Ex Parte White

Patent Trial and Appeal Board

Mar 10, 2017

12367782 (P.T.A.B. Mar. 10, 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.
12/367,782 02/09/2009 Charles E. White III XRPS920080233U S1 1645
127893 7590 03/10/2017
Streets & Steele - Lenovo (Singapore) Pte. Ltd.
13100 Wortham Center Drive
Suite 245
Houston, TX 77065
EXAMINER
BARNETT, DEVIN K
ART UNIT PAPER NUMBER
3631
MAIL DATE DELIVERY MODE
03/10/2017 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 CHARLES E. WHITE III
Appeal 2014-000829
Application 12/367,782
Technology Center 3600
Before MICHAEL W. KIM, PATRICK R. SCANLON, and
WILLIAM A. CAPP, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the non-final
rejection of claims 1—181. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Independent claim 19 is withdrawn. App. Br. 2.
Appeal 2014-000829
Application 12/367,782
THE INVENTION
Appellant’s invention relates to equipment racks. Spec. 11. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A rack assembly, comprising:
a plurality of vertical rack supports each having a first rail
and a second rail joined at an angle, the first rail defining a
plurality of vertically-spaced holes having a central axis
positioned a first distance from an edge of the first rail; and
a bracket for each vertical support, each bracket including a
bracket body, a pivot arm projecting to a first side of the
bracket body, a pivot member coupled to the pivot arm and
having a pivot axis orthogonal to the pivot arm, a bracket-
retention flange projecting to the first side of the bracket body
and radially spaced from the pivot member, and a shelf-support
flange projecting to a second side of the bracket body and
spaced in the same radial direction from the pivot member;
wherein a second distance between the pivot axis of pivot
member and the bracket retention flange is greater than the first
distance such that the pivot member of the bracket is removably
insertable into one of the vertically-spaced holes with the
bracket in a first angular position, and wherein the pivot
member and the bracket-retention flange are spaced apart such
that the bracket is pivotable from the first angular position to a
second angular position for receiving the first rail between the
pivot arm and the bracket-retention flange.
The Examiner relies upon the following as evidence in support of the
THE REJECTIONS
rejections:
Pope
Dean
Shih
Yang
Tsai
US 3,209,711
US 2003/0150823 A1
US 6,739,682 B2
US 2005/0156493 A1
US 7,284,672 B2
Oct. 5, 1965
Aug. 14, 2003
May 25, 2004
July 21, 2005
Oct. 23, 2007
2
Appeal 2014-000829
Application 12/367,782
The following rejections are before us for review:
1. Claims 1—18 are rejected under 35 U.S.C. 112, second paragraph,
as being indefinite for failing to particularly point out and distinctly claim
the subject matter which applicant regards as the invention.2
2. Claims 1—4, 10, and 12 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Yang.
3. Claims 5 and 6 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yang and Dean.
4. Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yang and Tsai.
5. Claim 9 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Yang.
6. Claim 11 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yang and Pope.
7. Claims 13, 14, 17, and 18 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Yang and Shih.
8. Claims 15 and 16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yang, Shih, and Pope.
OPINION
Indefiniteness
Claims 1 and 13 have limitations directed to a “radial direction from
the pivot member.” Claims App. Specifically, claim 1 requires that the
shelf-support flange be “spaced in the same radial direction from the pivot
2 The Non-Final Action also identifies a second ground of rejection under 35
U.S.C. § 112, second paragraph, relating specifically to claims 11 and 16.
Non-Final Action 4.
3
Appeal 2014-000829
Application 12/367,782
member.” Id. The context of the limitation within the claim indicates that
“same” refers to the same radial direction as from the pivot member (or
pivot axis) to the bracket-retention flange. Id. Similarly, claim 13 requires
that the bracket-retention flange is spaced in a radial direction from the pivot
member and the shelf-support flange is spaced in the “same radial direction”
from the pivot member. Id. Again, the context of the limitation within the
claim indicates that “same radial direction” refers to the same radial
direction as the bracket-retention flange relative to the pivot member. Id.
The Examiner finds that Appellant’s references to “same radial direction”
are unclear and confusing. Non-Final Action 5.
Appellant argues that the term “spaced in the same radial direction” is
definite and clear. Br. 8. Appellant relies primarily on paragraphs 19 and 20
of the Specification as well as Figure 3A from the drawings in support this
position. Id. 7—9.
In response, the Examiner states that, using the ordinary meaning of
radial direction, bracket-retention flange 46 and support flange 48 are spaced
apart from pivot member 44 in different radial directions. Ans. 24. The
Examiner notes the absence of Appellant acting as a lexicographer to
provide a meaning for the term other than its ordinary and customary
meaning. Id. at 21.
Appellant’s Specification provides as follows:
FIG. 2 is a front perspective view of one of the brackets 40 in
closer detail. The bracket 40 includes a bracket body 41, a
pivot arm 42 projecting from the bracket body 41, a pivot
member 44 projecting from the pivot arm 42, a bracket-
retention flange 46 projecting from the bracket body 41, and a
shelf-support flange 48 projecting from the bracket body 41.
The pivot member 44 is embodied here as a cylindrical post
defining a pivot axis 43 orthogonal to the pivot arm 42. An
4
Appeal 2014-000829
Application 12/367,782
opening 45 is provided on the bracket 40, radially spaced in the
direction Rl from the pivot member 44.
Spec. 119 (emphasis added). Figure 2 shows a pivot arm 42 with a pivot
member 44 projecting therefrom with a pivot axis 43 orthogonal to the pivot
arm. See Fig. 2. Figures 2 and 3 A indicate a radial direction Rl. See
Figs. 2 and 3 A. Consistent with the teachings in paragraph 19 of the
Specification, opening 45 appears on pivot arm 42 in a location that is
disposed in the same radial direction Rl as depicted in Figures 2 and 3A. Id.
We note that bracket retention flange 46 is disposed between pivot arm 42
and opening 45 so that radial direction Rl intersects bracket retention
flange 46. Id. In contrast, however, shelf-support flange 48 is displaced
laterally from opening 45 so that radial direction Rl does not intersect shelf-
support flange 48. Id.
The PTO can properly reject a claim as indefinite if the claim is
ambiguous, vague, incoherent, opaque, or otherwise unclear. In re Packard,
751 F.3d 1307, 1311 (Fed. Cir. 2014). The test for definiteness under 35
U.S.C. § 112, 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). During patent prosecution when claims can be amended,
ambiguities should be recognized, scope and breadth of language explored,
and clarification imposed. See In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989).
Careful and straightforward claim drafting by prosecuting
attorneys and agents, and rigorous application by examiners of
the statutory standard to particularly point out and distinctly
claim the subject matter regarded to be the invention, see 35
5
Appeal 2014-000829
Application 12/367,782
U.S.C. § 112,12 (2000), serve an important public notice
function.
Predicate Logic, Inc. v. Distributive Software, Inc., 544 F.3d 1298, 1300
(Fed. Cir. 2008). Section 112 places the burden of precise claim drafting on
the applicant. See In re Morris, 111 F.3d 1048, 1056—57 (Fed. Cir. 1997).
Appellant has not provided a proposed construction for the term
“same radial direction from the pivot member” that would account for the
fact that Figures 2 and 3A show bracket retention flange 46 and opening 45
aligned with pivot axis 43 of pivot arm 42 along radial direction Rl, while
shelf-support flange 48 is displaced laterally from and, therefore is not
aligned with, radial direction Rl. Using the ordinary and customary
meaning of radial direction, we would expect to see shelf-support flange 48
in linear alignment with bracket retention flange 46, opening 45, and pivot
arm 43 along radial direction Rl, however, that is not what is depicted in the
figures. The depictions of Appellant’s bracket in Figures 2 and 3A depart
from the ordinary and customary meaning of radial direction. We are unable
to discern, from Appellant’s disclosure, an alternative, but nevertheless
sufficiently definite, meaning for “same radial direction” that would allow
skilled artisans to understand the scope of the claimed invention.
In view of the foregoing, we sustain the Examiner’s rejection of
claims 1—18 on the grounds directed to the meaning of “same radial
direction.” 3
3 We do not reach the Examiner’s alternative ground of rejection of
dependent claims 11 and 16 relating to locking member of the shelf support
tab. Non-Final Action 4. See 37 C.F.R. § 41.50(a)(1) (The affirmance of the
rejection of a claim on any of the grounds specified constitutes a general
affirmance of the decision of the examiner on that claim, except as to any
ground specifically reversed).
6
Appeal 2014-000829
Application 12/367,782
Prior Art Rejections
Because we have concluded that claims 1—18 are indefinite, the prior
art rejections of these claims must fall because they are necessarily based on
a speculative assumption as to the meaning of the claims. In re Steele, 305
F.2d 859, 862 (CCPA 1962).
We reverse, pro forma, the prior art rejections of claims 1—18.
DECISION
The decision of the Examiner to reject claims 1—18 as indefinite is
affirmed.
The decision of the Examiner to reject claims 1—18 as unpatentable
over the prior art is pro forma reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
7