Ex Parte Wolf-MonheimDownload PDFPatent Trial and Appeal BoardOct 24, 201814793994 (P.T.A.B. Oct. 24, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/793,994 07/08/2015 117396 7590 10/24/2018 FG1L/Burgess Law Office, PLLC P.O. Box 214320 Auburn Hills, MI 48321-4320 FIRST NAMED INVENTOR Friedrich Peter Wolf-Manheim 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. 83545574 5259 EXAMINER FRISBY, KEITH J ART UNIT PAPER NUMBER 3616 MAIL DATE DELIVERY MODE 10/24/2018 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 FRIEDRICH PETER WOLF-MONHEIM Appeal2018-000619 Application 14/793,994 1 Technology Center 3600 Before LINDA E. HORNER, BENJAMIN D. M. WOOD, and FREDERICK C. LANEY, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner's rejection of claims 1-16 under 35 U.S.C. § l 12(b) as being indefinite. Final Office Action (October 21, 2016) ("Final Act."), at 3--4. We have jurisdiction under 35 U.S.C. § 6(b). The Examiner provided three bases for the indefiniteness rejection. Final Act. 3--4. First, the Examiner rejected all the claims as indefinite because the limitations about the first and second shells having the same 1 Ford Global Technologies, LLC. ("Appellant") is the applicant under 37 C.F.R. § 1.46 and is the real party in interest. Appeal Brief (July 20, 2017) ("Appeal Br."), at 1. Appeal2018-000619 Application 14/793 ,994 shape is unclear when these limitations are read in light of the Specification. Id. at 3. Second, the Examiner rejected claim 11 because it recites a broad limitation followed by a narrowing limitation, which the Examiner determined raises doubt about whether the feature introduced by the narrowing limitation is a required feature of the claim. Id. at 4. Third, the Examiner rejected claim 16 because it is unclear whether the "first and second attachment points" recited in claim 16 are the same as the "two attachment points" recited in claim 10. Id. Appellant contests the first and second bases for the indefiniteness rejection. Appeal Br. 5-9. 2 Appellant argues that we should not sustain the rejection on the first basis because the term shape is clear when read in connection with the Specification and a person having ordinary skill in the art would understand that providing an aperture in a particular shaped object does not change its shape. Id. at 6-7. Appellant argues that we should not sustain the rejection on the second basis because claim 11 includes two separate limitations that are both required elements of the claim. Id. at 9. The issues presented are: (1) whether the claim limitation reciting that the first and second shells have "the same shape" is unclear when the limitation is read in light of the Specification; and (2) whether the limitation in claim 11 reciting that "the two half shells" are "connected to one another materially" is a required element of the claim. For the reasons explained below, we agree with the first basis of the rejection. Because this basis applies to all the pending claims, we AFFIRM. 2 Appellant does not contest the Examiner's rejection of claim 16 on the third basis. 2 Appeal2018-000619 Application 14/793 ,994 CLAIMED SUBJECT MATTER The claimed subject matter relates to "a suspension member" of a vehicle suspension for attaching a wheel to the body or frame of the vehicle. Specification (July 8, 2015) ("Spec.") ,r 3. Claims 1, 8, and 10 are the independent claims. Claim 1 is illustrative of the subject matter on appeal is reproduced below. 1. A suspension member comprising: first and second shells, each shell symmetrical along its longitudinal axis and having the same shape including a base and sidewalls, said respective sidewalls adjacent each other when said shells are rotated 180° and placed together; said first and second shells each having an aperture, said apertures coaxial; and a spring supporting region located adjacent a circumferential boundary of said second shell aperture. Appeal Br. 10 (Claims Appendix). ANALYSIS "Same Shape" Claim 1 recites that the first and second shells have "the same shape including a base and sidewalls."3 Appeal Br. 10 (Claims Appendix). We look to Appellant's Specification to interpret this claim limitation. Appellant's Specification describes that the first and second portions of the suspension member are "similarly shaped" or have "the same basic shape." Spec. ,r,r 10, 32, 33, 51. The Specification also describes that "the same 3 Appellant argues claims 1-16 as a group. Appeal Br. 5-8 (presenting the same arguments in support of independent claims 1, 8, and 10). We select claim 1 as the representative claim. Claims 2-16 stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv). 3 Appeal2018-000619 Application 14/793 ,994 basic or similar shape of the first and second portions or half shells 3, 4 are produced as a mass-produced part with the same tools, and only any differences between the respective first and second portions 3, 4 ... are introduced or made in or to the respective basic shape." Id. ,r 33. Figure 6 and cross-sections in Figures 6A through 6C depict the shapes of half shells 3, 4 FIG.6A 3 FIG.6C 16 15 20 ~~~------------~---~· ~~ 8 14 20 ~ 13 11 18 15 ... - " \ 16 20 2 ~ ~1 ,, ' "'-,._ --....-....:....---, --------+··· I -.------ -------,- 1 ' -- 18 FIG.6 ~ Figure 6 shown above is a plan view of the suspension member, and Figures 6A through 6C are cross-sectional views of the suspension member illustrated in Figure 6 taken at lines 6A-6A, 6B-6B, and 6C-6C, respectively. Id. ,r,r 25-28. The Specification describes half shell 3 has aperture 11 and half shell 4 has receiving region 10 opposite aperture 11. Id. 4 Appeal2018-000619 Application 14/793 ,994 ,r 37. Receiving region 10 includes supporting region 12 for supporting the end of spring element 7. Id. Supporting region 12 includes aperture 14 and raised edge 13 located adjacent the circumferential boundary of aperture 14. Id. ,I 40. The Specification describes that "both the first and second portions or half shells 3, 4 have a substantially U-shaped cross section including a base 20 and sidewalls 16." Id. ,r 44. Indeed, the cross sections shown in Figures 6A and 6C above are U-shaped. When one looks at the cross section of half shell 4 taken through the center of body 2, as shown in Figure 6B, however, raised edge 13 about the circumferential boundary of aperture 14 forms a W-shaped cross section. Thus, at the cross section taken in Figure 6B, half shell 3 is U-shaped and half shell 4 is W-shaped. In other words, the contour of half shell 4 is not the same as the contour of half shell 3 due to the raised edge 13 that surrounds aperture 14. As described in the Specification, half shell 3 and half shell 4 are similarly shaped or have the same basic shape because they both have similar contours formed between base 20 and sidewalls 16, the sidewalls 16 on each half shell have outwardly extending flanges 17, and both half shells have U-shaped cross sections near their respective ends 18. Spec. ,r 44, Figs. 6A-6D. But half shells 3, 4 do not have the "same shape" because the contours differ at the center of body 2 at which point only half shell 4 has a raised edge 13. As noted by the Examiner, the lack of clarity of the claim limitation centers on the term "same." Ans. 2. A person reading the claim language without resort to the Specification might understand the claim to require the 5 Appeal2018-000619 Application 14/793 ,994 half shells to have identical shapes. 4 This understanding would become less clear, however, when reading the claim language in light of the Specification, which fails to show an embodiment in which the half shells have identical shapes, and which describes the half shells more broadly as simply "similarly shaped" or having "the same basic shape." Indeed, the Specification would suggest to one skilled in the art that the half shells might possess differences in their respective shapes. See Spec. ,r,r 33, 51 (describing half shells 3, 4 as being virtually identical in their basic structure, with any differences being introduced to the basic shape only after producing them by means of the same tool). A person having ordinary skill in the art would then ask how much dissimilarity between the contours of the half shells is permitted before the half shells no longer have the "same shape." The scope of this language is unclear. As noted by the Examiner, Appellant relied on the "same shape" limitation to distinguish over a prior art suspension member formed by two U-shaped half shells. Ans. 3 (noting that Appellant relied on the term "same shape" to distinguish over the prior art which taught "similarly shaped portions" as previously claimed). Appellant responds that the relevant prior art figures show "U-shaped" upper and lower members, but argues that these members have different shapes. Reply Br. 2. We are perplexed by Appellant's position that two members each having U-shaped cross sections are not the same shape, but Appellant's own disclosed members, one having 4 If Appellant were to contend that "same" means "identical," then the Examiner should consider rejecting the claims under 35 U.S.C. § 112(a) for failure to comply with the written description requirement. As explained in this decision, the Specification does not provide written descriptive support for half shells having identical shapes. 6 Appeal2018-000619 Application 14/793 ,994 a U-shaped cross section and another having a W-shaped cross section, are the same shape. We agree with the Examiner that the meaning of the "same shape" is unclear to a person having ordinary skill in the art in view of Appellant's Specification. Thus, we sustain the rejection of claims 1-16 under 35 U.S.C. § 112(b ). For completeness, we address below the additional bases for the rejections of dependent claims 11 and 16. Claim 11 We disagree with the Examiner's additional basis for the rejection of claim 11. We construe claim 11 to recite two separate limitations. First, claim 11 recites that the two half shells are connected to one another at least in some region or regions. This first limitation defines the location of the connection. That is, the connection must be at least in a region of the two half shells, but not necessarily along the entire perimeter of the half shells. Second, claim 11 recites that the half shells must be connected to one another "materially." This second limitation defines the type of connection. The Specification describes, "A material joint is taken to mean an adhesive join or a welded joint, for example, the latter being preferred especially in connection with the use of first and second portions or half shells 3, 4[,] made of sheet metal or, more generally, of metal." Spec. ,r 50. We understand a material joint to be defined in contrast to, for example, a clamped joint, a screwed joint, or a plug-in joint. Id. It is clear from the language of claim 11 that both limitations are requirements of the claim, the first limitation defining the location of the connection and the second limitation defining the type of connection. Thus, we do not agree with the second basis for the rejection of claim 11. 7 Appeal2018-000619 Application 14/793 ,994 Nonetheless, we sustain the rejection of claim 11 under 35 U.S.C. § 112(b) on the first basis, as discussed above, due to its dependency from claim 10. Claim 16 We summarily sustain the rejection of claim 16 under 35 U.S.C. § 112(b) on the third basis, because Appellant has not contested the rejection on this basis and, thus, has waived any argument of error that could have been raised. DECISION The decision of the Examiner rejecting claims 1-16 is affirmed. 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)(l )(iv). AFFIRMED 8 Copy with citationCopy as parenthetical citation