14449003 - (R) (P.T.A.B. Apr. 23, 2020)

Song Li

Patent Trials and Appeals BoardApr 23, 2020

14449003 - (R) (P.T.A.B. Apr. 23, 2020)

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. 14/449,003 07/31/2014 Song LI 226-029 (62116) 9433 157817 7590 04/23/2020 Pilloff Passino & Cosenza LLP 2000 Duke Street Suite 300 Alexandria, VA 22314 EXAMINER AHMAD, FARIA F ART UNIT PAPER NUMBER 3675 NOTIFICATION DATE DELIVERY MODE 04/23/2020 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): mail@pilloffpassino.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SONG LI Appeal 2018-006641 Application 14/449,003 Technology Center 3600 ____________ Before BRUCE T. WIEDER, KENNETH G. SCHOPFER, and TARA L. HUTCHINGS, Administrative Patent Judges. SCHOPFER, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant1 requests rehearing of the decision entered December 20, 2019 (“Decision”), which affirmed in part the Examiner’s rejections of claims 1–16. Appellant contends that we applied an inappropriate standard in evaluating the Examiner’s rejections and misapprehended or overlooked certain of Appellant’s arguments. As discussed below, we GRANT 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 Tool Works Inc. Appeal Br. 2. Appeal 2018-006641 Application 14/449,003 2 Appellant’s request and reverse the rejections provided by the Examiner. We also enter a new ground of rejection regarding certain claims. DISCUSSION Anticipation Claims 1–5, 8, 9, 11, and 12. We determine the scope of the claims in patent applications based upon giving claims “their broadest reasonable interpretation consistent with the specification” and “in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). After further review of the Specification, we determine that the Examiner’s implied interpretation of the claimed mounting slot is not consistent with how one of ordinary skill in the art would interpret the claimed mounting slot in light of the written disclosure. In our Decision, we found that even if we interpreted the claimed mounting slot as Appellant suggested, Pagano discloses such a mounting slot in the form of pin holes surrounding a gap. Specifically, Appellant indicated that a suitable definition of slot is “a narrow opening or groove” or “a narrow passage or enclosure.” Appeal Br. 26. Unfortunately, neither Appellant nor the Examiner pointed us to the disclosure related to Figure 5 in the present application. Figure 5 depicts “the structure of a pawl 506 of an existing door latch.” Spec. 9, ll. 18–19. Although it is not entirely clear whether this should be considered prior art, the structure depicted and described in Figure 5 appears to be directed to a structure similar to that disclosed in Pagano. Specifically, with respect to this figure, the Specification discloses: Appeal 2018-006641 Application 14/449,003 3 A spring mounting gap 514 is provided in a middle position in the tail portion of the pawl 506, while two sides of the tail portion of the pawl 506 are provided with pin holes 522 which connect the two sides. A pin 524 is passed through the pin holes 522, and thus mounted on the tail portion of the pawl 506. Id. at 9, ll. 22–28. The Specification later distinguishes this arrangement from the use of a “pin mounting slot”: During installation, since the pin 116 is put into the pin mounting slot 112 in the pawl 106 from the top side of the pin mounting slot 112, rather than being passed through pin holes, there is no need for the two ends of the pin 116 to be chamfered; thus the number of processing steps are reduced, saving processing costs. Id. at 11, ll. 5–10. The Specification also discloses: The inventor has found in the course of a long period of observation and research that in existing door latches, the pawl thereof is provided with pin holes, and a spring fixing pin is passed through the traditional pin holes, to mount the pawl on the door latch body. Therefore, during use, deformation which arises due to the existence of a gap in the pawl may result in lateral movement (or sliding) of the spring fixing pin, causing the spring fixing pin to partially slide out of one side of the pin hole. The structure of the pawl 106 of the present invention can avoid such lateral sliding of the fixing pin caused by deformation. Id. at 12, ll. 14–26. Based on this disclosure, we determine that any interpretation of the claimed mounting slot that includes the structure of pin holes and a pin mounted through such pin holes and also through a gap, as relied upon by Pagano, would be inconsistent with how one of ordinary skill in the art would interpret the claimed mounting slot in light of the Specification. Because the Examiner relies on such an erroneous interpretation of the claim, we do not sustain the Examiner’s rejection of claim 1 as anticipated Appeal 2018-006641 Application 14/449,003 4 by Pagano. We also do not sustain the rejection of claims 2–5, 8, 9, 11, and 12, which depend from claim 1. Claims 13 and 14 In view of our determination, set forth below, that claims 13 and 14 are indefinite, and because we find that an analysis of the sufficiency of an anticipation rejection based on Pagano would necessarily be based on a speculative assumption as to the meaning of the claims, we do not sustain the rejection of claims 13 and 14 under 35 U.S.C. § 102(a)(1). See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962). However, it should be understood that our decision in this regard is pro forma and based solely on the indefiniteness of the claimed subject matter. Obviousness Claims 6, 7, 10, and 16 With respect to the rejection of claims 6, 7, 10, and 16, the Examiner does not provide additional findings or reasoning that cures the deficiency in the rejection of independent claim 1, as discussed above. Thus, we also do not sustain the rejection of these claims as anticipated by Pagano. Claim 15 In view of our determination, set forth below, that claim 15 is indefinite, and because we find that an analysis of the sufficiency of the art of record to show obviousness of this claim would necessarily be based on a speculative assumption as to the meaning of the claim, we do not sustain the rejection of claim 15 under 35 U.S.C. § 103. See In re Steele, 305 F.2d at 862–63. However, it should be understood that our decision in this regard is pro forma and based solely on the indefiniteness of the claimed subject matter. Appeal 2018-006641 Application 14/449,003 5 New Ground of Rejection Claim 13 is rejected under 35 U.S.C. § 112(b) as indefinite. Claim 13 first recites “a mounting hole” and later recites “the mounting slot,” which lacks antecedent basis. As discussed above, the Specification provides a distinction between a mounting slot and the use of pin holes for mounting a pin. Further, we have not been able to locate any specific description in the written disclosure regarding “a mounting hole.”2 Thus, we cannot be certain whether claim 13 intends to claim only a mounting hole, in which case “the mounting slot” should refer to “the mounting hole,” or whether Appellant intends to claim something different, e.g., both a mounting hole and a mounting slot. We note that claim 14 recites that “the mounting hole is a mounting slot.” But this claim language does not provide any further clarification regarding what is intended to be claimed in claim 13. Thus, we determine that claim 13 is indefinite. We also determine that claims 14 and 15 are indefinite based on their dependency from claim 13. CONCLUSION We have carefully reviewed the original Decision in light of Appellant’s request. We now REVERSE all rejections of claims 1–16 provided by the Examiner and enter a NEW GROUND of rejection under 35 U.S.C. § 112(b) with respect to claims 13–16. Thus, Appellant’s request for rehearing is GRANTED. Outcome of Decision on Rehearing: 2 Upon further prosecution of this application, the Examiner may wish to consider whether the claimed “mounting hole” in claim 13 is adequately supported by the written description portion of the Specification. Appeal 2018-006641 Application 14/449,003 6 Claims Rejected 35 U.S.C. § Basis Granted Denied New Ground 1–5, 8, 9, 11–14 102(a)(1) Pagano 1–5, 8, 9, 11–14 10, 15, 16 103 Pagano 10, 15, 16 6, 7 103 Pagano, Shin 6, 7 13–19 112(b) Indefiniteness 13–15 Overall Outcome 1–16 13–15 Final Outcome of Appeal after Rehearing: Claims Rejected 35 U.S.C. § Basis Affirmed Reversed New Ground 7, 13–15 112(b) Indefiniteness 7 13–15 1–5, 8, 9, 11–14 102(a)(1) Pagano 1–5, 8, 9, 11–14 10, 15, 16 103 Pagano 10, 15, 16 6, 7 103 Pagano, Shin 6, 7 Overall Outcome 1–16 13–15 This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of rejection . . . shall not be considered final for judicial review.” Section 41.50(b) also provides that 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 Appeal 2018-006641 Application 14/449,003 7 examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. 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) (2017). GRANTED 37 C.F.R. § 41.50(b)