Ex Parte Apprille

Board of Patent Appeals and Interferences

Feb 11, 2009

10798140 (B.P.A.I. Feb. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte THE GILLETTE COMPANY
____________________

Appeal 2008-006111
Application 10/798,140
Technology Center 3700
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Decided1: May 21, 2009
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Before JAMESON LEE, SALLY C. MEDLEY, and MICHAEL P.
TIERNEY, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Pursuant to 37 C.F.R. § 41.50(b)(2), the real party in interest, The
Gillette Company (Gillette), requests rehearing under 37 C.F.R. § 41.52 of a
decision entered February 11, 2009 (Decision). Specifically, Gillette

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-006111
Application 10/798,140

2
requests reconsideration of the Board’s new ground of rejection of claim 67
under 35 U.S.C. § 112, first paragraph.2 The request is denied.
The Board’s explanation in the Decision of the rejection of claim 67 is
reproduced below (Decision pp. 12-13):
A claim is unpatentable under 35 U.S.C. § 112, first paragraph,
if a claim element is set forth in purely functional language that does
not invoke the restricted construction under 35 U.S.C. § 112, sixth
paragraph, for elements expressed as a means or step plus function
limitation. Ex parte Miyazaki, 89 USPQ2d 1207, 1217 (BPAI 2008)
(precedential); see also Sanada v. Reynolds, 67 USPQ2d 1459, 1462
(BPAI 2003). In this case, two elements in claim 67 are expressed in
purely functional language and are not recited in language that would
invoke the application of 35 U.S.C. § 112, sixth paragraph. Those
elements are: (1) “a stabilizing feature disposed on an upper edge of
each cartridge divider, constructed to engage the cartridge connecting
portion and restrict movement of the cartridge connecting portion
within an upper opening of the corresponding section”; and (2) “a
protective feature, disposed on the upper edge of each cartridge
divider, constructed to prevent contact between the stabilizing feature
and a rear edge of the cartridge.” (Claims App’x 17:10-14.) The
specification also does not specially define any limiting structural
meaning for these terms.

Accordingly, pursuant to 37 C.F.R. § 41.50(b), we enter a new
ground of rejection of claim 67 under 35 U.S.C. § 112, first
paragraph, for lack of an enabling disclosure commensurate with the
scope of claim 67, because the claimed “stabilizing feature” and
“protective feature” are purely functional recitations and do not
invoke the application of 35 U.S.C. § 112, sixth paragraph.
(Emphasis added.)

In its rehearing request on page 3, Gillette points to parts of its
specification (page 3, ll. 3-10) which describe the location and function of a

2 Gillette does not request reconsideration of the Board’s affirmance of the
Examiner’s prior art rejections of claims 1-30, 32-60, and 66.
Appeal 2008-006111
Application 10/798,140

3
general “stabilizing feature” which is “disposed on an upper edge of at least
some of the cartridge dividers” and which is “constructed to engage the
cartridge connecting portion and restricting movement of the cartridge
connecting portion within an upper opening of the corresponding section.”
Also in its rehearing request on page 3, Gillette points to parts of its
specification (page 11, line 27 to page 12, line 11) which describe a general
“feature” to prevent contact between the stabilizing feature and a rear edge
of the cartridge, and further points to parts of its specification which describe
a particular implementation of the protective feature, in the form of a rib.
On the basis of what it identified in the specification, Gillette states
(Rhg. Req, p.3, ll. 34-35):
Clearly, the specification supports the structural meaning for
the terms “stabilizing feature” and “protective feature.”

Gillette’s argument is misplaced. We have not overlooked the
identified portions of the specification. They do not change the reasonably
indisputable conclusion that the recitations in claim 67 of a “stabilizing
feature” and a “protective feature” which perform the stated functions are
purely functional limitations not expressed as means-plus-function elements
under 35 U.S.C. § 112, sixth paragraph. Gillette does not even assert that
these terms should be construed as being limited to the particular structures
disclosed in the specification, for example, a rib implementation for the
“protective feature,” let alone explain why they should be so limited.
Moreover, with regard to the “stabilizing feature,” the parts of the
specification identified by Gillette are similarly functional and do not
specify any particular structural configuration. Gillette also has not pointed
to evidence in the record that one with ordinary skill would understand the
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Application 10/798,140

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terms “stabilizing feature” or “protective feature” as well-established
technical terms of art which specifically identify a structural configuration.
“Absent claim language carrying a narrow meaning, the PTO should
only limit the claim based on the specification or prosecution history when
those sources expressly disclaim the broader definition.” In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004). Limitations not required by the claims
should not be read into the claims from the specification. In re Van Geuns,
988 F.2d 1181, 1184 (Fed. Cir. 1993).
For the foregoing reasons, the request for rehearing is denied.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

REHEARING DENIED

MAT

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