Ex Parte Sabini et al

Patent Trial and Appeal Board

Dec 19, 2016

11378621 (P.T.A.B. Dec. 19, 2016)

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.
11/378,621 03/16/2006 Eugene P. Sabini 911 -002.019/04GI004 6952
4955 7590 12/21/2016
WARE, FRESSOLA, MAGUIRE & BARBER LLP
BRADFORD GREEN, BUILDING 5
755 MAIN STREET
MONROE, CT 06468
EXAMINER
FREAY, CHARLES GRANT
ART UNIT PAPER NUMBER
3746
NOTIFICATION DATE DELIVERY MODE
12/21/2016 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):
mail @ warefressola. com
uspatents @ warefressola. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EUGENE P. SABINI, JEROME A. LORENC,
OAKLEY HENYAN, and KENNETH L. HAUENSTEIN
Appeal 2015-000618
Application 11/378,621
Technology Center 3700
Before LINDA E. HORNER, CHARLES N. GREENHUT, and
JILL D. HILL, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
3—5, 8, 10-12, and 14—20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2015-000618
Application 11/378,621
CLAIMED SUBJECT MATTER
The claims are directed to a pumping system. Claim 1, reproduced
below, with emphasis added, is illustrative of the claimed subject matter:
1. Apparatus, including a pumping system or rotating equipment,
comprising:
an AC power generating device configured with a
stationary stator and rotary magnets that cooperate to provide
local AC electrical power to power a circuit, module,
instrumentation, transducers or monitoring and communications
equipment of the apparatus;
a drive shaft sealing device arranged on a drive shaft in
relation to the apparatus to seal the drive shaft, the drive shaft
sealing device including the AC power generating device
arranged therein for supplying local AC electrical power along
a first line to power the circuit, module, instrumentation,
transducers or monitoring and communications equipment of the
apparatus; and
a power supply module configured to receive the local AC
electrical power along the first line and provide a regulated DC
voltage along a second line to power the circuit, module,
instrumentation, transducers or monitoring and communications
equipment, the AC power generating device and the power
supply module together forming a self-contained electrical
equipment power supply of the apparatus.
REJECTION
Claims 1, 3—5, 8, 10—12, and 14—20 are rejected under 35 U.S.C.
§112, first paragraph, as failing to comply with the enablement requirement.
OPINION
The claims are argued as a group, with claim 1 being selected as
representative under 37 C.F.R. § 41.37(c)(l)(iv).
2
Appeal 2015-000618
Application 11/378,621
The Examiner correctly sets forth the legal standards of analysis
regarding an enablement rejection. See Ans. 4 (citing MPEP § 2164.01; In
re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988)). Both the Examiner and the
Appellants provide a discussion of the factors to be considered under Wands.
See Ans. 6—11; Reply Br. 8—30. The critical point, however, is that each
analysis is based on a different claim construction. Compare App. Br. 9-13,
with Ans. 2—3, 12—13. The Examiner does not dispute that the claimed
subject matter is enabled under Appellants’ proposed claim construction and
Appellants do not dispute that the full scope of the claimed subject matter is
not enabled under the Examiner’s claim construction. Reply Br. 6—7. In
fact, Appellants expressly acknowledge that
nothing in the patent application even remotely suggests any
such combination, configuration, integration and/or mixture of
any such parts/components, including arranging a generator
inside various seal elements, or mounting or arranging the
generator in each of the particular seal elements, which appears
to be the whole thrust of the nonenabling rejection.
Id. Thus, the appropriateness of the Examiner’s enablement rejection hinges
on the appropriateness of the Examiner’s claim construction.
The claim construction issue revolves around the term “drive shaft
sealing device.” Essentially, the Examiner contends that the term may be
construed to encompass a meaning wherein the “device” refers to the actual
element that performs the sealing function, such as a lip, packing, laby, or
mechanical seal. Ans. 3. Under such a constmction, there is no doubt that
the claim encompasses subject matter not supported by an enabling
disclosure (Reply Br. 6—7; supra), i.e., any of the aforementioned seals
themselves would include the recited AC generator. Appellants, on the other
hand, argue that the term “drive shaft sealing device” has a more general
3
Appeal 2015-000618
Application 11/378,621
meaning, referring to a collection of parts that includes any of the
aforementioned seals plus additional structure, such as the recited AC
generator. The Examiner’s proposed construction is the broader of the two
because it encompasses both the Appellants’ more narrow construction of
the term, which the Examiner does not dispute is supported by an enabling
disclosure, and additional subject matter which is undisputedly not
supported by an enabling disclosure.
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage
as they would be understood by one of ordinary skill in the art,
taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant’s specification.
In re Morris, 111 F.3d 1048, 1054 (Fed. Cir. 1997). Appellants’
Specification does not expressly define “drive shaft sealing device.” In fact,
the term is used inconsistently in the Specification and both Appellants and
the Examiner are able to point to different portions of the Specification to
support their respective claim constructions. Ans. 13 (citing Spec. 6:7—10);
App. Br. 8 (citing Spec. 5:20—23; 3:14—17). Claims must be read in context,
which includes any enlightenment provided by the claims themselves.
Phillips v. AWHCorp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc)
(“[T]he claims themselves provide substantial guidance as to the meaning of
particular claim terms.”). As the Examiner correctly points out, dependent
claims 8, 12, and 19 recite that the “drive shaft sealing device” of claim 1 “is
configured as either a lip seal, a packing seal, or a laby seal, or a mechanical
seal.” App. Br., Claims App’x (emphasis added). This is in contrast to the
portions of the Specification cited by Appellants which indicate that the
drive shaft sealing device may include, but is not necessarily configured as,
4
Appeal 2015-000618
Application 11/378,621
such a structure. In addressing the Examiner’s point in this regard,
Appellants do not adhere to the language recited in claims 8, 12, and 19.
Reply Br. 6. Appellants instead refer to language appearing in the
Specification, but not the claims. Id. Thus, Appellants’ arguments on this
point are not commensurate with the scope of the claims and therefore do
not apprise us of error in the Examiner’s position regarding the correct
construction of the term “drive shaft sealing device.” For the reasons
discussed above, we consider the Examiner’s claim construction to be
reasonable and, as it is the broader one, must choose it for purposes of
examination.
The requirements of § 112, first paragraph, are part of the quid pro
quo of the patent grant. They serve to ensure that the scope of the right to
exclude does not overreach the scope of the inventor’s contribution to the art
as described in the Specification. See Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1353-54 (Fed. Cir. 2010) (enbanc). Such overreaching
would improperly “preempt the future before it has arrived.” See id. at
1353. Indeed, as the Examiner correctly points out, and Appellants admit,
Appellants have not invented an arrangement wherein any of the various
seals of claims 8, 12, and 19 have a generator therein. Yet, under the
adopted claim construction, that is part of the subject matter for which
Appellants seek an exclusive right.
While the PTO will not apply an unreasonably broad claim
construction so as to cause claims to encompass subject matter that is not
enabled, we will not depart from the express language of the claims so as to
bring the application in compliance with the requirements of § 112, first
paragraph. The broadest reasonable interpretation mode of claim
5
Appeal 2015-000618
Application 11/378,621
interpretation is employed before the PTO so that applicants have the
opportunity to fashion claims warranting the presumption of validity that is
enjoyed by an issued patent. Although the specification may be used to
interpret the meaning of a claim, it is improper to confine the claims to the
embodiments found in the specification. In re Trans Tex. Holdings Corp.,
498 F.3d 1290, 1299 (Fed. Cir. 2007). That principle holds true even if it
means construing claims before the PTO in a manner that results in
noncompliance with the enablement requirement of 35 U.S.C. § 112, first
paragraph.1 The burden of drafting claims in compliance with the
requirements of Title 35 is one that rests with Appellants. In re Morris, 111
F.3d at 1056.
DECISION
The Examiner’s rejection is affirmed.
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)(l)(iv).
AFFIRMED
1 It is noted that this situation may also result in noncompliance with the
second paragraph of § 112 if the claims are directed to that which is not
regarded as the invention. See MPEP §§2171, 2172.
6