2019002783 (P.T.A.B. Dec. 16, 2020)

Alice Mary. Kiely

Patent Trials and Appeals BoardDec 16, 2020

2019002783 (P.T.A.B. Dec. 16, 2020)

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. 10/347,018 01/17/2003 Alice Mary Kiely 6985 7590 12/16/2020 Alice O. Kiely 71 Stonewall Court Yorktown Heights, NY 10598 EXAMINER CHAWLA, JYOTI ART UNIT PAPER NUMBER 1792 MAIL DATE DELIVERY MODE 12/16/2020 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 ALICE MARY KIELY ____________ Appeal 2019-002783 Application 10/347,018 Technology Center 1700 ____________ Before HUBERT C. LORIN, JEFFREY T. SMITH, and MONTÉ T. SQUIRE, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Alice Mary Kiely (“Appellant”)1 seeks our review under 35 U.S.C. § 134 of the Final Rejection of claims 125–145. We have jurisdiction under 35 U.S.C. § 6(b) (2002). 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). The Appellant identifies Alice Mary O'Donnell Kiely (Alice O. Kiely) as the real party in interest. Appeal Br. 2. Appeal 2019-002783 Application 10/347,018 2 SUMMARY OF DECISION We AFFIRM IN PART and enter a NEW GROUND of rejection. THE INVENTION Claim 125 is illustrative, and is reproduced below: 125. A support for a frozen comestible comprising a pressed candy. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Tezuka US 4,399,153 Aug. 16, 1983 Cherukuri US 5,087,460 Feb. 11, 1992 THE REJECTIONS The following rejections are before us for review: Claims 126–132 and 138–144 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Claims 125, 126, 131, 133, 134, 137, and 145 are rejected under 35 U.S.C. § 102(b) as being anticipated by Tezuka. Claims 127–130, 132, 135, 136, and 138–144 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Tezuka and Cherukuri. Appeal 2019-002783 Application 10/347,018 3 ANALYSIS The rejection of claims 126–132 and 138–144 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. This rejection has two parts. (a) The Examiner finds the inclusion of the phrase “moisture impervious” in claims 126, 127, and 138–144 renders said claims indefinite. Final Act. 2. This part of the rejection is not sustained. As we understand it, the Examiner’s position is that “impervious” is a term of degree requiring a “standard to determine whether a material is ‘moisture impervious’” (id.), of which the Examiner apparently could find none, and so determined that “moisture impervious” fails to inform skilled artisans about the scope of the invention with reasonable certainty. According the Examiner, [a]lmost all materials allow passage of moisture, however small, given the right conditions and time. Even materials such as sealing glass that are considered hermetic have some minimal leakage of moisture. As such, “moisture impervious” is a subjective term. Id. Cf. In re Walter, 698 F. App’x 1022, 1026 (Fed. Cir. 2017) (“If a claim employs a term of degree, the intrinsic record must provide those skilled in the art with ‘objective boundaries’ with which to assess the term’s scope.”). We find the record does not support viewing “impervious” as a term of degree. By an amendment dated June 30, 2014, Appellant substituted the term “resistant” in the claims for “impervious.” Appeal 2019-002783 Application 10/347,018 4 Although “impervious” is not mentioned in the Specification, the amended claims were not rejected as adding “new matter” violating the written description requirement of 35 U.S.C. § 112, first paragraph. Cf. TurboCare Div. of Demag Delaval Turbomachinery Corp. v. General Elec. Co, 264 F.3d 1111, 1118 (Fed. Cir. 2001) (It is well established that “[w]hen the applicant adds a claim or otherwise amends his specification after the original filing date . . . the new claims or other added material must find support in the original specification.”). This suggests that the Examiner maintained the view that the Specification provides written descriptive support for “moisture impervious” (“in haec verba” description of “moisture impervious” in the original Specification not being required to satisfy the written description requirement. See In re Wright, 866 F.2d 422, 425 (Fed. Cir. 1989)). The record supports that view. Throughout the Specification, the phrase “moisture-proof” is used. See, e.g., Spec. 5 (“moisture-proof barrier”). It is mentioned at least twenty times. This comports with the ordinary and customary meaning of “impervious.” See Webster’s New World Dictionary 677 (3rd ed. 1988) (Entry 1. for “impervious”) (“incapable of being passed through or penetrated”)). Accordingly, when the claims are read in light of the Specification, when the claims call for a material that is “moisture impervious” they are reasonably broadly construed as limited to those materials that are “moisture proof” or incapable of permitting moisture to pass through or penetrate. Thus, in calling for “moisture impervious” materials, the claims do not cover “[a]lmost all materials [that] allow passage of moisture, however Appeal 2019-002783 Application 10/347,018 5 small, given the right conditions and time” (Final Act. 2). They cover the opposite; only those materials that are “moisture proof.” That does not include all such materials. Therefore, the intrinsic record supports viewing the scope of the claim phrase “moisture impervious” as circumscribed; that is, contrary to the Examiner’s view, it is not used as a term of degree but rather provides those skilled in the art with an objective boundary with which to assess the scope of “moisture impervious;” that is, materials incapable of being penetrated by moisture. Accordingly, “moisture impervious” does not necessitate there being a “standard to determine whether a material is ‘moisture impervious’” (Final Act. 2). We are satisfied that “moisture impervious” informs skilled artisans about the scope of the invention with reasonable certainty and the claims are not indefinite for including said phrase. We are cognizant that the claims previously included “moisture proof” consistent with the Specification and that the Examiner rejected said claims as indefinite for the same reason (i.e., “moisture proof” is a term of degree). See, e.g., Office Action mailed Dec. 6, 2013. Suffice it to say that were the claims to include “moisture proof” instead of “moisture impervious,” we would still be satisfied that “moisture proof” informs skilled artisans about the scope of the invention with reasonable certainty and the claims would not be indefinite for including said phrase. (b) The Examiner finds the phrase “said pressed candy comprises a selection from the group comprising a . . .” in claim 131 renders the claim indefinite. Final Act. 2. This part of the rejection is sustained. Appeal 2019-002783 Application 10/347,018 6 The phrase “a selection from the group comprising a . . .” in claim 131 is in improper Markush grouping. As the Examiner indicates, the proper format for a Markush grouping is “said pressed candy comprises a selection from the group comprising consisting of a . . .” (id.). A full discussion about Markush groupings and how they should be expressed can be found in MPEP § 2117. By using the open term “comprising” in a Markush grouping, the claim is made to encompass more alternatives than what is recited — i.e., more than one of “a sweetener, a maltodextrin, a citric acid, and a flavoring” (claim 131). However, it is unclear what other alternatives Appellant contemplates as being included in the grouping. In this situation, it is proper to reject the claim as indefinite. A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group “consisting of” (rather than “comprising” or “including”) the alternative members. Abbott Labs., 334 F.3d [1274, 1280 (Fed. Cir. 2003)], 67 USPQ2d at 1196. If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group “comprising” or “consisting essentially of” the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. MPEP § 2173.05(h). We have reviewed Appellant’s arguments. See Appeal Br. 17; Reply Br. 3. Appellant is correct that breadth is not necessarily indefiniteness. But no matter how broadly one claims one’s invention, the terms used in claiming one’s invention must be clear. Cf. In re Packard, 751 F.3d 1307 (Fed. Cir. 2014). Appeal 2019-002783 Application 10/347,018 7 As the statutory language of “particular[ity]” and “distinct[ness]” indicates, claims are required to be cast in clear—as opposed to ambiguous, vague, indefinite—terms. It is the claims that notify the public of what is within the protections of the patent, and what is not. See, e.g., Merrill v. Yeomans, 94 U.S. 568, 573–74, 24 L.Ed. 235 (1876); United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 236, 63 S.Ct. 165, 87 L.Ed. 232 (1942). Id. at 1313 (alterations in original). The use of the term “comprising” in the context of defining the group of alternative members from which one can select from does indeed open up the members one can select from beyond those that are cited in the claim. But by doing so the claim is made “unclear [as to] what other alternatives are intended to be encompassed by the claim” (MPEP § 2173(h), emphasis added). For that reason, the claim is indefinite, notwithstanding it is broad. The rejection of claims 125, 126, 131, 133, 134, 137, and 145 under pre-AIA 35 U.S.C. § 102(b) as being anticipated by Tezuka. The rejection of claims 127–130, 132, 135, 136, and 144 under 35 U.S.C. § 103(a) as being unpatentable over Tezuka and Cherukuri. The rejection of claims 125, 126, 131, 133, 134, 137, and 145 under 35 U.S.C. § 102(b) and 127–130, 132, 135, 136, and 144 under 35 U.S.C. § 103(a) must fall, pro forma, because they necessarily are based on speculative assumptions as to the meaning of the claims. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962). Independent claim 125 and claims 126–132 and 145 depending therefrom are directed to a support “comprising a pressed candy.” Independent claim 133 and claims 134–137 and 144 depending therefrom are directed to a method of making a support comprising “pressing.” Appeal 2019-002783 Application 10/347,018 8 Independent claim 138 and claims 139–141 depending therefrom are directed to a “self contained” moisture impervious support. We cannot meaningfully review the rejections of these claims because, based on the present record, we have been unable to give the claim limitations “pressed candy” (claims 125–132 and 145), “pressing” (claims 133–137 and 144), and “self-contained” (claims 138–141) a broadest reasonable constructions in light of the Specification as they would be interpreted by one of ordinary skill in the art. Our reasons are discussed below in the section titled “NEW GROUND OF REJECTION.” We otherwise have no comment on the merits of the Examiner’s position regarding the patentability of the claimed subject matter over the cited prior art. The rejection of claims 142 and 143 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Tezuka and Cherukuri. We are unable to discern the Examiner’s position as to independent claim 142 and claim 143 depending therefrom. The Final Action includes claims 142 and 143 in the statement of the rejection and states that all limitations as to those claims “have been addressed in claims 127–128.” Final Act. 4–5. While independent claim 126, and claims 127–128 by dependency, provide for a moisture impervious substance that insulates pressed candy from moisture, claims 142 and 143 are more limited. They require “insulating said comestible from moisture so as to keep said support durable.” The Examiner does not explain how Tezuka and Cherukuri disclose or suggest “making a moisture impervious support, or a portion thereof” Appeal 2019-002783 Application 10/347,018 9 comprising “insulating said comestible from moisture so as to keep said support durable.” Claim 142. Accordingly, a prima facie case of obviousness for the subject matter of claims 142 and 143 over Tezuka and Cherukuri has not been made out in the first instance. The rejection of claims 142 and 143 is not sustained. NEW GROUND OF REJECTION Claims 125–141, 144, and 145 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellant regards as the invention. “pressed candy” (claims 125–132 and 145) Claims 125–132 and 145 call for “pressed candy.” However, we have been unable to ascertain what this means. The original Specification and claims, when filed, did not mention “pressed” or “pressed candy.” “Pressed candy” first appeared in the claims by Amendment of March 13, 2006 (e.g., claim 42 called for a “moisture proof substantially stick-like pressed candy support”). Subsequently, claims including “pressed candy” were rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement because, inter alia, “the disclosure of one sweetener [in para. 181 of the Specification2] does not provide support for the broader claim to a ‘pressed candy comprises a sweetener.’” Non-Final Act., mailed Jan. 22, 2013, page 3. See also Final Act., mailed Dec. 6, 2013. 2 References to paragraph 181 of the Specification are to Application Publication US 2003/0129280 A1 (July 10, 2003). Appeal 2019-002783 Application 10/347,018 10 It appears that Appellant proposed amending para. 181 of the Specification to include the phrase “a pressed or compressed candy.” See Amendment of March 5, 2014. But the subsequent Advisory Action (mailed March 20, 2014) indicates that it was not entered. The Advisory Action also indicates that the prior rejection of the claims under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement was maintained. However, subsequently, the § 112, first paragraph, rejection was dropped. See Non-Final Rejection mailed March 10, 2017. This indicates to us that the Examiner is satisfied that “pressed candy” has written descriptive support. However, the claim phrase “pressed candy” remains unclear and vague. The Examiner has understood Appellant to be relying on disclosure of “Lik-m-aid” in para. 181 of the Specification as an example of a “pressed candy.” See Advisory Act. 6 (“Regarding Lik-M-Aid being disclosed it is noted that claims in general recite “pressed candy” which is a general broader claim and Lik-M-Aid is only one of such pressed confections.”). The difficulty with this is that “Lik-m-aid” refers to a powder. See Trademark Electronic Search System at USPTO.gov (search for “LIK-M-AID”; Registration Number 0801458). Appellant also argues, in contrasting “pressed candy” from Tezuka’s gum, that “‘[p]ressed candy’ is well-known, factually established and can be ordered as ‘pressed candy’ on the Internet.” Reply Br. 15. If we understand Appellant correctly, “pressed candy” is the result of a pressing that is different from what Tezuka’s gum undergoes. This suggests that there are technical details with the “pressing” associated with Appeal 2019-002783 Application 10/347,018 11 “pressed candy” that distinguishes “pressed candy” from Tezuka’s gum. However, at present, the record provides insufficient evidence of those technical details. There is insufficient information about the well-understood meaning of “pressed candy” or about the conditions that would define what “pressed candy” is. Appellant also states that “pressed candy” is “illustrated in Appellant’s Figures 3, 4, and 28.” Reply Br. 15. We have reviewed said Figures but do not see “pressed candy” described there. They show “edible homogeneous support[s].” Spec. 10. Clarification of the meaning of “pressed candy” is needed. Assuming evidence is presented showing, as Appellant argues, that “pressed candy” has a well-known established meaning in the art to one of ordinary skill in the art and that, given such a meaning, “pressed candy” differs from Tezuka’s gum, the claim limitation “pressed candy” may be a distinguishing feature of the claimed subject matter. Given the lack of clarity, the distinguishing feature of “pressed candy” is presently difficult to ascertain. Until such time that the meaning of the phrase “pressed candy” is clarified, “pressed candy” remains unclear and vague, rendering the claims indefinite. See Miles Labs. Inc. v. Shandon Inc., 997 F.2d 870 (Fed. Cir. 1993). The “distinctly claiming” requirement means that the claims must have a clear and definite meaning when construed in the light of the complete patent document. Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448, 452, 227 USPQ 293, 296 (Fed. Cir. 1985). Section 112 thus ensures definiteness of claim language. See In re Zletz, 893 F.2d 319, 322, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). Appeal 2019-002783 Application 10/347,018 12 The test for definiteness is whether one skilled in the art would understand the bounds of the claim when read in light of the specification. Id. at 874–875. “[U]nder the broadest reasonable interpretation when read in light of the Specification, [the phrase ‘pressed candy’] is vague and unclear, and a person having ordinary skill in the art would not be able to discern the metes and bounds of the claimed invention in light of this claim language.” Ex parte McAward, 2015-006416, slip op. at 15–16 (PTAB Aug. 25, 2017) (precedential). Accordingly, claims 125–132 and 145 are rejected under 35 U.S.C. § 112, second paragraph, as indefinite for failing to particularly point out and distinctly claim Appellant’s invention. “pressing” (claims 133–137 and 144) For the same reasons discussed above for “pressed candy,” the claim term “pressed” is vague and unclear, and a person having ordinary skill in the art would not be able to discern the metes and bounds of the claimed invention in light of this claim language. Accordingly, claims 133–137 and 144 are rejected under 35 U.S.C. § 112, second paragraph, as indefinite for failing to particularly point out and distinctly claim Appellant’s invention. “self-contained” (claims 138–141) For reasons similar to those discussed above for “pressed candy,” the claim phrase “self-contained” is vague and unclear, and a person having ordinary skill in the art would not be able to discern the metes and bounds of the claimed invention in light of this claim language. Appeal 2019-002783 Application 10/347,018 13 The claims call for a “self contained moisture impervious support.” It is unclear what “self-contained” means in the context of a moisture impervious support. We have been unable to find the phrase in the Specification or disclosure so that one of ordinary skill in the art would understand what “self-contained” encompasses, if anything. Certain statements in the briefs add more confusion. On page 15 of the Appeal Brief, where Appellant discusses claim 138, Appellant cites various passages from the Specification that suggest, for example, that a coating may be used to “self-contain” a support. And yet on page 26, it states that “Cherukuri makes a coating for gum. The self contained support of claim 138 does not require a coating.” It may be that there are technical details associated with a “self-contained” support that makes it different from a coating like that used in Cherukuri. However, at present, the record provides insufficient evidence of these details. There is insufficient information about the meaning of “self-contained” or about the conditions that would define what a “self-contained” support is. Clarification of the meaning of “self-contained” is needed. Assuming evidence is presented showing “self-contained” has a definite meaning, such as a well-known established meaning in the art to one of ordinary skill in the art, and that, given such a meaning, a “self-contained” support differs from coating a gum as Cherukuri describes, the claim limitation “self-contained” may be a distinguishing feature of the claimed subject matter. Given the lack of clarity, that is presently difficult to ascertain. Appeal 2019-002783 Application 10/347,018 14 Until such time that the meaning of the phrase “self-contained” is clarified, “self-contained” remains unclear and vague, rendering the claims indefinite. Accordingly, claims 138–141 are rejected under 35 U.S.C. § 112, second paragraph, as indefinite for failing to particularly point out and distinctly claim Appellant’s invention. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground 126–132, 138–144 112 ¶ 2 Indefiniteness 131 126–130, 132, 138– 144 126–132, 138–141, 144 125, 126, 131, 133, 134, 137, 145 102 Tezuka 125, 126, 131, 133, 134, 137, 145 127–130, 132, 135, 136, 138– 144 103 Tezuka, Cherukuri 127–130, 132, 135, 136, 138– 144 125, 133– 137, 145 112 ¶ 2 Indefiniteness 125, 133– 137, 145 Overall Outcome 131 125–130, 132–145 125–141, 144, 145 NEW GROUND OF REJECTION This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial Appeal 2019-002783 Application 10/347,018 15 review.” 37 C.F.R. § 41.50(b) also provides that 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. . . . (2) Request rehearing. Request that the proceeding be reheard under §41.52 by the Board upon the same Record. . . . No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED IN PART; 37 C.F.R. § 41.50(b)