2020002528 (P.T.A.B. Apr. 21, 2021)

Sharp Kabushiki Kaisha

Patent Trials and Appeals BoardApr 21, 2021

2020002528 (P.T.A.B. Apr. 21, 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. 15/571,863 11/06/2017 Masaaki KODAMA 70404.3643/ym 6844 54072 7590 04/21/2021 SHARP KABUSHIKI KAISHA C/O KEATING & BENNETT, LLP 1800 Alexander Bell Drive SUITE 200 Reston, VA 20191 EXAMINER SOOHOO, TONY GLEN ART UNIT PAPER NUMBER 1774 NOTIFICATION DATE DELIVERY MODE 04/21/2021 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): JKEATING@KBIPLAW.COM epreston@kbiplaw.com uspto@kbiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MASAAKI KODAMA, TOSHINORI OKADA, DAISUKE TAKAHASHI, NORIO KANETSUKI, SHINJI NAGAI, DAIKI ENDO, HITOSHI KIJI, and MOTOYASU YOSHII Appeal 2020-002528 Application 15/571,863 Technology Center 1700 Before CATHERINE Q. TIMM, GEORGE C. BEST, and LILAN REN, Administrative Patent Judges. REN, 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 1–16. See Final Act. 3, 4, 5, 7, 9. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Sharp Kabushiki Kaisha, 1 Takumi- cho, Sakaiku, Sakai City, Osaka 590-8522, Japan.” Appeal Br. 2. Appeal 2020-002528 Application 15/571,863 2 CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A stirring element that is shaped like a disc and that is to be placed on a bottom portion of a stirring container for stirring a liquid, wherein the stirring element is configured to perform rotational motion about a rotation center that is a center of the disc due to a magnetically acting force from outside wherein the stirring element comprises at least one projecting portion at a position on a lower surface of the stirring element separated from the rotation center, the lower surface facing the bottom portion of the stirring container and the at least one projecting portion projecting toward the bottom portion of the stirring container, to generate a rotational flow between the bottom portion of the stirring container and the stirring element wherein an upper surface of the stirring element, which is opposite to the lower surface, has a streamlined shape with respect to the rotational motion, and none of the at least one projecting portion is provided on both the upper surface and a side surface of the stirring element. Claims Appendix (Appeal Br. 20). REFERENCES The prior art references relied upon by the Examiner are: Name Reference Date Stogsdill US 6,464,387 B1 Oct. 15, 2002 Terentiev US 7,481,572 B2 Jan. 27, 2009 Tien US 2010/0046323 A1 Feb. 25, 2010 Appeal 2020-002528 Application 15/571,863 3 REJECTIONS Claims 1–16 are rejected under pre-AIA 35 U.S.C. § 112, first paragraph for failure to meet the written description requirement. Final Act. 3. Claims 1–16 are rejected under pre-AIA 35 U.S.C. § 112, second paragraph for failure to meet the definiteness requirement. Final Act. 4. Claims 1–4, 6, 7, and 16 are rejected under 35 U.S.C. § 102 (a) (1) as being anticipated by Tien. Final Act. 5. Claims 1, 3, 5, 7, 9, and 16 are rejected under 35 U.S.C. § 102 (a) (1) as being anticipated by Stogsdill. Final Act. 7. Claims 1, 5, 7, 9–12, 15, and 16 are rejected under 35 U.S.C. § 102 (a) (1) as being anticipated by Terentiev. Final Act. 9. OPINION Written Description The Examiner rejects claims 1–16 for failure to meet the written description requirement finding that the Specification does not describe a stirring element having “none of the . . . projecting portion . . . on both the upper surface and a side surface of the stirring element” as recited. Final Act. 3. To satisfy the written description requirement, a patent applicant must “convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention.” Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991). A disclosure may meet this burden by providing either “express” or “inherent” support for a claimed limitation. See Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159 (Fed. Cir. 1998). Appeal 2020-002528 Application 15/571,863 4 For a disclosure to be inherent, the “missing descriptive matter must necessarily be present in the . . . application’s specification such that one skilled in the art would recognize such a disclosure.” Id. “Negative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation. Such written description support need not rise to the level of disclaimer. In fact, it is possible for the patentee to support both the inclusion and exclusion of the same material.” Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012). In this case, the Specification provides an embodiment showing a projecting portion that is “not present on the upper surface of the stirring element.” Spec. ¶ 59 (quoted in Appeal Br. 4). The Specification additionally provides a separate embodiment showing a stirring element that “does not have a projection on a side surface.” Id. ¶ 91 (quoted in Appeal Br. 4). Based on these two separate and distinct embodiments, Appellant argues that the “specification clearly teaches that no projection is provided on both of the upper surface and the side surface of the stirring element.” Appeal Br. 4. The Examiner, on the other hand, finds that although the Specification shows that the projecting portion may be absent from either the upper surface of the stirring element or a side surface, the Specification does not show support for the limitation at issue which requires the projecting portion to be absent from “both the upper surface and a side surface of the stirring element.” Claim 1 (emphasis added). Appellant argues that “the Examiner has committed clear error in improperly and erroneously interpreting Appellant’s claim features.” Appeal Br. 5. Appellant, however, does not sufficiently specify which “claim Appeal 2020-002528 Application 15/571,863 5 features” were misinterpreted by the Examiner. Id. Appellant also does not provide Appellant’s own claim interpretation. Id. In any event, the plain language of the claim is not ambiguous and requires the projecting portion to be absent from “both” locations. Appellant argues that paragraphs 59 and 91 of the Specification are directed to the same stirring element. Appeal Br. 6. Although not clearly stated, Appellant seems to argue that these paragraphs, combined with Figure 1(b) of the Specification, shows that “air is unlikely to be drawn into a liquid that is being stirred by the stirring element” when the projecting portion is absent on both locations as recited. Appeal Br. 7 (citing Spec. ¶ 88). Appellant’s argument is unpersuasive. Figure 1(b) “is a sectional view of the stirring unit” (Spec. ¶ 21), and such a partial 2-dimentional illustration of the stirring element does not necessarily show that the projecting portion is absent from “any side surface” as Appellant argues. See Appeal Br. 7. Paragraph 88 of the Specification (cited by Appellant in the argument) likewise does not show the recited structure—which is consistent with Appellant’s citation to paragraphs 59 and 91 only for the written description support for the claim element at issue in the “Summary of Claimed Subject Matter” section of the Appeal Brief. Id. at 3; see also 37 C.F.R. 41.37(c)(iii) (“Summary of claimed subject matter. A concise explanation of the subject matter defined in each of the rejected independent claims, which shall refer to the specification in the Record by page and line number or by paragraph number, and to the drawing, if any, by reference characters.” (Emphasis added.)). Appeal 2020-002528 Application 15/571,863 6 In sum, the Appellant does not direct us to any portion of the original disclosure expressly describing “none . . . projecting portion . . . on both the upper surface and a side surface of the stirring element” as recited in claim 1. Moreover, the Appellant does not direct us to any evidence establishing that such an arrangement is inherently described in the original disclosure. Therefore, a preponderance of the evidence supports a finding that the Appellant’s original disclosure does not describe, within the meaning of 35 U.S.C. § 112, first paragraph, “none of the . . . projecting portion . . . on both the upper surface and a side surface of the stirring element” as recited in claim 1. Indefiniteness The Specification provides: the term “streamlined shape” refers to a shape that does not generate or does not easily generate a vortex or a turbulent flow with respect to relative flow of a fluid, that does not change its streamline in a steady laminar flow from one direction, and that generates only a small drag against a liquid. Spec. ¶ 59 (cited in Appeal Br. 8). The Examiner finds that the recited “streamlined shape” of the stirring element fails to meet the definiteness requirement under 35 US.C § 112, second paragraph because, among other reasons, that the definition of a “streamlined shape” in the Specification is “directed to functional effects caused upon the material worked upon by the upper surface ‘streamline shape’ and does not point out the bounds what is ‘streamline’ in a definite manner.” Ans. 11; see also Final Act. 4. Appellant, on the other hand, argues that paragraph 59 of the Specification has clearly defined the limitation at issue. Appeal Br. 8. Appeal 2020-002528 Application 15/571,863 7 “A claim is indefinite if its legal scope is not clear enough that a person of ordinary skill in the art could determine whether a particular composition infringes or not.” Geneva Pharms., Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1384 (Fed. Cir. 2003). In this case, Appellant argues that the above quoted passage of the Specification “clearly teaches that a ‘streamlined shape’ is a shape that does not change its streamline in a steady laminar flow from one direction.” Appeal Br. 9 (emphases omitted). Appellant’s argument is unpersuasive because it is unsupported by the text of the Specification. Contrary to Appellant’s argument, the Specification provides that the recited “streamlined shape” is one that “does not easily generate a vortex or a turbulent flow with respect to relative flow of a fluid” (Spec. ¶ 59) without sufficiently explaining what “easily generate” may entail or how “easily” may be assessed. Likewise, the Specification provides that the recited “streamlined shape” is one that “generates only a small drag against a liquid” without sufficiently explaining what a “small drag” may entail or how “small” constitutes a small drag. Id. Appellant also does not respond to the Examiner’s finding that the material from which the stirring element is manufactured may have an effect on its interaction with the fluid (e.g., whether the flow is laminar and the drag effect on the liquid). Compare Reply Br. 4, with Ans. 11. We accordingly sustain the indefiniteness rejection for it is supported a preponderance of the evidence. Anticipation Rejections Review of the rejections under 35 U.S.C. § 102(a)(1) would require considerable speculation as to the scope of the claims. Such speculation would not be appropriate. In re Steele, 305 F.2d 859, 862 (CCPA 1962) ("[W]e do not think a rejection under 35 U.S.C. § 103 should be based on Appeal 2020-002528 Application 15/571,863 8 such speculations and assumptions."). We, therefore, procedurally reverse the 35 U.S.C. § 102(a)(1) rejections. We emphasize that this is a technical reversal of the rejections under 35 U.S.C. § 102(a)(1), and not a reversal based upon the merits of the rejections. CONCLUSION The Examiner’s rejections are affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–16 112 Written Description 1–16 1–16 112 Indefiniteness 1–16 1–4, 6, 7, 16 102 Tien 1–4, 6, 7, 16 1, 3, 5, 7, 9, 16 102 Stogsdill 1, 3, 5, 7, 9, 16 1, 5, 7, 9–12, 15, 16 102 Terentiev 1, 5, 7, 9– 12, 15, 16 Overall Outcome 1–16 TIME PERIOD FOR RESPONSE 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