Ex Parte Mitchell

Patent Trial and Appeal Board

Mar 20, 2017

13340186 (P.T.A.B. Mar. 20, 2017)

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.
13/340,186 12/29/2011 Jeffrey C. Mitchell 16424 3209
6123 7590
JAMES EARL LOWE, JR.
Davis & Kuelthau
111 E. Kilbourn Ave
Suite 1400
Milwaukee, WI 53202
EXAMINER
LAU, JASON
ART UNIT PAPER NUMBER
3743
NOTIFICATION DATE DELIVERY MODE
03/22/2017 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):
jlowe@dkattorneys.com
JELowe @ me. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY C. MITCHELL
Appeal 2015-005607
Application 13/340,186
Technology Center 3700
Before JENNIFER D. BAHR, LINDA E. HORNER, and
BRANDON J. WARNER, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jeffrey C. Mitchell (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1—20, as set forth in the
Final Action dated June 18, 2014 (“Final Act.”). We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
Appeal 2015-005607
Application 13/340,186
CLAIMED SUBJECT MATTER
Appellant’s claimed subject matter “relates to the field of heating,
curing[,] and drying systems.” Spec. 1, Claims 1 and 19 are independent.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. A system comprising: a housing having a first wall and at
least one second wall adjacent the first wall, the first wall and at
least one second wall defining an interior adapted to hold an
object to be heated, dried or cured; an air plenum adjacent to,
covering and disposed inward from the first wall, at least one air
plenum opening in the air plenum to have air communicate with
the interior and the object without first passing through an
enclosed air space, a fan disposed in the air plenum opening, and
a ductwork assembly adjacent to, covering and disposed inward
from the second wall, the ductwork assembly being in air-
communication with the air plenum, and having a ductwork
opening directly into the interior so that substantially all air
circulation in the interior is between the at least one air plenum
opening and the ductwork opening, the interior being an enclosed
area within the housing that is between the air plenum and the
ductwork assembly.
REJECTIONS
The Final Action includes the following grounds of rejection:
1. Claims 1 and 6—20 are rejected under 35 U.S.C. § 102(b) as
anticipated by Sonner (US 2004/0237339 Al, pub. Dec. 2, 2004).
2. Claims 2—5 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Sonner and Greenwood (US 2010/0301034 Al, pub. Dec. 2,
2010).
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Appeal 2015-005607
Application 13/340,186
ANALYSIS
For the reasons set forth below in the new ground of rejection, claims
1—20 are indefinite. Accordingly, we cannot sustain the rejections of these
claims under 35 U.S.C. §§ 102(b) and 103(a), because to do so would
require speculation as to the scope of the claims. See In re Aoyama, 656
F.3d 1293, 1300 (Fed. Cir. 2011) (holding that the Board erred in affirming
an anticipation rejection of indefinite claims); In re Steele, 305 F.2d 859,
862—63 (CCPA 1962) (holding that the Board erred in affirming an
obviousness rejection of indefinite claims because the rejection was based
on speculati ve assumptions as to the meaning of the claims). It should be
understood, however, that our decision to reverse these rejections is based
solely on the indefiniteness of the claimed subject matter, and does not
reflect on the adequacy of the prior art evidence applied in support of the
rejections.
NEW GROUND OF REJECTION
We enter a new ground of rejection of claims 1—20 under 35 U.S.C.
§ 112, second paragraph, as indefinite.
“ [I] nterior ”
Claim 1 recites “a housing having a first wall and at least one second
wall adjacent the first wall, the first wall and at least one second wall
defining an interior adapted to hold an object to be heated, dried or cured.”
Br. 17 (Claims App.) (emphasis added). Independent claim 19 recites a
si milar limitation. Id. at 21. The scope of “interior” is unclear because the
claims provide internally inconsistent usages of this term.
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Appeal 2015-005607
Application 13/340,186
Namely, although the claims recite that the interior is defined by the
housing walls, which suggests that the interior represents the entirety of the
space encompassed by the housing walls, the claims recite additional
language suggesting that the interior represents a smaller space or
compartment within the housing. For example, claims 1 and 19 recite an air
plenum and a ductwork assembly that are “adjacent to, covering!’,] and
disposed inward from the” housing walls. Id. at 17, 21. As noted above, the
claims recite the “interior” as being defined by the housing walls, and, as
such, the air plenum and ductwork assembly appear to be a part of, or
encompassed by, the interior. However, claims I and 19 also recite that the
interior is “an enclosed area within the housing that is between the air
plenum and the ductwork assembly.'’'’ Id. (emphasis added). Because the air
plenum and ductwork assembly are adjacent to, covering, and disposed
inward from the housing walls, the claim language suggests that the interior
is not defined by the housing walls, but, rather, is defined by the air plenum
and ductwork assembly elements covering the walls (i.e., encompassing an
enclosed space or compartment within the housing that is less than the
entirety of the space defined by the housing walls).
Additionally, claims 1 and 19 recite an “opening in the air plenum to
have air communicate with the interior,” and “a ductwork opening directly
into the interior.” Id. As noted above, the claims recite that the interior is
defined by the housing walls, and, as such, the air plenum and ductwork
assembly that are adjacent to, covering, and disposed inward from the
housing walls appear to be encompassed by the interior space, as defined by
the housing walls. However, it is unclear how the air plenum and ductwork
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Appeal 2015-005607
Application 13/340,186
assembly could be encompassed by the interior space, as defined by the
housing walls, and also open directly into and communicate air with the
interior.
Appellant’s Specification does not provide any clarifying disclosure
regarding the scope of “interior.” For example, the Specification describes
“housing 14 having . . . first wall 18 and at least one second wall 22 defining
. . . interior 26.” Spec, 2; see also id. at 1 (describing that “Figure 1 is an
end view of a system according to this disclosure, including a housing
defining an interior for drying, heating or curing an object”). This
description in the Specification indicates that interior 26 is defined by
housing walls 18 and 22, and, therefore, includes the entirety of the space
encompassed by housing walls 18 and 22. However, the Specification also
describes that “air plenum 42 has . . . space 43 formed between . . . housing
ceiling 18 and . . . wall 45 formed by a plurality of adjacent connected
panels 47 (see Figure 4) spaced apart from . . . ceiling 18.” Id. at 3. The
Specification further describes that “ductwork assembly 62 is formed in a
conventional fashion from a plurality of adjacent connected panels 78 (see
Figure 4) attached to each other to form a single enclosure.” Id. at 5. This
description in the Specification suggests that interior 26 represents an
enclosed space defined not by housing walls 18 and 22, but by air plenum
panels 47 and ductwork assembly panels 78 (i.e., encompassing a space
within the housing that is smaller than the entirety of the space defined by
housing walls 18 and 22). See also id., Fig. 4 (depicting air plenum panels
47 and ductwork assembly panels 78).
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Appeal 2015-005607
Application 13/340,186
The above descriptions in the Specification demonstrate that the
“interior” recited in claims 1 and 19 is amenable to two plausible
constructions, i.e., the interior is the entirety of the space
justified in requiring the applicant to more precisely define the metes and
bounds of the claimed invention by holding the claim unpatentable
under 35 U.S.C. § 112, second paragraph, as indefinite.” Ex parte
when the claims are read in light of the Specification.
“[.Pjassing through an enclosed air space”
Claims 1 and 19 recite “at least one air plenum opening in the air
plenum to have air communicate with the interior and the object without first
passing through an enclosed air space.” Br. 17, 21 (Claims App.)
(emphasis added). This language renders the claims indefinite because it is
unclear how air could pass through an enclosed air space. We note that an
ordinary meaning of “enclose” is “[t]o surround (with walls, fences, or other
barriers) so as to prevent free ingress or egress.” Oxford English Dictionary,
definition l.a., available at http://www.oed.com/view/Entry/61731,
last accessed March 10, 2017. In view of this ordinary meaning, it is not
clear under what circumstances air would be able to pass through a space
that is suirounded with walls or barriers preventing free ingress or egress.
air plenum
and 19, and their dependent claims 2—18 and 20, axe indefinite because the
scope of “interior” is not reasonably ascertainable by those skilled in the art
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Application 13/340,186
Appellant’s Specification does not provide any clarifying disclosure in this
regard. As such, one of ordinary skill in the art would not he able to
ascertain with reasonable certainty the metes and bounds of a plenum
opening that communicates air with the interior “without first passing
through an enclosed air space” when the claims are read in light of the
Specification. Accordingly, claims 1 and 19, and their dependent claims 2—
18 and 20, are indefinite.
DECISION
The decision of the Examiner to reject claims 1—20 is REVERSED.
We enter a new ground of rejection of claims 1—20 under 35 U.S.C.
§112, second paragraph, as indefinite.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[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:
When the Board enters such a non-final decision, the appellant,
within two 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 prosecution will be
remanded to the Examiner. . . .
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Appeal 2015-005607
Application 13/340,186
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
REVERSED; 37 C.F.R, $ 41.50(b)
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