Ex Parte Schramm

Patent Trial and Appeal Board

Jul 28, 2017

13726460 (P.T.A.B. Jul. 28, 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.
13/726,460 12/24/2012 Michael R. Schramm MRS-036U-1 1065
52966 7590
S chramm-Personal-ACT
Michael R. Schramm
350 West
2000 South
Perry, UT 84302
EXAMINER
BROWN, DREW J
ART UNIT PAPER NUMBER
3616
NOTIFICATION DATE DELIVERY MODE
08/01/2017 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 2016-003287
Application 13/726,460
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 2016-003287
Application 13/726,460
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1—20. We have jurisdiction under 35 U.S.C. § 6(b). The Examiner indicates
claims 15 and 16 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), first
paragraph and 35 U.S.C. 112(b)or35U.S.C. 112 (pre-AIA), 2nd paragraph,
set forth in this Office action and to include all of the limitations of the base
claim and any intervening claims. This application is related to serial
number 13/726,466; appeal number 2016-006853, and US patent 8,336,663
(US serial number 12/623,602}.
We affirm.
The claims are directed to a resettable load-limiting adaptive seatbelt
apparatus. Claims 1,10, and 20 reproduced below, are illustrative of the
claimed subject matter:
1. A seatbelt apparatus having a limited non-disengagement
crash-load-limiting payout slip (limited slip) belt engagement
device, wherein the threshold of resistance to slip of said
apparatus varies in the absence of belt movement.
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 release (complete
disconnection) of a seatbelt in response to a hands-free seatbelt
tension disengagement load, wherein the threshold of resistance
to release of said seatbelt varies.
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Application 13/726,460
20. A seatbelt apparatus that disengages in response to a
hands-free seatbelt tension disengagement load.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Tsuge et al. US 4,553,625 Nov. 19, 1985
Schulz et al. US 6,913,288 B2 July 5, 2005
Lenning US 2009/0005935 Al Jan. 1, 2009
Lenning GB 2420610 A May 31, 2006
Lenning WO 2009/082304 Al July 2, 2009
REJECTIONS
The Examiner made the following rejections:
Claims 1—20 stand rejected under 35 U.S.C. § 112(a) or 35 U.S.C.
§112 (pre-AIA), first paragraph.
Claims 1—20 stand 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.
Claims 1,2, and 4—6 stand rejected under pre-AIA 35 U.S.C. § 102(b)
as being anticipated by Schulz.
Claims 1—4, 6—8, 10-14, 17, and 18 stand rejected under pre-AIA 35
U.S.C. § 102(b) as being anticipated by Lenning (GB 2,420,610 A).
Claim 20 stands rejected under pre-AIA 35 U.S.C. § 102(b) as being
anticipated by Tsuge (US 4,553,625).
Claims 9 and 19 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Lenning (GB 2,420,610).
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Application 13/726,460
The Examiner indicated in the Final Action that claims 15 and 16
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), first paragraph and 35 U.S.C.
§ 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, and to include all
of the limitations of the base claim and any intervening claims.1
ANALYSIS
We find the § 112, second paragraph, rejection to be dispositive,
therefore we address this rejection 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. 3—4), and (2) the reasons
set forth by the Examiner in the Examiner’s Answer in response to
Appellant’s Appeal Brief (Ans. 5—8). We highlight and amplify certain
points regarding the Examiner’s rejection, as well as certain points of
Appellants’ arguments as follows.
Claims 1—9
First we address the broadest reasonable interpretation of independent
claims 1,10, and 20. We give a disputed claim term its broadest 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”
1 Appellant amended the independent claim 1 to include the limitations of
dependent claims 15 and 16 after the Final Action.
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Application 13/726,460
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.2 (App. Br. 2). 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.
“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.
2 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.
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Application 13/726,460
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).
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 “in the absence of belt movement” is a
negative limitation because it is unclear exactly how the threshold of
resistance to slip of the apparatus actually varies. (Final Act. 3—4). The
Examiner questions whether the threshold of resistance to slip also varies in
the presence of movement. (Final Act. 3—4).
Additionally, negative limitations are generally addressed with respect
to written description support, but we find the functional limitations are not
identified with respect to corresponding structure to perform the functional
limitations with regards to the negative limitation. Santarus, Inc. v. Par
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Application 13/726,460
Pharmaceutical, Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012). (“Negative
claim limitations are adequately supported when the specification describes
a reason to exclude the relevant limitation. Such written description support
need not rise to the level of disclaimer. In fact, it is possible for the patentee
to support both the inclusion and exclusion of the same material.”)
Here, we agree with the Examiner that Appellant has not identified
how the negative limitation is supported by the disclosed invention and what
corresponding structure performs the recited functions of the negative
limitation.
Appellant contends “Appellant has fully and completely disclosed
how it is that the seatbelt apparatus varies the threshold of resistance to slip
of the apparatus (i.e. by varying the spring load applied to the grip plates
without regard to presence or absence of belt movement.)” (App. Br. 7).
Appellant contends “the examiner's statement would be true only for those
who choose not read the specification.” (App. Br. 7). We find Appellant
does not identity any specific corresponding structure to carry out the recited
function. From our review of the Specification, we find paragraph 20
identifies “limited slip,” but no specific structure to perform the function.
While we may speculate, we find Appellant has not identified specific
structure for “varying the spring load applied to the grip plates.” (App. Br.
7). We find paragraph 23 identifies embodiments with “varying,” but some
of these embodiments have “the clip release load limits may be pre-
established by a manufacturer” and consequently the clip release load may
vary, but do not actively vary the threshold in the absence of belt movement.
Furthermore, we find paragraph 29 identifies:
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Second grip plate 160 is shown spring loadedly positioned
against first grip plate 150 by means of spring 166 pushing
against second grip plate 160 and lock pin 172 is shown in a
retracted (unlocked) position. Actuator 164 functions to apply a
greater or lesser compressive load on spring 164, with such
compressive load preferably corresponding to a sensed
condition.
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.
While we acknowledge Appellant may be their own lexicographer,
this is not an unbounded privilege. We do note that the issued US patent
8,336,6633 contains a limitation regarding an input to vary the mode, but this
is not set forth in the language of independent claim 1.
3 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.
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As a result, we cannot ascertain the scope of independent claim 1. We
find that the language of independent claim 1 is 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 independent claim 1 and its respective dependent claims because the
scope of independent claim 1 and its respective dependent claims cannot be
ascertained, and we sustain the Examiner’s rejection of independent claim 1
under 35 U.S.C. § 112, second paragraph.
Claims 10—20
With respect to independent claims 10 and 20, the Examiner
maintains the claims recite functional language while failing to positively
recite the structure which goes to make up the device. (Final Act. 4).
Appellant responds:
the examiner's statement is demonstrably and factually incorrect.
Moreover, appellant respectfully asserts that the examiner's
statement requires the willful disregard of the “A seatbelt
apparatus” portion of the claim limitation. Does the examiner
think that “A seatbelt apparatus” is a functional term? 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 ... claim 10 does in fact positively recite the
structure which goes to make up the device.
(App. Br. 9). While Appellant contends the Examiner’s statement is
“demonstrably and factually incorrect,” Appellant failed to demonstrate and
identify the corresponding structure which performs the functions. As
discussed above with respect to independent claim 1, the Summary of the
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Claimed Subject Matter is overly broad and sweeping without providing any
specific and helpful correlation. Appellant’s response similarly does not
identify corresponding structure beyond the preamble’s “seatbelt apparatus.”
Consequently, we agree with the Examiner, and we sustain the Examiner’s
rejection of independent claims 10 and 20 under 35 U.S.C. § 112, second
paragraph.
Additionally, we find that each of independent claims 1,10, and 20
are directed to different embodiments or facets of Appellant’s disclosed
invention, but Appellant’s reliance is upon the same claim language
“seatbelt apparatus” for the corresponding structure. (App. Br. 8—9). We
find Appellant’s general argument and proffered structure to be unavailing.
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 independent claims 10 and 20.
Therefore, we sustain the indefmiteness rejection of representative
claims 1, 10, and 20 under 35 U.S.C. § 112, second paragraph. Because
dependent claims 2—9 and 11—19 contain the same deficient subject matter,
and Appellant has not identified how these limitations resolve the noted
deficiencies in the base claims, we group these claims as falling with their
parent independent claims.
35 U.S.C. § 112, first paragraph
We find that the Examiner has applied both a written description and
enablement rejections to claims 1,10, and 20. The Examiner’s rejection is
based upon essentially the same reasoning as the 35 U.S.C. § 112, second
paragraph, rejection, which we sustained.
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Considering now the rejections of claims 1—20 under 35 U.S.C.
§ 112(a), 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, second paragraph, 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
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—20 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(a)
rejections.
Additionally, we find that the Specification is drafted in a broad
manner with limited disclosure of how thresholds and resistance actually are
adaptive or vary.
35 U.S.C. §§ 102 and 103
Considering now the rejections of independent claims 1 and 10 and
their respective dependent claims under 35 U.S.C. § 102 and dependent
claims 9 and 19 under 35 U.S.C. § 103, we have carefully considered the
subject matter defined by these claims. However, for reasons stated supra in
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our affirmance of the rejection under the paragraph (b) 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
are constrained to reverse, pro forma, the rejections of claims 1—14 and 17—
19 under 35 U.S.C. §§ 102 and 103. We hasten to add that this is a
procedural reversal rather than one based upon the merits of the Sections
102 and 103 rejections.
We do not apply the same procedural reversal to independent claim 20
because Appellant has not set forth separate arguments for patentability of
independent claim 20 in the Appeal Brief.
Anticipation - Claim 20
Appellants admit that they failed to present separate arguments to the
obviousness rejection of independent claim 20 in the Appeal Brief. (Reply
Br. 20). See Hyatt v. Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir2008)
(“When the appellant fails to contest a ground of rejection to the Board,
section 1.192(c)(7) [(now section 41.37(c)(l)(iv)] imposes no burden on the
Board to consider the merits of that ground of rejection . . . the Board may
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treat any argument with respect to that ground of rejection as waived.”). Id.
at 1314; see also In re Guess, 347 Fed. Appx. 558, 559 (Fed. Cir. 2009)
(citing In re Watts, 354 F.3d 1362, 1367 (Fed. Cir. 2004)) (“Appellants
failed to argue that any limitations unique to [the claims] survive [the
rejection]. Appellants have therefore waived any such arguments on
appeal.”).
We additionally note that Appellant presents a number of contentions
for the first time in their Reply Brief. (Reply Br. 20—22.) The Examiner’s
Final Office Action, mailed March 10, 2015, set forth the grounds for each
of the rejections on appeal. Appellants could have presented their arguments
in the Principal Brief on Appeal, but did not do so. The formal requirements
of the Appeal Brief are set out in 37 C.F.R. § 41.37(c)(l)(iv), which, inter
alia, sets the formal requirements for the nature of the argument. This
section requires Appellants to put forward a complete argument. The
positions set forth in the Reply Brief are considered to have been waived
because they were not raised in Appellant’s opening Brief. See Optivus
Tech., Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir.
2006). Any bases for asserting error, whether factual or legal, that are not
raised in the Principal Brief, are waived. Accordingly, we will not address
Appellant’s contentions raised for the first time in their Reply Brief. As a
result, we summarily sustain the anticipation rejection of independent claim
20.4
4 Additionally, we note that the language of independent claim 20 is so
broad as to read upon a seatbelt that breaks and disengages in an accident
where the seat belt tension disengagement load exceeds the structural limits
of the materials used in the seatbelt.
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CONCLUSIONS
The Examiner did not err in rejecting claims 1—20 based upon
indefmiteness under 35 U.S.C. § 112, second paragraph and the Examiner
did not err in rejecting claim 20 based upon anticipation under 35 U.S.C.
§102.
We reverse, pro forma, the Examiner’s rejections of claims 1—20
under 35 U.S.C. § 112, first paragraph and we reverse, pro forma, the
Examiner’s rejections of claims 1—19 under 35 U.S.C. §§ 102 and 103.
DECISION
For the above reasons, we sustain the Examiner’s rejection of claims
1—20 based upon indefmiteness under 35 U.S.C. § 112, second paragraph.
We summarily sustain the anticipation rejection under 35 U.S.C. § 102 of
independent claim 20, but we reverse, pro forma, the examiner's rejections
of claims 1—20 under 35 U.S.C. § 112, first paragraph and we reverse, pro
forma, the Examiner’s rejections of claims 1—19 under 35 U.S.C. §§ 102 and
103.
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
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