Ex Parte Puppi et al

Patent Trial and Appeal Board

Jun 17, 2015

12971606 (P.T.A.B. Jun. 17, 2015)

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.
12/971,606 12/17/2010 Cristiano PUPPI 05788.0470-01 8301
22852 7590 06/17/2015
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
VENNE, DANIEL V
ART UNIT PAPER NUMBER
3617
MAIL DATE DELIVERY MODE
06/17/2015 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 CRISTIANO PUPPI, PIER GIUSEPPE PIANTANIDA,
RENATO CARETTA, and THOMAS MATTIA MAURO PONTA
____________________

Appeal 2013-006843
Application 12/971,606
Technology Center 3600
____________________

Before MICHAEL L. HOELTER, LISA M. GUIJT, and
MICHAEL L. WOODS, Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Cristiano Puppi et al. (“Appellants”) seek our review under
35 U.S.C. § 134(a) of the final rejection of claims 74–125.1 Final Act. 1
(mailed Apr. 12, 2012). Claims 1–73 are cancelled. Appeal Br. 29, Claims
App. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellants, the real party in interest is Pirelli & C. S.p.A.
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CLAIMED SUBJECT MATTER
Claims 74 and 101 are independent. Claim 74, reproduced below
with disputed limitations italicized for emphasis, is representative of the
subject matter on appeal.
74. A sail for sailing boats, comprising:
at least one seat for a respective batten; and
at least one inflatable batten housed in said at least
one seat, said at least one inflatable batten comprising:
a fluid impervious wrapping containing a
fluid under pressure, said fluid being at such
pressure so as to impart a bending stiffness of a
predetermined value to said at least one batten
when said at least one batten is under no bending
load; and
a reinforcing structure associated with said
wrapping and comprising a plurality of reinforcing
thread-like elements arranged crossed to each
other,
wherein when said at least one batten is subjected
to an increasing bending load, the bending stiffness of
said at least one batten decreases until said at least one
batten collapses, and when said bending load is removed,
the bending stiffness of the batten returns to said
predetermined value.
Appeal Br. 29, Claims App. (emphasis added).

THE REJECTIONS
Claims 74–125 are rejected under 35 U.S.C. § 112, second paragraph.
Claims 74–125 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Henderson (US 5,333,569; iss. Aug. 2, 1994).

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ANALYSIS
The Specification — 35 U.S.C. § 112, first paragraph
In addition to the above-noted rejections, the Examiner objected to
Appellants’ Specification under 35 U.S.C. § 112, first paragraph, for
containing “terms which are not clear, concise and exact.” See Final Act. 2.
In particular, the Examiner found the phrases “reinforcing thread-like
elements” and “high modulus material” do not comply with 35 U.S.C. § 112,
first paragraph, because the terms “thread-like,” “high,” and “modulus” are
vague. Id. We have authority to review objections to the Specification
when the matter at issue is tied to a rejection of the claims on the same basis.
See MPEP 608.04(c).
Here, the Examiner rejected claims 74–125 under 35 U.S.C. § 112,
second paragraph, finding, inter alia, the claim term “reinforcing thread-like
elements” is indefinite. Final Act. 3. Because the question of whether the
claim term “reinforcing thread-like elements” is indefinite under 35 U.S.C. §
112, second paragraph, is not dispositive of whether the terms “thread-like,”
“high,” and “modulus,” as used in the Specification, fail to meet the
requirements of 35 U.S.C. § 112, first paragraph, we decline to review this
objection, which remains petitionable subject matter under 37 C.F.R § 1.181.
See, e.g., MPEP § 706.01 (“[T]he Board will not hear or decide issues
pertaining to objections and formal matters which are not properly before the
Board.”); see also MPEP § 1201 (“The Board will not ordinarily hear a
question that should be decided by the Director on petition . . . .”).
Claims 74–125 — 35 U.S.C. § 112, second paragraph
The rejection of claims 74–125 under 35 U.S.C. § 112, second
paragraph, is based on the Examiner’s determination that the use of the
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terms “thread-like” and “reinforcing thread-like elements,” and the phrase
“reinforcing structure associated with said wrapping” render the claims
indefinite. Final Act. 3. In particular, the Examiner finds the term “thread-
like” is “not actually disclosed [in the Specification,] . . . rendering the scope
of the claim(s) unascertainable.” Id. (citing MPEP § 2173.05(d)). The
Examiner further finds the claim term “‘reinforcing thread-like elements’ . . .
does not make clear the structure and/or material which constitute
‘reinforcing thread-like elements.’” Id.
Appellants argue that the Examiner mischaracterizes MPEP
§ 2173.05(d), which addresses confusion caused by examples stated in the
claims. Appeal Br. 12. Appellants submit that “thread-like” is not stated as
an example in the claims, but rather Kevlar® cords are disclosed in the
Specification as an example of an element that is “thread-like.” Id. (citing
Spec., para. 98). Appellants further contend that “the reinforcing structure
described in the [S]pecification and FIG. 3A, as well as the phrase ‘cords
made of Kevlar or any other high modulus material,’”2 renders the claim
term “thread-like” “clear in scope and context.” Reply Br. 6 (citing Appeal
Br. 9–14).
Although we agree with Appellants’ analysis regarding MPEP
2173.05(d), we are not persuaded by Appellants that the Examiner erred in
finding the claim term “thread-like” indefinite under 35 U.S.C. § 112,
second paragraph. A plain and ordinary meaning of the term “thread” is “a
filament, a group of filaments twisted together, or a filamentous length

2 The term “modulus” means a coefficient pertaining to a physical property,
e.g., elasticity. Thus, “modulus” alone does not specify the physical
property of Kevlar® that must be high.
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formed by spinning and twisting short textile fibers into a continuous
strand.” Webster’s Third New International Dictionary 2381 (2002). The
suffix “like” means “the same as or similar to (as in structure, character,
appearance, or effect).” Id. at 1310. As claimed, the suffix “like” acts as a
term of degree because it is intended to encompass structures that may differ
to some degree from threads. Our reviewing court has held that “[n]ot all
terms of degree are indefinite,” but that “‘the specification must provide[]
some standard for measuring that degree.’” Hearing Components, Inc. v.
Shure Inc., 600 F.3d 1357, 1367 (Fed. Cir. 2010) (abrogated on other
grounds by Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120 (2014))
(internal citation and quotation omitted).
We find the portions of the Specification cited by Appellants fail to
provide the requisite standard for measuring whether a structure is “thread-
like.” In particular, Appellants’ reference to one-dimensional lines 34a, 34b
in Figure 3 does not provide any guidance as to whether a structure is like a
thread. Further, disclosure of a preferred example, namely, Kevlar® cords,
falls short of providing a standard that would allow a skilled artisan to
determine whether a structure that is not a thread or a Kevlar® cord is
nevertheless a “reinforcing thread-like element.” To the extent the phrase
“cords made of . . . any other high modulus material” may be interpreted to
mean cords having a modulus of elasticity that is similarly high as compared
to Kevlar® cords, this preferred example is again instructive as to particular
structures that meet the definition of “thread-like,” but does not provide a
standard that may be applied to determine whether a structure that is not a
cord having a modulus of elasticity that is similarly high as compared to
Kevlar® cords is also “thread-like.”
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We further determine that the Examiner erred in finding that the
claimed phrase “reinforcing structure associated with said wrapping” is
indefinite, in that “reinforcing structure” may be broadly understood to mean
a structure that reinforces, and Appellants’ Specification provides a
description of reinforcing structure 33. See Appeal Br. 13 (citing Spec., Fig.
3 and paras. 94 and 98).
Accordingly, we sustain the Examiner’s rejection of claims 74–125
under 35 U.S.C. § 112, second paragraph.
Claims 74–125 — 35 U.S.C. § 103(a)
The Examiner finds, inter alia, that “Henderson does not specifically
disclose reinforcing thread-like elements and the functional bending stiffness
limitation,” as recited in the claims. Ans. 4. However, the Examiner finds
that “Henderson’s batten is considered capable of the recited functional
limitation since under a sufficient bending load, the bending stiffness of the
batten would necessarily decrease when the batten bends to a point that
would collapse the batten.” Id. 6–7.
Appellants argue that the Examiner failed to establish a prima facie
case of obviousness, because “Henderson fails to teach or render obvious at
least” the claim limitation as recited in the “wherein clauses” of claims 74
and 101. Appeal Br. 14–15 (emphasis omitted). Appellants submit that
“contrary to the Examiner’s assertion that Henderson teaches battens
collapsible under increased bending load . . . Henderson teaches deflating
the battens to reduce batten stiffness and collapse the battens.” Appeal Br.
15–16 (citing Henderson, col. 1, ll. 23–43; col. 3, ll. 66–67; col 4, ll. 5–6, 9–
13) (emphasis omitted). Appellants further submit that the Examiner’s
conclusion that Henderson’s batten “necessarily collapses . . . . is not
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correct,” in that “whether [Henderson’s] batten collapses depends on the
pressure within the batten . . . [and] Henderson[’s batten] is sufficiently
pressurized so as to maintain its rigidity and perform the desired stiffening
effect, thereby countering any bending load during operation.” Id. at 17
(emphasis omitted). Appellants argue that “the Examiner is impermissibly
guessing as to whether the batten in Henderson would behave as described,”
and to the extent the Examiner finds this limitation inherently disclosed in
Henderson, inherency may not be established by probabilities or
possibilities. Reply Br. 8 (emphasis omitted).
We are persuaded by Appellants’ arguments. Although “where the
Patent Office has reason to believe that a functional limitation asserted to be
critical for establishing novelty in the claimed subject matter may, in fact, be
an inherent characteristic of the prior art, it possesses the authority to require
the applicant to prove that the subject matter shown to be in the prior art
does not possess the characteristic relied on,” upon the record before us, we
determine that the Examiner has failed to provide a reasonable basis that
supports the conclusion that the bending stiffness of Henderson’s inflatable
batten is capable of decreasing when subjected to an increasing bending
load. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Rather, the
Examiner merely concludes that “Henderson’s batten is considered capable
of the recited functional limitation since under a sufficient bending load, the
bending stiffness of the batten would necessarily decrease when the batten
bends to a point that would collapse the batten.” Ans. 6–7 (emphasis
added). “The Patent Office has the initial duty of supplying the factual basis
for its rejection. It may not, because it may doubt that the invention is
patentable, resort to speculation, unfounded assumptions or hindsight
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reconstruction to supply deficiencies in its factual basis.” In re Warner, 379
F.2d 1011, 1017 (CCPA 1967). Here, we find the Examiner’s conclusion
unsupported by evidence.
Henderson teaches
the battens are pressurized to give the stiffness or lateral
strength desired. Each batten can be inflated to a different
pressure to suit the sail shape. The pressure can also be
adjusted to suit the strength of the wind on the sails . . . . If it is
desired to sail with the sail partially furled, the battens are first
deflated, and the sail is furled to the extent desired, and then the
battens are re-flated or pressurized, so that the unfurled portions
of the battens again become rigid and perform their desired
stiffening affect.
Henderson, col. 3, l. 66–col. 5, ll. 13. Henderson does not address bending
the batten to a point of collapse, nor does the Examiner provide any
evidence or explanation as to why the bending stiffness of the batten, which
is achieved by pressurization in Henderson, must decrease at the point of
collapse, rather than, for example, remaining high during deformation as the
batten passes beyond the mast. See Spec. 4 (“battens of the prior art . . . .
exhibit such mechanical properties that their bending stiffness remains
always high as the bending load increases.”)
Critically, the Examiner does not reason that because of the structure
of Henderson’s batten, Henderson’s batten would function as claimed. For
example, the Examiner does not conclude that because Henderson’s
inflatable batten comprises woven material, as claimed (see Ans. 6),
Henderson’s inflatable batten would inherently function as claimed, thereby
shifting the burden to Appellants to demonstrate Henderson’s batten, despite
structural similarities, does not possess the characteristic relied on for
patentability.
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Accordingly, we do not sustain the Examiner’s rejection of
independent claims 74 and 101, and claims 75–100 and 102–125 depending
therefrom.

SUMMARY
The Examiner’s decision to reject claims 74–125 under 35 U.S.C.
§ 112, second paragraph, is affirmed.
The Examiner’s decision to reject claims 74–125 under 35 U.S.C.
§ 103(a) is reversed.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See
37 C.F.R. § 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED
rvb