Ex Parte Lilenthal

Patent Trial and Appeal Board

Jul 20, 2016

13761433 (P.T.A.B. Jul. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
131761,433 02/07/2013
32692 7590 07/22/2016
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
Niklas Lilenthal
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.
71347US002 3161
EXAMINER
HOEY, ALISSA L
ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
07/22/2016 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NIKLAS LILENTHAL
Appeal2016-004810
Application 13/761,433 1
Technology Center 3700
Before ANNETTE R. REIMERS, THOMAS F. SMEGAL, and
LISA M. GUIJT, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Niklas Lilenthal (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner's Final Rejection of claims 1-14 and 17-19.2 We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellant, the real party in interest is 3M Company. Appeal
Br. 3.
2 Claims 15 and 16 are withdrawn from consideration, and claims 20-23 are
canceled. Id.; see also Appeal Br. 18.
Appeal2016-004810
Application 13/761,433
CLAIMED SUBJECT MATTER
Claims 1 is the sole independent claim, and is reproduced below
to illustrate the claimed subject matter, with disputed limitations
emphasized. 3
1. A protective headgear for use with an optical-filter
cartridge that is removably mountable in the protective headgear,
the protective headgear comprising:
a main body comprising a forward-facing portion with an
optically transmissive window that exhibits a longitudinal
direction,
a rear-facing frame that laterally surrounds the window
and that exhibits a longitudinal direction and a transverse
direction and that comprises a first-end section and a
second-end section, at first and second, longitudinally-opposite
ends of the frame; and,
a holder that exhibits a longitudinal direction and that
compnses,
a first retainer that is attached to the main body at a
location proximate the first end section of the frame,
which first retainer comprises a rearward portion that at
least partially defines a first space that is between at least
a part of the rearward portion of the first retainer and at
least a part of the first-end section of the frame, which first
space is configured to receive a first end of an optical-filter
cartridge; and,
a second, deflectable retainer that is attached to the
main body at a location proximate the second-end section
of the frame, which second, deflectable retainer comprises
a rearward portion that at least partially defines a second
space that is between at least a part of the rearward portion
of the second, deflectable retainer and at least a portion of
the second-end section of the frame, which second space
3 We note that Appellant's listing of claims in the Appeal Brief misstates
claim 1. The correct version of claim 1 is found in the Amendment filed
May 8, 2015.
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Application 13/761,433
is configured to receive a second end of the optical-filter
cartridge.
REJECTIONS
The following Examiner's rejections are before us for review.
1. Claims 1-14 and 17-19 are rejected under 35 U.S.C. § 112,
second paragraph as indefinite for failing to particularly point
out and distinctly claim the subject matter that the appellant
regards as the invention.
2. Claims 1-9, 18, and 19 are rejected under 35 U.S.C. § 102(b) as
anticipated by Huh (US 6,973,672 B2, iss. Dec. 13, 2005)
3. Claims 1-3, 7-9, 12, and 13 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Poole (GB 1,133,106, pub. Nov. 6,
1968).4
4. Claims 12-14 and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Huh and Fergason (US 5,749,096, iss. May
12, 1998).
5. Claims 14 and 17 are rejected under 35 USC§ 103(a) as
unpatentable over Poole and Fergason.
ANALYSIS
Indefiniteness rejection
We are not persuaded by Appellant's arguments that the Examiner
erred in finding claims 1-14 and 17-19 to be "indefinite for failing to
particularly point out and distinctly claim the subject matter [which] the
4 Because GB 1, 133, 106 does not identify an inventor, the Examiner refers
to the document as "Poole." See Final Act. 8. We do likewise.
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Application 13/761,433
applicant regards as the invention." Appeal Br. 6. The Examiner explains
that "[i]t is unclear what is being claimed, since [Appellant] is arguing that
[because] they are being their own lexicographer the term 'longitudinal'
should be 'specifically defined as a lateral direction that is generally aligned
(with certain limited deviations discussed in detail in the application) with
the direction of rectilinear moving of the cartridge during insertion of the
cartridge into the holder." Final Act. 3-4 (citing Spec., p. 4, 11. 28-31 ).
A claim fails to comply with 35 U.S.C. § 112, second paragraph,
"when it contains words or phrases whose meaning is unclear." In re
Packard, 751F.3d1307, 1310, 1322 (Fed. Cir. 2014) (approving, for pre-
issuance claims, the standard from MPEP § 2173.05(e)). A "satisfactory
response" to an indefiniteness rejection "can take the form of a modification
of the language identified as unclear, a separate definition of the unclear
language, or, in an appropriate case, a persuasive explanation for the record
of why the language at issue is not actually unclear." Id. at 1311.
In response, Appellant first contends that "the term 'longitudinal' is
defined as the direction of rectilinear movement of the optical cartridge as it
is inserted into its holder," and that "[t]he [S]pecification states that this
direction of slidable motion of the cartridge is dictated by the orientation of
the holder into which the cartridge is slidably inserted." Appeal Br. 6.
Appellant also contends that "the ordinary artisan would understand that the
longitudinal direction of the cartridge (and thus the holder) can be at any
orientation with regard to the headgear as a whole," and that
[t]he underlying principle is that the direction to be identified as
the longitudinal direction will always be clearly identifiable
(not only for the cartridge and holder, but also for the window
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Application 13/761,433
and frame) as the (lateral) direction of slidable motion of the
cartridge that is allowed by the holder.
Appeal Br. 7.
However, as the Examiner explains, Appellant "defines longitudinal
on page 5, lines 22-31 through page 6, lines 1-7 as 'the direction of
rectilinear motion of cartridge relative to the frame [that] may be altered by
the design of the holder, and that the terminology of longitudinal, transverse,
etc., is adopted herein purely for convenience in describing the moving of
cartridge relative to holder, and does not require any specific configuration
of holder and cartridge relative to headgear."' Final Act. 4. We agree with
the Examiner that "[i]t is unclear what 'longitudinal' means in terms of
structure, [in that] it is defined as [the] motion of the cartridge." Id.
The Examiner also notes that "the [S]pecification does not specifically
define three different terms for 'a longitudinal direction."' Ans. 2. The
Examiner continues by pointing out that "[t]he only term that is singled out
to have a special definition is the term 'longitudinal,'" which "is defined as
the direction/axis of rectilinear movement of the cartridge as it is inserted
into its holder," and for that reason, "[i]t is unclear how this translates to 'a
longitudinal direction' of the holder, 'a longitudinal direction' of the
optically transmissive window and 'a longitudinal direction' of the rear-
facing frame." Id. at 2-3.
We agree with the Examiner that the term "longitudinal direction," as
used to define movement of the cartridge, is inapplicable for defining a
structural dimension of any of the aforementioned elements recited by claim
1. For the foregoing reasons, we agree with the Examiner that Appellant
"has failed to redefine the ordinary meaning of 'longitudinal' [which we
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Application 13/761,433
understand] to mean 'direction of rectilinear movement of the cartridge' in
clear enough terms to justify the counterintuitive definition of 'longitudinal'
[as applied to a dimension of other non-moving elements]," recited in claim
1. Ans. 4.
Furthermore, we note that claim 1 is not limited to a holder into which
a cartridge is slidably inserted, but merely recites a "protective headgear for
use with an optical-filter cartridge that is removably mountable in the
protective headgear." See Appeal Br. 14, Claims App. (emphasis added).
Thus, we find Appellant's response to be devoid of a persuasive explanation
of the unclear language.
For the foregoing reasons, we sustain the rejection of claims 1-14 and
17-19 under 35 U.S.C. § 112, second paragraph.
Anticipation of Claims 1-9, 18, and 19 by Huh
Appellant argues claims 1-9, 18, and 19 as a group. See Appeal Br.
8-12; see also Reply Br. 6. We select independent claim 1 as the
representative claim for this group such that the remaining claims stand or
fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). We have considered
Appellant's arguments raised in the Appeal and Reply Briefs, but do not find
them persuasive to demonstrate error in the Examiner's rejection of claim 1
as being anticipated by Huh.
The Examiner finds that Huh anticipates claim 1 by teaching a
"protective headgear for use with an optical-filter cartridge that is removably
mountable in the protective headgear," where the protective headgear has a
first and second retainer as recited by the claim. Final Act. 5, 6.
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Appellant takes issue with the analysis and conclusions presented in
the Final Action, contending that because "the cartridge of Huh is rotatably
inserted into its holder rather than being rectilinearly/slidably moved
thereinto, Huh's cartridge, and thus Huh's holder, do not exhibit a
longitudinal direction as defined and claimed by the [A ]ppellant." Appeal
Br. 9. However, we find Appellant's contention to be unavailing. As
previously explained, claim 1 does not recite a cartridge, nor is it limited to a
holder into which a cartridge could be slidably inserted. Claim 1 merely
recites a "protective headgear for use with an optical-filter cartridge that is
removably mountable in the protective headgear." See Appeal Br. 14,
Claims App. As we are instructed by our reviewing court, "limitations are
not to be read into the claims from the [S]pecification." In re Van Geuns,
988 F.2d 1181, 1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321
(Fed. Cir. 1989)).
For the foregoing reasons, we sustain the Examiner's decision
rejecting claims 1-9, 18, and 19 as anticipated by Huh.
Anticipation of Claims 1-3, 7-9, 12, and 13 by Poole
Appellant argues claims 1-3, 7-9, 12, and 13 as a group. See Appeal
Br. 10-12; see also Reply Br. 6-7. We select independent claim 1 as the
representative claim for this group such that the remaining claims stand or
fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). We have considered
Appellant's arguments raised in the Appeal and Reply Briefs, but do not find
them persuasive to demonstrate error in the Examiner's rejection of claim 1
as being anticipated by Poole.
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Application 13/761,433
The Examiner finds that Poole anticipates claim 1 by teaching a
"protective headgear for use with an optical-filter cartridge that is removably
mountable in the protective headgear," where the protective headgear has a
first and second retainer as recited by the claim. Final Act. 9.
Appellant again takes issue with the analysis and conclusions
presented in the Final Action, contending that "although Poole's cartridge is
slidably inserted into Poole's holder, the direction of slidable moving is not
along a lateral direction as defined by the [A]ppellant," because "Poole's
cartridge is moved along the forward-rearward axis of Poole's window,
rather than being moved in a direction that is at least generally orthogonal to
the forward-rearward axis of the window." Appeal Br. 10. However, we
find Appellant's contention to be unavailing. Claim 1 is not limited to a
holder into which a cartridge is moved either in a lateral direction or in a
direction that is at least generally orthogonal to the forward-rearward axis of
the window, but merely recites a "protective headgear for use with an
optical-filter cartridge that is removably mountable in the protective
headgear." See Appeal Br. 14, Claims App. As we are instructed by our
reviewing court, "limitations are not to be read into the claims from the
[S]pecification." In re Van Geuns, 988 F.2d at 1184.
For the foregoing reasons, we sustain the Examiner's decision
rejecting claims 1-3, 7-9, 12, and 13 as anticipated by Poole.
Obviousness of Claims 12-14 and 17 over Huh and Fergason; and
Claims 14 and 17 over Poole and Fergason.
Other than observing that Fergason doesn't overcome the omissions
of either Huh or Poole, Appellant does not separately argue dependent
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claims 12-14 and 17. See Appeal Br. 12-13. Thus, we understand
Appellant's appeal of the rejection of these claims to rest on the arguments
presented against the anticipation rejections either by Huh or Poole. For the
reasons set forth above, Appellant has not demonstrated error in the rejection
of claim 1. Accordingly, we likewise sustain the Examiner's rejections of
dependent claims 12-14 and 1 7.
DECISION
Therejectionofclaims l-14and 17-19under35U.S.C. § 112,
second paragraph, is affirmed.
The rejection of claims 1-9, 18, and 19 under 35 U.S.C. § 102(b) as
anticipated by Huh is affirmed.
The rejection of claims 1-3, 7-9, 12, and 13 under 35 U.S.C. § 102(b)
as anticipated by Poole is affirmed.
The rejection of claims 12-14 and 17 under 35 U.S.C. § 103(a) as
obvious over Huh and Fergason is affirmed.
The rejection of claims 14 and 17 under 35 U.S.C. § 103(a) as obvious
over Poole and Fergason affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED
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