Ex Parte ReaDownload PDFPatent Trial and Appeal BoardMar 5, 201311073108 (P.T.A.B. Mar. 5, 2013) Copy Citation 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. 11/073,108 03/04/2005 Jared Andrew Rea 3605-2-1 5753 7590 03/06/2013 Gary D.E. Pierce, Esq. PATE, PIERCE & BAIRD, P.C. Suite 1250 175 South Main Street Salt Lake City, UT 84111 EXAMINER BURGESS, RAMYA PRAKASAM ART UNIT PAPER NUMBER 3651 MAIL DATE DELIVERY MODE 03/06/2013 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 JARED ANDREW REA ____________ Appeal 2010-005464 Application 11/073,108 Technology Center 3600 ____________ Before GAY ANN SPAHN, WILLIAM V. SAINDON, and MICHAEL C. ASTORINO, Administrative Patent Judges. SPAHN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Jared Andrew Rea (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 6-23. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and ENTER A NEW GROUND OF REJECTION PURSUANT TO 37 C.F.R. § 41.50(b). Appeal 2010-005464 Application 11/073,108 2 Claimed Subject Matter The claimed subject matter relates to a luggage cart vertical reciprocating conveyor for use within the airline passenger transportation industry. Spec. 3, ll. 21-23.1 Claim 6 (the sole independent claim), reproduced below, with emphasis added, is illustrative of the subject matter on appeal. 6. A luggage cart vertical reciprocating conveyor, which comprises: a lifting cradle having a frame, which comprises: a top, a first side, a second side, and a rear but no front or bottom; and at least one lifting rail attached to the first side of the frame; a support structure which serves as a vertical guide way for said lifting cradle; a means for raising and lowing said lifting cradle within said support structure; and a wheeled luggage cart having a top with a first lifting rail and a second lifting rail attached to the top in such a location that, when the luggage cart is positioned within said support structure and said lifting cradle is in its lowest set position, one of the lifting rails at the top of said wheeled baggage cart is positioned directly above at least one lifting rail of said lifting cradle. Rejections The following Examiner’s rejections are before us for review2: 1 All references to “Spec.” herein are to the Substitute Specification filed August 5, 2005, as amended, by specification amendments on October 5, 2007. We note that this Specification begins with page 3 and we cite to Appellant’s page numbers. 2 The Examiner withdrew the rejection of claims 11-13, 16-18, and 24-26 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Ans. 2; see also Final Rej. 2. Appeal 2010-005464 Application 11/073,108 3 I. claims 6 and 19-23 under 35 U.S.C. § 102(b) as anticipated by Luria (US 6,152,287, issued Nov. 28, 2000); and II. claims 7-18 under 35 U.S.C. § 103(a) as unpatentable over Luria and Vander Wal (US 6,797,219 B1, issued Sep. 28, 2004). OPINION The Examiner and Appellants dispute whether Luria discloses “a luggage cart vertical reciprocating conveyor, which comprises: a lifting cradle having a frame, which comprises: a top, a first side, a second side, and a rear, but no front or bottom.” See Br., Clms. App’x.; Ans. 3 and 5-6; and Br. 13. In particular, the contention is over whether Luria’s lifting cradle (Examiner designated lift assembly 75 in Figures 14 and 20a) has no bottom (Examiner designated hollow frame of lift platform 150 in Figure 20a). See Ans. 3 and 5-6. Appellants submit that the lifting cradle 2 of the present application has “no front or bottom.” See Spec. 6. Appellants amended the Specification to state that “[t]he frame of the lifting cradle 2 has, as can be seen in Fig. 1, a top 10, a first side 11, a second side 12, and a rear 13 but no front or bottom,” and “[t]his allows the wheeled luggage cart 4 to be pushed into the lifting cradle 2.” Id. However, one of ordinary skill in the art looking at the left side, front, and top views in Figures 4-6, respectively, would understand that the lifting cradle 2 has a frame and the front of the frontmost frame members makes up the front of the lifting cradle and the bottom of the lowermost frame members makes up the bottom of the lifting cradle. Since the lifting cradle 2 of the present application has a front and a bottom, the Specification provides no standard for ascertaining how to Appeal 2010-005464 Application 11/073,108 4 establish when a lifting cradle has no front and no bottom as recited in independent claim 6 so as to permit the metes and bounds of this claim limitation to be determined. Claim 6 and its dependent claims 7-23 are therefore insolubly ambiguous. See Exxon Rsrch. & Eng’g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001) (a claim is indefinite if it is “insolubly ambiguous” and not “amenable to construction”). NEW GROUND OF REJECTION Pursuant to 37 C.F.R. § 41.50(b), we enter the following new ground of rejection: claims 6-23 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellants regard as the invention for the reasons discussed supra. PRIOR ART REJECTIONS For the reasons discussed supra, we conclude that claims 6-23 are indefinite. Thus, the prior art rejections must fall because they are necessarily based on a speculative assumption as to the meaning of the claims. See In re Steele, 305 F2d 859, 862-63 (CCPA 1962). It should be understood, however, that our decision in this regard is based solely on the indefiniteness of the claimed subject matter, and does not reflect on the adequacy of the prior art evidence applied in support of the rejection. DECISION For the reasons discussed supra, we REVERSE the Examiner’s decision to reject claims 6-23, and pursuant to our authority under 37 C.F.R. Appeal 2010-005464 Application 11/073,108 5 § 41.50(b), we enter a NEW GROUND of rejection for claims 6-23 under 35 U.S.C. § 112, second paragraph, as indefinite. FINALITY OF DECISION This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground 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 proceeding will be remanded to the examiner.… (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record.… No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). REVERSED; 37 C.F.R. § 41.50(b) Klh Copy with citationCopy as parenthetical citation