Thomas Nowak

Patent Trials and Appeals Board

Feb 28, 2022

2021005242 (P.T.A.B. Feb. 28, 2022)

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. 16/501,401 04/08/2019 Thomas M Nowak 5009 7590 02/28/2022 Ryan M. Fountain 420 Lincoln Way West Mishawaka, IN 46544 EXAMINER CHEN, JOSE V ART UNIT PAPER NUMBER 3637 MAIL DATE DELIVERY MODE 02/28/2022 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte THOMAS M. NOWAK ____________ Appeal 2021-005242 Application 16/501,401 Technology Center 3600 ____________ Before STEFAN STAICOVICI, EDWARD A. BROWN, and ANNETTE R. REIMERS, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s decision rejecting claims 1-20. An Oral Hearing was conducted on February 17, 2022. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Thor Industries, Inc., and its wholly- owned subsidiary Jayco, Inc., as the real party in interest. Appeal Br. 2. Appeal 2021-005242 Application 16/501,401 2 CLAIMED SUBJECT MATTER “The present invention relates generally to accessories for recreational vehicles (‘RVs’), such as motor homes, and more particularly, to apparatus for increasing the functional capabilities of seating assemblies, and the like, which are used in an RV and other vehicles.” Spec. 2. Claim 1 is the sole independent claim on appeal, and reads: 1. An apparatus, for the intended use of connection to an other article through a recess in that other article, that recess having a first function which does not include connection to the apparatus, the apparatus comprising: a connector portion, which is mounted into the recess without precluding the first function, a second functionality portion, which is attached to the connector portion, and provides a second function. Appeal Br. 15 (Claims App.). REJECTIONS ON APPEAL Claims 12 and 14 are rejected under 35 U.S.C. § 112(b) as being indefinite. Final Act. 2. Claims 1-4 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Macias.2 Final Act. 3. Claims 5-17 and 20 are rejected under 35 U.S.C. § 103 as being unpatentable over Macias. Final Act. 4. Claims 18 and 19 are rejected under 35 U.S.C. § 103 as being unpatentable over Macias and Bertrand.3 Final Act. 5. 2 US 7,290,746 B1, issued Nov. 6, 2007. 3 US 5,556,181, issued Sept. 17, 1996. Appeal 2021-005242 Application 16/501,401 3 ANALYSIS Rejection of Claims 12 and 14 as Indefinite Claim 12 recites, “the motion of the second functionality portion is rotatable within a horizontal plane spaced above the armrest.” Appeal Br. 17 (Claims App.) (emphasis added). The Examiner finds that there is no antecedent basis for “the motion” in claim 12, and in claim 14 which depends from claim 12. Final Act. 2. The Examiner suggests that claim 12 be amended to recite “a motion” instead of “the motion” to overcome the rejection. Adv. Act. (dated Oct. 23, 2020) 3. Claim 12 depends from claim 11, which recites that “the second functionality portion is movable with respect to the other article while the apparatus is mounted in the recess.” Appeal Br. 16-17 (Claims App.) (emphasis added). Appellant contends that “Claim 11 defines a motion feature or aspect of the second functionality portion. Claim 12 further narrows that definition to require that that same motion be rotatable in a certain way.” Appeal Br. 4. In response, the Examiner maintains that “the motion” does not have antecedent basis in the rejected claims. Ans. 8. “A claim [in an application] is indefinite when it contains words or phrases whose meaning is unclear.” In re Packard, 751 F.3d 1307, 1314 (Fed. Cir. 2014); see Ex parte McAward, No. 2015-006416, slip op. at 11 (PTAB Aug. 25, 2017) (precedential) (same). The test for definiteness under 35 U.S.C. § 112, is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). “[C]laims are not necessarily invalid for a lack of antecedent basis.” Microprocessor Enhancement Corp. v. Texas Appeal 2021-005242 Application 16/501,401 4 Instruments Inc., 520 F.3d 1367, 1376 (Fed. Cir. 2008). If despite the absence of antecedent basis in a claim, the claim’s scope would be reasonably ascertainable by those skilled in the art, then the claim is not indefinite. Energizer Holdings, Inc. v. Int’l Trade Comm’n, 435 F.3d 1366, 1370-71 (Fed. Cir. 2006) (citation omitted). We agree with Appellant it is sufficiently clear that “the motion of the second functionality portion” recited in claim 12 refers to the phrase “the second functionality portion is movable” in claim 11. Appeal Br. 16-17 (Claims App.) (emphasis added). As Appellant adequately explains, claim 11 does not specify “the motion” of the second functionality portion (i.e., other than “with respect to the other article while the apparatus is mounted in the recess”). Claim 12 specifies the “the motion” as rotation, reciting that the second functionality portion “is rotatable within a horizontal plane spaced above the armrest.” As the scope of claim 12 (and 14) would be reasonably ascertainable by those skilled in the art, claims 12 and 14 are not indefinite. Energizer Holdings, 435 F.3d at 1370-71. Accordingly, we do not sustain the rejection of claims 12 and 14 under 35 U.S.C. § 112(b). Rejection of Claims 1-4 as Anticipated by Macias Appellant argues claims 1-4 as a group. Appeal Br. 6-8. We select claim 1 as representative to decide the appeal as to the rejection. See 37 C.F.R. § 41.37(c)(1)(iv) (2019). Claims 2-4 stand or fall with claim 1. The Examiner finds that Macias discloses all limitations of claim 1. Final Act. 3 (citing Macias, Figs. 3, 4). Appeal 2021-005242 Application 16/501,401 5 Appellant contends that the Examiner’s rejection is flawed. Appeal Br. 6. Claim 1 recites “[a]n apparatus, for the intended use of connection to an other article through a recess in that other article, that recess having a first function which does not include connection to the apparatus.” Id. at 15 (Claims App.) (emphasis added). Appellant contends that claim 1 expressly requires “the connector not preclude the function of the recess into which it is mounted.” Appeal Br. 7 (emphasis added). Regarding “the function” of the recess, Appellant asserts: As an example, the cup holder of the vehicle in Fig. 11 of the present application has a given diameter X. The present invention expressly “maintains the cup holder capacity,” i.e., the diameter X, in the connector portion, and thereby does not preclude the function of that cup holder in having a close fit to containers with that diameter. Obviously, having a close fit to containers inserted into a cup holder will reduce the potential for spillage, as well as provide some increased thermal insulation. Id. (emphasis added). Regarding Macias, Appellant contends, as shown in Figures 2 and 3 of [Macias], the cup holder recess 26 of the connector is substantially larger than the cup holder of the arm rest into which it is inserted. Thus, even though recess 26 has a floor which can vertically support containers having a smaller diameter (as shown in Fig. 2 of [Macias]), and even though the specification states that it uses a small drain hole to “support beverage containers placed in the receptacle 27 of lesser diameter than that of the receptacle” (Col. 3, lines 54- 57 of [Macias]), that is a difference in function. An oversized diameter does not have the same lateral support against spillage or the same thermal insulation capacity (leading perhaps to the need for a drain hole to accommodate increased condensation) as a close fit diameter. Thus, the [Macias] device does not have the same maintenance of function feature as the invention of Claims 1-4, and it cannot be considered anticipatory thereof. Appeal 2021-005242 Application 16/501,401 6 Appeal Br. 7-8 (emphasis added). Appellant also contends that “the [Macias] device would not permit the smaller diameter cups held securing [sic] by the seat to also be held as securely by the tray of its invention. In contrast, the Applicants’ invention would do so, and thereby keep the same function.” Reply Br. 3. The Examiner responds that when Macias’s connector portion (i.e., beverage container holder 26) is mounted into a recess, such as a cup holder of a vehicle, the connector portion does not preclude a first function of the recess (i.e., “being a cup holder”), as one can place a cup into the cupholder (beverage container holder component 22) of Macias. Ans. 9. Appellant responds: That can only be true in a general sense that both the arm rest that [sic] the tray will hold cups. However, it is not true in that they will hold the same diameter cups in the same manner, i.e. have the same function.” The Applicant has made it clear in the record that the “function” referenced in the claims relates to the same containers or cups being inserted or at least containers of the same diameter being used. Differences in diameter of the cup holder do change its function, especially with regard to the same sized containers being inserted, as described in the Applicant’s Brief. Use of the Applicant’s invention permits the same container to be held in the same manner, but the Macias device does not. Reply Br. 3 (emphasis added). Accordingly, it is the Examiner’s position that, in Macias, the “first function” of the recess in the seat arm is “being a cup holder,” and Macias’s beverage container holder 26 provides, and thus, does not preclude this function. Ans. 9. In contrast, it is Appellant’s position that the term “first function” “relates to the same containers or cups being inserted or at least containers of the same diameter being used,” and the phrase “without Appeal 2021-005242 Application 16/501,401 7 precluding the first function” requires the recess and the connector portion to “hold the same diameter cups in the same manner, i.e. have the same function.” Reply Br. 3 (emphasis added). Appellant’s contentions are unpersuasive. It is well established that “during examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification.” See In re Translogic Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)); see also In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (explaining that the scope of claims in patent applications is not determined solely on the basis of the claim language, but upon giving claims their broadest reasonable construction in light of the specification as it would be interpreted by one of ordinary skill in the art). Claim 1 itself provides no guidance as to the meaning of “first function.” As for the Specification, Appellant does not direct us to any disclosure that supports its position as to the meaning of the “first function.” Appellant indicates that support for the recited “first function” of the recess is found at page 9, lines 14-18, of the Specification. Appeal Br. 2 (Summary of the Claimed Subject Matter). This referenced passage describes: “Recess 28 is formed in a shape suited to achieve a first function, for example, to receive and removably support a beverage within a portable container (a bottle, can, cup, or the like), and can have the shape and dimensions of a conventional cup holder integrally formed in the armrest.” Spec. 9, ll. 14-17 (emphasis added). Consistent with this description, the “first function” (of the recess) can be construed to mean “receive and removably support a container.” We interpret the description that recess 28 Appeal 2021-005242 Application 16/501,401 8 “can have the shape and dimensions of a conventional cup holder integrally formed in the armrest,” as pertaining to structure that the recess can have, rather than further describing (or limiting) the function of recess 28. As noted above, Appellant contends that “[it] has made it clear in the record that the ‘function” referenced in the claims relates to the same containers or cups being inserted or at least containers of the same diameter being used.” Reply Br. 3 (emphasis added). To the extent Appellant is contending that the term “function” has been defined as having this specific meaning (i.e., Appellant is acting as its own lexicographer), we disagree. “To act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citation omitted). “[T]he patentee must ‘clearly express an intent’ to redefine the term.” Id. (citation omitted). Here, Appellant does not direct us to any disclosure that expresses a clear intent to define “first function” as having the specific meaning Appellant purports it has. Indeed, accepting this specific meaning would require importing language from the written description into the claim, which is inappropriate. See SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim.”). Accordingly, we decline to construe the “first function” of the recess as requiring the recess and the connector portion mounted in the recess to “hold the same diameter cups in the same manner.” See Reply Br. 3 (emphasis added). Appeal 2021-005242 Application 16/501,401 9 In Macias, “beverage container receptacle 27 . . . is internally sized in diameter to accommodate beverage containers of different types and diameters.” Macias, col. 3, ll. 38-41. It is apparent from Figure 3 of Macias that beverage container receptacle 27 would be able to accommodate a beverage container that could be accommodated by a seat arm beverage container holder as shown in Figure 1 of Macias, for example. Even if such beverage container would not have the same diameter as that of beverage container receptacle 27, as Appellant contends, we do not construe “first function,” as read together with the recited phrase “mounted into the recess without precluding the first function,” as requiring this same diameter. Also, beverage container receptacle 27 would be able to accommodate a beverage container having a diameter that fits closely within beverage container receptacle 27 and provide lateral support against spillage. For these reasons, Appellant does not apprise us of error in the Examiner’s findings. Accordingly, we sustain the rejection of claim 1, and claims 2-4 which fall with claim 1, as anticipated by Macias. Rejection of Claims 5-17 and 20 as Unpatentable over Macias For claims 5-17 and 20, the Examiner determines that Macias’s structure “can be used in any type of armrest/center console structure and in the same intended manner,” which would have been obvious within the level of ordinary skill in the art, with a reasonably predictable result. Final Act. 4-5. Appellant asserts, that “there remains significant ambiguity in the bases for the rejection,” and “the Examiner has still not provided requested information as to the level of ordinary skill in the art being applied by the Appeal 2021-005242 Application 16/501,401 10 Examiner in his analysis.” Appeal Br. 8-9. According to Appellant, “M.P.E.P §2141.03(II) makes it clear that only under certain limited circumstances is it acceptable for an Examiner to omit specifying in the Office action what particular level of skill he or she was applying in the rejection.” Id. at 10. Appellant states, “[i]f the Examiner would articulate what level of skill he was using in his analysis, the Applicant may be able to provide objective evidence of the actual level of skill to refute that contention, if the Applicant disagrees. . . .” Id. at 12. Appellant also contends that it “must defer any substantive response to the obviousness rejections until the Examiner provides additional information about what he considered the level of ordinary skill in the art to be, and what information he relied upon in making that determination.” Id. at 13. The Examiner responds, “one can interpret such [level of ordinary skill in the art] to include those who use, or build similar limitations in like arts.” Ans. 10 (quoting Adv. Act. 2). Appellant’s position is unconvincing. Appellant does not contend that Macias does not qualify as analogous art. We disagree with Appellant’s understanding of M.P.E.P § 2141.03(II). Appeal Br. 10. This section actually states, “[i]f the only facts of record pertaining to the level of skill in the art are found within the prior art of record, the court has held that an invention may be held to have been obvious without a specific finding of a particular level of skill where the prior art itself reflects an appropriate level.” See M.P.E.P § 2141.03(II) (citing Chore-Time Equipment, Inc. v. Cumberland Corp., 713 F.2d 774, 218 USPQ 673 (Fed. Cir. 1983); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to Appeal 2021-005242 Application 16/501,401 11 reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown.’”)); see also In re GPAC, 57 F.3d 1573, 1579 (Fed. Cir. 1995) (“The person of ordinary skill in the art is a hypothetical person who is presumed to know the relevant prior art.”). Here, Appellant provides no persuasive reason why Macias fails to “reflect[] an appropriate level.” Okajima, 261 F.3d at 1355. Nor has Appellant stated what it believes to be “the actual level of skill,” or “shown how a different, more precise definition of the pertinent art would have changed the result.” See In re Huston, 308 F.3d 1267, 1279 n.8 (Fed. Cir. 2002). Appellant disagrees that Macias’s structure could be used in the “vehicular requirements” of the claims. Appeal Br. 9. Appellant asserts, “in a vehicular environment, the vibrational motion and occasional bumps caused by road hazards would increase the need for close dimensional fit within the cup holder, in order minimize lateral motion spillage.” Id. These contentions are unpersuasive. Macias’s beverage container receptacle 27 would be able to accommodate a beverage container having a diameter that fits closely within beverage container receptacle 27 and provide lateral support against spillage. Appellant’s argument is not supported by persuasive evidence, and thus, is insufficient to establish the purported disadvantages resulting from the Examiner’s combination of teachings See Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1260 (Fed. Cir. 2010) (“Unsupported attorney argument . . . is an inadequate substitute for record evidence.”). Claim 1 recites that the apparatus is “for the intended use of connection to an other article through a recess in that other article.” Appeal Br. 15 (Claims App.) (emphasis added). Claim 5 depends from claim 1 and Appeal 2021-005242 Application 16/501,401 12 recites that “the other article is mounted inside a vehicle”; claim 6 depends from claim 5 and recites “the other article includes an armrest for a seating arrangement, and the recess forms a beverage holder disposed within that armrest, and the first function is for removably retaining beverage containers and the like, within the recess”; and claim 20 depends from claim 1 and recites, in part, “the other article is a portion of a seating assembly mounted in a recreational vehicle, the recess is formed as a beverage holder in the seating assembly.” Id. at 16, 18 (Claims App.). Even if these claims recite a new intended use, “[i]t is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.” See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997); In re Casey, 370 F.2d 576, 580 (CCPA 1967) (the manner in which a device is to be used is not germane to the issue of patentability of the device itself). As stated in Schreiber: [W]here the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. Schreiber, 128 F.3d at 1478. Here, Appellant provides no persuasive argument or evidence to prove that Macias’s beverage container holder supported tray assembly would not be capable of meeting the limitations of claims 5-11, 13, and 15-20.4 4 The Examiner’s position is that Macias’s tray assembly comprises all the recited structure, and is capable of meeting the intended use limitations of claims 5-11, 13, and 15-20. See Final Act. 4-5. Although these claims are rejected under § 103, the rejection does not need to modify the structure of Appeal 2021-005242 Application 16/501,401 13 Appellant does present a specific argument for claim 12. Appeal Br. 9. Claim 12 recites that “the motion of the second functionality portion is rotatable within a horizontal plane spaced above the armrest.” Appeal Br. 17 (Claims App.) (emphasis added). Appellant submits that, in contrast, Macias teaches “rotation about the horizontal plane.” Id. at 9. We agree with Appellant. Figure 3 of Macias shows that tray component 24 is pivotable about a hinged coupling mechanism. Macias describes that “tray component 24 can be pivoted about a generally horizontal axis from the normal use position shown in solid line in FIG. 3 to a raised position shown in phantom line in FIG. 3.” See Macias, col. 5, ll. 25-28 (emphasis added). The Examiner does not establish that Macias’s tray component 24 “is rotatable within a horizontal plane,” as claimed. Accordingly, we sustain the rejection of claims 5-11, 13, and 15-20, and do not sustain the rejection of claim 12 and claim 14 depending therefrom, as unpatentable over Macias. Rejection of Claims 18 and 19 as Unpatentable over Macias and Bertrand The Examiner relies on Bertrand as teaching the use of structure as recited in claims 18 and 19. Final Act. 5. Appellant asserts: Application of [Bertrand] to the obviousness analysis further highlights the need for the level of ordinary skill information. The Examiner cites that reference as showing fins and projections inside a cup holder, but that was done by [Bertrand] in a non-analogous application and for a non- Macias’s beverage container holder supported tray assembly to meet the intended use limitations. Appeal 2021-005242 Application 16/501,401 14 analogous purpose, unless analogous-ness can be shown to be within the understanding of a person of ordinary skill in the art. Not having adequate definition of that level precludes further analysis by the Applicant. Appeal Br. 13 (emphasis added). Appellant seems to be contending that Bertrand is non-analogous prior art. A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor, regardless of the problem it addresses; or (2) if the reference is not within the same field of endeavor, it is still reasonably pertinent to the particular problem faced by the inventor. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). However, Appellant’s contention does not specifically address either prong of the non-analogous art test, and thus, is unpersuasive. Thus, we sustain the rejection of claims 18 and 19 as unpatentable over Macias and Bertrand. CONCLUSION We affirm the rejections of claims 1-11, 13, and 15-20, and reverse the rejections of claims 12 and 14. Appeal 2021-005242 Application 16/501,401 15 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 12, 14 112(b) Indefiniteness 12, 14 1-4 102(a)(1) Macias 1-4 5-17, 20 103 Macias 5-11, 13, 15-17, 20 12, 14 18, 19 103 Macias, Bertrand 18, 19 Overall Outcome 1-11, 13, 15-20 12, 14 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED IN PART