Ex Parte Weinmann

Patent Trial and Appeal Board

Oct 25, 2016

12498428 (P.T.A.B. Oct. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/498,428 0710712009
278 7590 10/27/2016
MICHAEL J. STRIKER
103 EAST NECK ROAD
HUNTINGTON, NY 11743
FIRST NAMED INVENTOR
Karl WEINMANN
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
4729 8390
EXAMINER
CADUGAN, ERICA E
ART UNIT PAPER NUMBER
3722
NOTIFICATION DATE DELIVERY MODE
10/27/2016 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):
striker@strikerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KARL WEINMANN
Appeal2015-001480
Application 12/498,428
Technology Center 3700
Before JENNIFER D. BAHR, LINDA E. HORNER, and
BRANDON J. WARNER, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Karl Weinmann (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner's decision rejecting claims 1, 2, 4, 7, and 10-12. 1 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Claims 5, 6, 8, and 9 are withdrawn from consideration and not before us
in the present appeal. Claim 3 has been cancelled.
Appeal2015-001480
Application 12/498,428
CLAIMED SUBJECT MATTER
Appellant's claimed subject matter "relates to devices for conveying
workpieces." Spec. 3, 1. 2. Of those claims before us on appeal, claim 1 is
the sole independent claim and is reproduced below.
1. A device or apparatus for conveying a workpiece to and/or
from a processing station, comprising:
a conveying device;
a gripping device having gripping jaws for moving the
workpiece along said conveying device to and/or from the
processing station;
a carrier, wherein said gripping jaws reach over the
workpiece and are situated on said carrier in such a manner that
a distance between said gripping jaws is adjustable; and
at least one processing tool for processing the workpiece,
which processing tool is movable between said gripping jaws and
is also situated on said carrier;
wherein said carrier is used similarly to a portal of a tool
portal machine.
REJECTIONS
Appellant appeals from the Final Action, dated February 10, 2014
("Final Act."), which includes the following rejections:2
1. Claims 1, 2, 4, 7, and 10-12 under 35 U.S.C. § 112, second
paragraph, as indefinite.
2. Claims 1, 2, 4, 7, and 10-12 under 35 U.S.C. § 102(b) as
anticipated by Lacrosse (US 5,615,122, iss. Mar. 25, 1997).
2 The Examiner withdrew a rejection of claims 1, 2, 4, 7, and 10-12 under
35 U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement. Ans. 9.
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Application 12/498,428
ANALYSIS
First Ground of Rejection: Indefiniteness
"Conveying device"
Claim 1 is directed to "[a] device or apparatus for conveying a
workpiece to and/or from a processing station, comprising: a conveying
device." Br. 22 (Claims App.) (emphasis added). The Examiner rejected the
claim as indefinite because "[i]t is unclear ... whether 'a conveying device'
(as set forth in line 1, for example) is intended to be the same as or different
from the 'conveying device' (set forth in line 3 ... )." Final Act. 5.
Appellant argues that "[t]he conveying device at line 3 is conveying device
10, as shown in the drawings." Br. 14 (emphasis added); see Spec. Fig. 1.
According to Appellant, the claim sets forth "a device or apparatus for
conveying a workpiece to and/or from a processing station with inter alia a
conveying device (10)." Id.
We are not persuaded by Appellant's argument because, as the
Examiner explains, the argument is inconsistent with the Specification.
Ans. 10-11. Appellant's Specification suggests that conveying device 10 is
the overall "device or apparatus for conveying" to which claim 1 is directed.
See Spec. 9, 11. 2-3 (describing that, "[i]n accordance with the present
invention[,] a conveying device 10 is provided"). The Specification also
describes that the "conveying device includes . .. gripping device 20 having
gripping jaws 13, 14," which suggests that gripping device 20 is an element
of conveying device 10. Id., 11. 7-8 (emphasis added). Therefore, we
understand gripping device 20 to be an element of conveying device 10.
However, in claim 1, the "conveying device" of line 3 and the "gripping
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device" of line 4 are recited as separate elements of the overall "device or
apparatus for conveying." Br. 22 (Claims App.). If, as argued by Appellant,
conveying device 10 is not the overall "device or apparatus for conveying"
to which claim 1 is directed, but rather an element of the overall device or
apparatus, then it is unclear how conveying device 10 can include gripping
device 20, as described in the Specification.
On the other hand, the Specification also describes "conveying device
[30] ... formed by two roller tracks 31, 32 on the feed side of processing
station 12 and ... by two roller tracks 33 and 34 on the removal side."
Spec. 9-10. This description demonstrates that the "conveying device"
recited in line 3 is amenable to two plausible constructions, i.e., the
conveying device of line 3 is the overall conveying device 10, of which the
gripping device 20 is a part, or the conveying device of line 3 is conveying
device 30. "[I]f 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." Ex parte Miyazaki, 2008 WL 5105055 (BPAI 2008)
(precedential). As such, claim 1 is indefinite because the scope of "a
conveying device" is not reasonably ascertainable by those skilled in the art
when the claim is read in light of the Specification.
"[R] each over the workpiece"
Claim 1 recites "said gripping jaws reach over the workpiece." Id.
(emphasis added). The Examiner rejected the claim as indefinite because:
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Application 12/498,428
[I]t is not clear whether the limitation "over the workpiece" is
intended to refer to/require a physical location of the gripping
jaws (i.e., they "reach" in a location that is over/above the
workpiece), or to some ability of the gripping jaws to reach over
a certain (unspecified in the claim) extent or dimension of the
workpiece, etc.
Final Act. 6 (emphasis added). Appellant argues that the limitation "is
intended to refer to a physical location of the gripping jaws or some ability
of the gripping jaws to reach over something unspecified in the claim."
Br. 15. In particular, the phrase "is meant to convey that the gripping jaws
extend over the workpiece in a sense that the gripping jaws are above the
workpiece." Id. (emphasis added).
Although we accept Appellant's interpretation of" over" the
workpiece as meaning "above" the workpiece, we nonetheless agree with the
Examiner that the language specifying that the gripping jaws perform a
method step, i.e., that the "gripping jaws reach over the workpiece," renders
the claim indefinite. Namely, the limitation appears to encompass both
system structure and a method step to be carried out, and thus the scope of
the claim is not clearly set forth. See IP XL Holdings, LLC v. Amazon. com,
Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005) ("Because [the claim] recites
both a system and the method for using that system, it does not apprise a
person of ordinary skill in the art of its scope, and it is invalid under section
112, paragraph 2."). In other words, it is unclear whether infringement
would occur, for example, when one creates a system in which the gripping
jaws are simply structurally positioned above where a workpiece would be
disposed, or whether infringement would occur only when the gripping jaws
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Application 12/498,428
actually perform an act of moving and extending out above the workpiece.
Ans. 12-13. As such, claim 1 is indefinite because one of ordinary skill in
the art would not be able to ascertain with reasonable certainty the metes and
bounds of gripping jaws that reach over a workpiece, as called for in
claim 1.
"[T] ool portal machine"
Claim 1 also recites "wherein said carrier is used similarly to a portal
of a tool portal machine." Br. 22 (Claims App.). The Examiner rejected the
claim as indefinite because "it is not clear what configuration or use of the
carrier results in a carrier that is structured or configured 'similarly to', or
that is used 'similarly to', a portal of a tool portal machine." Final Act. 6.
According to the Examiner, "for any given 'carrier', it is unclear how to
determine whether the carrier meets the claim limitation because it is unclear
how or in what regard a given carrier must be 'used similarly to' such a
portal in order to meet the claim language." Id. Appellant argues "that the
skilled artisan would clearly understand what using a carrier similar to a
portal of a tool portal machine means, i.e., using the carrier like a portal to
the tool portal machine." Br. 16.
Appellant's argument is not persuasive of error in the Examiner's
rejection because Appellant does not off er any evidence or technical
reasoning in support of the assertion that one of ordinary skill in the art
would understand the scope of the limitation. Moreover, the Specification
does not adequately explain what a "portal of a tool portal machine"
comprises or what "used similarly" encompasses. The Specification also
fails to provide any explanation as to what structural limits, if any, such use
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might impose upon the carrier. Therefore, the language of c 1ai m 1 does not
define the claimed subject rnatter with an adequate degree of particularly and
distinctness such that one of ordinary skill in the art would understand \Vhat
is being claimed as to the carrier being used similarly to a portal of a tool
portal machine.
"[A] position where said gripping jaws are open . .. [and] a position
where said gripping jaws are closed"
Claim 4 depends from claim 1 and recites, in relevant part, "said
gripping jaws are in a position selected from the group consisting of a
position where said gripping jaws are open, a position where said gripping
jaws are closed, and both the position where said gripping jaws are open and
the position where said gripping jaws are closed." Id. at 22 (Claims App.)
(emphasis added). The Examiner rejected claim 4 as indefinite because "it is
unclear ... what position(s) of the jaws constitute 'open' and what
constitutes 'closed."' Final Act. 7. According to the Examiner:
For example, it is unclear whether the position wherein the jaws
are as far apart as they can possibly be is the only position that is
considered to be "open", and it is unclear whether any position
that is not the maximum spaced apart position is considered to be
"closed", or whether the jaws are only to be considered to be
"closed" when they reach a certain distance from one another, or
whether the jaws are only considered to be "closed" when they
are in a position wherein the two jaws are in contact with one
another, etc.
Id. Appellant argues that gripping jaws that are "closed" and "open" is
meant "to be interpreted according to ... common meaning, for example,
when a human's jaws are closed" and "when a human's jaws are open."
Br. 16.
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Appellant's argument is not persuasive of error because neither the
claim, nor the Specification, provides a point of reference from which to
determine what constitutes gripping jaws that are "open" and "closed."
Appellant's proffered example regarding a human jaw is unavailing because,
as the Examiner explains:
[I]f the human is biting an apple, for example, it would be unclear
whether such jaws were closed or open when they are contacting
the apple to bite it, noting that in such a position the human' s
jaws are "closed" to a position where they grip the apple, and yet,
at that same position, the human's jaws are "open" in that they
are not in contact with one another but are instead spaced apart
by an amount equal to the size of the apple portion contacted by
the jaws.
Ans. 17 (underlining omitted). It is not clear whether "open" requires that
the jaws are positioned at their fullest extent apart or that the jaws simply are
not secured upon a workpiece. Similarly, it is unclear whether "closed"
requires that the jaws are shut together, such that the jaws contact each other,
or that the jaws are merely secured upon a workpiece. As such, one of
ordinary skill in the art would not be able to ascertain the scope of "a
position where said gripping jaws are open" and "a position where said
gripping jaws are closed," as recited in the claim. For this reason, we agree
with the Examiner that one of ordinary skill in the art would not be able to
determine the scope of claim 4, and thus the claim is indefinite.
"[VJ ertical members for a wall element"
Claim 12 depends from claim 1 and recites "wherein the workpiece is
a bar, a plate, vertical members for a wall element or a wall element."
Br. 22 (Claims App.) (emphasis added). The Examiner rejected claim 12 as
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Application 12/498,428
indefinite because "the intended meaning of 'vertical' ... is not clear, i.e.,
there is no axis or frame of reference provided ... for determining what is
meant by 'vertical."' Final Act. 7 (underlining omitted). The Examiner
explains that "it appears that the term 'vertical' is used to refer to a member
that has a horizontal longitudinal axis as it passes through the machine (see
11.2 in Figure l)." Id. The Examiner also explains that "[t]he term
'vertical' ... is apparently used by the claim to mean 'horizontal', or some
non-vertical direction or dimension while the accepted meaning is
'perpendicular to the plane of the horizon' or 'upright."' Id. at 8.
Appellant argues:
[T]he phrase "vertical members for a wall element" should be
interpreted as a part of wall element 11 that is vertical and ...
that "vertical" is not used in the claim to mean "horizontal," even
without a specific axis or frame of reference included expressly
in the claim.
Br. 16-17. Appellant's argument is persuasive of error. We do not
understand the term "vertical" to refer to an orientation of the workpiece
relative to the conveying device, but rather the term simply describes a type
of workpiece by its end use (i.e., as "vertical members for a wall element").
To the extent that the Examiner accurately characterizes Figure 1 as showing
a workpiece in a horizontal orientation relative to the conveying device, we
see no reason why "vertical members for a wall element" could not be
processed in a horizontal position. As such, the limitation reciting "vertical
members for a wall" does not render claim 12 indefinite.
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Antecedent basis
The Examiner additionally rejected claims 1, 2, 4, 7, and 10-12
because of limitations lacking antecedent basis. Final Act. 5-6. The
antecedent basis issues stem from the lack of clarity regarding the
"conveying device" recited in claim 1. See id. at 5 (with the Examiner
"noting that the claim potentially previously sets forth plural conveying
devices"). Although we have considered the antecedent basis issues in view
of Appellant's arguments (Br. 14-15), we do not reach a separate conclusion
as to these issues. Instead, we rely on our analysis discussed supra with
respect to the "conveying device" limitation of claim 1. In other words, the
indefiniteness of claim 1 due to the lack of clarity as to the "conveying
device" recited therein, likewise renders claims 2, 4, 7, and 10-12 indefinite.
Accordingly, we sustain the rejection of claims 1, 2, 4, 7, and 10-12,
under 35 U.S.C. § 112, second paragraph, as indefinite. 3
Second Ground of Rejection: Anticipation
Having determined that claims 1, 2, 4, 7, and 10-12 are indefinite, we
cannot sustain the rejections of these claims under 35 U.S.C. § 102(b),
because to do so would require speculation as to the scope of the claims.
See In re Aoyama, 656 F.3d 1293, 1300 (Fed. Cir. 2011) (holding that the
Board erred in affirming an anticipation rejection of indefinite claims); In re
Steele, 305 F.2d 859, 862-63 (CCPA 1962) (holding that the Board erred in
3 Although Appellant persuades us of error in the Examiner's determination
that the limitation "vertical member" renders claim 12 indefinite, this claim
depends from claim 1, and thus claim 12 is inherits the indefiniteness issues
of claim 1.
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affirming a rejection of indefinite claims under 35 U.S.C. § 103(a), because
the rejection was based on speculative assumptions as to the meaning of the
claims). It should be understood, however, that our decision in this regard is
based solely on the indefiniteness of the claimed subject matter, and does not
reflect on the adequacy of the prior art evidence applied in support of the
rejection.
DECISION
The decision of the Examiner to reject claims 1, 2, 4, 7, and 10-12
under 35 U.S.C. § 112, second paragraph, as indefinite is AFFIRMED.
We reverse the decision of the Examiner to reject claims 1, 2, 4, 7,
and 10-12 under 35 U.S.C. § 102(b) as anticipated by Lacrosse.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED
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