2020003169 (P.T.A.B. Nov. 23, 2020)

BSH Bosch und Siemens Hausgeräte GmbH

Patent Trials and Appeals BoardNov 23, 2020

2020003169 (P.T.A.B. Nov. 23, 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. 14/417,175 01/26/2015 Martin Graw 2012P01406WOUS 5437 46726 7590 11/23/2020 BSH Home Appliances Corporation 100 Bosch Boulevard NEW BERN, NC 28562 EXAMINER DEEAN, DEEPAK A ART UNIT PAPER NUMBER 3762 NOTIFICATION DATE DELIVERY MODE 11/23/2020 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): MBX-NBN-IntelProp@bshg.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MARTIN GRAW, STEFAN SCHRUMPF, and MARKUS WÖSSNER ____________ Appeal 2020-003169 Application 14/417,175 Technology Center 3700 ____________ Before JEREMY J. CURCURI, AMEE A. SHAH, and ROBERT J. SILVERMAN, Administrative Patent Judges. SHAH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s final decision to reject claims 32–49, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and ENTER a NEW GROUND OF REJECTION pursuant to our authority under 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. The Appellant identifies the real party in interest as BSH Hausgeräte GmbH. Appeal Br. 2. Appeal 2020-003169 Application 14/417,175 2 CLAIMED SUBJECT MATTER The Appellant’s invention “relates to a vapor extraction device and a method for controlling a fan motor of a fan as well as a method for determining air cleaning effect.” Spec. ¶ 1. Claims 32 and 35 are the independent claims on appeal. Claim 32 is illustrative of the subject matter on appeal and is reproduced below: 32. A method for performing an air cleaning effect determination of a vapor extraction device, said method comprising the steps of: providing a fan with a fan motor, a first sensor, a second sensor, and a control device coupled with the first sensor, the second sensor, and the fan motor, determining, from the first sensor, a first odor status of a cooking environment of the vapor extraction device, determining, from the second sensor, a second odor status of the cooking environment of the vapor extraction device, performing, at the control device, an air cleaning effect determination as a function of time and long-term odor conditions of the cooking environment by combining the two determined odor statuses, and adjusting, by the control device, the fan motor based on the air cleaning effect determination. Appeal Br. 10 (Claims App.) (emphasis added). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Burdett et al. (“Burdett”) US 2008/0274683 A1 Nov. 6, 2008 Melink US 2005/0156053 A1 July 21, 2005 Melink et al. (“Melink ’480”) US 6,170,480 B1 Jan. 9, 2001 Siegel US 6,920,874 B1 July 26, 2005 Appeal 2020-003169 Application 14/417,175 3 Name Reference Date Livchak et al. (“Livchak”) US 2015/0136430 A1 May 21, 2015 REJECTIONS Claims 32–36, 41, 42, 45, 48, and 49 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Burdett and Melink. Claims 37 and 46 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Burdett, Melink, and Melink ’480. Claims 38 and 39 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Burdett, Melink, and Siegel. Claims 40, 43, 44, and 47 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Burdett, Melink, and Livchak. OPINION New Ground of Rejection – 35 U.S.C. § 112 Pursuant to 37 C.F.R. § 41.50(b), independent claims 32 and 35 are hereby rejected under pre-AIA 35 U.S.C. § 112, second paragraph, as being indefinite because the scope and meaning of the limitations of the claims cannot be determined. Because the same indefiniteness issue affects dependent claims 33, 34, and 36–49, they are also rejected on the same basis. Independent claim 32 recites a method comprising the step of performing “an air cleaning determination as a function of time and long- term odor conditions of the cooking environment by combining the two determined odor statuses,” which are determined from the first and second sensors. Appeal Br. 10. Independent claim 35 similarly recites a method Appeal 2020-003169 Application 14/417,175 4 comprising the step of performing “an odor pollution determination as a function of time and long-term odor conditions of the cooking environment in response to the cooking process detection.” Id. at 10–11. The text of AIA 35 U.S.C. § 112(b) and pre-AIA 35 U.S.C. § 112, second paragraph requires “[t]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the [Appellant] regards as the invention.” “As the statutory language of ‘particular[ity ]’ and ‘distinct[ ness ]’ indicates, claims are required to be cast in clear – as opposed to ambiguous, vague, indefinite – terms.” In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). Claims are in compliance with 35 U.S.C. § 112(b)/second paragraph if “the claims, read in light of the specification, reasonably apprise those skilled in the art both of the utilization and scope of the invention, and if the language is as precise as the subject matter permits.” Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1385 (Fed. Cir. 1986) (citing Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 624 (Fed. Cir. 1985)). Thus, the test for determining the question of indefiniteness may be formulated as whether the claims “set out and circumscribe a particular area with a reasonable degree of precision and particularity.” In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). While a claim employing a “term[] of degree” may be definite “where it provide[s] enough certainty to one of skill in the art when read in the context of the invention,” Interval Licensing [LLC v. AOL, Inc.], 766 F.3d [1364,] 1370 [(Fed. Cir. 2014)], a term of degree that is “purely subjective” and depends “on the unpredictable vagaries of any one person’s opinion” is indefinite, Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350–51 (Fed. Cir. 2005). Appeal 2020-003169 Application 14/417,175 5 Intellectual Ventures I LLC v. T-Mobile USA, Inc., 902 F.3d 1372, 1381 (Fed. Cir. 2018). Here, the Specification uses the term “long term” only once in discussing the odor status – the odor status of which is determined, comprises both the cooking climate, in other words the long-term odor conditions in the room in which the vapor extraction device is operated, and optionally also in the vapor extraction device, as well as a cooking process, in other words the odor conditions that change quickly or suddenly and generally in an extreme manner in the room and optionally in the vapor extraction device. Spec. ¶ 13. The term “longer term” is used three times: (1) “[a]dditionally or alternatively the reference value can also be a function of a time constant. This dependency allows the reference value to be designed for example to take more account of shorter term or longer term odor status changes” (id. ¶ 48); (2) “[i]t is possible for example to use different time constants to distinguish for example between a short-term odor level and a longer-term odor level of the cooking climate when determining the two odor levels” (id. ¶ 77); and (3) [t]he two low-passes can detect both short-term and longer- term odor status changes for example by the suitable selection of different time constants” (id. ¶ 91). There is no specific definition of what constitutes a “long-term” condition. At best, a long-term condition is in contrast to “conditions that change quickly or suddenly and generally in an extreme manner in the room and optionally in the vapor extraction device” (id. ¶ 13) and to “shorter term” changes (id. ¶¶ 48, 77, 91). However, the Specification does not discuss with particularity how much less “quickly,” “suddenly,” or “extreme[ly],” or how much “longer” the condition must change in order to be considered “long-term.” Appeal 2020-003169 Application 14/417,175 6 Thus, the term “long-term” is a “term of degree” that is subjective and depends on a person’s opinion. As such, one of ordinary skill in the art cannot ascertain without considerable speculation what the inventor regards as the invention nor the scope and meaning of the claims. Therefore, independent claims 32 and 35 and thus also dependent claims 33, 34, and 36–49 have ambiguities such that they are unclear, and are thus indefinite. See In re Packard, 751 F.3d at 1314. 35 U.S.C. § 103 The Appellant contends that the Examiner’s rejection of independent claims 32 and 35 is in error because Burdett and Melink, alone or in combination, do not teach the limitation of “performing, at the control device, an air cleaning effect determination as a function of time and long- term odor conditions of the cooking environment,” as recited in claim 32 and similarly recited in claim 35, which recites “performing, at the control device, an odor pollution determination as a function of time and long-term odor conditions of the cooking environment.” Appeal Br. 4–6, 11; see also Reply Br. 3. Specifically, the Appellant argues that the Specification clearly sets forth an explicit definition for “odor status” “such that the odor pollution determination is not a simple consideration of conditions at that instantaneous moment in time.” Appeal Br. 4; see also Reply Br. 3–4. The Appellant contends that Melink, upon which the Examiner relies, “does not consider long-term conditions, and is simply reacting to the relationship between the instantaneous outside temperature and the instantaneous inside temperature.” Appeal Br. 7; see also id. at 5–6, Reply Br. 4–5. The Appellant also contends that the prior art Melink ‘480, Siegel, and Livchak Appeal 2020-003169 Application 14/417,175 7 do not cure these deficiencies of the rejection of independent claims 32 and 35. See Appeal Br. 7–8, Reply Br. 6. Conversely, the Examiner maintains that the combination of Burdett and Melink teaches those limitations of claims 32 and 35 and interprets the term “odor status” “in light of instant specification ¶ 14 and ¶ 2 to be one of a broad group of values detected by a broad group of sensors which include temperature sensors” and the term “long term odor conditions” “in light of instant specification ¶ 13, ¶ 48 to encompass longer than instantaneous.” Ans. 11; see also Final Act. 7–8. Having determined that this subject matter of claims 32 and 35 is indefinite, we are unable to determine the propriety of the Examiner’s prior art rejections of claims 32–49. The review of the rejections of these claims as obvious under 35 U.S.C. § 103(a) would require considerable speculation as to the scope and meaning of the claims. Such speculation would not be appropriate. In re Steele, 305 F.2d 859, 862 (CCPA 1962). We, therefore, reverse pro forma the prior art rejections under 35 U.S.C. § 103(a) of claims 32–49. We emphasize that this is a technical reversal of the rejections under 35 U.S.C. § 103, and not a reversal based upon the merits of the rejections. CONCLUSION The Examiner’s decision to reject claims 32–49 under 35 U.S.C. § 103(a) is reversed pro forma. We enter a NEW GROUND OF REJECTION of claims 32–49 under 35 U.S.C. § 112, second paragraph as indefinite. Appeal 2020-003169 Application 14/417,175 8 In summary: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground 32–36, 41, 42, 45, 48, 49 103(a) Burdett, Melink 32–36, 41, 42, 45, 48, 49 37, 46 103(a) Burdett, Melink, Melink ‘480 37, 46 38, 39 103(a) Burdett, Melink, Siegel 38, 39 40, 43, 44, 47 103(a) Burdett, Melink, Livchak 40, 43. 44, 47 32–49 112 Indefiniteness 32–49 Overall Outcome 32–49 32–49 TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: Appeal 2020-003169 Application 14/417,175 9 (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 prosecution 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. REVERSED; 37 C.F.R. § 41.50(b)