Erwin, Maura Elizabeth.

Patent Trials and Appeals Board

Jun 18, 2020

15457961 - (D) (P.T.A.B. Jun. 18, 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.
15/457,961 03/13/2017 Maura Elizabeth Erwin Erwin-1 8109
32132 7590 06/18/2020
LAMORTE & ASSOCIATES P.C.
P.O. BOX 434
YARDLEY, PA 19067
EXAMINER
CLEVELAND, TIMOTHY C
ART UNIT PAPER NUMBER
1774
NOTIFICATION DATE DELIVERY MODE
06/18/2020 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):
mail@uspatlaw.com
malamorte@verizon.net
uspatlaw1@verizon.net
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAURA ELIZABETH ERWIN

Appeal 2019-004831
Application 15/457,961
Technology Center 1700
Before CATHERINE Q. TIMM, BRIAN D. RANGE, and
DEBRA L. DENNETT, Administrative Patent Judges.
RANGE, 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 1–5, 7–12, and 16. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Maura E.
Erwin. Appeal Br. 2.
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Application 15/457,961

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CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to a device for sanitizing
a handheld implement such as a pen or pencil. Spec. 1:5–12. The
Specification explains that placing the object in an alcohol solution (as
barbers do might do with a razor) will harm a pen or marker’s ability to
write. Id. at 2:13–3:10. Ultraviolet light systems may also have
disadvantages. Id. at 4:5–22. Thus, the invention seeks to improve upon
prior art systems. Id. at 4:23–5:7. Figure 2, reproduced below, illustrates the
invention.

Figure 2 is a cross-sectional view of an exemplary embodiment of a
sanitizing station shown in conjunction with some writing implements. Spec.

2 In this Decision, we refer to the Final Office Action dated October 9, 2018
(“Final Act.”), the Appeal Brief filed February 6, 2019 (“Appeal Br.”), and
the Examiner’s Answer dated March 28, 2019 (“Ans.”).
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6:22–7:2. As Figure 2 depicts, parallel hollow shafts 28 are formed in the
body of open cell foam 24. Spec. 8:22–9:1. Important to the decision below,
the Specification describes Figure 2’s solid area 29 as follows: “solid area 29
within the body of open cell foam 24 . . . exists below the hollow shafts 28
but above the closed bottom 16 of the container 14.” Id. at 9:4–6.
Claims 1 and 10 are the only independent claims on appeal. Claim 1 is
illustrative and is reproduced below with emphasis added to certain
recitations argued on appeal:
1. A device for holding and sanitizing handheld
implements, comprising:
a container having a closed bottom and an open top, wherein a
first length exists between said open top and said closed bottom;
a body of open cell foam disposed in said container;
a plurality of hollow shafts formed in said body of open cell
foam are accessible through said open top of said container, and
wherein each of said plurality of hollow shafts has a second length
that is less than said first length, therein leaving an uninterrupted area
of said body of open cell foam interposed between said plurality of
hollow shafts and said closed bottom of said container; and
a volume of a liquid disinfectant only sufficient to partially
fill said container where occupied by said uninterrupted area of
said body of open cell foam, wherein said body of open cell foam
wicks at least some of said volume of said liquid disinfectant around
each of said plurality of hollow shafts.
Appeal Br. 18 (Claims App.). Claim 10 similarly recites, among other
things, “a liquid disinfectant held within said container at a volume only
sufficient to partially saturate said uninterrupted area of said open foam
material.” Id. at 20.

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Application 15/457,961

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REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Name
Price
Martz
Scheuing et al.
(“Scheuing”)
Vaillancourt et al.
(“Vaillancourt”)
Reference
US 6,142,297
US 6,270,275 B1
US 2010/0143494 A1

US 2011/0030726 A1
Date
Nov. 7, 2000
Aug. 7, 2001
June 10, 2010

Feb. 10, 2011

REJECTIONS
The Examiner maintains (Ans. 3) the following rejections on appeal:
A. Claims 1–5, 7–12, and 16 under 35 U.S.C. § 112 as indefinite. Ans. 3.
B. Claims 4 and 12 under 35 U.S.C. § 112 as being in improper
dependent form. Id. at 4.
C. Claims 1, 3, 5, 7, 8, and 10 under 35 U.S.C. § 103 as obvious over
Price in view of Vaillancourt. Id. at 4.
D. Claims 2 and 11 under 35 U.S.C. § 103 as obvious over Price in view
of Vaillancourt and Scheuing. Id. at 6.
E. Claims 9 and 16 under 35 U.S.C. § 103 as obvious over Price in view
of Vaillancourt and Martz. Id. at 7.
OPINION
Rejection A, claims 1 and 10. The Examiner rejects claims 1 and 10
under 35 U.S.C. § 112 as indefinite. Ans. 3–4. In particular, the Examiner
determines that these two independent claims are unclear because a person
of ordinary skill “would not be able to interpret the metes and bounds of the
claim” in view of the claims’ “only sufficient” recitation concerning volume
of liquid disinfectant. Id. Appellant does not address this rejection. We,
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therefore, summarily sustain the Examiner’s rejection of claims 1 and 10. Ex
parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), (cited with
approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long
been the Board’s practice to require an applicant to identify the alleged error
in the examiner’s rejections.”)). We also sustain the Examiner’s rejection of
claims 2–5, 7–9, 11, 12, and 16 to the extent the Examiner’s rejection is
based upon these claims being dependent on claims 1 and 10.
Rejection A, claim 7. Claim 7 recites, “[t]he device according to
Claim 1, wherein said volume of liquid disinfectant is only sufficient to fully
saturate said uninterrupted area of said body of open cell foam between said
hollow shafts and said closed bottom of said container.” Independently of
the rejection of claim 1 from which claim 7 depends, the Examiner rejects
claim 7 under 35 U.S.C. § 112 as indefinite. Ans. 3.
During prosecution, “‘[a] claim is indefinite when it contains words or
phrases whose meaning is unclear.’” Ex parte McAward, Appeal No. 2015-
006416, at 11 (PTAB Aug. 25, 2017) (quoting In re Packard, 751 F.3d 1307,
1314 (Fed. Cir. 2014)). Here, the Examiner determines that the “metes and
bounds” of claim 7 are unclear because it is not clear whether full saturation
is determined before or after the liquid is wicked by the remainder of the
body of open cell foam. Ans. 3.
Appellant argues that the claim is clear and encompasses “liquid
disinfectant . . . added in a volume that just fully saturates the body of open
cell foam.” Appeal Br. 6. Appellant cites the Specification at 13:14–14:3 as
clarifying the meaning of claim 7.
We agree with Appellant that claim 7 is not unclear. We begin by
addressing the claims’ recited “uninterrupted area.” In particular, the
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Specification defines solid area 29 in substantially the same manner claim 1
defines the recited “uninterrupted area.” The Specification explains that
solid area 29 exists below the hollow shafts 28 but above the closed bottom
16 of the container 14. Id. at 9: 4–6; see also Fig. 2. Similarly, claims 1 and
10 recite that the uninterrupted area is the “body of open cell foam
interposed between said plurality of hollow shafts and said closed bottom of
said container.” Appeal Br. 18 (Claims App.). We, therefore, determine that
the recited “uninterrupted area” is the body of open cell foam open cell foam
located below the lowest point of the plurality of shafts but above the closed
bottom of the container as illustrated by, for example, solid area 29 of
Figure 2.
We next address claim 7 and wicking. Claim 1, which claim 7
depends from, recites that “said body of open cell foam wicks at least some
of said volume of said liquid disinfectant around each of said plurality of
hollow shafts.” Appeal Br. 18 (Claims App.); see also Spec. Fig. 2. The
Specification explains how the invention seeks to avoid immersing a pen in
liquid disinfectant because doing so will harm the pen’s ink. Spec. 1:14–5:7.
With this context in mind, the Specification explains how “the body of open
cell 24 foam reaches [a] saturation point” but “the level of the pooled
disinfectant 26 will be below the bottom of the hollow shafts 28 that hold the
writing implements 12.” Id. at 13:14–14:3.
Given the context provided by the Specification and the recitations of
claims 1 and 7, a person of skill in the art also would have understood that
claim 7 requires an amount of liquid disinfectant sufficient to fully saturate
the uninterrupted area of the open cell foam. Claim 1’s recitations recognize
that wicking of disinfectant above this area will occur. If liquid disinfectant
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is wicked away from the uninterrupted area such that the uninterrupted area
can still hold more liquid, then the uninterrupted area of the open cell foam
will not be saturated. Thus, the Examiner’s concern as to whether or not
claim 7 determines saturation before or after wicking (Ans. 3, 7–8) is not
well founded. We, therefore, do not sustain this rejection.
Rejection B, improper dependent form of claims 4 and 12. The
Examiner rejects claims 4 and 12 under 35 U.S.C. § 112 as being in
improper dependent form. Id. at 4. Claims 4 and 12 each recite a “fill bore”
extending “into said uninterrupted area.” Appeal Br. 19, 21 (Claims App.).
As we understand the rejection, the Examiner determines that independent
claims 1 and 10 require an “uninterrupted area” and that dependent claims 4
and 12 create a bore in the “uninterrupted area” such that the area is no
longer “uninterrupted.” Ans. 4, 8. Thus, in the Examiner’s view, claims 4
and 12 present recitations contradictory to the recitations of claims 1 and 10.
Appellant argues that the “uninterrupted area” is the same as what the
Specification refers to as solid area 29. Appeal Br. 7–8. We addressed the
meaning of “uninterrupted area” above. Based on this construction,
“uninterrupted” does not mean that the area must be solid foam. Just to the
contrary, the claim states that the “uninterrupted area” is a “body of open
cell foam.” The term “uninterrupted,” therefore, merely means that the area
is not interrupted by the claims’ “hollow shafts.” Dependent claims 4 and 12
require a bore hole within the uninterrupted area, and independent claims 1
and 10 do not forbid such a hole. See Spec. Fig. 2. We, therefore, do not
sustain this rejection.
Rejections C–E, obviousness. The Examiner rejects claims 1, 3, 5, 7,
8, and 10 under 35 U.S.C. § 103 as obvious over Price in view of
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Vaillancourt. Id. at 4. The Examiner applies Scheuing as an additional
reference in rejecting claims 2 and 11 (id. at 6) and applies Martz as an
additional reference in rejecting claims 9 and 16 (id. at 7). We focus our
discussion on error identified by Appellant.
The Examiner finds that Price teaches a container (tube 34) with a
reservoir 50 and disinfecting liquid 52 held within the container. Ans. 4–5
(citing Price). The Examiner finds that Price does not teach holding “writing
implements” but determines that Price is capable of such a use. Id. at 5. The
Examiner finds that Price does not teach open cell foam. Id.
The Examiner finds that Vaillancourt teaches a device for scrubbing
and sanitizing female luer devices (i.e., a needle-less connector (Vallencourt
¶ 11)). Ans. 5–6 (citing Vaillancourt). The Examiner finds that “Vaillancourt
discloses that the foam . . . absorb[s] and hold[s] the anti-bacterial solution
with no leak-out.” Id. at 6. The Examiner explains why it would have been
obvious to reach the fill recitations of claim 1 as follows:
a volume which is only sufficient to at least partially fill, to
fully saturate, or to at least partially saturate the uninterrupted
area of the open cell foam in the above combined apparatus
would have been obvious to one of ordinary skill in the art
because overfilling the foam material would produce leak-out
and under filling the foam would have not resulted in enough
solution to provide the desired results of sanitization of the
workpiece.
Id.
Appellant argues that the Examiner has not adequately explained why
use of a limited reservoir (i.e., a reservoir having claims 1 and 10’s recited
volume) would have been obvious. Appeal Br. 13. We agree. In particular,
the Price device is designed to sterilize thermometers. Appeal Br. 10–11;
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Price 1:5–8. Price is content with dipping the thermometers in liquid. See
Price Fig. 1 (showing sanitizing medium 52 covering probe 16); 2:51–58.
Vaillancourt, meanwhile, teaches a semi-closed cell foam insert
impregnated with solution. Appeal Br. 11; Vaillancourt ¶¶ 68–70.
Vaillancourt specifies what kind of foam should be used and the
configuration of the foam as follows:
The insert 22 is made of a semi-closed cell, hydrophilic
polyurethane medical grade foam with a moderate absorption
rate. The foam configuration and size is such as to hold 0.5
cc of an anti-bacterial solution with no solution leak-out.
Vaillancourt ¶ 70 (emphasis added).
Vaillancourt paragraph 70 does not refer to “leak-out” as a problem to
be solved. Rather, Vaillancourt teaches that its foam should be crafted such
that it can hold 0.5 cc of anti-bacterial solution without leak-out.
Vaillancourt ¶ 70. Leak-out, in this context, refers to solution leaking out of
the foam—not solution leaking out of the device. We note that Vaillancourt
also suggests using 0.5 cc of anti-bacterial solution in conjunction with its
device. Id. at ¶¶ 9, 98 (teaching embodiments using 0.50 cc of solution).
Thus, Vaillancourt suggests, for its device, using an amount of solution
equivalent to the amount of solution the foam can hold—i.e., saturating the
foam with the solution.
The Examiner, however, has not adequately explained why a person
of skill in the art would have had reason to include Vaillancourt’s saturated
foam into Price. Rather, the Examiner relies on avoiding “leak-out” as the
reason for combining Vaillancourt’s foam with Price’s device. Ans. 6, 8. But
the Examiner does not persuasively articulate why a person of skill in the art
would have incorporated Vaillancourt’s foam into Price or why a person of
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skill in the art, even if they incorporated Vaillancourt’s foam into Price,
would have been concerned with disinfectant leaking out from the foam
given that Price has no concern with disinfectant directly touching
thermometers.
We, therefore, do not sustain the Examiner’s rejection of claims 1 and
10 as obvious over Price and Vaillancourt. Because the Examiner’s
treatment of dependent claims does not cure the error addressed above, we
also do not sustain the Examiner’s rejection of the dependent claims.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 7–12,
16
112 definiteness 1–5, 7–12,
163

4, 12 112 improper dependent
form
4, 12
1, 3, 5, 7, 8,
10
103 Price, Vaillancourt 1, 3, 5, 7,
8, 10
2, 11 103 Price, Vaillancourt,
Scheuing
2, 11
9, 16 103 Price, Vaillancourt,
Martz
9, 16
Overall
Outcome
1–5, 7–12,
16

3 As explained in this decision, we affirm the indefiniteness rejection of
these claims to the extent the rejection is based claim 1 and claim 10’s
recitation of “a volume of a liquid disinfectant only sufficient to partially fill
said container where occupied by said uninterrupted area of said body of
open cell foam.” We do not sustain the Examiner’s rejection based on claim
7’s recitation of “only sufficient to fully saturate.”
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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