Ex Parte Sharrow

Patent Trial and Appeal Board

Mar 20, 2017

13474392 (P.T.A.B. Mar. 20, 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.
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.
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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
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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
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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
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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
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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.
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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.
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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
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