Ex Parte Hechtman

Patent Trial and Appeal Board

Mar 19, 2018

12207423 (P.T.A.B. Mar. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/207,423 09/09/2008
29335 7590 03/21/2018
ROSENBAUM IP
1480 TECHNY ROAD
NORTHBROOK, IL 60062
FIRST NAMED INVENTOR
Aaron Hechtman
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.
608 P002 1699
EXAMINER
HICKS, ROBERT J
ART UNIT PAPER NUMBER
3728
NOTIFICATION DATE DELIVERY MODE
03/21/2018 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):
patents@rosenbaumip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AARON HECHTMAN
Appeal2017-000700
Application 12/207 ,423
Technology Center 3700
Before CHARLES N. GREENHUT, BRETT C. MARTIN, and
THOMAS F. SMEGAL, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Aaron Hechtman (Appellant) 1 seeks our review under 35 U.S.C. § 134
of the Examiner's rejections2 under 35 U.S.C. § 112, first paragraph, of
claims 1--4, 6, and 8-14 as failing to comply with the written description
requirement; under 35 U.S.C. § 112, second paragraph, of claims 1--4, 6, and
8-14 as being indefinite for failing to particularly point out and distinctly
claim the subject matter which the inventor regards as the invention; and
under 35 U.S.C. § 103(a) (1) of claims 1-3, 6, 13, and 14 as unpatentable
over Guo (US 5,169,025, iss. Dec. 8, 1992) and Henderson (US 4,648,525,
1 Appellant self-identifies as the real party in interest. Br. 3.
2 Appeal is taken from the adverse decision of the Examiner as set forth in
the Final Office Action, dated May 14, 2013 ("Final Act.").
Appeal2017-000700
Application 12/207,423
iss. Mar. 10, 1987); (2) of claims 4 and 8 as unpatentable over Guo,
Henderson, and McCartney (US 2,865,588, iss. Dec. 23, 1958); and (3) of
claims 9-12 as unpatentable over Guo, Henderson, McCartney, and Senft
(DE 3810253 Al, pub. Oct. 13, 1988). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, which is reproduced below,
illustrates the claimed subject matter, with disputed limitation emphasized.
1. A hot item handling article comprising:
a flat heat-resistant member having a coaster region for
placement underneath a hot item, and two side regions for
gripping said hot item;
wherein said coaster region being separated from said two
side regions via two opposing contours being attached to a
remainder of said member at a back region and said side regions
are connected to said back region member;
and wherein said two side regions are separated from said
coaster region along said contoured edges extending from the
back region to a front edge of said member;
and wherein said front edge comprises the coaster region
and side regions along the same edge of the member under the
condition that said member is placed on a flat surface;
and wherein said contours curve inward toward the front
edge and reverse direction to extend outward toward side edges
of said member in a front region of said member out of the front
edge of said member.
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Appeal2017-000700
Application 12/207,423
ANALYSIS
First Ground of Rejection: Lack of Written Description of claims 1-4,
6, and 8-14
The purpose of the written description requirement in 35 U.S.C.
§ 112, first paragraph, is to "clearly allow persons of ordinary skill in the art
to recognize that [the inventor] invented what is claimed." Ariad Pharms.,
Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane)
(alteration in original) (quoting Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555,
1563 (Fed. Cir. 1991)). "[T]he test for sufficiency is whether the disclosure
of the application relied upon reasonably conveys to those skilled in the art
that the inventor had possession of the claimed subject matter as of the filing
date." Id. This test "requires an objective inquiry into the four comers of
the specification from the perspective of a person of ordinary skill in the
art." Id. "Based on that inquiry, the specification must describe an
invention understandable to that skilled artisan and show that the inventor
actually invented the invention claimed." Id.
Regarding the rejection of independent claim 1 for failing to comply
with the written description requirement in reciting" ... wherein said front
edge comprises the coaster region and side regions along the same edge of
the member under the condition that said member is placed on a flat surface .
. . ,"the Examiner determines the "claim language constitutes new matter,
because the original disclosure does not support this claim language, as
Figure 1 shows the front edge of the coaster region and the front edges of the
side regions are not along the same edge," further explaining "the side
portions and the coaster region on the front edge form three separate edges."
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Appeal2017-000700
Application 12/207,423
Ans. 3 (alterations in original) (referring to an annotated version of Figure 1
of the Specification, reproduced on page 3 of the Answer).
Appellant first refers to paragraph 21 of the Specification for
describing that the side and coaster regions return to a planar configuration
when "placed on a flat surface." Br. 12. Appellant also refers to paragraph
12 of the Specification for disclosing that "[i]n various embodiments, the
article is generally substantially rectangular in shape," contending that
[ s ]ince a rectangle by definition has only four sides (or edges),
one skilled in the art can only come to the conclusion that when
the article is on a planar surface, the two side regions form two
sides, the back region a third side, and the forth side is
substantially rectangular using the side regions and coaster
reg10n.
Id. at 12-13. However, we do not find these portions of Appellant's
Specification to disclose the front edge of the coaster region and the front
edges of the side regions to be along the same edge.
Appellant also asserts that Figure 1 of the drawings shows the article
is a substantially rectangular shape. Id. at 13. However, Appellant does not
respond to the Examiner's reasoning relating to the annotated version of
Figure 1 of the Specification. 3
Based on the foregoing, we agree with the Examiner that "the original
disclosure does not support this claim language, as the front edges of the
coaster region and the side region do not lie on the same plane, when placed
in a flat position, as evidenced in Figure 1." Ans. 13.
3 Appellant did not file a Reply Brief.
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Appeal2017-000700
Application 12/207,423
Accordingly, we sustain the Examiner's rejection of claims 1--4, 6,
and 8-14, under 35 U.S.C. § 112, first paragraph, as failing to comply with
the written description requirement.
Second Ground of Rejection: Indefiniteness
When the claim terms are read in light of the contradicting
Specification, as discussed above, we agree with the Examiner's conclusion
that claims 1--4, 6, and 8-14 are indefinite for failing to particularly point out
and distinctly claim the subject matter which applicant regards as the
invention, due to reciting" ... wherein said front edge comprises the coaster
region and side regions along the same edge of the member under the
condition that said member is placed on a flat surface ... " Final Act. 3
(alterations in original). The Examiner continues by explaining "[t]he
original disclosure does not support this claim language, as Figure 1 shows
the front edge of the coaster region and the front edges of the side regions
are not along the same edge." Id.
A claim fails to comply with 35 U.S.C. § 112, second paragraph,
"when it contains words or phrases whose meaning is unclear." In re
Packard, 751 F.3d 1307, 1310, 1322 (Fed. Cir. 2014) (approving, for pre-
issuance claims, the standard from MPEP § 2173.05(e)). A "satisfactory
response" to an indefiniteness rejection "can take the form of a modification
of the language identified as unclear, a separate definition of the unclear
language, or, in an appropriate case, a persuasive explanation for the record
of why the language at issue is not actually unclear." Id. at 1311. Although
claims may be understandable when read in isolation, where, as here, claims
are read, as they must be, in light of the Specification, and the claims cannot
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Appeal2017-000700
Application 12/207,423
be reconciled with that Specification because they are inherently inconsistent
with the description, definitions, and examples appearing therein, an
indefiniteness rejection is appropriate. See In re Cohn, 438 F.2d 989, 993
(CCPA 1971) (discussed in MPEP § 2173.03).
In opposing the Examiner's rejection, Appellant merely repeats,
substantially verbatim, the arguments previously advanced in opposition to
the Examiner's rejection of the claims as failing the written description
requirement that we did not find persuasive of Examiner error. See Br. 14--
1 7. Thus, we also agree with the Examiner that "the scope of claim 1 is
indefinite, as it is not clear what the claimed invention is. "4 Ans. 13.
Accordingly, we sustain the Examiner's rejection of claims 1--4, 6,
and 8-14, under 35 U.S.C. § 112, second paragraph, as being indefinite for
failing to particularly point out and distinctly claim the subject matter which
the inventor regards as the invention.
Third-Fifth Grounds of Rejection: Obviousness of claims 1-3, 6, 13,
and 14 over Guo and Henderson; of claims 4 and 8 over Guo, Henderson,
and McCartney; and of claims 9-12 over Guo, Henderson, McCartney, and
Senft
We do not sustain the Examiner's obviousness rejections of claims 1-
3, 6, 13, and 14 over Guo and Henderson; of claims 4 and 8 over Guo,
Henderson, and McCartney; and of claims 9-12 over Guo, Henderson,
4 In addition to the basis for the Examiner's indefinite finding, we note that
independent claim 1 contains several terms, such as "said back region
member," "said contoured edges," and "side edges," for which there is no
antecedent basis.
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Application 12/207,423
McCartney, and Senft, because those grounds of rejection are necessarily
based on speculative assumptions as to the meaning of the claims. See In re
Steele, 305 F.2d 859, 862-63 (CCP A 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 on the adequacy of the
prior art evidence applied in support of the Examiner's rejection.
DECISION
We AFFIRM the Examiner's rejections of claims 1--4, 6, and 8-14
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement, and under 35 U.S.C. § 112, second paragraph, as
being indefinite.
We REVERSE the Examiner's rejection of claims 1-3, 6, 13, and 14
as unpatentable over Guo and Henderson, of claims 4 and 8 as unpatentable
over Guo, Henderson, and McCartney, and of claims 9-12 as unpatentable
over Guo, Henderson, McCartney, and Senft.
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)(l )(iv).
AFFIRMED
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