14404677 - (D) (P.T.A.B. Jan. 3, 2020)

Guillemot, Francois et al.

Patent Trials and Appeals BoardJan 3, 2020

14404677 - (D) (P.T.A.B. Jan. 3, 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. 14/404,677 12/01/2014 Francois Guillemot 443800US99PCT 4258 22850 7590 01/03/2020 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER STAPLETON, ERIC S ART UNIT PAPER NUMBER 3761 NOTIFICATION DATE DELIVERY MODE 01/03/2020 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): OBLONPAT@OBLON.COM iahmadi@oblon.com patentdocket@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FRANCOIS GUILLEMOT, NICOLAS CHEMIN, NATHALIE DIAZ, and PABLO VILATO Appeal 2019-001570 Application 14/404,677 Technology Center 3700 BEFORE JEREMY M. PLENZLER, ARTHUR M. PESLAK, and ALYSSA A. FINAMORE, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–3 and 5–7.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION in accordance with 37 C.F.R. § 41.50(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Eurokera S.N.C. Appeal Br. 1. 2 Claims 4 and 8–14 are withdrawn. Final Act. 1. Appeal 2019-001570 Application 14/404,677 2 CLAIMED SUBJECT MATTER The claims are directed to “a glass-ceramic substrate.” Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An article, comprising: a glass-ceramic substrate, configured to cover or receive a heating element, wherein the substrate has, in at least one zone, a surface roughness such that characteristic dimensions of patterns forming the roughness are between 2 and 100 μm. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Olding US 2002/0145134 A1 Oct. 10, 2002 Wang US 2004/0038081 A1 Feb. 26, 2004 REJECTIONS3 Claims 1, 3, 5, and 6 are rejected under 35 U.S.C. § 102(b) as being anticipated by Wang. Claim 2 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Wang. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Wang and Olding. 3 Although the Final Action includes objections to the Drawings and Specification (Final Act. 2), there are no related rejections under 35 U.S.C. § 112 (Ans. 2). See 37 C.F.R. § 1.113(c) (“Petition may be taken to the Director in the case of objections or requirements not involved in the rejection of any claim.”). Accordingly, we do not reach Appellant’s contentions regarding the Examiner’s objections in this decision. Appeal 2019-001570 Application 14/404,677 3 OPINION Claim 1 is the sole independent claim on appeal, and requires “a glass-ceramic substrate, configured to cover or receive a heating element.” The Examiner finds that Wang discloses “a glass-ceramic substrate (e.g., substrate MM), configured to cover or receive a heating element (e.g., para 6-10, 21, 56 and claim 9 and Fig. 2-3).” Final Act. 3. The Examiner’s finding is based on “the recitation of the claimed invention being ‘configured to cover or receive a heating element’ [being] broad enough to include any prior art that can cover or receive any type of heating element.” Ans. 3. According to the Examiner’s claim construction, it appears that any glass-ceramic substrate would be “configured to cover or receive a heating element.” Appellant contends that “[n]owhere is there a disclosure or reasonable suggestion in Wang of an article that comprises a glass-ceramic substrate configured to cover or receive a heating element.” Appeal Br. 20 (emphasis omitted). Appellant contends that “the entire claim must be considered, including the requirement that the glass-ceramic substrate is ‘configured to cover or receive a heating element’ rather than being ‘capable of’ of covering or receiving the heating element.” Id. at 21 (emphasis omitted). Appellant faults the Examiner for “not explain[ing] how either of [Wang’s] substrates is configured to cover or receive a heating element beyond the unsupported blanket allegation that anything with a flat bottom is configured to cover a heating element and anything with a flat top is configured to receive a heating element.” Reply Br. 8. We agree that Examiner does not provide any detail regarding how the structure of Wang’s substrate meets the requirements of the glass- Appeal 2019-001570 Application 14/404,677 4 ceramic substrate of claim 1. Appellant, however, fails to provide any detail regarding what structure is required by “a glass-ceramic substrate, configured to cover or receive a heating element.” That is, the overriding problem before us is a lack of understanding as to what is required by the claim. A review of Appellant’s Specification does not solve this problem. Rather than provide detail on the recited glass-ceramic substrate, the Specification simply states, for example, that the “invention relates to the field of glass-ceramics,” and “in particular a glass-ceramic plate, intended in particular to cover or receive heating elements.” Spec. 1:3–7; see also id. at 2:37–3:2. The Specification provides an example where the “glass-ceramic plate (substrate)” can be “flat (in particular with a deflection of less than 0.1% of the diagonal of the plate and preferably of the order of zero) and, . . . is intended to act as cooktop.” Id. at 9:26–31. Based on the record before us, it is unclear what is required by the “configured to” language in claim 1. For example, it is not clear whether any flat glass-ceramic plate would meet the claim limitation, whether some other structural feature is required, or whether some particular properties of the glass-ceramic plate are required. Rather than guess or render the “configured to” language essentially meaningless, we determine that the most appropriate course of action is to enter a new ground of rejection under 35 U.S.C. § 112, second paragraph. See In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014) (per curiam) (A claim is properly rejected as indefinite if, after applying the broadest reasonable interpretation in light of the specification, the metes and bounds of a claim are not clear because the claim contains words or phrases whose meaning is unclear.); see also Ex parte McAward, Appeal No. 2015-006416, 2017 WL 3669566, at *5 Appeal 2019-001570 Application 14/404,677 5 (PTAB Aug. 25, 2017) (precedential) (adopting the approach for assessing indefiniteness approved by the Federal Circuit in Packard). Because we determine the claims to be indefinite, and addressing the disputed “configured to” limitation would require speculation on our part, we do not reach the merits of the anticipation and obviousness rejections. Instead, we reverse those rejections pro forma. See In re Aoyama, 656 F.3d 1293, 1300 (Fed. Cir. 2011) (holding that the Board erred in affirming an anticipation rejection of indefinite claims); In re Steele, 305 F.2d 859, 862 (CCPA 1962) (holding that the Board erred in affirming a rejection of indefinite claims under 35 U.S.C. § 103(a), because the rejection was based on speculative assumptions as to the meaning of the claims). CONCLUSION The Examiner’s rejections are reversed. For the reasons stated above, a new ground of rejection is entered for claims 1–3 and 5–7 under 35 U.S.C. § 112, second paragraph. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1, 3, 5, 6 102(b) Wang 1, 3, 5, 6 2 103(a) Wang 2 7 103(a) Wang, Olding 7 1–3, 5–7 112, ¶ 2 Indefiniteness 1–3, 5– 7 Overall Outcome 1–3, 5–7 1–3, 5– 7 Appeal 2019-001570 Application 14/404,677 6 TIME PERIOD FOR RESPONSE Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph 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 grounds 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 examiner, in which event the proceeding 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. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 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). REVERSED; 37 C.F.R. § 41.50(b)