Ex Parte SchrammDownload PDFPatent Trial and Appeal BoardSep 5, 201713726466 (P.T.A.B. Sep. 5, 2017) Copy Citation 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 Copy with citationCopy as parenthetical citation