upturned portion as "generally linear." Second, the angle e is
defined in a plane normal to the one a rectangle would, or would not, exist in
were it to define the upturned portion as required by the claim. As can be
seen from Figures 7 and 8, e can be a range of angles without affecting the
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rectangular or trapezoidal nature of the upturned portion 46. Furthermore,
we see nothing relating e to "forward pitch" as Appellant's argument seems
to suggest, or describing the precise link between 8, "forward pitch," and the
"height" of the upturned portion as alleged by Appellant. See App. Br. 10. It
is unclear why Appellant argues that forward pitch, or the absence thereof,
would alter the height over the length of the upturned portion so as to change
a trapezoid to a rectangle. Furthermore, because dependent claim 13 appears
to expressly limit e to 90 degrees there is a presumption that claim 1, from
which claim 13 depends, contains no such limitation. Indeed, according to
claim 1, the angle e does not appear to be limited to the angle depicted in
Figure 10. Instead, according to claim 1, the upturned portion is described as
"being bent upwardly at an angle of less than forty five degrees with respect
to said vertical axis."
To the extent Appellant argues it, we do agree that, although there
does not appear to be any express discussion of bend orientation and height
uniformity specifically with regard to Figure 10, what appears to be bend
lines in the January 30, 2012 version of Figure 10, which are illustrated
without a bounding notch (Spec. para. 39), in combination with the blade
trailing edge between the notch and distal end would appear to create a more
rectangular upturned portion. This is less clear from Figure 10 as originally
filed and as amended on July 27, 2011. Appellant's assertion that Figure 10,
particularly Figure 10 as originally filed, supports a rectangular upturned
portion is weak evidence without any corresponding description in the
Specification. The Specification does not appear to use the term rectangle to
describe or define the upturned portion. The only express evidence
Appellant directs our attention to regarding the possibility of descriptive
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Application 13/086,727
support for a rectangle defining the upturned portion is mentioned by
Appellant and the Specification only briefly: "the specification then goes on
to describe an alternative design where the height is uniform between the
first end and the distal end." App. Br. 10 ( quoting Spec. para. 3 8). Prior to
this sentence the Specification describes how height is measured and
depicted as varied in the embodiment depicted in Figures 3-8:
the height 70 is varied along the length of the upturned portion
46 so that the height 70' near, or at the distal end 36 is greater
than the height 70" near the notched portion 60, with heights in
between the distal end 36 and first end 34 gradually decreasing.
It appears that, based on the description above, 70" was intended to be
illustrated as it is in Figure 6 of the amendment to the drawings of July 27,
2011, as opposed to the more recent version of January 30, 2012 which
illustrates 70" extending from the dashed line extending from edge 76 to the
opposite end of the blade as opposed to extending only to the upper edge of
the upturned portion. We note 70" is not clearly illustrated in the version of
Figure 6 as originally filed. It also appears that in the excerpt above, "first
end 34" may have been intended to refer to "first end [ of the upturned
portion] 64." Appellant argues that "[t]he only configuration where there is
only one angle defining the upturned portion and a uniform height between
the first end at the notched portion and the distal end is a rectangle." App.
Br. 10. Appellant also appears to argue that, by virtue of the claim
recitations regarding the rectangle, claim 1 is limited to the embodiment
exhibiting the described uniform height of the upturned portion. Id. We
cannot agree with Appellant, however, that the limitations of claim 1
concerning the rectangle defining the upturned portion would reasonably be
equated with the Specification's disclosure of height uniformity of the
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upturned portion for several reasons. First, dependent claim 5 expressly
recites:
wherein the height of said upturned portions closest to said
aperture is smaller than the height of said upturned portion
furthest from said center aperture, said height of said upturned
portion directly proportional to said forward pitch angle.
As discussed above concerning claim 13, there is a presumption claim 1 is
not limited to that expressly recited in a claim depending therefrom. Second,
even if we assume the original disclosure supports the corrections to
Appellant's Specification and figures as suggested above, we cannot agree
with Appellant that it is necessarily the case that a blade having a rectangular
upturned portion could be envisaged from paragraph 3 8 of the original
disclosure or any other cited portions thereof. As the Examiner points out,
first, it takes not only parallel sides, but 90 degree comers to form a
rectangle. Uniform height could be attained with a parallelogram shape.
Second, to resemble a rectangle, the parallel sides must also be coplanar.
Uniform height could also be achieved with a trapezoidal shape, as depicted,
having variation of the angle 8 along the upturned portion-as expressly
contemplated by paragraph 3 8 of the Specification. See Fig. 6. 3 In other
words, uniform height, with respect to the planar portion of the blade, can
be attained without having a uniform width of the upturned portion as would
be required for the upturned portion to be rectangular.
Aside from the apparent absence of descriptive support for the
specific subject matter now claimed, issues relating to clarity of the
3 I.e., consider twisting the upturned portion about an axis from left to right
as viewed in Figure 6 to vary both its height vertically and depth into and out
of that page as viewed in that figure.
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Application 13/086,727
limitation in question arise from Appellant's usage of the term "defining."
According to claim 1, a "notched section" must "defin [ e] a rectangle."
However, according to the claim the "notched section" includes only two
edges: "a first edge located in proximity to said aperture and a second edge
positioned toward said distal edge." It is not clear how only two edges, with
no specific lengths or orientations themselves, can define a rectangle. The
claim then states that the upturned portion is "defined by said rectangle." It
is also unclear to what extent something can be defined by a rectangle
without actually being a rectangle. An ordinary reading of the claim would
favor reading that limitation to mean that the upturned portion is a rectangle,
as Appellant seems to argue. However, in view of the discussion above, it is
not clear that there exists descriptive support for a rectangular upturned
portion. We are forced to choose between attributing an unconventional
meaning to the term "rectangle" so as not to exclude the embodiments
supported by Appellant's disclosure, and construing "rectangle" according to
its ordinary meaning which would seem to exclude the embodiments that are
supported by Appellant's disclosure. The Examiner, practicing compact
prosecution, chose the latter approach and made a prior-art rejection using
an interpretation of claim 1 allowing claim 1 to cover Appellant's own
embodiments. Regarding the "rectangular" limitations, the Examiner relied
on prior art similar to Appellant's preferred embodiment but, according to
Appellant's arguments, outside the scope of the express language of the
claim. However, the ultimate resolution of the issues relating to descriptive
support and definiteness are critical to deciding the propriety of the prior-art
rejections. In light of the ambiguities associated with the claims, the
Specification, the figures and the various amendments thereto, we will not
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reach the merits of the prior-art rejections at this time. See, e.g., 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.).
In view of the foregoing, we sustain the Examiner's rejection under
§ 112, second paragraph, and we additionally reject the claims under§ 112,
first paragraph, as failing to comply with the written-description
requirement. We do not reach the merits of the prior-art rejections. As we
have supplemented the reasoning behind the Examiner's rejection under
§ 112, second paragraph, and added an additional ground for rejection under
§ 112, first paragraph, we designate this opinion as including new grounds
of rejection so as to afford Appellant the procedural options associated
therewith.
DECISION
The Examiner's rejection under 35 U.S.C. § 112, second paragraph, is
affirmed, and we designate our affirmance as including a new ground of
rejection. We also enter a new ground of rejection for claims 1, 5, 9, 11, 13,
and 16 under 35 U.S.C. § 112, first paragraph. We reverse, without reaching
the merits of, the prior-art rejections.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review." Section
41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
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of rejection to avoid termination of the appeal as to the rejected
claims:
( 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 prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED; 37 C.F.R. § 41.50(b)
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