Ex Parte Lee

Board of Patent Appeals and Interferences

Feb 24, 2012

11190916 (B.P.A.I. Feb. 24, 2012)

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.
11/190,916 07/28/2005 Yong Jae Lee 9988.231.00-US 5064
7590 02/24/2012
MCKENNA LONG & ALDRIDGE LLP
Song K. Jung
1900 K Street, N.W.
Washington, DC 20006
EXAMINER
GOLIGHTLY, ERIC WAYNE
ART UNIT PAPER NUMBER
1714
MAIL DATE DELIVERY MODE
02/24/2012 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 YONG JAE LEE
____________

Appeal 2010-008021
Application 11/190,916
Technology Center 1700
____________

Before CHARLES F. WARREN, JEFFREY T. SMITH and
KAREN M. HASTINGS, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-008021
Application 11/190,916

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 7, 8 and 11-15. We have jurisdiction under 35 U.S.C. § 6.
Appellant’s claimed invention relates to a method for controlling a
dishwasher. App. Br. 7. Claim 7 is illustrative:

7. A method for controlling a dishwasher having
spray nozzles for spraying washing water to wash dishes,
comprising the steps of:
sensing a change of a water level of washing water while
progressing washing with reference to a preset course;
comparing the sensed water level to a preset reference
value to determine whether there is an error with the spraying
of washing water or a state of the water guide; and
giving a warning to a user if it is determined that there is
an error with the spraying of washing water or the state of the
washing water guide.
The following rejections are presented for review:
1. Claims 7, 8 and 11-15 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellant regards as the invention.1
2. Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Gardner, US 5,681,401 issued Oct. 28, 1997.
3. Claims 11-15 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Gardner and Yoshiyuki, JP 02036832 A published Feb. 6, 1990.

1 Appellant recognized that the Examiner inadvertently excluded claim 7
from the final rejection. (App. Br. 9-10).
Appeal 2010-008021
Application 11/190,916

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OPINION

Rejection under 35 U.S.C. § 112, second paragraph

35 U.S.C. § 112, second paragraph requires that Applicant’s
“specification shall conclude with one or more claims particularly pointing
out and distinctly claiming the subject matter which the applicant regards as
his invention.” However, “if the claims do not ‘particularly point[] out and
distinctly claim[]’, in the words of section 112, that which examination
shows the applicant is entitled to claim as his invention, the appropriate PTO
action is to reject the claims for that reason.” See In re Zletz, 893 F.2d 319,
322 (Fed. Cir. 1989).
The statute “puts the burden of precise claim drafting squarely on the
applicant.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). During
patent prosecution an applicant has the opportunity to amend the claims in
order to overcome indefiniteness rejections. Exxon Research & Eng’g Co. v.
U.S., 265 F.3d 1371, 1380 (Fed. Cir. 2001) (citing In re Zletz, 893 F.2d at
322). Therefore, when the Examiner provides a reasonable basis to believe
that those of ordinary skill in the art would not be able to determine the
scope of the claim, the burden shifts to Appellant to show otherwise.
The Examiner rejected claim 7 as indefinite under 35 U.S.C. § 112,
second paragraph because the limitations “the sensed water level” and “the
water guide” did not have proper antecedent basis. (Ans. 3). We also
reviewed the portions of the Specification referenced by Appellant in the
Summary of Claimed Subject Matter (App. Br. 7) to gain a better
understanding of the disputed claim language. A review of the cited
Appeal 2010-008021
Application 11/190,916

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portions of the Specification cited therein does not provide us with a better
understanding of limitations “the sensed water level” and “the water guide”.
Appellant’s response to the stated rejection is as follows:
“Claim 7 has been amended to provide sufficient antecedent basis for
‘the sensed water level’ and ‘the water guide.’ According, [sic] Appellants
respectfully request that the Office withdraw the rejection of claim 7.” (Id.
at 9).
We agree with the Examiner and affirm this rejection because
Appellant’s response fails to provide an explanation sufficient for
determining the metes and bounds of the claimed subject matter. A review
of the electronic working file reveals Appellant has also failed to present an
amendment to address the deficiencies of claim 7.
Based on the foregoing, one of ordinary skill in the art would not be
capable of determining the metes and bounds of the claims even when read
in light of the Specification. Therefore, independent claims 7 and 8and
dependent 11-15 do not particularly point out and distinctly claim the
invention. See Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336,
1348 (Fed. Cir. 2002) (quoting Personalized Media Commc’ns, LLC v. Int’l
Trade Comm’n, 161 F.3d 696, 705 (Fed. Cir. 1998)) (“In determining
whether the claim is sufficiently definite, we must analyze whether ‘one
skilled in the art would understand the bounds of the claim when read in
light of the specification.”’).
Considering the Examiner’s additional rejections of claims 7, 8, and
11-15 would necessarily require that we speculate or make assumptions as to
what is intended by the claims. Thus, we sustain the Examiner’s rejection of
claims 7, 8, and 11-15 under 35 U.S.C. § 112, second paragraph, and reverse
Appeal 2010-008021
Application 11/190,916

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pro forma the Examiner’s rejections under 35 U.S.C. § 103(a) with respect
to claims 7, 8, and 11-15. See In re Wilson, 424 F.2d 1382, 1385 (CCPA
1970); In re Steele, 305 F.2d 859, 862 (CCPA 1962).

ORDER
On the record before us and for the reasons discussed above, we:
I. sustain the rejection of independent claim 7 and dependent claims
8, and 11-15 under 35 U.S.C. § 112, second paragraph;
II. procedurally reverse the rejections of claims 7, 8, and 11-15 under
35 U.S.C. § 103(a).

TIME PERIOD
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).

AFFIRMED
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