Ex Parte Schank et al

Patent Trial and Appeal Board

Jun 27, 2014

11683791 (P.T.A.B. Jun. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte SCOTT SCHANK and PHILIP A. BILLINGS
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Appeal 2012-001399
Application 11/683,791
Technology Center 3600
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Before: CHARLES N. GREENHUT, JAMPES P. CALVE and
LYNNE H. BROWNE, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1–
10. App. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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Application 11/683,791
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The claims are directed to a shearing-force mechanism with cross-
linked thermoplastic. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A positioning device comprising:
a first element comprising a cross-linked thermoplastic;
and
a second element configured to engage and to strain the
first element by at least six percent;
wherein the first and second elements are configured to
move relative to each other and such that movement of the first
and second elements and the at least six percent strain on the
first element produces a substantially repeatable shearing force
over thousands of cycles between the first and second elements.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Swart
Rainer
Olbrich
US 2,572,215
US 3,097,150
US 6,581,267 B1
Oct. 23, 1951
Jul. 9, 1963
Jun. 24, 2003

REJECTIONS
Claims 1–10 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. Ans. 4.
Claims 1–10 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 applicant regards as the invention. Ans. 4.
Claims 1–10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Olbrich and Rainer. Ans. 5.
Claims 1–10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Swart and Rainer. Ans. 7.
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Application 11/683,791
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OPINION
The rejection under 35 U.S.C. § 112, first paragraph, is affirmed.
Regarding the written description requirement, the test for sufficiency
is whether the disclosure of the application relied upon reasonably conveys
to those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date. See Ariad Pharms., Inc. v. Eli Lilly &
Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (citations omitted). In
appropriate circumstances inherent disclosures and the knowledge of the
skilled artisan may be relied upon to satisfy this requirement. See, e.g.,
PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F. 3d 1299, 1306–7 (Fed. Cir.
2008), and LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d
1336, 1345–47 (Fed. Cir. 2005), respectively. Under certain circumstances
the description requirement of 35 U.S.C. § 112, first paragraph, may operate
to defeat the patentability of a narrow but not a broader claim. In re Smith,
458 F.2d 1389, 1395 (CCPA 1972).
The Examiner correctly found that “the only reference to [the recited]
‘thousands of cycles’ is found in the BACKGROUND section and this is
only in discussing what all devices of the intended field of use is desired as
needing to meet and it is presented as ‘often over many thousands of
operating cycles.’” Ans. 4. This statement in the Specification merely states
that this is “often” a requirement of positioning devices; it does not
expressly define “positioning devices” as devices inherently possessing the
ability to produce substantially repeatable shearing force over thousands of
cycles. Contra App. Br. 8. The fact that one skilled in the art would
understand this as a useful design criteria does not demonstrate that
Appellants had possession of a device meeting that criteria. Appellants have
improperly attempted to recite a particular range of values that is not
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Application 11/683,791
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supported by an adequate disclosure. See Purdue Pharma L.P. v. Faulding
Inc., 230 F.3d 1320, 1326–28 (Fed. Cir. 2000) (citing In re Ruschig, 379
F.2d 990, 994-95 (CCPA 1967)) (“one cannot disclose a forest in the
original application, and then later pick a tree out of the forest and say here
is my invention. In order to satisfy the written description requirement, the
blaze marks directing the skilled artisan to that tree must be in the originally
filed disclosure”); MPEP § 2163.05(III)
Accordingly the Examiner’s rejection under 35 U.S.C. § 112, first
paragraph, is affirmed.

The rejection under 35 U.S.C. § 112, second paragraph, is reversed.
The Examiner advances two rationales for rejecting the claims under
35 U.S.C. § 112, second paragraph. First, “it is unclear what numerical
value minimally constitutes ‘over thousands.’” Ans. 4. Second, “[c]laim 1
fails to expressly claim and require that the second element engage the first
element.” Id.
The Examiner’s first basis for this rejection is not well-founded
because, as Appellant correctly argues, “‘thousands’ is least two thousand,
since that is the lowest plural form of one thousand . . . the limitation
requires an operable range of the positioning device over at least two
thousand cycles.” App. Br. 8. We discern no subjectivity in the term.
Contra Ans. 4. Half of a thousand is not a thousand. Thus, one thousand
and half of a thousand is not two thousand or “thousands.” Contra Ans. 12.
Regarding the Examiner’s second rationale, the absence of any
requirement that the first element engage the second element is an issue of
breadth, not indefiniteness. See In re Borkowski, 422 F.2d 904 (CCPA
1970); MPEP § 2174. The Examiner correctly points out that the claim does
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Application 11/683,791
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not require the first element to engage the second, so the metes and bounds
of the claim appear to be clear to the Examiner. Our reviewing court has
held that there is nothing wrong with choosing to define the claimed subject
matter by what it does, i.e., how the elements would interact, as opposed to
what it is. In re Swinehart, 439 F.2d 210, 212 (CCPA 1971); MPEP
§ 2173.05(g). These recitations describe and limit the structure of the
claimed subject matter. See, e.g., K-2 Corp. v. Salomon S.A., 191 F.3d 1356,
1363 (Fed. Cir. 1999).
Accordingly, the Examiner’s rejection under 35 U.S.C. § 112, second
paragraph, is reversed.

The rejections under 35 U.S.C. § 103(a) are reversed.
In rejecting the claims under § 103(a) based on Olbrich or Swart in
view of Rainer, the Examiner relies upon how Olbrich and Swart show
“moving the first element [(Olbrich 2 ; Swart 2)] into the second element
[(Olbrich 3; Swart 7)]” to conclude that the second elements are “configured
to engage and to strain the first element[s].” Ans. 5. The Examiner found
that “[the structures interpreted as the recited] first and second elements
([Olbrich] 2, 3; [Swart 2, 7]) are capable of moving relative to each other
and such that movement of the first and second elements [] inherently
produces a substantially repeatable shearing force between the first and
second elements [].” Ans. 5, 7. In order for the Examiner’s interpretation to
be consistent throughout the claim, the strain caused by the movement cited
by the Examiner, combined with movement, must “produce[] a substantially
repeatable shearing force.” Ans. 5. It is not clear if the Examiner
overlooked this requirement, as it does not appear to be expressly addressed.
To the extent the Examiner believes it is met by the prior art and addressed
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by the Examiner’s statement concerning inherency, the basis for the
Examiner’s belief in this regard is unclear. Olbrich does not make any
mention of removability or the characteristics of the elastic ring 2 upon
being removed. App. Br. 9–10; Olbrich, Figs. 1, 2. Swart also does not
discuss the specifics of the interaction between the surface coating 2 and
throat member 7. App. Br. 13–14; Swart, Figs. 3, 4. The basis for the
Examiner’s assertion that Olbrich and Swart each disclose a second element
“configured to engage and to strain [a first element]” in a manner that,
combined with movement, “produces a substantially repeatable shearing
force” is not supported by an evidence or technical reasoning of record.
As Appellants correctly argue (Reply Br. 2–3), before an applicant
can be put to the burdensome task of proving a functional recitation
distinguishes over the prior art, the examiner must provide sufficient
evidence or scientific reasoning to establish that there is a sound basis for the
examiner’s belief that the functional limitation is an inherent characteristic
of the prior art. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). The
fact that a certain result or characteristic may occur or be present in the prior
art is not sufficient to establish the inherency of that result or characteristic.
In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993). Inherency may not be
established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient. In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). In relying upon the theory
of inherency, the examiner must provide a basis in fact and/or technical
reasoning to reasonably support the determination that the allegedly inherent
characteristic necessarily flows from the teachings of the applied prior art.
See Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990); Ex parte Skinner,
2 USPQ2d 1788, 1789 (BPAI 1986). The Examiner has not done so.
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Accordingly, the Examiner’s rejections under 35 U.S.C. § 103(a) are
reversed.

DECISION
The rejection under 35 U.S.C. § 112, first paragraph, is affirmed.
The rejection under 35 U.S.C. § 112, second paragraph, is reversed
The rejections under 35 U.S.C. § 103(a) are reversed.
The affirmance of the rejection of a claim on any of the grounds
specified constitutes a general affirmance of the decision of the examiner on
that claim, except as to any ground specifically reversed. 37 C.F.R.
§ 41.50(a).
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).

AFFIRMED

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