Ex Parte Kronen

Patent Trial and Appeal Board

Feb 15, 2017

13349156 (P.T.A.B. Feb. 15, 2017)

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.
13/349,156 01/12/2012 George V. Kronen K029 P02165-US1 7823
3017 7590 02/15/2017
BARLOW, JOSEPHS & HOLMES, LTD.
101 DYER STREET
5THFLOOR
PROVIDENCE, RI02903
EXAMINER
HWU, DAVIS D
ART UNIT PAPER NUMBER
3744
MAIL DATE DELIVERY MODE
02/15/2017 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 GEORGE V. KRONEN
Appeal 2015-004704
Application 13/349,156
Technology Center 3700
Before JENNIFER D. BAHR, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
George V. Kronen (“Appellant”) appeals under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 1, 5, and 6. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and ENTER a new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
Appeal 2015-004704
Application 13/349,156
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. An article for spreading a substance about a surface to
increase traction thereon, comprising:
a hollow, frangible, spherical shell having an opening,
the shell configured and arranged to shatter into irregular
fragments on a forceful impact;
a substance inside the shell, the substance selected from
the group consisting essentially of sand, ice melt and a mixture
of sand and ice melt; and
a plug closing the opening in the shell;
whereby a person throws the shell against a surface
thereby shattering the shell into irregular fragments and
spreading the substance inside the shell about the surface, the
irregular fragments and substance increasing the traction
thereon.
REJECTION
Claims 1, 5, and 6 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Tank (US 1,565,036, issued Dec. 8, 1925).
DISCUSSION
The Examiner finds that Tank discloses the limitations of claim 1
except for the recited substance in the shell. Non-Final Act. 2. The
Examiner determines that since Tank’s device “is designed to release a
substance (fire extinguishment) about a surface when shattered, the device
can also be used to release any substance including sand, ice melt, or a
mixture of both.” Id.
Appellant contends that Tank discloses a fire extinguishing grenade
that “contains liquid carbon tetrachloride, a highly toxic and volatile
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Appeal 2015-004704
Application 13/349,156
chemical” not “an article that contains sand and/or ice melt.” Appeal Br. 4.
Appellant argues that the Examiner provides no reason why one of ordinary
skill in the art would substitute sand and/or ice melt for carbon tetrachloride
in Tank’s fire extinguishing grenade. Id. The Examiner responds that
Tank discloses “the structural limitations required to shatter the device upon
impact to spread fire fighting material, however, it could also be used to
spread sand and/or ice melt since that would only involve changing the
material to be spread.” Ans. 3. For the following reasons, we do not
sustain the rejection of claim 1.
Tank discloses a fire extinguishing grenade. Tank, p. 1. Tank
discloses a spherically shaped container 2 made of “glass or other readily
frangible material.” Id. at p. 1,11. 43—45, Fig. 3. Container 2 holds “a
quantity of fire extinguishing fluid 3, such ... as carbon tetrachloride.” Id.
at p. 1,11. 46-47. The fluid in container 2 is “sealed in the container by a
cork 13 and a superposed sealing compound 14.” Id. p. 1,11. 68—70.
The Examiner does not direct us to any portion of Tank that teaches
utilizing sand and/or ice melt or any other solid substance as the substance in
container 2 of Tank’s fire extinguishing grenade. In addition, the Examiner
does not propose a specific modification of Tank’s fire extinguishing
grenade nor does the Examiner articulate a reason supported by rational
underpinnings as to why it would have been obvious to one of ordinary skill
in the art to substitute sand and/or ice melt for carbon tetrachloride in Tank’s
fire extinguishing grenade. Therefore, we do not sustain the rejection of
claim 1. Claims 5 and 6 depend from claim 1. Claims App. We do not
sustain the rejection of claims 5 and 6 for the same reasons as claim 1.
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Appeal 2015-004704
Application 13/349,156
New Ground of Rejection —Indefiniteness
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims
1,5, and 6 under 35 U.S.C. § 112, second paragraph, as indefinite for failure
to particularly point out and distinctly claim the subject matter which
Appellant regards as the invention.
Claim 1 is directed to an article for spreading a substance and recites
various structural limitations for the article. The “whereby” clause recites
that “a person throws the shell against a surface thereby shattering the shell
into irregular fragments and spreading the substance inside the shell.” Claim
1 thus recites an apparatus and a method of use of the apparatus. Such a
claim is indefinite under 35 U.S.C. § 112, second paragraph, because it is
unclear whether infringement occurs when one creates an article that is
capable of being thrown, or whether infringement occurs when the user
actually throws the article against a surface shattering the shell into
fragments and spreading the substance inside the shell. See In re Katz
Interactive Call Processing Patent Litigation, 639 F. 3d 1303, 1318 (Fed,
Cir. 2011) (citing IP XL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d
1377, 1384 (Fed.Cir.2005). Therefore, we enter a new ground of rejection
against claim 1 and claims 5 and 6, which depend from claim 1, as indefinite
under 35 U.S.C. § 112, second paragraph.
DECISION
The Examiner’s decision rejecting claims 1, 5, and 6 under
35 U.S.C. § 103(a) is reversed.
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Appeal 2015-004704
Application 13/349,156
We enter a NEW GROUND OF REJECTION against claims 1, 5, and
6 under 35U.S.C. § 112, second paragraph pursuant to our authority under
37 C.F.R§ 41.50(b).
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision, the Appellant,
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 prosecution will be remanded to the
Examiner. The new ground of rejection is binding
upon the Examiner unless an amendment or new
evidence not previously of Record is made which, in
the opinion of the Examiner, overcomes the new
ground of rejection designated in this decision.
Should the Examiner reject the claims, Appellant may
again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same
Record. The request for rehearing must address any
new ground of rejection and state with particularity
the points believed to have been misapprehended or
overlooked in entering the new ground of rejection
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Appeal 2015-004704
Application 13/349,156
and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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).
REVERSED; 37 C.F.R, $ 41.50(b)
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