10360013 (B.P.A.I. Sep. 7, 2012)

Ex Parte Braxton

Board of Patent Appeals and InterferencesSep 7, 2012

10360013 (B.P.A.I. Sep. 7, 2012)

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. 10/360,013 02/06/2003 Earl J. Braxton TBG109D US 7009 21133 7590 09/07/2012 VAN OPHEM & VANOPHEM, PC REMY J VANOPHEM, PC 51543 VAN DYKE SHELBY TOWNSHIP, MI 48316-4447 EXAMINER BAKER, LORI LYNN ART UNIT PAPER NUMBER 3751 MAIL DATE DELIVERY MODE 09/07/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte EARL J. BRAXTON ____________ Appeal 2009-014235 Application 10/360,013 Technology Center 3700 ____________ Before NEAL E. ABRAMS, STEVEN D.A. McCARTHY and MICHAEL C. ASTORINO, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge ABRAMS. Opinion Concurring filed by Administrative Patent Judge McCARTHY. ABRAMS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-014235 Application 10/360,013 2 STATEMENT OF THE CASE Earl J. Braxton (Appellant) seeks our review under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 21-27, 29-31 and 33. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. THE INVENTION The claimed invention is directed to a waste containment receptacle. Claim 21, reproduced below, is illustrative of the subject matter on appeal. 21. A portable waste containment receptacle comprising: a self-contained tank having an upper surface defining a seat portion thereon, said self-contained tank further having a reservoir portion for receiving and accumulating human waste containing hazardous pharmaceutical agents, said seat portion having an opening therethrough in communication with said reservoir portion; a cover hingedly mounted to said self-contained tank, said cover adapted to pivotably move over said opening to sealingly close said opening for sealing said accumulated human waste within said reservoir; and means for treating said human waste and reclaiming said hazardous pharmaceutical agents from said accumulated human waste whereby said portable waste containment receptacle is self-contained and adapted for transport of said accumulated human waste to a treatment facility such that such hazardous pharmaceutical agents are isolated and removed from said human waste and prevented from entering the environment. Appeal 2009-014235 Application 10/360,013 3 THE PRIOR ART The Examiner relied upon the following as evidence of unpatentability: Hidden US 29,278 Jul. 24, 1860 Kurrels US 3,142,847 Aug. 4, 1964 Kliemann US 3,832,738 Sep. 3, 1974 Green Kuhlman US 5,485,637 US 5,689,840 Jan. 23, 1996 Nov. 25, 1997 THE REJECTIONS Claims 21-27, 29-31 and 33 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellant regards as the invention. Claim 33 under 35 U.S.C. § 102(b) as being anticipated by Green. Claims 21, 23, 25 and 33 under 35 U.S.C. § 103(a) as being unpatentable over Hidden and Green. Claims 22, 24 and 29 under 35 U.S.C. § 103(a) as being unpatentable over Hidden and Green, and further in view of Kuhlman. Claims 24, 26 and 30 under 35 U.S.C. § 103(a) as being unpatentable over Hidden and Green, and further in view of Kurrels. Claim 30 under 35 U.S.C. § 103(a) as being unpatentable over Hidden, Green and Kuhlman, and further in view of Kurrels. Claims 27 and 31 under 35 U.S.C. § 103(a) as being unpatentable over Hidden, Green and Kuhlman, and further in view of Kliemann. Appeal 2009-014235 Application 10/360,013 4 OPINION The Rejection of Claims 21-27, 29-31 and 33 as being Indefinite All of the claims before us are apparatus claims. Independent claim 21 is directed to “[a] portable waste containment receptacle,” independent claim 24 to “[a] self-contained portable waste containment receptacle,” and independent claim 33 to “[a] waste containment apparatus.” Pointing particularly to the recitation of the “means for treating…” that appears in all three of the independent claims, the Examiner has taken the position that “[t]he metes and bounds of this claim language is not discernible from the instant disclosure.” Ans. 4. The complete explanation of this rejection is set forth on pages 4 and 5 of the Final Rejection and pages 4 and 5 of the Answer. The Appellant has countered by arguing that the disputed structure is recited in the claims in a means-plus-function format which is adequately explained in the Specification. App. Br. 18-21. Claim 21 states that the “portable waste containment receptacle,” which is the apparatus to which the claim pertains, comprises a self- contained tank for receiving and accumulating human waste containing hazardous pharmaceutical agents, a cover hingedly mounted on the tank, and “means for treating said human waste and reclaiming said hazardous pharmaceutical agents from said accumulated human waste” (emphasis added). The Appellant refers to three paragraphs in the Specification (p. 6, ll. 12-21; p. 10, ll. 12-17; p. 11, ll. 6-10) to support his position that “the structure, materials, or acts in the specification and ‘equivalents thereof’ corresponding to Appellant’s various functional phrases are readily apparent” (App. Br. 18-19), and argues that “from the recited disclosure at Appeal 2009-014235 Application 10/360,013 5 pages 6, 9, and 11, as well as the title of the invention, by itself would be sufficient disclosure to indicate to one skilled in the art the precise structure necessary for means for treatment recited in the claims.” App. Br. 20. However, our review of the three paragraphs reveals that while they describe processes for removing pharmaceutical agents from human waste and recycling or otherwise disposing of them, they do not describe the structure of the “means for treating . . . and reclaiming” that is recited in claim 21 as comprising a component of the “waste containment receptacle” apparatus to which the claim is directed. Since the Specification lacks an adequate disclosure for the “means for treating . . . and reclaiming” as a component of the “waste containment receptacle,” claim 21 in effect fails to particularly point out and distinctly claim the invention as required by the second paragraph of § 112. See In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc) ([i]f an applicant fails to set forth an adequate disclosure, the applicant has in effect failed to particularly point out and distinctly claim the invention as required by the second paragraph of § 112.”). Likewise, independent claims 24 and 33 recite “means for treating . . . and reclaiming” hazardous pharmaceutical agents from the accumulated human waste in a component of a “self-contained portable waste containment receptacle” (claim 24) and a “waste containment apparatus” (claim 33), and we reach the same conclusion with regard to the sufficiency of the disclosure with regard to these two claims. Therefore, while we have carefully considered the arguments set forth by the Appellant in the Appeal Brief and the Reply Brief, we find ourselves in agreement with the Examiner that independent claims 21, 24, and 33 fail to particularly point out and distinctly claim the subject matter which Appeal 2009-014235 Application 10/360,013 6 Appellant regards as the invention. This being the case, the Examiner’s rejection under 35 U.S.C. § 112, second paragraph, is affirmed. The Rejection of Claims 21-27, 29-31 and 33 on the Basis of Prior Art For the reasons expressed above, claims 21-27, 29-31 and 33 are indefinite. Therefore, the prior art rejections must fall, pro forma, because they necessarily are based on speculative assumptions as to the meaning of the claims. See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962). It should be understood, however, that our decision in this regard is based solely on the indefiniteness of the claimed subject matter and does not reflect upon the adequacy of the prior art evidence applied in support of the rejections. The Appellant’s Request Regarding the Objections Raised by the Examiner Appellant additionally seeks our review of the Examiner’s objections on pages 1 and 2 of the Final Rejection regarding the introduction of new matter. App. Br. 14-18. Objections such as those set forth by the Examiner in this case are reviewable by timely petition under 37 C.F.R. § 1.181, while a rejection is appealable to the Board of Patent Appeals and Interferences. When the issue of new matter presented is the subject of both an objection and a rejection, the issue is appealable. Manual of Patent Examining Procedure (MPEP) § 2163.06, II. That is not the case here, and therefore this matter is not within the jurisdiction of the Board. Appeal 2009-014235 Application 10/360,013 7 DECISION The rejection of claims 21-27, 29-31 and 33 under 35 U.S.C. § 112, second paragraph, is affirmed. The rejection of claim 33 under 35 U.S.C. § 102(b) and the rejections of claims 21-27, 29-31 and 33 under 35 U.S.C. § 103(a) are reversed. A rejection of each of the claims having been affirmed, the decision of the Examiner 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 mls Appeal 2009-014235 Application 10/360,013 8 McCARTHY, Administrative Patent Judge, concurring. While I join without hesitation in the findings, reasoning and conclusions of my colleagues, I write separately to address the rejection of claims 21-27, 29-31 and 33 under 35 U.S.C. § 112, second paragraph, in slightly more detail. Since the Appellant argues these claims as a group for purposes of the rejection under the second paragraph of § 112 (see generally App. Br. 18-21), I select claim 21 as representative of the grouping. See 37 C.F.R. § 41.37(c)(1)(vii) (2009). The Examiner and the Appellant appear to agree that the limitation reciting “means for treating said human waste and reclaiming said hazardous pharmaceutical agents from said accumulated human waste” must be interpreted in accordance with 35 U.S.C. § 112, paragraph 6. This agreement is correct, since the use of the term “means” and the recitation of functions raises a presumption concerning the interpretation of the limitation which no subsequently recited structure rebuts. See Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294, 1302 (Fed. Cir. 1999). Pursuant to the sixth paragraph of § 112, “[i]f there is no structure in the specification corresponding to the means-plus-function limitation in the claims, the claim will be [unpatentable] as indefinite.” Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 950 (Fed. Cir. 2007). The Appellant argues that, “from the disclosure provided in the specification, the inventor has clearly set forth how to make and use his invention by particularly and distinctly indicating the subject matter that the inventor considers to be his invention and in doing so disclosed the required structure and/or equivalents thereof.” (App. Br. 20). This argument conflates the requirement to identify a corresponding structure for purposes of the sixth paragraph of § 112 with Appeal 2009-014235 Application 10/360,013 9 the enablement requirement of the first paragraph of § 112. As the Examiner points out on page 5 of the Final Office Action mailed August 27, 2007, the inquiry under the sixth paragraph “is whether one of skill in the art would understand the specification itself to disclose a structure, not simply whether that person would be capable of implementing a structure.” Biomedino at 953. The Specification does not identify a structure corresponding to the recited “means for treating said human waste and reclaiming said hazardous pharmaceutical agents from said accumulated human waste” merely because one of ordinary skill in the art might have been capable of constructing a treatment plant or other device capable of performing the recited functions. In addition, the Appellant argues that, the recited disclosure at [page 6, lines 12-21; page 10, lines 12-17; and page 11, lines 6-10], as well as the title of the invention, by itself would be sufficient disclosure to indicate to one skilled in the art the precise structure necessary for means for treatment recited in the claims. (App. Br. 20; see also id. at 18-19). That said, the only guidance which the Appellant appears to provide as to how these passages identify the corresponding structure is to point out “the permissible incorporation by reference of prior patents at page 6 of the specification.” (App. Br. 20). The identification of corresponding structure under the sixth paragraph of § 112 must appear in the Specification itself. The Appellant’s incorporation by reference of four prior art patents on page 6 of the Specification does not imply that the Specification itself identifies corresponding structure with Appeal 2009-014235 Application 10/360,013 10 sufficient definiteness. See Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374, 1381 (Fed. Cir. 1999).1 For these reasons, along with the reasons set forth by my colleagues in the majority, I join in the conclusion that the Examiner correctly rejected claims 21-27, 39-31 and 33 under 35 U.S.C. § 112, second paragraph. 1 For similar reasons, the additional prior art patents cited by the Appellant during prosecution (see App. Br. 20) are entitled to little weight in determining whether the Specification identifies the means for treating said human waste and reclaiming said hazardous pharmaceutical agents from said accumulated human waste.”