Ex Parte Steiner

Patent Trial and Appeal Board

Nov 26, 2018

14666222 (P.T.A.B. Nov. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/666,222
66478 7590
Smartpat PLC
Axel Nix
FILING DATE
03/23/2015
11/28/2018
400 Renaissance Center
Suite 2600
Detroit, MI 48243
FIRST NAMED INVENTOR
Martin Steiner
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.
STE02-0l 6644
EXAMINER
NGUYEN, SON T
ART UNIT PAPER NUMBER
3643
NOTIFICATION DATE DELIVERY MODE
11/28/2018 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):
info@ smartpat. net
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAR TIN STEINER
Appeal 2017-011226
Application 14/666,222
Technology Center 3600
Before KEVIN F. TURNER, NATHAN A. ENGELS, and
SEAN P. O'HANLON, Administrative Patent Judges.
O'HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Martin Steiner ("Appellant") 1 appeals under 35 U.S.C. § 134(a) from
the Examiner's final decision rejecting claims 12, 14, 16, 17, 20, 23-25, and
27-34. 2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
1 The Appeal Brief identifies the Appellant as the real party-in-interest.
Appeal Br. 2.
2 Claims 1-11 are canceled, and claims 13, 15, 18, 19, 21, 22, and 26 are
withdrawn. Amendment 2 (filed December 20, 2015); Final Act. 1.
Appeal 2017-011226
Application 14/666,222
SUMMARY OF THE DECISION
We AFFIRM.
SUMMARY OF THE INVENTION
Appellant's claimed invention is relates to an um and planter
assembly. Spec. ,r 1. 3 Claims 12 and 23 are independent. Claim 12,
reproduced below from page 7 (Claims Appendix) of the Appeal Brief, is
illustrative of the claimed subject matter:
12. An um and planter assembly, comprising:
a first chamber configured to receive cremation ashes;
a second chamber configured to receive a planting
matrix; and
at least one nutrient transmission element arranged
between the first chamber and the second chamber such that it
prevents the cremation ashes from coming in contact with the
planting matrix,
wherein nutrients can pass through the at least one
nutrient transmission element from the first chamber into the
second chamber.
REFERENCES
The Examiner relies on the following prior art references in rejecting
the claims on appeal:
Farrell
Lucas
us 5,167,672
FR 2 701 808 Al
REJECTIONS
Dec. 1, 1992
Sept. 2, 1994
I. Claims 12, 14, 16, 17, 20, 23-25, 27, 29-31, 33, and 34 stand rejected
under 35 U.S.C. § I02(a)(l) as being anticipated by Lucas.
3 Citations to the Specification refer to the substitute specification submitted
on May 10, 2015.
2
Appeal 2017-011226
Application 14/666,222
II. Claims 28 and 32 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Lucas and Farrell.
ANALYSIS
Rejection I
The Examiner finds that Lucas discloses all of the elements of
independent claims 12 and 23. Final Act. 2--4. Of particular note, the
Examiner relies on the combination of Lucas' s plate 1, cartridge 6, sponge 7,
and tube 9 as corresponding to the recited nutrient transmission element. Id.
at 2, 3.
Appellant traverses the rejection, first arguing that "claim 12 requires
not just an ability to separate cremation ashes from a planting matrix[.] The
nutrient transmission element must actually separate the two, which Lucas
does not disclose." Appeal Br. 4.
We disagree with Appellant's interpretation of the claim language.
Both of claims 12 and 23 are directed to an "um and planter assembly"-
that is, an apparatus. Id. at 7, 9 (Claims App.). It is well established that
claims directed to an apparatus must be distinguished from the prior art in
terms of structure rather than function, and in order to satisfy the functional
limitations in an apparatus claim the prior art apparatus must be capable of
performing the claimed function. See, e.g., In re Schreiber, 128 F.3d 1473,
1477-78 (Fed. Cir. 1997). Lucas discloses that plate 1 "support[s] the
culture medium [above] a reserve of [water]" and that the plate is positioned
"against the inner wall of a tank so as to prevent the passage of any
fragment of the culture medium to the water supply." Lucas 1 (emphasis
3
Appeal 2017-011226
Application 14/666,222
added). 4 This is what claims 12 and 23 require. Thus, Lucas supports the
Examiner's finding that the Examiner-defined nutrient transmission element
is capable of separating cremation ashes from planting matrix. See Ans. 2-
3. Appellant's argument, therefore, is unpersuasive.
Each of claims 12 and 23 also recite a first chamber "configured to
receive cremation ashes." Appeal Br. 7, 9 (Claims App.). The Federal
Circuit has held that, when phrases such as "configured to" are used to
describe the construction of an apparatus, rather than simply a functional
characteristic, such phrases may require more than simply an identification
of structure that is capable ofbeing used in the claimed manner. In re
Giannelli, 739 F.3d 1375, 1379-80 (Fed. Cir. 2014) (explaining that
structural details in the written description may support a narrow
interpretation of the phrase "adapted to"). Here, however, the Specification
describes the first chamber in terms of its functionality. See, e.g., Spec. ,r 60
("The first chamber 7 serves as a receptacle for ashes, in particular
cremation ashes."). Thus, "configured to receive cremation ashes," as used
in the claims, merely requires an identification of structure that is capable of
receiving cremation ashes therein. Thus, we are not persuaded by
Appellant's argument that because "Lucas does not disclose any cremation
ashes," it "does not disclose the functional limitation of preventing
cremation ashes from coming in contact with a planting matrix." Appeal Br.
4. As noted above, such functional limitations in an apparatus claim merely
require corresponding structure that is capable of performing the recited
4 Citations to Lucas refer to the translation accompanying the April 15,
2016, Final Office Action.
4
Appeal 2017-011226
Application 14/666,222
function, which the Examiner has established by a preponderance of the
evidence.
Appellant next argues that "[t]he nutrient transmission element
disclosed by Lucas would not be able to prevent cremation ashes in the first
chamber from coming in contract with a planting matrix in the second
chamber." Id. Appellant relies on Lucas's Figure 4 to support this
contention, citing the uppermost instance of cartridge 6 (identified with label
"A" in an annotated reproduction of Lucas's Figure 4). Id. at 4--5.
Appellant states that "none of Lucas' [ s] drawings show what the Examiner
describes as 'all openings being blocked,"' and argues, therefore, the
Examiner's finding that such openings would be blocked requires a
modification to the reference, which is inappropriate for an anticipation
rejection. Id. Appellant also argues that Figure 4 shows an opening in the
end of sponge 7 (identified with label "B" in the annotated reproduction of
Lucas's Figure 4) that "would not function to prevent cremation ashes from
coming in contact with the planting matrix." Id. at 5.
As noted above, Lucas' s plate 1 separates pot 2 into two chambers-
an upper chamber in which culture medium is placed, and a lower reservoir
in which water is placed. Lucas 1, Fig. 2. Lucas further discloses cartridges
6, each of which includes sponge 7, that transfer water from the reservoir to
the upper chamber. Id. at 1. A number of holes 8 are provided in plate 1,
and "the plate ha[ s] as many holes as cartridges which are arranged in
alignment with the holes." Id. The sponges are rolled about a longitudinal
axis to take the shape as depicted in Figure 7 and then "forcibly pushed into
the tube 9." Id. at 3. Lucas, therefore, supports the Examiner's finding that
a sponge is positioned in each plate opening. See Final Act. 8. Additionally,
5
Appeal 2017-011226
Application 14/666,222
Lucas states, "In the embodiment of Figure 4, three cartridges 6 equidistant
[angularly] of [ 120°] are distributed around the center of the circular plate 1.
One cartridge was depicted without his [sponge]." Lucas 3. Thus, as
correctly noted by the Examiner (see Ans. 3), Lucas discloses all openings in
the plate being filled with cartridges and sponges. Therefore, we are not
persuaded by Appellant's arguments regarding any alleged unfilled opening
in Lucas's plate. Additionally, as also noted above, Lucas expresses an
intention to "prevent the passage of any fragment of the culture medium to
the water supply." Lucas 1.
Nor are we persuaded by Appellant's attempt to identify a cross-
sectional view along line F-F in the enlarged and annotated partial
reproduction of Lucas' s Figure 4 presented on page 5 of the Appeal Brief.
As correctly noted by the Examiner (see Final Act. 8; Ans. 4--5), Lucas's
Figure 1 shows a full cross-sectional view of cartridge 6, sponge 7, hole 8,
and the tube 9. Notably, Figure 1 shows the sponge "opening" alleged by
Appellant. However, Figure 1 shows that over the vast majority of sponge
length-and over the full length of tube 9 and plate I-there is no such
opening. As noted above, the written description discloses sponge 7 being
"forcibly pushed into tube 9." Lucas 3. Thus, we are not persuaded of the
presence of any hole as suggested by Appellant.
In the Reply Brief, Appellant takes exception to the Examiner's
reference to portions of Lucas' s written description (in addition to the
drawing figures) in the Answer, characterizing the translation as
"inadmissible," arguing that "the Examiner changed his position and relies
on the full text document," and arguing that "the Board should hold the
6
Appeal 2017-011226
Application 14/666,222
Examiner to his previous statement that the final rejection is based only on
the drawings and the abstract." Reply Br. 2-3.
We are not persuaded by Appellant's arguments. Initially, we are
unaware of, and Appellant provides no citation to, any authority prohibiting
the Examiner to clarify (or even "change his position") in the Examiner's
Answer; 37 C.F.R. § 41.39 requires that an examiner must indicate any
rejection that relies on new evidence as being a new ground, and appellants
can file a petition challenging an undesignated new ground. See 37 C.F.R.
§§ 1.181, 41.40; MPEP § 1207.03(b). Here, the Examiner did not identify a
new ground in the Answer, and Appellant did not file a petition alleging the
rejection over Lucas as being such. Additionally, considering the merits of
Appellant's arguments, we are unpersuaded of error because the Examiner
did not "change his position" in the Answer. Rather, the written description
of Lucas is used to rebut Appellant's arguments and support the rejection as
set forth in the Final Office Action. In other words, Lucas' s written
description is used to confirm the Examiner's findings of how a person
having ordinary skill in the art would interpret Lucas's figures. For the
reasons set forth above, we agree with the Examiner's findings.
Nor are we persuaded that we should disregard the machine
translation of Lucas relied upon by the Examiner. Appellant does not assert
any error in the translation, instead reproducing the boilerplate caveat
preceding the translation and suggesting that machine translations, as a
whole, should not be relied upon for rejecting claims. Such conclusory
arguments fail to apprise us of error in the machine translation or the
Examiner's reliance thereupon.
7
Appeal 2017-011226
Application 14/666,222
Accordingly, for the foregoing reasons, we sustain the Examiner's
rejection of independent claims 12 and 23 as being anticipated by Lucas.
We further sustain the rejection of dependent claims 14, 16, 17, 20, 24, 25,
27, 29-31, 33, and 34, which Appellant does not argue separately.
Rejection II
Appellant does not address the obviousness rejection of claims 28 and
32 over Lucas and Farrell. See Appeal Br. 3-5. Accordingly, Appellant has
waived any argument of error, and we summarily sustain the rejection of
these claims. See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008)
( explaining that summary affirmance without consideration of the
substantive merits is appropriate where an appellant fails to contest a ground
of rejection).
DECISION
The Examiner's decision to reject claims 12, 14, 16, 17, 20, 23-25,
and 27-34 is affirmed.
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).
AFFIRMED
8