Perruso, Anthony P.Download PDFPatent Trials and Appeals BoardNov 29, 201913086727 - (R) (P.T.A.B. Nov. 29, 2019) 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. 13/086,727 04/14/2011 Anthony P. Perruso JR. 3716U.001 4763 21917 7590 11/29/2019 MCHALE & SLAVIN, P.A. 2855 PGA BLVD PALM BEACH GARDENS, FL 33410 EXAMINER NGUYEN, MAI T ART UNIT PAPER NUMBER 3671 NOTIFICATION DATE DELIVERY MODE 11/29/2019 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): uspatents@mchaleslavin.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ANTHONY P. PERRUSO JR. ____________________ Appeal 2019-000052 Application 13/086,727 Technology Center 3600 ____________________ Before EDWARD A. BROWN, CHARLES N. GREENHUT, and MICHELLE R. OSINSKI, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE Appellant requests rehearing of our decision mailed June 28, 2019 (“Decision”). We grant the request to the extent we have reconsidered our decision but deny the request to make any changes thereto. OPINION In our Decision, we held claim 1 was indefinite because, (1) it was unclear what “forward pitch” referred to in the context of the claims and Specification (Decision 5–6), (2) it was unclear how “a notched section” Appeal 2019-000052 Application 13/086,727 2 could “defin[e] a rectangle along said first trailing edge extending between said notch and said distal edge of said first end” as claimed (Decision 10), and (3) it was not clear the extent to which something, such as the recited “upturned portion,” could be “defined by said rectangle” without actually being a rectangle (Decision 10). We also held claim 1 as lacking an adequate supporting disclosure because an “upturned portion defined by [a] rectangle”—a limitation Appellant introduced and argued distinguished over the applied prior art—was unambiguously absent from the embodiment depicted in Figures 3–8 and not clearly present in the embodiment depicted in Figure 10 as originally filed. We further held that the absence of such a supporting disclosure rendered claim 1 so inconsistent with the disclosure that it created an indefiniteness issue under 35 U.S.C. § 112, second paragraph, because it was unclear how to reconcile claim 1 with the Specification, which claim 1 must be read in light of. Decision 5 (citing MPEP § 2173.03). Appellant initially argues that “[t]he Board misapprehended the requirements of 35 U.S.C. § 112, first and second paragraphs” because “[t]he Board’s Decision does not apply the Nautilus[1] standard.” Request 3– 5. We reject the notion that, in the context of the Nautilus litigation, the Supreme Court, sub silentio, overruled the bulk of precedent dealing with indefiniteness during prosecution before the PTO, rendering MPEP § 2173.03 and cases cited therein inapplicable. Our basis for doing so is discussed at length in Ex parte McAward (Case No. 2015-006416, 2017 WL 1 Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 908 (2014) Appeal 2019-000052 Application 13/086,727 3 3669566 (PTAB Aug. 25, 2017) (precedential))2, and is therefore not repeated here. Appellant next contends we misapprehended Appellant’s argument by considering whether claim 1 could be directed to the embodiment depicted in Figure 10 where Appellant did not intend to argue that. Request 5–6. With regard to the rectangular shape of the upturned portion, the particular limitation in question in the Appeal, Appellant’s Summary of Claimed Subject Matter in Appellant’s Appeal Brief expressly referenced with regard to claim 1, “. . . a rectangular shape (Figures 3, 10, and 11).” Appeal Br. 4. We, therefore, thought it appropriate to consider each of the embodiments depicted in these Figures as possible embodiments to which claim 1 might be directed. Appellant is essentially asserting that we should not have considered the embodiment depicted in Figure 103 in our search for descriptive support for the “upturned portion defined by said rectangle.” The only influence this could potentially have on our decision is resolving some of the issues raised regarding claim clarity by virtue of what appears to amount to Appellant’s express disavowal of the subject matter of claim 10. Were we to regard Appellant’s arguments this way, it only would have the effect of further strengthening our finding of the absence of descriptive support because the embodiment depicted in Figure 10 appeared to be the only embodiment that could potentially be regarded as supporting the “upturned portion defined by said rectangle” limitation. Decision 7. 2https://www.uspto.gov/sites/default/files/documents/Ex%20parte%20McA ward%202017_08_25.pdf 3 “Figure 11 is a front elevational view of the rotary blade shown in Figures 10.” Spec. para. 33. Appeal 2019-000052 Application 13/086,727 4 We thought it appropriate to carefully consider the embodiment depicted in Figure 10 because, in addition to Figure 10 being expressly cited by Appellant, as indicated above, it is the embodiment that could most conceivably provide descriptive support for the “rectangle” language in question. Appellant argues, if we understand Appellant correctly, that the embodiment depicted in Figure 10 was cited only because it more clearly illustrated the rectangle also present in the alternate embodiment and did not include the perspective views which allegedly caused our misapprehensions. Request 12–13. We think it is clear, however, from the Specification and the Figures, and our discussion in the Decision, that the rectangles possibly present in Figure 10 relate to a different configuration of the upturned portion and not a different view of the same, or a substantially similar, upturned portion as that illustrated in Figures 3–8. Now that Appellant makes clear that Figure 10 was only mentioned to contrast the subject matter of claim 1 (Request 5), meaning claim 1 does not cover the embodiment in Figure 10, that issue is effectively moot, and we can focus our inquiries on the embodiment depicted in Figures 3–8. Appellant reproduces Figures 3, 5, and 7 and includes a rectangular annotation. Request 7–8. Appellant explains why this rectangular annotation is consistent with the rectangle described in claim 1. Request 6–7, 9. In our Decision, as noted above, we questioned, with regard to the clarity of the claimed subject matter, “how only two edges, with no specific lengths or orientations themselves, can define a rectangle.” Decision 10. That lack of clarity in the claim is not truly resolved by pointing to a more specific structure in the Specification, where the two edges are joined at a right angle. Nonetheless, we recognize that it may not be unfair to assume, as Appeal 2019-000052 Application 13/086,727 5 Appellant does, that, first, when two edges are described as defining a rectangle, those edges must implicitly include a right angle therebetween. See Request 7. Second, it may not be unreasonable to also assume, as Appellant does, that the two edges joined by a right angle implicate the presence of two respective opposing sides of the same lengths also joined by a right angle to complete the rectangle, as is illustrated in Appellant’s annotation of Figures 3, 5, and 7. See Request 7–8, 14–17. However, even assuming that the particular rectangle illustrated by Appellant is fairly and clearly conveyed by the claim language, we still see no way to reasonably conclude that Appellant disclosed a blade having an upturned portion that is “defined by [that] rectangle.” Rather, we maintain that the illustrated upturned portion in Figures 3, 5, and 7, upon which Appellant relies for descriptive support, is a trapezoid. Appellant does not offer any explanation as to how the upturned portion can be defined by a rectangle while being trapezoidal itself. Below we have reproduced Appellant’s annotated version of Figure 5 as amended. The trapezoidal shape of the upturned portion (solid lines below) may have two sides that are coextensive with the rectangle defined according to Appellant (broken lines below), and a third side that partially coincides with a third side of that rectangle. However, there is no indication from Appellant’s proposed rectangle as to the length of the third and fourth sides of the trapezoid, or at what angle they are joined. Without knowledge of at least some of this further information, there is no way a rectangle can “define” a trapezoid, even a right trapezoid as illustrated below. As a rectangle cannot, without more, “define” a trapezoid, a rectangle cannot, without more, “define” a structure having the shape of a trapezoid. Appeal 2019-000052 Application 13/086,727 6 Thus, we maintain that there is no descriptive support in Figures 3–8 for the “upturned portion defined by said rectangle” as recited in claim 1. It is further noted that in arguing the prior-art rejection Appellant took a seemingly contradictory position, objecting to the Examiner’s proposed rectangle as having only two coextensive sides with the prior-art blade’s upturned portion. Appeal Br. 16 (citing Final Act. 6).4 The Figures now relied upon, Figures 3, 5, and 7 were much less clear, as originally filed. Figure 3, in particular, in its original forms,5 and in the relevant part related to the upturned portion, much more closely resembles the blade depicted in 4 In the Decision we commented that “[w]e are forced to choose between attributing an unconventional meaning to the term “rectangle” so as not to exclude the embodiments supported by Appellant’s disclosure, and construing “rectangle” according to its ordinary meaning which would seem to exclude the embodiments that are supported by Appellant’s disclosure.” In the following sentence, “[t]he Examiner, practicing compact prosecution, chose the latter approach” should have read “[t]he Examiner, practicing compact prosecution, chose the former approach.” 5 See, e.g., Figure 3 provisional application 61/324,645 filed Apr. 15, 2010, (to which the present application claims the benefit of); see also, e.g., Figure 3, filed Apr. 14, 2011. Appeal 2019-000052 Application 13/086,727 7 Figure 1 of Lindblad which Appellant now seeks, with the limitation in question, to define around. Descriptive support is a question involving the original disclosure because, as stated in our Decision, “it is the written description requirement that prevents an applicant from later asserting that he invented that which he did not.” Decision 5. This is why the fundamental factual inquiry is whether the specification “convey[s] with reasonable clarity to those skilled in the art that, as of the filing date sought, [Appellant] was in possession of the invention [now claimed.] Vas Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991) (first emphasis added). In our decision we also indicated that, considered in light of the Specification, Appellant’s usage of the term “forward pitch” was unclear. This was raised in the context of discussing how the only embodiment potentially including a rectangular upturned portion, that of Figure 10, was expressly described, by Appellant’s arguments, but not necessarily by Appellant’s Specification, as lacking a forward pitch. Decision 5–6. We sought clarification with regard to reference numeral 69 in Appellant’s Figure 3. Decision 5–6. Sufficient clarification has not yet been provided. Appellant acknowledges paragraph 37 of the Specification expressly referencing reference numeral 69 and discussing forward pitch, but then argues that the forward pitch relates to “the point where the generally planar surface becomes the upturned portion moves inwardly toward the center of the blade 26 as the point nears the distal end 36.” Request 10. We understand pitch, in this context, to refer to some angle because it is measured in degrees. To understand the nature of an angle, a line from which, and an axis about which, the angle is measured must be understood because that is the nature of angular or radial measurement. Because the Appeal 2019-000052 Application 13/086,727 8 bend location with respect to the longitudinal axis of the blade mentioned in paragraph 38 of the Specification satisfies these requirements, we do not disagree that this is one conceivable reasonable meaning of the phrase “forward pitch.” However, first, this quantity does not appear to be related to reference numeral 69 or the broken lines associated therewith in Figure 3. Second, although patent application illustrations are not generally regarded as drawn to scale, the angle made by the quantity described in paragraph 38 that Appellant’s present arguments equate to “forward pitch” well exceeds “five degrees.” Third, the term “forward pitch” is never used in connection with this discussion in paragraph 38. Rather, it is used only in connection with that which is described in paragraph 37 of the Specification. Paragraph 37 of the Specification refers to “a slight forward pitch, 69.” Reference numeral 69 of Figure 3 illustrates a linear as opposed to angular measurement, seemingly the length or depth of notched portion 62. The bottom line of the space illustrated by reference numeral 69 could have followed the bend line to be consistent with Appellant’s allegation that it is the bend line of paragraph 38 that defines the forward pitch. Alternatively, however, the bottom line associated with reference numeral 69 could have followed the trailing edge 42 of the blade. This would also indicate something reasonably regarded as a “forward pitch” and something that is more consistent with the “five degrees” limitation. Whichever the case, as forward pitch is referenced as numeral 69 and measured in degrees, 69 should have been represented in the Figures as identifying some angular quantity and it does not. Without knowing what quantity should be measured one skilled in the art would not reasonably be apprised of the claim’s scope Appeal 2019-000052 Application 13/086,727 9 under § 112, second paragraph, when the claim is read in light of the Specification.6,7 Appellant’s argument that we considered and rejected an argument not made, that the claim might be directed to the embodiment having a uniform height (Request 12–13; Decision 8–9), is unavailing for reasons similar to those discussed above. At most, this argument could be considered as expressly disavowing subject matter we ultimately regarded as falling outside the scope of claim 1. An express disavowal may reduce the issues requiring resolution with regard to exactly which embodiment or embodiments the claim might be directed. However, it does not alter our fundamental determination that the claim language itself is unclear, or our finding that there is a lack of descriptive support for the subject matter claimed. During prosecution it is Appellant’s burden under 35 U.S.C. § 112, second paragraph, to provide appropriate amendments to the claim language to clarify what Appellant regards as the invention, while Appellant has the opportunity to do so. In re Morris, 127 F. 3d 1048, 1056 (Fed. Cir. 1997) (“It is the applicants’ burden to precisely define the invention, not the PTO’s.”) accord In re Packard, 751 F.3d 1307, (Fed. Cir. 2014).8 It is also Appellant’s burden under 35 U.S.C. 6 See also MPEP § 608.01(g) (“The description is a dictionary for the claims and should provide clear support or antecedent basis for all terms used in the claims”) 7 Whatever forward pitch may be, Appellant now seems to expressly acknowledge, consistent with our decision, it is a quantity that differs from, and is not dependent upon, angle θ. Request 11–12; Decision 6–7. 8 See also, Packard, 751 F.3d at 1325 (Plager, S. J., concurring) (“[U]nlike courts which have a full prosecution record to consider, the prosecution record before the USPTO is in development and not fixed during examination, and the USPTO does not rely on it for interpreting claims.”); Appeal 2019-000052 Application 13/086,727 10 § 112, first paragraph, to furnish a description that clearly conveys to a person of ordinary skill in the art that Appellant invented what is claimed. Vas-Cath, Inc. v. Mahurkar, 935 F.2d at 1563−64.9 Appellant has not carried these burdens. Even if some of the issues raised in our Decision are set aside in the manner Appellant suggests, by regarding claim 1 as directed exclusively to the embodiment depicted in Figures 3–8, and by regarding the recited rectangle to be as illustrated in Appellant’s annotated Figures, the other issues of clarity remain and the absence of descriptive support for an upturned portion defined by a rectangle is only more clearly confirmed. accord In re Taylor, 484 Fed. Appx. 540 (Fed. Cir., No. 2012-1006, June 14, 2012) (nonprecedential) (The board correctly rejected the argument that Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801,808. (Fed. Cir. 2002) compels the Examiner and Board to construe terms as Appellant argued during prosecution.); accord MPEP § 2173.01(I) (“An applicant may not add a special definition or disavowal after the filing date of the application. However, an applicant may point out or explain in remarks where the specification as filed contains a special definition or disavowal.”) 9 Accord In re Barker, 559 F.2d 588, 592 n.4 (CCPA 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. Faulding 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) (“[T]he description must clearly allow persons of ordinary skill in the art to recognize that [he or she] invented what is claimed”). Appeal 2019-000052 Application 13/086,727 11 DECISION For the foregoing reasons, we grant Appellant’s request to the extent we have reconsidered our original decision but deny Appellant’s request to make any changes thereto. 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). ERRATUM On Page 10 of the Decision: “The Examiner, practicing compact prosecution, chose the latter approach” is hereby modified to read: The Examiner, practicing compact prosecution, chose the former approach DENIED Copy with citationCopy as parenthetical citation