Ex Parte Piggush

Board of Patent Appeals and Interferences

Sep 26, 2011

11823699 (B.P.A.I. Sep. 26, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/823,699 06/27/2007 Justin D. Piggush 0002577-US(06-421) 1486
52237 7590 09/27/2011
BACHMAN & LAPOINTE, P.C.
c/o CPA Global
P.O. Box 52050
Minneapolis, MN 55402
EXAMINER
LIN, KUANG Y
ART UNIT PAPER NUMBER
1735
MAIL DATE DELIVERY MODE
09/27/2011 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 JUSTIN D. PIGGUSH
____________

Appeal 2010-008661
Application 11/823,699
Technology Center 1700
____________

Before CHUNG K. PAK, BEVERLY A. FRANKLIN, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant requests rehearing of our Decision of July 1, 2011. In
that Decision, we affirmed the rejection of claims 1-14, 25, and 26 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. We also affirmed the rejection of claims 1-5, 8-13,
20, 21, 25, and 26 under 35 U.S.C. §103(a) over Parkos, Jr. in view of Beck,
and further in view of Uchimoto, Weiss, or Akin, but reversed this rejection
with respect to claims 6, 7, 14, 19, and 22.
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We have reconsidered our decision of July 1, 2011 in light of
Appellant’s comments in the Request for Rehearing. However, Appellant
has not convinced us of any reversible error therein.
1. The rejection of claims 1-14, 25, and 26 under 35 U.S.C. § 112, first
paragraph (written description)
On page 2 of the Request for Rehearing, Appellant “assumes that this
subground is overcome” in regard to the aspect of the Examiner’s rejection
regarding the claimed phrase of “transverse dimension” recited in claims 25
and 26 because “liner dimension” is different from “cross-sectional
dimension.” This assumption is correct. We explained on page 4 of our
Decision that Appellant had convincingly explained that this term is not
longitudinal, but is the linear dimension of a cross-section.
With regard to the claimed phrase of “increasing a transverse linear
dimension along at least one portion of the wire by at least 100”, as recited
in claim 1, Appellant again argues similar arguments that he presented on
page 7 of the Reply Brief. Appellant states:
As-filed claim 1 merely identified increasing a transverse
dimension without upper or lower limits. The pre-claim portion
of the specification identified an exemplary range of increase of
2-5 times the original dimension. Appellant merely replaced the
claim 1 lower limit with the 2 times lower limit.
Req. Rhg. 2

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Appellant argues that the use of the word “exemplary”1 on page 8,
at lines 8-10 of the Specification is inherently not limiting and that the
standards of disclaimer are high. Appellant also argues that the Board
“mixes” language appropriate to three effective grounds of rejection, and
identifies such grounds. Appellant also refers to Exhibit 1 regarding
proposed amendments to the Specification. Reg. Rhg. 3.
As an initial matter, there should be no confusion that, in our
Decision, we addressed a lack of written description rejection under
35 U.S.C. §112, first paragraph, in agreeing with the Examiner that there is
a lack of written description for the term “at least 100%” recited in claim 1.
We referred to case law on page 3 of the Decision relevant to such a
rejection. To further assist Appellant in understanding our Decision in this
regard, we also note that the written description inquiry is one of fact. Ariad
Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc). “The purpose of the written description requirement,” the court has
explained, “is to prevent an applicant from later asserting that he invented
that which he did not; the applicant for a patent is therefore required to
recount his invention in such detail that his future claims can be determined
to be encompassed within his original creation.” Amgen Inc. v. Hoechst
Marion Roussel, Inc., 314 F.3d 1313, 1330 (Fed. Cir. 2003) (internal quote
and citations omitted).

1 We are not convinced that the use of the word “exemplary” is
inherently not limiting because this word is used throughout Appellant’s
Specification in describing details of the Appellant’s investment casting
cores and methods. See, for example, paragraphs [0030], [0031], [0035],
and [0039].
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Original claim 1 recites “deforming a wire, the deforming including
increasing a transverse linear dimension along at least one portion of the
wire [emphasis added].” As stated, supra, Appellant asserts that this
original claim 1 is written descriptive support for the now claimed phrase of
“at least 100%” because there is no upper or lower limit in original claim 1.
Req. Rhg. 2. In other words, Appellant incorrectly assumes that his or her
failure to recite any range defining upper and lower limits in original claims
somehow gives him or her an unfettered license to claim any new range
Appellant later wishes to claim, without violating the written description
requirement of 35 U.S.C. § 112, first paragraph. Consistent with this
incorrect assumption, on page 4 of the Request for Rehearing, Appellant also
asserts that the Board, in affirming the Examiner’s rejection in this regard,
adopted a per se rule that open limits are invalid under 35 U.S.C. § 101. To
the contrary, in applying applicable case law, we agreed with the Examiner
that the original disclosure as a whole does not describe increasing a
transverse linear dimension along at least one portion of the wire by greater
than 5 times as made evident by the Examiner’s referral to para. [0031] of
the Specification on pages 5-6 of the Answer. Therein, the Examiner
explained that the Specification discloses “[e]xemplary flaring increases the
cross-section dimension to 2-5 times this amount.” We set forth this
discussion in the paragraph bridging pages 3-4 of our Decision.
Then, Appellant again refers to In re Wertheim, 541 F.2d 257 (CCPA
1976), in an effort to support his argument that original claim 1 specified
“increasing” without an upper limit, and that Appellant “merely added a
higher lower limit on the increase” (Appellant presented this similar
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argument on page 5 of the Brief). Req. Rhg. 4. Appellant misses the point
made in our Decision that the original disclosure as a whole does not
describe increasing a transverse linear dimension along at least one portion
of the wire by greater than 5 times. Lockwood v. American Airlines Inc.,
107 F.3d 1565, 1572 (Fed. Cir. 1997) (“One shows that one is ‘in
possession’ of the invention by describing the invention, with all its claimed
limitations, not that which makes it obvious.”) Appellant simply has not
shown that “at least 100%” is within the actual broad range described in the
original disclosure and is not an invention patentably different from such
broad range described in the original disclosure. Wertheim, 541 F.2d at 263-
265. Appellant’s failure to recite any range defining upper and lower limits
in original claims does not give him or her an unfettered license to claim any
new range of variables, parameters, dimensions and/or conditions Appellant
wishes to claim at any time during prosecution to distinguish the claimed
subject matter over the prior art disclosure. We, therefore, are not persuaded
of reversible error in our Decision in this regard.
Appellant then refers to Exhibit 2 of a Declaration by John J. Marcin
and asserts good cause exists for consideration of this evidence, asserting
that a new ground of rejection was made in the Decision because of a new
rationale. Req. Reg. 4-5. We are not convinced that any new ground of
rejection was made in our Decision. Contrary to Appellant’s assertion, no
new rationale was presented. The Examiner explained that para. [0031] of
the Specification discloses “[e]xemplary flaring increases the cross-section
dimension to 2-5 times this amount.” The Examiner refers to the phrase
“transverse linear dimension” in the very same paragraph. Ans., paragraph
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bridging pp. 5-6. The Examiner states that the limitation of “‘at least 100%’
includes the percentage which [is] beyond the range disclosed by applicant”.
Ans. 3. This is the basis upon which the Examiner concludes that the range
of “at least 100%” is not adequately described in the original Specification.
We agreed with this position as stated in the paragraph bridging pages 3-4 of
our Decision. Appellant has not convinced us how our statement in the
paragraph bridging pages 3-4 of our Decision constitutes a new rationale.
Hence, we do not consider the Declaration by John J. Marcin. 37 C.F.R.
§ 41.37(c)(1)(vii) (“Any arguments or authorities not included in the brief or
a reply brief filed pursuant to § 41.41 will be refused consideration by the
Board, unless good cause is shown.”).

2. The rejection of claims 1-5, 8-13, 20, 21, 25, and 26 under 35 U.S.C.
§103(a) over Parkos, Jr. in view of Beck, and further in view of Uchimoto,
Weiss, or Akin
On page 5 of the Request for Rehearing, in referring to the
Examiner’s reliance upon Park in view of Beck, Appellant asserts hindsight,
without identifying any specific error in our Decision of July 1, 2001.
Appellant then asserts it has not been established why anyone seeking the
flare shape of Beck would not have simply used the manufacturing
techniques of Beck. To the contrary, the first paragraph on page 5 of our
Decision addresses the Park in view of Beck combination, including an
explanation of how Parkos shows the use of metal wire is state of the art in
connection with RMCs, establishing a reason to use the approach of Parkos
in this regard.
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With respect to claim 3, Appellant asserts that the Examiner and the
Board did not identify in Beck or in the combination, the combined cross-
sectional increasing and decreasing recited in claim 3. To the contrary, we
addressed the limitations of claim 3 in the paragraph bridging pages 5-6 of
our Decision.
With respect to claim 4, it is noted that Appellant's arguments as set
forth in the paragraph bridging pages 5-6 of the Request for Reconsideration
was not made in the Brief or Reply Brief (Appellant’s arguments in the Brief
and Reply Brief were directed to non-analogous art assertions (Br.7, Reply
Br. 11)), and therefore these arguments are not considered here. 37 C.F.R.
§ 41.37(c)(1)(vii).
With regard to claim 10, on page 6 of the Request for
Reconsideration, Appellant argues that the Examiner and the Board’s
discussion of the reference of Clifford for showing that the use of a spiral
cooling passageway is conventional “reads for too much into Clifford;” yet,
Appellant does not offer an explanation in support of this assertion. Then,
Appellant asserts that the Examiner and the Board have not provided
adequate articulation of the nature of the combination. We believe the
Examiner, on pages 5 and 10 of the Answer, adequately explained his
position regarding the Clifford reference with respect to its applicability to
the rejection.

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In conclusion, based on the foregoing, Appellant’s Request is granted
to the extent that we have reconsidered our Decision, but is denied with
respect to making any change therein.
DENIED

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