Ex Parte Jaster et alDownload PDFPatent Trial and Appeal BoardMay 31, 201611438178 (P.T.A.B. May. 31, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 111438, 178 0512212006 Paul Jaster 24955 7590 06/02/2016 ROGITZ & AS SOCIA TES Jeanne Gahagan 750B STREET SUITE 3120 SAN DIEGO, CA 92101 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. 1128.020 3908 EXAMINER MICHENER, JOSHUA J ART UNIT PAPER NUMBER 3635 NOTIFICATION DATE DELIVERY MODE 06/02/2016 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): Noelle@rogitz.com eofficeaction@appcoll.com J ohn@rogitz.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PAUL JASTER and DAVID W. RILLIE Appeal2014-003226 Application 11/438, 178 Technology Center 3600 Before LYNNE H. BROWNE, ANNETTE R. REIMERS, and GORDON D. KINDER, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL Appeal2014-003226 Application 11/438, 178 STATEMENT OF THE CASE1 Paul Jaster and David W. Rillie (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner's decision to reject (1) claims 24--27 and 30 under 35 U.S.C. § 112, first paragraph, for lack of written description; (2) claims 19-21, 23, and 28 under 35 U.S.C. § 103(a) as unpatentable over Rillie (US 2003/0061775 Al; pub. Apr. 3, 2003) and Allardice (US 3,383,675; iss. May 14, 1968); and (3) claim 22 under 35 U.S.C. § 103(a) as unpatentable over Rillie, Allardice, and Shimomura (US 2002/0126362 Al; pub. Sept. 12, 2002). Claims 1-18 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 The Examiner has withdrawn the following rejections: (1) The rejection of claims 29 and 31under35 U.S.C. § 102(b) as anticipated by Rillie; (2) The rejection of claims 32 and 33 under 35 U.S.C. § 103(a) as unpatentable over Rillie; (3) The rejection of claim 30 under 35 U.S.C. § 103(a) as unpatentable over Rillie and Allardice; and (4) The rejection of claims 24--27 under 35 U.S.C. § 103(a) as unpatentable over Rillie and Allardice. See Ans. 2 (mailed Oct. 24, 2013). For claims 24--27 and 29-33, the Examiner states "the claim amendments of 07 /11/13 overcome the art rejection." See id. Claims 29 and 31-33 are not before us for review. See Advisory Act. 1 (Summary Sheet) (mailed Aug. 14, 2013); see also id. at 2. 2 Appeal2014-003226 Application 11/438, 178 CLAIMED SUBJECT MATTER2 The claimed subject matter "relates generally to skylights." Spec. 1; Fig. 1.3 Claim 19, the sole independent claim on appeal, is representative of the claimed subject matter and recites: 19. A skylight assembly, comprising: a transparent dome; and at least one skylight shaft substrate configured to extend away from the transparent dome to convey light entering the dome through the shaft substrate; plural irregularities being formed on the shaft substrate, the surface irregularities including plural dimples that are concave relative to an inside of the shaft substrate and that minimize risk of hot spots by spreading light. ANALYSIS T¥ritten Description Claims 24-27 and 30 The Examiner determines that "[w]hile the [S]pecification teaches the use of either dimples or corrugations, nowhere in the [S]pecification is the 2 The Examiner notes that "the claims in [Appellants'] Brief are not the most recent version of the claims. The Advisory Action of 08/14/13 entered the claim amendments of 07 /11/13, but crossed in the mail with the Appeal Brief of 08/14/13." Ans. 3 (emphasis omitted); see also Advisory Act. 1 (Summary Sheet). The claim set submitted July 11, 2013 is before us for review. 3 Appellants' Specification does not provide line or paragraph numbering and, accordingly, reference to the Specification will only be made to the page number. 3 Appeal2014-003226 Application 11/438, 178 simultaneous use of both of these features in combination disclosed or suggested." Final Act. 3--4. In response, Appellants cite to page 12 of the Specification. Appeal Br. 5. Specifically, "the corrugations and/or dimples described above can be formed in any appropriate way." Id. Appellants contend that corrugations and/or dimples being formed in any appropriate way, "plainly indicat[es] that both may be used at once." Id. According to Appellants: "and/or" is shorthand for saying "the corrugations and dimples described above can be formed in any appropriate way" and that "the corrugations or dimples described above can be formed in any appropriate way[.]" If the statement from the [S]pecification referred only to forming the structures, the "or" part would make no sense, since then the meaning would be "one of the structures can be formed in any appropriate way, but not the other[.]" Accordingly, for the statement to make sense it must be read that the substrate can have corrugations, or dimples, or both corrugations and dimples, and that regardless of what type or combination of structures are used, they can be formed in an appropriate \'l1ay. Id.; see also Reply Br. 4--5. New or amended claims that introduce elements or limitations not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F .2d 967, 968-69 (CCP A 1971 ). To satisfy the written description requirement, the Specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562---63 (Fed. Cir. 1991 ). Specifically, the Specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show 4 Appeal2014-003226 Application 11/438, 178 that the inventor actually invented the claimed invention. Id. at 1562---63; Ariad Pharms., Inc. v. EliLilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). The written description requirement of 35 U.S.C. § 112, first paragraph applies to all claims including original claims that are part of the disclosure as filed. Ariad, 598 F.3d at 1349. As stated by the Federal Circuit, "[a]lthough many original claims will satisfy the written description requirement, certain claims may not." Ariad, 598 F.3d at 1349; see also LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1343--46 (Fed. Cir. 2005); Regents' of the University of California v. Eli Lilly & Co., 119 F.3d 1559, 1568 (Fed. Cir. 1997). For instance, generic claim language in the original disclosure does not satisfy the written description requirement if it fails to support the scope of the genus claimed. Ariad, 598 F.3d at 1350; Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968 (Fed. Cir. 2002) (holding that generic claim language appearing in ipsis verbis in the original Specification did not satisfy the written description requirement because it failed to support the scope of the genus claimed); Fiers v. Revel, 984 F.2d 1164, 1170 (Fed. Cir. 1993) (rejecting the argument that "only similar language in the [S]pecification or original claims is necessary to satisfy the written description requirement"). Appellants' Specification describes: In non-limiting embodiments the corrugations and/or dimples described above can be formed in any appropriate way. In one non-limiting example the metal shaft, or the reflective film, or the adhesive can be formed or patterned with an embossing roller. In another example the metal shaft, film, or adhesive can be extruded or coated with the required profile in 5 Appeal2014-003226 Application 11/438, 178 the extrusion or coating die. Yet again, the metal shaft, film, or adhesive can be molded with the required pattern in a mold tool. Spec. 12. Upon review of Appellants' disclosure at page 12, we agree with the Examiner that the text in question, i.e., "corrugations and/or dimples described above can be formed in any appropriate way" "describe[s] ways in which the irregularities can be formed: via embossing roller, extrusion, or molding." Final Act. 19; see also Ans. 5. We further agree with the Examiner that "[t]he and/or suggests that dimples may be formed in one appropriate way (for instance embossing roller), while the corrugations may be formed in either the same way [i.e., embossing roller], or a different appropriate way (like extrusion)." Ans. 5. Consequently, we agree with the Examiner that what is described at page 12 of Appellants' disclosure is that "both dimples and corrugations are capable of being formed through various methods, not that they are capable of both being formed on the same shaft." Final Act. 19; see also Ans. 5. We acknowledge Appellants' assertion that "nowhere [do] Appellant[ s] state that only one form at a time may be used." Reply Br. 4. However, we disagree with Appellants that "mentioning that both forms [dimples and corrugation] can be made by various processes, [inherently implies] that both [dimples and corrugation] may be formed in one substrate." Id. at 4--5. Appellants' Specification further describes that ( 1) "[ s ]urface irregularities are formed on the shaft substrate. The surface irregularities can be dimples or longitudinal corrugations" (Spec. 3 (emphasis added)); (2) "Figure 2 is a perspective view of the present tube with longitudinal corrugations for reducing focal points" (Spec. 5 (emphasis added)); (3) 6 Appeal2014-003226 Application 11/438, 178 "Figure 6 is a perspective view of an alternate tube with dimples for reducing focal points" (Spec. 6 (emphasis added)); (4) "[i]n any case, the present shaft assembly 24 is formed with surface irregularities on part or all of its inner surface []. The surface irregularities may be those described in [] the corrugations or dimples disclosed herein" (Spec. 9 (emphasis added)); (5) "[a]lternatively to corrugations, Figures 6-9 show a dimpled hollow shaft 60 that may be used as any one of the shafts or shaft segments shown in Figure 1" (Spec. 11 (emphasis added)). Based on Appellants' disclosure, shaft substrate assembly 24 includes either corrugation or dimple surface irregularities. Appellants do not point to any support in their application, as originally filed, that explicitly describes both corrugations and dimples formed on the same shaft substrate. See Final Act. 19; see also Ans. 5. Appellants further contend: The [E]xaminer' s remark on page 5 of the Answer that "nowhere in [Appellants'] disclosure [have they] included even a broad statement suggesting that the features and embodiments disclosed may be used together" - an allegation not appearing in the final Office Action but only in the Answer - is flatly contradicted by the first paragraph of the Summary on page 3 and in original claims 1 and 10. Indeed, Appellant[ s] observe[] in rebuttal to the new allegation (that Appellant[ s] ha[ ve] not included "even a broad statement suggesting" the combined features) that original claim 1 states that the irregularity is selected from the group consisting of dimples and longitudinal corrugations, and original claim 10, depending from claim 1, further requires plural dimples. This means that together claims 1 and 10 disclosed at least one irregularity that could be a corrugation and plural dimples that establish additional irregularities. Reply Br. 5. 7 Appeal2014-003226 Application 11/438, 178 Appellants' arguments are not persuasive. At the outset, we note that in the response to Appellants' arguments in the Final Rejection the Examiner states that "nowhere in [Appellants'] disclosure [have they] included even a broad statement suggesting that the various features and embodiments disclosed may be used together." Final Act. 19 (mailed July 11, 2013). As such, we disagree with Appellants that this statement from the Examiner constitutes a "new allegation." See Reply Br. 5. Further, as discussed above, page 3 of Appellants' Specification describes that "[s]urface irregularities are formed on the shaft substrate. The surface irregularities can be dimples or longitudinal corrugations." Spec. 3 (emphasis added). Additionally, upon review of original claim 1, a skilled artisan would recognize that the at least one surface irregularity formed on the shaft substrate is limited to (closed claim language) being dimples and corrugations. See Spec. original claim 1 (filed May 22, 2006). Upon review of original claim 10, a skilled artisan would recognize that "plural dimple surface irregularities" is recited. See id. original claim 10. Original claim 10 recites "comprising plural surface irregularities established by plural dimples" not "further comprising plural surface irregularities established by plural dimples." See id. As such, we disagree with Appellants that "together [original] claims 1 and 10 disclose[] at least one irregularity that could be a corrugation and plural dimples that establish additional irregularities." See Reply Br. 5. For the above reasons, the Examiner correctly determines that the present application does not reasonably convey to those skilled in the art that Appellants had possession of the subject matter as now claimed as of the filing date of the application, specifically, that both dimples and corrugations 8 Appeal2014-003226 Application 11/438, 178 can be formed on the same shaft substrate. We therefore sustain the Examiner's rejection of claims 24--27 and 30 as failing to comply with the written description requirement of 35 U.S.C. § 112, first paragraph. See Ariad, 598 F.3d at 1351 (confirming that the test for compliance with the written description requirement of 35 U.S.C. § 112 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"). Drawing Objection The Examiner also objected under 37C.F.R. § 1.83(a) to Appellant's drawings on the grounds that "[t]he drawings must show every feature of the invention specified in the claims. Therefore, a skylight shaft including dimples and corrugations in combination must be shown or the feature( s) canceled from the claim(s). No new matter should be entered." Final Act. 2. Ordinarily, an objection is reviewable by petition under 37 C.F.R. § 1.181 and a rejection is appealable to the Patent Trial and Appeal Board. When the issue of new matter presented is the subject of both an objection and a rejection, the issue is appealable. See MPEP § 608.04(c) (providing that "where the alleged new matter is introduced into or affects the claims, thus necessitating their rejection on this ground, the question becomes an appealable one, and should not be considered on petition even though that new matter has been introduced into the specification also"). To the extent that the objection to the drawings in the Final Rejection turns on the same issues as the rejection under 35 U.S.C. § 112, first paragraph, our decision with respect to the rejection is dispositive as to the corresponding objection. 9 Appeal2014-003226 Application 11/438, 178 Obviousness over Rillie and Allardice Claims 19--21, 23, and 28 Independent claim 19 recites, in relevant part, "plural irregularities being formed on the shaft substrate, the surface irregularities including plural dimples that are concave relative to an inside of the shaft substrate and that minimize risk of hot spots by spreading light." Amended Claims 2 (filed July 11, 2013). The Examiner finds that Rillie discloses the limitations of claim 19 substantially as claimed including "[p ]lural surface irregularities (38, Fig. 2) on the shaft that minimize the risk of hot spots by spreading light ([0044])." Final Act. 7-8; see also Ans. 3. The Examiner finds that "Rillie does not expressly disclose that the irregularities are dimples concave relative to the inside of the shaft surface." Id. at 8. The Examiner relies on Allardice for disclosure of "a shaft surface ( 46, Fig. 4) for reflecting light, with plural dimples ( 48, 49, 50) concave relative to the surface." Id. The Examiner concludes that it would have been obvious "to modify the surface irregularities of Rillie by shaping them as concave dimples as taught by Allardice, in order to better reflect light through the skylight shaft and to better spread light therethrough." Id. The Examiner clarifies in the Answer that "Rillie is relied upon to teach the shaft as well as positions of surface irregularities that spread light and minimize hot spots ([0044 ]); Allardice is used only to modify the shape of such irregularities into dimples, which may also be used to direct and spread light." Ans. 3; see also Final Act. 8. The Examiner reasons that in the combination of Rillie with Allardice, "the Rillie surface irregularities would simply be shaped as dimples along a vertical shaft, resulting in spread light." Ans. 3. 10 Appeal2014-003226 Application 11/438, 178 Appellants contend that "the relied-upon structures of Allardice teach away from dimples that minimize risk of hot spots by spreading light as claimed." Appeal Br. 3. According to Appellants, "Allardice teaches not that the dimple reflectors [48, 49, 50] spread light but rather that they explicitly must direct light to the mirror 60." Id. at 4 (citing Allardice, col. 3:12-14); see also Reply Br. 3 ("Allardice teaches away from [the subject invention because] the dimple structure he discloses focuses light, instead of spreading it"). Appellants conclude that "being informed that the dimples of Allardice focus light, the opposite of diffusing light, the skilled artisan would be led away from using the dimples of Allardice in Rillie." Appeal Br. 3. "A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant." Irz re Gurley, 27 F.3d 551; 553 (Fed. Cir. 1994). In this case, we acknowledge that Allardice discloses that "[l]ight is projected from surface 51 and from the dimple reflectors 48, 49, 50, and others, toward reflecting means 60." Allardice, col. 3: 12-14; see also Appeal Br. 4. However, directly after that sentence, Allardice discloses: A portion of the light penetrates the walls of members 58 and 68 between reflector 46 [i.e., reflectors 48, 49, 50] and reflecting means 60. A major portion of the light is reflected by mirrored surface 62 in the region of reflecting means 60, and a portion of the light is transmitted through perforations 64 and the wall of member 68. It is to be noted that the walls of members 58 and 68 are usually not perfect light transmitters, and thus a portion of the light is reflected from their inner walls and becomes diffused 11 Appeal2014-003226 Application 11/438, 178 [i.e., spreads light], making the entire wand easily visible at a great distance. Allardice, col. 3: 14--24 (italics and underline added); see also id. at col. 2:31-33. In other words, dimple reflectors 48, 49, 50 are used to diffuse (spread) light to make the entire wand easily visible at a great distance. As such, the disclosure of Allardice does not teach away from the subject invention. Appellants further contend that the Examiner's suggestion to combine Rillie and Allardice is contradicted by Allardice. See Appeal Br. 3--4. This argument is not persuasive because, as discussed above, Allardice discloses that dimple reflectors 48, 49, 50 are used to diffuse (spread) light to make the entire wand easily visible at a great distance. See Allardice, col. 3: 14--24. We agree with the Examiner that the dimples of Allardice "may [] be used to direct and spread light." Ans. 3. Further; the Examiner provides a reason with rational underpinnings to combine Rillie and Allardice, namely, "to modify the surface irregularities of Rillie by shaping them as concave dimples as taught by Allardice, in order to better reflect light through the skylight shaft and to better spread light therethrough." Final Act. 8. Appellants do not provide any persuasive evidence or argument to apprise us of error in the Examiner's findings or conclusions. Moreover, Appellants do not provide any evidence or argument sufficient to show that the proposed modification would have been beyond the level of ordinary skill in the art. Neither do Appellants provide any persuasive evidence or argument sufficient to show that the proposed modification would have been more than a predictable use of the prior art elements according to their established functions. "The 12 Appeal2014-003226 Application 11/438, 178 combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). "If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability." Id. at 417. Appellants contend that the Examiner engages in impermissible hindsight in combining the references. See Appeal Br. 4; see also Reply Br. 2. We also are not persuaded that the Examiner's proposed combination involves impermissible hindsight. As discussed above, the Examiner sets forth a reasonable rationale underlying the conclusion of obviousness. Therefore, the Examiner does not rely on impermissible hindsight but rather relies on the knowledge of one skilled in the art at the time of the invention. Accordingly, for the foregoing reasons, we sustain the Examiner's rejection of independent claim 19 as unpatentable over Rillie and Allardice. Appellants do not present arguments for dependent claims 20, 21, 23, and 28 separate from those presented for independent claim 19. See Appeal Br. 3- 4. As such, for the reasons discussed above for claim 19, we likewise sustain the Examiner's rejection of dependent claims 20, 21, 23, and 28 as unpatentable over Rillie and Allardice. Obviousness over Rillie, Allardice, and Shimomura Claim 22 Appellants filed a Notice of Appeal appealing from "[t]he Office Action dated July 11, 2013." Notice of Appeal (filed August 14, 2013). 13 Appeal2014-003226 Application 11/438, 178 Also, "[a]n appeal, when taken, is presumed to be taken from the rejection of all claims under rejection unless cancelled by an amendment filed by the applicant and entered by the Office." 3 7 C.F .R. § 41.31 ( c ). Despite seeking an appeal from the final rejection of all the pending claims, Appellants do not present any arguments in the Appeal Brief directed to the patentability of dependent claim 22. Appeal Br. 3-5.4 "Filing a Board appeal does not, unto itself, entitle an appellant to de novo review of all aspects of a rejection. If an appellant fails to present arguments on a particular issue - or, more broadly, on a particular rejection - the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection." Ex parte Frye, 94 USPQ2d 1072, 107 6 (BP AI 2010) (precedential) (holding that the Board reviews a rejection for error "based upon the issues identified by appellant, and in light of the arguments and evidence produced thereon"). Having no arguments of error presented by Appellants in this appeal as to the rejection of the above-identified claim, we summarily sustain the Examiner's rejection of dependent claim 22 as unpatentable over Rillie, Allardice, and Shimomura. DECISION We AFFIRM the Examiner's decision to reject claims 24--27 and 30 for lack of written description. We AFFIRM the Examiner's decision to reject claims 19-21, 23, and 28 as unpatentable over Rillie and Allardice. 4 In the Answer, the Examiner "notes that claims 19-23 and 28 remain rejected under the prior art." Ans. 2. 14 Appeal2014-003226 Application 11/438, 178 We AFFIRM the Examiner's decision to reject claim 22 as unpatentable over Rillie, Allardice, and Shimomura. 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)(l )(iv). AFFIRMED 15 Copy with citationCopy as parenthetical citation