Ex Parte Thomas

Patent Trial and Appeal Board

Dec 26, 2017

13164025 (P.T.A.B. Dec. 26, 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.
13/164,025 06/20/2011 Desmond R. Thomas THM-005U 1024
52966 7590
S chramm-Personal-ACT
Michael R. Schramm
350 West
2000 South
Perry, UT 84302
EXAMINER
YUSUF, MOHAMMAD I
ART UNIT PAPER NUMBER
3725
NOTIFICATION DATE DELIVERY MODE
12/28/2017 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 DESMOND R. THOMAS
Appeal 2016-003374
Application 13/164,025
Technology Center 3700
Before STEVEN D.A. McCARTHY, JEFFREY A. STEPHENS and
NATHAN A. ENGELS, Administrative Patent Judges.
McCARTHY, Administrative Patent Judge.
DECISION ON APPEAL
1 STATEMENT OF THE CASE
2 The Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
3 decision finally rejecting claims 1—12 and 21—28. Claims 13—20 are
4 cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
5 We sustain the rejection of claims 1—4, 6—9, 11, 12, 21, 22 and 25—28
6 under pre-AIA 35 U.S.C. § 102(b) as being anticipated by Weschler (US
7 6,216,524 Bl, issued Apr. 17, 2001); and the rejection of claim 23 under
8 pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Weschler and
9 Thomas (US 7,150,176 B2, issued Dec. 19, 2006). We do not sustain the
i The Appellant identifies himself as the real party in interest.
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
29
30
31
32
33
Appeal 2016-003374
Application 13/164,025
rejection of claims 5,10 and 24 under § 102(b) as being anticipated by
Weschler.
THE CLAIMED SUBJECT MATTER
Claims 1, 9 and 21 are independent and reasonably self-explanatory:
1. A vehicle frame anchoring apparatus comprising a
mounting post having a plurality of dissimilarly configured vices
structurally connected thereto and adapted such that a first vice
clamping position is repositionally adjustable relative to a second
vice clamping position, and such that and said first vice is
expressly adapted to clamp to and secure a discrete frame of a
body-on-frame vehicle and said second vice is expressly adapted
to clamp to and secure a pinch weld of a unibody vehicle.
9. A vehicle frame anchoring apparatus comprising a
mounting post and a plurality of vices repositionably connected
to said post, wherein a first vice of said vices includes at least
one grasping digit and is adapted to clamp to a discrete frame of
a vehicle, and wherein a second vice of said vices includes at
least one grasping plate and is adapted to clamp to a pinch weld
of a vehicle.
21. A vehicle anchoring apparatus comprising at least
one first vice and at least one second vice, wherein said first vice
is structurally secured to said second vice, and wherein said first
vice is expressly adapted to clamp to and secure a discrete frame
of a body-on-frame vehicle, and wherein said second vice is
expressly adapted to clamp to and secure a pinch weld of a
unibody vehicle.
ISSUES
It is not altogether clear which claims the Appellant wishes to argue
separately, since the Appellant’s briefs do not include subheadings
identifying the claims being argued. The Appellant’s “Appeal Brief,” dated
July 4, 2015 (“App. Br.”), and “Reply Brief,” dated February 16, 2016
2
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
Appeal 2016-003374
Application 13/164,025
(“Reply Br.”), may be construed as arguing dependent claims 2-4 and 6—8
as a group with independent claim 1 (see App. Br. 3); dependent claims 11,
12, 22 and 24—28 as a group with independent claims 9 and 21 (see App. Br.
4); and dependent claims 5, 10 and 24 separately (see App. Br. 4 & 6). The
Appellant argues the rejection of claim 23 separately, but does so solely on
the basis that Weschler allegedly fails to disclose all elements recited in
parent claim 21. (See App. Br. 8; Reply Br. 18).
We address two issues:
Does Weschler describe a vehicle frame anchoring apparatus
satisfying the limitations of claims 1, 9 and 21, as properly construed?
Does Weschler describe a vehicle frame anchoring apparatus in
combination with a discrete frame of a body-on-frame vehicle?
FINDINGS OF FACT
The record supports the following findings of fact (“FF”) by a
preponderance of the evidence.
1. Weschler2 describes a clamp 60 for attaching a main beam 20
and a side arm 20 of a vehicle repairing device 1 to the undercarriage 13 of a
motor vehicle. (See Weschler, col. 3,11. 44-49 & Fig. 1).
2. Weschler’s clamp 60 includes a mounting post in the form of a
threaded rod 70 coupled to a generally “L”-shaped bracket 72. (See
Weschler, col. 3,11. 57—63 & Figs. 2-A\ Final Office Action, mailed
2 Because the Appellant argues the rejection of claim 23 under § 103(a)
solely on the basis that the primary reference, Weschler, fails to disclose all
elements recited in parent claim 21, we do not make separate findings
concerning the disclosure of the secondary reference, Thomas.
3
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
Appeal 2016-003374
Application 13/164,025
February 5, 2015 (“Final Act.”), at 5). The bracket 72 includes a generally
upright, rectangular upper leg 73 and a horizontally disposed, “Y”-shaped
lower support leg 74. The upper leg 73 includes slots 76 and the lower leg
includes slots 77. (See Weschler, col. 3,1. 63 — col. 4,1. 6; & Figs. 2 & 5).
Bolts 79 extend through the slots 76, 77 to structurally connect clamping
plates 78 to the upper and lower legs 73, 74 of the bracket 72. (See
Weschler, col. 4,11. 7—12; & Figs. 2 & 4).
3. In addition, Weschler’s clamp 60 includes clamping plate 78'
tied to the clamping plates 78 by means of spring-loaded bolts 80 to form
first and second clamps or vices. (See Weschler, col. 4,11. 12—20 & Figs. 2—
5). The two clamps or vices are dissimilarly configured because the vice
mounted on the upper leg 73 opens horizontally and the vice mounted on the
lower leg 74 opens vertically. (See Weschler, Fig. 4). The clamping plate
78'of the first vice constitutes a grasping digit. (See Final Act. 5).
4. The first and second clamps or vices are repositionably
connected to the threaded rod 70, and the first vice is repositionally
adjustable relative to the second vice, in the sense that the engagement of the
bolts 79 with the slots 76, 77 allow both clamping plates 78 to slide along
the upper and lower legs 73, 74 of the bracket 72 when the bolts 79 are
loosened. (See Final Act. 5).
5. Weschler does not teach using either the first or second vice to
clamp a discrete frame of a body-on-frame vehicle.
6. On the other hand, Weschler does teach that:
The pair of clamping plates 78, 78' mounted on one of the arms
75 [of the lower leg 74] serve to clamp the downwardly
depending jack tab 17 of the vehicle undercarriage 13. Similarly,
the pair of clamps 78,78' mounted on upper leg 73 serve to clamp
4
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
Appeal 2016-003374
Application 13/164,025
the horizontally extending pinchweld 15 of the vehicle
undercarriage 13.
(Weschler, col. 4,11. 15—20; see also id., Figs. 2 & 4).
7. The Examiner has a sound basis for finding that the vice
comprising the clamping plates 78, 78 'mounted on the lower leg 74 is
capable of clamping to, and securing, a discrete frame of a body-on-frame
vehicle. Figure 3 of the underlying application depicts discrete frame 150 as
taking the form of a downwardly depending, prismatic structure. Weschler
teaches that the clamping plates 78, 78 'mounted on the lower leg 74 are
capable of clamping to a downwardly depending jack tab of a motor vehicle.
(See Weschler, col. 4,11. 15—17). The similarity in structure between a
discrete frame of a body-on frame vehicle, as depicted in Figure 3 of the
underlying application, and a jack tab of a motor vehicle, as depicted in
Figures 2 and 4 of Weschler, provides the Examiner a sound basis for belief
that the vice comprising the clamping plates 78, 78 'mounted on the lower
leg 74 is capable of clamping to, and securing, a discrete frame of a body-
on-frame vehicle. In particular, because the clamping plates 78, 78'
mounted on the lower leg 74 as described by Weschler must be capable of
clamping a jack tab without releasing under a vehicle deformation correction
load, the Examiner has a sound basis for belief that the clamping plates are
capable of clamping a discrete frame without releasing under a vehicle
deformation correction load.
8. The Examiner found that the vice comprising the clamping
plates 78, 78 'mounted on the lower leg 74 is capable of clamping to, and
securing, a discrete frame of a body-on-frame vehicle, and cited column 4,
lines 15—17 of Weschler as evidentiary support for such a finding, on page 3
5
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
Appeal 2016-003374
Application 13/164,025
of a non-final Office Action, mailed August 28, 2014. The Appellant had an
opportunity to respond to that finding with contrary evidence, but does not
appear to have done so.3 We adopt the Examiner’s finding.
ANALYSIS
The Appellant argues that Weschler fails to describe an apparatus
including “a plurality of dissimilarly configured vices,” as recited in claim 1.
We agree with the Examiner that the first and second vices described in
Weschler are dissimilarly configured in that the vice mounted on the upper
leg 73 opens vertically, while the second vice mounted on the lower leg 74
opens horizontally. (See Examiner’s Answer, mailed January 12, 2016
(“Ans.”), at 5; see also FF 2 & 3). The term “dissimilarly configured vices,”
as used in claim 1, is sufficiently broad to encompass such structure. The
Appellant does not identify any usage of this term in the Specification. The
ordinary understanding of the term “configuration” would be sufficiently
broad to include orientation. The Appellant does not appear to contend that
the term “dissimilarly configured” has an established, specialized meaning
in the relevant art. The Appellant’s arguments on pages 8 and 9 of the Reply
Brief, regarding the manner in which the words “dissimilarly configured”
might be applied to dice or to the overall structure of trucks, are not
3 The Appellant alleges having shown a “Wikipedia article for ‘Body-
on-Frame’ (downloaded on April 23, 2015)” to the Examiner during an
interview on April 27, 2015. (Reply Br. 13, 16). The Appellant does not
appear to have made this article of record in the application, either in the
“Summary of Examiner’s Interview Held on April 27, 2015,” dated April
27, 2015, or in any other document filed in the application prior to this
appeal. Neither has the Appellant made a showing of excusable delay in
filing the article. The Wikipedia article will not be considered in this appeal.
6
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
Appeal 2016-003374
Application 13/164,025
persuasive as to the broadest reasonable interpretation of the term in the
present context.
The Appellant also argues that Weschler fails to describe an apparatus
in which “said first vice is expressly adapted to clamp to and secure a
discrete frame of a body-on-frame vehicle,” as recited in claims 1 and 21; or
in which “said first vice of said vices includes at least one grasping digit and
is adapted to clamp to a discrete frame of a vehicle,” as recited in claim 9.
The Appellant argues for a narrow interpretation of the words “adapted to,”
as used in claim 9, and “expressly adapted to,” as used in claims 1 and 21.
(See App. Br. 5, 6, 8 & 9; Reply Br. 10).
In Re Giannelli, 739 F.3d 1375 (Fed. Cir. 2014), our reviewing court
interpreted the claim language, “[a] row[ing] machine comprising an input
assembly including a first handle portion adapted to be moved from a first
position to a second position by a pulling force exerted by a user on the first
handle portion in a rowing motion.” Id. at 1376. In its analysis, the court
recognized that the words “adapted to” may denote “capable of,” as well as
“made to” or “designed to,” but the court concluded that the language as
used in the claim before it used the words “adapted to” in the narrower
sense. See id. at 1379. The court turned to the specification to interpret the
language at issue:
The specification teaches that the rowing machine’s arms travel
in a substantially linear path as the handles are pulled. ’261
application, at 3^4. An exemplary method of operation
described in the specification depicts the user as pulling the
machine’s handles to overcome a selected resistance.
Id. Based on the disclosure in the specification, the court held that:
The written description of the ’261 application describes how the
position of the handles relative to the primary and secondary
7
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
29
30
31
Appeal 2016-003374
Application 13/164,025
lever arms and the resistance mechanism renders them “adapted”
to be moved by the user's pulling force. For example, the
application states that the exercise machine “enables a user to
maintain biomechanical alignment of the user's wrist and
forearm during performance of the exercise, while maintaining a
consistent resistance applied to the muscles, in the stability of an
exercise machine.” ’261 application, at 3. The location of those
handles relative to the other components is one of their structural
attributes that enables performance of the rowing motion against
the selected resistance. ’261 application, at 4 (“The declining,
substantially linear path [of the pulled handles] enables the user
to maintain proper biomechanical alignment of the force angle
being applied to the grip. This allows for a fairly consistent
torque application at the shoulder throughout the range of motion
of the exercise.”). Consequently, the relevant question before the
Board was whether the apparatus described in the ’447 patent
was “‘made to,’ ‘designed to,’ or ‘configured to,”’ allow the user
to perform a rowing exercise by pulling on the handles as
claimed in the ’261 application.
Id. at 1379 & 1380.
The Specification of the application underlying this appeal does not
include any language formally defining, or expressly limiting, the scope of
the term “adapted to.” The Appellant has not pointed to any language in the
Specification describing how the configuration of a vice might render that
vice “expressly adapted to clamp to and secure a discrete frame of a body-
on-frame vehicle.” Absent such a description, the holding of Giannelli is
distinguishable. The phrase “expressly adapted to clamp to and secure a
discrete frame of a body-on-frame vehicle” reasonably may be interpreted to
encompass structure capable of clamping to, and securing, a discrete frame.
We adopt the Examiner’s finding that the vice described by Weschler,
comprising the clamping plates 78, 78 'mounted on the lower leg 74, is
8
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
29
30
31
Appeal 2016-003374
Application 13/164,025
capable of clamping to, and securing, a discrete frame of a body-on-frame
vehicle. (See Ans. 5 & 6; FF 7 & 8).
The Specification of the application underlying this appeal describes
one particular embodiment of the claimed apparatus as follows:
In practice, a vehicle having a discrete frame 150 (typically
complete with a damaged vehicle fastened thereto) may be
positioned with frame 150 secured in primary vice assembly 40
such that frame 150 does not release under a vehicle deformation
correction load or a unibody vehicle having a pinch weld 154
may be positioned with pinch weld 154 secured in auxiliary vice
assembly 90 such that pinch weld 154 does not release under a
vehicle deformation correction load or a vehicle having a discrete
frame 150 and a pinch weld 154 may be positioned with frame
150 secured in primary vice assembly 40 and with pinch weld
154 secured in auxiliary vice assembly 90 such that frame 150
does not release under a vehicle deformation correction load and
such that pinch weld 154 does not release under a vehicle
deformation correction load. It is noted when using vehicle
anchoring apparatus 10 that no take down or setup of vehicle
anchoring apparatus 10 is required in order to switch from
securing a discrete frame 150 of a body-on-frame vehicle to
securing a unibody vehicle having a pinch weld 154.
(Spec., para. 18). The Appellant does not indicate that this description
applies to all vices “expressly adapted to clamp to and secure a discrete
frame of a body-on-frame vehicle.” Consequently, it should not limit the
scope of that phrase as used in the claims. Nevertheless, even were we to
deem the passage as effective to limit the scope of the claims on appeal, the
passage indicates that, at most, “adapted to clamp to a discrete frame,” or
“expressly adapted to clamp to and secure a discrete frame,” is limited to the
capacity to clamp the discrete frame without releasing under a vehicle
deformation correction load.
9
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
Appeal 2016-003374
Application 13/164,025
The fact that Weschler’s clamping plates are capable of grasping and
securing a jack tab during a vehicle body repair process provides a sound
basis for belief that the clamping plates are capable of clamping a discrete
frame without releasing under a vehicle deformation correction load. (See
Ans. 5 & 6; FF 7 & 8). In view of that finding, Weschler describes an
apparatus in which “said first vice is expressly adapted to clamp to and
secure a discrete frame of a body-on-frame vehicle,” as recited in claims 1
and 21; or in which “said first vice of said vices includes at least one
grasping digit and is adapted to clamp to a discrete frame of a vehicle,” as
recited in claim 9. We sustain the rejection of claims 1—4, 6—9, 11, 12, 21,
22, and 25—28 under § 102(b) as being anticipated by Weschler.
Furthermore, because the Appellant argues the rejection of claim 23 solely
on the basis that Weschler allegedly fails to disclose all elements recited in
parent claim 21 (see App. Br. 8; Reply Br. 18), we sustain the rejection of
claim 23 under § 103(a) as being unpatentable over Weschler and Thomas.
Claim 5 recites the “apparatus of claim 2, wherein said at least one
primary vice includes a discrete vehicle frame removably clamped therein,
and wherein said at least one an auxiliary vice includes a vehicle pinch weld
removably clamped therein.” Claim 10 recites the “apparatus of claim 9,
wherein said vice having said at least one grasping digit is removably
clamped to a discrete frame of a vehicle, and wherein said vice having said
at least one grasping plate is removably clamped to a pinch weld of a
vehicle.” Claim 24 recites the “vehicle anchoring apparatus of claim 21,
wherein said first vice includes a discrete frame of a vehicle clamped
therein, and wherein said second vice includes a pinch weld of a vehicle
clamped therein.”
10
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
Appeal 2016-003374
Application 13/164,025
Each of these claims recites a vice “removably clamped to a discrete
frame of a vehicle,” or “at least one primary vice includ[ing] a discrete
vehicle frame removably clamped therein.” It follows that claims 5,10 and
24 can only be satisfied by structure that includes, as an element, a discrete
frame of a vehicle removably clamped in a vice. On the other hand, each of
the independent claims recites an anchoring apparatus including a vice that
is “adapted to clamp to a discrete frame of a vehicle,” or “expressly adapted
to clamp to and secure a discrete frame of a body-on-frame vehicle.” None
of the independent claims recites an actual mechanical engagement between
the vice and a discrete frame of a vehicle, however. Thus, independent
claims 1, 9 and 21 may be satisfied by an anchoring apparatus including a
vice capable of clamping to a discrete frame, even if the vice is not actually
clamped to such a frame.
As the Appellant correctly points out (see App. Br. 4 & 6), Weschler
does not describe a vehicle frame anchoring apparatus in combination with a
discrete frame of a vehicle. This fact is sufficient to distinguish the subject
matter of claims 5,10 and 24 from the apparatus described by Weschler, but
not to distinguish the subject matter of independent claim 1, 9 and 21.
Because Weschler does not describe the subject matter of claims 5,10 and
24, we do not sustain the rejection of claims 5, 10 and 24 under § 102(b) as
being anticipated by Weschler.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1—4, 6—9, 11,
12,21-23 and 25-28.
We REVERSE the Examiner’s decision rejecting claims 5, 10 and 24.
11
Appeal 2016-003374
Application 13/164,025
1 No time period for taking any subsequent action in connection with
2 this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
3 § 1.136(a).
4
5 AFFIRMED-IN-PART
12