Othman AhmadDownload PDFPatent Trials and Appeals BoardMay 12, 20212020000276 (P.T.A.B. May. 12, 2021) Copy Citation 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. 14/833,144 08/24/2015 Othman Bin Ahmad aerodynamic 5515 121868 7590 05/12/2021 Othman Bin Ahmad Lot 12, LRG Kingland Taman Kingland Fasa 1, Petagas Kota Kinabalu, Sabah, 88200 MALAYSIA EXAMINER GILBERT, WILLIAM V ART UNIT PAPER NUMBER 3649 NOTIFICATION DATE DELIVERY MODE 05/12/2021 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): irhjothman@yahoo.com othmana@gmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte OTHMAN BIN AHMAD Appeal 2020-000276 Application 14/833,144 Technology Center 3600 Before JENNIFER D. BAHR, JOHN C. KERINS, and MICHAEL J. FITZPATRICK, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE On April 15, 2021, Appellant1 filed a Request for Rehearing (hereinafter “Request” or “Req. Reh’g”) under 37 C.F.R. § 41.52 of the Decision on Appeal (hereinafter “Decision” or “Dec.”) dated February 26, 2021. In the Decision, the Board affirmed the rejection of claims 1–4 and 6–9 under 35 U.S.C. § 112(b), but reversed the rejections of claims 1–4 and 6–9 under 35 U.S.C. § 103 because, due to the indefiniteness 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as the inventor, Othman bin Ahmad. Req. Reh’g 3. Appeal 2020-000276 Application 14/833,144 2 of the claims, the rejections were based on speculative assumptions as to the meaning of the claims. See Dec. 20. REQUIREMENTS FOR REQUEST FOR REHEARING A Request for Rehearing must comply with the following requirements: The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board. Arguments not raised, and Evidence not previously relied upon, pursuant to §§ 41.37, 41.41, or 41.47 are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) through (a)(4) of this section. 37 C.F.R. § 41.52(a)(1). For example, “Appellant may present a new argument based upon a recent relevant decision of either the Board or a Federal Court.” 37 C.F.R. § 41.52(a)(2). However, a Request for Rehearing is not an opportunity to rehash arguments raised in the Appeal Brief or in the Reply Brief. Neither is it an opportunity to merely express disagreement with a decision without setting forth points believed to have been misapprehended or overlooked. OPINION Preliminary Matters In the Request, Appellant remarks that the “USPTO had already downgraded the rejection of most of the claims to objection but without any information of the objection.” Req. Reh’g 17. This remark appears to be directed to the listing of claims 1–4 and 6–9 on the line for “Claim(s) objected to:” on the Notice of Panel Decision from Pre-Appeal Brief Review issued March 12, 2019 (hereinafter “Notice”). The box for “Proceed to Board of Patent Appeals and Interferences” was also checked on the Appeal 2020-000276 Application 14/833,144 3 Notice, which would only make sense if there were pending rejections for the Board to review. Further, the Examiner’s Answer states that “[e]very ground of rejection set forth in the Office action dated 17 July 2018 . . . is being maintained by the [E]xaminer except for the grounds of rejection (if any) listed under the subheading ‘WITHDRAWN REJECTIONS.’” Ans. 3 (emphasis added). The only ground of rejection listed under the subheading “WITHDRAWN REJECTIONS” was the rejection of claim 6 under 35 U.S.C. § 112(b) with respect to “said vehicles” (language that was amended to “said vehicle” to overcome the rejection). Id. Thus, it is clear that, with the exception of the particular rejection of claim 6 expressly withdrawn by the Examiner on page 3 of the Answer, all rejections of claims 1–4 and 6–9 set forth in the Final Action (dated July 17, 2018) were pending and before the Board for review. Appellant presents arguments directed to a purported rejection of claim 5. Req. Reh’g 42–45.2 However, claim 5 is not rejected. Rather, as explained in the Decision, “[t]he Examiner objects to claim 5 as being in improper multiple dependent form pursuant to 37 C.F.R. § 1.75(c) and MPEP § 608.01(n) and does not treat claim 5 further on the merits. Final Act. 3; id. at 2 (stating that ‘[c]laim 5 is withdrawn from consideration’).” Dec. 1 n.2. Having withdrawn claim 5 from consideration, thus not treating it further on its merits, it is clear that the Examiner’s inclusion of claim 5 in the indefiniteness rejection on page 3 of the Final Action was an inadvertent error. See id. at 3 n.3. Thus, the Decision treats only claims 1–4 and 6–9, 2 These arguments appear to merely repeat the argument made on pages 33–36 of the Appeal Brief. Appeal 2020-000276 Application 14/833,144 4 and not claim 5, as being rejected and involved in this appeal. See id. at 1, 3, 20. The Examiner’s objection to and withdrawal of claim 5 is a matter that is reviewable by a petition under 37 C.F.R. § 1.81, and not by appeal to the Board. See MPEP §§ 1002, 1201 (9th ed. Rev. 10.2019, rev. June 2020). (the Board will not ordinarily hear a question that is reviewable by petition); In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (stating that there are many kinds of decisions made by examiners that are not appealable to the Board when they are not directly connected with the merits of issues involving rejections of claims) (citing In re Hengehold, 440 F.2d 1395, 1403 (CCPA 1971)). Thus, we do not address Appellant’s additional arguments contesting the objection to claim 5 on page 26 of the Request. The Request addresses the Examiner’s objection to the drawings as not complying with 37 C.F.R. § 1.81. See Req. Reh’g 26; Final Act. 2. Objections to drawings are also a matter that is reviewable by petition under 37 C.F.R. § 1.181, and not by appeal to the Board. See MPEP §§ 1002, 1201; In re Berger, 279 F.3d at 984. Accordingly, the objections to the drawings were not addressed in the Decision and are not addressed herein. Throughout the Request, Appellant repeats a sentence quoted from MPEP § 2173.05(e) (citing In re Hammack, 427 F.2d 1384, 1388 n.5 (CCPA 1970)) to the effect that indefiniteness in claim language of semantic origin “is not rendered unobjectionable simply because it could have been corrected.” See, e.g., Req. Reh’g 17, 19. The quoted sentence merely points out that an indefinite claim is still indefinite, even if the indefiniteness is of semantic origin that could be corrected because the intended meaning is readily apparent, unless such correction is made. See Hammock, 427 F.2d Appeal 2020-000276 Application 14/833,144 5 at 1388 n.5. This statement in no way supports Appellant’s position that any of the indefiniteness rejections, or the Board’s affirmance thereof, was improper, nor does it state a point that was misapprehended or overlooked by the Board. Appellant appears to propose amendments to the claims in the Request. See, e.g., Req. Reh’g 52, 54–56. Amendments are not permitted in a Request for Rehearing. Accordingly, we do not address these proposals further herein. Pages 59–106 of the Request present arguments contesting the Examiner’s findings and reasoning in rejecting claims 1–4 and 6–9 under 35 U.S.C. § 103. The Decision reversed the obviousness rejections under 35 U.S.C. § 103 because, due to the indefiniteness of the claims, sustaining the rejections “would require speculation as to the scope of the claims.” Dec. 19 (citing In re Steele, 305 F.2d 859, 862–63 (CCPA 1962)). As the Decision explains, our decision not to sustain the obviousness rejections “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 rejections.” Id. at 20. Accordingly, Appellant’s arguments on pages 59–106 are not directed to any aspect of the Decision and, thus, fail to state a point that was misapprehended or overlooked by the Board. We do not address these arguments against the Examiner’s obviousness rejections further herein. Arguments Directed to Indefiniteness Claim 2: The Request characterizes the Examiner’s determination that it is unclear to which nozzles (the intake nozzles, the exhaust nozzles, or both) Appeal 2020-000276 Application 14/833,144 6 “the nozzles” in claim 2 refer, as well as any attempt to amend claim 2 to correct this ambiguity, as “ridiculous” and “frivolous and not suitable for a person of ordinary skill.” Req. Reh’g 21. This comment does not state a point that was misapprehended or overlooked by the Board. Further, the fact that one might look to the drawings and Specification (see id.) to understand what Appellant has disclosed as the invention does not discharge Appellant’s burden to clearly define the invention in the claims, which set forth the metes and bounds of the patent rights sought by Appellant. Claim 3: The arguments on page 22 of the Request regarding claim 3 essentially rehash the arguments on page 30 of the Appeal Brief, and still miss the mark. As the Decision explains, The basis of the Examiner’s indefiniteness rejection is not that one of ordinary skill in the art would not understand how Appellant’s disclosed invention works. The definiteness requirement is directed to whether the metes and bounds of the claims are clear. Claim 3 recites a “vehicle” having the elements positively recited in claims 1 and 2, but does not positively recite that the vehicle comprises a turbo jet or a turbo fan engine. Thus, in reciting that the air compressor and turbo charger use turbines and hot exhaust gases to provide additional propulsion of turbo jet and turbo fan engines, it is not clear whether claim 3 intends to claim that the air compressor and turbo charger are part of a turbo jet or fan engine or that the air compressor and turbo charger can be used with a vehicle having a turbo jet and turbo jet engine. As such, the metes and bounds of claim 3 are not clear. Dec. 8–9. Claim 4: Appellant argues that the use of “the said” does not render the scope of the claims indefinite. Req. Reh’g 41. This argument does not state a Appeal 2020-000276 Application 14/833,144 7 point that was misapprehended or overlooked by the Board. Indeed, the Board agrees with Appellant on this point, as explained in the Decision. Dec. 6 n.4. Thus, the Decision did not sustain the rejection of claim 1, 3, 4, or 6 (or any other claim) on this particular basis. Claim 6: Appellant’s arguments on page 22 of the Request regarding claim 6 do not address the basis of the Board’s decision to sustain this rejection, and thus do not state a point that was overlooked or misapprehended by the Board. See Dec. 9 (explaining the ambiguity in “a plurality of said air intake nozzles” in claim 6). Appellant’s inference on page 22 of the Request that the basis of the rejection, or of the Board’s affirmance of this rejection, was that it is unclear what is meant by “do not cover” is incorrect. Further, neither the Examiner nor the Board construed claim 1 as requiring that the intake nozzles cover the whole frontal surface area, as Appellant’s arguments imply. See Req. Reh’g 22. On page 46 of the Request, Appellant addresses two additional issues with claim 6. The first is directed to the use of “the said” in claim 6. Req. Reh’g 46. As already discussed above, the Board agrees with Appellant on this point, and the Decision did not sustain the rejection of claim 6 (or any other claim) on this particular basis. Dec. 6 n.4. The second, directed to the use of “vehicles” in claim 6, addresses a rejection that was expressly withdrawn by the Examiner on page 3 of the Answer and, thus, rendered moot. Claim 7: Appellant’s arguments on page 23 of the Request regarding the term “transmissions” evince Appellant’s misunderstanding of the basis of the Appeal 2020-000276 Application 14/833,144 8 rejection. As the Decision explains, the basis of the Examiner’s rejection was not that a person having ordinary skill in the art would be unfamiliar with transmissions. Dec. 10–11. Rather, the problem identified by the Examiner is that claim 7 “does not positively recite transmissions as an element of the claimed vehicle,” and, thus, the reference “to electric motor/generators being able to turn a plurality of turbines ‘via a plurality of shafts to the transmissions’ does not make sense within the context of claim 7.” Id. at 11. As the Decision explains, “[a] claim that refers back to an element must first clearly and positively recite that element before referring back to it.” Id. Appellant further expresses a desire not to amend claim 7 to positively recite the transmissions because, according to Appellant, this “will reduce the protection accorded to the invention.” Req. Reh’g 47; see also Appeal Br. 38 (expressing the same desire). This suggests that Appellant appreciates that claim 7 does not positively recite the transmissions, thereby supporting the Board’s position that reference to “the transmissions” in claim 7 causes confusion. See Dec. 11 (stating that “[i]t is not clear how a motor/generator can turn a plurality of turbines via a plurality of shafts to transmissions that are not present in the vehicle of claim 7”). Claim 8: Appellant characterizes the Board’s statement that it was not apprised of error in the Examiner’s determination “that claim 8 is indefinite for the additional reason that it is not clear to which of the previously recited plurality of ‘drive shafts,’ ‘differential gears,’ and ‘wheels’ the language ‘said drive shaft. . . , differential gear . . . and wheel’ in claim 8 refers” (Dec. 11) as “without any reason whatsoever, just a personal judgment.” Appeal 2020-000276 Application 14/833,144 9 Req. Reh’g 23. This remark fails to state a point overlooked or misapprehended by the Board. Appellant’s inaccurate and misleading statement that “[t]he [C]onstitution clearly states that a person skilled in the art know how to choose which apparatus or quantity for or a particular problem to be solved” (Req. Reh’g 23) is similarly unavailing. Appellant’s observation that the term “such as” does not necessarily render a claim indefinite (Req. Reh’g 24) essentially rehashes arguments set forth on page 28 of the Appeal Brief. The Examiner’s position is that it is unclear whether the limitations following “such as” in claim 8 are part of the claimed invention (i.e., whether claim 8 is limited to underwater vehicles). Final Act. 6 (referencing the discussion of similar language in claim 2 at Final Act. 5). Notably, Appellant does not expressly state whether claim 8 is or is not limited to underwater vehicles so as to refute the Examiner’s reasoning in this regard. Claim 9: Appellant argues that there is no ambiguity in the term “full frontal surface” for a person having ordinary skill in the art because one “cannot just take any plane to measure the area”; rather, “[i]t should be in the direction of travel, deemed as the front.” Req. Reh’g 20. This explanation does not address the rationale for the rejection articulated by the Examiner on page 15 of the Answer. See Dec. 14–15. As explained in the Decision, the Board “agree[s] with Appellant that a person having ordinary skill in the art would understand ‘full frontal surface’ to be the full front surface or part of the vehicle when viewed directly from the front of the vehicle.” Id. at 15. However, as the Decision goes on to explain: Appeal 2020-000276 Application 14/833,144 10 Figures 1A and 1B appear to show the upper and lower air intake nozzles (which appear, in fact, to be upper and lower portions of a single intake nozzle, rather than distinct upper and lower nozzles) extending to the upper, lower, and side peripheral edges of the front of the vehicle. However, whether they encompass the “full frontal surface” depends on how “full frontal surface” is interpreted. In other words, if the “full frontal surface” is interpreted as a surface in a vertical plane taken along the front-most section of the vehicle, the upper and lower air intake nozzles do not appear to encompass such “full frontal surface.” Rather, because they are inclined away from the front of the vehicle, only their upper, lower, and side edges intersect with this surface. For this reason, and because of the ambiguity as to what actually constitutes an air intake nozzle (i.e., whether the upper and lower structures (2, 3) shown) in fact constitute a single nozzle with upper and lower portions or two distinct nozzles, there is merit to the Examiner’s position that it is unclear what constitutes the “full frontal surface area of the vehicle” in claim 9. Id. at 15–16. Appellant also contends there is no ambiguity as to which nozzles are recited in claim 9 as being “of such sizes that they are large enough to cover the full frontal surface area” because “front refers to the intake nozzles only.” Req. Reh’g 20. This contention does not address the ambiguity discussed on pages 13–14 of the Decision. The problem is not that it is not clear whether it is the intake nozzles or the exhaust nozzles that are large enough to cover the full frontal surface area. Rather, as the Decision explains, the limitations in claim 9 directed to providing a plurality of intake nozzles “of such sizes that they are large enough to cover the full frontal surface area of the vehicle” and providing a plurality of exhaust nozzles “of such sizes that they are large enough to cover the full frontal surface area of the vehicle” Appeal 2020-000276 Application 14/833,144 11 raise an ambiguity as to whether each of the plurality of intake nozzles and each of the exhaust nozzles is sized to cover the full frontal surface of the vehicle, or all of the plurality of intake nozzles in the aggregate (and all of the plurality of exhaust nozzles in the aggregate) have a combined size large enough to cover the full frontal surface area of the vehicle. Dec. 13–14. The Request includes comments directed to the use of “good visibility” in claim 9. Req. Reh’g 21; see id. at 52. Appellant’s comments do not state a point that the Board has overlooked or misapprehended. Indeed, the Board found persuasive Appellant’s argument on page 24 of the Reply Brief that one having ordinary skill in the art would understand what is meant by “good visibility” and did not sustain the rejection of claim 9 on this particular basis. Dec. 17–18. As the Decision explains, “[a] person having ordinary skill in the art would understand from the discussion in Appellant’s Specification that ‘good visibility’ means that movement of the upper intake nozzle does not affect visibility to a degree that would prevent proper operation of the vehicle.” Id. Appellant submits that “[c]laim 9 is a method claim and the method applies to different embodiments of the inventions” and contends that there is no need to put these different methods in separate claims. Req. Reh’g 25. According to Appellant, “[i]t is a single method in designing all the embodiments of the invention.” Id. Appellant’s arguments do not state a point that the Board misapprehended or overlooked. The Board, and the Examiner, understood full well that the last four “providing” steps recited in claim 9 recite different embodiments of the invention. Dec. 18 (citing Final Act. 7). As the Decision explains, the problem with these limitations is that Appeal 2020-000276 Application 14/833,144 12 they recite “four mutually exclusive embodiments of the invention in combination” in a single method of designing a vehicle. Id. at 18–19. Although one could design a first vehicle according to one of these embodiments, a second vehicle according to a second of these embodiments, a third vehicle according to a third of these embodiments, and a fourth vehicle according to a fourth of these embodiments, this is not what claim 9 recites. Claim 9 recites a single method of designing a vehicle. As the Decision explains: [C]laim 9 recites providing a plurality of intake nozzles and a plurality of exhaust nozzles (Appeal Br. 92 (Claims App.)), and then recites providing a direct path from the air intake to the exhaust outlet without any thermal engine and providing a path from the air intake to the exhaust outlet through a turbo charger (id. at 93). These are two mutually exclusive alternatives. Either there is a thermal engine (e.g., turbo charger) between the intake and exhaust nozzles or there is no thermal engine between the intake and exhaust nozzles; both are not possible together. Further, after reciting providing a plurality of intake nozzles and a plurality of exhaust nozzles, claim 9 goes on to recite providing a plurality of air collectors instead of air intake nozzles with high dynamic pressure and providing a plurality of exhaust diffusers instead of exhaust nozzles with low dynamic pressure. The claimed invention either includes intake nozzles or it includes air collectors instead of air intake nozzles; it cannot both include intake nozzles and include air collectors instead of air intake nozzles. Likewise, the claimed invention either includes exhaust nozzles or it includes exhaust diffusers instead of exhaust nozzles; it cannot both include exhaust nozzles and include exhaust diffusers instead of exhaust nozzles. Dec. 18–19. Appellant’s position, expressed on page 24 of the Request, that the statement on pages 12–13 of the Decision that “[a]side from the nozzles, Appeal 2020-000276 Application 14/833,144 13 however, the method steps of claim 9 do not mention the elements of the vehicle recited in claim 1” is inaccurate is well taken, and we hereby withdraw the statement. More specifically, we modify the paragraph bridging pages 12–13 of the Decision by deleting “The preamble of claim 9 recites ‘[a] method of designing vehicles as in claim 1’ and, thus, appears to incorporate the elements of the vehicle recited in claim 1. Aside from the nozzles, however, the method steps of claim 9 do not mention the elements of the vehicle recited in claim 1.” Otherwise, the paragraph bridging pages 12–13 of the Decision remains unchanged. Our modification of this paragraph of the Decision does not affect our agreement with the Examiner’s determination that claim 9 does not recite sufficient relationships between the list of items provided to make clear how the method steps of claim 9 comprise a method of designing a vehicle, much less the vehicle of claim 1. Conclusion For the above reasons, aside from the aforementioned sentences in the paragraph bridging pages 12–13 of the Decision, which we hereby delete in view of arguments in Appellant’s Request, we are unpersuaded that the Board misapprehended or overlooked any point in the record or otherwise erred in sustaining the rejections of claims 1–4 and 6–9 under 35 U.S.C. § 112(b). Accordingly, Appellant’s Request has been granted to the extent that we have reconsidered our Decision in light of the arguments in Appellant’s Request, but is denied with respect to our making any modification to the dispositions in the Decision. DECISION SUMMARY Outcome of Decision on Rehearing: Appeal 2020-000276 Application 14/833,144 14 Claims 35 U.S.C. § Reference(s)/Basis Denied Granted 1–4, 6–9 112(b) Indefiniteness 1–4, 6–9 1–4, 6–8 103 Kardos,3 Khadiya4 1–4, 6–8 9 103 Kardos, Karl5 9 Overall Outcome 1–4, 6–9 Final Outcome of Appeal after Rehearing: Claims 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4, 6–9 112(b) Indefiniteness 1–4, 6–9 1–4, 6–8 103 Kardos, Khadiya 1–4, 6–8 9 103 Kardos, Karl 9 Overall Outcome 1–4, 6–9 TIME PERIOD FOR RESPONSE 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)(1)(iv). DENIED 3 Kardos, US 8,015,954 B2, iss. Sept. 13, 2011. 4 Khadiya, US 2010/0181138 A1, pub. July 22, 2010. 5 Karl, US 2011/0139525 A1, pub. June 16, 2011. Copy with citationCopy as parenthetical citation