Ex Parte RoseDownload PDFPatent Trial and Appeal BoardDec 21, 201613018660 (P.T.A.B. Dec. 21, 2016) Copy Citation 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. 13/018,660 02/01/2011 MICHAEL A. ROSE JR. 1690 MR 01 UTL 8924 75207 7590 Gearhart Law LLC 41 River Road Suite 1A Summit, NJ 07901 12/21/2016 EXAMINER PANCHOLI, VISHAL J ART UNIT PAPER NUMBER 3754 MAIL DATE DELIVERY MODE 12/21/2016 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 MICHAEL A. ROSE, JR. Appeal 2014-009088 Application 13/018,660 Technology Center 3700 Before ANNETTE R. REIMERS, JILL D. HILL, and ERIC C. JESCHKE, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Michael A. Rose, Jr. (“Appellant”) appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1, 2, and 4—16.1 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART, and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). 1 Claim 3 was canceled. Appeal Br. 15 (Claims App.). Appeal 2014-009088 Application 13/018,660 CLAIMED SUBJECT MATTER Independent claims 1,5, and 11 are pending. Claim 1, reproduced below, illustrates the claimed subject matter. 1. A shielded kitchen range conduit comprising: a length of kitchen range conduit having an inside surface, an outside surface, and an open end; a debris blocking device in the shape of a conical frustum having a first surface and a second surface; said first surface engaging the inside surface of said open end, wherein said first surface fits substantially within and is engaged to said inside surface; said outside surface having at least one opening; and said opening capable of admitting an elongated component. REJECTIONS I. Claims 1,2, and 4 stand rejected under 35U.S.C. § 112, second paragraph, as indefinite. Final Act. 2. II. Claims 1, 2, 4—7, 9, and 10 stand rejected under 35 U.S.C. § 102(b) as anticipated by Heckman (US 6,449,865 Bl; iss. Sept. 17, 2002). Final Act. 3. III. Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Heckman and Markle (US 1,933,117; iss. Oct. 31, 1933). Final Act. 6. IV. Claims 11—16 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Heckman and Nelson (US 4,715,841; iss. Dec. 29, 1987). Final Act. 6. 2 Appeal 2014-009088 Application 13/018,660 ANALYSIS Rejection I—Indefiniteness Independent claim 1 recites a debris blocking device with a first (outer) surface fitting “substantially within” and engaging an inside surface of a length of conduit. According to the Examiner, this recitation “cannot be true structurally as the first surface of the debris blocking device cannot physically fit within the inside surface of the conduit.” Final Act. 2. We agree with the Examiner’s rejection. Although the claim language “said first surface fits substantially within and is engaged to said inside surface” appears to be intended to cover the debris blocking device that fits within a length of conduit such that a first (outer) surface of the device engages an inside surface of the length of conduit, this is not what the claim actually recites. We therefore agree with the Examiner’s reasoning and sustain the rejection of claims 1, 2, and 4.2 New Grounds Independent claim 5 recites an outer surface of the debris blocking device “engaging a protected cavity.” The protected cavity, however, is not positively recited in claim 5, and it therefore forms no part of the claimed invention. A claim fails to comply with 35 U.S.C. § 112, second paragraph, “when it contains words or phrases whose meaning is unclear.” In re Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014) (approving, for pre issuance claims, the standard from MPEP § 2173.05(e)). 2 We note that claim 1 recites “said outside surface having at least one opening.” Because the claim previously recites a conduit having an open end, we assume this “opening” refers to the opening (e.g., 130) in the debris blocking device. 3 Appeal 2014-009088 Application 13/018,660 Although not positively reciting (i.e., requiring the presence of) a “protected cavity,” claim 1 attempts to define the configuration of the outer surface of the debris blocking device (which is positively recited) in relation to the protected cavity. Appellant’s Specification states that the protected cavity in a “preferred application is the inside of a length of conduit 140” (Spec. 10,11. 15—16), but also contemplates a debris blocking device “capable of being fitted into multiple sized pipes, conduits or other apertures” (Spec. 6,11. 12—13). The metes and bounds of a “protected cavity” are therefore essentially undefined. By attempting to define certain aspects of the outer surface of the debris blocking device in relation to the unclaimed and essentially undefined “protected cavity,” the limitations set forth above render claim 1 unclear. See Ex parte Miyazaki, 89 USPQ2d 1207, 1212—13 (BPAI 2008) (precedential) (holding indefinite claims defining the height of a paper feeding unit relative to a person whose position relative to the claimed printer was not well-defined in the claim, because the claimed height of the paper feeding unit did not present a structural limitation on the height at all). We therefore reject claim 5, and claims 6—10 that depends therefrom, as indefinite for failing to particularly point out and distinctly claim the subject matter of the invention. Because the rejection of claims 5—10 is newly presented, we designate the rejection of claims 5—10 a NEW GROUND OF REJECTION under 37 C.F.R. § 41.50(b), to provide Appellant with a full and fair opportunity to react to the rejection. In addition, independent claim 11 recites “a slot through said surface.” However, claim 11 fails to recite a surface. This term thus lacks antecedent basis and thereby renders claim 11, and claims 12—16 depending therefrom, 4 Appeal 2014-009088 Application 13/018,660 indefinite. Because the rejection of claims 11—16 is newly presented, we designate the rejection of claims 11—16 a NEW GROUND OF REJECTION under 37 C.F.R. § 41.50(b), to provide Appellant with a full and fair opportunity to react to the rejection. Rejection II—Anticipation of Claims 1, 2, 4—7, 9, and 10 Regarding claim 1, the Examiner finds that Heckman discloses, inter alia, a length of kitchen range conduit. Final Act. 3; Reply Br. 9. Appellant argues that this finding is in error. Appeal Br. 6—7; Reply Br. 2. Appellant is correct. Claim 1 recites a combination of a length of kitchen range conduit and a debris blocking device. Regardless of whether Heckman discloses the recited debris blocking device, it does not disclose a length of kitchen range conduit and therefore does not anticipate claim 1, or claims 2 and 4 that depend therefrom. Regarding independent claim 5, which is directed to a debris blocking device whose outside surface engages “a protected cavity,” without reciting kitchen range conduit, the Examiner finds this disclosure in Heckman. Final Act. 4 (“said outer surface engaging a protected cavity (inside area of cup 26, figure 5”). Thus, the Examiner initially finds the protected cavity to be an inside area of Heckman’s cup 26, but also finds Heckman’s cup 26 to be the claimed frustoconical-shaped device whose outer surface engages the protected cavity. Id. (“Heckman discloses ... a frustoconical[-]shaped device (cup, item 26, figure 3)”). Appellant argues that this finding is in error. Appeal Br. 9—10. The Examiner then finds, giving the term “protected cavity” its broadest reasonable interpretation, that Heckman’s “inside empty volume of the guide 5 Appeal 2014-009088 Application 13/018,660 (20) is a protected cavity,” and that the outer surface of the cup 26 “engage [s] the protected cavity through its connection with the inner surface of the guide (20) which is in direct contact with the inside cavity.” Ans. 11. The Examiner, however, fails to state what actual broadest reasonable interpretation is being given to the term “protected cavity,” and how the inside empty volume of the guide 20 meets that construction. Lacking such an explanation, we are unable to agree that the empty volume of Heckman’s guide 20 can be considered a protected cavity that is engaged by an outer surface of its cup 26 through “its connection with the inner surface of the guide (20) which is in direct contact with the inside cavity.” The Examiner further finds that an “outer surface of guide (20) also engages the protected cavity at the slot (32) where the cavity is in contact with both the inner surface and the outer surface.” Id. Regarding this finding, it is unclear what cavity the Examiner considers to be engaged by an outer surface of Heckman’s guide 20 — there is no cavity surrounding or otherwise interacting with Heckman’s outer surface. The Examiner then finds that “if the guide (20) of Heckman is placed inside a larger conduit, it will surely engage the inside cavity of the conduit[,] thus fulfilling the requirements of the claim.” Id. Even if we agreed with this conclusory statement, claim 5 does not recite an outside surface configured to engage, or for engaging, a protected cavity —rather, claim 5 recites an outer surface engaging a protected cavity. Although, as set forth above, the term “protected cavity” is indefinite because it is essentially undefined, the recited engagement of the protected cavity cannot therefore be read out of the claim. For the reasons set forth above, we do not sustain Rejection II. 6 Appeal 2014-009088 Application 13/018,660 Rejection III—Obviousness of Claim 8 The Examiner does not find that Markle cures the deficiency of Heckman. Final Act. 6. We therefore do not sustain Rejection III. Rejection IV— Obviousness of Claims 11—16 The Examiner finds that Heckman discloses the limitations of claims 11—16, except that its rim does not extend perpendicularly away from “an axis of rotation” of the debris blocking device’s conical frustum. Final Act. 7. The Examiner finds a disclosure of the claimed perpendicularly extending rim in Nelson. Id. Appellant argues that Heckman and Nelson are non-analogous art to the claimed debris blocking device, because the field of Heckman is a diptube guide and the field of Nelson is a balloon holder. Appeal Br. 13. To be analogous art, a prior art reference must either be (1) in the field of Appellant’s endeavor or (2) reasonably pertinent to the particular problem with which Appellant was concerned. See In re Oetiker, 977 F.2d 1443, 1446 (Fed. Cir. 1992). The Examiner contends that Heckman and Nelson are analogous art because they both teach a conically shaped device that could be used as a debris blocking device[] where in a cylindrical object or a conduit can be inserted into the device via an elongated slot. The structures taught by Heckman and Nelson are similar to that of the current application and . . . would achieve the same function as the device in the current application. Ans. 13. The Examiner’s response fails to define the field of Appellant’s endeavor, or explain why it is the same as the field as Heckman or Nelson. The Examiner also fails to define a problem with which Appellant was 7 Appeal 2014-009088 Application 13/018,660 concerned, or explain why Heckman and Nelson are reasonably pertinent to that problem. We therefore are not persuaded that Heckman and Nelson are analogous art, and we do not sustain Rejection IV. DECISION We AFFIRM the rejection of claims 1,2, and 4 under 35 U.S.C. §112, second paragraph. We enter a NEW GROUND OF REJECTION of claims 5—16 under 35 U.S.C. § 112, second paragraph, pursuant to our authority under 37 C.F.R. § 41.50(b). We REVERSE the rejection of claims 1, 2, 4—7, 9, and 10 under 35 U.S.C. § 102(b) as anticipated by Heckman. We REVERSE the rejection of claim 8 under 35 U.S.C. § 103(a) as unpatentable over Heckman and Markle. We REVERSE the rejection of claims 11—16 under 35 U.S.C. § 103(a) as unpatentable over Heckman and Nelson. This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b), which 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 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 8 Appeal 2014-009088 Application 13/018,660 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. . . . 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)(l)(iv). AFFIRMED-IN-PART; 37 C.F.R, $ 41.50(b) 9 Copy with citationCopy as parenthetical citation