Ex Parte Vanderroest

Patent Trial and Appeal Board

Jan 18, 2018

13869104 (P.T.A.B. Jan. 18, 2018)

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.
13/869,104 04/24/2013 CHAD T. VANDERROEST SUB-03579-US-NP 4729
173 7590 01/22/2018
WHIRLPOOL CORPORATION - MD 3601
2000 NORTH M63
BENTON HARBOR, MI 49022
EXAMINER
CARRILLO, BIBI SHARED AN
ART UNIT PAPER NUMBER
1711
NOTIFICATION DATE DELIVERY MODE
01/22/2018 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):
whirlpool_patents_co@whirlpool.com
mike_lafrenz @ whirlpool .com
deborah_tomaszewski@whirlpool.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHAD T. VANDERROEST
Appeal 2017-004056
Application 13/869,104
Technology Center 1700
Before JEFFREY T. SMITH, N. WHITNEY WILSON,
and MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1—19 and 22—27 of Application
13/869,104 under 35 U.S.C. §§ 102 and 103(a). Final Act. (March 15, 2016)
2—8. Appellant1 seeks reversal of these rejections pursuant to 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6.
1 Applicant Whirlpool Corporation is the Appellant and is identified as the
real party in interest. Appeal Br. 2.
Appeal 2017-004056
Application 13/869,104
BACKGROUND
The present application generally relates to a method of operating a
dishwashing machine where water temperature is adjusted toward a certain
temperature threshold and, upon reaching such temperature, an enzyme
(“treating chemistry”) is dispensed into the treating chamber. Spec.,
Abstract.
Claims 1 and 14 are representative of the pending claims and are
reproduced below:
1. A method for treating dishes in a dishwasher having a
treating chamber for receiving the dishes for treatment
according to an automatic cycle of operation, the method
comprising:
supplying liquid to the treating chamber;
sensing a temperature of the liquid;
comparing the sensed temperature of the liquid to an
enzymatic temperature threshold;
adjusting the temperature of the liquid toward the
enzymatic temperature threshold when the comparing indicates
the sensed temperature does not satisfy the enzymatic
temperature threshold;
an initial dispensing of an enzyme into the liquid when
the comparing indicates the sensed temperature satisfies the
enzymatic temperature threshold; and
maintaining the temperature of the liquid to satisfy the
enzymatic temperature threshold.
14. A method for treating dishes in a dishwasher having a
treating chamber for receiving the dishes for treatment
according to an automatic cycle of operation, a liquid flow
system fluidly coupled with the treating chamber for controlling
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Application 13/869,104
a flow of liquid through the treating chamber, and a dispensing
system fluidly coupled with the treating chamber for supplying
a treating chemistry to the treating chamber, the method
comprising:
outputting by at least one sensor in the dishwasher a first
output indicative of a temperature of a liquid in the treating
chamber;
controlling the liquid flow system until the first output
satisfies a first predetermined temperature threshold based on a
first treating chemistry to be dispensed;
actuating the dispensing system to initially dispense the
first treating chemistry into the liquid flow system when the
first output satisfies the first predetermined temperature
threshold; and
controlling the liquid flow system to maintain the
temperature of the liquid in the treating chamber to satisfy the
first predetermined temperature threshold.
Appeal Br. 31, 33 (Claims App.).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 14—19, 21—23, and 26 are rejected under 35 U.S.C.
§ 102(a)(2) as anticipated by 1m et al. (US 2013/0112225 Al,
published May 9, 2013) (hereinafter “1m”). Final Act. 2-4.
2. Claims 1—11, 13, and 27 are rejected under 35 U.S.C. § 103(a) as
obvious over 1m. Id. at 5—7.
3. Claims 12, 24, and 25 are rejected under 35 U.S.C. § 103(a) as
obvious over 1m in view of Cho et al. (US 2007/0151578 Al,
published July 5, 2007). Id. at 7—8.
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Application 13/869,104
DISCUSSION
Claims 14—19, 21—26
The Examiner rejected claims 14—19, 21—23, and 26 as anticipated by
Im. Final Act. 2—A. The Examiner additionally rejected claims 24, and 25
as obvious over Im in view of Cho. Id. at 7—8.
For the reasons set forth below, we are unable to ascertain the metes
and bounds of the claimed subject matter. Accordingly, we procedurally
reverse the rejection of claims 14—19, 21—23, and 26 under 35 U.S.C. §
102(a)(2) and the rejection of claims 24 and 25 under 35 U.S.C. § 103(a),
and enter a new ground of rejection of claim 14 and claims depending
therefrom under 35 U.S.C. § 112(b).
As an initial matter, we seek to construe the claim language “a first
predetermined temperature threshold based on a first treating chemistry to be
dispensed” as found in claim 14. The Specification teaches as follows
regarding the “predetermined temperature threshold”:
The predetermined temperature threshold may be based on a
temperature or a range of temperatures which [ajffects the
temperature-sensitive characteristic of the treating
chemistry in a desired manner. For example, the
predetermined temperature threshold may be based on a
temperature at which the treating chemistry exhibits a
predetermined level of chemical reactivity. In another example,
the predetermined temperature threshold may be based on a
temperature below which an undesirable amount of foam
formation occurs.
Spec. 130 (emphasis added). The Specification further provides that “[a]s
used herein, the term temperature-sensitive characteristic refers to a
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characteristic of the treating chemistry which varies based on temperature.
Non-limiting examples of temperature-sensitive characteristics include
reactivity, solubility, or foam-formation of the treating chemistry.” Id. 125.
The Specification additionally teaches that “[a]s used herein, the term
treating chemistry may refer to an individual substance or a combination of
substances, one or more of which may have a temperature-sensitive
characteristic, non-limiting examples of which include surfactants, enzymes,
bleaches, oxidizing agents, ozone, pH modifiers, builders, dyes, fragrances,
etc.” Id. 125 (emphasis added).
Thus, the predetermined temperature threshold must be based on some
relationship to a “treating chemistry” which is defined to include virtually all
“substances.” Such basis “may ” be predicated on a temperature-sensitive
characteristic. Accordingly, the claim language “a first predetermined
temperature threshold based on a first treating chemistry to be dispensed” is
ambiguous. Further, the temperature is taught to affect the treating
chemistry in a “desired manner.” Whether or not an effect is “desired” is
subjective — “[t]he scope of claim language cannot depend solely on the
unrestrained, subjective opinion of a particular individual purportedly
practicing the invention.” Datamize, LLC v. Plumtree Software, Inc., 417
F.3d 1342, 1350 (Fed. Cir. 2005).
During prosecution, a claim is examined for compliance with
35 U.S.C. § 112(b) by determining whether the claim meets threshold
requirements of clarity and precision. In re Skvorecz, 580 F.3d 1262, 1268
(Fed. Cir. 2009) (quoting MPEP § 2173.02). A claim should be rejected as
indefinite when it is amenable to two or more plausible claim constructions.
Ex Parte Miyazaki, 89 U.S.P.Q.2d 1207, 1211 (B.P.A.I. 2008); In re
Packard, 751 F.3d 1307, 1324 (Fed. Cir. 2014) (“There are good reasons
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Application 13/869,104
why unnecessary incoherence and ambiguity in claim constructions should
be disapproved”). Here, the limitation “predetermined temperature
threshold based on a first treating chemistry to be dispensed” does not meet
the threshold requirements of clarity and precision. Accordingly, we enter a
new ground of rejection under 35 U.S.C. § 112(b).
For the foregoing reasons, the scope of the claimed invention cannot
be determined and claims 14—19, 21—26 are indefinite.
Rejections Under §§ 102(a)(2)and 103(a)
Having determined that the subject matter of independent claim 14 is
indefinite, we are unable to determine the propriety of the prior art rejection
of claims 14—19 and 21—26. The review of the prior art rejections of claims
14—19 and 21—26 would require considerable speculation as to the scope of
the claims. Such speculation would not be appropriate. In re Steele, 305
F.2d 859, 862 (CCPA 1962). We, therefore, procedurally reverse the
rejection of claims 14—19, 21—23, and 26 under 35 U.S.C. § 102(a)(2) and
the rejection of claims 24, and 25 under 35 U.S.C. § 103(a). We emphasize
that this is a technical reversal of the rejections and not a reversal based
upon the merits of the rejections.
Claims 1—13 and27
The Examiner rejected claims 1—11, 13, and 27 as obvious over Im.
Final Act. 5—7. The Examiner additionally rejected claim 12 as obvious
over Im in view of Cho. Id. at 7—8. The Examiner finds that Im teaches
most of the steps of claim 1, but fails to teach “an initial dispensing.” Id. at
5. The Examiner further determines that the claims at issue differ from Im
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only in their sequence and that merely changing the sequence of steps of a
method does not render a process nonobvious over the prior art. Id.
A “claim requires an ordering of steps when the claim language, as a
matter of logic or grammar, requires that the steps be performed in the order
written, or the specification directly or implicitly requires an order of steps.”
Mformation Technologies, Inc. v. Research in Motion Ltd., 764 F.3d 1392,
1398—99 (Fed. Cir. 2014) (internal citation omitted). Further, where “the
same product is obtained by either the method claimed [in a pending
application] or that claimed in the [prior art] patent” differing only in the
sequence of steps “it is not inventive to change the order of steps.” Ex Parte
Rubin, 128 U.S.P.Q. 1440, 1959 WL 6826 *2 (Sept. 30, 1959) (“It is
evident therefore that no unexpected result is obtained by reversing the order
of steps recited in the method claimed”).
Here, claim 1, as a matter of logic, requires that the steps be
performed in the order written. Moreover, the Specification teaches that
dispensing the enzyme into the wash water subsequent to achieving the
threshold temperature achieves an improved cleaning effect. See, e.g., Spec.
| 50. Accordingly, Im’s teaching to initially dispense the enzyme prior to
achieving the threshold temperature does not render the claims at issue
obvious.
In view of the foregoing, we determine that Appellant has shown
reversible error in the Examiner’s rejection of claims 1—11, 13, and 27 as
obvious over Im and the rejection of claim 12 as obvious over Im in view of
Cho.
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CONCLUSION
The rejection of claims 14—19, 21—23, and 26 as anticipated by Im is
reversed. The rejection of claims 1—11, 13, and 27 as obvious over Im is
reversed. The rejection of claims 12 and 24—25 as obvious over Im in view
of Cho is reversed. A new ground of rejection under 35 U.S.C. § 112(b) is
entered as to claims 14—19, and 21—26.
REVERSED and NEW GROUND OF REJECTION ENTERED AS TO
CLAIMS 14—19 and 21-26
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides that “[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 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.
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(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.
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