Ex Parte Wolf-Monheim

Patent Trial and Appeal Board

Oct 24, 2018

14793994 (P.T.A.B. Oct. 24, 2018)

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.
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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).
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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.
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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
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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.
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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.
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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