Meeks, James W.

Patent Trials and Appeals Board

Oct 28, 2019

12421420 - (D) (P.T.A.B. Oct. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/421,420 04/09/2009
27305 7590 11/13/2019
HOW ARD & HOW ARD ATTORNEYS PLLC
450 West Fourth Street
Royal Oak, MI 48067
FIRST NAMED INVENTOR
James W. Meeks
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.
065313.00086 4441
EXAMINER
STRIMBU, GREGORY J
ART UNIT PAPER NUMBER
3634
NOTIFICATION DATE DELIVERY MODE
11/13/2019 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):
IPDocket@HowardandHoward.com
dtrost@HowardandHoward.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES W. MEEKS
Appeal 2018-001955
Application 12/421,420
Technology Center 3600
Before CHARLES N. GREENHUT, MICHAEL J. FITZPATRICK, and
ANNETTE R. REIMERS, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Pursuant to 35 U.S.C. § 134(a), Appellant,2 James W. Meeks, appeals
from the Examiner's decision to reject claims 1-3, 6, 7, 10-14, 17, 18, 21,
22, 24 and 25. Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b ). An
oral hearing was conducted October !81, 2019.
We AFFIRM and designate NEW GROUNDS OF REJECTION.
1 A decision was rendered in a prior appeal (2014-000565) ("'565
Decision") in this application on March 16, 2016.
2 We use the word "Appellant" to refer to "applicant" as defined in 37
C.F .R. § 1.42. Appellant identifies the real parties in interest as Quanex
Homeshield and Therma-Tru Corp. Appeal Br. 1.
Appeal 2018-001955
Application 12/421,420
CLAIMED SUBJECT MATTER
The claims are directed to a seal for an adjustable threshold assembly.
Claim 1, reproduced below, with emphasis added, is illustrative of the
claimed subject matter:
1. An adjustable threshold assembly for disposition below a
door, said adjustable threshold assembly comprising:
a sill;
a rail spaced from said sill and configured to be vertically
adjustable relative to said sill between a minimum and a
maximum height; and
a seal comprising:
a first portion which is plastic and engages one of said sill
and said rail;
a second portion which is plastic and engages the other of
said sill and said rail;
an intermediate portion which is an elastomer and
connects said first and second portions and is flexible relative to
said first and second portions; and
said second portion including a projection defined by an
upper comer, a lower comer, and a vertically extending portion
extending from said upper comer to said lower comer;
a bulb which is an elastomer, said bulb extending from
said first portion and maintaining contact with said vertically
extending portion and with at least one of said upper corner and
said lower corner as said rail moves between said minimum
height and said maximum height, wherein said bulb maintains
contact with said upper comer when said rail is at said minimum
height, and wherein said bulb maintains contact with said lower
comer when said rail is at said maximum height;
wherein said bulb includes a first end extending from said
first portion and a second end extending from said first portion
and spaced from said first end, said bulb and said first portion
enclosing a cavity between said first and second ends;
said bulb rolling relative to said first portion of said seal as
said rail moves between said minimum height and said maximum
height;
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said bulb being resiliently collapsed around said upper
comer when said rail is at said minimum height with said upper
comer deforming said bulb to match a shape of said upper comer
to seal between said bulb and said projection, and said bulb being
resiliently collapsed around said lower comer when said rail is at
said maximum height with said lower comer deforming said bulb
to match a shape of said lower comer to seal between said bulb
and said projection.
REJECTION
Claims 1-3, 6, 7, 10-14, 17, 18, 21, 22, 24 and 25 are rejected under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
OPINION
Claim Grouping
The claims are argued as a group for which claim 1 is representative
under 37 C.F.R. § 4I.37(c)(l)(iv).
Principles of Law
"The purpose of the written description requirement is to prevent an
applicant from later asserting that he invented that which he did not; the
applicant for a patent is therefore required 'to recount his invention in such
detail that his future claims can be determined to be encompassed within his
original creation."' Amgen Inc. v. Hoechst Marion Roussel Inc., 314 F .3d
1313, 1330 (Fed. Cir. 2003) (citing Vas Cath Inc. v. Mahurkar, 935 F.2d
1555, 1561 (Fed. Cir. 1991)). New or amended claims which introduce
elements or limitations which are not supported by the as-filed disclosure
violate the written description requirement. See, e.g., In re Lukach, 442 F .2d
967 (CCPA 1971). Appellant's specification need not describe the claimed
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Application 12/421,420
invention in ipsis verbis to comply with the written description requirement.
In re Edwards, 568 F.2d 1349, 1351-52 (CCPA 1978). When an explicit
limitation in a claim is not present in the written description it must be
shown that a person of ordinary skill would have understood that the
description requires that limitation. Hyatt v. Boone, 146 F.3d 1348, 1353,
(Fed. Cir. 1998). As is the case here, the description requirement of 35
U.S.C. § 112, first paragraph may operate to defeat the patentability of a
narrower but not a broader claim. In re Smith, 458 F.2d 1389, 1395 (CCPA
1972). The Supreme Court has viewed with skepticism efforts to distinguish
the subject matter claimed from the prior art by relying on elements or
functionality notably absent in an original disclosure and appearing to be "an
afterthought." Graham v. John Deere Co. of Kansas City, 383 US 1, 25
(citing Lincoln Engineering Co. v. Stewart-Warner Corp., 303 U.S. 545
(1938)). If the originally filed disclosure does not provide support for each
claim limitation, a new or amended claim must be rejected under 35 U.S.C.
§ 112, paragraph 1, as lacking adequate written description.
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact.
Regents of Univ. of Cal. v. Eli Lilly and Co., 119 F.3d 1559, 1566 (Fed. Cir.
1997) (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir.
1991) ). The fundamental factual inquiry is whether the Specification
conveys with reasonable clarity to those skilled in the art that, as of the filing
date sought, applicant was in possession of the invention as now claimed.
See, e.g., Vas-Cath, Inc., 935 F.2d at 1563-64. Facts must be established by
a preponderance of the evidence by the PTO when making rejections. In re
Caveney, 761 F.2d 671, 674, (Fed.Cir.1985).
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Background and the prior appeal
In appeal number 2014-000565, we entered a new ground of rejection
for claims 1-3, 6, 7, 10, 11, and 23 under 35 U.S.C. § 112, first paragraph
because claims 1 and 23 had been amended to introduce the following
subject matter, for which the Board determined there was insufficient written
description:
maintaining contact with at least one of said upper comer and
said lower comer as said rail moves between said minimum
height and said maximum height
'565 Decision 6-8. The '565 Decision stated:
We understand [] paragraph [35] to describe bulb 66 contacting
one of three structures: the top comer 76 (Fig. 4), the bottom
comer 76 (Fig. 5) or vertically extending portion 78 (not shown).
To introduce, by way of amendment, a limitation requiring the
bulb to maintain contact with only two of those structures (the
comers) during rail movement is, as the Examiner originally
found, a violation of the written description requirement of 35
U.S.C. § 112, first paragraph.
'5 65 Decision at 7.
Based on the briefing and the Examiner's analysis, there appears to be
two aspects of the above-quoted portion of the '565 Decision in need of
clarification. First, in reinstating the rejection under 35 U.S.C. § 112, first
paragraph that the Examiner had previously withdrawn, the Board did not
base its holding regarding the lack of descriptive support on the Examiner's
more narrow claim construction that the limitation at issue in the '565 appeal
and quoted above requires maintaining contact with the same comer
throughout rail movement. See Dec. 6, 2012 Final Act. 2. To the extent the
Examiner relies on that claim construction again in the present appeal (Ans.
2; Reply. Br. 3), we expressly decline to adopt the Examiner's claim
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Application 12/421,420
construction in this regard. The finding of inadequate written description
both in the prior appeal and here was, and is, instead based on the broadest
reasonable interpretation of the claim language, which allows for contact
with either comer. This brings us to the next point of clarification.
When the Board commented that the newly added limitation required
the bulb to maintain contact with "only" two of the comers the term "only"
was not intended as a means by which to indicate that contact itself must be
limited to only a comer. As Appellant argues, such an interpretation would
directly contradict the "at least one of' claim language. App. Br. 23-25. The
term "only" was used in the prior opinion to refer to the list of possible
contact options being limited, inconsistently with the original disclosure, to
always include a comer, thereby precluding the option of contact with just
the vertically extending portion. Appellant devotes a substantial portion of
the briefs to arguing that the bulb can contact more than one structure of the
projection. See App. Br. 23-37; Reply. Br. 5-9. The Board never held
otherwise. Rather, the Board held that there was no descriptive support for
expressly omitting the vertically extending portion 78 from the list of
possible structures with which the bulb may make exclusive contact during
the rail's movement between minimum and maximum positions.
Claimed Subject Matter
Appellant introduced the above-quoted limitation involved in the '565
appeal and argued ('565 App. Br. 11) it created a distinction between the
subject matter claimed in the '565 appeal and the subject matter depicted in
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Figure 2 of Pepper (U.S. 2006/0112644 Al Pub. Jun. 1, 2006). 3 Figure 2 of
Pepper illustrates, without discussion, a position in which Pepper's sealing
portion 88 is contacting only a vertical portion of the (annotated) projection
of Pepper's rail 42 and neither of the upper or lower comers of that
projection.
A version of Figure 2 of Pepper with the Examiner's annotations from the
Examiner's Answer in the '565 appeal is reproduced above.
According to the limitations at issue introduced both in the prior
appeal and the present one, the absence of contact with at least one of the
comers never happens over the course of moving Appellant's rail 32
between its minimum and maximum positions. Stated differently, the
possibility of seal contact with only the vertical portion of the projection, as
appears to happen at at least at some moment in Pepper, is now precluded by
the claim language emphasized above and reproduced below:
said bulb extending from said first portion and maintaining
contact with said vertically extending portion and with at least
3 Trantina (US 3,344,271 iss. Sept. 26, 1967) was relied on by the Examiner
regarding the "bulb" portion of the seal.
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one of said upper comer and said lower comer as said rail moves
between said minimum height and said maximum height
The limitation above included in the present form of claim 1
unambiguously requires contact with at least two components of the
projection (74) during rail movement between its maximum and its
minimum: one of the comers (76) and the vertically extending portion (78).
This means that, according to claim 1, the bulb seal 66, in contrast to the seal
illustrated in Pepper, never loses contact with at least one of the comers of
the projection and also never loses contact with the vertically extending
portion of the projection.
Written Description
According to Appellant there is an "unambiguous recitation that the
bulb 'maintains contact with at least one comer' [in] paragraph [0035]."
Reply. Br. 9. It is not clear what Appellant is quoting with this argument
because the quotation matches neither the claim language nor that of
paragraph 35 of Appellant's Specification.
The Board has carefully reviewed Appellant's arguments and has
again carefully reviewed the Specification and Figures. We find that
paragraph 35 does contain the best language, and seemingly the only
language, that provides at least the possibility that there is some support for
Appellant's position. However, Appellant misquotes paragraph 35 (Reply.
Br. 9) and provides hypothetical examples that do not adhere to important
aspects of the express language of that paragraph (App. Br. 23-24). The
actual language of paragraph 3 5 is, in relevant part: "the bulb 66 maintains
contact with at least one of the comers 7 6 and the vertically extending
portion 78."
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At first blush reasonable minds may differ as to precisely how to parse
this phrase. It could mean, as Appellant argues, consistent with claim 1 as
presently amended, "maintaining contact with said vertically extending
portion and with at least one of said upper comer and said lower comer."
However, in stark contrast to the language of the Specification, in claim 1,
Appellant clearly uses "at least one of' to qualify only the comers and also
uses "and with" to indicate the maintenance of two contact points on the
projection. Although the Specification need not contain identical language to
provide adequate descriptive support for claimed subject matter, certainly
language having the level of precision of the language now present in claim
1 was available to Appellant to demonstrate possession of the subject matter
now claimed at the time of filing. Appellant chose to instead employ
language in the Specification amenable to more than one reasonable
interpretation.
An alternate, and also reasonable, reading of "at least one of the
comers 76 and the vertically extending portion 78" is that contact need only
be maintained with, at a minimum, one of the three delineated components
of the projection 74. In the prior appeal, in light of the entirety of the
disclosure, the Board applied this latter interpretation of paragraph 35. In
doing so, the Board designated the opinion as including a "new ground of
rejection" under 37 C.F.R. § 4I.50(b) so that Appellant was provided with
the opportunities to respond associated therewith.
Following the prior appeal decision, Appellant chose to reopen
prosecution to amend the claims. Now that this case returns to the Board
having substantially the same issue, Appellant has also had ample
opportunity to provide additional arguments and direct the Board's attention
to any other evidence supporting Appellant's proposed interpretation of
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paragraph 35 of the Specification. Appellant has not apprised us of error in
declining to adopt Appellant's most recent proposed interpretation of
paragraph 3 5 advanced in this appeal.
The first paragraph of 35 U.S.C. § 112 provides:
The specification shall contain a written description of the
invention, and of the manner and process of making and using it,
in such full, clear, concise, and exact terms as to enable any
person skilled in the art to which it pertains, or with which it is
most nearly connected, to make and use the same, and shall set
forth the best mode contemplated by the inventor of carrying out
his invention.
Expressly stated in this paragraph is the requirement for using "full, clear,
concise, and exact terms." Indeed, our reviewing court and its predecessor
have both emphasized the importance of clarity in drafting a disclosure that
demonstrates an applicant has actually invented the subject matter claimed.
See MPEP § 2163 quoting, inter alia, In re Barker, 559 F.2d 588, 592 n.4
( CCP A 1977) ("[T]he 'essential goal' of the description of the invention
requirement is to clearly convey the information that an applicant has
invented the subject matter which is claimed."); Purdue Pharma L.P. v.
Paulding Inc., 230 F.3d 1320, 1328, (Fed. Cir. 2000) ("[T]he specification
does not clearly disclose to the skilled artisan that the inventors ..
. considered the ratio ... to be part of their invention .. . ");In re Gosteli, 872
F.2d 1008, 1012 (Fed. Cir. 1989) ("[does] the description clearly allow
persons of ordinary skill in the art to recognize that [he or she] invented
what is claimed."); Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64
(Fed. Cir. 1991) ("the applicant must also convey with reasonable clarity to
those skilled in the art that, as of the filing date sought, he or she was in
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possession of the invention. The invention is, for purposes of the 'written
description' inquiry, whatever is now claimed.").
The Board is not aware, and Appellant does not apprise us, of any
precedent to support the notion that a disclosure, reasonably ambiguous on
its face, can be relied on, without more, as descriptive support for a later
preferred one of its possible interpretations. The approach that is more
consistent with the purpose of the written description requirement is to
consider ambiguous statements in the Specification in the context of their
surrounding disclosure to determine what meaning, if any, can be gleaned
therefrom. Indeed, when it comes to the Written Description requirement
"[ e Jach case must be decided on its own facts in terms of what is reasonably
communicated to those skilled in the art." MPEP § 2163.05(II) (quoting In
re Wilder, 736 F2d. 1516, 1520 (Fed. Cir. 1984).
During the oral hearing, the Board gave Appellant the opportunity to
point to any other language in the Specification or aspect of the Figures that
supported Appellant's proposed interpretation of the sentence of paragraph
3 5 in question. See Hearing Transcript 6-17. We began, as we do here, with
a discussion of the Figures. See Hearing Transcript 5-13.
The Figures
There is no dispute that Figure 5 shows a maximum rail position and
bulb 66 contact with a lower comer 76 and the vertical portion 78 of
projection 74. This is consistent with both the present claim language and
either of the possible interpretations of the sentence in question in paragraph
35. Thus, Figure 5 neither confirms nor refutes a particular interpretation.
Figure 6 depicts a minimum rail height where there is contact between
the bulb and the upper comer 7 6. Figure 6 does not clearly depict contact
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with the vertical portion 78 of projection 74. Figure 6, illustrating a
minimum position, need not necessarily show contact with vertical portion
7 8 because, according to the claim language, and according to Appellant's
proposed interpretation of paragraph 35, contact with the vertical portion 78
need only begin as the rail 32 is moved between the minimum position
toward the maximum position. However, this means that, immediately after
the rail 32 starts moving, there should be, according to Appellant's proposed
interpretation of the language of paragraph 35, contact between the bulb 66
and the vertical portion 78. This is certainly much easier to envisage with
regard to moving away from the maximum rail position illustrated in Figure
5 because there is already some contact with the vertical portion 78 at the
maximum rail position.
The position depicted in Figure 7 appears to, like Figure 6, exhibit an
absence of contact between the bulb 66 and vertical portion 78. Figure 7 is
also described as illustrating a maximum rail height, albeit after the rail has
been lowered from the maximum. Spec. paras. 14, 40. Appellant was unable
to provide any cogent explanation as to precisely why the bulb exhibits a
different position in the maximum rail position depicted in Figure 7 versus
that depicted in Figure 5. See Hearing Transcript 8-11. The Examiner also
questioned how contact with the vertical portion 78 is always maintained
during movement between the maximum and minimum when at least Figure
7 appears to illustrate the absence of contact with or immediately adjacent
to, the vertical portion 78 at the maximum rail height See Interview Sum. p.
2 (attached to Adv. Act. of Dec. 28, 2016).
The absence of contact with the vertical portion 78 in figures 6 and 7
seems to suggest a reading of paragraph 3 5 that does not in all instances
require contact with the vertical portion 78 during rail movement. This
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would make the interpretation requiring bulb contact to be with, at a
minimum, only one of the three delineated points more consistent with
Figures 6 and 7. We must recognize, as noted above, that Figures 6 and 7
illustrate minimum and maximum positions, respectively, and not points of
travel therebetween. Inferring, in Appellant's favor, that contact may be
made between the bulb 66 and the vertical portion 78 as soon as the rail
begins to move away from either of the maximum or minimum positions
only leads us to conclude that Figures 5, 6, and 7 are not, by themselves,
conclusive insofar as demonstrating how the skilled artisan would
understand the language of paragraph 35.
Figure 4 is the only figure that actually depicts the rail 32 at a position
between its maximum and minimum. Spec. paras. 11, 3 7. However, as can
be observed by considering the relative positions of the threaded fastener 40
and the threaded coupling 50, the position depicted in Figure 4 is much
closer to the minimum height depicted in Figure 6 than it is to either of the
maximum heights depicted in Figures 5 and 7. Even with a cursory glance at
Figure 4, one skilled in the art could envisage the amount of travel necessary
to move from the Figure 4 position to that of either of Figures 5 or 7 because
that amount of travel is equal to the amount of threaded fastener 40 exposed
beneath threaded coupling 50. When one skilled in the art considers this
distance (indicated as being between the lower pair of arrows we have added
to Appellant's figure 4 below) one skilled in the art would also be able to
easily envisage the travel of projection 74 with respect to bulb 66 (indicated
as being between the upper pair arrows we have added to Appellant's figure
4 below), because these distances are necessarily the same. For these
reasons, based on Figure 4, it seems highly likely that one skilled in the art
would envisage at least a point, and more likely, multiple points, during the
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course of the projection's travel wherein the bulb 66 makes contact with
only the vertically extending portion 78 of the projection 74 and neither of
its comers 7 6. Such a location is illustrated with a rectangle matching the
size of the projection 74 and placed in a hypothetical position the projection
would occupy between the Figure 4 position and maximum rail height
positions (Figures 5 and 7) in the annotated version of Figure 4 below:
As mentioned in the Oral Hearing, we recognize that the figures in
patent applications are not necessarily drawn to scale unless it is so
indicated. However, in the context of considering the adequacy of a
disclosure, our reviewing court has recognized that "[i]n those instances
where a visual representation can flesh out words, drawings may be used in
the same manner and with the same limitations as the specification." Ariad
Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1340 (Fed. Cir. 2010) (en
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bane). Appellant's Figure 4 supports only the interpretation that the bulb 66,
at some point during the rail's travel, makes contact with only the vertically
extending portion 78, much like the seal of Pepper. This is part of the reason
why the Board was skeptical when Appellant amended claim 1 to indicate
contact with the vertical portion 78 alone never occurs during the rail's
travel.
We asked Appellant to address Figure 4 in the Oral Hearing and
Appellant only reiterated that the figures were not to scale. Hearing
Transcript at 8. We also confirmed that if the bulb 66 were to always
maintain contact with at least one of the comers, the bulb 66 would need to
exhibit a size similar to that of the projection 74 so that it may essentially or
nearly contact both comers simultaneously to ensure that each comer 7 6 is
contacted by the bulb 66 as soon as its opposite comer loses contact with the
bulb 66. Hearing Transcript at 6-8. Appellant indicated Appellant was
unable to file "animations" demonstrating an absence of contact with just
vertical portion 78 of projection 74, or constant contact with at least one
comer, during every possible position of the rail between its maximum and
minimum. Hearing Transcript at 6. In most cases that may be so, 4 but
illustrating the alleged point at which contact occurs between the bulb and
both comers, or an appropriate relative sizing between the bulb and
projection, would not have required any animation and would certainly have
allowed one skilled in the art to more easily envisage the arrangement
Appellant now contends was part of the original disclosure. Indeed, if this
were contemplated as part of the original disclosure, particularly one that
might help distinguish the claimed subject matter from the prior art, there
4 See MPEP § 608.03 for exceptions to this policy.
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appears to be no excuse for failing to illustrate it, or with Figure 4, for
illustrating something seemingly conflicting with it, because 37 C.F.R.
§ 1.83 requires drawings to "show every feature of the invention specified in
the claims." MPEP § 608.02(d). Appellant instead chose to illustrate, with
Figure 4, only an arrangement that tends to support our interpretation of
paragraph 3 5 over that advanced by Appellant.
Recognizing Figure 4 is not necessarily drawn to scale, at best for
Appellant, Figure 4, like the other figures provides some evidence as to how
paragraph 35 would be understood by the skilled artisan in light of the
disclosure, but is not, by itself, dispositive as to how the language in
question in paragraph 3 5 should ultimately be interpreted. We tum next, as
we did in the Oral Hearing, to the Specification.
The Specification
One of the questions we asked Appellant at the Oral Hearing was
whether there was any disclosure regarding the reasons or purposes for
maintaining contact between the bulb 66 and both the vertically extending
portion 78 and at least one comer 76 of the projection 74. Hearing
Transcript 15. The presence of a discussion indicating a reason for including
a particular feature, though not necessarily required, can often help inform
the skilled artisan reading the Specification about the feature itself. It can
also help demonstrate that the feature in question was something more than
an afterthought-subject matter not found in an applied prior-art reference
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but not necessarily part of Appellant's original disclosure. 5 Appellant did not
provide any cogent response to our inquiry.
The only discussion that we are aware of in the Specification
regarding reasons the seal and bulb maintain contact states:
By maintaining contact with the second portion[54], the bulb
[60] prevents water, dirt, etc., from collecting between the first
[52] and second portions of the seal [20] thereby preventing
damage, rot, unappealing appearance, etc., associated with
collection of water, dirt, etc., between the first and second
portions.
Spec. para. 6. This objective would seemingly be achieved so long as there
is contact between the bulb and any portion of the elastomeric seal's second
portion 54 (the portion with projection 74). There is no indication that
multiple portions of the seal second portion 54, or projection 74, in particular
both the vertically extending portion 78 and at least one of the comers 76,
must be contacted in order to achieve the stated benefit or to provide any
particular advantage. In fact, to the contrary, Appellant repeatedly indicates
just the opposite throughout the Specification in that during rail movement
contact is maintained either "between the bulb 66 and the second portion
54" (para. 33 (emphasis added)) or "the bulb 66 ... maintain[s] contact with
the projection 74" (paras. 38, 39, 40 (emphasis added)). We see no reason,
and when asked, Appellant offered no cogent explanation (Hearing
Transcript at 16-17), why these sentences would not be interpreted by a
skilled artisan to have their plain and ordinary meaning, wherein contacting
the second portion of the seal 54, or contacting the projection 74, can be
5 Negative limitations often present issues of similar concern. See, merely for
example, Santarus, Inc. v. Par Pharm., Inc.,694 F.3d 1344, 1351 (Fed.
Cir.2012).
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achieved by contacting at least any one element of the seal second portion 54
or projection 74. These statements strongly favor the interpretation of
paragraph 35 used in the prior appeal, that contact may be between the bulb
and any one of the three elements of the projection 74. This includes the bulb
66 possibly contacting only the vertically extending portion 78. When
contacting vertically extending portion 78 without contacting a comer the
bulb "maintains contact with the projection 74" as stated in each of
paragraphs 38, 39, and 40. These portions of Appellant's Specification do
not sufficiently specify the subject matter now sought by claim 1. In re
Ruschig, 379 F. 2d 990,995 (CCPA 1967) ("It is an old custom in the woods
to mark trails by making blaze marks on the trees ... Appellants are pointing
to trees. We are looking for blaze marks which single out particular trees.
We see none.").
Originally filed claims 1, 5, 8, 9, 12, 16, and 19--21 are consistent with
paragraphs 33 and 38--40 of the Specification in that they all permit contact
with any portion of the projection during rail movement. There is no
language in any of the originally filed claims, or elsewhere in the
Specification, to indicate that contact between the bulb 66 and the vertical
portion 78 alone, i.e., without contact between the bulb and a comer 76,
never occurs during the rail's movement between its minimum and
maximum positions, as is now required by amended claim 1.
Conclusion
As noted above, ascertaining compliance with the written description
requirement is a question of fact that must be determined on a case-by-case
basis. Here, Appellant relies heavily on the language of paragraph 35 of the
Specification read in isolation to argue the original disclosure supports the
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newly added limitation requiring "maintaining contact with [the] vertically
extending portion and with at least one [comer]." The fact that the phrase of
paragraph 35 in question could, at first blush, be interpreted by some as
Appellant proposes may be some evidence to support Appellant's position.
However, all the other evidence before us, including the aspects of the
Figures and Specification discussed above, taken together, outweighs any
inclination that may be derived only from reading the phrase in question in
isolation, and makes it more likely than not that Appellant's disclosure does
not adequately demonstrate to one skilled in the art Appellant had actual or
constructive possession of the subject matter now claimed.
Appellant is the master of Appellant's own application and, as such,
was free to choose any language and supply any figures to satisfy the
Written Description requirement of 35 U.S.C. § 112, first paragraph. By not
clearly describing the subject matter now claimed, claim 1, in its present
form, violates the Written Description requirement.
We designate this opinion as including a new ground of rejection
Although the Board addressed a very similar issue in the prior appeal,
we recognize that the discussion there was brief and that portions of the
Examiner's analysis are not consistent with the previous decision or the
decision here. Accordingly, to ensure Appellant has a fair opportunity to
respond, the Board again designates this opinion as including a "new
ground" of rejection under 37 C.F.R. § 4I.50(b) so as to again afford
Appellant the procedural options associated therewith.
19
Appeal 2018-001955
Application 12/421,420
DECISION
The Examiner's rejection is affirmed. We designate our affirmance as
including a new ground of rejection.
1-3, 6, 7,
10-14, 17,
18, 21, 22,
24,25
112, first
paragraph
DECISION SUMMARY
Written 1-3, 6, 7,
description 10-14, 17,
18, 21, 22,
24,25
FINALITY AND RESPONSE
This decision contains a new ground of rejection pursuant to
1-3, 6, 7,
10-14, 17,
18, 21, 22,
24,25
37 C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
20
Appeal 2018-001955
Application 12/421,420
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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; 37 C.F.R. § 4I.50(b)
21