Ex Parte Penke et al

Board of Patent Appeals and Interferences

Oct 31, 2008

11272128 (B.P.A.I. Oct. 31, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARK S. PENKE and
DEBORA MARGARET HEJZA LITTWILLER
__________

Appeal 2008-1388
Application 11/272,128
Technology Center 2800
____________

Decided: October 31, 2008
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Before EDWARD C. KIMLIN, CHARLES F. WARREN, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
28-34. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We REVERSE and provide a new ground of rejection pursuant to 37
CFR § 41.50(b).

INTRODUCTION
Claim 28, the only independent claim on appeal, is illustrative:
28. A marking system and process which comprises in an operative
arrangement at least one sensor, a marking station, a sheet(s) collection
Appeal 2008-1388
Application 11/272,128

station with a signal, a sheet conveyance and path, and at least one sensor,
said sensor enabled to activate at least one signal including illumination at
said collection station, said sheet conveyance enabled to convey said paper
along said path extending from said marking station and ending at paper
exit, said paper exit enabled to allow said sheets to pass therethrough into
said collection station, located along said sheet conveyance path and before
said collection station is at least one of said sensors, at least one of said
sensors enabled along said conveyance path to activate said signal when a
first sheet passes therethrough and enabled to inactivate said signal and shut
off said signal at a predetermined or fixed period of time after said sensor is
activated, said signal including a light that illuminates said collection station,
said sensor located in said path of said sheet conveyance and before said
collection station is enabled to activate a signal for said predetermined
period of time when a first sheet enters said path, said signal including
signals selected from the group consisting of light, color coded lights, audio
signals, vibrating signals and mixtures thereof, said at least one sensor also
enabled to shut off said signal in said collection station at a preset time after
activation of a sensor.

OPINION
The plain language of claim 28 states that the subject matter being
claimed is “A marking system and process which comprises. . . .” In other
words, two statutory classes of invention (i.e., a system (apparatus) and a
process) improperly are being recited in a single claim. Claiming two
statutory classes within a single claim renders the claim indefinite. IPXL
Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005)
(a case of first impression for the Federal Circuit regarding the inclusion of
two statutory classes of invention in a single claim, which adopted the
Board’s holding in Ex parte Lyell, 17 USPQ2d 1548 (1990) that held
including a method of use in an apparatus claim renders a claim indefinite
under 35 U.S.C. § 112, second paragraph). Cf. Microprocessor Enhancement
Corp. v. Texas Instruments Inc., 520 F.3d 1367, 1374-75 (Fed. Cir. 2008)
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Application 11/272,128

(No ambiguity was found in the claim language of a method of use claim
that recites structural features). Adopting the reasoning of the Board in
Lyell, the IPXL court reasoned that the combination of apparatus and process
statutory classes within a single claim renders the claim indefinite under 35
U.S.C. § 112, second paragraph, because a manufacturer or seller of the
claimed apparatus would not know from the claim whether it might also be
liable for contributory infringement because a buyer or user of the apparatus
later performs the claimed process of using the apparatus. Id.
For these same reasons, Appellants’ claims fail to particularly point
out and distinctly claim the subject matter which Appellants regard as the
invention under 35 U.S.C. § 112, second paragraph, because it is unclear if a
manufacturer or seller of the claimed marking system (i.e., apparatus) would
know from the claim whether it might also be liable for contributory
infringement because a buyer or user of the apparatus later performs the
claimed process of using the markings system (i.e., apparatus).
Because we determine that claim 28, the only independent claim on
appeal, fails to comply with the requirement of 35 U.S.C. § 112, second
paragraph, to particularly point and distinctly claim the subject matter which
applicant regards as the invention, any determination whether dependent
claim 29 fails to comply with the written description requirement of 35
U.S.C. § 112, first paragraph, or whether any of the claims are obvious over
the applied prior art improperly would be based speculation. In re Steele,
305 F.2d 859, 862-63 (CCPA 1962).
Accordingly, we reverse pro forma the rejection of claim 29, under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement, the rejection of claims 28-30, 33, and 34 under 35
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Application 11/272,128

U.S.C. § 103 over Tanaka1 in view of Iizumi2, the rejection of claim 31
under 35 U.S.C. § 103 over Tanaka in view of Iizumi and Matsumae3, and
the rejection of claim 32 under 35 U.S.C. § 103 over Tanaka in view of
Iizumi and Kim4.

NEW GROUND OF REJECTION
Claims 28-34 are rejected under 35 U.S.C. § 112, second paragraph,
as failing to point out and distinctly claim the subject matter which applicant
regards as the invention.
Claim 28 recites that the subject matter of the claim is directed to “[a]
marking system and process which comprises.” Plainly, claim 28 recites
that the structure of the marking system “comprises in an operative
arrangement at least one sensor, a marking station, a sheet(s) collection
station with a signal, a sheet conveyance and path, and at least one sensor.”
Claim 28 further recites a process of using the apparatus. For example, “said
sensor enabled to activate at least one signal including illumination at said
collection station” (claim 28). The inclusion of a process of use in an
apparatus claim renders the claim indefinite under 35 U.S.C. § 112, second
paragraph, for the reasons provided supra. IPXL, 430 F.3d at 1384.

DECISION
The Examiner’s decision is reversed and a new ground of rejection
pursuant to 37 CFR §41.50(b) is provided.

1 JP 6-191128 published July 12, 1994, as translated.
2 US 6,003,861 patented December 21, 1999.
3 US 2005/0095014 A1 published May 5, 2005.
4 US 2006/0110198 A1 published May 25, 2006.
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Application 11/272,128

This Decision contains a new ground of rejection pursuant to 37 CFR
§ 41.50(b). 37 CFR § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 CFR § 41.50(b) also provides that the Appellants, 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
proceedings will be remanded to the Examiner, or
(2) Request rehearing. Request that the proceedings be reheard under
§ 41.52 by the Board upon the same record.

REVERSED and NEW GROUND OF REJECTION 37 CFR § 41.50(b)

tc

JAMES J. RALABATE
5792 MAIN STREET
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