Ex Parte Schramm

Patent Trial and Appeal Board

Sep 5, 2017

13726466 (P.T.A.B. Sep. 5, 2017)

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.
13/726,466 12/24/2012 Michael R. Schramm MRS-036U-2 4711
52966 7590
S chramm-Personal-ACT
Michael R. Schramm
350 West
2000 South
Perry, UT 84302
09/07/2017 EXAMINER
BROWN, DREW J
ART UNIT PAPER NUMBER
3616
NOTIFICATION DATE DELIVERY MODE
09/07/2017 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):
mikeschramm @ besstek. net
mschramm @juneaubiosciences.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL R. SCHRAMM
Appeal 2016-006853
Application 13/726,466
Technology Center 3600
Before JOSEPH L. DIXON, JAMES R. HUGHES, and
TERRENCE W. McMILLIN, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-006853
Application 13/726,466
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1—4, 7—15, 17, 18, and 24—30. Claims 5, 6, 16, and 19-23 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b). We note this
application is related to serial number 13/726,460; Appeal 2016-003287.
We affirm.
The claims are directed to a resettable load-limiting adaptive seatbelt
apparatus. Claims 1,10, 24, 27, and 30, reproduced below, are illustrative
of the claimed subject matter:
1. A seatbelt apparatus having a reusable resettable limited
non-disengagement crash-load-limiting payout slip (limited slip)
belt engagement device.
10. A seatbelt apparatus adapted such that in a first scenario
said apparatus allows limited non-disengagement crash-load-
limiting payout release (limited release) of a seatbelt in response
to a seatbelt tension disengagement load, and wherein in a second
scenario said apparatus allows complete disengagement release
of a seatbelt in response to a hands-free seatbelt tension
disengagement load.
24. A seatbelt apparatus having a crash-load-limiting payout
slip belt engagement device, wherein the threshold load required
to cause said slip to occur adaptively varies.
27. A seatbelt apparatus wherein load-limiting belt payout
resistance varies during or in response to at least one of a crash-
free condition, a sensed impending crash condition, and a sensed
predetermined closure rate condition.
30. A seatbelt apparatus adapted to provide energy absorbing
load-limiting belt payout, wherein energy absorbing occurs
2
Appeal 2016-006853
Application 13/726,466
substantially equally in a shoulder harness belt portion of said
apparatus and a lap belt portion of said apparatus.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Smith, Jr. et al. US 6,805,381 B2 Oct. 19, 2004
Lenning US 2009/0005935 Al
(“Smith”)
Jan. 1, 2009
REJECTIONS
The Examiner made the following rejections:
Claims 1—4, 7—15, 17, 18, and 24—30 are rejected under 35 U.S.C.
§ 112(a) or 35U.S.C. § 112 (pre-AIA), first paragraph.
The unlimited functional claim limitations extend to all means or
methods of resolving a problem and are not adequately supported by the
written description or commensurate in scope with the enabling disclosure,
both of which are required by 35 U.S.C. § 112(a) and pre-AIA 35 U.S.C.
§112, first paragraph. We note the Examiner has applied both a written
description rejection and an enablement rejection to independent claims 1,
10, 24, 27, and 30. (Final Act. 3—4).
Claims 1—4, 7—15, 17, 18, and 24—30 are rejected under 35 U.S.C.
§ 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which the inventor or a joint inventor, or for pre-AIA the applicant
regards as the invention.
3
Appeal 2016-006853
Application 13/726,466
Claims 1—3, 7, 8, 10-13, 15, 17, and 24—30 are rejected under pre-
AIA 35 U.S.C. § 102(b) as being anticipated by Lenning
Claims 27—29 rejected under pre-AIA 35 U.S.C. § 102(b) as being
anticipated by Smith, Jr.
Claims 9 and 18 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Lenning.
ANALYSIS
Objections
With respect to the Examiner’s objections to claims 1 and 10 to the
use of limitations within parentheses (Final Act. 2) and Appellants’
responses thereto (App. Br. 4—6), we do not have jurisdiction over
formalities and objections. We limit our review to the rejections.
We find the 35 U.S.C. § 112, second paragraph rejection to be
dispositive, therefore we address this first.
35 U.S.C. § 112, second paragraph
We concur with the conclusions reached by the Examiner, and adopt
as our own (1) the findings and reasons set forth by the Examiner in the
action from which this appeal is taken (Final Act. 4—6), and (2) the reasons
set forth by the Examiner in the Examiner’s Answer in response to
Appellant’s Appeal Brief (Ans. 7—15). We highlight and amplify certain
points regarding the Examiner’s rejection, as well as certain points of
Appellant’s arguments as follows.
First we address the broadest reasonable interpretation of independent
claims 1,10, 24, 27, and 30. We give a disputed claim term its broadest
4
Appeal 2016-006853
Application 13/726,466
reasonable interpretation, consistent with the Specification. In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000). We find no express definition of “seatbelt
apparatus” in the Specification, and Appellant points to none. Appellant’s
Summary of the Claimed Subject Matter identifies “paragraph [0005]
through [0032] of the specification and as depicted in figures 1 through 9 of
the drawings” for each of the independent claims.1 (App. Br. 2—3).
Appellant relies on all embodiments described in the Specification. Though
understanding the claim language may be aided by explanations contained in
the written description, a particular embodiment may not be read into a
claim when the claim language is broader than the embodiment.
SuperGuide Corp. v. DirecTV Enters, Inc., 358 F.3d 870, 875 (Fed. Cir.
2004).
A claim is indefinite if, when read in light of the Specification, it does
not reasonably apprise those skilled in the art of the scope of the invention.
Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1342 (Fed. Cir.
2003) (citations omitted). During prosecution of an application before the
USPTO, the threshold standard of ambiguity for indefmiteness is lower than
it might be during litigation of an issued patent. Ex parte Miyazaki, 89
USPQ2d 1207, 1212 (BPAI 2008) (precedential). “[I]f a claim is amenable
to two or more plausible claim constructions, the USPTO is justified in
requiring the applicant to more precisely define the metes and bounds of the
claimed invention by holding the claim . . . indefinite.” Miyazaki, 89
USPQ2d at 1211.
1 We find this Summary of the Claimed Subject Matter to be unhelpful in
our understanding of the scope of the claimed subject matter and insufficient
to meet the requirements of 37 C.F.R. § 41.37. Yet, to advance the
prosecution, we address Appellant’s arguments.
5
Appeal 2016-006853
Application 13/726,466
“In the patentability context, claims are to be given their broadest
reasonable interpretations . . . limitations are not to be read into the claims
from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993) (citations omitted). Any special meaning assigned to a term
“must be sufficiently clear in the specification that any departure from
common usage would be so understood by a person of experience in the
field of the invention.” Multiform Desiccants, Inc. v. Medzam, Ltd., 133
F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick
Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) (“A patentee
may act as its own lexicographer and assign to a term a unique definition
that is different from its ordinary and customary meaning; however, a
patentee must clearly express that intent in the written
description.”). Absent an express intent to impart a novel meaning to a
claim term, the words take on the ordinary and customary meanings
attributed to them by those of ordinary skill in the art. Brookhill—Wilk 1,
LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003)
(citation omitted).
Claims 1—4 and 7—9
We agree with Examiner that the claim language is not drafted in such
precise, clear, correct, and unambiguous terms so as to remove the
uncertainties from claim 1.
The Examiner maintains that:
With respect to claim 1, the recitation “having a reusable
resettable limited nondisengagement crash-load-limiting payout
slip (limited slip) belt engagement device” recites functional
language while failing to positively recite the structure which
goes to make up the device. Accordingly, the correspondence
6
Appeal 2016-006853
Application 13/726,466
between the claimed functional recitations and the disclosed
structure is unclear.
(Final Act. 4).
Appellants argue:
Appellant respectfully points out that the functional language of
“having a reusable resettable limited non-disengagement crash-
load-limiting payout (limited slip/' modifies or is applied to the
positively recited “belt engagement device” which goes to make
up the device. Does the examiner think that a “belt engagement
device” is a functional phrase? It is not. It is structure that defies
the examiner’s statement that the limitation fails to positively
recite the structure which goes to make up the device. Inasmuch
as appellant has shown that contrary to the examiner's assertion,
claim 1 does in fact “positively recite the structure which goes to
make up the device.”
(App. Br. 22).
We find Appellant does not identify any specific corresponding
structure to carry out the recited function beyond “belt engagement device.”
From our review of the Specification, we find paragraph 20 identifies
“limited slip,” but no specific structure to perform the function and no
specific structure for “belt engagement device.”
While we may speculate, we find Appellant has not identified specific
structure for “seatbelt apparatus having a reusable resettable limited non­
disengagement crash-load-limiting payout slip (limited slip) belt engagement
device.” (App. Br. 22).
Yet, Appellant has not identified any specific corresponding structure
in the prosecution history and has merely identified further descriptive
functionality to describe the descriptive functionality recited in the language
of independent claim 1. Consequently, we agree with the Examiner that
7
Appeal 2016-006853
Application 13/726,466
independent claim 1 does not particularly point out and distinctly claim the
invention, and we sustain the rejection of independent claim 1 and
dependent claims 2-4 and 7—9.
Claims 10—30
With respect to claims 10—30, the Examiner further maintains:
16. With respect to claim 10, the recitation “adapted such
that in a first scenario said apparatus allows limited non­
disengagement crash-load-limiting payout release (limited
release) of a seatbelt in response to a seatbelt tension
disengagement load, and wherein in a second scenario said
apparatus allows complete disengagement release of a seatbelt in
response to a hands-free seatbelt tension disengagement load”
recites functional language while failing to positively recite the
structure which goes to make up the device. Accordingly, the
correspondence between the claimed functional recitations and
the disclosed structure is unclear.
17. With respect to claim 24, the recitation “having a
crash-load limiting payout slip belt engagement device, wherein
the threshold load required to cause said slip to occur adaptively
varies” recites functional language while failing to positively
recite the structure which goes to make up the device.
Accordingly, the correspondence between the claimed functional
recitations and the disclosed structure is unclear.
18. With respect to claim 27, the recitation “wherein load-
limiting belt payout resistance varies during or in response to at
least one of a crash-free condition, a sensed impending crash
condition, and a sensed predetermined closure rate condition”
recites functional language while failing to positively recite the
structure which goes to make up the device. Accordingly, the
correspondence between the claimed functional recitations and
the disclosed structure is unclear.
19. With respect to claim 30, the recitation “adapted to
provide energy absorbing load-limiting belt payout, wherein
energy absorbing occurs substantially equally in a shoulder
8
Appeal 2016-006853
Application 13/726,466
harness belt portion of said apparatus and a lap belt portion of
said apparatus” recites functional language while failing to
positively recite the structure which goes to make up the device.
Accordingly, the correspondence between the claimed functional
recitations and the disclosed structure is unclear.
(Final Act. 4—5). The Examiner further maintains:
A decision on whether a claim is indefinite under 35
U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph
requires a determination of whether those skilled in the art would
understand what is claimed when the claim is read in light of the
specification.
For example, if the language of a claim, given its broadest
reasonable interpretation, is such that a person of ordinary skill
in the relevant art would read it with more than one reasonable
interpretation, then a rejection under 35 U.S.C. 112(b) or pre-
AIA 35 U.S.C. 112, second paragraph is appropriate. In the
instant case, applicant discloses at paragraph [0023] of the
specification that the seatbelt apparatus 40 comprises numerous
components and in particular elements 50, 60, 70, 80, 90, 92,
100, 120 and 140, and the elements 100, 120 and 140 are then
further explained in detail. Regarding claims 1-4, 7-15, 17, 18,
and 24-30, the examiner maintains that one of ordinary skill in
the art would not understand what is being claimed and would
not be able to determine what structure is necessarily required of
the claims because it is unclear if the claims should be interpreted
as reading on all of the elements disclosed in the specification,
some, or just one particular element.
With respect to claim 1, it is unclear what particular
element(s) form the “reusable resettable limited non­
disengagement crash-load-limiting payout slip (limited slip) belt
engagement device.”
With respect to claim 10, it is unclear what particular
element(s) form the “seatbelt apparatus” so that that [sic] in a
first scenario said apparatus allows limited non-disengagement
crash-load-limiting payout release (limited release) of a seatbelt
in response to a seatbelt tension disengagement load, and
wherein in a second scenario said apparatus allows complete
9
Appeal 2016-006853
Application 13/726,466
disengagement release of a seatbelt in response to a hands-free
seatbelt tension disengagement load.
With respect to claim 24, it is unclear what particular
element(s) form the “crash-load-limiting payout slip belt
engagement device” so that the threshold load required to cause
said slip to occur adaptively varies.
With respect to claim 27, it is unclear what particular
element(s) form the “seatbelt apparatus” so that load-limiting
belt payout resistance varies during or in response to at least one
of a crash-free condition, a sensed impending crash condition,
and a sensed predetermined closure rate condition.
With respect to claim 30, it is unclear what particular
element(s) form the “seatbelt apparatus” to provide energy
absorbing load-limiting belt payout, wherein energy absorbing
occurs substantially equally in a shoulder harness belt portion of
said apparatus and a lap belt portion of said apparatus.
(Final Act. 5—6).
Appellant presents similar arguments for independent claims 10, 24,
27, and 30 identifying either the “seatbelt apparatus” or “belt engagement
device” portion of the claim as the apparatus/structure which the functional
portion of the claim modifies. Yet, each of the independent claims is
directed to a different aspect of Appellant’s invention, but the same general
structure performs the function. Consequently, Appellant’s claim language
may be interpreted with more than a single definite interpretation, and we
agree with the Examiner that the claims are purely functional. (Ans. 12—15;
see also Ex parte Miyazaki, 89 USPQ2d 1207 (BPAI 2008) (precedential)).
While we acknowledge Appellant may be their own lexicographer,
this is not an unbounded privilege.
10
Appeal 2016-006853
Application 13/726,466
Additionally, we note that the issued US patent 8,336,6632 contains a
limitation regarding an input to vary the mode, but this is not set forth in the
language of independent claims 10, 24, 27, and 30.
As a result, we cannot ascertain the scope of for independent claims
10, 24, 27, and 30. We find that the language of for independent claims 10,
24, 27, and 30 are drafted in a purely functional limitation with no recited
structure to carry out the function.
Consequently, we find the lack of structure and lack of identification
of the specific corresponding structure in the Specification to be a fatal flaw
in for independent claims 10, 24, 27, and 30 and their respective dependent
claims because the scope of for independent claims 10, 24, 27, and 30 and
their respective dependent claims cannot be ascertained, and we sustain the
Examiner’s rejection of for independent claims 10, 24, 27, and 30 under 35
U.S.C. § 112, second paragraph.
2 Compare claim 1 of issued US patent 8,336,663:
1. A seatbelt apparatus for use in allowing disengagement of said
apparatus in response to a disengagement load in a first mode, and for
preventing disengagement of said apparatus in response to a
disengagement load in a second mode, and for automatically adjusting
said apparatus from said first mode to said second mode in response to
at least one predetermined input, wherein said apparatus is adapted
such that in response to a first situation automatically adjusts from
being disengageable in response to a disengagement load to being
undisengageable in response to a disengagement load, and in response
to a second situation automatically adjusts from being
undisengageable in response to a disengagement load, to being
disengageable in response to a disengagement load.
11
Appeal 2016-006853
Application 13/726,466
Antecedent Basis Rejections
Additionally, the Examiner maintains various lack of antecedent basis
rejections:
1) Claims 2, 12, and 24 recite the recitation “the threshold load” in
line 1 of claims 2 and 12 and line 3 of claim 24; 2) Claim 2 recites the
recitation “said limited slip” in line 2; 3) Claim 12 recites the recitation “said
limited release” in line 2; and 4) claim 24 recites the recitation “said slip” in
line 3. (Final act. 4; Ans. 7).
Appellant responds to the antecedent basis rejections with a general
discussion of the invention “as disclosed and as is known and indisputable
from a basic understanding of physics.” (App. Br. 21—22; see also Reply Br.
9). We find Appellant’s general argument to be unavailing to clarity the
invention as recited in the language of the claims to particularly point out
and distinctly claim the invention, and we sustain the Examiner’s antecedent
basis rejections.
Reply Brief
We additionally note that Appellant presents a number of contentions
in their Reply Brief. (Reply Br. 9—25).
Appellant presents the same responses to the Examiner’s antecedent
basis rejections. Again, we find Appellant’s argument does not show error
in the Examiner’s finding of a lack of antecedent basis.
With respect to each of the independent claims, in response to the
Examiner’s identification of the various particular elements disclosed in the
Specification which may or may not correspond to the structure to carry out
the functions, Appellant responds “‘So what.’” (Reply Br. 15, 16, 18, 19,
12
Appeal 2016-006853
Application 13/726,466
20). Appellant additionally contends with respect to each of the independent
claims that the claim “merely claims inter alia a belt engagement device -
any belt engagement device so long as it is a belt engagement device -
regardless of how many elements that the belt engagement device may or
may not have” or “merely claims inter alia a seatbelt apparatus - any
seatbelt apparatus so long as it is a seatbelt apparatus - regardless of how
many elements that the seatbelt apparatus may or may not have.” (Reply Br.
15, 17, 18, 19, 21)(emphases added).
We find Appellant’s response unpersuasive of error in the Examiner’s
factual findings and conclusion of a lack of particularity in the claimed
invention recited in independent claims 1,10, 24, 27, and 30 and their
respective dependent claims which contain the same deficient subject matter.
35U.S.C. § 112, first paragraph
We find that the Examiner has applied both a written description and
enablement rejections to claims 1,10, 24, 27, and 30. The Examiner’s
rejection is based upon essentially the same reasoning as the 35 U.S.C.
§112, second paragraph, rejection, which we sustained.
Considering now the rejections of claims 1—4, 7—15, 17, 18, and 24—
30 under 35 U.S.C. § 112 first paragraph, we have carefully considered the
subject matter set forth by the language. However, for reasons stated supra
in our affirmance rejection under the second paragraph of Section 112, no
reasonably definite meaning can be ascribed to certain language appearing in
the claims. Consequently, we cannot ascertain whether the claims meet the
written description support requirement or enablement requirement. In
comparing the claimed subject matter with the disclosed invention, it is
13
Appeal 2016-006853
Application 13/726,466
apparent to us that considerable speculations and assumptions are necessary
in order to determine what in fact is being claimed. Compare In re Steele,
305 F.2d 859, 862 (CCPA 1962) (a rejection based on prior art cannot be
based on speculations and assumptions and similarly a rejection for
enablement or written description cannot be evaluated). We are constrained
to reverse, pro forma, the Examiner’s rejections of claims 1—4, 7—15, 17, 18,
and 24—30 under 35 U.S.C. § 112, first paragraph. We hasten to add that
this is a procedural reversal rather than one based upon the merits of the
35 U.S.C. § 112, first paragraph rejections.
35 U.S.C. §§ 102 and 103
Considering now the rejections of independent claims 1,10, 24, 27,
and 30 and their respective dependent claims under 35 U.S.C. §§102 and
103, we have carefully considered the subject matter defined by these
claims. However, for reasons stated supra in our affirmance of the rejection
under the second paragraph of Section 112, no reasonably definite meaning
can be ascribed to certain language appearing in the claims. As the court in
In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) stated:
[a]ll words in a claim must be considered in judging the patentability
of that claim against the prior art. If no reasonably definite meaning
can be ascribed to certain terms in the claim, the subject matter does
not become obvious — the claim becomes indefinite.
In comparing the claimed subject matter with the applied prior art, it
is apparent to us that considerable speculations and assumptions are
necessary in order to determine what in fact is being claimed and how the
prior art would be applied. Since a rejection based on prior art cannot be
based on speculations and assumptions, see In re Steele, 305 F.2d at 862, we
14
Appeal 2016-006853
Application 13/726,466
are constrained to reverse, pro forma, the rejections of claims 1—3, 7—13, 15,
17, 18, and 24—30 under 35 U.S.C. §§ 102 and 103.3 We hasten to add that
this is a procedural reversal rather than one based upon the merits of the
Sections 102 and 103 rejections.
CONCLUSIONS
The Examiner did not err in rejecting claims 1—4, 7—15, 17, 18, and
24—30 based upon indefiniteness under 35 U.S.C. § 112, second paragraph.
We reverse, pro forma, the Examiner’s rejections of claims 1—4, 7—15,
17, 18, and 24—30 under 35 U.S.C. § 112, first paragraph and we reverse,
pro forma, the Examiner’s rejections of claims 1—3, 7—13, 15, 17, 18, and
24—30 under 35 U.S.C. §§ 102 and 103.
DECISION
For the above reasons, we sustain the Examiner’s rejection of claims
1—4, 7—15, 17, 18, and 24—30 based upon indefiniteness under 35 U.S.C.
§ 112, second paragraph. We reverse, pro forma, the Examiner’s rejections
of claims 1—4, 7—15, 17, 18, and 24—30 under 35 U.S.C. § 112, first
paragraph and we reverse, pro forma, the Examiner’s rejections of claims 1—
3,7-13, 15, 17, 18, and 24—30 under 35 U.S.C. §§ 102 and 103.
3 We note that the Examiner indicated “[cjlaims 4 and 14 would be
allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(a) or
35 U.S.C. 112 (pre-AIA), 1st paragraph and 35 U.S.C. 112(b) or 35 U.S.C.
112 (pre-AIA), 2nd paragraph.” (Final Act. 12).
15
Appeal 2016-006853
Application 13/726,466
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
16