Ex Parte Sheffield et al

Patent Trial and Appeal Board

Aug 5, 2016

13675165 (P.T.A.B. Aug. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/675, 165 11113/2012
52245 7590 08/09/2016
Parks IPLLC
730 Peachtree Street, NE
Suite 600
Atlanta, GA 30308
FIRST NAMED INVENTOR
Douglas M. Sheffield
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.
2300-007CON 9511
EXAMINER
WOOD, KIMBERLY T
ART UNIT PAPER NUMBER
3631
NOTIFICATION DATE DELIVERY MODE
08/09/2016 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):
pair_parks@firsttofile.com
docketing@parksip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOUGLAS M. SHEFFIELD and TAMARA K. SHEFFIELD
Appeal2014-007184
Application 13/675,165
Technology Center 3600
Before KEN B. BARRETT, EDWARD A. BROWN, and
FREDERICK C. LANEY, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEivIENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-20. Br. 5. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE and enter a NEW GROUND OF REJECTION.
CLAIMED SUBJECT MATTER
Appellant's disclosure relates to "item holders and, more particularly,
to portable item holders that vacuum mount to surfaces." Spec. 1, 11. 11-12.
1 The Appeal Brief identifies the named co-inventors, Douglas M. Sheffield
and Tamara K. Sheffield, as the real party in interest. Br. 3.
Appeal2014-007184
Application 13/675,165
Claims 1, 12, and 18 are independent. Claim 1, reproduced below,
illustrates the claimed subject matter:
1. An item holder, mountable by suction on a generally
smooth mounting surface, comprising:
a deformable body including:
a convex outer surface that is substantially free of
protrusions;
a concave inner surface opposite the convex outer
surface, the concave inner surface forming a concavity;
and
an edge extending around the convex outer surface
and the concave inner surface of the body;
wherein:
the deformable body is shaped to form in the body
an elongate void extending through the deformable body,
between the concave inner surface and the convex outer
surface where the concave inner surface is concave and the
convex outer surface is convex, in a direction that is
generally parallel to the mounting surface during use of
the holder;
the elongate void formed by the deformable body
terminates at opposing openings including of a first
opening opposite a second opening;
the deformable body is deformable from an
undeformed shape to an actuated shape to mount the
holder on the mounting surface by positioning the inner
surface of the body adjacent the mounting surface when
the body is in its undeformed shape thereby forming a
cavity between the body and the mounting surface and
deforming the body to its actuated shape thereby sealing
the body against the mounting surface and forcing fluid
out of the cavity to create a suction between the body and
the mounting surface thereby securing the body to the
mounting surface; and
the body defines a suction portion needed for
creating the suction between the body and the mounting
surface; and
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Application 13/675,165
a link component extending into the first opening, through
the elongate void, and out of the second opening.
Appeal Br. 19-20 (Claims App.).
REJECTIONS
I. Claims 1-20 stand rejected under 35 U.S.C. § 112, first
paragraph, enablement requirement.
II. Claims 1-3, 5-8, 10-16, 18, and 19 stand rejected under 35
U.S.C. § 103(a) as unpatentable over SUX (NPL document- SUX
http://flingprom.com (last visited Dec. 10, 2007)) and Thomas (US
4,976, 172, issued Dec. 11, 1990).
III. Claim 9 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over SUX, Thomas, and Sheffield, Jr. (US 6,136,392, issued
Oct. 24, 2000).
IV. Claims 1-8 and 10-20 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over SUX and Cedarstaff (US 3, 126, 603, issued March 31,
1964).
V. Claim 9 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over SUX, Cedarstaff, and Sheffield, Jr.
ANALYSIS
Rejection I
Claim 1 recites "a concave inner surface opposite the convex outer
surface, the concave inner surface forming a concavity," and that
the deformable body is shaped to form in the body an elongate
void extending through the deformable body, between the
concave inner surface and the convex outer surface where the
concave inner surface is concave and the convex outer surface is
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Application 13/675,165
convex, in a direction that is generally parallel to the mounting
surface during use of the holder.
Br. 19 (Claims App.) (emphases added). Claims 12 and 18 also recite these
same limitations. Id. at 21-23 (Claims App.).
For the limitation "where the concave inner surface is concave and the
convex outer surface is convex," Appellants assert that "the language was
recited only to emphasize existing language in claim 1 - i.e., that the concave
surface is concave and the convex surface is convex, and the claim recited
already that the void extended between the convex and concave surfaces."
Br. 18. Appellants indicate that support for this limitation is found at the
following locations in the application: Abstract; page 2, lines 14--16; page 5,
lines 27-32; and page 24, lines 6-9 of the Specification; and Figure 14. Id.
at 7, 18.
We note that Figure 14 shows an item holder 150 including flexible
body 152, outer surface 154, inner surface 156, and hole 158 adjacent edge
160. See Spec. 24, 11. 23-26; Fig. 14.
The Examiner finds that the Specification and drawings do not
disclose "the void terminating in opposite openings between the concave and
convex surfaces," but disclose "the void terminating in opposite openings
near the distal end of the body beyond the concave/convex surfaces and
beyond the range of the concave/convex surfaces but between the inner and
outer surface of the body." Final Act. 2-3 (emphases added). Particularly,
the Examiner finds that the Specification discloses that inner surface 156 has
a concave portion and outer surface 154 has a convex portion above elongate
void 158, and that elongate void 158 is located within a protrusion near edge
160. Ans. 16 (see annotated Fig. 14). The Examiner states that the claim
"attempts to claim an elongated void only in the convex outer surface which
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Application 13/675,165
is convex and the concave inner surface which is concave," but this
limitation has no support in the Specification. Id. at 18. The Examiner
interprets the claim as shown in Figure 14 "wherein the elongated void
would be found near the edge of the device as clearly shown by SUX." Id.
Accordingly, the Examiner's position is that although Figure 14
shows hole 158 extending between outer surface 154 and inner surface 156,
hole 158 is beyond the convex portion of outer surface 154 and the concave
portion of inner surface 156. Further, it is the Examiner's position that in
order to meet the elongate void limitation, the entire outer surface would
have to be convex and the entire inner surface concave, but the Specification
does not support this construction. See Ans. 16.
Appellants do not direct us to any disclosure of the item holder as now
claimed. To the extent Appellants' position is that the limitation "where the
concave inner surface is concave and the convex outer surface is convex"
(emphasis added) means "the [entire claimed] concave [inner] surface is
concave and the [entire claimed] convex [outer] surface is convex" (Br. 18),
Appellants' Specification and Figure 14 do not disclose that the entire outer
surface is convex and the entire inner surface is concave. Figure 14 shows
that hole 158 extends through deformable body 152 between outer surface
154 and inner surface 156. Figure 14 appears to show a concave portion of
inner surface 156 similar to concave portion 186 shown in Figure 15. See
also Spec. 25, 11. 28-31. Figure 14 also appears to show a convex portion of
outer surface 154 adjacent the concave portion. To the extent the apparent
concave portion shown in Figure 14 may correspond to the "concavity" of
the "concave inner surface" recited in claim 1, the concave portion does not
extend along the entire inner surface 156.
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Application 13/675,165
We construe the term "where" in claim 1 to mean "at the location."
Accordingly, we construe claim 1 to call for the elongate void to extend
through the deformable body "between the concave inner surface and the
convex outer surface [at the location that] the concave inner surface is
concave and the convex outer surface is convex." However, Appellants'
Specification does not disclose that the portion of inner surface 156 adjacent
hole 158 is concave. The apparent concave portion of inner surface 156 is
located well above hole 158, not adjacent to it. As such, hole 158 is not at a
location that inner surface 156 is concave and outer surface 154 is convex.
Accordingly, we find no support in the Specification for this construction.
Although the Examiner rejected the claims for lack of enablement, the
Examiner has not adequately explained why one of ordinary skill in the art
would have to engage in undue experimentation to practice the claimed
invention. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) (explaining that
the test for compliance with the enablement requirement is whether the
disclosure, as filed, is sufficiently complete to enable one of ordinary skill in
the art to make and use the claimed invention without undue
experimentation). As such, we cannot sustain the enablement rejection.
However, we understand the Examiner's rejection, based on the
findings regarding the Specification's lack of disclosure of the claimed
subject matter, to be premised on the written description requirement of 35
U.S.C. § 112, first paragraph. We agree and, further because of our
additional findings, enter a new ground of rejection of claims 1-20 under 35
U.S.C. § 112, first paragraph, written description requirement, pursuant to
our authority under 37 C.F.R. § 41.50(b ).
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Application 13/675,165
For the written description requirement of 35 U.S.C. § 112, first
paragraph, "the 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."
See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010) (en bane). To have "possession," "the specification must describe an
invention understandable to that skilled artisan and show that the inventor
actually invented the invention claimed." Id.
Appellants' disclosure does not describe or illustrate an item holder
including all the limitations recited in claims 1, 12, and 18. Thus, we find
that the disclosure does not reasonably convey to those skilled in the art that
the inventors had possession of the claimed subject matter as of the filing
date. Therefore, we enter a new ground of rejection of claims 1-20 under 35
U.S.C. § 112, first paragraph, written description requirement.
Rejection II
The Examiner finds that SUX discloses all limitations of claim 1
except for the elongate void extending "in a direction that is generally
parallel to the mounting surface during use of the holder." Final Act. 6. The
Examiner provides an annotated version of a figure in SUX, including
notations showing the location of the "elongate void" near the bottom edge
of the "body." Id. at 5; see SUX 2.2
SUX discloses that the key-ring device includes a "bubble" or suction
cup, which a user pushes onto a smooth surface to expel air to cause the
device to stick on the surface. See SUX 2, 5. The suction cup is located at
2 SUX does not include page numbering. For clarity, we have numbered the
pages of SUX starting from the first page.
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Application 13/675,165
the opposite (upper) end of the body from the void or hole through which a
key chain extends. See id. The Examiner finds that "SUX clearly teaches an
elongated void located between the convex outer surface which would
include the entire outer surface of the invention which includes the convex
portion and the entire inner surface which includes the concave portion."
Ans. 18 (emphasis added). The Examiner does not indicate that SUX
discloses the limitation "where the concave inner surface is concave and the
convex outer surface is convex." See Final Act. 3.
Appellants contend that the hole in SUX does not extend between a
concave inner surface and a convex outer surface, but extends between two
flat surfaces. Br. 11. Appellants note that SUX includes a convex outer
surface and a concave inner surface, but contend that these surfaces are
"clearly distinct from, and purposely remote to the hole of the SUX." Id.
Appellants' contentions are persuasive. To the extent the Examiner
does not give patentable weight to the limitation "where the concave inner
surface is concave and the convex outer surface is convex," the Examiner
errs. Although SUX's hole extends between an outer surface and an inner
surface, and its suction cup appears to include a convex outer surface portion
and a concave inner surface portion, we construe claim 1 to call for the
elongate void to extend through the deformable body "between the concave
inner surface and the convex outer surface [at the location that] the concave
inner surface is concave and the convex outer surface is convex." In
contrast, SUX's suction cup is located at the opposite end of the body from
the void or hole. See SUX 2, 5.
The Examiner relies on Thomas for teaching an elongate void
extending "in a direction that is generally parallel to the mounting surface
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during use of the holder," as recited in claim 1. Final Act. 6-7. This
application of Thomas does not cure the deficiencies of SUX.
For these reasons, we do not sustain the rejection of claims 1-8 and
10-20 as unpatentable over SUX and Thomas.
Rejection III
Claim 9 depends from claim 1 and recites limitations pertaining to the
thickness of the deformable body. Br. 20 (Claims App.). The Examiner's
application of Sheffield, Jr. does not cure the rejection of claim 1 over SUX
and Thomas. Final Act. 7. Accordingly, we do not sustain the rejection of
claim 9 as unpatentable over SUX, Thomas, and Sheffield, Jr.
Rejection IV
The Examiner finds that SUX discloses an elongate void extending
through the deformable body, between the concave inner surface and the
convex outer surface," as recited in claims 1, 12, and 18. Final Act. 8.
However, the Examiner does not find that SUX's elongate void
extends through the deformable body "between the concave inner surface
and the convex outer surface [at the location that] the concave inner surface
is concave and the convex outer surface is convex," as we construe this
limitation in claims 1, 12, and 18.
The Examiner relies on Cedarstaff for teaching several limitations of
claims 1, 12, and 18, including an elongate void extending "in a direction
that is generally parallel to the mounting surface during use of the holder,"
as recited in claim 1. Final Act. 9. The Examiner's application of
Cedarstaff does not cure the deficiencies of SUX.
Accordingly, we do not sustain the rejection of claims 1-8 and 10-20
as unpatentable over SUX and Cedarstaff.
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Rejection V
The Examiner's application of Sheffield, Jr. to the rejection of claim 9
does not cure the rejection of claim 1 over SUX and Cedarstaff. Final Act.
11. Accordingly, we do not sustain the rejection of claim 9 as unpatentable
over SUX, Cedarstaff, and Sheffield, Jr.
DECISION
The Examiner's decision to reject claims 1-20 under 35 U.S.C. § 112,
first paragraph, enablement requirement, is reversed.
We enter a new ground of rejection of claims 1-20 under 35 U.S.C.
§ 112, first paragraph, written description requirement.
We reverse the rejection of claims 1-3, 5-8, 10-16, 18, and 19 under
35 U.S.C. § 103(a) as unpatentable over SUX and Thomas.
We reverse the rejection of claim 9 under 35 U.S.C. § 103(a) as
unpatentable over SUX, Thomas, and Sheffield, Jr.
We reverse the rejection of claims 1-8 and 10-20 under 35 U.S.C.
§ 103(a) as unpatentable over SUX and Cedarstaff.
We reverse the rejection of claim 9 under 35 U.S.C. § 103(a) as
unpatentable over SUX, Cedarstaff, and Sheffield, Jr.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the
appellants, within two months from the date of the decision, must
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Application 13/675,165
exercise one of the following two options with respect to the new
ground 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 prosecution will be remanded to the examiner. The
new ground of rejection is binding upon the examiner unless an
amendment or new Evidence not previously of Record is made which,
in the opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same Record. The request for
rehearing must address any new ground of rejection and state with
particularity the points believed to have been misapprehended or
overlooked in entering the new ground of rejection and also state all
other grounds upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended according to 37 C.F.R. § 1.136(a)(l )(iv).
REVERSED; 37 C.F.R. § 41.50(b)
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