Ex Parte Rea

Patent Trial and Appeal Board

Mar 5, 2013

11073108 (P.T.A.B. Mar. 5, 2013)

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

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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

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§ 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)

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