Ex Parte Miller

Board of Patent Appeals and Interferences

Mar 28, 2011

10953964 (B.P.A.I. Mar. 28, 2011)

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.
10/953,964 09/29/2004 Vincent E. Miller M1102.10U 1485
29633 7590 03/29/2011
ROGERS TOWERS, P.A.
1301 RIVERPLACE BOULEVARD, SUITE 1500
JACKSONVILLE, FL 32207
EXAMINER
DEES, NIKKI H
ART UNIT PAPER NUMBER
1781
MAIL DATE DELIVERY MODE
03/29/2011 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 VINCENT E. MILLER
__________

Appeal 2010-006526
Application 10/953,964
Technology Center 1700
___________

Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
CATHERINE Q. TIMM, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from an Examiner’s decision
finally rejecting claims 15-44. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a new ground of rejection.

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Application 10/953,964

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The subject matter on appeal relates to an apparatus for sanitizing
carcasses. Claim 15, reproduced below, is illustrative.
15. An apparatus for sanitizing carcasses by applying a
chlorine dioxide solution to said carcasses and subsequently
exposing said carcasses to chlorine dioxide gas, said apparatus
comprising:

a cabinet having an entrance opening allowing passage of
carcasses into said cabinet and an exit opening allowing
passage of said carcasses out of said cabinet, said cabinet
having a wet zone and a dry zone;

solution applying means within said wet zone of said
cabinet, said solution applying means delivering a chlorine
dioxide solution onto said carcasses passing through said wet
zone;

dewatering means to remove excess chlorine dioxide
solution from said carcasses passing from said wet zone into
said dry zone;

means to retain and circulate within said dry zone
chlorine dioxide gas outgassed from said chlorine dioxide
solution applied to said carcasses within said wet zone,
whereby said carcasses are exposed within said dry zone to said
outgassed chlorine dioxide gas prior to passing through said
exit opening.

Br., Claims Appendix.1
The only Examiner’s rejection before us on appeal is the rejection of
claims 15-44 under 35 U.S.C. § 103(a) as unpatentable over the combination
of Anderson2 and Scott.3

1 Appeal Brief dated October 14, 2009.
2 US 5,980,375 issued November 9, 1999.
3 US 5,482,503 issued January 9, 1996.
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Application 10/953,964

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B. DISCUSSION
1. Rejection under 35 U.S.C. § 103(a)
Claims 15 and 31 recite an apparatus which comprises, in relevant
part, the following limitations:
“solution applying means within said wet zone of said cabinet,
said solution applying means delivering a chlorine dioxide
solution onto said carcasses”;

“dewatering means to remove excess chlorine dioxide solution
from said carcasses”; and

“means to retain and circulate within said dry zone chlorine
dioxide gas outgassed from said chlorine dioxide solution
applied to said carcasses within said wet zone.”

Br., Claims Appendix (emphasis added).
Claims 15 and 31 do not explicitly use the phrase “means for” to
describe these limitations. However, claims 15 and 31 do use the term
“means” associated with functional language in each of the limitations
identified above. Moreover, these limitations are not modified by sufficient
structure for performing the recited function. For example, “solution
applying” and “dewatering” are non-structural modifiers that do not have
any generally understood structural meaning in the art. Therefore, we
interpret these limitations as invoking 35 U.S.C. § 112, sixth paragraph. See
York Prods., Inc. v. Central Tractor Farm & Family Ctr., 99 F.3d 1568,
1574 (Fed. Cir. 1996) (“use of the word ‘means’ triggers a presumption that
the inventor used this term advisedly to invoke the statutory mandates for
means-plus-function clauses”).
The Examiner has failed to identify the structure, much less the
equivalents thereof, which corresponds to each of the “means” limitations
Appeal 2010-006526
Application 10/953,964

4
identified above. See In re Donaldson Co., Inc., 16 F.3d 1189, 1195 (Fed.
Cir. 1994) (PTO is required by statute to look to applicant’s specification
and construe claimed “means” language as limited to the corresponding
structure disclosed in the specification and equivalents thereof). Therefore,
it is not possible to determine whether the Examiner’s obviousness case is
supported by a preponderance of the evidence.
For example, the Examiner does not identify the structure that
corresponds to the “means to retain and circulate” gas within the dry zone
recited in claims 15 and 31. The Examiner does refer to structure in the
Appellant’s Specification which is said to perform the function of
recirculating or circulating a gas. See, e.g., Ans. 7 (exhaust means in
combination with air diffusers recirculate the gas).4 However, claims 15 and
31 do not recite a “means to recirculate” or a “means to circulate” but rather
recite a “means to retain and circulate” gas within the dry zone of the
cabinet.
For the reasons set forth above, the rejection under 35 U.S.C. § 103(a)
will be reversed.
2. New ground of rejection
Claims 15-44 are rejected under 35 U.S.C. § 112, second paragraph,
as failing to particularly point out and distinctly claim the subject matter
which the applicant regards as his invention. As discussed above, we
interpret the “solution applying means,” the “dewatering means,” and the
“means to retain and circulate” recited in claims 15 and 31 as invoking 35
U.S.C. § 112, sixth paragraph. However, the Appellant’s disclosure does not

4 Examiner’s Answer dated January 5, 2010.
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Application 10/953,964

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clearly link or associate the disclosed structure to each of the claimed
functions.
For example, the Appellant contends that the exhaust performs the
function of retaining and circulating the gas within the dry zone. Br. 15.
However, it is not readily apparent how the exhaust retains gas within the
dry zone. See Ans. 7 (exhaust means removes gas from the chamber). Thus,
on this record, it is unclear whether the disclosed exhaust system
corresponds to the recited “means to retain and circulate” gas within the dry
zone recited in claims 15 and 31.
In sum, we cannot identify the structure corresponding to the recited
function for each of the “means” limitations recited in claims 15 and 31,
much less identify the equivalents thereof. Therefore, we cannot assess the
scope of the claims on appeal. For this reason, claims 15-44 are hereby
rejected under 35 U.S.C. § 112, second paragraph.
C. DECISION
The rejection of claims 15-44 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Anderson and Scott is reversed.
Claims 15-44 are rejected under 35 U.S.C. § 112, second paragraph,
as failing to particularly point out and distinctly claim the subject matter
which the applicant regards as his invention. This is a new ground of
rejection pursuant to 37 C.F.R. § 41.50(b) (effective September 13, 2004, 69
Fed. Reg. 49960 (August 12, 2004), 1286 Off. Gaz. Pat. Office 21
(September 7, 2004)).
37 C.F.R. § 41.50(b) provides that “[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 that the Appellant, WITHIN TWO
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Application 10/953,964

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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 proceeding
will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

REVERSED;
37 C.F.R. § 41.50(b)

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