Ex Parte Pound et al

Board of Patent Appeals and Interferences

Feb 13, 2008

10677197 (B.P.A.I. Feb. 13, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte KEITH POUND, KIM MARGERUM
and BENJAMIN MULLINIX
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Appeal 2007-4544
Application 10/677,197
Technology Center 3600
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Decided: February 13, 2008
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Before: TERRY J. OWENS, JENNIFER D. BAHR and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE 1
The Appellants appeal under 35 U.S.C. § 134 (2002). The 2
Appellants’ invention relates to a window lift mechanism of a type that 3
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might be incorporated into the door of an automobile. Claim 1 is 1
representative of the Appellant’s claims and reads as follows: 2
3
1. A window lift mechanism assembly for a 4
window having at least one attachment member 5
comprising: 6
a cursor adapted to receive the 7
attachment member; and 8
at least one strand disposed within said 9
cursor comprising a locking portion for securing the 10
attachment member within said cursor. 11
12
We have jurisdiction under 35 U.S.C. § 6(b) (2002). 13
The Examiner rejected claims 1, 5, 8-13 and 17-22 under 35 U.S.C. 14
§ 102(e) (2002) as anticipated by Kaps (U.S. Patent 6,557,302). The 15
determinative issue with respect to this rejection is whether Kaps discloses a 16
window lift mechanism including a “strand” disposed within a cursor. We 17
reverse the rejection of claims 1, 5, 8-13 and 17-22 under section 102(e). 18
The Examiner’s Answer states that claim 5 stands rejected under 19
35 U.S.C. § 112, ¶ 2 (2002) as being indefinite for failing to particularly 20
point out and distinctly claim the subject matter which the Appellants regard 21
as the invention. (Ans. 3). The record is unclear whether this rejection was 22
withdrawn by the Examiner prior to the filing of the notice of appeal. We 23
remand this appeal to the Examiner to clarify whether claim 5 stands 24
rejected under section 112, ¶ 2. 25
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A. The Subject Matter of Claims 1, 5, 8-12 and 21 Was Not 1
Anticipated by Kaps 2
Kaps discloses a carrier which couples a window pane to a lifting 3
mechanism for raising or lowering the window pane. (Kaps, col. 1, ll. 6-8). 4
The carrier includes two retaining arms which form a gap for receiving a 5
lower portion of the window pane. (Kaps, col. 3, ll. 24-29). A portion of a 6
retaining arm 21 is missing so as to form a bolt socket having a “V”-shaped 7
guide-in area supported by a resilient web. A guide bevel overlies the guide-8
in area of the bolt socket to form a hole for receiving a bolt affixed to the 9
window. (Kaps, col. 3, ll. 30-42 and Fig. 1). The other retaining arm 22 has 10
an oblong hole for holding the window bolt. (Kaps, col. 3, ll. 48-50). 11
The Examiner found that “the entire inner surface and projections 12
within cursor 21 and 22” is a “strand” as that term is used in claim 1. (Ans. 13
4). The Appellants contend that the word “strand” as used in claim 1 means 14
“a string, thread or any other ropelike filament.” (Br. 4, citing WEBSTER’S 15
NEW TWENTIETH CENTURY DICTIONARY OF THE ENGLISH LANGUAGE at 16
1798 (The Publishers Guild, New York 1957) (“strand,” entry 4, def. 2)). 17
The Examiner responds that “the [Appellants’] ‘strand’ is not a string, or 18
thread, or ropelike filament. Therefore, the ‘strand’ of Kaps (‘302) is as 19
much of a ‘strand’ as the [Appellants’] so called or defined ‘strand’.” (Ans. 20
4). We disagree. 21
“During examination, ‘claims . . . are to be given their broadest 22
reasonable interpretation consistent with the specification, and . . . claim 23
language should be read in light of the specification as it would be 24
interpreted by one of ordinary skill in the art.’” In re American Acad. of 25
Science Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re 26
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Bond, 910 F.2d 831, 833 (Fed. Cir. 1990)). We do not believe that the word 1
“strand” as used in claim 1 is susceptible of a reasonable interpretation broad 2
enough to encompass the entire inner surface and projections within a cursor 3
of a window lift mechanism. As the Appellants point out, “there is simply 4
nothing in the specification, drawings, or claims that would be construed by 5
one skilled in the art to support reading the term ‘strand’ as an inner surface 6
of the Kaps clip.” (Reply 2). 7
The Appellants’ specification clearly indicates that the word “strand” 8
as used in claim 1 means a filament. The word “strand” appears only twice 9
in the present specification, each time referring to a clip 22. (See 10
Specification 2, ¶ 8 and 4, ¶ 26). Each embodiment disclosed in the present 11
specification includes the clip 22 and each drawing of the application shows 12
an apparently identical clip 22 consisting of a wire or filament bent to form a 13
locking portion and a biasing portion. Since the present specification uses 14
the word “strand” consistently to refer to a filament, the word must be given 15
a similar meaning in the claims. The “entire inner surface and projections 16
within cursor 21 and 22” are not a “strand” as that term is used in claim 1, 17
The Examiner identifies no other structure disclosed by Kaps which 18
might correspond to the term “strand” as used in claim 1. On the record 19
before us, the Appellants have shown that the Examiner erred in rejecting 20
claim 1. Since claims 5, 8-12 and 21 depend from claim 1, the Appellants 21
have shown that the Examiner erred in rejecting those claims under 22
section 102(e) as well. 23
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B. The Subject Matter of Claims 13, 17-20 and 22 Was Not 1
Anticipated by Kaps 2
Claims 13 and 22 recite a door module assembly including a cursor 3
and “at least one continuous strand disposed within said cursor . . . .” 4
Claims 17-20 recite a cursor assembly including a cursor and “at least one 5
strand supported by said cursor . . . .” The Examiner rejected claims 13, 17-6
20 and 22 on the basis of the same findings relied on to reject claim 1. (Ans. 7
3-4). That is, the Examiner found that “the entire inner surface and 8
projections within cursor 21 and 22” is a “strand” as that term is used in 9
claims 13, 17-20 and 22. As discussed in the previous section, the present 10
specification uses the word “strand” consistently to refer to a filament. 11
Consequently, the word must be given a similar meaning in claims 13, 17-20 12
and 22. Given its broadest reasonable interpretation, the word “strand” as 13
used in claims 13, 17-20 and 22 does not include “the entire inner surface 14
and projections of cursor 21 and 22.” On the record before us, the 15
Appellants have shown that the Examiner erred in rejecting claims 13, 17-20 16
and 22. 17
18
REMAND TO THE EXAMINER 19
Pursuant to 37 C.F.R. § 41.50(a)(1) (2007), we remand the application 20
to the Examiner for clarification of the status of claim 5. 21
In a Final Office Action mailed June 15, 2005, the Examiner rejected 22
claims 5, 7, 11 and 20 under section 112, ¶ 2. In an Advisory Action mailed 23
August 22, 2005, the Examiner entered pending appeal amendments to the 24
claims rejected under section 112, ¶ 2. In the same Advisory Action, the 25
Examiner checked a box stating that “Applicant’s reply has overcome the 26
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following rejection(s): 35 U.S.C. 112 second paragraph.” The Brief of 1
Appellants does not refer to any rejections under section 112, ¶ 2 and the 2
Examiner’s Answer informs us that “the [Appellants’] statement of the 3
grounds of rejection to be reviewed on appeal is correct.” (Br. 3; Ans. 2). 4
Despite this, the Examiner’s Answer states that claim 5 stands rejected under 5
section 112, ¶ 2 as being indefinite for failing to particularly point out and 6
distinctly claim the subject matter which the Appellants regard as the 7
invention. (Ans. 3). 8
It is ORDERED that if the Examiner maintains the rejection of claim 9
5 as being indefinite, the Examiner must furnish a Supplemental Examiner’s 10
Answer stating the rejection of claim 5 under section 112, ¶ 2 as a new 11
ground of rejection and provide the Appellants with the opportunity to 12
respond as provided in 37 C.F.R. § 41.50(a)(2) (2007). 13
14
DECISION 15
The rejection of claims 1, 5, 8-13 and 17-22 under 35 U.S.C. § 102(e) 16
is reversed. The appeal is remanded to the Examiner to clarify the status of 17
claim 5. 18
This remand to the Examiner pursuant to 37 CFR § 41.50(a)(1) (2007) 19
is made for further consideration of a rejection. Accordingly, 37 CFR 20
§ 41.50(a)(2) (2007) applies if a supplemental examiner's answer is written 21
in response to this remand by the Board. 22
Section 41.52(a)(2) states in part: 23
(2) If a supplemental examiner’s answer is written in response to a 24
remand by the Board for further consideration of a rejection pursuant to 25
paragraph (a)(1) of this section, the appellant must within two months from 26
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the date of the supplemental examiner’s answer exercise one of the 1
following two options to avoid sua sponte dismissal of the appeal as to the 2
claims subject to the rejection for which the Board has remanded the 3
proceeding: 4
(i) Reopen prosecution. Request that prosecution be reopened by 5
filing a reply under §1.111 of this title . . . 6
(ii) Maintain appeal. Request that the appeal be maintained by filing 7
a reply brief as provided in § 41.41. . . . 8
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REVERSED AND REMANDED 10
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