Ex Parte Blain

Patent Trial and Appeal Board

May 25, 2016

13006193 (P.T.A.B. May. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/006, 193 01/13/2011
139868 7590 08/09/2016
DASCENZO Intellectual Property Law, P,C
1000 SW Broadway, Suite 1555
Portland, OR 97205
FIRST NAMED INVENTOR
Christopher C. Blain
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
KRN 360 4022
EXAMINER
SMITH, DAVIDE
ART UNIT PAPER NUMBER
2881
MAILDATE DELIVERY MODE
08/09/2016 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 CHRISTOPHER C. BLAIN
Appeal2014-004769
Application 13/006, 193
Technology Center 2800
Before CHUNG K. PAK, BEYERL YA. FRANKLIN, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellant requests rehearing of our Decision entered May 25, 2016
("Decision"), newly rejecting claims 30 and 32 under 35 U.S.C. § 103 as
unpatentable over Reber pursuant to 3 7 C.F .R. § 41. 50(b ). 1 Request for
Rehearing filed July 22, 2016 ("Req. Reh'g") at 1-2. In so requesting,
1 Although Appellant also requests rehearing of our advice to the Examiner
on claims 1 and 21 in the event of any future examination in footnote 17 of
the Decision, we need not consider such request because it is not a rejection
that has been affirmed or newly entered. In any event, our responses to
Appellant's arguments drawn to our new ground of rejection against claims
30 and 32 are applicable to the statement in footnote 17 in the Decision
directed to claims 1and21 because the same issue is involved. Req. Reh'g
1---6.
Appeal2014-004769
Application 13/006, 193
Appellant chooses to rehear this proceeding under § 41.52 by the Board
based on the same record, rather than chooses to reopen the prosecution of
the instant application. Compare Decision 14--15 with Req. Reh'g 1-2.
Appellant does not question our Decision affirming the Examiner's decision
rejecting claims 1 through 11, 13 through 22, 31, and 3 3 under 3 5 U.S. C. §
103. Req. Reh'g 1---6.
Appellant contends that the Board erred in newly rejecting claims 30
and 32 in the Decision because the limitation "the liquid container is
constructed of a material through which visible light may pass but through
which ultraviolet (UV) light does not pass" recited in claims 1 and 21
(emphasis added) from which claims 30 and 32, respectively depend limits
the material used for constructing the container to only those materials that
permit the passage of visible light, but does not permit the passage of UV
light. Req. Reh'g 1---6. We do not agree.
Claims 1 and 21 employ the mandatory language "does not pass" in
the context of UV light to limit the material used for constructing the liquid
container to only those materials which prevent the passage of harmful UV
light, but employ the optional or permissive language "may pass" in the
context of visible light to include those materials which either allow or do
not allow the passage of visible light. Claims 30 and 32 recite that the
material for preventing the passage of UV light is "a material that reflects
UV light[,]" but do not recite that such UV reflective material allows the
passage of visible light. Appellant's use of the mandatory and optional
(permissive) language in the claims clearly indicates their intent to either
enlarge or limit certain functional characteristics of the material used for
constructing the liquid container recited in the claims. Consistent with this
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Appeal2014-004769
Application 13/006, 193
intent expressed in the language of the claims, the Specification, at page 7,
lines 12-21, also states that:
An illustrative, non-exclusive example of a material that
may be used to construct liquid containers 12 according to the
present invention includes the TRIT ANâ„¢ copolyester polymer
developed by Eastman Chemical Company. Other illustrative,
non-exclusive examples of materials that may be suitable for
construction of liquid containers according the present
disclosure include polycarbonate and metal, such as aluminum
and stainless steel. Further illustrative, non-exclusive examples
are disclosed in US. Patent No. 7,533, 783, the entire disclosure
of which is hereby incorporated by reference. Liquid container
according to the present disclosure may be formed from a
material, and/or may include an optional coating, that is not
transmissive of ultraviolet (UV) light emitted by the
purification assembly. [(Emphasis added.)]
In other words, the Specification, like the claims, states that a material used
for constructing liquid containers can be those which permit or do not permit
the passage of visible light Id. Thus; we find no reversible error in our
broadest reasonable interpretation of the above functionally defined material
recited in the claims as our interpretation is consistent with the ordinary
meaning of the claim language and the written description in the
Specification. See, e.g., In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir.
1997).
Appellant's excuse relating to not reciting certain narrower functional
language to define a material used for constructing a liquid container due to
possible indefiniteness at page 3 of the Request for Rehearing is unavailing.
As indicated supra, the Specification and claim language make clear that
Appellant intends to define the material used for constructing a liquid
container broadly to include those materials that do not permit the passage of
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Appeal2014-004769
Application 13/006, 193
visible light and UV light and those materials that permit the passage of
visible light, but do not permit the passage of UV light. On this record,
Appellant does not precisely define his invention in the claims to exclude the
container taught or suggested by Reber. Morris, 127 F.3d at 1056 ("It is the
applicants' burden to precisely define the invention, not the PTO' s. See
35 U.S.C. § 112, i-f 2 .... [T]his section puts the burden of precise claim
drafting squarely on the applicant.").
Finally, Appellant also appears to question our interpretation in the
Decision based on Appellant's understanding of the Examiner's
interpretation which is not consistent with Appellant's own Specification, as
indicated supra. Req. Reh' g 4. Appellant further refers to some preferred
embodiments in Reber in relation to his proposed claim interpretation, but
does not question our findings directed to Reber in our Decision.2 Req.
Reh'g 4---6. Accordingly, we find that Appellant has not identified any
reversible error in our Decision.
In conclusion, based on the foregoing, we have granted Appellant's
Request for Rehearing to the extent that we have reconsidered our Decision,
but we deny Appellant's request to make any change therein.
2 If Appellant intends to argue that Reber is limited to its particular preferred
embodiments, we are still unpersuaded because all disclosures of Reber must
be considered in order to resolve obviousness. See also In re Lamberti, 545
F.2d 747, 750 (CCPA 1976) ("[A]ll disclosures of the prior art, including
unpreferred embodiments, must be considered.")
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Appeal2014-004769
Application 13/006, 193
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (1).
DENIED
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