Ex Parte SharrowDownload PDFPatent Trial and Appeal BoardMar 20, 201713474392 (P.T.A.B. Mar. 20, 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. 4020.2001 2322 EXAMINER SAAD, ERIN BARRY ART UNIT PAPER NUMBER 1735 MAIL DATE DELIVERY MODE 13/474,392 05/17/2012 62254 7590 JOHN D. TITUS HARTMAN TITUS PLC 7114 E STETSON DR Suite 205 SCOTTSDALE, AZ 85251 Keith SHARROW 03/21/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KEITH SHARROW Appeal 2016-003335 Application 13/474,392 Technology Center 1700 Before ADRIENE LEPIANE HANLON, N. WHITNEY WILSON, and SHELDON M. McGEE, Administrative Patent Judges. McGEE, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’ final decision rejecting claims 1, 3—14, 17, and 18, and objecting to the Specification under 35 U.S.C. § 132(a). We have jurisdiction over the rejections on appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. Appeal 2016-003335 Application 13/474,392 SUBJECT MATTER Claim 1 is illustrative of the appealed subject matter (emphasis added): 1. A plumber's heat shield comprising: a clamp having a jaw opening to greater than 1-1/2 inches; a heat shield member comprising an arcuate shell formed from a material having high infrared reflectivity and low affinity for tin-lead and lead-free soldering alloys, the heat shield member having a concave surface, the concave surface having a radius of curvature of at least 1 inch; the heat shield member being free of windows made of a solid transparent or semi transparent material; and an obedient shaft, said obedient shaft comprising an elongate member having a longitudinal axis, a proximal end and a distal end, the proximal end of said obedient shaft including a first termination rigidly attached to the clamp, the distal end of said obedient shaft including a second termination attached to said heat shield member, the obedient shaft comprising a flexible outer sheath surrounding a longitudinally-disposed single-strand ductile wire core. Appeal Br. 19 (Claims App.). OBJECTION AND REJECTIONS In the Final Office Action1, the Examiner maintains the following rejections and objections: 1. The Specification is objected to under 35 U.S.C. § 132(a) for the introduction of new matter (Final Act. 2); 1 Final Office Action dated April 2, 2015. 2 Appeal 2016-003335 Application 13/474,392 2. Claim 17 is rejected under 35 U.S.C. § 112,12 as being indefinite {id. at 3); 3. Claims 1, 3, 7—14, 17, and 18 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Lowell (US 3,852,582, issued Dec. 3, 1974) in view of Armstrong (US 3,724,346, issued Apr. 3, 1973), Yamagiwa (WO 2005/024294 Al, published March 17, 2005; machine-generated English translation), Han (GB 2 425 589 A, published Nov. 1, 2006), and Goldberg (US 1,995,421, issued Mar. 26, 1935) {id. at 3-8); 4. Claims 4 and 5 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Lowell in view of Armstrong, Yamagiwa, Han, and Goldberg, and further in view of Webb (US 1,905,197, issued Apr. 25, 1933) {id. at 8—9); and 5. Claim 6 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Lowell in view of Armstrong, Yamagiwa, Han, and Goldberg, and further in view of Tores (US 2006/0144633 Al, published July 6, 2006) {id. at 10). ANALYSIS Objection under 35 U.S.C. § 132(a) The Examiner objects to the amendment to the Specification filed Lebruary 5, 2015 for containing new matter, final Act. 2. Appellant contends that the various amendments2 made to paragraph 16 of the Specification are not new matter because they do “nothing more than add a dictionary or art[-]recognized definition,” they “merely state[] 2 Amendment filed Leb. 5, 2015 3 Appeal 2016-003335 Application 13/474,392 what is inherently disclosed,” or they are “nothing more than [corrections of] an obvious error.” Appeal Br. 8—9. The Examiner responds that “objections are not appealable” and that “the amendment to the specification was not mere dictionary definitions, but definitions created ... in order to overcome the art applied by defining over a specific material (steel).” Ans. 10. In reply, Appellant contends that Manual of Patent Examining Procedure § 2163.06 requires this Board to decide the propriety of the objection because “the Examiner objected to the proposed amendments to the specification, then rejected [claim 17] under 35 U.S.C. § 112 on the same grounds.” Reply Br. 2. See also, Appeal Br. 7. There are a host of various kinds of decisions an examiner makes in the examination proceeding— mostly matters of a discretionary, procedural or nonsubstantive nature— which have not been and are not now appealable to the board . . . when they are not directly connected with the merits of issues involving rejections of claims, but traditionally have been settled by petition to the Commissioner.[] In re Hengehold, 440 F.2d 1395, 1403 (CCPA 1971) (emphasis added). In the present case, Appellant made various amendments to paragraph 16 of the Specification. Of these amendments, only one is directly connected to the merits of the indefmiteness rejection of claim 17—a purported definition of “a low modulus of elasticity.” Thus, we only have jurisdiction to decide the merits of the Examiner’s objection to Appellant’s amendment which attempts to add the following language: “Tow modulus of elasticity’ is defined to mean a modulus of elasticity that is lower than that of steel.” Regarding this amendment, Appellant asserts that 4 Appeal 2016-003335 Application 13/474,392 amending the specification to read “low modulus of elasticity” is defined to mean a modulus of elasticity that is lower than that of steel merely states what is inherently disclosed, since three materials were disclosed as examples, namely steel, aluminum and copper and of these, steel has the highest modulus of elasticity. This was a simple case of Applicant inserting a shorthand definition in order to make the claims more readable. No new information was added by this amendment. Appeal. Br. 8 (emphasis omitted). We disagree. The Specification discloses that “[djuctile core 22 can be formed of any malleable material such as steel or aluminum wire but in the illustrative embodiment comprises 12-guage solid copper wire.” Spec. 116 (emphasis added). The Specification does not limit the core material to only steel, aluminum and copper, but rather broadly includes “any malleable material.” Id. (emphasis added). Moreover, Appellant has not shown that steel has the highest modulus of elasticity of any malleable material. Rather, Appellant presents evidence where various types of steel have among the highest listed modulus of elasticity values of those materials tested. See, Appeal Br., Evid. App., Exh. B, Table 2-1; Exh. D, Table A-l. We further emphasize Appellant’s evidence does not evince a modulus of elasticity value for copper as alleged, but instead lists alloys of copper such as brass and bronze. Id. We conclude, therefore, that Appellant’s amendment that attempts to define a “low modulus of elasticity” relative to one of many possible malleable materials (e.g., steel) is not “merely stat[ing] what is inherently disclosed” in the Specification as Appellant urges. Appeal Br. 8. Accordingly, we sustain the Examiner’s objection to the Specification with respect to Appellant’s amendment adding the following language: “Tow 5 Appeal 2016-003335 Application 13/474,392 modulus of elasticity’ is defined to mean a modulus of elasticity that is lower than that of steel.” Regarding Appellant’s remaining amendments to paragraph 16 concerning “low-carbon” steel, the modulus of elasticity comparison between copper and steel, and the purported definition of “ductile”, we determine that the Examiner’s objection to the Specification is not related to the indefmiteness rejection on appeal. Thus, we do not have jurisdiction to review this objection because it is a petitionable matter. 35 U.S.C. §§ 6(b) and 134(a) (2010); In re Hengehold, 440 F.2d at 1404 (CCPA 1971). Rejection under 35 U.S.C. §112, f 2 The Examiner rejects claim 17 under 35 U.S.C. § 112,12 as being indefinite “because it is unclear what is meant by Tow modulus of elasticity’.” Final Act. 3; Ans. 2. Appellant argues that this rejection should be reversed because the objected-to “amendments to the specification did not introduce new matter.” Appeal Br. 9. Because we sustain the Examiner’s Specification objection with respect to the purported definition of a “low modulus of elasticity,” and because Appellant does not otherwise argue this rejection with any specificity (Appeal Br. 6—9; Reply Br. 2—3), we affirm the Examiner’s rejection of claim 17 under 35 U.S.C. § 112,12 as indefinite. Rejections under 35 U.S.C. § 103(a) In support of each rejection under 35 U.S.C. § 103(a) before us (Final Act. 3—10; Ans. 3—9), the Examiner finds that Goldberg discloses “a longitudinally-disposed single-strand elongated ductile wire core 30” and 6 Appeal 2016-003335 Application 13/474,392 because “Goldberg discloses multiple strands/wires down the middle of the shaft, the limitation ‘a longitudinally-disposed single strand ductile wire core’ is met[because the] claim does not require only a single strand.” Final Act. 5—6. Appellant contends that the Examiner’s claim construction is unreasonably broad because it “is in direct contradiction to the express claim language” requiring a single-strand ductile wire core. Appeal Br. 14. Appellant urges that “[i]f an additional strand is added to the core ... the core will no longer be a ‘single-strand.’ It will be a ‘multiple strand’ core.” Id. In response, the Examiner notes the absence of a definition in the Specification of a “strand” or “single strand,” and provides what is alleged to be “the general definition of strand”3 with an attempt to “apply the term strand in its broadest reasonable interpretation.” Ans. 12. Appellant’s argument is persuasive of reversible error. “[DJuring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification.” In re Translogic Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)); see also In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (The scope of the claims in patent applications is not determined solely on the basis of the claim language, but upon giving claims their broadest reasonable construction in light of the 3 Although the Examiner indicates that “[t]here are many reasonable interpretations for the term ‘single strand,”’ the Examiner’s definitions are only directed to the term “strand.” Ans. 12. 7 Appeal 2016-003335 Application 13/474,392 specification as it would be interpreted by one of ordinary skill in the art. (citations omitted)). In this case, while the Examiner is correct that “there is no clear definition [of] the words ‘single strand’ or ‘strand’” in the Specification (Ans. 12), the Specification is instructive as to the broadest reasonable scope of this claim term. For example, the Specification indicates that the “[ojbedient shaft 16 . . . comprises a ductile core 22 (Fig. 6)” (Spec. 116 (emphasis omitted)), and discloses that an illustrative embodiment of the ductile core “comprises 12-gauge solid copper wire.'” Id. (emphasis added). Notably, Figure 6 illustrates a single wire 22 wrapped inside an outer sheath 20. The Examiner does not point us to any disclosure within the Specification that reasonably supports a broader interpretation so as to include multiple wires, such as Goldberg’s plurality of wires 30. Thus, we determine that the broadest reasonable construction for the claimed “single strand ductile wire core” in light of the Specification does not encompass Goldberg’s multiple wire core 30 as set forth by the Examiner. Final Act. 5— 6. Therefore, on this record, because the Examiner has failed to show that Goldberg’s wire core 30 satisfies the claimed “single-strand ductile wire core,” and because each of the rejections under § 103(a) are based on this erroneous finding, we are constrained to reverse the Examiner’s rejections of claims 1, 3—14, 17, and 18 under 35 U.S.C. § 103(a). DECISION We affirm the Examiner’s rejection of claim 17 under 35 U.S.C. §112,12. 8 Appeal 2016-003335 Application 13/474,392 We reverse the Examiner’s rejections of claims 1, 3—14, 17, and 18 under 35 U.S.C. § 103(a). We sustain the Examiner’s objection to the Specification under 35 U.S.C. § 132 with respect to a ‘“low modulus of elasticity’ is defined to mean a modulus of elasticity that is lower than that of steel.” We do not reach the Examiner’s objection to the Specification under 35 U.S.C. § 132 with respect to all other objected-to language. 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)(l)(iv). AFFIRMED-IN-PART 9 Copy with citationCopy as parenthetical citation