Ex Parte Hatch

Patent Trial and Appeal Board

Apr 30, 2013

11588675 (P.T.A.B. Apr. 30, 2013)

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.
11/588,675 10/27/2006 Thomas Clyde Hatch 3720
7590 04/30/2013
Thomas Clyde Hatch
867 East 300 South
Salt Lake City, UT 84102
EXAMINER
GRAHAM, GARY K
ART UNIT PAPER NUMBER
3727
MAIL DATE DELIVERY MODE
04/30/2013 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte THOMAS CLYDE HATCH
____________________

Appeal 2011-003205
Application 11/588,675
Technology Center 3700
____________________

Before: WILLIAM V. SAINDON, NEIL T. POWELL, and
BEVERLY M. BUNTING, Administrative Patent Judges.

POWELL, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/588,675

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
4, 7-20, and 22-26. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE CLAIMED SUBJECT MATTER
Independent claim 1, reproduced below, is illustrative of the appealed
subject matter.
1. A device for cleaning, dusting or
applying disinfectants to a surface comprising:
a.) a sheath having a first surface and a
second surface, said sheath having a first position
and a second position, in said first position said
first surface faces inward defining a first opening
and a first chamber, and said second surface faces
outward, and in said second position said first
surface faces outward and said second surface
faces inward defining a second opening and a
second chamber;
b.) at least one pad element affixed to said
first surface, said pad element for cleaning, dusting
or applying disinfectants as said sheath assumes
said second position;
c.) seal means associated with at least one of
said first and second surfaces to close said first
chamber for storing said pad element before use or
after use; and wherein said sheath is constructed
and arranged to fit an implement head, said
implement head having as interior surface and an
exterior surface, said interior surface defining a
passage for receiving said sheath in a first position
said exterior surface for receiving said sheath in
said second position.

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Rojko US 4,902,283 Feb. 20, 1990
Heise US 4,937,881 Jul. 3, 1990
Suzuki US 6,047,435 Apr. 11, 2000
Brower US 6,250,829 B1 June 26, 2001

REJECTIONS
Appellant seeks our review of the following rejections.
1. Claims 1-4, 7-20, and 22-26 stand rejected under 35 U.S.C. § 112,
second paragraph, as indefinite.
2. Claims 1-4, 7, and 12 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Rojko.
3. Claims 1-4, 7, and 12 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Brower.
4. Claims 8 and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Rojko and Suzuki.
5. Claims 8 and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Brower and Suzuki.
6. Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Rojko and Heise.

ANALYSIS
Rejection of Claims 1-4, 7-20, and 22-26 as Indefinite
The Examiner provides specific reasons that each of the claims
includes some ambiguity, and the Examiner offers suggestions for correcting
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the ambiguity. Ans. 2-3. Appellant responds that “the claims are reasonably
clear,” but that Appellant stands ready to implement the Examiner’s
suggestions, “[m]any of [which] are in the nature of typographical errors.”
Br. 22. During prosecution, a claim is properly rejected as indefinite if it is
“amenable to two or more plausible claim constructions.” Ex parte
Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential). The
Examiner’s observations establish a viable basis for concluding that each of
the rejected claims is amenable to two or more plausible constructions, and
Appellant’s blanket argument that the claims “are reasonably clear” does not
apprise us of error in the Examiner’s position. The rejection of claims 1-4,
7-20 and 22-26 under 35 U.S.C. § 112 is sustained.

Rejection of Claims 1-4, 7, and 12 as Anticipated by Rojko
With respect to the anticipation rejection based on Rojko, Appellant
argues claims 1-4, 7, and 12 as a group. Br. 14-16 and 18-19. We select
claim 1 as representative, treating claims 2-4, 7, and 12 as standing or falling
with representative claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The dispute regarding this rejection revolves around the claim 1
limitations “wherein said sheath is constructed and arranged to fit an
implement head, said implement head having as interior surface and an
exterior surface, said interior surface defining a passage for receiving said
sheath in a first position said exterior surface for receiving said sheath in
said second position.” The Examiner asserts that this claim language recites
an intended use of the claimed sheath. Ans. 6. In connection with this, the
Examiner finds that Rojko discloses a sheath evertable between first and
second positions that is capable of meeting the claimed intended use, as
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Rojko’s disclosure that the sheath fits over a person’s hand illustrates that
the sheath could fit an implement head. Id.
Appellant concedes that it “may be so” that Rojko’s sheath could fit
an implement head, as the Examiner finds. Br. 15. But Appellant argues
that this finding does not address the remaining portions of the disputed
claim language relating to receipt of the sheath within a passage of the
implement head in the first position and on the exterior surface of the
implement head in the second position. Id. Appellant advances that the
disputed claim language “recite[s] the cooperating features of the sheath
dictated by the construction and arrangement of the sheath, to the implement
head, but [does] not explicitly recite as a feature of the device the implement
head.” Id. at 14. Rebuffing the Examiner’s finding that Rojko’s sheath is
capable of the use recited in the disputed claim language, Appellant argues
that “[n]ovelty is not based on ‘would, could, or should’” and that the
Examiner has the burden to establish that the prior art meets the claim
limitations. Id. at 18-19.
Given Appellant’s express statement that the device of claim 1 does
not include the implement head, and given that the disputed claim language
does not explicitly disclose any structural feature of the claimed “sheath,”
we agree with the Examiner’s conclusion that the disputed claim language
recites an intended use/function of the claimed sheath. Consistent with the
Examiner’s analysis, if a prior art structure is capable of performing an
intended use/function recited in a claim, the prior art structure meets the
claim language. See, e.g., In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir.
1997) (affirming anticipation rejection of appellant’s claim directed to a
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dispensing top for dispensing popcorn based on factual finding that the prior
art structure would be capable of dispensing popcorn).
The Specification indicates that an evertable sheath that fits over an
implement head is capable of meeting the use/function recited in the
disputed claim language. See Spec., paras. [0015]-[0017] and [0024]. Thus,
the Examiner’s undisputed finding that Rojko discloses an evertable sheath
that can fit over an implement head establishes that Rojko’s sheath has the
same structure that Appellant discloses as meeting the claimed use/function.
This creates a prima facie case of anticipation, thereby shifting the burden to
Appellant to provide evidence or explanation of why Rojko’s sheath would
not meet the disputed claim language. See Schreiber, 128 F.3d at 1478; In
re Best, 562 F.2d 1252, 1255 (CCPA 1977); In re Spada, 911 F.2d 705, 708
(Fed. Cir. 1990).
Appellant provides no such evidence or explanation. Because the
disputed claim language does not claim the implement head but only
requires a sheath capable of interacting with a certain type of implement
head in a certain way, Appellant does not apprise us of error in the rejection
by noting that Rojko does not disclose an implement head and that the
Examiner identifies allowable subject matter in claims that do include the
implement head. See, e.g., Br. 15. As the Examiner correctly notes, the
indication that the combination of a certain configuration of an implement
head with a certain configuration of sheath defines allowable subject matter
does not dictate that components of the combination separately define
patentable subject matter. See Ans. 11. Accordingly, we sustain the
rejection of claims 1-4, 7, and 12 as anticipated by Rojko.

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Rejection of Claims 1-4, 7-20, and 22-26 as Anticipated by Brower
With respect to the anticipation rejection based on Brower, Appellant
argues claims 1-4, 7, and 12 as a group. Br. 16-19. We select claim 1 as
representative, treating claims 2-4, 7, and 12, which depend directly or
indirectly from claim 1, as standing or falling with representative claim 1.
As Appellant notes, the substance of the dispute regarding whether
Brower meets the limitations of claim 1 tracks the dispute over whether
Rojko meets the limitations of claim 1. Br. 16-19. For substantially the
same reasons that Appellant’s arguments do not apprise us of error in the
rejection of claim 1 as anticipated by Rojko, Appellant’s arguments do not
apprise us of error in the rejection of claim 1 as anticipated by Brower.
Accordingly, we sustain the rejection of claims 1-4, 7, and 12 as anticipated
by Brower.

Rejection of Claim 8 as Obvious over Rojko and Suzuki
Noting that claim 8 recites that the sheath “cooperates with an
implement head having an exterior surface and an interior surface,”
Appellant traverses the rejection of claim 8 over Rojko and Suzuki by
arguing that Suzuki does not cure the deficiencies of Rojko with respect to
claim 1. See Br. 19-20. As noted above, Appellant’s arguments do not
apprise us of any deficiency in Rojko with respect to claim 1. To the extent
Appellant contends that the language recited in claim 8 itself adds something
not met by the Examiner’s combination of Rojko and Suzuki, we cannot
agree. Like the language of claim 8, the language of claim 1 does not appear
to include an implement head as part of the claimed device. Furthermore,
even if claim 8 were interpreted to include an implement head as part of the
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claimed device, claim 8 does not tie the implement head recited therein to
the disputed limitations of claim 1, such that claim 8 only adds limitations
separate from the disputed limitations of claim 1. Because Appellant has not
apprised us of error in the Examiner’s finding that Rojko meets the disputed
limitations of claim 1, and because Appellant does not argue that the
combination of Rojko and Suzuki fails to meet the additional limitations of
claim 8, Appellant does not apprise us of error in the rejection of claim 8 as
obvious over Rojko and Suzuki. As such, the rejection of claim 8 under 35
U.S.C. § 103(a) is sustained.

Rejection of Claim 13 as Obvious over Rojko and Suzuki
Regarding claim 13, Appellant argues that
Now with the recitation of the implement head, the
Examiner, by his or her own admission can not ignore the
sheath constructed and arranged to fit an implement head
which implement head has as interior surface and an
exterior surface, the interior surface defining a passage
for receiving the sheath in a first position said exterior
surface for receiving said sheath in the second position.
Br. 20. The Examiner responds that claim 13 recites a generic implement
head without requiring all of the particular features of an implement head
pointed to by Appellant, and that the rejection addresses the use of a generic
implement head with the sheath recited in claim 1. Ans. 12.
We agree with the Examiner. As discussed above, the disputed
language of claim 1 merely requires a sheath capable of interacting with a
particular type of implement head; it does not require the actual presence of
that particular type of implement head, nor does it require actually
interacting with that particular type of implement head. The Examiner has
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established an unrebutted prima facie case that Rojko discloses an evertable
sheath capable of interacting with the particular type of implement head
discussed in claim 1. The language of claim 13 adds to the claimed structure
an implement head, but it does not add the particular implement head
referred to in claim 1, it adds only “an implement head,” i.e., any implement
head. Thus, Appellant’s arguments do not apprise us of error in the rejection
of claim 13 as obvious over Rojko and Suzuki. As such, the obviousness
rejection of claim 13 is sustained.

Rejection of Claims 8 and 13 as Obvious over Brower and Suzuki
Appellant does not advance any substantive arguments regarding the
rejection of claims 8 and 13 as obvious over Brower and Suzuki. See Br. 14-
22. Accordingly, we affirm this rejection.

Rejection of Claim 11 as Obvious over Rojko and Heise
Appellant traverses the rejection of claim 11 based on Rojko and
Heise by arguing that the addition of Heise does not cure the deficiencies of
Rojko with respect to claim 1. See Br. 21. This argument does not apprise
us of error in the rejection of claim 11 as obvious over Rojko and Heise, as
Appellant does not apprise us of error in the Examiner’s finding that Rojko
meets the disputed language of claim 1. As such, the obviousness rejection
of claim 11 is sustained.

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DECISION
We affirm the Examiner’s decision rejecting claims 1-4, 7-20, and 22-
26.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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