Ex Parte Arollanes

Board of Patent Appeals and Interferences

Jan 25, 2010

10984266 (B.P.A.I. Jan. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte AL M. ARELLANES
____________

Appeal 2009-001400
Application 10/984,266
Technology Center 3600
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Decided: January 25, 2010
____________

Before LINDA E. HORNER, JOHN C. KERINS and
MICHAEL W. O’NEILL, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2009-001400
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STATEMENT OF THE CASE
Al M. Arellanes (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s final rejection of claims 1-20, all of the claims
currently pending in the application. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellant’s claimed invention is directed to a collapsible fluent
material confinement system comprising a grid formed by a plurality of
strips coupled to one another, and having a deployment indicator disposed
on a selected strip, with the deployment indicator being configured to be
effective in low visibility conditions. (Appeal Br., Claims Appendix).
Independent claim 1 is reproduced below, and is representative of the overall
claimed subject matter:
1. A collapsible fluent material confinement
system configured to receive a granular fluent
material to form a temporary barrier structure, the
fluent material confinement system comprising:

a plurality of strips coupled to one another to form
a grid, the plurality of strips including a plurality
of lengthwise strips and a plurality of widthwise
strips, wherein the lengthwise strips and widthwise
strips are coupled with one another such that the
grid is movable between an open configuration, in
which the cells are expanded to receive the
granular fluent material, and at least one collapsed
configuration for storage; and
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a deployment indicator disposed on a selected
strip, wherein the deployment indicator is
configured to be effective in low visibility
conditions to indicate to a user how to move the
grid from the collapsed configuration to the open
configuration.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Benjamin US 3,878,638 Apr. 22, 1975
Johnson, Jr. US 4,945,689 Aug. 7, 1990

The Examiner has rejected claims 1-20 under the second paragraph of
35 U.S.C. § 112, as being indefinite for failing to particularly point out and
distinctly claim the subject matter regarded as being the invention. The
Examiner has further rejected claims 1-20 under 35 U.S.C. § 103(a) as being
unpatentable over Johnson, Jr., in view of Benjamin.

ISSUES
The Examiner found that the claim limitation “wherein the
deployment indicator is configured to be effective in low visibility
conditions” is indefinite, in that “low visibility” is a relative term and a word
of degree that is not defined by the claim and does not have a standard set
forth in the Specification for measuring the degree. Appellant argues that
the limitation “effective in low visibility conditions to indicate to a user” is
defined in the Specification, that one of ordinary skill in the art would
understand the term to represent specific examples in the Specification, and
that the claim limitation is not, in any event, a relative term. The issue here
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is whether Appellant has demonstrated that the Examiner erred in
concluding that the claims including the term in dispute are indefinite by the
standards of 35 U.S.C. § 112, second paragraph.

FINDINGS OF FACT
The following enumerated findings of fact (FF) are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
FF 1. Appellant’s Specification uses the relative terms, “poor
visibility conditions”, “low light conditions”, and “inclement weather or
other low visibility conditions”, without quantifying or otherwise lending
some specificity or precision to what would and would not be “low” and
“poor” in these circumstances. (Spec., p. 9, ll. 10-11, ll. 15-16; p. 18, l. 4).

PRINCIPLES OF LAW
The primary purpose of the definiteness requirement in the second
paragraph of 35 U.S.C. § 112 is to ensure that the claims are written in such
a way that they give notice to the public of the extent of the legal protection
afforded by the patent, so that interested members of the public, e.g.,
competitors of the patent owner, can determine whether or not they infringe.
All Dental Prodx, LLC v. Advantage Dental Prods., 309 F.3d 774, 779-80
(Fed. Cir. 2002).
The test for definiteness under 35 U.S.C. § 112, second paragraph, 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
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Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). When a word of
degree is used in a claim, it is incumbent upon the applicant to provide, in
the patent specification, some standard for measuring that degree. Seattle
Box Co., Inc. v. Industrial Crating & Packaging, Inc., 731 F.2d 818, 826
(Fed. Cir. 1984).
Rejections on prior art grounds cannot be sustained if the hypothetical
person of ordinary skill in the art would be required to make speculative
assumptions concerning the meaning of claim language. In re Steele, 305
F.2d 859, 862 (CCPA 1962).

ANALYSIS
Claims 1-20--Indefiniteness under 35 U.S.C. § 112, second paragraph
Appellant argues all of claims 1-20 as a group, and does not present
any arguments for the separate patentability of any of the claims.
Accordingly, we will treat claim 1 as representative of the group, and claims
2-20 will stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2007).
The Examiner takes the position that the term “low visibility” in the
claim term “effective in low visibility conditions”, in referring to a required
property of the claimed indicator, is a relative term, is not otherwise defined
by the claims, and that the Specification provides no standard for
determining what would and would not constitute low visibility conditions.
(Answer 4, 9-10). The Examiner identifies possible examples of visibility
conditions, including total darkness, limited lighting, wooded areas, fog, and
long distances, noting that the various types of indicators disclosed in the
Specification might or might not be effective under these various conditions.
(Answer 10). The Specification itself uses only relative terms such as, “poor
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visibility conditions”, “low light conditions”, and “inclement weather or
other low visibility conditions”, without quantifying or otherwise lending
some specificity as to what would and would not be “low” and “poor” in
these circumstances. (FF 1).
Appellant contends that the claim term “effective in low visibility
conditions to indicate to a user” is defined in the Specification. (Appeal Br.
12). In support of that contention, Appellant quotes two passages from the
Specification which describe embodiments of the deployment indicators
which take the form of visibility enhancements and tactile enhancements.
(Id.). Appellant then states that those descriptions make clear to the public
that the above claim term “includes materials that enhance the deployment
indicator in a visual or tactile manner relative to other portions of the fluent
material confinement system.” (Appeal Br. 12-13) (emphasis added). The
quoted descriptions and Appellant’s characterization thereof fall well short
of establishing a definition of the claim term at issue. The quoted
descriptions do not even mention “low visibility conditions”, let alone
provide any standard for, or means of determining, what would and would
not constitute low visibility conditions. The cited descriptions do nothing
more than provide some examples of types of visual and tactile enhancers
that would be effective in low visibility conditions.
Citing again to portions of the same two passages from the
Specification, Appellant further argues that the claim term, “indicator . . .
effective in low visibility conditions to indicate to a user”, would be
understood by persons of ordinary skill in the art as “represent[ing] an
indicator having a reflective, fluorescent, and/or tactile property that
distinguishes it from the other parts of the structure.” (Reply Br. 6). It
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appears that Appellant is here arguing that persons of ordinary skill in the art
would understand that the claim term would be limited to indicators of those
specific types, so as to avoid having to address what persons of ordinary
skill in the art would understand by the claim term “low visibility
conditions”. Appellant points to only specific embodiments described in the
Specification, and presents no persuasive arguments as to why persons of
ordinary skill in the art would understand that the claim term would be so
limited. We decline to entertain this attempt to read limitations found in
embodiments of the Specification, but having no basis in claim 1, into the
claim term “indicator [is] configured to be effective in low visibility
conditions”. In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969).
Appellant takes this argued claim interpretation one step further,
asserting that the distinguishing property of, or difference between, the
indicator and the remainder of the structure is not recited in terms of degree.
(Reply Br. 6). Appellant’s interpretation is that the claim language at issue
is not even a relative term, rather, the claim language at issue requires only
that the recited structure (indicator) either exist, or not exist (in the case of a
structure being outside the scope of the claim), on a grid strip. (Id.). This
position is not tenable, as it ignores the very claim language at issue. Claim
1 recites that a selected strip is to have a deployment indicator disposed
thereon. Claim 1, however, then recites that the deployment indicator has
the characteristic that it is to be effective in low visibility conditions to
indicate to a user how to move the grid. This is an additional requirement
for the indicator, and clearly includes a relative term or term of degree.
We noted above, in the legal principles relevant to this issue, that the
primary purpose of the definiteness requirement is so that interested
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members of the public, e.g., competitors or potential competitors of a patent
owner, can determine whether or not they would be infringing a claim. All
Dental Prodx, LLC, 309 F.3d at 779-80. Viewing Appellant’s argument in
the light of this principle further exposes the flaw in the reasoning employed.
In assessing whether a particular collapsible fluent material confinement
system falls either within the scope of claim 1 or outside the scope of claim
1, one must first determine whether a deployment indicator is disposed on a
selected strip. Assuming that a deployment indicator is so provided, using
Appellant’s argued construction that the claim limitation only requires the
existence or presence of a deployment indicator, that would be the end of the
inquiry, regardless as to whether, under less than perfect visibility
conditions, that indicator would be effective to indicate to a user how to
move the grid.
As noted above, claim 1 also requires that the indicator be effective
under low visibility conditions. Thus, one would have to know what is
encompassed by the term “low visibility conditions”, in order to determine
whether an indicator provided on the strip of the confinement system would
be effective under those conditions to indicate to a user how to move the
grid. As noted by the Examiner, and as discussed above, the Specification
fails to set out any standard or guidelines which persons of ordinary skill in
the art could use to determine what is emcompassed by, and conversely,
what is excluded by, the term. Seattle Box Co., 731 F.2d at 826 (holding
that it is incumbent upon the applicant to provide, in the patent specification,
some standard for measuring degree of claim term).
As an illustrative example, a competitor might well wish to introduce
a product having an indicator that is not effective in low visibility
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conditions, so as to avoid at least literal infringement of Appellant’s claim 1
on appeal (assuming, arguendo, that the claim had issued in a patent), yet is
effective and useful in better than low visibility conditions. Appellant’s
Specification provides no guidance as to where any line or lines of
demarcation exist between low visibility conditions and other than low
visibility conditions. Claim 1 thus fails to serve the purpose of the
definiteness requirement, and we are not persuaded that the Examiner erred
in rejecting that claim, as well as claims 2-20 argued as a group with claim
1, as being indefinite under 35 U.S.C. § 112, second paragraph. See In re
Moore, 439 F.2d 1232, 1235 (CCPA 1971) (claims must set out and
circumscribe a particular area with a reasonable degree of precision and
particularity).

Claims 1-20--Obviousness based on Johnson, Jr. in view of Benjamin
Because we have concluded that the limitation in each of claims 1-20
directed to the indicator being “effective in low visibility conditions” is
indefinite, the prior art rejection of claims 1-20 must fall because it is
necessarily based on a speculative assumption as to the meaning of the
claims. In re Steele, 305 F.2d at 862-63. We reverse the rejection of claims
1-20 under 35 U.S.C. § 103(a) as being unpatentable over Johnson, Jr. and
Benjamin. It should be understood, however, that our decision in this regard
is 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
rejection.

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CONCLUSIONS
Appellant has not established that the Examiner erred in rejecting
claims 1-20 under 35 U.S.C. § 112, second paragraph. We reverse the
rejection of claims 1-20 as being unpatentable over Johnson, Jr., and
Benjamin in that speculation would be required to determine the proper
scope of the claims.

DECISION
The decision of the Examiner to reject claims 1-20 under 35 U.S.C.
§ 112, second paragraph, is affirmed. The decision of the Examiner to reject
claims 1-20 under 35 U.S.C. § 103(a) is reversed.
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) (2007).

AFFIRMED

Klh

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