Ex Parte HsuDownload PDFBoard of Patent Appeals and InterferencesDec 28, 201111479255 (B.P.A.I. Dec. 28, 2011) Copy Citation 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. Appeal 2010-000285 Application 11/479,255 2 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). Appeal 2010-000285 Application 11/479,255 3 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 Appeal 2010-000285 Application 11/479,255 4 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. Appeal 2010-000285 Application 11/479,255 5 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- Appeal 2010-000285 Application 11/479,255 6 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 Appeal 2010-000285 Application 11/479,255 7 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. Appeal 2010-000285 Application 11/479,255 8 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 nlk Copy with citationCopy as parenthetical citation