11702765 (P.T.A.B. Jun. 7, 2013)

Ex Parte Kaufman et al

Patent Trial and Appeal BoardJun 7, 2013

11702765 (P.T.A.B. Jun. 7, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE 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. 11/702,765 02/06/2007 Randall E. Kaufman 056-0295 8699 70537 7590 06/07/2013 Prass LLP 2661 Riva Road Building 1000, Suite 1044 Annapolis, MD 21401 EXAMINER GONZALEZ, MILTON ART UNIT PAPER NUMBER 2852 MAIL DATE DELIVERY MODE 06/07/2013 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 RANDALL E. KAUFMAN, CHAD E. LABARGE, and KAREN D. REID ____________ Appeal 2011-002238 Application 11/702,765 Technology Center 2800 ____________ Before JEFFREY S. SMITH, MICHAEL J. STRAUSS, and BARBARA A. BENOIT, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-002238 Application 11/702,765 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from claims 25-27, which are all the claims remaining in the application. We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter a new ground of rejection. Representative Claim Claim 25. An electrophotographic marking machine comprising: an outside housing, conventional xerographic processing stations separately located within said housing, doors to the machine interior stations located in said housing opposite each of said processing stations, at least one of said doors having coated thereon a removable double- backed connector or adhesive configured to accommodate connection of a removable plastic skin or cover over said doors, said skin configured to capture all four edges of said doors, by capturing all four edges of said door or panel, this skin permitting lesser strength adhesives to be used, said skin configured to be removable from said door by removing said double-backed connector, said doors adjacent each other with a space or gap therebetween, said skin having a thickness not exceeding said space or gap between said doors and wherein said access panel(s) permit entrance to an interior of said housing, and wherein each of said doors is color-coded using said skins to designate the said .conventional xerographic processing station each accessible from said doors. Prior Art Nelson US 6,490,151 B1 Dec. 3, 2002 Smith US 6,798,398 B2 Sept. 28, 2004 Garel US 2006/0082956 A1 Apr. 20, 2006 Sato US 2006/0221170 A1 Oct. 5, 2006 Appeal 2011-002238 Application 11/702,765 3 Examiner’s Rejections Claim 25 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Sato, Smith, and Nelson. Claims 26 and 27 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Sato, Smith, Nelson, and Garel. ANALYSIS Rejection under 35 U.S.C. § 112, second paragraph We enter a new ground of rejection of claims 25-57 under 35 U.S.C. § 112, second paragraph, because the terms “removable double-backed connector or adhesive,” “removable plastic skin or cover,” “said skin configured to capture all four edges of said doors, by capturing all four edges of said door or panel,” “this skin permitting lesser strength adhesives to be used,” and “said access panel(s)” render the claims indefinite. For the term “removable double-backed connecter or adhesive,” the “removable double-backed connector” can be interpreted as a connector that is not an “adhesive,” or can be interpreted as a synonym to “adhesive.” Paragraph 14 of Appellants’ Specification states that any suitable adhesive or connector can be used to attach the inner surface of the skin to the outer surface of a door or panel. Paragraph 18 of Appellants’ Specification states that a connector removably coats a plastic skin on a door, and that the skin has a double-backed adhesive or connector for attachment of the skin to the doors. The Specification thus appears to distinguish adhesive from connector in paragraph 14, but appears to use connector as a synonym for adhesive in paragraph 18. The Specification does not disclose any distinguishing functional or structural differences between the “removable Appeal 2011-002238 Application 11/702,765 4 double-backed connector” and the “adhesive” recited in claim 25. Subsequent limitations of claim 25 alternately refer to “this skin permitting lesser strength adhesives to be used,” and “said skin configured to be removable from said door by removing said double-backed connector.” We cannot determine whether the “double-backed connector” recited in claim 25, when read in light of Appellants’ Specification and claim 25 as a whole, excludes an “adhesive,” or whether the “double-backed connector” is a synonym for “adhesive.” If “connector” excludes “adhesive,” then the subsequent limitation referring to “lesser strength adhesives” is an optional limitation that does not further limit the claim. See In re Johnston, 435 F.3d 1381, 1384 (Fed. Cir. 2006) (“optional elements do not narrow the claim because they can always be omitted”). Similarly, we cannot determine whether the adjectives “removable double-backed” modify only the connector, or modify both the connector and the adhesive. For the term “removable plastic skin or cover,” the “cover” can be interpreted as excluding a “removable plastic skin,” or as a synonym for “removable plastic skin.” The adjectives “removable plastic” can be interpreted as modifying only the skin, or as modifying both the skin and the cover. Further, if the term “cover” excludes “skin,” the subsequent limitations reciting characteristics of the “skin,” such as “said skin configured to be removable” and “said skin having a thickness” are optional limitations that do not further limit claim 25. The term “said skin configured to capture all four edges of said doors, by capturing all four edges of said door or panel” does not recite whether the “cover” is configured to capture all four edges of said doors. Further, the “skin configured to capture all four edges of said doors, by capturing all four Appeal 2011-002238 Application 11/702,765 5 edges of said door or panel” replaces the plural “doors” with the singular alternative “door or panel.” The scope of this limitation may encompass one skin that captures all four edges of all of “said doors,” or may encompass skin that captures all four edges of “said door,” or may not capture any edges of any doors, but rather capture edges of a “panel.” Further, the term “door or panel” is ambiguous about whether door and panel are distinct, what the distinction is, or whether door and panel are synonyms. In addition, the limitation “said skin configured to capture all four edges of said doors, by capturing all four edges of said door or panel” is tautological. The comparative term “this skin permitting lesser strength adhesives to be used” fails to specify what the strength is less than. Appellants’ Specification does not impose a strength that is “lesser” than anything else. An infinite number of adhesives can have strength that is “lesser” than other adhesives within the meaning of claim 1. The term “said access panel(s)” lacks antecedent basis and can plausibly be a synonym for “said door,” or for “said door or panel,” or could be distinct from both the “door” and the “panel.” Claims 26 and 27 depend from claim 25, which is indefinite. We reject claims 25-27 under 35 U.S.C. § 112, second paragraph as indefinite. We designate this as a NEW GROUND OF REJECTION under 37 C.F.R. § 41.50. Rejections under 35 U.S.C. § 103 The issues presented for our review by Appellants and the Examiner are whether the Examiner’s obviousness rejections are proper. We are unable to answer these questions because the claims are indefinite, and Appeal 2011-002238 Application 11/702,765 6 therefore discerning their proper scope would require undue and improper speculation. See In re Steele, 305 F.2d. 859, 862 (CCPA 1962) (“[W]e do not think a rejection under 35 U.S.C. § 103 should be based on such speculations and assumptions). We pro forma reverse the Examiner’s rejections of claims 25-27 under 35 U.S.C. § 103(a). DECISION We reject claims 25-27 as indefinite. This is a new ground of rejection. Because the claims are indefinite, we cannot sustain the Examiner’s rejection of the claims under 35 U.S.C. § 103(a). This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b) (2011). Section 41.50(b) provides that “[a] new ground of rejection . . . shall not be considered final for judicial review.” Section 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. 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)(iv). Appeal 2011-002238 Application 11/702,765 7 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)(iv). REVERSED 37 C.F.R. § 41.50(b) kis