Ex Parte McCurdy et alDownload PDFPatent Trials and Appeals BoardMay 30, 201912920834 - (D) (P.T.A.B. May. 30, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/920,834 11/30/2010 119996 7590 05/31/2019 Alltech, Inc. Legal Department - Intellectual Property 3031 Catnip Hill Pike Nicholasville, KY 40356 FIRST NAMED INVENTOR John Joseph McCurdy 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. Ql20583 8639 EXAMINER LEFF, STEVEN N ART UNIT PAPER NUMBER 1792 MAIL DATE DELIVERY MODE 05/31/2019 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 JOHN JOSEPH MCCURDY, OLIVER THOMAS O'NEILL, HUGH McNAB KERR, JEROME JEAN-YVES EON, SETH DANIEL WAREING, and TIMOTHY JOHN PENF ARE Appeal2018-005607 Application 12/920,834 Technology Center 1700 Before CATHERINE Q. TIMM, WESLEY B. DERRICK, and MONTE T. SQUIRE, Administrative Patent Judges. SQUIRE, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 52-59, 62, 63, 65, 66, and 69-77, which are all the 1 In explaining our Decision, we refer to the Specification filed September 3, 2010 ("Spec."); Final Office Action dated October 2, 2017 ("Final Act."); Appeal Brief filed December 27, 2017 ("Appeal Br."); Examiner's Answer dated April 17, 2018 ("Ans."); and Reply Brief filed May 11, 2018 ("Reply Brief'). 2 Appellants identify Alltech Farming Solutions Limited, which is a subsidiary of Alltech, Inc., as the real party in interest. Appeal Br. 3. Appeal2018-005607 Application 12/920,834 claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The Claimed Subject Matter Appellants' disclosure relates to a method for preparing a batch of animal feed from a plurality of ingredients. Spec. 1; Abstract. Claim 77 is illustrative of the claimed subject matter on appeal and is reproduced below from the Claims Appendix to the Appeal Brief: 77. A method for preparing a batch of animal feed from a plurality of ingredients requiring respective predefined mixing periods during a mixing cycle in a mixer/feeder apparatus of the type comprising a mixing compartment within which a mixing rotor is rotatably mounted for mixing the ingredients therein, and a discharge compartment separate from the mixing compartment, the method comprising: selecting the ingredient requiring the largest predefined mixing period, and determining a duration of the mixing cycle as the predefined mixing period required by the selected ingredient requiring the largest predefined mixing period, determining a plurality of instants at which the respective remaining ingredients are to be loaded into the mixing compartment of the mixer/feeder apparatus during the mixing cycle, each instant of the respective determined instants being determined so that the remaining duration of the mixing cycle at that instant is substantially equal to the predefined mixing period of the corresponding ingredient, loading any liquid ingredient into the mixing compartment prior to loading any one or more dry ingredient, and loading the selected ingredient with the largest predefined mixing period into the mixing 2 Appeal2018-005607 Application 12/920,834 compartment at the commencement of the mixing cycle, sequentially loading the remaining ingredients into the mixing compartment at respective corresponding determined instants during the mixing cycle, and, after completion of the mixing cycle, opening a closure plate located between the mixing compartment from the discharge compartment, the discharge compartment being offset from the mixing compartment, and urging mixed animal feed into the discharge compartment. Appeal Br. 36-37 (key disputed claim language bolded and italicized). The References The Examiner relies on the following prior art references as evidence in rejecting the claims on appeal: Whitson O'Neill Osterlund us 4,547,660 WO 94/24851 EP 0931454 Al Oct. 15, 1985 Nov. 10, 1994 July 28, 1999 The Rejections On appeal, the Examiner maintains (Ans. 2) the following rejections: 1. Claims 52-59, 62, 63, 65, 66, and 69-77 are 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 applicant regards as the invention ("Rejection 1 "). 2. Claim 77 is rejected under 35 U.S.C. § I02(b) as being anticipated by Osterlund ("Rejection 2"). 3. Claim 77 is rejected under 35 U.S.C. § I03(a) as being unpatentable over Osterlund ("Rejection 3"). 3 Appeal2018-005607 Application 12/920,834 4. Claims 52-55, 57, 65, 69, 70, 72-75, and 77 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Osterlund in view of O'Neill ("Rejection 4"). 5. Claims 52-59, 62, 63, 65, 66, and 69-77 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Osterlund in view of O'Neill and Whitson ("Rejection 5"). 6. Claims 52-55, 57, 65, 69, 72-75, and 77 are rejected under 35 U.S.C. § 103(a) as being unpatentable over O'Neill ("Rejection 6"). OPINION Reiection 1 Appellants argue independent claims 52 and 77 as a group and do not present separate argument for the patentability of dependent claims 53-59, 62, 63, 65, 66, and 69-68. Appeal Br. 9-10. We select claims 52 and 77 as representative 3 and the remaining claims subject to this rejection stand or fall with those claims. 37 C.F.R. § 4I.37(c)(l)(iv). The Examiner rejects claims 52 and 77 for indefiniteness. Ans. 3. In particular, the Examiner determines that the phrase "loading any liquid ingredient into the mixing compartment" is indefinite because the term "liquid ingredient" lacks antecedent basis and, as a result, it is unclear 3 Claim 52 is directed to a method for preparing a batch of animal feed from a plurality of ingredients and includes language nearly identical to claim 77, including the recitation "loading any liquid ingredient into the mixing compartment prior to loading any one or more dry ingredient." Compare claim 52 (Appeal Br. 34), with claim 77 (Appeal Br. 36--37). 4 Appeal2018-005607 Application 12/920,834 whether the phrase actually requires a liquid ingredient or if use of the term "any" provides a liquid ingredient as merely an option. Id. at 3. Appellants argue that the Examiner's rejection of claims 52 and 77 should be reversed because the phrase "loading any liquid ingredient into the mixing compartment prior to loading any one or more dry ingredient" is not indefinite. Appeal Br. 9-11. In particular, Appellants contend that, under the standard dictionary definition of the pronoun "any," the plain meaning of the phrase is "that if the plurality of ingredients include a liquid ingredient, then the liquid ingredient is loaded prior to loading any one or more dry ingredients of the plurality of ingredients." Id. at 10. Appellants further contend that it is understood from the claims that if any liquid ingredient is included in the plurality of ingredients, such a liquid ingredient will be loaded before loading the ingredient requiring the largest predefined mixing period, i.e., before "the mixing cycle" commences. Id. at 11 (citing Spec. 5:31-32, 13:8-10). We do not find Appellants' argument persuasive of reversible error in the Examiner's rejection. Rather, on the record before us and based on the fact-finding and reasoning provided by the Examiner at page 3 of the Answer and page 2 of the Final Office Action, we concur with the Examiner's determination that the claims are indefinite. In particular, we find that the meaning of the claim limitation, "loading any liquid ingredient into the mixing compartment prior to loading any one or more dry ingredient," is indefinite because the phrase is subject to multiple plausible interpretations. See Ex Parte Miyazaki, 89 USPQ2d 1207, 1211 (BP AI 2008) (precedential) ("[I]f a claim is amenable to two or more plausible claim constructions, the US PTO is justified in requiring the applicant to 5 Appeal2018-005607 Application 12/920,834 more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112 2nd paragraph, as indefinite."). More specifically, it is unclear whether the phrase actually requires a liquid ingredient or if use of the term "any" provides a liquid ingredient as merely an option. The test for definiteness under 35 U.S.C. § 112, second paragraph, is whether "those skilled in the art would understand what is claimed when the claim is read in light of the specification." Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). Thus, we must look to the Specification to determine what the phrase "loading any liquid ingredient into the mixing compartment prior to loading any one or more dry ingredient" would mean to those skilled in the art. We note that the specific phrase does not appear in the original Specification. Although the portions of the Specification Appellants identify in the Appeal Brief (see Spec. 5, 13) discuss the duration of the mixing cycle being defined based on the ingredient requiring the largest predefined mixing period, they do not indicate or specify whether the claims actually require a liquid ingredient. Rather, these portions merely describe various embodiments. We find that this description also fails to enlighten us as to the meaning of the phrase "loading any liquid ingredient into the mixing compartment prior to loading any one or more dry ingredient" as the disclosure provided is also consistent with the possible interpretations of the phrase discussed above. Moreover, we decline to read the limitations of specific embodiments from the Specification into the claims because the claim language is broader than the embodiments. 6 Appeal2018-005607 Application 12/920,834 We, therefore, conclude that claims 52 and 77 are indefinite because the metes and bounds of the claim language "loading any liquid ingredient into the mixing compartment prior to loading any one or more dry ingredient" cannot be determined. Because the remaining claims on appeal and subject to the Examiner's indefiniteness rejection (dependent claims 53- 59, 62, 63, 65, 66, and 69-76) each recites the same "loading any liquid ingredient into the mixing" language as claims 52 and 77, we also conclude that these claims are indefinite. Accordingly, we affirm the Examiner's rejection of claims 52-59, 62, 63, 65, 66, and 69-77 under 35 U.S.C. § 112, second paragraph, for indefiniteness. Reiections 2. 3. 4. 5. and 6 We do not reach the merits of the Examiner's rejections under 35 U.S.C. § 102 (Rejection 2, stated above) and§ 103 (Rejections 3, 4, 5, and 6, stated above) at this time. Before a proper review of these rejections can be performed, the subject matter encompassed by the claims on appeal must be reasonably understood without resort to speculation. Since all of the claims on appeal fail to satisfy the requirements of the second paragraph of 35 U.S.C. § 112, we are constrained to reverse, proforma, the prior art rejections under 35 U.S.C. §§ 102 and 103. See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art rejection cannot be sustained if the hypothetical person of ordinary skill in the art would have to make speculative assumptions concerning the meaning of claim language.). Accordingly, we reverse the Examiner's Rejections 2, 3, 4, 5, and 6. 7 Appeal2018-005607 Application 12/920,834 DECISION/ORDER The Examiner's rejection of claims 52-59, 62, 63, 65, 66, and 69-77 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention (Rejection 1, stated above) is affirmed. The Examiner's remaining rejections under 35 U.S.C. §§ 102 and 103, respectively (Rejections 2---6, stated above) are reversed. It is ordered that the Examiner's decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 8 Copy with citationCopy as parenthetical citation