UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PATRICK WILLIAM MURRAY
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Appeal 2012-004263
Application 11/905,989
Technology Center 3600
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Before JOSEPH A. FISCHETTI, GAY ANN SPAHN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.
SPAHN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
rejection of claims 1-4, 6-11, 14-19, and 22. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM-IN-PART.
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Claimed Subject Matter
Claim 1, reproduced below with emphasis and paragraph indicators
added, is illustrative of the appealed subject matter.
1. A display stand for retail and merchandising, the
display stand comprising:
(a) a vertical signboard that is the primary surface for
supporting and displaying at least two robotic vacuum cleaners
to be viewed by consumers, the vertical signboard having a
height not substantially higher than a conventional household
vacuum cleaner;
(b) a base having a shape not substantially wider than a
conventional household upright vacuum cleaner and configured
to rest on a support surface;
(c) a first mounting area configured on the vertical
signboard, the first mounting area being raised above the
support surface and the base, the first mounting area being
configured to support a first robotic vacuum cleaner having a
width not substantially wider than the width of the base, such
that the first robotic vacuum cleaner is readily inspected by a
consumer; and
(d) a second mounting area configured on the vertical
signboard, the second mounting area being raised above the
support surface, the base, and the first mounting area, the
second mounting area being configured to support a second
robotic vacuum cleaner having a width not substantially wider
than the width of the base, such that the second robotic vacuum
cleaner is readily inspected by a consumer,
(e) wherein the base of the display stand and the vertical
signboard are configured to, together, generally mimic the
configuration of a conventional upright vacuum cleaner,
including a cleaning head and an upright handle, and thereby,
when the first and second robotic vacuum cleaners are mounted
on the first and second mounting areas, enable the display stand
to homogeneously fit in a retail display of a plurality of
conventional upright vacuum cleaners in substantially the same
manner and space as the plurality of conventional upright
vacuum cleaners.
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Independent claim 11 is directed to “[a] display stand” and includes,
inter alia, similar limitations to those highlighted in claim 1 as quoted supra.
Br., Clms. App’x.
Independent claim 18 is directed to “[a] method of displaying a
robotic vacuum cleaner” and includes a step of mounting the robotic vacuum
cleaner on a display stand which includes, inter alia, similar limitations to
those highlighted in claim 1 as quoted supra. Id.
Rejections
The following Examiner’s rejections are before us for review:
I. claims 1, 11, 14, 18 under 35 U.S.C. § 112, second paragraph,
as indefinite for failing to distinctly claim and particularly point out the
subject matter which Appellant regards as the invention;
II. claims 1-4, 6-11, and 14-19 under 35 U.S.C. § 103(a) as
unpatentable over Fell (US 2005/0072892 A1, published Apr. 7, 2005); and
III. claim 22 under 35 U.S.C. § 103(a) as unpatentable over Fell
and Shypula (US 4,245,414, issued Jan. 20, 1981).
OPINION
Rejection I – Indefiniteness
Independent claims 1, 11, and 18
Appellant argues claims 1, 11, and 18 as a group, we select claim 1 as
the representative claim, and claims 11 and 18 fall with claim 1. See Br. 7-
9; see also 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner determines that claim 1 is indefinite because “the term
‘conventional’ does not clearly set forth the metes and bounds of the claimed
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structure.” Ans. 4. More particularly, the Examiner explains that “[t]here is
no single style o[r] size of vacuum cleaner that can be said to be
conventional,” and “[i]f the specific size of the display is critical to the
invention, it should be clearly and specifically set out in the claim(s).” Ans.
4-5.
Appellant argues that “claims covering a height ‘not substantially
higher than a conventional household vacuum cleaner,’ would be readily
understood, and its scope would be easily ascertained, by one skilled in the
art of retail display design,” because “any shopper that has viewed the
available vacuums at, for example, Target, Walmart, or Sears would
appreciate that there are conventional vacuum sizes and styles.” Br. 8.
Emphasis added.
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 [S]pecification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted).
The word “conventional” appears in paragraphs (a), (b), and (e) in
claim 1 as quoted supra. In paragraph (a) of claim 1, the claim language of
“a conventional household vacuum cleaner” is utilized to define the height
of a vertical signboard of the display stand, i.e., “the vertical signboard
having a height not substantially higher than a conventional household
vacuum cleaner.” Br., Clms. App’x. Emphasis added. In applying the test
for definiteness under 35 U.S.C. § 112, second paragraph, to the word
“conventional” as used in paragraph (a) of claim 1, one of ordinary skill in
the art would not understand what is claimed when claim 1 is read in light of
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the Specification because, as indicated by the Examiner, there are many
different styles and/or sizes of “conventional” household vacuum cleaners.
See Ans. 4-5. For instance, styles of conventional household vacuum
cleaners include upright vacuum cleaners, canister vacuum cleaners, stick
vacuum cleaners, handheld vacuum cleaners, and robotic vacuum cleaners,
to name a few, and each of these styles of vacuum cleaners have widely
varying heights.
A claim may be rendered indefinite under 35 U.S.C. § 112, second
paragraph, by reference to an object that is variable. For example, the Board
has held that a limitation in a claim to a bicycle that recited “said front and
rear wheels so spaced as to give a wheelbase that is between 58 percent and
75 percent of the height of the rider that the bicycle was designed for” was
indefinite because the relationship of parts was not based on any known
standard for sizing a bicycle to a rider, but on a rider of unspecified build.
See Ex parte Brummer, 12 USPQ2d 1653, 1655 (BPAI 1989). Similarly,
claim 1’s recitation of “conventional” in the claim language of “a
conventional household vacuum cleaner” as it relates to the height of the
vertical signboard of the display stand renders claim 1 indefinite, because
the many styles of conventional household vacuum cleaners have widely
varying sizes, particularly in terms of heights, so that a person of ordinary
skill in the art would not understand the metes and bounds of claim 1.
The word “conventional” also appears in the claim language of “a
conventional household upright vacuum cleaner” in paragraph (b) of claim 1
as quoted supra. In paragraph (b), the claim language of “a conventional
household upright vacuum cleaner” is utilized to relate to the width of the
shape of the base of the display stand, i.e., “a base having a shape not
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substantially wider than a conventional household upright vacuum cleaner.”
Br., Clms. App’x. Emphasis added. Although Appellant’s Specification
defines “an upright vacuum cleaner . . . as a vacuum that stands upright
without support and has a handle that may rise to about waist height” (see
Spec. 2, para. [003]), we agree with the Examiner that a person of ordinary
skill in the art would not understand the claim term “conventional” in the
context of defining the type of household upright vacuum cleaner on which
the base width of the display stand is dependent, because the definition of
“an upright vacuum cleaner” in Appellant’s Specification does not specify
the “waist height” of whom. Thus, one of ordinary skill in the art would not
be able to understand the metes and bounds of the word “conventional” in
paragraph (b) of claim 1 as it relates to “an upright vacuum cleaner,”
because the upright vacuum cleaner is defined by reference to an unspecified
waist height.
Finally, the word “conventional” also appears in the claim language of
“a conventional upright vacuum cleaner” in paragraph (e) of claim 1 as
quoted supra. Emphasis added. Paragraph (e) of claim 1 requires that
together “the base of the display stand and the vertical signboard are
configured to . . . generally mimic the configuration of a conventional
upright vacuum cleaner.” Br., Clms. App’x. Emphasis added. This
mimicking “enable[s] the display stand to homogeneously fit in a retail
display of a plurality of conventional upright vacuum cleaners in
substantially the same manner and space as the plurality of conventional
upright vacuum cleaners.” Id. Emphasis added. The claim term
“configuration” is not defined in Appellant’s Specification. However, the
ordinary and customary meaning of the word “configuration” is “relative
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arrangement of parts or elements, as (1): SHAPE (2): contour of land <~ of
the mountains> (3): functional arrangement
.” Merriam-Webster’s Collegiate® Dictionary,
Tenth Edition, 1997. Thus, one of ordinary skill in the art would understand
claim 1 to be defining the base of the display stand together with the vertical
signboard to generally mimic the relative arrangement of parts or elements,
as shape, contour, and/or functional arrangement of “conventional” upright
vacuum cleaners. Since “conventional” upright vacuum cleaners do not
have any single relative arrangement of parts or elements, such as shape,
contour, and or functional arrangement, the Appellant’s reliance on the word
“conventional” to define the configuration of upright vacuum cleaners which
is generally mimicked by the display stand renders claim 1 indefinite so that
the metes and bounds of the claim scope cannot be determined.
Accordingly, we sustain the Examiner’s rejection of claim 1, and
claims 11 and 18 which fall therewith, under 35 U.S.C. § 112, second
paragraph, as being indefinite.
Dependent claim 14
Claim 14 depends from claim 11, and recites that “the vertical
signboard extends upwardly from the base to about a waist height of a
typical consumer.” Br., Clms. App’x. Emphasis added.
The Examiner determines that “[c]laim 14 is indefinite in that ‘waist
height of a typical consumer’ does not clearly set forth the metes and bounds
of the claimed structure.” Ans. 4.
Appellant argues that claim 14’s limitation of “‘waist height of a
typical consumer’ is not indefinite because it can be readily and certainly
determined by measuring the waist heights of typical consumers and
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averaging the measurements.” Br. 9. Appellant also argues that: (1) “[t]his
limitation clearly sets forth the metes and bounds of the claimed structure,
because a display having a vertical signboard that extends upwardly from its
base to a height that is not about a waist height of a typical consumer is not
covered by the pending claims”; (2) “[t]his claim limitation would be readily
understood, and its scope would be easily ascertained, by one skilled in the
art of display design”; and (3) “[t]his limitation also makes clear, to those
skilled in the art, the boundaries of the subject matter for which protection is
sought and properly serves the notice function required by section 112.” Id.
We are not persuaded by Appellant’s argument because averaging the
measurements of the waist heights of typical consumers is not
commensurate with the scope of claim 14’s language which requires “waist
height of a typical consumer.” The term “typical” in the phrase “typical
consumer” does not connote that a mathematical average is calculated to
identify what is “typical.” In addition, Appellant’s Specification does not
define what is meant by the claim term “typical consumer,” and since
consumers come in widely varying sizes with widely varying waist heights,
we agree with the Examiner that “[n]o ‘typical consumer’ can be identified
that will clearly provide[] basis for such a limitation.” Ans. 7.
Accordingly, we sustain the Examiner’s rejection of claim 14 under
35 U.S.C. § 112, second paragraph, as being indefinite.
Rejections II and III – Obviousness based on Fell alone
and on the combination of Fell and Shypula, respectively
Having determined that independent claims 1, 11, and 18, and
dependent claim 14 are indefinite for the reasons discussed supra, we do not
sustain the rejections of claims 1-4, 6-11, 14-19, and 22 under 35 U.S.C.
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§ 103(a), because to do so would require speculation as to the scope of the
claims. See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962) (holding that
the Board erred in affirming a rejection of indefinite claims under 35 U.S.C.
§ 103(a), because the rejection was based on speculative assumptions as to
the meaning of the claims).
DECISION
We AFFIRM the Examiner’s rejection of claims 1, 11, 14, and 18
under 35 U.S.C. § 112, second paragraph, as indefinite.
We REVERSE the Examiner’s rejections of: claims 1-4, 6-11, and
14-19 under 35 U.S.C. § 103(a) as unpatentable over Fell; and claim 22
under 35 U.S.C. § 103(a) as unpatentable over Fell and Shypula.
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).
AFFIRMED-IN-PART
Klh
