Ex Parte Voeva-Kolev

Patent Trial and Appeal Board

Jul 30, 2018

14696320 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/696,320
103968 7590
Ryan Alley IP
(General Docket)
FILING DATE
04/24/2015
08/01/2018
P.O. Box 87
Alexandria, VA 22313
FIRST NAMED INVENTOR
Elitza Danielova Voeva-Kolev
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.
21.0001.1 9464
EXAMINER
GILL, JENNIFER FRANCES
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
08/01/2018 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):
office@alleylegal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ELITZA DANIELOV A VOEV A-KOLEV
Appeal2017-007679
Application 14/696,320 1
Technology Center 3700
Before ULRIKE W. JENKS, ELIZABETH A. LA VIER,
and JOHN E. SCHNEIDER, Administrative Patent Judges.
LA VIER, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant seeks review of the
Examiner's rejections of claims 7-22. We have jurisdiction under 35 U.S.C.
§ 6(b ). For the reasons set forth below, we AFFIRM, but as to claims 16,
17, and 19-22, we designate our affirmance as a new ground of rejection.
BACKGROUND
The Specification relates to devices for curling human hair. Spec. ,r 2.
Claim 7 is illustrative, and recites:
7. A system for curling hair, the system comprising:
1 Appellant states the real party in interest is the inventor. Appeal Br. 1.
Appeal2017-007679
Application 14/696,320
a supporting roller having a surface extending along an
axis of the supporting roller;
a tubular sleeve shaped to completely angularly surround
a tress of hair inserted into the sleeve in a length the sleeve,
wherein the sleeve is configured to removably secure to the
surface of the supporting roller when the length of the sleeve is
angularly wound about the axis of the supporting roller such
that the tress is held in a helical shape about the supporting
roller.
Appeal Br. 25 (Claims Appendix) (emphasis added).
REJECTIONS MAINTAINED ON APPEAL
1. Claims 7-22 stand rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement. Ans. 2.
2. Claims 7-22 stand rejected under 35 U.S.C. § 112(b) as indefinite.
Ans. 4.
3. Claims 16-22 stand rejected under 35 U.S.C. § 101 and AIA
§ 33(a) as being directed to or encompassing a human organism.
Ans. 5.
4. Claims 7-9 and 12-22 stand rejected under 35 U.S.C. § 102(a)(l)
as anticipated by Goodwin. 2 Ans. 5.
5. Claims 7, 8, 10-14, 16, 17, and 19-21 stand rejected under 35
U.S.C. § 102(a)(l) as anticipated by Apanasewicz. 3 Ans. 8.
2 Goodwin, US 6,006,759, issued Dec. 28, 1999.
3 Apanasewicz, US 6,012,466, issued Jan. 11, 2000.
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Application 14/696,320
6. Claims 9 and 18 stand rejected under 35 U.S.C. § 103 as
unpatentable over Apanasewicz and Gregorek. 4 Ans. 11.
7. Claims 15 and 22 stand rejected under 35 U.S.C. § 103 as
unpatentable over Apanasewicz. Ans. 12.
DISCUSSION
A. Indefiniteness (Rejection 2)
During patent examination, pending claims are given their broadest
reasonable interpretation because "claims can be amended, ambiguities
should be recognized, scope and breadth of language explored, and
clarification imposed." In re Zietz, 893 F.2d 319,321 (Fed. Cir. 1989).
Claim 7 recites, inter alia, "a tubular sleeve shaped to completely
angularly surround a tress of hair inserted into the sleeve in a length the
sleeve." Appeal Br. 25 (Claims Appendix) (emphasis added). Similarly,
claim 16, the only other independent claim on appeal, recites, inter alia, "a
tubular sleeve completely surrounding the tress of hair except for at least one
end of the tress inserted into the sleeve in a length the sleeve." Id. at 27
( emphasis added). The Examiner rejects the appealed claims as indefinite
on this basis, as the emphasized phrase "is grammatically incorrect and it is
unclear what is meant." Final Rejection 7.
In the Appeal Brief, Appellant asserts "the phrasing is grammatically
correct," and is "a precise way of saying the tress is inserted not just into a
sleeve but also in the length of the sleeve, to preclude other directions of
insertion." Appeal Br. 12-13. In contrast, in the Reply Brief, "Appellant
4 Gregorek, US 2010/0252062 Al, published Oct. 7, 2010.
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Application 14/696,320
only now identifies the specific grammatical error in claim 7 and
acknowledges that the word 'of' is missing from the phrase 'in a length [ofJ
the sleeve' in that claim." Reply Br. 7. Appellant insists claim 7 is
nonetheless clear because of the use of the phrase "the length of the sleeve"
appearing later in claim 7, as well as from Specification support. Id. at 7-8.
As illustrated by Appellant's varying positions, the meaning of the
phrase "in a length the sleeve" is not clear. A preposition is missing.
Appellant's statement in the Appeal Brief regarding an intent of
"preclud[ ing] other directions of insertion" ( Appeal Br. 13) might suggest
the missing word is something like "along." Even if we accepted
Appellant's insistence in the Reply Brief5 that "of' is the missing word, the
meaning of the claim would still be unclear. Indeed, we discern at least two
reasonable interpretations of "a tress of hair inserted into the sleeve in a
length of the sleeve," namely ( 1) a length of a tress of hair is inserted that is
the same length as the sleeve, or (2) a tress of hair is inserted into part of the
sleeve (i.e., "a length of the sleeve," not necessarily the whole sleeve). 6
Accordingly, we agree with the Examiner that claim 7 is indefinite. Claims
8-15 depend from claim 7 and are indefinite for the same reason.
5 Appellant offers no rationale for failing to make this argument in the
Appeal Brief. A new argument not timely presented in the Appeal Brief will
not be considered when filed in a Reply Brief, absent a showing of good
cause explaining why the argument could not have been presented in the
Appeal Brief. See Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010)
(informative).
6 A similar ambiguity arises if claim 16 is modified to recite "at least one
end of the tress inserted into the sleeve in a length of the sleeve."
4
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Application 14/696,320
Claim 16, as noted above, has the same grammatical issues with
respect to indefiniteness as claim 7. However, in analyzing the
indefiniteness of "in a length the sleeve," neither the Final Action nor the
Answer expressly points this out. See Final Action 7 (referring to claim 7
but not claim 16); Ans. 17 (same). We find that this was an inadvertent
error. 7 However, in the interest of fairness, we designate the specific
inclusion of claim 16 (and thus its dependents, claims 17-22) in this part of
the indefiniteness rejection as a new ground of rejection.
The Examiner also identifies an ambiguity in claims 9 and 18. See
Final Action 7-8. Claim 9 depends from claim 7, and recites "wherein a
diameter of the supporting roller changes along the axis such that the helical
shape is spiral." Appeal Br. 25 (Claims Appendix). Claim 18 depends from
claim 16; its additional language is identical to that of claim 9. See id. at 27.
The Examiner is correct that it is unclear whether the "helical shape" recited
in claim 7 refers to the supporting roller (see Final Action 7) as well as the
tress, or to the tress and the sleeve ( cf Ans. 17), or simply to the tress ( as
Appellant ultimately asserts (see Reply Br. 8-9) ). 8 We agree with the
Examiner that claims 9 and 18 are indefinite on this additional basis as well.
7 Indeed, Appellant acknowledges claim 16 includes "a similar grammatical
error" as claim 7. Reply Br. 9.
8 The ambiguity of this language in claims 9 and 18 is further illustrated by a
comparison of Appellant's positions from the Appeal Brief ("Appellant
respectfully replies that 'the helical shape' of claims 9 and 18 clearly refers
back to 'a helical shape' of the tress and sleeve about the roller introduced in
claims 7 and 16, from which claims 9 and 18 respectively depend." (Appeal
Br. 13 (emphasis added))) and the Reply Brief (focusing on the spiral shape
of the tress, and asserting "the sleeve's shape is not recited" even if the
claims "may also require" such a shape for the sleeve) (Reply Br. 9)).
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Application 14/696,320
For these reasons and those of record, we affirm the Examiner's
rejection of claims 7-22 as indefinite, but designate the rejection of claims
16, 17, and 19-229 as a new ground of rejection.
B. Consequences of the Indefiniteness of Claims 7-22 for the Remaining
Rejections
When the appealed claims are indefinite, meaningful review of other
pending rejections turns on the nature of the indefiniteness. Compare In re
Aoyama, 656 F.3d 1293, 1298-99 (Fed. Cir. 2011) (explaining that a claim
cannot be both indefinite and anticipated and refusing to review an
anticipation rejection) with Ex parte Tanksley, 26 USPQ2d 1384, 1387
(BPAI 1991) ( exercising discretion to reach art rejections despite
indefiniteness, where nature of case permitted). If reviewing other grounds
of rejection would require "speculations and assumptions," In re Steele, 305
F.2d 859, 862 (CCPA 1962), due to the indefinite nature of the claim(s),
reversal proforma of such unreviewable rejections is an appropriate course.
As in Steele, however, any such reversals are "not to be construed as
meaning that we consider the claims on appeal to be patentable as presently
drawn." Id. at 863.
1. Written Description (Rejection 1)
The phrases in claims 7, 14, 16, and 21 determined by the Examiner to
constitute new matter (see Final Action 5---6) do not include "in a length the
9 As discussed above, the Examiner rejected claim 18 as indefinite on a
separate rationale; accordingly our affirmance of the Examiner's rejection of
claim 18 is independent of our entry of a new ground of rejection due to the
indefiniteness of claim 16.
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Application 14/696,320
sleeve." But the indefiniteness of this phrase means that we cannot know
whether the Specification as originally filed supports the current claims as a
whole. The scope of the claims is too uncertain.
Accordingly, we reverse, proforma, Rejection 1.
2. Patent-Ineligible Subject Matter (Rejection 3)
The Examiner finds that claim 16 and its dependents improperly
"claim[] the human organism," insofar as claim 16 "positively recites 'a
tress of human hair."' Final Action 8. Unlike most of the other rejections,
this one can be resolved on its merits despite the indefiniteness of claim 16.
It appears that the Examiner is taking the position that claim 16 reads on a
human organism. This is not the case. Although "a tress of human hair"
appears in the claim, claim 16 overall is directed to a system for curling hair,
not to the human to which the hair is attached. See generally MPEP
§ 2105(III).
Accordingly, we reverse Rejection 3.
3. Rejections over the Prior Art (Rejections 4-7)
Given the uncertainty wrought by "in a length the sleeve," reviewing
the rejections based on§§ 102 or 103 would be an exercise in speculation.
Accordingly, we reverse, proforma, Rejections 4, 5, 6, and 7.
CONCLUSION
Rejection 2 is affirmed, however, as to claims 16, 17, and 19-22, we
designate our affirmance as a new ground of rejection. Rejection 3 is
reversed. Rejections 1 and 4--7 are reversed proforma.
This decision contains new ground of rejection pursuant to 37 C.F.R.
§ 4I.50(b) (Sept. 13, 2004; revised, 76 FR 72270, Nov. 22, 2011, effective
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Application 14/696,320
Jan. 23, 2012). 37 C.F.R. § 4I.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 4I.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds 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).
AFFIRMED; 37 C.F.R. § 4I.50(b)
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