Ex Parte Burgess et al

Board of Patent Appeals and Interferences

Feb 5, 2009

10690116 (B.P.A.I. Feb. 5, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KARL BURGESS, DAVID JONES, and
CLAIRE LOUISE ROBINS
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Appeal 2008-2820
Application 10/690,116
Technology Center 3700
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Decided:1 February 6, 2009
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Before JENNIFER D. BAHR, LINDA E. HORNER, and MICHAEL W.
O’NEILL, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE

1The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-2820
Application 10/690,116

2
Karl Burgess et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Final Rejection of claims 1-5, 7-11, 13, 14, 16, 17, 19, and 26.
Claims 6, 12, 15, 18, and 20-25 were canceled. We have jurisdiction under
35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We REVERSE.
THE INVENTION
The claimed invention is to a device for treating fabrics inside a
tumble dryer. Spec. 1:3-5.
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A device for treating fabrics in a tumble
dryer comprising a reservoir for storing a fabric
treatment composition and transfer means to
expose fabric treatment composition from the
reservoir to airflow generated inside the tumble
drier and/or to directly contact fabrics in the dryer,
thereby transferring a portion of the fabric
treatment composition into contact with fabrics in
the tumble dryer during a tumble drying cycle;
characterised in that the transfer means comprises
compressed foam having a compression ratio of 8
or more and an inner flow control member
comprising a membrane, the compressed foam
being downstream from the inner flow control
member and functioning to reduce staining when
contacting fabrics.

THE PRIOR ART
The Examiner relies upon the following as evidence of
unpatentability:
Compa US 3,701,202 Oct. 31, 1972
Appeal 2008-2820
Application 10/690,116
3
Hirota US 5,072,526 Dec. 17, 1991
Miller US 5,791,801 Aug. 11, 1998

THE REJECTIONS
The following Examiner’s rejections are before us for review:
Claims 1-5, 7-11, 13, 14, 19, and 26 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Compa and Miller.
Claims 16 and 17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Compa, Miller, and Hirota.

ISSUE
The Appellants contend the Examiner erred in rejecting the claims
because Compa’s container 22 having a surface 32 with a series of bores 30
does not satisfy the claim limitation of an inner control member comprising
a membrane. App. Br. 9-10.
The Examiner construed the term “membrane” to mean “a thin layer.”
The Examiner referenced a dictionary definition of “membrane” as being
“[a]ny thin, often pliable, sheet or layer, esp. one forming a barrier or lining”
to support the Examiner’s claim construction of the term “membrane.” Ans.
7.
The issue before us is as follows:
Have the Appellants shown the Examiner erred in finding that
Compa’s container 22 having a surface 32 with a series of bores 30 satisfies
the claim limitation of an inner control member comprising a membrane?

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Application 10/690,116
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FINDINGS OF FACT
We find that the following enumerated findings of fact are supported
by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849
F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary
standard for proceedings before the Office).
1. Claim 1 recites in part: “an inner flow control member comprising a
membrane.”
2. The Appellants’ Specification recites in part:
The inner flow control member(s) may, for
example, comprise a membrane, or a layer of ....
polyester, polypropylene, and include Goretex and
Accurel[]or the like or a woven/non-woven
membrane which may be, but is not intended to be
restricted to a thin skin.

Spec. 4:26 to 5:1.

3. As such, the Appellants’ Specification expressly discloses the
membrane is not restricted to a thin skin.
4. An ordinary and customary meaning of “membrane” is a thin soft
pliable sheet or layer. See Webster’s Third New International
Dictionary 1408 (1961)(Entry 1 for noun “membrane”: “a thin soft
pliable sheet or layer esp. of animal or vegetable origin.”) See also
App. Br. 9.
5. Compa describes a device for distributing fabric conditioners within a
dryer drum. Part of the device is composed of an elongated container
22 that has a plurality or series of apertures 30 therein that
communicate with the interior of the container 22, the bores of which
are of a predetermined size. Compa, col. 2, ll. 36-41.
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6. There is no evidence that Compa’s container 22, or its surface 32, is
soft and/or pliable.
7. The Examiner does not rely on Miller or Hirota to describe a
membrane.

PRINCIPLES OF LAW
“Both anticipation under § 102 and obviousness under § 103 are two-
step inquiries. The first step in both analyses is a proper construction of the
claims. . . . The second step in the analyses requires a comparison of the
properly construed claim to the prior art.” Medichem, S.A. v. Rolabo, S.L.,
353 F.3d 928, 933 (Fed. Cir. 2003) (internal citations omitted).
“Claim construction begins, as it must, with the words of the claims.
See Bell Communications Research, Inc. v. Vitalink Communications Corp.,
55 F.3d 615, 619-20 (Fed. Cir. 1995).” Vehicular Techs. Corp. v. Titan
Wheel Int’l, Inc., 141 F.3d 1084, 1088 (Fed. Cir. 1998). But we determine
the scope of the claims in patent applications not solely on the basis of the
claim language, but 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). A
patent applicant is entitled to be his or her own lexicographer of patent claim
terms; although, in ex parte prosecution it must be within limits. In re Corr,
347 F.2d 578, 580 (CCPA 1965). The applicant must do so by placing such
definitions in the Specification with sufficient clarity to provide a person of
ordinary skill in the art with clear and precise notice of the meaning that is to
be construed. See also In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)
(although an inventor is free to define the specific terms used to describe the
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Application 10/690,116
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invention, this must be done with reasonable clarity, deliberateness, and
precision; where an inventor chooses to give terms uncommon meanings, the
inventor must set out any uncommon definition in some manner within the
patent disclosure so as to give one of ordinary skill in the art notice of the
change). Finally, our interpretation of disputed language must be reasonable
in light of all the evidence before the Board. See In re Morris, 127 F.3d
1048, 1055 (Fed. Cir. 1997) (“The question then is whether the PTO’s
interpretation of the disputed claim language is “reasonable.” … We
conclude that the PTO’s interpretation is reasonable in light of all the
evidence before the Board.”).
It is elementary that to support an obviousness rejection, all of the
claim limitations must be taught or suggested by the prior art applied (see In
re Royka, 490 F.2d 981, 984-85 (CCPA 1974)) and that all words in a claim
must be considered in judging the patentability of that claim against the prior
art (In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970)).
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (Quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).

ANALYSIS
Claim 1 requires the inner flow control member to comprise at least a
membrane. Fact 1. The Appellants’ Specification discloses the membrane
to be a textile type of material. Fact 2 and see also App. Br. 9. The ordinary
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and customary meaning of membrane is a thin, soft, pliable sheet or layer.2
Fact 4. This definition is consistent with the description and examples of the
“membrane” in the Appellants’ Specification. Fact 2. In particular, the
examples cited in the Appellants’ Specification are textiles, which are
generally recognized as being both thin and pliable. The Appellants’
Specification expressly discloses the membrane is not restricted to a thin
skin. Fact 3. Therefore, given all of the evidence before this panel, the
broadest reasonable interpretation in light of the Specification for the claim
limitation of membrane is a thin, soft, pliable layer.
Compa describes a device for distributing fabric conditioners where
part of the device is composed of an elongated container 22 that has a
plurality or series of apertures 30 therein that communicate with the interior
of the container 22, the bores of which are of a predetermined size. Fact 5.
There is no evidence that Compa’s container 22, or its surface 32, is soft
and/or pliable. Fact 6. As such, the evidence of record brings us to the
conclusion that Compa’s container 22, or its surface 32, is not a thin, soft,
pliable layer.
The Examiner does not rely on Miller or Hirota to cure the
deficiencies of Compa. Fact 7.

CONCLUSION OF LAW
In view of the foregoing reasons, the Appellants have shown that the
Examiner erred in finding that Compa’s container 22 having a surface 32
with a series of bores 30 satisfies the claim limitation of an inner control
member comprising a membrane.

2 The Examiner’s finding bolsters this point. See Ans. 7, fn 1 (“Any thin,
often pliable, sheet or layer, esp. one forming a barrier or lining....”)
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DECISION
The Examiner’s decision to reject claims 1-5, 7-11, 13, 14, 19, and 26
over Compa and Miller and claims 16 and 17 over Compa, Miller, and
Hirota is reversed.

REVERSED

hh

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