Ex Parte Gray et al

Board of Patent Appeals and Interferences

Jan 28, 2009

10316272 (B.P.A.I. Jan. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT G. GRAY, KATHRYN H. FERGUSON,
GEORGIA A. TENHAGEN, KARA L. KOTARY, and
EUGENE PLACZKOWSKI
____________

Appeal 2008-5703
Application 10/316,272
Technology Center 3700
____________

Decided: January 28, 2009
____________

Before HUBERT C. LORIN, LINDA E. HORNER, and
ANTON W. FETTING, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/316,272

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STATEMENT OF THE CASE
Robert G. Gray et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-23. We have jurisdiction under
35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE and ENTER A NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R. § 41.50(b).

THE INVENTION
The Appellants’ claimed invention relates to the controlled placement
of a wick in a candle product (Spec. 1, para. 2). Claim 1, reproduced below,
is representative of the subject matter on appeal [paragraphing added].
1. A meltable solid fuel candle having a
substantially horizontal top surface, a substantially
horizontal bottom surface, one or more side
surfaces communicating with the top and bottom
surfaces to define a shape, and one or more vertical
wick cavities running substantially vertically from
the top surface to the bottom surface of said shape,
each vertical wick cavity having disposed therein a
combustible wick having an upper wick end and a
lower wick end to form a shaped candle, the upper
wick end extending above the candle top surface a
flame sustaining distance, and which upper wick
end when ignited can sustain a flame with the solid
fuel, the flame generating sufficient heat to melt at
least a portion of the solid fuel below the upper
wick end to form a pool of the molten solid fuel
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immediately below the upper wick end, and to
cause the molten solid fuel to move up a portion of
the wick by capillary action to the upper wick end
to be consumed by the flame, the lower wick end
of each wick being located substantially near the
bottom horizontal surface of the candle, the
improvement comprising
placing the lower wick end a flame
extinguishing distance above the bottom horizontal
surface of the candle, in the absence of a wick clip
engaging the wick,
whereby the pool of molten solid fuel
formed by the flame heating the solid fuel
extinguishes the flame upon the consumption of
each wick and prior to any contact of the flame or
the molten solid fuel with a surface
communicating with the bottom surface,
wherein said flame extinguishing distance is
provided by a bottom cavity formed of said solid
fuel candle and extending inward into the candle
shape from the horizontal bottom surface of the
candle and is defined by an inwardmost surface of
said candle which is a flame extinguishing distance
from the horizontal bottom surface and which is in
communication with the bottom of each wick
cavity, and one or more side surfaces in said
candle extending from the horizontal bottom
surface, and
wherein the lower wick end of each wick
extends downward substantially no further than the
inwardmost surface of said bottom cavity.

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Application 10/316,272

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THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Andeweg US 3,761,702 Sep. 25, 1973
Colthar US 6,454,561 B1 Sep. 24, 2002
The Appellants seek review of the Examiner’s rejection of claims
1-23 under 35 U.S.C. § 103(a) as unpatentable over Andeweg and Colthar.

ISSUE
The issue presented by this appeal is whether those skilled in the art
would understand what is claimed when the claims are read in light of the
Appellants’ Specification.

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. The Appellants’ Specification describes that it is desirable to place
the bottom of the wick in a candle away from the bottom surface of
the candle to prevent burn through, but that if the bottom of the
wick is placed too high, this will limit consumer enjoyment and
result in candle waste, and if the bottom of the wick is placed too
close to the bottom of the candle, burn through and combustion of
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the surface on which the candle is placed can occur. Spec. 2-3,
paras. 5-6.
2. The Appellants’ Specification describes that the candle of the
present invention “includes the advantages of inserting wicks to a
specified depth from the bottom of the candle as a way to address
any issues of burn through, as well as economic advantages to
manufacturing by providing a contour to the candle which allows
for the reclamation of scrap materials.” Spec. 3, para. 8.
3. In particular, the Appellants’ Specification describes a candle 2
having a bottom cavity 20 with a wick hole 26 that “extends . . .
into the cavity 20.” Spec. 7, para. 20; Fig. 2.
4. Wick 10 may be held in place by a small amount of molten fuel
poured of the same or different composition as the candle and/or
the bottom cavity 20 can be filled with scrap wax or new wax,
which may also help maintain the wick at a satisfactory location.
Spec. 8, para. 21 and Spec. 9, para. 23.
5. The Specification describes:
The scrap wax may also help maintain the wick at
a satisfactory location, preventing it from sliding
down. In the absence of scrap wax of course, new
wax can be utilized, and this invention is not meant
to be limited to the use of scrap wax alone.
Alternatively, and assuming that shoulder 30 and
sides 6 remain intact and are strong enough to
maintain the weight of the candle, the bottom
cavity may be left open. The scrap wax does not
prevent the wick from sliding down when a sealing
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wax is utilized, thus explaining why the cavity can
remain unfilled and the wick will extinguish. As
long as the melt point of the sealing wax, the wax
that anchors the wick, is not substantially higher
than the melt point of the formula, the wick will
fall over and will not slide down. When no sealing
wax is utilized the wax placed into the cavity will
help to maintain the wick in its proper location.
We prefer to use sealing wax however to maintain
the placement of the wick at a desired location.
Spec. 9-10, para. 23.
6. In either case, the Appellants’ Specification appears to require
some amount of wax, either sealing wax or filler wax placed in the
bottom cavity, in order to seal the wick hole 26 to achieve
extinguishment of the flame by the molten fuel and prevent the
molten fuel from flowing through the wick hole 26.

PRINCIPLES OF LAW
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted).

ANALYSIS
Independent claim 1 recites “placing the lower wick end a flame
extinguishing distance above the bottom horizontal surface of the candle, in
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the absence of a wick clip engaging the wick, whereby the pool of molten
solid fuel formed by the flame heating the solid fuel extinguishes the flame
upon the consumption of each wick and prior to any contact of the flame or
the molten solid fuel with a surface communicating with the bottom
surface,” and “wherein said flame extinguishing distance is provided by a
bottom cavity formed of said solid fuel candle and extending into the candle
shape inward of the horizontal bottom surface of the candle and is defined
by an inwardmost surface of said candle which is a flame extinguishing
distance from the horizontal bottom surface and which is in communication
with the bottom of each wick cavity.” Independent claim 30 recites
essentially the same limitations.1 We understand these claims to require that
the inwardmost surface of the bottom cavity is in communication with
bottom of each wick cavity and that the pool of molten fuel extinguishes the
flame upon consumption of each wick and prior to any contact of the flame
or molten fuel with a surface upon which the candle rests.
The Appellants’ Specification, however, does not describe an
embodiment in which the inwardmost surface of the candle is in
communication with the bottom of each wick cavity and which is also able
to achieve extinguishment of the flame upon the consumption of each wick
and prior to any contact of the flame or the molten solid fuel with a surface
communicating with the bottom surface of the candle. In fact, these
limitations of the claim appear to be inconsistent with each other, because

1 The only difference in this language of claim 30 is that it uses the word
“anchoring” in place of the word “placing” used in claim 1.
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the Appellants’ Specification appears to require some amount of wax, either
sealing wax or filler wax placed in the bottom cavity, in order to seal the
wick hole 26 to achieve extinguishment of the flame by the molten fuel and
prevent the molten fuel from flowing through the wick hole 26 (Fact 6).2 In
the embodiment in which sealing wax is used at the bottom of the wick, the
sealing wax seals off the wick cavity from the bottom cavity so that the wick
cavity is no longer in communication with the inwardmost surface of the
bottom cavity. In the embodiment in which scrap or new wax is used to fill
in the bottom cavity, the filler wax completely fills the bottom cavity so that
the wick cavity is no longer in communication with the inwardmost surface
of the bottom cavity.
The Appellants appear to argue that merely by placing the lower wick
end a flame extinguishing distance above the bottom horizontal surface of
the candle, the pool of molten solid fuel will extinguish the flame upon the
consumption of the wick and prior to any contact of the flame or the molten
solid fuel with a surface on which the candle rests. For example, the
Appellants argue, “Andeweg does not teach a cavity for purposes of
extinguishing a wick by providing a flame extinguishing distance between
an inwardmost surface of a bottom cavity and a bottom horizontal surface of
the candle in accordance with appellants’ claims.” App. Br. 9-10. It is our

2 Although the Specification describes a wick hole 26 that “extends … into
the cavity 20” (Fact 3); it also describes that the wick hole 26 is sealed
(Facts 4 & 5) and does not describe that the wick cavity is “in
communication with” the inwardmost surface of the bottom cavity, as
claimed.
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understanding, however, from a reading of the Appellants’ Specification that
the purpose of the bottom cavity is for accurate placement of the wick at a
certain distance above the bottom horizontal surface of the candle to prevent
burn through, and that the purpose of the sealing wax or filler wax used to
fill the bottom cavity is to ensure anchoring of the wick and to allow the
molten fuel to pool sufficiently to extinguish the flame upon consumption of
the wick (Facts 1, 2, 4, & 5). It is not merely by the placement of the wick at
a particular distance above the bottom horizontal surface of the candle that
causes the molten fuel to extinguish the flame upon consumption of the
wick, but it is also the placement of sealing wax or filler wax below the
bottom of the wick that enables the molten fuel to pool sufficiently upon
consumption of the wick in order to extinguish the flame.
Thus, the requirements in claims 1 and 30 that the inwardmost surface
of the bottom cavity is in communication with the bottom of each wick
cavity and that the candle is also able to achieve extinguishment of the flame
upon the consumption of each wick and prior to any contact of the flame or
the molten solid fuel with a surface communicating with the bottom surface
of the candle are inconsistent with each other and with the description of the
invention in the Specification and, as such, render the claim ambiguous and
indefinite. Thus, we enter a new ground of rejection of claims 1-23 under
35 U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim what Appellants’ intend as their
invention.
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As a procedural matter, we reverse the rejection of claims 1-23 under
§ 103. A rejection of a claim, which is so indefinite that “considerable
speculation as to meaning of the terms employed and assumptions as to the
scope of such claims” is needed, is likely imprudent. See In re Steele, 305
F.2d 859, 862 (CCPA 1962) (holding that the examiner and the board were
wrong in relying on what at best were speculative assumptions as to the
meaning of the claims and basing a rejection under 35 U.S.C. § 103
thereon.) We find it imprudent to speculate as to the scope of claims 1 and
20 in order to reach a decision on the obviousness of the claimed subject
matter under § 103. It should be understood, however, that our reversal is
based on the indefiniteness of the claimed subject matter and does not reflect
on the merits of the underlying rejection.

CONCLUSION
We conclude that those skilled in the art would not understand what is
claimed by claims 1 and 20, or their respective dependent claims 2-19 and
21-23, when the claims are read in light of the Appellants’ Specification.

DECISION
We enter a new ground of rejection of claims 1-23 under 35 U.S.C.
§ 112, second paragraph. We reverse, as a matter of procedure, the rejection
of claims 1-23 under 35 U.S.C. § 103 as unpatentable over Andeweg and
Colthar.

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This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2008). 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 Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(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 proceeding
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. . . .

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) (2007).

REVERSED; 37 C.F.R. § 41.50(b)

vsh

Appeal 2008-5703
Application 10/316,272

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S.C. JOHNSON & SON, INC.
1525 HOWE STREET
RACINE WI 53403-2236