Ex Parte Hsu

Board of Patent Appeals and Interferences

Dec 28, 2011

11479255 (B.P.A.I. Dec. 28, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/479,255 06/30/2006 Junior Hsu USAC-01 9178
2387 7590 12/28/2011
Olson & Cepuritis, LTD.
20 NORTH WACKER DRIVE
36TH FLOOR
CHICAGO, IL 60606
EXAMINER
WILSON, LEE D
ART UNIT PAPER NUMBER
3727
MAIL DATE DELIVERY MODE
12/28/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JUNIOR HSU
____________

Appeal 2010-000285
Application 11/479,255
Technology Center 3700
____________

Before LINDA E. HORNER, STEVEN D.A. McCARTHY, and
PHILLIP J. KAUFFMAN, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Junior Hsu (Appellant) seeks our review under 35 U.S.C. § 134 of the
Examiner’s decision rejecting claims 1-8. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
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THE INVENTION
Appellant’s claimed invention “relates to a cutting board of the type
commonly found in the home used for cutting various items including, but
not limited to poultry, meats, vegetables, fruits and the like.” Spec. 1.
Claim 1, reproduced below, is representative of the subject matter on appeal.
1. A cutting board having a both an arcuate portion and
generally planar cutting surface terminating in an edge having
both an arcuate portion and straight portions thereof, and a
stand pivotally mounted in said arcuate portion moveable
between a cutting position wherein said stand is generally
coplanar with said cutting surface and a drainage position
wherein said stand supports said generally planar cutting
surface in a generally vertical position to facilitate draining and
drying of said cutting board.
THE REJECTIONS
Appellant seeks review of the following rejections:
1. Claims 1-8 under 35 U.S.C. § 112, second paragraph as indefinite for
failing to particularly point out and distinctly claim the subject matter
which applicant regards as the invention.
2. Claims 1, 2, 4, 7, and 8 under 35 U.S.C. § 102(b) as anticipated by
Thomas (US 2,189,687; iss. Feb. 6, 1940).
3. Claims 1-4 and 6-8 under 35 U.S.C. § 103(a) as unpatentable over
Miyake (US 5,085,416; iss. Feb. 4, 1992), Laurenzi (US 5,996,983;
iss. Dec. 7, 1999), and Thomas.
4. Claim 5 under 35 U.S.C. § 103(a) as unpatentable over Miyake,
Laurenzi, Thomas, and Poynton (US 7,040,611 B2; iss. May 9, 2006).
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ISSUES
The Examiner determined that claims 1-8 are indefinite because “[i]t
is unclear whether the ‘arcuate portion’ of claim 1, line 2 is the same or
different from the ‘arcuate portion’ of claim 1, line 1.” Ans. 3. Appellant
argues that when the claim language is read in light of the Specification, “the
only logical interpretation of the phrase ‘said arcuate portion’ in line 3 of
claim 1 is that the arcuate portion in line 1, and the arcuate portion of the
edge in line 2, each refers to the same feature” and that claim 1 is not
“insolubly indefinite.” Reply Br. 7-8.
The Examiner found that the Christmas tree stand of Thomas
anticipates the structure of claim 1 and “is capable of being used as a cutting
board.” Ans. 3, 5. Appellant argues that Thomas’s Christmas tree stand
requires the tree to form the pivotal connection between the base and the
lower member and that “[w]hen a Christmas tree is inserted, the Thomas
board 3 is not capable of being used as a cutting board as suggested by the
examiner.” App. Br. 6.
The Examiner determined that it would have been obvious to modify
the cutting board of Miyake to add a pivotal stand having an arcuate edge in
the bottom edge of the board in view of the disclosures of Laurenzi and
Thomas “in order to conveniently place the cutting board in a vertical
position for purposes of storage and draining of the cutting board after use
and to facilitate the manufacture of the base at a minimum cost.” Ans. 4.
Appellant argues that the Examiner failed to articulate an adequate reason to
explain why one of ordinary skill in the art would have been led to modify
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the cutting board of Miyake, as modified by Laurenzi, with the arcuate
portion of Thomas’s Christmas tree stand. Reply Br. 10-11.
The issues presented by this appeal are:
Do the recitations of “an arcuate portion” in lines 1 and 2 of claim 1
render claim 1 indefinite?
Is the Christmas tree stand of Thomas capable of being used as a
cutting board?
Did the Examiner articulate adequate reasoning based on rational
underpinnings to explain why one of ordinary skill in the art would have
been led to modify the prior art cutting board with an arcuate portion, as
taught in Thomas?
PRINCIPLES OF LAW
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
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted).
[W]e employ a lower threshold of ambiguity when reviewing a
pending claim for indefiniteness than those used by post-
issuance reviewing courts. In particular, rather than requiring
that the claims are insolubly ambiguous, we hold that if a claim
is amenable to two or more plausible claim constructions, the
USPTO is justified in requiring the applicant to more precisely
define the metes and bounds of the claimed invention by
holding the claim unpatentable under 35 U.S.C. § 112, second
paragraph, as indefinite.
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The USPTO, as the sole agency vested with the authority
to grant exclusionary rights to inventors for patentable
inventions, has a duty to guard the public against patents of
ambiguous and vague scope. Such patents exact a cost on
society due to their ambiguity that is not commensurate with
the benefit that the public gains from disclosure of the
invention. The USPTO is justified in using a lower threshold
showing of ambiguity to support a finding of indefiniteness
under 35 U.S.C. § 112, second paragraph, because the applicant
has an opportunity and a duty to amend the claims during
prosecution to more clearly and precisely define the metes and
bounds of the claimed invention and to more clearly and
precisely put the public on notice of the scope of the patent.
Ex parte Miyazaki, 89 USPQ2d 1207, 1211-12 (BPAI 2008) (precedential).
ANALYSIS
Rejection under 35 U.S.C. § 112, second paragraph
We agree with the Examiner that claim 1 is indefinite. Appellant
states that “an arcuate portion” recited in line 1 refers to arcuate portion 26
of cutting board 10 and that “an arcuate portion” recited in line 2 likewise
refers to arcuate portion 26 of cutting board 10. App. Br. 2; Reply Br. 7.
Appellant’s Specification, however, describes two arcuate portions, viz,
arcuate portion 26 within bottom edge 19 of cutting board 10 and arcuate
portion 27 of stand 25. Spec. 3; fig. 3. We find that it would not be clear to
one skilled in the art upon reading Appellant’s Specification if the “arcuate
portion” recited in line 1 of the claim refers to arcuate portion 26 of cutting
board 10 or arcuate portion 27 of stand 25. Thus, claim 1 is amenable to at
least two plausible claim constructions. See Miyazaki, 89 USPQ2d at 1211.
For this reason, we sustain the Examiner’s rejection of claim 1 and claims 2-
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8 by virtue of their dependency on claim 1 under 35 U.S.C. § 112, second
paragraph, as indefinite.
Rejection under 35 U.S.C. § 102(b)
Thomas’s Christmas tree stand requires the tree to be inserted through
aligned apertures in the base and lower member to create a pivotal
arrangement therebetween. Thomas, col. 1, l. 54 – col. 2, l. 1; fig. 3. We
agree with Appellant that when a Christmas tree is inserted the Thomas
stand is not capable of being used as a cutting board. For this reason, we do
not sustain the Examiner’s rejection of claim 1 or dependent claims 2, 4, 7,
and 8 under 35 U.S.C. § 102(b) as anticipated by Thomas.
Rejections under 35 U.S.C. § 103(a)
The Examiner points to the teaching in Thomas that Thomas’s
Christmas tree stand facilitates the “manufacture of the base at a minimum
cost” as a reason to motivate one of ordinary skill to modify the prior art
cutting board. Ans. 7 (citing Thomas, col. 1, ll. 4-5). This reasoning lacks a
rational underpinning. The cost savings associated with Thomas’s
Christmas tree stand arise from the fact that the stand “can be completed out
of a single piece of wood, by one band saw cut, that can be easily made” and
“[t]he trunk of a Christmas tree 2 forms a pivot element that connects the
parts of the base.” Thomas, col. 2, ll. 25-31. The cutting board of Miyake,
modified to add a stand as proposed, will not be made of wood and will not
use a Christmas tree to form the pivot element, and thus will not achieve the
same cost savings as Thomas’s stand. As such, the Examiner’s reasoning is
not based on a rational underpinning. For this reason, we reverse the
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rejection of claims 1-4 and 6-8 under 35 U.S.C. § 103(a) as unpatentable
over Miyake, Laurenzi, and Thomas. The rejection of claim 5 under
35 U.S.C. § 103(a) as unpatentable over Miyake, Laurenzi, Thomas, and
Poynton relies on the same inadequate reasoning. Thus, we reverse this
rejection of claim 5.
CONCLUSIONS
The recitations of “an arcuate portion” in lines 1 and 2 of claim 1
render claim 1 indefinite.
The Christmas tree stand of Thomas is not capable of being used as a
cutting board.
The Examiner did not articulate adequate reasoning based on rational
underpinnings to explain why one of ordinary skill in the art would have
been led to modify the prior art cutting board with an arcuate portion, as
taught in Thomas.
DECISION
The decision of the Examiner to reject claims 1-8 under 35 U.S.C.
§ 112, second paragraph as being indefinite is AFFIRMED.
The decision of the Examiner to reject claims 1, 2, 4, 7, and 8 under
35 U.S.C. § 102(b) as anticipated by Thomas is REVERSED.
The decision of the Examiner to reject claims 1-4 and 6-8 under
35 U.S.C. § 103(a) as unpatentable over Miyake, Laurenzi, and Thomas is
REVERSED.
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The decision of the Examiner to reject claim 5 under 35 U.S.C.
§ 103(a) as unpatentable over Miyake, Laurenzi, Thomas, and Poynton 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).

AFFIRMED

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