Tammy Bernier et al.

Patent Trials and Appeals Board

Feb 16, 2021

2020001409 (P.T.A.B. Feb. 16, 2021)

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.
15/461,602 03/17/2017 Tammy Bernier MSH-1129CIP 2680
8131 7590 02/16/2021
MCKELLAR IP LAW, PLLC
784 SOUTH POSEYVILLE ROAD
MIDLAND, MI 48640
EXAMINER
KURTZ, BENJAMIN M
ART UNIT PAPER NUMBER
1778
MAIL DATE DELIVERY MODE
02/16/2021 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 TAMMY BERNIER, STEVEN DILL,
TERRY DUPERON, MICHAEL A. WOODLEY,
KENNETH S. BLANCHARD, DANIEL A. COURSER, JR.,
BRYCE FUNCHION, and JANET K. LAFAVE

Appeal 2020-001409
Application 15/461,602
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, N. WHITNEY WILSON, and
MICHAEL G. McMANUS, Administrative Patent Judges.

McMANUS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the
Examiner’s decision to reject claims 1, 5, and 13. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

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 Duperon
Innovations. Appeal Brief dated July 30, 2019 (“Appeal Br.”) 2.
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Application 15/461,602

2
CLAIMED SUBJECT MATTER

The present application generally relates to an apparatus for removing
debris from water (“rake systems”). Specification dated March 17, 2017
(“Spec.”) 1. Figures 2A and 2B of the Drawings are reproduced below.

Figures 2A and 2B each depict a full side view of a flexing apparatus of the
invention mounted within a flex rake. Id. at 6. Figure 2A depicts the
apparatus in a normal operating position while Figure 2B depicts chain 3 in a
flexed position to accommodate large object 4. Id. at 6, 8–9.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
A flexing apparatus for a flex rake, said flexing apparatus comprising
i. a pair of elongated rails, each rail having a top end, a bottom
end, a first attachment point and a second attachment point, said
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first attachment point being located near said top end of each of
said elongated rails, and each said second attachment point
being located near said bottom end of each said elongated rail;
ii. a first support arm being attached at each attachment point,
and each of said first support arms having a distal end, each
said distal end being capable of being fixedly attached to a
sidewall of an enclosure for said flexing apparatus;
iii. attached near each first support arm distal end is a second
support arm for enhancing the movement of a chain and said
bottom end and said top end of each said elongated rail has a
roller for enhancing the movement of said chain adjacent each
said elongated rail
iv. The flexing apparatus as claimed in claim 1 wherein said
means for enhancing the movement of a chain is pivotal.2
Appeal Br. 5 (Claims App.).
REJECTIONS
The Examiner maintains the following rejections:
1. Claims 1, 5, and 13 are rejected under 35 U.S.C. § 112(b) as
being indefinite for failure to particularly point out and
distinctly claim the subject matter the inventors regard as the
invention. Final Action dated March 27, 2019 (“Final Act.”)
3–4.
2. Claims 1, 5, and 13 are rejected under 35 U.S.C. § 102(a)(1)
as anticipated by Kaltchev3. Id. at 4–5.

2 Although included in the Claims Appendix to the Appeal Brief, element iv
of Claim 1 appears not to have been entered by the Examiner.
3 US 2003/0189015 A1, published Oct. 9, 2003 (“Kaltchev”).
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DISCUSSION
Rejection 1. The Examiner rejects claims 1, 5, and 13 as indefinite.
Id. at 3–4. The Examiner determines that the claim element “each said
elongated rail has a roller for enhancing the movement of said chain adjacent
each said elongated rail” is ambiguous because it is not clear whether
“chain” is positively recited so as to limit the claim. Id. at 3.
Appellant argues that there is no ambiguity because the Specification
teaches that the chain is included as part of the flexing apparatus. Appeal
Br. 3. Appellant refers us to a portion of the Specification which provides
that “Figure 2A is a full side view of a flexing apparatus of this invention
mounted within a flex rake, inside the chain, in a normal operating position,
wherein the drive head is stationary.” Appeal Br. 34; Spec. 6. Appellant
argues that this supports its view that the chain is claimed as part of the
apparatus. Appeal Br. 3.
In the Answer, the Examiner contends that the chain is disclosed as
part of the overall rake screen apparatus, however, the present claims are
directed only to a single component of a rake screen apparatus, namely, a
flexing apparatus. Examiner’s Answer dated Sept. 20, 2019 (“Ans.”) 5. The
Examiner further determines that it is clear from the disclosure that the chain

4 Appellant additionally includes certain statements regarding a “lower
sprocket.” Appeal Br. 3. It is not apparent how this bears upon the question
of indefiniteness. We determine that such statements fail to present an issue
for resolution. See 37 CFR § 41.37(c)(1)(iv) (“the brief shall contain . . . .
The arguments of appellant with respect to each ground of rejection, and the
basis therefor, with citations of the statutes, regulations, authorities, and
parts of the Record relied on. The arguments shall explain why the
examiner erred as to each ground of rejection contested by appellant.”)
(emphasis added).
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and the flexing apparatus are separate components of the rake screen
apparatus. Id.
During examination, claim terms must be given their broadest
reasonable construction consistent with the Specification. In re ICON
Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). “[D]uring
patent prosecution when claims can be amended, ambiguities should be
recognized, scope and breadth of language explored, and clarification
imposed.” In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
The term “for enhancing the movement of a chain adjacent each said
elongated rail” is a functional limitation within an apparatus claim. A patent
applicant may use functional language to limit an apparatus (or other) claim.
In order to be accorded patentable weight, however, functional language in
an apparatus claim must limit the claim in terms of structure rather than
function. See In re Schreiber, 128 F.3d 1473, 1477–78 (Fed. Cir. 1997); see
also MPEP § 2114.
Further, “inclusion of the material or article worked upon by a
structure being claimed does not impart patentability to the claims.” In re
Otto, 312 F.2d 937, 939 (CCPA 1963); see also 10X Genomics, Inc. v. Bio-
Rad Laboratories, Inc., IPR2020-00087, Decision on Institution, 2020 WL
2026687, *15 (PTAB April 27, 2020) (holding the term “sample” to be
nonlimiting in an assembly comprising a “droplet formation module [that] is
configured to produce droplets comprising the sample.”). Here, the “chain”
is not positively recited as an element of the apparatus. Rather, it is merely
the article worked upon. Accordingly, the broadest reasonable interpretation
of the recitation “for enhancing the movement of a chain” is that the chain is
not limiting.
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This, however, does not resolve the indefiniteness inquiry. During
prosecution, a claim is examined for compliance with the definiteness
requirement by determining whether the claim is of sufficient clarity and
precision. In re Skvorecz, 580 F.3d 1262, 1268 (Fed. Cir. 2009) (quoting
MPEP § 2173.02). While the present claim language may implicate certain
complex legal doctrines, the Examiner has not shown ambiguity in the
structure of the claimed device. As a result, the claim has not been shown to
lack clarity and precision. Accordingly, we reverse the Examiner’s rejection
on the basis of indefiniteness.

Rejection 2. The Examiner rejects claims 1, 5, and 13 as anticipated
by Kaltchev. Final Act. 4–5. The Examiner relies, in part, upon Figure 5 of
Kaltchev, reproduced below.

Figure 5 depicts a vertical section of a screening/sieving device with the
cleaning rake in the stop position. Kaltchev ¶ 27. The Examiner finds that
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Kaltchev teaches elongated rails 12, first support arms 13, second support
arms 19, attachment points 14, and rollers 23, 24. Final Act. 4–5.
Appellant argues that the rejection is in error in several respects.
Appeal Br. 3–4. First, Appellant argues that the Kaltchev device differs
from the claimed device because it has no capacity for independent
movement of the cleaning combs (scrapers). Id. at 3. Second, Appellant
argues that the Kaltchev device is intended to be used downstream of the
screen while the claimed device is configured to be used upstream of the
screen. Id. at 4.
In the Answer, the Examiner determines that Appellant’s arguments
are not commensurate with the scope of the claims because none of the
elements cited by Appellant are recited in the claims at issue. Ans. 6.
We find the Examiner’s determination to be persuasive. “[I]t has long
been the Board’s practice to require an applicant to identify the alleged error
in the examiner’s rejections.” See In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011). Here, Appellant asserts that there are certain differences
between its device and that of Kaltchev. The stated differences, however,
are not shown to be claimed. That is, Appellant has not shown that there is a
claimed feature not taught by Kaltchev. Accordingly, Appellant has not
shown error in the Examiner’s rejection of claims 1, 5, and 13 as anticipated
by Kaltchev.

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CONCLUSION

The Examiner’s rejection of claims 1, 5, and 13 as indefinite is
reversed. The Examiner’s rejection of claims 1, 5, and 13 as anticipated by
Kaltchev is affirmed for the reasons set forth in the Final Office Action, the
Examiner’s Answer, and above. Because the rejection of each claim at issue
is affirmed on at least one basis, our decision is a general affirmance.
37 CFR § 41.50(a).
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 5, 13 112(b) Indefiniteness 1, 5, 13
1, 5, 13 102(a)(1) Kaltchev 1, 5, 13
Overall
Outcome
1, 5, 13

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED