Ex Parte Weber et alDownload PDFPatent Trial and Appeal BoardOct 22, 201311897645 (P.T.A.B. Oct. 22, 2013) 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. 11/897,645 08/30/2007 Shirlee Ann Weber 64342968US01 5590 23556 7590 10/22/2013 KIMBERLY-CLARK WORLDWIDE, INC. Tammi Langin 2300 Winchester Rd. NEENAH, WI 54956 EXAMINER GRABOWSKI, KYLE ROBERT ART UNIT PAPER NUMBER 3725 MAIL DATE DELIVERY MODE 10/22/2013 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 SHIRLEE ANN WEBER and ANDREW MARK LONG ____________________ Appeal 2011-010515 Application 11/897,645 Technology Center 3700 ____________________ Before: JENNIFER D. BAHR, MICHAEL C. ASTORINO, and ADAM V. FLOYD, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-010515 Application 11/897,645 2 STATEMENT OF THE CASE Shirlee Ann Weber and Andrew Mark Long (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-27. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The Claimed Subject Matter Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A recording tool for tracking absorbent article use, the tool comprising: an ordinal number for each absorbent article for a given day; associated with each absorbent article, a non- alphanumeric health condition graphical representation of whether the absorbent article indicates the health condition, wherein the health condition graphical representation is thematically related to the health condition; and associated with the given day, a health condition assessment summarizing the absorbent articles indicating the health condition. Evidence The Examiner relied on the following evidence in rejecting the claims on appeal: Robertson US 4,979,901 Dec. 25, 1990 Rejections Appellants request our review of the following rejections: (1) claims 1-27 under 35 U.S.C. § 101 as being drawn to non- statutory subject matter;1 1 This was a new ground of rejection entered in the Examiner’s Answer. Appeal 2011-010515 Application 11/897,645 3 (2) claims 1-25 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellants regard as the invention; and (3) claims 1-27 under 35 U.S.C. § 102(b) as being anticipated by Robertson. OPINION Rejection (1) – patentability under 35 U.S.C. § 101 An invention is patent-eligible if it meets the requirements of 35 U.S.C. § 101, which states, “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.” The Examiner determined that claims 1-27 are not drawn to patent- eligible subject matter, because the “recording tool” recited in these claims is not a process, a machine, an article of manufacture, or a composition. Ans. 3. Appellants argue that “one skilled in the art could easily manufacture the tool as a printed sheet, a smartphone app, a computer program, a web- based application, or any of a number of other potential manifestations. In any of these manifestations, the claimed subject matter is an article of manufacture.” Reply Br. 4. An “article of manufacture” in accordance with 35 U.S.C. § 101 is a tangible substance or commodity resulting from the process of manufacture, that is, from a process wherein raw or prepared materials are given “new forms, qualities, properties, or combinations, whether by hand-labor or by Appeal 2011-010515 Application 11/897,645 4 machinery.” In re Nuijten, 500 F.3d 1346, 1356 (Fed. Cir. 2007) (quoting Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980)). Claims 1 and 26 are not drawn to an article of manufacture, as provided in 35 U.S.C. § 101, because these claims do not recite any tangible articles, substances, or commodities. Appellants’ Specification does not define the term “tool” and does not describe any tangible structure to comprise the tool. While the Appeal Brief cites examples of potential manifestations of the tool of their invention, Appellants’ Specification does not describe any such manifestations. An ordinary and customary meaning of the term “tool” is “anything used as a means of performing an operation or achieving an end: he used his boss’s absence as a tool for gaining influence.”2 This definition is consistent with Appellants’ acknowledgement of the essentially limitless manifestations of the tool. The fact that a person of ordinary skill in the art could easily manufacture a tool having the features described in Appellants’ Specification and claimed in claims 1 and 26, as asserted by Appellants, does not restrict the claimed “tool” to an article of manufacture. Moreover, even the potential manifestations of a tool cited in the Appeal Brief are not necessarily articles of manufacture as Appellants assert. Cf., Nuijten, 500 F.3d at 1356 (holding that a transient electric or electromagnetic transmission, while being man-made and physical (existing in the real world and having tangible causes and effects) is not an “article of manufacture” under 35 U.S.C. § 101). Further, the additional claim limitations (i.e., an ordinal number, graphical representation(s), health condition assessment, and wetness total 2 tool. (2000). In Collins English Dictionary. Retrieved from http://www.credoreference.com/entry/hcengdict/tool. Appeal 2011-010515 Application 11/897,645 5 indication) recited in claims 1 and 26 do not require tangible articles, substances, or commodities resulting from the process of manufacture. Appellants do not allege that claims 1 and 26 are drawn to subject matter falling into any of the other three statutory categories. Nevertheless, for completeness, we consider these categories as well. Appellants’ claims 1 and 26 are not directed to a process, because the claims do not set forth an act, or series of acts, performed upon subject matter to be transformed into a different state or thing. See Gottschalk v. Benson, 409 U.S. 63, 70 (1972) (“A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing.”). Appellants’ claims 1 and 26 also are not directed to a machine, because, as noted above and as pointed out by the Examiner (Ans. 4), the claims do not recite any concrete structure. See Nuijten, 500 F.3d at 1355 (stating, “[t]he Supreme Court has defined the term ‘machine’ as ‘a concrete thing, consisting of parts, or of certain devices and combination of devices.’” (quoting Burr v. Duryee, 68 U.S. (1 Wall.) 531, 570 (1863))). For similar reasons, Appellants’ claims 1 and 26 also do not fall into the final category, i.e., composition of matter. “[T]he Supreme Court has defined ‘composition of matter’ to mean ‘all compositions of two or more substances and all composite articles, whether they be the results of chemical union, or of mechanical mixture, or whether they be gases, fluids, powders or solids.’” Nuijten, 500 F.3d at 1357 (quoting Chakrabarty, 447 U.S. at 308). As discussed above, the term “tool” has an ordinary and customary meaning that does not require physical substances of any kind, Appeal 2011-010515 Application 11/897,645 6 and Appellants’ Specification does not define the term “tool” as any physical structure or substance, much less two or more substances. Further, the additional limitations (i.e., an ordinal number, graphical representation(s), health condition assessment, and wetness total indication) recited in claims 1 and 26 do not require any physical substances. For the above reasons, we affirm the Examiner’s rejection of claims 1 and 26, and of their dependent claims 2-25 and 27, for which Appellants do not assert any separate arguments, under 35 U.S.C. § 101 as not being drawn to patent-eligible subject matter. Rejection (2) – indefiniteness The basis of the Examiner’s rejection under 35 U.S.C. § 112, second paragraph, is that “the nature of the geographical representation of a ‘health condition assessment’ is unclear.” Ans. 4. In an attempt to further clarify the basis of the rejection, the Examiner explains that “it is unclear what constitutes a ‘health condition assessment[,’] nonetheless. The claimed subject matter is drawn to indicia on a structurally devoid ‘recording tool[,’] so it is unclear whether a ‘health condition assessment’ is printed indicia (inherently, a ‘graphical representation’), intended use, or functional limitation.” Ans. 6. According to Appellants’ Specification, “[a] health condition as used herein is the presence of a body fluid in the absorbent article.” Spec. 4. Appellants’ Specification goes on to list examples of health conditions that may be indicated through the use of an absorbent article. Spec. 4-5. The Examiner’s determination of indefiniteness ostensibly stems from the Examiner’s assumption that claim 1 is directed to an article or structure. However, as discussed above, and as appreciated by the Examiner, claim 1 Appeal 2011-010515 Application 11/897,645 7 does not recite any structure, and further does not require the “health condition graphical representation” to take any particular physical form, aside from being “non-alphanumeric.” In essence, the limitation with respect to the graphical representation is extremely broad in scope. Merely that a claim is broad does not mean that it is indefinite. See In re Johnson, 558 F.2d 1008, 1016 n.17 (CCPA 1977). We therefore do not sustain the Examiner’s rejection of claims 1-25 under 35 U.S.C. § 112, second paragraph. Rejection (3) – anticipation The Examiner found that Robertson discloses all features of Appellants’ claim 1. Ans. 5 (citing Robertson, fig. 1, Abstract). Appellants’ arguments on pages 4-10 are not convincing. See Ans. 6- 8. We thus sustain the rejection of claim 1 and of claims 2-27, for which Appellants do not present any separate arguments for patentability apart from claim 1, as anticipated by Robertson. DECISION The Examiner’s decision rejecting claims 1-27 is affirmed. 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). AFFIRMED hh Copy with citationCopy as parenthetical citation