Ex Parte Ryberg

Patent Trial and Appeal Board

Sep 23, 2016

13238384 (P.T.A.B. Sep. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/238,384 09/21/2011
24938 7590 09/27/2016
FCA US LLC
CIMS 483-02-19
800 CHRYSLER DR EAST
AUBURN HILLS, MI 48326-2757
FIRST NAMED INVENTOR
Daniel R. Ryberg
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.
708507US1 1060
EXAMINER
SETLIFF, MATTHIEU F
ART UNIT PAPER NUMBER
3679
NOTIFICATION DATE DELIVERY MODE
09/27/2016 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):
chris.davenport@fcagroup.com
michelle.madak@fcagroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL R. RYBERG
Appeal2014-009295
Application 13/238,384
Technology Center 3600
Before WILLIAM A. CAPP, BRANDON J. WARNER, and
FREDERICK C. LANEY, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the non-final
rejection of claims 1, 3, 4, 6, 7, 10, 12, and 13 under 35 U.S.C. § 102(b) as
anticipated by Kuhnhold (US 6,350,205 Bl, iss. Feb. 26, 2002) and of
claims 1, 3, 4, 6-10, 12-14, 21, and 22 as unpatentable under 35 U.S.C.
§ 103(a) over Barrett (US 6,102,807, iss. Aug. 15, 2000) and Kuhnhold. We
have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our discretionary authority under 37 C.F.R. § 41.50(b).
Appeal2014-009295
Application 13/238,384
THE INVENTION
Appellant's invention is a vehicle driveshaft. Spec. iJ 1. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A driveshaft assembly comprising:
a shaft having a first end section, a second end section, and
a midsection positioned adjacent the first end section and the
second end section,
wherein the first end section has a first diameter D 1, the
second end section has a second diameter D2, the midsection
has a third diameter D3, the shaft has a first length L, and the
midsection has a second length 1,
wherein 1 does not include the length occupied by
transitional pieces between the midsection and the first and
second end sections,
wherein Dl, D2, and D3 and the ratio of 1 to L are tuned to
provide the driveshaft with desired characteristics, and
wherein 1 :::::; L/3.
OPINION
1\levv Grourzd of _l?..ejectiorz
Under 35 U.S. C. § 112, second paragraph
Section 112 provides, in pertinent part, as follows:
The specification shall conclude with one or more claims
particularly pointing out and distinctly claiming the subject
matter which the applicant regards as his invention.
35 U.S.C. § 112, second paragraph. The Supreme Court counsels us that:
[A] patent must be precise enough to afford clear notice of what
is claimed, thereby "'appris[ing] the public of what is still open
to them,' ... "in a manner that avoids "[a] zone of uncertainty
which enterprise and experimentation may enter only at the risk
of infringement claims[.]"
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Appeal2014-009295
Application 13/238,384
1\!autilus, Inc. v. Biosig Instruments, Inc. 134 S. Ct. 2120, 2129 (2014) (cit.
omitted). Section 112 places the burden of precise claim drafting on the
applicant. See In re Morris, 127 F.3d 1048, 1056-57 (Fed. Cir. 1997).
A subjective claim term, to be definite, requires an objective anchor.
See Datamize, LLC v Plumtree Software, Inc. 417 F.3d 1342, 1350 (Fed.
Cir. 2005), abrogated on other grounds by Nautilus, supra. A subjective
construction does not notify the public of the patentee's right to exclude
since the meaning of the claim language depends on the unpredictable
vagaries of any one person's opinion. Id.
Claim 1
Claim 1 contains a limitation: "wherein D 1, D2, and D3 and the ratio
of 1 to Lare tuned to provide a driveshaft with desired characteristics,"
which is a subjective claim phrase. Claims App. (emphasis added). Where,
as here, we are faced with a "purely subjective" claim phrase, we look to the
written description for guidance. See Interval Licensing LLC v. AOL, Inc.,
766 F.3d 1364, 1371 (Fed. Cir. 2014). We find, however, that sufficient
guidance is lacking in Appellant's Specification.
The Specification explains that driveshaft length, diameter, and
thickness may be "tuned" to achieve "desirable driveshaft characteristics."
Spec. ,-i 16. The Specification further states that length, diameter, and
thickness may be "tuned" to provide the driveshaft with a desired torsional
strength, minimal vibration characteristics, and/or minimize generated noise.
Id. The Specification provides one example that compares an embodiment
of the invention with a "standard driveshaft" that had a length of 540 mm, a
diameter of 60 mm and a thickness of 1. 8 mm. Id. ,-i 17. The Specification
represents that the inventive driveshaft reduced cabin noise by as much as
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Appeal2014-009295
Application 13/238,384
10 dBA, reduced vibration of the rear axle, reduced angular velocity, and
shifted the bending mode. Id.
The term "desired characteristic" does not compare exactly to words
of degree such as "substantially" or "about." Datamize, 417 F.3d at 1351.
Nevertheless, the courts maintain that similar subjective terms invoke a
similar analysis. Id. When a word of degree is used, we must determine
whether the specification provides some standard for measuring that degree.
See Seattle Box Co. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826
(Fed. Cir. 1984). While terms of degree are not inherently indefinite, our
supervising court recognizes that claims having terms of degree will fail for
indefiniteness unless they "provide objective boundaries for those of skill in
the art" when read in light of the specification and the prosecution history.
Liberty Ammunition, Inc. v. United States, - F.3d-, 2016 WL 4488151, *4
(Fed. Cir. 2016) quoting Interval Licensing, 766 F.3d at 1370-71.
After reviewing Appellant's claim in light of the Specification, we
determine that the lone example provided in the Specification leaves a
skilled artisan to wonder what characteristics, and the measurement thereof,
are sufficiently "desirable" to fall within the scope of the claim. Thus, the
claim fails to provide "objective boundaries for those of skill in the art."
Liberty Ammunition, supra.
Consequently, Appellant's "desired characteristic" term is too
subjective to render the claim definite and we hereby enter a NEW
GROUND OF REJECTION that claim 1, as well as claims 3, 4, 6-9, and 21
that depend therefrom, are indefinite under 35 U.S.C. § 112, second
paragraph.
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Appeal2014-009295
Application 13/238,384
Claim 10
Claim 10 contains the limitation: "wherein D 1, D2, D3, and the ratio
of 1 to L are tuned to provide the driveshaft with a desired torsional strength,
desired vibration characteristics, and to minimize generated noise." Claims
App. (emphasis added). Although this language is slightly different from the
language of claim 1 discussed above, it suffers from the same infirmity as
that of claim 1 in terms of failing to "provide objective boundaries for those
of skill in the art" when read in light of the specification and the prosecution
history. Liberty Ammunition, at *4.
Accordingly, for essentially the same reasons discussed above with
respect to claim 1, we hereby enter a NEW GROUND OF REJECTION that
claim 10, as well as claims 12-14, and 22 that depend therefrom, are
indefinite under 35 U.S.C. § 112, second paragraph.
Art Rejections
We do not sustain the art rejections of claims 1, 3, 4, 6-10, 12-14, 21,
and 22 because those rejections are necessarily based on speculative
assumptions as to the meaning of the claims. See In re Steele, 305 F.2d 859,
862-63 (CCPA 1962); see also Enzo Biochem, Inc. v. Applera Corp., 599
F.3d 1325, 1332 (Fed. Cir. 2010) ("a claim cannot be both indefinite and
anticipated").
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
Examiner's rejections.
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Appeal2014-009295
Application 13/238,384
DECISION
The decision of the Examiner to reject claims 1, 3, 4, 6-10, 12-14, 21,
and 22 as either anticipated under 35 U.S.C. § 102 or obvious under 35
U.S.C. § 103 is REVERSED, proforma.
We enter a NEW GROUND OF REJECTION of claims 1, 3, 4, 6-10,
12-14, 21, and 22 under 35 U.S.C. § 112, second paragraph.
FINALITY OF DECISION
The decision contains a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b). 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 Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THIS 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. § l.136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
REVERSED; 37 C.F.R. § 41.50(b).
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