Ex Parte Formon et al

Patent Trial and Appeal Board

Jul 20, 2017

12624842 (P.T.A.B. Jul. 20, 2017)

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.
12/624,842 11/24/2009 JOHN S. FORMON 049121-0282-00-US-495018 9094
105855 7590 07/24/2017
Drinker Biddle & Reath LLP
1500 K Street NW, Suite 1100
Washington, DC 20005
EXAMINER
KUMAR, RAKESH
ART UNIT PAPER NUMBER
3651
NOTIFICATION DATE DELIVERY MODE
07/24/2017 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):
DB RIPDocket @ dbr. com
penelope. mongelluzzo @ dbr. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN S. FORMON and SCOTT WAGNER
Appeal 2017-000990
Application 12/624,842
Technology Center 3600
Before ERIC S. FRAHM, KRISTEN L. DROESCH, and
CATHERINE SHIANG, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—3, 5—7, 9-11, 13—16, and 18—23, which are all the
claims pending and rejected in the application. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm-in-part.
Appeal 2017-000990
Application 12/624,842
STATEMENT OF THE CASE
Introduction
According to the Specification, the present invention relates to hands­
free dispensers for absorbent sheet products. See generally Spec. 1. Claim 1
is exemplary:
1. A hands-free dispenser for dispensing lengths of
absorbent sheet products, said dispenser comprising:
a dispenser housing containing walls enclosing a
dispensing mechanism and a battery compartment housing a
battery that drives the dispensing mechanism;
a hand sensor for detecting the presence of a user’s hand
in the vicinity of the dispenser;
a single elongated metallic conductive element fully
contained within said walls of the dispenser housing having a
proximate end in direct conductive electrical communication
with at least one metal surface of said dispenser positioned at a
first location relative to said hand sensor, and a distal end in
direct conductive electrical communication only with a negative
terminal of the battery compartment positioned at a second
location relative to said hand sensor, the second location being
at a greater distance from the hand sensor than the first location,
the first and second locations both being fully contained within
said walls of the dispenser housing,
wherein the battery is a charge receiver that draws charge
away from the at least one metal surface to the negative
terminal of the battery through direct conductive electrical
communication with the elongated metallic conductive element.
References and Rejections
Claim 1 is rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite.
Claims 1—3, 5, 9-11, 13, 16, and 18 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Lewis (US 2008/0100982 Al; May 1,
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Application 12/624,842
2008), Forgue (US 7,140,247 B2; Nov. 28, 2006), and Hoffman (US
4,786,005; Nov. 22, 1988).
Claims 5, 6, 13, 14, 18, and 19 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Lewis, Forgue, Hoffman, and Kato (US
6,048,119; Apr. 11,2000)3
Claims 7, 15, and 20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lewis, Forgue, Hoffman, Kato, and Morris (US
2010/0089939 Al; Apr. 15, 2010).
Claims 21—23 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lewis, Forgue, Hoffman, and Signorino (US 7,002,786
B2; Feb. 21,2006).
ANALYSIS
35 U.S.C. § 112, Second paragraph
Claims must “particularly point[] out and distinctly claim[] the subject
matter which the applicant regards as his invention.” 35 U.S.C. § 112,
second paragraph.
[W]e read § 112,12 to require that a patent’s claims, viewed in
light of the specification and prosecution history, inform those
skilled in the art about the scope of the invention with
reasonable certainty. The definiteness requirement, so
understood, mandates clarity, while recognizing that absolute
precision is unattainable. The standard we adopt accords with
opinions of this Court stating that “the certainty which the law
requires in patents is not greater than is reasonable, having
regard to their subject-matter.”
Nautilus, Inc. v. BiosigInstruments, Inc., 134 S. Ct. 2120, 2129 (2014
(citations omitted)).
1 The Examiner rejects some claims on alternative grounds.
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Application 12/624,842
The Manual of Patent Examining Procedure (“MPEP”) states:
“the failure to provide explicit antecedent basis for terms does
not always render a claim indefinite. If the scope of a claim
would be reasonably ascertainable by those skilled in the art,
then the claim is not indefinite.” . . . (“[T]he definiteness of the
language employed must be analyzed—not in a vacuum, but
always in light of the teachings of the prior art and of the
particular application disclosure as it would be interpreted by
one possessing the ordinary level of skill in the pertinent art.”).
. . . [A]n ellipse is inherently understood to have “a major
diameter.” There can be no dispute that mathematically an
inherent characteristic of an ellipse is a major diameter. The
prior recitation of “an ellipse” therefore, provides the
antecedent basis for “an ellipse having a major diameter.”
“Inherent components of elements recited have antecedent basis
in the recitation of the components themselves.” . . . The
MPEP provides an analogous example: “the limitation ‘the
outer surface of said sphere’ would not require an antecedent
recitation that the sphere have an outer surface.”
Bose Corp. v. JBL, Inc., 274 F.3d 1354, 1359 (Fed. Cir. 2001).
I
The Examiner determines claim 1 is indefinite because with respect to
the limitation “a hand sensor for detecting the presence of a user’s hand in
the vicinity of the dispenser,” “the presence of a user’s hand” and “the
vicinity of the dispenser” (emphases added) lack antecedent basis. See Non-
Final Act. 3; Ans. 2.
We agree with Appellants that when viewed in light of the
Specification, “the presence of a user’s hand” and “the vicinity of the
dispenser” (emphases added) inform those skilled in the art about the scope
of the invention with reasonable certainty, because they are inherent
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Application 12/624,842
components of the recited “a user’s hand” and “the dispenser,”2 respectively.
See Bose Corp., 274 F.3d at 1359; App. Br. 5—6.
Because the Examiner fails to provide sufficient basis to support the
rejection, we reverse the Examiner’s rejection of claim 1 under 35 U.S.C.
§ 112, second paragraph, with respect to the terms “the presence of a user’s
hand” and “the vicinity of the dispenser.”
II
The Examiner determines claim 1 is indefinite because “the negative
terminal of the battery” (emphasis added) lacks antecedent basis. See Non-
Final Act. 3; Ans. 2—3. The Examiner finds:
the preceding recitation in the claim recites only a
negative terminal of the battery compartment and not a negative
terminal of a battery. Since, the applicant has argued the
difference between the wire leads being connected to
extraneous negative terminals, to a battery compartment
terminal or directly to a battery terminal in previous attempts to
overcome cited art, such clarification is required for proper
interpretation of the claimed structure.
Ans. 2—3.
Appellants argue a battery must have a negative terminal, but do not
persuasively respond to the Examiner’s above finding. See App. Br. 6;
Reply Br. 3. While a battery has a negative terminal, when viewed in light
of the Specification, “the negative terminal of the battery” (emphasis added)
does not inform those skilled in the art about the scope of the invention with
reasonable certainty. See Non-Final Act. 3; Ans. 2—3. The claim also recites
“a negative terminal of the battery compartment” and “a battery
2 Claim 1 provides the required antecedent basis for “the dispenser.” App.
Br., Claims App’x, A-l (claim 1).
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Application 12/624,842
compartment housing a battery.” Appellants have not persuasively
explained, and it is unclear, whether “the negative terminal of the battery” is
the same terminal as, or a terminal different from, “a negative terminal of the
battery compartment.” See Ex parte Miyazaki, 89 USPQ2d 1207, 1211
(BPAI 2008) (precedential) (“[I]f a claim is amenable to two or more
plausible claim constructions, the USPTO is justified in requiring the
applicant to more precisely define the metes and bounds of the claimed
invention by holding the claim unpatentable under 35U.S.C. §112, second
paragraph, as indefinite.”).
Therefore, we affirm the Examiner’s rejection of claim 1 under
35 U.S.C. § 112, second paragraph, with respect to the term “the negative
terminal of the battery.”3
Obviousness
We have reviewed the Examiner’s rejection in light of Appellants’
contentions and the evidence of record. We concur with Appellants’
contention that the Examiner erred in finding the cited portions of Lewis
teach
a dispenser housing containing walls enclosing a dispensing
mechanism and a battery compartment. . . and a distal end in
direct conductive electrical communication only with a negative
terminal of the battery compartment positioned at a second
location relative to said hand sensor ... the first and second
locations both being fully contained within said walls of the
dispenser housing,
3 If prosecution reopens, we recommend the Examiner consider rejecting
dependent claims of claim 1 under 35 U.S.C. § 112, second paragraph.
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Application 12/624,842
as recited in claim 1 (emphases added). See App. Br. 13—15; see also App.
Br. 10.
The Examiner finds Lewis teaches “a dispenser housing (housing 10;
Figure 1) containing walls (see walls 23, 27, 20 and cover wall 210; Figure
1,5D).” Non-Final Act. 4. The Examiner further finds Lewis teaches:
a distal end (end of 200 at opposite location near 206 as shown
in Figure 6 near antenna 206) in direct conductive electrical
communication . . . with at least one charge receiver (206;
receives static collected charge from member 200; Figure 6)
positioned at a second location (receiver positioned near the
backside of the dispenser covered by a cover portion 210;
Figure 4B)[.]
. . . [T]he first (see location of members 202 in the interior of
housing Figure 5A) and second locations (receiver positioned
near the backside of the dispenser covered by a cover portion
210; Figure 4B) both being fully contained within said walls of
the dispenser housing (see walls 23, 27, 20 and cover wall 210;
Figure 1,5D).
Non-Final Act. 4—5 (emphasis added).
Appellants argue Lewis does not teach the italicized limitation,
because Lewis’ antenna 206 is situated outside—not “fully contained
within”—the walls of the dispenser housing. See App. Br. 14—15, 10.
The Examiner does not respond to Appellants’ arguments.
We agree with Appellants’ conclusion. We begin by noting the
Examiner incorrectly maps the claimed “dispenser housing” to Lewis’
dispenser 10 (Non-Final Act. 4). As to the location of antenna 206, Lewis
emphasizes the antenna “may be disposed at any location relative to the
dispenser 10 so as to be externally exposed. For example, the antennae 206
could be disposed at the top of the dispenser 10, or below the dispenser 10
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Application 12/624,842
along the underside 25.” Lewis 146 (emphasis added). Lewis describes the
dispenser housing 16 as follows:
The dispenser 10 includes a housing 16 of any desired shape
and configuration. The housing 16 includes a base 18 and a
cover 22 pivotally mounted on the base 18 so as to be movable
from the closed position illustrated in FIG. 1 to the open
position illustrated in FIG. 2. The cover 22 includes a front wall
23 and side walls 27 that align with side walls 20 of the base 18
to define an interior volume for housing the operational
components of the dispenser 10.
Lewis 133 (emphases added).
Contrary to the Examiner’s assertion, Lewis’ Figure 1 shows the
antenna 206 resides outside the walls of the dispenser housing. See Lewis,
Fig. 1. Similarly, Figure 5D also shows the antenna 206 resides in a recess
208 that is outside the walls of the dispenser housing, and a cover 210—not
a part of the dispenser housing—covers the antenna. See Lewis, Figs. 5D, 6
(showing an alternative embodiment that excludes the cover 210).
Therefore, contrary to the claim requirement, Lewis teaches the antenna 206
resides outside—not “fully contained within”—the walls of the dispenser
housing. As a result, the Examiner has not shown Lewis teaches “a
dispenser housing containing walls . . . and a distal end in direct conductive
electrical communication only with a negative terminal of the battery
compartment positioned at a second location relative to said hand sensor . . .
the first and second locations both being fully contained within said walls of
the dispenser housing,” as recited in claim 1 (emphases added).
Further, as applied by the Examiner, the teachings of Forgue and
Hoffman do not remedy the deficiencies of Lewis. See Non-Final Act. 5—6.
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Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner’s rejection of claim 1.
Each of independent claims 11 and 16 recites a claim limitation that is
substantively similar to the disputed limitation of claim 1. See claims 11 and
16. Therefore, for similar reasons, we reverse the Examiner’s rejection of
independent claims 11 and 16.
We also reverse the Examiner’s rejection of corresponding dependent
claims 2, 3, 5—7, 9, 10, 13—15, and 18—23. Although the Examiner cites
additional references for some dependent claims, the Examiner has not
shown the additional references overcome the deficiency of Lewis, as
discussed above regarding the rejection of claim 1.
DECISION
We affirm the Examiner’s decision rejecting claim 1 under 35 U.S.C.
§112, second paragraph.
We reverse the Examiner’s decision rejecting claims 1—3, 5—7, 9-11,
13-16, and 18-23 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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