Ex Parte Stebnicki et al

Patent Trial and Appeal Board

Jun 11, 2013

11773509 (P.T.A.B. Jun. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JAMES C. STEBNICKI and ROBERT E. MITCHELL
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Appeal 2010-010973
Application 11/773,509
Technology Center 3600
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Before CHARLES N. GREENHUT, BARRY L. GROSSMAN, and
PATRICK R. SCANLON, Administrative Patent Judges.

GROSSMAN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

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STATEMENT OF THE CASE
Appellants timely filed on May 23, 2013 a request for rehearing under
37 CFR §§ 41.50(b)(2) and 41.52 (hereinafter “Request”) of our decision
mailed March 28, 2013 (hereinafter “Decision”) entering a new ground of
rejection of claims 23-29 under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which Appellants regard as the invention. Appellants’ Request does
not seek rehearing of the new ground of rejection entered against claim 25
under 35 U.S.C. § 112, first paragraph. Appellants request that the new
ground of rejection of claims 23-29 be withdrawn and the patentability of
claims 23, 24, and 26-29 be confirmed. Request 4.
OPINION
Appellants’ Request alleges that the Board misapprehended the
language of independent Claim 23 when entering the new ground of
rejection. Request 1.
In the Decision, the Board identified two alternative interpretations of
claim 23 and found that under either interpretation claim 23 does not meet
threshold requirements of clarity and precision because it is unclear from the
claim into which element the post extends or is received. Decision 6-7.
Appellants’ Request proposes a third interpretation, arguing that the
Board’s two alternative interpretations misapprehended what Appellants
assert is the “proper reading” of claim 23. Request 2. In order to reach its
proposed “proper reading” of claim 23, however, Appellants’ have revised,
re-punctuated, and removed claim language in its attempt to establish that
the original language met its statutory obligation of particularly pointing out
and distinctly claiming the subject matter of the invention.
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Claim 23 recites in relevant part:
a post extending along a post axis into one of one of said
first eye and said second eye and said roller assembly and
received in the other of said one of said first eye and said
second eye and said roller assembly to detachably mount said
roller assembly between said first and second eyes.
Appellants’ proposed “proper reading” concludes that this original claim
language clearly and precisely states that “the post extends along a post axis
into one of ((A1) and (A2)) or (B) and is received in the other of ((A1) and
(A2)) or (B).” Request 3.
This proposed “proper reading” changes the word “and” in the phrase
“said second eye and said roller assembly” recited in the claim to “or”
(change in both occurrences of this phrase; emphasis added); adds
punctuation by way of parenthetical groups1; and deletes some words of the
claim (one of the “one of” phrases). This proposed rewritten third
interpretation is not persuasive that the Board misapprehended the language
of claim 23.
Appellants’ Request, however, provides an opportunity for the Board
to clarify one point in the Decision to avoid any potential for confusion. The
Decision stated that that claim 23 is “insolubly ambiguous.” Decision 7.
This statement should not be interpreted to mean that the Board or the Patent

1 We know from basic mathematics that how you group elements matters.
Depending on how you create parenthetical groups of the numbers, there are
two options to the correct answer to the equation 1+2x3 = ?. The answer to
the equation (1+2) x 3 is different than the answer to the equation 1+ (2 x 3).
The imprecision of two or more plausible answers is not acceptable in
mathematics, which has established clear rules for the order of mathematical
operations. The imprecision of two or more plausible claim interpretations
also is not acceptable in patent claims under Ex parte Miyazaki, 89 USPQ2d
1207, 1211 (BPAI 2008) (precedential opinion).
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and Trademark Office applies this high standard for finding indefiniteness to
claims in patent applications.
For post-prosecution analysis, our reviewing court uses the following
analysis: A patent claim is not invalid for indefiniteness unless it is insolubly
ambiguous; therefore, if the meaning of the claim is discernible, the claim is
sufficiently clear to avoid invalidity on indefiniteness grounds, even if
interpreting the claim is difficult, and construction is one over which
reasonable persons could disagree. Bancorp Services, LLC v. Hartford Life
Insurance Co., 359 F.3d 1367, 1371 (Fed. Cir. 2004).2
However, during proceedings to obtain a patent before the Patent and
Trademark Office, while Appellant still has the opportunity to amend the
claims, greater clarity is required:
In particular, rather than requiring that the claims are insolubly
ambiguous, we hold that if 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
unpatentable under 35 U.S.C. § 112, second paragraph, as
indefinite.
Miyazaki, 89 USPQ2d at 1211.
While the Board’s Decision stated that claim 23 was “insolubly
ambiguous,” this merely means that the claim clearly met the standard
established in Ex Parte Miyazaki. The Decision stated two alternative
plausible interpretations of claim 23 thereby establishing that claim 23 is

2 The Federal Circuit has held in post-issuance patent infringement cases that
the definiteness requirement “does not compel absolute clarity” and “[o]nly
claims ‘not amenable to construction’ or ‘insolubly ambiguous’ are
indefinite.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347
(Fed. Cir. 2005) (citations omitted).
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unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite under
the Miyazaki standard. Appellants proposed third definition further
establishes that claim 23 is indefinite under the Miyazaki standard.
As explained in Miyazaki, the USPTO is justified in using this lower
threshold showing of ambiguity to support a finding of indefiniteness under
35 U.S.C. § 112, second paragraph, because the applicant has an opportunity
and a duty to amend the claims during prosecution to more clearly and
precisely define the metes and bounds of the claimed invention and to more
clearly and precisely put the public on notice of the scope of the patent. “It
is the applicants' burden to precisely define the invention, not the PTO's.
See 35 U.S.C. § 112 ¶ 2 … this section puts the burden of precise claim
drafting squarely on the applicant.” In re Morris, 127 F.3d 1048, 1056 (Fed.
Cir. 1997).
Due to the ambiguity concerning the element from which the post
extends and into which the post is received, and the fact that this claim
element is amenable to two or more plausible claim constructions, the new
ground of rejection in the Decision was properly entered under the relevant
facts and applicable law. Appellants have not established that the Board
misapprehended the language of claim 23.
DECISION
Appellants’ Request has been granted to the extent that we have
reconsidered our Decision in light of the arguments in Appellants’ Request,
but is denied with respect to our making any modification to the Decision.

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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)(1)(iv).

DENIED

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