Ex Parte Crichton et al

Patent Trials and Appeals Board

Jun 28, 2018

14118010 - (D) (P.T.A.B. Jun. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/118,010 11/15/2013 Daniel Crichton
26294 7590 07/02/2018
TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P.
1300EASTNINTH STREET, SUITE 1700
CLEVELAND, OH 44114
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
GJE-022916 US PCT 2857
EXAMINER
LIEUWEN, CODY J
ART UNIT PAPER NUMBER
3752
NOTIFICATION DATE DELIVERY MODE
07/02/2018 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):
rkline@tarolli.com
docketing@tarolli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL CRICHTON,
ROBERT GORDON MAURICE SELBY, and
DAVID MARTIN POOLEY
Appeal2017-008271
Application 14/118,010
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Technology Partnership PLC ("Appellant") 1 appeals under
35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1--4, 8, 10,
11, 14, 15, 17-19, 21, 22, and 25-30, and 33, which are all the pending
claims. See Br. 5---6. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We REVERSE.
The Technology Partnership PLC is the applicant, as provided in
37 C.F.R. § 1.46, and is identified as the real party in interest. Br. 3.
Appeal2017-008271
Application 14/118,010
CLAIMED SUBJECT MATTER
Appellant's disclosed invention "relates to electronic spray devices in
which a vibrating perforate membrane is used to generate liquid droplets."
Spec. ,r 1. 2 Claim 1, reproduced below with emphasis added, is the sole
independent claim and is representative of the subject matter on appeal.
1. A liquid droplet production apparatus comprising:
a perforate membrane;
a liquid supply configured to supply liquid to one side of
the membrane;
an actuator configured to vibrate the membrane, said
vibration causing liquid droplets to be ejected from the other
side of the membrane;
wherein:
magnetic force is used to connect the actuator to the
membrane so that the vibration can be transmitted; and
wherein the perforate membrane is non-removably
attached to a liquid containing reservoir.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Michaels us 3,812,854 May 28, 1974
Maehara us 4,533,082 Aug. 6, 1985
Humberstone us 5,518,179 May 21, 1996
Hansen US 6,227,853 B 1 May 8, 2001
Van Der Mark US 2012/0285446 Al Nov. 15, 2012
2 We note that references herein to Appellant's Specification refer to
the Substitute Specification filed May 13, 2015.
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Application 14/118,010
High Temp Metals, Permendur 2V (Hiperco 50A) Technical Data
(May 12, 2004), available at https://web.archive.org/web/
20040512171619if_!http://www.hightempmetals.com: 80/techdata/
hitempPermendurdata.php (hereinafter "High Temp Metals").
REJECTIONS
The following rejections are before us for review:
I. Claims 1--4, 10, 14, 18, 19, 21, 22, 25, 27, 28, and 33 stand
rejected under 35 U.S.C. § 102(e) as anticipated by
Van Der Mark. 3 Final Act. 3-7.
II. Claims 8 and 30 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Van Der Mark and Hansen. Id. at 7-8.
III. Claims 15 and 17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Van Der Mark and High Temp Metals.
Id. at 8-9.
IV. Claim 29 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Van Der Mark and Maehara. Id. at 9-10.
V. Claims 1--4, 8, 10, 14, 18, 19, 21, 22, 25-27, and 30 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over
Humberstone and Hansen. 4 Id. at 10-17.
3 We note that the Examiner included claims 31 and 32 in this rejection.
See Final Act. 3, 6; Ans. 2, 5-6. These claims have been canceled in the
Amendment filed May 12, 2016, which was entered by the Examiner per the
Advisory Action dated June 2, 2016. See also Br. 5, 7 (noting same). We
treat the inclusion of these claims in the Answer as an inadvertent and
harmless error for purposes of the present appeal.
4 We note that the Examiner included claims 31 and 32 in this rejection.
See Final Act. 10, 16-17; Ans. 9, 15-16. These claims have been canceled
in the Amendment filed May 12, 2016, which was entered by the Examiner
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VI. Claims 15 and 17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Humberstone, Hansen, and High Temp
Metals. Id. at 17-18.
VII. Claim 29 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Humberstone, Hansen, and Maehara. Id.
at 18-19.
VIII. Claims 1, 11, and 28 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Michaels and Hansen. Id. at 19-21.
ANALYSIS
Independent claim 1 recites, in relevant part, a liquid droplet
production apparatus including a "perforate membrane [that] is non-
removably attached to a liquid containing reservoir." Br. 26 (Claims App.).
A central disputed issue in this case is the proper claim construction of the
membrane and reservoir being "non-removably attached." See id. at 13-15,
20-21, 23-24; Final Act. 3, 11, 19-20; Ans. 21-24. After careful
consideration of the arguments and evidence before us, we agree with
Appellant that the Examiner erred. See Br. 13-15, 20-21, 23-24.
In each ground of rejection of independent claim 1 (i.e., Rejections I,
V, and VIII), the Examiner construed the term "non-removably attached" as
"a functional limitation requiring the attachment between the perforate
membrane and the reservoir to be capable of being maintained, such that the
membrane is capable of being 'not removed' from the reservoir." Final
per the Advisory Action dated June 2, 2016. See also Br. 5, 7 (noting same).
We treat the inclusion of these claims in the Answer as an inadvertent and
harmless error for purposes of the present appeal.
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Application 14/118,010
Act. 3, 11, 20. According to the Examiner, the limitation requires "an
attachment structure that can be 'not removed', i.e., an attachment capable of
being maintained on its own apart from any additional action by an operator
and that requires further action to be taken by an operator to release the
attachment." Ans. 21.
Based on this claim construction, the Examiner found that each of
Van Der Mark (Rejection I), Humberstone (Rejection V), and Michaels
(Rejection VIII) discloses a perforate membrane that is "non-removably
attached" to a reservoir because the perforate membrane "is not expected to
change locations or move relative to the liquid containing reservoir during
use of the apparatus." Final Act. 3, 11, 20.
Appellant argues, and we agree, that the Examiner's findings as to the
disclosures of Van Der Mark, Humberstone, and Michaels are predicated on
an unreasonably-broad interpretation of "non-removably attached." See
Br. 13-15, 20-21, 23-24. Although claim terms are given the broadest
reasonable interpretation during prosecution, such an interpretation must
remain reasonable in light of the Specification, and consistent with the
interpretation that one of ordinary skill in the art would reach. See In re Am.
Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re
Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999); MPEP § 2111.01.
Here, the Examiner's position (see Final Act. 3, 11, 20) is
unreasonable because it effectively reads out any meaning imparted by the
modifier "non-removably," such that a removable attachment could
somehow be considered non-removable simply because the attachment is
maintained during use of the apparatus. See Stumbo v. Eastman Outdoors,
Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions
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Application 14/118,010
that render phrases in claims superfluous). In other words, a removable
attachment between elements of an apparatus does not become non-
removable simply because the elements are not expected to move during use
of the apparatus. Moreover, the Examiner's interpretation is not consistent
with Appellant's Specification, which describes that, "in a preferred
embodiment, the perforate membrane is permanently attached to the liquid
containing reservoir." Spec. ,r 59 ( emphasis added).
Based on the record before us, we agree with Appellant that the
Examiner's construction of "non-removably attached," as recited in claim 1,
is unreasonably broad, such that the rejections based upon this claim
construction are in error. In particular, the Examiner has not established a
finding supported by a preponderance of the evidence that any of
Van Der Mark, Humberstone, and Michaels, as relied upon in respective
Rejections I, V, and VIII, discloses a "perforate membrane [that] is non-
removably attached to a liquid containing reservoir," as recited in claim 1.
The Examiner relied on Hansen (Rejections II and V-VIII), High Temp
Metals (Rejections III and VI), and Maehara (Rejections IV and VII) for
teaching additional claimed features, but not to cure the above-noted
deficiency in the Examiner's findings based upon the improper claim
construction. Thus, we do not sustain Rejections I-VIII.
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DECISION
We REVERSE the Examiner's rejections of claims 1--4, 8, 10, 11, 14,
15, 17-19, 21, 22, and 25-30, and 33.
REVERSED
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