Ex Parte Smith

Patent Trial and Appeal Board

Sep 19, 2017

12814253 (P.T.A.B. Sep. 19, 2017)

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.
12/814,253 06/11/2010 Scott Edward SMITH 11752 8837
27752 7590 09/21/2017
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
EXAMINER
ZHOU, QINGZHANG
ART UNIT PAPER NUMBER
3752
NOTIFICATION DATE DELIVERY MODE
09/21/2017 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):
centraldocket. im @ pg. com
pair_pg @ firsttofile. com
mayer.jk @ pg. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT EDWARD SMITH
Appeal 2016-001836
Application 12/814,253
Technology Center 3700
Before WILLIAM A. CAPP, GEORGE R. HOSKINS, and
SEAN P. O’HANLON, Administrative Patent Judges.
O’HANLON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-001836
Application 12/814,253
STATEMENT OF THE CASE
Scott Edward Smith (Appellant)1 appeals under 35 U.S.C. § 134 from
the Examiner’s January 14, 2015, final decision (“Final Act.”) rejecting
claims 1—5 and 10.2 We have jurisdiction over this appeal under 35 U.S.C.
§ 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
SUMMARY OF THE INVENTION
Appellant’s disclosure is directed to “atomizers for use with fluid
spray devices.” Spec. 1:8—9. Claim 1, the only independent claim on
appeal, is reproduced below from page 14 (Claims Appendix) of the Appeal
Brief:
1. A spray system comprising a cap for attachment to a
sprayer, said spray system comprising:
an outlet nozzle through which atomized product may be
sprayed, said nozzle defining an axial direction and having a
longitudinal axis therethrough;
at least one discrete inlet port, said inlet port having an
associated inlet area, said inlet port not circumscribing said
longitudinal axis and being radially offset therefrom;
a flow area joining said inlet port and said nozzle, said
flow area comprising a surface of revolution about said
longitudinal axis, said surface of revolution convergently
directing flow from said at least one inlet port to said nozzle;
said surface of revolution circumscribing said longitudinal axis,
1 The Appeal Brief identifies The Procter & Gamble Company as the real
party in interest. Appeal Br. 3.
2 Claim 6 is withdrawn (Final Act. 1), and claims 7—9 and 11 are canceled
(Amendment, 5 (filed Apr. 27, 2015)).
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Appeal 2016-001836
Application 12/814,253
whereby a portion of a line which is parallel to said longitudinal
axis and lying on said surface of revolution is arcuate.
REJECTIONS
Claim 1 stands rejected under 35 U.S.C. § 102(b) as being anticipated
byBinks (US 1,324,579, issued Dec. 9, 1919).
Claims 1—5 and 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Du Rocher (US 4,487,369, issued Dec. 11, 1984) and
Biliks.
ANALYSIS
New Ground of Rejection
We enter a new ground of rejection for claims 1—5 and 10 pursuant to
our authority under 37 C.F.R. § 41.50(b).
Claims 1—5 and 10 are rejected under 35 U.S.C. § 112, second
paragraph3, as being indefinite for failing to particularly point out and
distinctly claim the invention. A claim is indefinite when it contains
language that is “ambiguous, vague, incoherent, opaque, or otherwise
unclear in describing and defining the claimed invention.” In re Packard,
751 F.3d 1307, 1311 (Fed. Cir. 2014); see also Ex parte McAward,
No. 2015-006416, slip. op. 4—12 (PTAB Aug. 25, 2017) (precedential).
On page 10 of the Appeal Brief, Appellant states that claim 1 recites
“[a] flow area which is arcuate in the longitudinal direction.” This is an
incorrect quotation of claim 1. Claim 1 actually recites, in relevant part,
3 Referring to the designation in place at the time the ’253 application was
filed; this paragraph of the statute has since been re-designated as 112(b).
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Appeal 2016-001836
Application 12/814,253
“whereby a portion of a line which is parallel to said longitudinal axis and
lying on said surface of revolution is arcuate.” Appeal Br. 14 (Claims App.).
The meaning of this language is unclear, as it requires a line portion to
be both parallel to a longitudinal axis (i.e., straight) and arcuate (i.e., not
straight). We note that plain and ordinary definitions of “axis” include “a
straight line about which a body or a geometric figure rotates or may be
supposed to rotate” and “a straight line with respect to which a body or
figure is symmetrical” (see, e.g., http://www.merriam-webster.com/
dictionary/axis (last visited Sept. 13, 2017)), and a plain and ordinary
meaning of “arcuate” includes “curved like a bow” (see, e.g.,
http://www.merriam-webster.com/dictionary/arcuate (last visited Sept. 13,
2017)). The Specification does not set forth a clear explanation as to how a
line portion that is parallel to the outlet nozzle longitudinal axis can also be
arcuate. Therefore, the quoted claim language lacks sufficient precision to
permit one endeavoring to practice the invention to adequately determine the
metes and bounds thereof.
In light of the above, we conclude that independent claim 1, and its
dependent claims 2—5 and 10, are indefinite for failing to particularly point
out and distinctly claim the invention.
The Art Rejections
In view of our determination that claims 1—5 and 10 are indefinite, it
follows that the prior art rejections of claims 1—5 and 10 must fall because
they are necessarily based on speculative assumptions as to the meaning of
the claims. See In re Steele, 305 F.2d 859, 862—63 (CCPA 1962); see also
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Appeal 2016-001836
Application 12/814,253
Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010) (“a
claim cannot be both indefinite and anticipated”).
DECISION
We reverse the Examiner’s decision to reject claims 1—5 and 10.
We enter a new ground of rejection of claims 1—5 and 10 under 35
U.S.C. § 112, second paragraph, as being indefinite.
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 appellant,
within two months from the date of the decision, must 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 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. . . .
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 under 37 C.F.R. § 1.136(a)(l)(iv).
REVERSED: 37 C.F.R, $ 41.50(B)
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