Ex Parte KON et al

Patent Trial and Appeal Board

Mar 22, 2016

12025858 (P.T.A.B. Mar. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/025,858 02/05/2008 Richard Henry KON
28410 7590 03/24/2016
BERENATO & WHITE, LLC
6550 ROCK SPRING DRIVE
SUITE 240
BETHESDA, MD 20817
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.
16240.M365 C 2038
EXAMINER
AKBASLI, ALP A
ART UNIT PAPER NUMBER
3635
NOTIFICATION DATE DELIVERY MODE
03/24/2016 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):
uspto.filings@bw-iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD HENRY KON, GARY THOMAS FAGAN,
and MATTHEW DONALD WHITE
Appeal2013-009386
Application 12/025,858
Technology Center 3600
Before JOHN C. KERINS, CHARLES N. GREENHUT, and
ANNETTE R. REIMERS, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Richard Henry Kon et al. (Appellants) seek our review under 35
U.S.C. § 134 of the Examiner's final rejection of claims 1-18. We have
jurisdiction under 35 U.S.C. § 6(b). We REVERSE, and enter NEW
GROUNDS OF REJECTION UNDER 37 C.F.R. § 41.50(b). An oral
hearing was conducted on February 18, 2016, with David S. Taylor, Esq.,
appearing on behalf of Appellants.
Appeal2013-009386
Application 12/025,858
THE INVENTION
Appellants' invention is directed to a door lite assembly and a door
including a door lite assembly. Independent claim 1 is illustrative:
1. A door lite assembly, comprising:
a translucent panel having a periphery and opposite first and
second sides;
a high-impact plastic frame extending along the periphery of the
translucent panel and comprising
first and second panel support portions having first and
second panel support lips facing the first and second sides
of the translucent panel, respectively; and
first and second door receiving portions having first and
second door body receiving lips, respectively, spaced apart
from one another to permit receipt of a door body between
the first and second door body receiving lips; and
a chemical sealant establishing a \~1ater-proof seal bet\~1een the
first and second panel supporting lips and the translucent panel,
wherein the high-impact plastic frame, translucent panel and the
sealant establish a door lite assembly capable of withstanding,
without assistance of fastener attachment of the door lite
assembly into the door body, the effects of hurricane conditions
as measured by successful passing of Testing Application
Standard 201-94 (TAS 201) based on a missile velocity of 35
miles per hour and Testing Application Standard 203-94 (T AS
203) based on a 9000-cycle regime applied consecutively,
wherein the door lite assembly is free of holes positioned for
receiving fasteners into the door body.
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Application 12/025,858
THE REJECTIONS
Appellants appeal from the following rejections:
(i) claims 1, 7-10, and 16-18 under 35 U.S.C. § 103(a) as being
unpatentable over Pease (US 3,903,669, issued Sept. 9, 1975) in view of
Kobayashi (US 2003/0159375 Al, published Aug. 28, 2003);
(ii) claims 2 and 11under35 U.S.C. §103(a) as being unpatentable
over Pease in view of Kobayashi and Pelfrey (US 7, 726,092 B 1, issued June
1, 2010);
(iii) claims 3, 5, 12, and 14 under 35 U.S.C. §103(a) as being
unpatentable over Pease in view of Kobayashi and Clement (US 4,189,457,
issued Feb. 19, 1980);
(iv) claims 4 and 13 under 35 U.S.C. §103(a) as being unpatentable
over Pease in view of Kobayashi and Trill (US 2002/0005512 Al, published
Jan. 17,2002);and
(v) claims 6 and 15 under 35 U.S.C. § 103(a) as being unpatentable
over Pease in view of Kobayashi and DeBlock (US 6,546,682 Bl, issued
Apr. 15, 2003);
ANALYSIS
Re} ections (i)-(v)
Each of the rejections under 35 U.S.C. § 103(a) involves the teaching
in Pease of a structure bearing a high degree of similarity to the structure
recited in at least Appellants' claims 1, 7, 10, and 16. Final Act. 2---6. Pease
additionally discloses that the molding member or frame of its window lite
assembly may be made of acrylonitrile-butadiene-styrene (ABS), a material
well known for its high impact resistant properties. See, fn. 1, infra.
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Application 12/025,858
Where Pease appears to deviate from the claimed window lite
assembly is in its possible performance under simulated hurricane
conditions. The claims require that the recited window lite assembly, or
window lite assembly and door, be capable of withstanding the effects of
hurricane conditions as measured by successful passing of T AS 201 and
T AS 203. In apparent contrast, Pease describes that
As assembled, the molding unit [frame] has good stability due
to the type of connection between connector pin 52 and the
studs 24a and 24b .... In a like manner, the described
connection takes up normal stresses and strains from
temperature change, humidity change, jarring, etc.
Pease, col. 6, 11. 28--45.
Were it not for the above statement regarding the ability of the Pease
structure to take up normal stresses and strains, and, inferentially, potentially
not necessarily capable of withstanding hurricane-like forces, we find that
the Pease reference would have been properly citable in an anticipation
rejection under 35 U.S.C. § 102, under the premise that
where the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.
In re Swinehart, 439 F.2d 210, 213 (CCPA 1971).
However, our jurisprudence cautions that, before an applicant can be
put to this burdensome task, the Patent and Trademark Office must provide
sufficient evidence or scientific reasoning to establish there is a sound basis
for the belief that the functional limitation is an inherent characteristic of the
prior art. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). The explicit
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Application 12/025,858
statement in Pease undermines the reasoning that, because the prior art
discloses essentially the same structure, the functional language directed to
the ability to pass tests indicative of hurricane-worthiness must necessarily
be present in the Pease structure.
The Examiner acknowledges that Pease fails to disclose that the
structure therein is capable of passing T AS 201 and T AS 203. Final Act. 2.
The Examiner points to Kobayashi as evidencing a door assembly capable of
passing those test standards, and concludes that "[i]t would [have been]
obvious ... to use materials in the [Pease] door ... that are able to withstand
tests that mimic hurricane loads to ensure the door will last in such an
extreme event and to meet the building standards." Id.
The Examiner, however, does not point to evidence nor explain using
sound technical reasoning, as to how the Pease structure is proposed to be
modified in order to be capable of passing TAS 201 and TAS 203. The
Examiner merely "submits that making and/or testing a door to withstand
known standards is well within the ability of one of ordinary skill in the art."
Ans. 9--10. The Examiner's position fails to establish a prima facie
obviousness of the claims at issue.
The rejections of claims 1-18 under 35 U.S.C. §103(a) as being
unpatentable over Pease and the additional cited references are not sustained.
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Application 12/025,858
NEW GROUNDS OF REJECTION--§ 41.50(B)
Claims 1-18-35 US.C. § 112,first paragraph-Written Description
Claims 1-18 are rejected, in a new ground of rejection pursuant to 37
C.F .R. § 41. 50(b ), as failing to meet the written description requirement
thereof.
The first paragraph of 35 U.S.C. § 112 contains a written description
requirement that is separate and distinct from the enablement requirement.
Ariad Pharms., Inc. v. EliLilly & Co., 598 F.3d 1336, 1340 (Fed. Cir. 2010)
(en bane). 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
that the inventor actually invented the claimed invention. Id. at 1562-63;
Ariad, 598 F.3d at 1351.
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
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Application 12/025,858
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 specification or original claims is necessary to satisfy the
written description requirement").
In addition, original claims may fail to satisfy the written description
requirement when the invention is claimed and described in functional
language but the specification does not sufficiently identify how the
invention achieves the claimed function. Ariad, 598 F.3d at 1349 ("[A]n
adequate written description of a claimed genus requires more than a generic
statement of an invention's boundaries.") (citing Eli Lilly, 119 F.3d at 1568).
In this case, we find that all of claims 1-18 encompass far more than
permitted by Appellants' disclosure. Appellants denigrate the Pease
reference as "only requir[ing] that its connector 'takes up normal stresses
and strains from temperature change, humidity change, jarring, etc."' Reply
Br. 2, citing Pease, col. 6, 11. 44--46. Yet Pease structurally "anticipates"
claim 1, in that it discloses structural features meeting all limitations set
forth therein. We note, in this respect, that Pease discloses that an injection-
molded acrylonitrile-butadiene-styrene (ABS), a well-known high impact
resistant material, 1 may be used for the frame or molding member therein.
1 See, e.g., Goldberg (US 3,531,548, issued Sep. 29, 1970); Hagerman (US
3,555,120, issued Jan. 12, 1971); Paxton (US 3,879,496, issued Apr. 22,
197 5); "Acrylonitrile butadiene styrene", Wikipedia ("The most important
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Application 12/025,858
Pease, col. 4, 11. 26-31. The only difference between Pease and the
invention recited in claim 1 is that Appellants' device is claimed as being
capable of passing two standards indicative of ability to withstand hurricane
conditions.
Looking to Appellants' Specification for a possible explanation of this
seeming variance in performance from Pease, we find nothing at a generic
structural level. Thus, the limitation reciting that the assembly is capable of
passing the tests called for in the recited standards is seen as nothing more
than a recitation of a desired outcome or desired properties.
Although Appellants do not provide even a single working example
evidencing that something that they have invented is capable of passing the
recited test standards, we will take at face value that such a product was
developed. The evidence provided in the Specification is to the effect that a
particular material used for the frame, having particular tensile strength and
impact strength levels, when used with a chemical sealant having a
particular maximum Shore A hardness, with a particular laminate used for
the translucent panel, and with the frame being made of two frame members
joined by a frame connector, and the frame having a particular thickness,
and giving Appellants the benefit of the doubt, "describes an inventive
hurricane door light" that passes the stated standard tests. Spec., para. 67.
mechanical properties of ABS are impact resistance and toughness.")
accessed at https:// en. wikipedia.org/wiki/ Acrylonitrile_butadiene_styrene,
March 1, 2016.
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Application 12/025,858
This is notwithstanding the boilerplate statement that "the invention is not
limited to the illustrated and described features." Id.
Neither claim 1, nor any of claims 2-18, is limited in scope to the
above-listed conditions. The Specification provides absolutely no guidance
as to which of these aspects or combination of aspects are necessary or
critical (as some or all must be, in order to differentiate structurally and
functionally over Pease), and which are not. Ariad, 598 F .3d at 1349 ("the
specification must demonstrate that the applicant has made a generic
invention that achieves the claimed result and do so by showing that the
applicant has invented species sufficient to support a claim to the
functionally-defined genus").
The evidence in the record in the form of the Pease reference is to the
effect that an essentially structurally identical door lite is described as being
capable of sustaining merely normal forces. Appellants disclose little to
nothing more than that already contributed by Pease, yet seek a patent
directed to a product having potentially different performance
characteristics, without adequately structurally describing that which is seen
as contributing to the different characteristics. "Every patent must describe
an invention. It is part of the quid pro quo of a patent; one describes an
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Application 12/025,858
invention, and, if the law's other requirements are met, one obtains a
patent." Id. at 1345.
Claims 1-18 are thus rejected under 35 U.S.C. § 112, first paragraph,
as failing to meet the written description requirement thereof. This rejection
is a NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b).
Claims 1-9-35 USC§ 112, second paragraph-Indefiniteness
The second paragraph of 35 U.S.C. § 112 includes a requirement that
the claims "particularly pointing out and distinctly claim the subject matter
which the applicant regards as his invention." It has been stated that the
"essence of that requirement is that the language of the claims must make it
clear what subject matter they encompass." In re Hammack, 427 F.2d 1378,
1382 (CCPA 1970). This has been frequently stated in a shortened form as a
requirement that the claims set forth the "metes and bounds" of their
coverage. See, e.g., In re Venezia, 530 F.2d 956, 958 (CCPA 1976); In re
Goffe, 526 F.2d 1393, 1397 (CCPA 1975); In re Watson, 517 F.2d 465, 477
(CCPA 1975); In re Knowlton, 481F.2d1357, 1366 (CCPA 1973). This
requirement has usually been viewed from the perspective of a potential
infringer, "so that they may more readily and accurately determine the
boundaries of protection involved and evaluate the possibility of
infringement and dominance." Hammack, 427 F.2d at 1382.
Claims 1-9 are directed to a door lite assembly claimed to be "capable
of withstanding, without assistance of fastener attachment of the door lite
assembly into the door body, the effects of hurricane conditions as measured
by successful passing of Testing Application Standard 201-94 (TAS 201) ...
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Application 12/025,858
and Testing Application Standard 203-94 (TAS 203)." These claims do not
recite the door lite assembly in combination with a door.
Testing standards TAS 201 and TAS 203 each require that the test
specimen include, "[t]he entire assembled unit submitted for test, including
but not limited to anchorage devices and structure to which product is to be
mounted." TAS 201, § 3.2.2; TAS 203, § 3.2.2 The test standards do not
contemplate testing a door lite subassembly by itself, nor to allow for a
determination as to whether such subassembly passes or does not pass the
tests set forth in the standards.
As such, it does not appear to be possible to determine whether any
given door lite subassembly lacking a door to which it is to be mounted, falls
within or outside the scope of claims 1-9. It is possible, for example, that
the same door lite assembly, when secured to a particular door in a particular
manner, would pass T AS 201 and T AS 203, whereas, when secured to some
other door, would not pass the standards.
Accordingly, claims 1-9 are not "written in such a way that they give
notice to the public of the extent of the legal protection afforded by the
patent, so that interested members of the public, e.g., competitors of the
patent owner, can determine whether or not they infringe," which is the
primary purpose of the definiteness requirement in 35 U.S.C. §112, second
paragraph. All Dental Prodx, LLC v. Advantage Dental Prods., 309 F.3d
2 T AS 201 accessed at
http://www2.iccsafe.org/states/Florida2001/FL_TestProtocols/PDFs/Testing
%20Application%20Standard%20201-94.pdf; T AS 203 accessed at
http://www2.iccsafe.org/states/Florida2001/FL_TestProtocols/PDFs/Testing
%20Application%20Standard%20203-94.pdf, last accessed on March 9,
2016.
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Application 12/025,858
774, 779-80 (Fed. Cir. 2002). Claims 1-9 are thus rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite. This rejection is a NEW
GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b).
DECISION
The rejections of claims 1-18 under 35 U.S.C. § 103(a) are
REVERSED.
Claims 1-18 are rejected, in a NEW GROUND OF REJECTION,
under 35 U.S.C. § 112, first paragraph, as failing to meet the written
description requirement thereof.
Claims 1-9 are rejected, in a NEW GROUND OF REJECTION,
under 35 U.S.C. § 112, second paragraph, as being indefinite.
37 C.F.R. § 41.50(b) provides that, "[A] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Regarding the new grounds of rejection, Appellants must, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, exercise one of the
following options with respect to the new ground of rejection, in order 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 ... ; or
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record ....
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Application 12/025,858
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REVERSED; 37 C.F.R. § 41.50(b)
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