Ex Parte McLoughlin et al

Patent Trial and Appeal Board

Aug 31, 2018

14563248 (P.T.A.B. Aug. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/563,248 12/08/2014 Andrew James McLaughlin
20350 7590 09/05/2018
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
UNITED ST A TES OF AMERICA
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.
91845-0926905
(004811US)
CONFIRMATION NO.
5554
EXAMINER
KATCHEVES, BASILS
ART UNIT PAPER NUMBER
3638
NOTIFICATION DATE DELIVERY MODE
09/05/2018 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW JAMES MCLOUGHLIN,
TIMOTHY ROBERT JONES, RICHARD MATTHEW BOOTH, and
DAVID ALEXANDER HAMILTON
Appeal2016-008691
Application 14/563,248 1
Technology Center 3600
Before WILLIAM V. SAINDON, CARLL. SILVERMAN and
ERIC C. JESCHKE, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks review under 35 U.S.C. § 134(a) of the Examiner's
decision, as set forth in the Final Office Action dated September 18, 2015
("Final Act."), rejecting claims 16-30. Claims 1-15 have been cancelled.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellant is the Applicant, Six Continents Hotels, Inc., which,
according to the Appeal Brief, is the real party in interest. Appeal Br. 3.
Appeal2016-008691
Application 14/563,248
BACKGROUND
The disclosed subject matter relates to hotel rooms and methods of
retrofitting hotels. Claims 16, 20, 26 are independent. Claim 16 is
reproduced below, with emphasis added:
16. A method of retrofitting a hotel, the hotel
comprising a pair of structural walls with a space
including two original rooms defined between the
structural walls, and a dividing wall separating the
two original rooms, the method comprising:
removing the dividing wall; and
replacing the dividing wall with a structure
that separates the space into two new rooms and
defines separate alcoves in each of the two new
rooms,
wherein, the two new rooms are shaped like
a T and L, respectively;
wherein the structure defines a first alcove
including a first portion that adds space to the first
new room compared to a first original room and
takes away space from the second new room
compared to a second original room, and a second
alcove including a second portion that adds space to
the second new room compared to the second
original room and takes space away from the first
new room compared to the first original room; and
wherein the first alcove and the second
alcove are each sized and configured to fully
contain at least one of a bed, fold-out bed, recliner,
or sofa.
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REJECTIONS
1. Claims 28 and 30 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
2. Claims 16-30 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Travez (US 2003/0226323, published Dec. 11, 2003) and
Swensson (US 6,256,936 Bl, issued July 10, 2001).
DISCUSSION
Rejection I -The rejection of claims 28 and 30 under
35 U.S.C. § 112,first paragraph
The Examiner rejected dependent claims 28 and 30 as failing to
comply with the written description requirement. Final Act. 2-3. The
Examiner stated "[a] partition element aligned with a first portion is not in
the specification" and "must be removed." Id. at 3.
Appellant argues that "the allegedly unsupported features of claims 28
and 30, including 'a partition element aligned with a first portion,' are
adequately described and depicted in the original disclosure." Appeal Br.
18. For the reasons below, we agree with Appellant.
The test for compliance with the written description requirement is
"whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date." Ariad Pharm., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). As argued by Appellant,
the disclosures and depictions related to separator wall 172 indicate that the
inventors had possession of the limitations at issue in claims 28 and 30. See
Appeal Br. 17-18 (discussing Spec. ,r,r 42--43, Figs. 2, 3, 5); see also id. at
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17 ( arguing that "separator wall 172 is depicted as aligned in the same
direction as portions of the S-shaped wall 154 in FIGS. 2 and 3").
To the extent the statement of this Rejection indicates the Examiner's
position that the Specification must expressly include the limitations at issue
as worded in claims 28 and 30, as noted by Appellant, "the legal standard for
written description requirement is not whether a term is found in haec verba
in the specification." Appeal Br. 17; see also Ariad, 598 F.3d at 1352
(stating that the written "description requirement does not demand any
particular form of disclosure or that the specification recite the claimed
invention in haec verba" (internal citations omitted)).
As to the Examiner's statement that Appellant "provides no
argument" regarding this Rejection (Ans. 3), we disagree. As an initial
matter, the Examiner, not Appellant, has the burden of proof on this issue.
In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996). Moreover, in the Appeal
Brief, Appellant provides various arguments addressing this Rejection. See
Appeal Br. 16-18. And, as argued by Appellant, in the Answer, the
Examiner does not address the aspects of the Specification identified by
Appellant as providing written description support for the limitations at
issue. See Reply Br. 5 ("The Answer does not address these descriptions
and does not describe why such elements, clearly described and depicted in
the original specification and figures, are insufficient to show that the
applicant had possession of the claimed invention."); see also Alton, 76 F.3d
at 117 5 ("If, on the other hand, the specification contains a description of the
claimed invention, albeit not in ipsis verb is (in the identical words), then the
examiner ... must provide reasons why one of ordinary skill in the art
would not consider the description sufficient.").
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In addition to the rejection of claims 28 and 30 under 35 U.S.C. § 112,
first paragraph, the Examiner objected to an Amendment (filed June 30,
2015) "under 35 U.S.C. [§] 132(a) because it introduces new matter into the
disclosure." Final Act. 2. According to the Examiner "[t]he limitations of
'alcove' and 'partition element' are not found in the specification and are
new matter." Id.
The term "alcove" is recited in independent claims 16 and 20, and the
phrase "partition element" is recited in claims 28 and 30. We first address
the new matter objection to "partition element." "[T]he kind of adverse
decisions of examiners which are reviewable by the board must be those
which relate, at least indirect1y, to 1natters involving the rejection of daims."
in re Hengehold, 440 F.2d 1395, 1404 (CCPA 1971). Here, the new matter
objection of "partition element" relates directly to the Rejection of claims 28
and 30 under 35 U.S.C. § 112, first paragraph discussed above. As argued
by Appellant, both tun1 on whether the Specification provides adequate
written description support for the amended claim language. See Appeal Br.
7; Reply Br. 2-3 (discussing MPEP § 2163). Thus, our decision as to the
written description Rejection also disposes of the con-esponding new rnatter
objection as to "partition element."
As to this part of the new matter objection, the Examiner states that
"the term 'partition element' is broad" and that"[ o ]ne skilled in the art may
construe a 'partition element' as a portion of a partition such as the frame
within, a locking, or supporting portion of a partition or any component
thereof." Ans. 2. We agree with Appellant that this response by the
Examiner does not address the relevant issue-i.e., the written description
support for the amended claim language. See Reply Br. 2 ( asserting that the
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Examiner's "statements [ d]o not accurately reflect the standard by which
amended claim language may be deemed 'new matter"').
We tum now to the new matter objection of "alcove." As noted by
Appellant, independent claims 16 and 20 (which now recite "alcove") have
not been rejected under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement See Reply Br. 2. As
further noted by Appellant (id.), in this situation-------in which the claims were
amended but the application was not otherwise amended-------the proper course
was likely a rejection of the claims including the alleged new matter under
35 U.S.C. § 112, first paragraph, rather than a new matter objection. See
\/fPEP § 2163.06 (I) ("If new subject rnatter is added to the disdosure,
whether it be in the abstract, the specification, or the drawings, the examiner
should object to the introduction of new matter under 35 U.S.C. 132 ... ,
and require applicant to cancel the new matter. If new matter is added to the
claims, the examiner should reject the claims under ... pre-AIA 35 U.S.C.
112, first paragraph- \Witten description requirement." (emphasis added));
see also§ 608.04(c) ("[\V]here the aHeged new matter is introduced into or
affects the claims, thus necessitating their rejection on this ground, the
question becomes an appealable one, and should not be considered on
petition even though that new matter has been introduced into the
specification also."). Assuming that the Examiner intended to reject claims
16 and 20 (and their dependent claims) under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement
based on the Amendment, we now address the new matter objection of
"alcove."
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Appellant argues that "alcove" means "a small recessed section of a
room." Appeal Br. 7 (quoting J\1erriam-\Vebster.com). According to
Appellant, support for "alcove" can be found in the Specification's
disclosures of (1) providing "separate seating/living space and sleeping
spaces for a hotel guest or guests" in paragraph 43 and (2) "creat[ing]
separate spaces in each of the rooms" in paragraph 44. ld. Appellant argues
that the amendments as to "alcove" are thus a "mere rephrasing of described
features," which does not amount to new matter. ld. at 7, 6 ( citing J\1PEP
§ 2163.07).
The Examiner responds that "the term [alcove] has several definitions
and the mere term of 'alcove' is not specific enough, in light of the claims of
the instant application, to provide a reasonable interpretation." Ans. 2.
According to the Examiner, the "mere term 'alcove' is broad enough that a
description in the specification is required." Id.
Although the term "alcove" is only found in the claims at issue, we
agree that Appellant has merely rephrased (for example) the disclosed
"separate seating/living space" into the claimed "alcove." Spec. ,T 43; see
also 'fv1PEP § 2163.07 ("J\1ere rephrasing of a passage does not constitute
new matter. /\ccordingly, a rewording of a passage where the same meaning
remains intact is permissible."); Appeal Br. 10 (identifying "alcoves" in the
embodiment shmvn in Figure 2 ). 'vVe also agree with Appellant that the
Examiner's response does not address the written description support for the
amended claim language. See Reply Br. 2. To the extent the Examiner
viewed the term "alcove" as somehow broader to a person of ordinary skill
in the art than that which is supported by the Specification, we have
insufficient argument or evidence upon which to sustain such a rejection.
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For these reasons, we do not sustain the rejection of claims 28 and 30
under 35 U.S.C. § 112, first paragraph, nor the new matter objections to the
Amendment.
Rejection 2-The rejection of claims 16--30
under 35 U.S.C. § 103(a)
Independent claim 16 recites a "method of retrofitting a hotel, ... the
method comprising: removing the dividing wall; and replacing the dividing
wall with a structure that separates the space into two new rooms and defines
separate alcoves in each of the two new rooms, wherein the two new rooms
are shaped like a T and L" and, among other requirements, "wherein the first
alcove and the second alcove are each sized and configured to fully contain
at least one of a bed, fold-out bed, recliner, or sofa." Appeal Br. 20 (Claims
App.) (emphasis added). Independent claims 20 and 26 recite requirements
similar to that shown with emphasis in claim 16. See id. at 21 ( claim 20
reciting, among other requirements, that "at least one of the alcoves is sized
to accommodate at least one of a desk, a bed, or a couch"), 22 ( claim 26
reciting, among other requirements, an "offset having a depth at least sized
to accommodate one or more of a bed, fold-out bed, recliner, or sofa"). 2
Addressing the three independent claims together, the Examiner relied
on Travez for certain limitations but stated that Travez "does not specifically
disclose the dividing wall as S shaped to form a T and an L shape for
adjoining rooms." Final Act. 4. The Examiner found, however, that
"Swensson discloses a modular structure (fig. 16) for use in rooms which
separates the rooms ( see marked figure), the structure being S shaped and
2 We refer to these limitations, collectively, as the "sizing limitations."
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forming a T alcove in one room and an L alcove ( see T and L alcoves in
figure below) in an adjacent room." Id. The Examiner provided the
following annotated version of a portion of Figure 16 of Swensson:
Final Act. 5. Swensson describes Figure 16 as "a plan view of several
alternative lay-outs for room interiors." Swensson, 2:32-33. To a portion of
Figure 16, the Examiner added annotations identifying various aspects,
including an "S shape dividing structure" with a "first portion," a
"perpendicular segment (second portion)," and a "third portion," as well as
identifying a "T shape" and an "L shape." Final Act. 5. The Examiner
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stated that the "alcoves [are] inherently capable of containing a bed or
recliner." Id. at 4. 3
According to the Examiner, it would have been obvious for one of
ordinary skill in the art at the time of the invention "to modify Travez by
using the S shaped dividing structure disclosed by Swensson as a mere
design choice since Travez discloses the use of most any shape." Id. at 6.
The Examiner added that "[t]his would have been an obvious design choice
based upon the intended use of the rooms." Id.
Appellant argues that the Examiner's inherency findings as to the
sizing limitation in claim 16 ( shown with emphasis above) "are unsupported
and legally insufficient." Appeal Br. 11. Appellant relies on the same
argument for the sizing limitations in claims 20 and 26. See id. at 14, 15.
For the reasons below, we agree with Appellant.
A prima facie case of inherency requires a basis in fact and/or
technical reasoning to reasonably support a determination that the allegedly
inherent characteristic as recited in the sizing limitations necessarily flows
from the teachings of the appHed prior art. Ex pa rte TVhalen, 89 USPQ2d
1078, l 083 (BP AI 2008) (precedential). A .. s argued by Appe11ant, the
Examiner has not provided the necessary basis in fact or technical reasoning
to support the relevant findings here. See Appeal Br. 10----11.
3 Although the Examiner does not expressly identify in annotated
Figure 16 the "first alcove" or "second alcove" of claim 16 ( or the related
requirements in claims 20 or 26), we understand (1) the area between the
identified "first portion" and the identified "L shape" as the "first alcove"
and (2) the area between the identified "third portion" and the identified "T
shape" as the "second alcove."
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We first address the scope of the term "bed" in the independent
claims. The Examiner stated that "most any space may accommodate a bed"
and that "[a] bed may simply by a fold out canvas bed with folding legs,"
which, according to the Examiner, "can easily be folded and leaned against a
wall." Final Act. 7. The Examiner also stated that a "bed" "may be a rolled
heavy blanket such as a sleeping bag," which "may also fit in this area." Id.
In the Answer, the Examiner states that "[ c Jots are well known as being
temporary sleeping beds and are popular because of their compactness" and
that "[a] cot may be folded and rolled upon itself to the form of a roll." Ans.
3. According to the Examiner, a cot "may be placed along most any alcove
and is construed as being a type of bed." Id.
We agree with Appellant that the Examiner has applied an
unreasonably broad construction of "bed," when considering that term in
light of the Specification as it would be interpreted by one of ordinary skill
in the art. See In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990). The record
supports Appellant's proposed construction of a "bed" as "a piece of
furniture on or in which to lie and sleep." Reply Br. 7. As an initial matter,
we note that claims 16 and 26 distinguish between a "bed" and a "fold-out
bed." Cf Final Act. 7 (stating that "[a] bed may simply by a fold out canvas
bed with folding legs"). Moreover, as noted by Appellant, the Specification
includes numerous depictions and descriptions in which a "bed" is a piece of
furniture on or in which to lie and sleep rather than, for example, anything
on or in which to lie or sleep. See, e.g., Spec. ,r 1 ( discussing how "[ e Jach
[hotel] room includes a bed"), ,r 34 ( discussing "beds 50, 52" in Figure 1 ),
,r 40 ( discussing "bed[ s] 150, 152" in Figure 2), ,r 51 ( discussing "bed 242"
in Figure 7). We further note that the sleeping arrangements in the context
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of the Specification as a whole are for hotels, rather than just any setting.
For these reasons, we agree with Appellant that "bed" as recited in the
claims at issue does not encompass any of ( 1) a "fold out canvas bed with
folding legs," (2) "a rolled heavy blanket such as a sleeping bag," or (3) a
"cot [that] may be folded and rolled upon itself to the form of a roll." Final
Act. 7; Ans. 3.
Moreover, even assuming that "bed" includes these options, we agree
with Appellant that the Examiner has not adequately shown that the relied-
upon areas in Swensson necessarily satisfy the sizing limitations. See
rVhalen, 89 USPQ2d at l 083. We agree with Appellant that Swensson (1)
does not describe the function of the relied-upon areas, (2) does not include
dimensions for those areas, and (3) does not indicate that Figure 16 is drawn
to scale. Appeal Br. 11; see Reply Br. 7 ( arguing "there is no indication in
Swensson that the alleged corresponding spaces are sized and configured to
full contain 'a cot' either"). 4
We tum now to the term "fold-out bed" in claims 16 and 26. In the
Answer, the Examiner states that "fold out beds may rest along the wall in
an upright position when not in use and fold down when in use" and that
"[t]hese require very little space." Ans. 3. For the same reasons provided in
the prior paragraph, even assuming the correctness of these findings as to
"fold-out bed[s]" generally, the Examiner has not adequately shown that the
4 To the extent the Examiner takes the position that a "crib[]" falls
within the scope of "bed" as discussed above, we generally agree. See Ans.
3 (stating that a "bed" could be "cots, cribs, etc."). For the reasons discussed
in this paragraph, however, the Examiner has not adequately shown,
however, that the relied-upon areas in Swensson necessarily satisfy the
sizing limitations when viewing a "crib" as a "bed."
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relied-upon areas in Swensson necessarily satisfy the sizing limitations. See
Reply Br. 6 ("Whether or not fold out beds 'require very little space' does
not establish that the allegedly corresponding spaces in Swensson are sized
and configured to fully contain at least one of a bed, fold-out bed, recliner,
or sofa, as claimed.").
For these reasons, we do not sustain the rejection of independent
claims 16, 20, and 26, and also do not sustain the rejection of claims 17-19
(which depend from claim 16), claims 21-25 (which depend from claim 20),
and claims 27 and 28 (which depend from claim 26), as unpatentable over
Travez and Swensson.
We tum now to an alternative argument by Appellant regarding this
Rejection. Appellant contends that the features in the sizing limitations "are
clearly described in the [S]pecification as providing an advantage and
particular purpose," thereby "render[ing] the 'design choice' rationale
inapplicable." Appeal Br. 12. We agree that the Examiner has not provided
adequate articulated reasoning to combine Travez and Swensson to support
the legal conclusion of obviousness here.
In the context of a rejection based on design choice, a relevant issue is
whether the alleged differences between the claimed invention and the prior
art "result in a difference in function or give unexpected results" or whether
they are "no more than obvious variations consistent with the principles
known in that art." See In re Rice, 341 F.2d 309,314 (CCPA 1965). Here,
we agree with Appellant that modifying Travez based on Swensson as
proposed to allegedly arrive at the claimed invention would result in a
"difference in function" as compared to Travez alone. As noted by
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Appellant, the Specification identifies certain added functionality provided
with the claimed configurations. See Appeal Br. 12 (discussing Spec. ,r 43).
As to this argument, the Examiner responds that ( 1) the "two
references are related to various room shapes and may be combined since
they are related in the art" and (2) "Travez may be modified by Swensson
since Travez discloses the panels system as being modular and taking most
any form and Swensson discloses differing wall shapes." Ans. 3. With
these statements, the Examiner addresses why one of ordinary skill in the art
could have modified Travez as proposed, but the Examiner does not
adequately address why one would have done so, as is necessary in an
obviousness analysis. See Belden Inc. v. Berk-Tek LLC, 805 F .3d 1064,
1073 (Fed. Cir. 2015) ("[O]bviousness concerns whether a skilled artisan not
only could have made but would have been motivated to make the
combinations or modifications of prior art to arrive at the claimed
invention."); see also Reply Br. 8 ("[C]ontrary to the suggestion in the
Answer, the mere fact that references could be combined is not sufficient to
establish obviousness."). The lack of adequate reasoning here provides an
additional and alternative basis to not sustain the rejection of claims 16-30
as unpatentable over Travez and Swensson.
DECISION
We reverse the decision to reject claims 28 and 30 under 35 U.S.C.
§ 112, first paragraph, and we reverse the decision to reject claims 16-30
under 35 U.S.C. § 103(a).
REVERSED
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