2021003869 (P.T.A.B. Dec. 17, 2021)

Thomas Scimone et al.

Patent Trials and Appeals BoardDec 17, 2021

2021003869 (P.T.A.B. Dec. 17, 2021)

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. 14/049,098 10/08/2013 Thomas Scimone 16468.025 4284 94884 7590 12/17/2021 Ellenoff Grossman & Schole LLP Attn: James Smedley and Alex Korona 1345 Avenue of the Americas 11th Floor New York, NY 10105 EXAMINER MATTHEWS, JENNIFER S ART UNIT PAPER NUMBER 3724 NOTIFICATION DATE DELIVERY MODE 12/17/2021 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): Mpolychronides@egsllp.com USPTO@dockettrak.com akorona@egsllp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte THOMAS SCIMONE, SCOT HERBST, and ALAN REGALA ____________ Appeal 2021-003869 Application 14/049,098 Technology Center 3700 ____________ Before STEFAN STAICOVICI, MICHAEL L. HOELTER, and MICHAEL L. WOODS, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE. Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision in the Non-Final Office Action (dated Dec. 18, 2020, hereinafter “Non-Final Act.”) rejecting claims 1, 3, 4, 8, 10, 11, 15, and 17–29.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Slice Inc. is identified as the real party in interest in Appellant’s Appeal Brief (filed Mar. 22, 2021, hereinafter “Appeal Br.”). Appeal Br. 2. 2 Claims 2, 5–7, 9, 12–14, and 16 are canceled. Appeal Br., Appendix A, 1– 3. Appeal 2021-003869 Application 14/049,098 2 SUMMARY OF DECISION We AFFIRM IN PART and enter a NEW GROUND OF REJECTION of claims 1, 3, 4, 8, 10, 18–21, and 26–28 pursuant to our authority under 37 C.F.R. § 41.50(b). INVENTION Appellant’s invention is directed “to cutting blades manufactured from ceramics. Spec. para. 1. Claims 1, 11, and 25 are independent. Claim 1 is illustrative of the claimed invention and reads as follows: 1. A ceramic cutting blade comprising: a top edge, a bottom edge, opposite said top edge, a front edge that extends from a front of the top edge to a front of the bottom edge, and a rear edge that extends from a rear of the top edge to a rear of the bottom edge, wherein said ceramic blade is a single part, unitary blade that begins to taper down in thickness along a longitudinal midline of said blade from said top edge to said bottom edge, said longitudinal midline extending from the front edge to the rear edge of said blade in a plane parallel to said top and bottom edges, wherein said top edge includes an engagement means configured to allow the ceramic cutting blade to connect with a cutting tool, wherein said bottom edge defines a continuously flat cutting edge, wherein a first intersection portion between said front edge and said bottom edge is rounded, wherein a second intersection portion between said rear edge and said bottom edge is rounded, wherein said bottom edge is longer than said top edge, Appeal 2021-003869 Application 14/049,098 3 wherein the rounded firs intersection portion decreases in thickness in a direction moving from the front edge to the bottom edge, wherein the rounded first intersection portion extends from said front edge to said bottom edge and is entirely rounded from said front edge to said bottom edge. Appeal Br., Appendix A, 1 REJECTIONS I. The Examiner rejects claims 11, 15, 17, 22–25, and 29 under 35 U.S.C. § 112, second paragraph, as being indefinite.3 II. The Examiner rejects claims 1, 3, 4, 8, 10, 11, 15, and 17–29 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. III. The Examiner rejects claims 1, 4, 18, 19, 25, and 28 under 35 U.S.C. § 103(a) as being unpatentable over Seager4 and Green.5 IV. The Examiner rejects claims 3, 8, 21, and 27 under 35 U.S.C. § 103(a) as being unpatentable over Seager, Green, and Johnson.6 3 As claim 25 is discussed in the body of this rejection, we view the Examiner’s omission of claim 25 from the heading of the rejection to be a harmless typographical error. See Non-Final Act. 6–7. 4 Seager, US 3,543,402, issued Dec. 1, 1970. 5 Green, US 2007/0101576 Al, published May 10, 2007. 6 Johnson, US 2004/0187314 Al, published Sept. 30, 2004. Appeal 2021-003869 Application 14/049,098 4 V. The Examiner rejects claims 11, 17, 22, and 29 under 35 U.S.C. § 103(a) as being unpatentable over Seager, Green, and Meckel.7 VI. The Examiner rejects claims 15 and 24 under 35 U.S.C. § 103(a) as being unpatentable over Seager, Green, Meckel, and Johnson. VII. The Examiner rejects claims 20 and 26 under 35 U.S.C. § 103(a) as being unpatentable over Seager, Green, and Gross.8 VIII. The Examiner rejects claim 23 under 35 U.S.C. § 103(a) as being unpatentable over Seager, Green, Meckel, and Gross. ANALYSIS Rejection I In regards to independent claim 11, the Examiner finds the phrase “the unitary blade begins to taper down in thickness from said top edge of the blade, thereby causing an upper half of the blade to have a greater thickness than a lower half of the blade” and “the upper half of the blade has a uniform thickness” are contradicting limitations and are indefinite. Non-Final Act. 6. As to independent claim 25, the Examiner finds “the phrase ‘unitary blade begins to taper down in thickness along a longitudinal midline of said ceramic blade from said ceramic top edge to said ceramic bottom edge’ is indefinite.” Id. at 7. It is well established that “[e]ven if a claim term’s definition can be reduced to words, the claim is still indefinite if a person of ordinary skill in 7 Meckel, CA 2 403 346 A1, published Sept. 20, 2001. 8 Gross, US 5,093,996, issued Mar. 10, 1992. Appeal 2021-003869 Application 14/049,098 5 the art cannot translate the definition into meaningfully precise claim scope.” Haliburton Energy Services, Inc. v. M-I LLC, 514 F.3d 1244, 1251 (Fed. Cir. 2008). Hence, in regards to independent claim 11, we agree with the Examiner that “[i]t is unclear how the blade begins to both taper from a top edge and has a uniform thickness from the top edge to a midline.” Non- Final Act. 6 (emphasis added). As to independent claim 25, we agree with the Examiner that “[i]t is unclear if the blade tapers down in thickness beginning at the midline of the blade,” as per Appellant’s Figure 4, “or if the blade tapers down in thickness beginning at the top edge of the blade,” as per the language of independent claim 25. Id. at 7. In particular, as the tapering of the blade occurs “along” the “longitudinal midline of said ceramic blade,” it is not clear how the claimed ceramic blade can also taper “from said ceramic top edge to said ceramic bottom edge.” Accordingly, for the foregoing reasons, and also because Appellant has not addressed the Examiner’s indefiniteness rejection of claims 11, 15, 17, 22–25, and 29 (see Appeal Br. 10–29), we sustain the indefiniteness rejection of independent claims 11 and 25, and their respective dependent claims 15, 17, 22–24, and 29. NEW GROUND OF REJECTION Claims 1, 3, 4, 8, 10, 18–21, and 26–28 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Similar to independent claim 25, independent claim 1 recites, inter alia, the limitation “blade that begins to taper down in thickness along a longitudinal midline of said blade from said top edge to said bottom edge.” Appeal 2021-003869 Application 14/049,098 6 See Appeal Br., Appendix A, 1, 5. The recited “longitudinal midline” is illustrated in Appellant’s Figure 4 as extending along the middle portion of the blade. See also Appeal Br. 21. Thus, because the tapering of the blade occurs “along” the “longitudinal midline of said blade,” it is not clear how the claimed blade can also taper “from said top edge to said bottom edge.” Claims 26 and 27 are indefinite based on their dependence from independent claim 25, which for the reasons discussed supra is indefinite. In particular, by virtue of their dependency from independent claim 25, each of claims 26 and 27 includes the indefinite limitation “ceramic blade that begins to taper down in thickness along a longitudinal midline of said ceramic blade from said ceramic top edge to said ceramic bottom edge.” See Appeal Br., Appendix A, 1, 5. As the tapering of the blade occurs “along” the “longitudinal midline of said ceramic blade,” it is not clear how the claimed ceramic blade can also taper “from said ceramic top edge to said ceramic bottom edge.” Rejection II The Examiner determines that claims 1, 3, 4, 8, 10, 11, 15, and 17–29 include subject matter not supported by Appellant’s disclosure. Non-Final Act. 4–6. However, as we determine that claims 1, 3, 4, 8, 10, 11, 15, and 17–29 are indefinite and their scope is unclear, we do not reach this issue. See In re Walter, 698 F. App’x 1022, 1027 (Fed. Cir. 2017) (non- precedential). Appeal 2021-003869 Application 14/049,098 7 Rejections III–VIII In view of our determination that claims 1, 3, 4, 8, 10, 11, 15, and 17– 29 are indefinite, it follows that the rejections of these claims under 35 U.S.C. § 103(a) 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). It should be understood, however, that our decision in this regard is pro forma and based solely on the indefiniteness of the claimed subject matter, and does not reflect on the adequacy of the prior art evidence applied in support of the rejections. CONCLUSION Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New ground of rejection 11, 15, 17, 22–25, 29 112 Indefiniteness 11, 15, 17, 22–25, 29 1, 3, 4, 8, 10, 11, 15, 17–29 1129 Written Description 1, 4, 18, 19, 25, 28 103(a) Seager, Green 1, 4, 18, 19, 25, 28 3, 8, 21, 27 103(a) Seager, Green, Johnson 3, 8, 21, 27 11, 17, 22, 29 103(a) Seager, Green, Meckel 11, 17, 22, 29 15, 24 103(a) Seager, Green, Meckel, Johnson 15, 24 20, 26 103(a) Seager, Green, Gross 20, 26 9 Rejection not reached as discussed supra in Rejection II. Appeal 2021-003869 Application 14/049,098 8 23 103(a) Seager, Green, Meckel, Gross 23 1, 3, 4, 8, 10, 18–21, 26–28 112 Indefiniteness 1, 3, 4, 8, 10, 18–21, 26–28 Overall outcome 11, 15, 17, 22–25, 29 1, 3, 4, 8, 18–21, 26–28 1, 3, 4, 8, 10, 18–21, 26–28 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 [E]xaminer, in which event the prosecution will be remanded to the [E]xaminer. The new ground of rejection is binding upon the [E]xaminer unless an amendment or new Evidence not previously of Record is made which, in the opinion of the [E]xaminer, overcomes the new ground of rejection designated in the decision. Should the [E]xaminer reject the claims, appellant may again appeal to the Board pursuant to this subpart. (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 Appeal 2021-003869 Application 14/049,098 9 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. MPEP § 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED IN PART; 37 C.F.R. § 41.50(b)