Ex Parte Ruiz et alDownload PDFPatent Trial and Appeal BoardMay 29, 201814301971 (P.T.A.B. May. 29, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/301,971 06/11/2014 Stephen John Ruiz 43914 7590 05/31/2018 JOSEPH SWAN, A PROFESSIONAL CORPORATION 1334 PARKVIEW AVENUE, SUITEIOO MANHATTAN BEACH, CA 90266 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 24516-lc 4986 EXAMINER TORRES WILLIAMS, MELANIE ART UNIT PAPER NUMBER 3657 NOTIFICATION DATE DELIVERY MODE 05/31/2018 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): JSWAN@PATENT-TECHLAW.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEPHEN JOHN RUIZ and SANDOR BOTA Appeal2017-006521 Application 14/301,971 Technology Center 3600 Before BENJAMIN D. M. WOOD, LISA M. GUIJT, and PAUL J. KORNICZKY, Administrative Patent Judges. KORNICZKY, Administrative Patent Judge. DECISION ON APPEAL Appeal2017-006521 Application 14/301,971 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant 1 appeals from the Examiner's decision, as set forth in the Final Office Action dated August 19, 2106 ("Final Act."), rejecting claims 1-15, 17-21, and 24--27. 2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION. THE CLAIMED SUBJECT MATTER The claims are directed to a brake piston, disc brake caliper assembly, and a piston nose. Appeal Br. Cl-C5 (Claims App.). Claims 1, 19, and 20 are the independent claims on appeal. Claim 1, reproduced below with disputed limitations italicized for emphasis, is illustrative of the claimed subject matter: 1. A brake piston, comprising: a piston body; and a top surface that is wider than the piston body and that has a small portion that is slightly raised, relative to the rest of the top surface, so that when in use only the small raised portion makes contact with a backing plate of a brake pad, wherein the small slightly raised portion is comprised of a ring of angularly spaced raised areas. CWD, LLC ("Appellant") is the applicant under 37 C.F.R. § 1.46, and is identified as the real party in interest. Appeal Brief, dated November 25, 2017 ("Appeal Br."), at 2. 2 Claims 22 and 23 are cancelled. The Examiner states that claim 16 is objected to as being dependent upon a rejected base claim, but is otherwise allowable if it were to be rewritten into independent form so as to include all of the limitations of the base claim and any intervening claims. Appeal Br. 2. 2 Appeal2017-006521 Application 14/301,971 REFERENCES In rejecting the claims on appeal, the Examiner relied upon the following prior art: Yanagi Ciotti Bieker JP 57-073239 A US 7,156,212 Bl US 7,367,433 B2 REJECTIONS May 7, 1982 Jan.2,2007 May 6, 2008 The Examiner made the following rejections: 1. Claims 1, 4--9, 13, 18-21, 24, and 27 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Bieker. 2. Claims 1-15, 17, 19-21, and 24--27 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Ciotti and Yanagi. Appellant seeks our review of these rejections. DISCUSSION New Ground of Rejection - Indefiniteness Claims 1-21 and 24--27 are rejected under 35 U.S.C. § l 12(b). 35 U.S.C. § l 12(b) requires "claims particularly pointing out and distinctly claiming the subject matter which the inventor or joint inventor regards as the invention." Each of independent claims 1, 19, and 20 recite a top surface "that has a small portion that is slightly raised, relative to the rest of the top surface." Appeal Br. Cl, C4 (Claims App.). Claims 2-18, 21, and 24--27 depend from claim 1. The term "small portion" is highly subjective and, on its face, does not provide one of skill in the art any objective boundary for measuring the scope of a "small portion." 3 Appeal2017-006521 Application 14/301,971 The word "small" modifies "portion" and is a comparative term or a term of degree. See, e.g., Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370 (Fed. Cir. 2014) (identifying "unobtrusive manner" as a term of degree); Star Scientific, Inc. v. R.J.Reynolds Tobacco Co., 537 F.3d 1357, 1372 (Fed. Cir. 2008) ("Here, the term 'anaerobic condition' is in effect a term of degree because its bounds depend on the degree of oxygen deficiency."). "Claim language employing terms of degree has long been found definite where it provided enough certainty to one of skill in the art when read in the context of the invention." Interval Licensing, 766 F.3d at 1370 (citations omitted). However, "[t]he claims, when read in light of the specification and the prosecution history, must provide objective boundaries for those of skill in the art." Id. at 1371 (citing Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2130 & n.8 (2014) (additional citation omitted)); see Enzo Biochem Inc. v. Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010) (When a "word of degree" is used, a patent must provide a "standard for measuring that degree."). Neither the Specification nor Appellant explicitly define an objective boundary or any standard for measuring the scope of a "small portion."3 The Specification merely states that: ( 1) "the top surface is wider than the piston body and has a small portion that is slightly raised, relative to the rest of the top surface" (see, e.g., Spec. i-fi-f 10, 12-13); and 3 The Examiner does not explicitly construe the term "small portion." In Rejections 1-2, the Examiner merely states that Bieker and Ciotti disclose a top surface that has a "small portion." Final Act. 2 (Bieker: the portion between recesses 27), 5 (Ciotti: portion 84). 4 Appeal2017-006521 Application 14/301,971 (2) "in the preferred embodiments a relatively small portion 113 of the top surface 114 of nose 100 is slightly raised, relative to the rest 115 of top surface 114, so that only that raised portion 113 makes contact with the backing plate of the brake pad" and "this structure ... minimiz[ es] the surface area that is required to contact the backing plate of the brake pad (thereby minimizing the direct thermal conductance to the piston)" (see, e.g., Spec. i-f 32). The Specification does not disclose any objective boundaries, such as dimensions or proportion of the total surface area, for measuring the "small portion" of the top surface area. 4 Appellant asserts that: the present Specification (e.g., Figures 9 and 10) provides an example of a structure that includes a small ring of raised areas 213 (separated by gaps 215) that in fact make up just a small portion (e.g., significantly less than 25% in the current embodiment) of the entire top surface 214 of the piston. Appeal Br. 13. However, "it is well established that patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue." Hockerson-Halberstadt, Inc. v. Avia Group Int'!., Inc., 222 F.3d 951, 956 (Fed. Cir. 2000). In addition, Appellant's assertion that the Specification's unscaled and perspective illustrations in Figures 9 and 10 disclose that a small portion is "significantly less than 25%" is unsupported attorney argument. Appeal Br. 13. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) 4 We note the Specification discloses specific dimensions for the height of the raised areas and other elements of piston. See, e.g., Spec. i-fi-134, 37- 38, 40; claims 2, 3, 17. 5 Appeal2017-006521 Application 14/301,971 (lawyer arguments and conclusory statements which are unsupported by factual evidence are entitled to little probative value). Appellant also argues that: ( 1) it "does not believe that there is any reasonable construction of the presently recited expression 'a small portion' of the top surface that would encompass approximately half of such surface" (Appeal Br. 12 (discussing Bieker)); (2) "Ciotti's areas 84 clearly do not constitute a small, slightly raised portion of its thrust surface 80, but instead constitute the majority, in fact the substantial majority, of thrust surface 80" (id. at 21 ); and (3) "there simply is no reasonable construction of the presently recited expression 'small portion' that would encompass something constituting approximately 70% of the total" (id. at 23). Appellant's assertions are attorney argument and unsupported by the Specification. In re Geisler, 116 F.3d at 1470. According to one dictionary, the term "small" means, for example, "having comparatively little size or slight dimensions," "operating on a limited scale," "little or close to zero in an objectively measurable aspect (such as quantity)," or "limited in degree." Merriam-Webster Dictionary, https://www.merriam-webster.com/dictionary/small (last visited May 23, 2018). These definitions do not provide an objective boundary or any standard for measuring the scope of the "small portion" of a top surface. Based upon the usage in the Specification and the dictionary, a person of ordinary skill in the art would need to speculate about an objective boundary or a standard for measuring the scope of the "small portion" of a top surface-is it 1 %, 5%, "significantly less than 25%," or "less than approximately half' of the top surface, or some other measure? Thus, we conclude that independent claims 1, 19, and 20 fail to comply with 35 6 Appeal2017-006521 Application 14/301,971 U.S.C. § 112(b) by failing to particularly point out and distinctly claim the subject matter which the inventor or joint inventor regards as the invention. Claims 2-18, 21, and 24--27 depend from claim 1 and, likewise, are indefinite. REJECTIONS 1-2 Having determined that claims 1-21 and 24--27 are indefinite based on the "small portion" limitation at issue in the prior art rejections (App. Br. passim), we cannot sustain Rejections 1-2 of these claims under 35 U.S.C. §§ 102(b) and 103(a) because to do so would require speculative assumptions as to the meaning and scope of the claims. See In re Aoyama, 656 F.3d 1293, 1300 (Fed. Cir. 2011) (holding that the Board erred in affirming an anticipation rejection of indefinite claims); In re Steele, 305 F.2d 859, 862---63 (CCPA 1962) (holding that the Board erred in affirming a rejection of indefinite claims under 35 U.S.C. § 103(a)). We emphasize that our reversal of the rejections is because the claims are indefinite; hence, a decision has not been made based on the merits of the prior art rejections of claims 1-21 and 24--27. DECISION The Examiner's rejections of claims 1-21 and 24--27 are proforma REVERSED. Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection as follows: Claims 1-21 and 24--27 are rejected under 35 U.S.C. § 112(b) as being indefinite. 7 Appeal2017-006521 Application 14/301,971 37 C.F.R. § 41.50(b) provides that "[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 Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds 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 prosecution will be remanded to the exammer .... (2) Request rehearing. Request that the proceeding be reheard under§ 41.52 by the Board upon the same record .... Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure§ 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). 37 C.F.R. § 1.136(a)(l )(iv). REVERSED; 37 C.F.R. § 41.50(b) 8 Copy with citationCopy as parenthetical citation