Ex Parte Saunders et al

Patent Trial and Appeal Board

Sep 19, 2016

13346793 (P.T.A.B. Sep. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/346,793 01/10/2012 Robert H. Saunders
28866 7590 09/21/2016
MACMILLAN, SOBANSKI & TODD, LLC - FORD
ONE MARITIME PLAZA - FIFTH FLOOR
720 WATER STREET
TOLEDO, OH 43604
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.
83213728 7664
EXAMINER
LAVINDER, JACK W
ART UNIT PAPER NUMBER
3677
NOTIFICATION DATE DELIVERY MODE
09/21/2016 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):
docketing@mstfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT H. SAUNDERS,
ROBERT J. MOHAN, JEFFREY P. LUTHER,
SCOTT M. ROLLINS, ERIK H. HERMANN,
DARICE M. MORRIS, and ROGER KHAMI
Appeal2014-009837
Application 13/346,793
Technology Center 3600
Before JOHN C. KERINS, JAMES P. CALVE, and
GEORGE R. HOSKINS, Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the final rejection of
claims 1-5, 7-11, 13, 15, and 16. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
Appeal2014-009837
Application 13/346,793
CLAIMED SUBJECT MATTER
Claims 1, 5, 9, and 13 are independent. Claim 1 is reproduced below.
1. A tube clamping assembly, comprising:
a fitting including a land extending circumferentially
about a central axis and axially along the axis, the land having
two portions separated by a circumferentially extending gap, a
bolt housing integrally connected to both of the portions of the
land, a leg integral with and extending from one of the two
portions, and a tooth on the leg, both portions of the land, the
bolt housing, the leg and the tooth being formed as a single
monolithic piece;
a band surrounding the axis, contacting both portions of
the land radially outward from the axis, the band formed with
holes spaced along the band;
a bolt located in the bolt housing, including teeth
engaged with said holes for changing a diameter of the band as
the band is tightened by rotating the bolt.
REJECTION
Claims 1-5, 7-11, 13, 15, and 16 are rejected under 35 U.S.C. § 112,
first paragraph, for lack of written description.
ANALYSIS
The Examiner found that the claimed features of a fitting with a land
"extending circumferentially about a central axis" and "the land having two
portions separated by a circumferentially extending gap" were not described
in the Specification to reasonably convey to a skilled artisan that Appellants
had possession of this claimed subject matter. Final Act. 2. The Examiner
interpreted "extending circumferentially" and "circumferentially extending
gap" to be "a fitting that extends circumferentially, i.e., 360 degrees, about a
central axis and a gap that extends 360 degrees about the central axis" and
found that the Specification did not disclose these features. Id.; Ans. 2-5.
2
Appeal2014-009837
Application 13/346,793
Appellants argue that the term "circumferentially" means a direction
or orientation in which the claimed lands and gap extend as seen in Figures 1
and 2 of the present application. Appeal Br. 8-9; Reply Br. 2. Appellants
argue that the Specification describes "an annular land 12, which extends
angularly about a central axis 14 and axially along the axis" and the claims
recite this same relationship as "a land extending circumferentially about a
central axis and axially along the axis." Reply Br. 2-3. Appellants argue
that the Examiner may look to the ordinary meaning of claim terms in the
context of the written description provided in the Specification, and the
terms used in a claim do not have to be the same as in the Specification. Id.
Resolution of this issue turns on claim construction. We interpret the
limitations "a land extending circumferentially about a central axis" and "a
circumferentially extending gap" to mean that the land and the gap extend in
a circular or arcuate direction. Appellants disclose worm gear clamp fitting
10 as including "an annular land 12, which extends angularly about a central
axis 14 and axially along the axis." Spec. 2:20-22. Appellants disclose that
the land extends along a portion of the circumference of circular clamp band
30 shown in Figure 2, and clamp band 30 is located between lips 24 of land
12. Id. at 2:28-30. Figure 2 shows land 12 extending linearly along central
axis 14. Reply Br. 2. Figures 1 and 2 also disclose a gap that extends along
a middle portion of land 12 as the Examiner recognized in the Answer. Ans.
5 (annotations on Figure 1). 1 Thus, a skilled artisan would understand from
the Specification that Appellants invented a clamp with land 12 that extends
in a circular direction in two portions separated by a gap or space.
1 37 C.F.R. § 1.83 ("The drawing in a nonprovisional application must show
every feature of the invention specified in the claims.").
3
Appeal2014-009837
Application 13/346,793
The Specification does not have to provide literal or verbatim support
for claimed subject matter. See Union Oil Co. of Cal. v. Atl. Ric/1field Co.,
208 F.3d 989, 997 (Fed. Cir. 2000); In re Gosteli, 872 F.2d 1008, 1012 (Fed.
Cir. 1989); In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983); MANUAL OF
PATENT EXAMINING PROCEDURE§ 2163.02 (9th Ed. Rev. 7, Nov. 2015)
("The subject matter of the claim need not be described literally (i.e., using
the same terms or in haec verba) in order for the disclosure to satisfy the
description requirement.").
While "circumferentially" can mean "to surround or encircle" (see
Ans. 3--4 ), the claims interpreted in light of the Specification make clear that
annular land 12 and the gap formed between portions of land 12 extend in a
circumferential direction, i.e., along a portion of the circumference of clamp
band 30 as shown in Figure 2.2 Spec. 2:28-30. Clamp band 30 fits around
cylindrical hose 42, as shown in part in Figure 3. Id. at 2:28-3:14.
We do not sustain the rejection of claims 1-5, 7-11, 13, 15, and 16.
DECISION
WeREVERSEtherejectionofclaims 1-5, 7-11, 13, 15, and 16.
REVERSED
2 Claims 1 and 5 also recite "a band surrounding the axis," indicating that the
band is circular (Spec. 2:28-3:2 (has a diameter)) and extends around the
entire circumference. However, claims 9 and 13 recite "a band extending
circumferentially around the tube." Thus, Appellants appear to have used
the term "circumferentially" in two different ways, first to mean a circular or
arcuate direction as in the claimed land and second to mean a circumference
entirely surrounding an axis as in the band recited in claims 9 and 13. We
also note that numeral 40 is used to denote two different things: an entire
clamp assembly, and the head of clamp bolt 36. See Spec. 2:28-3: 14, Figs.
2--4.
4