10833360 (B.P.A.I. Nov. 18, 2009)

Ex Parte Sugimura

Board of Patent Appeals and InterferencesNov 18, 2009

10833360 (B.P.A.I. Nov. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte NOBUYUKI SUGIMURA ____________________ Appeal 2009-005829 Application 10/833,360 Technology Center 3600 ____________________ Decided: November 18, 2009 ____________________ Before: WILLIAM F. PATE III, JENNIFER D. BAHR and STEVEN D. A. MCCARTHY, Administrative Patent Judges. PATE III, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 17-20, 22-26, and 28. While Appellant indicates that claims 17-29 are on appeal, we note that claims 21, 27, and 29 stand withdrawn from consideration without traverse. See Ans. 3; Non-Final Rej. Feb. 28, 2007; Appeal 2009-005829 Application 10/833,360 2 Applicant’s Arguments Aug. 1, 2007. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). The claims are directed to a screw having a particular thread arrangement. Claim 17, reproduced below, is illustrative of the claimed subject matter: 17. A screw comprising: a first member having a plurality of alternating first thread ridges and first thread grooves, a ridge width of the first thread ridges being larger than a groove width of the first thread grooves at a linear measurement diameter of the first member; wherein the linear measurement diameter is determined by calculating a linear pitch diameter of a hypothetical member having a plurality of hypothetical thread grooves and hypothetical thread ridges, with the hypothetical thread grooves being identical to the first thread grooves, and with the hypothetical thread ridges and the hypothetical thread grooves having identical, but opposite, profiles, and with the linear measurement diameter being identical to the linear pitch diameter of the hypothetical member. The prior art relied upon by the Examiner in rejecting the claims on appeal is: Rossmann Sugimura US 3,487,422 US 4,958,973 Dec. 30, 1969 Sep 25, 1990 Claims 17-20, 22-26, and 28 stand rejected under 35 U.S.C. § 112 second paragraph as being indefinite. Ans. 3. Appeal 2009-005829 Application 10/833,360 3 Claims 17-20, 22-26, and 28 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Sugimura and Rossmann. Ans. 4.1 OPINION The rejection of claims 17-20, 22-26, and 28 under 35 U.S.C. § 112 second paragraph is based upon the language used to define the “linear measurement diameter.” The linear measurement diameter is based upon the “pitch diameter of a hypothetical member.” This language appears in the second paragraph of independent claim 17 and the fourth paragraph of independent claim 22. The Examiner opines that using the term “hypothetical” renders the claim ambiguous, and therefore indefinite, because one can come up with any structural dimensions for a “hypothetical member.” Ans. 3, 8. Appellant contends that one of ordinary skill in the art could understand the metes and bounds of the claims despite the fact that the specified relative widths of the ridges and grooves of the claimed screw are based upon the dimensions of a hypothetical construct. App. Br. 6-7. The test for definiteness under 35 U.S.C. § 112, second paragraph, is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). “The language of the claims must make it clear what subject matter they encompass.” In re Hammack, 427 F.2d 1378, 1382 (CCPA 1970). This has been frequently stated in a shortened form as a requirement 1 The Answer includes cancelled claims 39-41 and 43-45 in this rejection. Claim amendments Mar. 4, 2008; Adv. Action Mar. 4, 2008 Appeal 2009-005829 Application 10/833,360 4 that the claims set forth the “metes and bounds” of their coverage. See, merely for example, In re Venezia, 530 F.2d 956, 958 (CCPA 1976); In re Goffe, 526 F.2d 1393, 1397 (CCPA 1975); In re Watson, 517 F.2d 465, 477 (CCPA 1975); In re Knowlton, 481 F.2d 1357, 1366, (CCPA 1973). We agree with Appellant that claims 17 and 22 are sufficiently precise to comply with the requirements of 35 U.S.C. § 112, second paragraph. Since the claim provides a methodology for calculating the relevant dimensions of the hypothetical member, one cannot come up with any structural dimensions for the hypothetical member as the Examiner suggests. Ans. 3, 8. The relevant dimension, the pitch diameter, of the hypothetical member, is based upon the profile of the thread grooves of the claimed screw, but with the hypothetical thread ridges and hypothetical thread grooves, unlike the claimed screw, having identical, but opposite, profiles. Calculating a pitch diameter for the hypothetical member enables a determination of a diametrical distance—the linear measurement diameter— at which the ridges of the claimed screw must be wider than the grooves. If a screw does not have a linear measurement diameter where this occurs, it does not meet the claim. Since those skilled in the art would understand what is claimed when the claim is read in light of the Specification the language of the claims make it clear what subject matter they encompass. Accordingly, we must reverse the rejection of claims 17 and 22, and also dependent claims 18-20 and 23-26, and 28 under 35 U.S.C. § 112, second paragraph. Regarding the rejection of claims 17-20, 22-26 and 28 under 35 U.S.C. § 103(a) as being unpatentable over Sugimura and Rossmann, the Examiner opines that if the thread height and contact surfaces are Appeal 2009-005829 Application 10/833,360 5 successively lowered, as described in Sugimura, there will inherently be a range wherein the ratio of ridge width to groove width is as claimed. Ans. 5, 10-11. The Examiner relies upon Rossmann for a teaching of maintaining the ridges at a same height in order to form a linear diameter. Ans. 7. Appellant contends that the relationship between the ridges and grooves of the claimed screw is not explicitly stated or necessarily present in Sugimura. App. Br. 12-14. The Examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness. The key to supporting any prima facie conclusion of obviousness under 35 U.S.C. § 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) noted that the analysis supporting a rejection under 35 U.S.C. § 103 should be made explicit. The Federal Circuit has stated that “rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418. There is no legally recognizable essential gist or heart of the invention. W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1548 (Fed.Cir.1983), cert. denied, 469 U.S. 851 (1984). All words in a claim must be considered in judging the obviousness of the claimed subject matter. See In re Wilson, 424 F.2d 1382, 1385. The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. §§ 102 or 103. Appeal 2009-005829 Application 10/833,360 6 “The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.” In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995). “To establish inherency, the extrinsic evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal quotations omitted). In relying upon the theory of inherency, the Examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art. Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990). In order to meet the claim a screw must have a ridge width larger than a groove width at the specified “linear measurement diameter.” This diameter does not necessarily correspond to the crest of Sugimura’s successively lower screw threads FS as the Examiner suggests. Ans. 5, 10-11. Sugimura’s ridges may have the same width at the relevant diameter—the linear measurement diameter—despite being truncated to successively lower depths. For example, FS10 may have the same width as FS1 at the relevant diameter despite having drastically different heights and a drastically different width at their respective crests. Sugimura is mainly concerned with the heights L of the ridges of threads FS and not with the widths. Sugimura col. 3, ll. 41-54. Sugimura does not provide enough information to determine whether the ridge width at the linear measurement Appeal 2009-005829 Application 10/833,360 7 diameter is wider than the groove width. Similarly, since Rossmann’s main concern is the groove depth (Rossmann col. 2, l. 67 – col. 3, l. 17) of the disclosed threads, Rossmann also does not provide enough information to determine whether the ridge width at the linear measurement diameter is wider than the groove width. When the reference does not disclose that the drawings are to scale and is silent as to dimensions, arguments based on measurement of the drawing features are of little value. See Hockerson- Halberstadt, Inc. v. Avia Group Int'l, 222 F.3d 951, 956 (Fed. Cir. 2000) (The disclosure gave no indication that the drawings were drawn to scale. “[I]t is well established that patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.”). Since the Examiner’s conclusion of obviousness is based upon a speculative assumption about the disclosures of Sugimura and Rossmann, we are constrained to reverse the rejection of claims 17-20, 22-26 and 28 as being unpatentable over Sugimura and Rossmann. DECISION For the above reasons, the Examiner’s rejection of claims 17-20, 22- 26 and 28 under 35 U.S.C. § 112 second paragraph as being indefinite is reversed. The Examiner’s rejection of claims 17-20, 22-26 and 28 under 35 U.S.C. § 103(a) as being unpatentable over Sugimura and Rossmann is also reversed. REVERSED Vsh Appeal 2009-005829 Application 10/833,360 8 PRICE HENEVELD COOPER DEWITT & LITTON, LLP 695 KENMOOR, S.E. 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