Ex Parte Cimetta et al

Patent Trial and Appeal Board

Sep 26, 2016

12332974 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/332,974 12/11/2008
116 7590 09/28/2016
PEARNE & GORDON LLP
1801EAST9TH STREET
SUITE 1200
CLEVELAND, OH 44114-3108
FIRST NAMED INVENTOR
Silvano Cimetta
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.
WZP1-39547US1 5518
EXAMINER
LU,JIPING
ART UNIT PAPER NUMBER
3743
NOTIFICATION DATE DELIVERY MODE
09/28/2016 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):
patdocket@peame.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SILVANO CIMETT A and FLA VIO NOVIELLO
Appeal2013-010800
Application 12/332,974
Technology Center 3700
Before LYNNE H. BROWNE, JILL D. HILL, and JASON W. MELVIN,
Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Silvano Cimetta and Flavio Noviello (Appellants) appeal under 35
U.S.C. § 134 from the rejection of claims 8, 16-19, 21-23, 27, 35, and 38-
56. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal2013-010800
Application 12/332,974
CLAIMED SUBJECT MATTER
Claims 8 and 35, reproduced below, are illustrative of the claimed
subject matter:
8. A method of drying clothing, comprising the steps of:
providing first heated air into a drum holding clothing to
be dried;
monitoring a condition of said clothing in said drum
during said drying;
detecting when said condition nears or reaches a
predetermined moisture content threshold; and
responsive to detecting that said condition is nearing or has
reached said predetermined moisture content threshold,
providing second heated air into the drum, said second heated air
being heated to a greater temperature than said first heated air
and being provided for a period of time for raising a temperature
of the clothing.
35. A method of drying clothing, comprising the steps of:
providing heated air into a drum holding clothing to be
dried in a first drying phase, wherein a temperature of said
heated air is constrained to being below a first temperature;
monitoring a moistitre content of said clothing in said
drum during said first drying phase;
detecting when said moisture content reaches a
predetermined moisture content threshold; and
responsive to detecting that said moisture content is near
or has reached said predetermined moisture content threshold,
providing heated air into the drum for a second drying phase,
said heated air being heated to a greater temperature than said
first temperature and being provided for a predetermined period
of time.
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Appeal2013-010800
Application 12/332,974
REJECTIONS 1
I. Claims 8, 16-19, 21-23, 27, 35, and 38-56 stand rejected under
35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement.
II. Claims 8, 17, 19, 23, 27, 35, 38, 39, 41, 46, 47, 48 and 53 stand
rejected under 35 U.S.C. § 102(b) as anticipated by Fogt (US
3,397,461, iss. Aug. 20, 1968).
DISCUSSION
Rejection I
The Examiner determines that claims 8, 16-19, 21-23, 27, 35, and
38-56 contain new matter. See Final Act. 2--4. For example the Examiner
determines that:
The claimed limitations of "responsive to detecting that said
condition is nearing or has reached said predetermined moisture
content threshold, providing second heated air into the drum, said
second heated air being heated to a greater temperature than said
first heated air and being provided for a period of time for raising
a temperature of the clothing" in claim[] 8
is new matter. Id. at 2-3. The Examiner determines that similar limitations
in claims 23, 27, 35, 47, and 55 are also new matter. See id. at 3--4. The
Examiner further determines that "the limitations regard[ing] 'between
about', 'at least about', 'greater than or equal to' in claims 16, 18, 21, 22 and
the newly added claims 27, 35, 38-56 are new matter[]." Id. at 4.
1 The rejection of claims 46-56 under 35 U.S.C. § 112, second paragraph,
the rejection of claims 8, 17, 19, 23, 27, 35, 38, 39, 41, 46--48, and 53 under
35 U.S.C. § 102(e), and the rejection of claims 16, 18, 21, 22, 42--45, 50-52,
and 54--56 under 35 U.S.C. § 103(a) are withdrawn by the Examiner. Ans.
6.
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Appeal2013-010800
Application 12/332,974
Appellants argue that "the Examiner has failed in his burden to show a
lack of written description support. Furthermore, because the claims are
fully supported by the written description . . . they are not properly
considered 'new matter'." Appeal Br. 15. In support of this contention,
Appellants direct our attention to several portions of the Specification and
Figure 8 of the Drawings. See Appeal Br. 17-38.
The purpose of the written description requirement in 35 U.S.C.
§ 112, first paragraph, is to "'clearly allow persons of ordinary skill in the art
to recognize that [the inventor] invented what is claimed."' Ariad Pharm.,
Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane)
(citing Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562---63 (Fed. Cir.
1991)). "[T]he test for sufficiency is whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date."
Id. This test "requires an objective inquiry into the four comers of the
specification from the perspective of a person of ordinary skill in the art."
Id. "Based on that inquiry, the specification must describe an invention
understandable to that skilled artisan and show that the inventor actually
invented the invention claimed." Id. This inquiry is a question of fact. Id.
(citing Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed.
Cir. 1985)).
Here, the Examiner appears to be applying a different test for
compliance with the written description requirement. The Examiner states
that "[t]he applicant must show clear and unequivocal support from the
original specification." Final Act. 9. The Examiner is incorrect. Moreover,
the Examiner never explains why Figure 8, when considered in view of the
teachings of the Specification, does not enable a skilled artisan to understand
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Appeal2013-010800
Application 12/332,974
the invention or show that the inventor actually invented the claimed
invention. Thus, the Examiner fails to set forth a prima facie case of failure
to comply with the written description requirement of 35 U.S.C. § 112, first
paragraph.
We do not sustain the Examiner's decision rejecting claims 8, 16-19,
21-23, 27, 35, and 38-56 as failing to comply with the written description
requirement.
Rejection II
Claims 23, 27, 35, 38, 39, 41, 46, 47, 48 and 53
Claims 23, 27, 35, and 47 all require monitoring of the moisture
content of the clothing. See Appeal Br. 67, 68, 71, 73, 75. Appellants argue
that "Fogt fails to utilize any actual detection of moisture content." Appeal
Br. 54.
Responding to this argument, the Examiner states that "[i]n the Fogt
patent, the exhaust temperature conditions are also an indication of the
measurement of moisture levels." Ans. 20. However, the Examiner does
not explain how measuring the exhaust temperature constitutes monitoring
of the moisture content of the clothing. Accordingly, Appellants' argument
1s persuasive.
We do not sustain the Examiner decision rejecting claims 23, 27, 35,
47, and 55 as anticipated by Fogt. We likewise do not sustain the
Examiner's decision rejecting claims 38, 39, 41, 46, and 48, which depend
from either claim 35 or claim 47.
Claims 8, 17, and 19
Claim 8 does not require monitoring of the moisture content of the
clothing. Thus, Appellants' argument, supra, does not pertain to claim 8. In
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Appeal2013-010800
Application 12/332,974
addition, Appellants argue that Fogt fails to disclose "raising the temperature
of the clothing using the second heated air." Appeal Br. 56.
Responding to this argument the Examiner states "the step of 'raising
the temperature of the clothing using the second heated air' cannot be
found" in claim 8. Ans. 22. The Examiner is mistaken. Claim 8 requires,
"said second heated air being heated to a greater temperature than said first
heated air and being provided for a period of time for raising a temperature
of the clothing." Appeal Br. 66 (emphasis added).
The Examiner further finds that the Fogt patent does provide "a later
supplied air at a higher temperature than the earlier supplied air." Ans. 21.
However, it does not necessarily follow that supplying air at a higher
temperature will raise the temperature of the clothing. Thus, Fogt does not
disclose explicitly, inherently, or implicitly, a method that raises the
temperature of the clothing as required by claim 8. Appeal Br. 66.
Accordingly, the Examiner's finding is in error.
For these reasons we do not sustain the Examiner's decision rejecting
claim 8, and claims 17 and 19, which depend therefrom.
DECISION
The Examiner's rejections of claims 8, 16-19, 21-23, 27, 35, and 38-
56 are REVERSED.
REVERSED
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