Ex Parte Simsek

Patent Trial and Appeal Board

Nov 8, 2016

12742646 (P.T.A.B. Nov. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121742,646 05/12/2010
26948 7590 11/l 0/2016
VENJURIS, P,C
1938 E. OSBORN RD
PHOENIX, AZ 85016-7234
FIRST NAMED INVENTOR
Tulga Simsek
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. CONFIRMATION NO.
PHDL1054-002 7382
EXAMINER
LORENZI, MARC
ART UNIT PAPER NUMBER
1714
NOTIFICATION DATE DELIVERY MODE
11/10/2016 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):
docketing@venjuris.com
vclmdocket@venjuris.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TULGA SIMSEK 1
Appeal2015-005430
Application 12/742,646
Technology Center 1700
Before CHRISTOPHER L. OGDEN, CHRISTOPHER C. KENNEDY, and
AVEL YN M. ROSS, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1, 49-55, 58, and 66. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
The subject matter on appeal relates to a washing machine. E.g.,
Spec. 1, i-f 1; Claim 1. Claim 1 is reproduced below from page 21 (Claims
Appendix) of the Appeal Brief:
1 According to the Appellant, the real party in interest is the named inventor,
Tulga Simsek. App. Br. 2.
Appeal2015-005430
Application 12/742,646
1. A washer and extractor machine ( 1) comprising
-a liquid tub (10) positioned either horizontally or inclined with
the horizontal;
-a perforated drum ( 5) having an interior cylindrical surface and
including a shaft bearing ( 11) and wherein the perforated drum
(5) rotates inside the liquid tub;
-a circulation pump ( 16) for sucking a liquid from the liquid tub
(10) and pumping the liquid back to the drum and
-wherein the interior cylindrical surface is perforated and the
perforated part of interior cylindrical surface of the perforated
drum ( 5) includes at least eight protrusions ( 45) having a size
between 1 % and 6% of the perforated drum diameter which
create hollows ( 46) in between protrusions ( 45) wherein the
size of the protrusions of the washer and extractor machine ( 1)
prevents harm to the textiles.
REJECTIONS ON APPEAL 2
1. Claims 1, 49--55, 58, and 66 stand rejected under 35 U.S.C. § 112,
i-f 2, as indefinite.
2. Claims 1 and 50-54 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sights et al. (US 5,782,111, issued July 21, 1998).
3. Claims 1, 55, 58, and 66 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Uzkureit et al. (US 6,463,767 B2, issued Oct. 15, 2002).
2 In the Answer, the Examiner withdraws a rejection of claim 49 under 35
U.S.C. § 112, i-f 4. Ans. 2.
2
Appeal2015-005430
Application 12/742,646
ANALYSIS
I. Re} ection 1
Claims 1, 49--55, 58, and 66 stand rejected under 35 U.S.C. § 112, i-f 2,
as indefinite.
The legal standard for definiteness in prosecution is whether a claim
reasonably apprises those of skill in the art of its scope. In re Warmerdam,
33 F.3d 1354, 1361 (Fed. Cir. 1994). "[D]efiniteness of the language
employed must be analyzed-not in a vacuum, but always in light of the
teachings of the prior art and of the particular application disclosure as it
would be interpreted by one possessing the ordinary level of skill in the
pertinent art." In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). In a
litigation context, the Supreme Court has held that 35 U.S.C. § 112, i-f 2
"require[s] that a patent's claims, viewed in light of the specification and
prosecution history, inform those skilled in the art about the scope of the
invention with reasonable certainty." l'lautilus, Inc. v. Biosig Instrurnents,
Inc., 134 S. Ct. 2120, 2129 (2014). During prosecution, the inquiry made by
the Examiner is focused upon whether the claims set out and circumscribe a
particular subject matter with a reasonable degree of clarity and particularity.
See, e.g., MPEP 2173.02.
A. Claims 1 and 50
The Examiner determines that the limitation "prevents harm" renders
claim 1 indefinite. Final Act. 4--5. Although the Appellant amended claim 1
in claim amendments following the Final Action, the amendment appears to
address a typographical/grammatical mistake, see Claims dated Aug. 20,
2014; it does not appear to address the Examiner's concern regarding the
3
Appeal2015-005430
Application 12/742,646
term "prevents harm," see Final Act. 4--5. In the Appeal Brief and the Reply
Brief, the Appellant does not acknowledge or address the § 112, i-f 2
rejection of claim 1, see App. Br. 10-11; Reply Br. 2-3, notwithstanding the
fact that Examiner maintains the rejection in the Answer, Ans. 2; see also 37
C.F.R. § 41.39(a)(l) ("An examiner's answer is deemed to incorporate all of
the grounds of rejection set forth in the Office action from which the appeal
is taken (as modified by any advisory action and pre-appeal brief conference
decision), unless the examiner's answer expressly indicates that a ground of
rejection has been withdrawn."). Because the Appellant identifies no
reversible error in the Examiner's§ 112 rejection of claim 1, we summarily
affirm the rejection. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI
2010) (precedential) ("If an appellant fails to present arguments on a
particular issue----or more broadly, on a particular rejection-the Board will
not, as a general matter, unilaterally review those uncontested aspects of the
rejection."); cf In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (even ifthe
examiner failed to make a prima facie case, the Board would not have erred
in framing the issue as one of reversible error because "it has long been the
Board's practice to require an applicant to identify the alleged error in the
examiner's rejections"). Because claims 50-55, 58, and 66 depend, directly
or indirectly, from claim 1, we likewise summarily affirm the Examiner's
§ 112 rejection of those claims.
The Examiner determines that claim 50, which depends from claim 1,
is further indefinite due to the language "by sucking the liquid from a
volume (39) between the perforated drum (5) and the liquid tub (10)
draining from the drum (5) into the volume (39) and pumping the liquid
back to the perforated drum (5)." See Final Act. 5. The Examiner states that
4
Appeal2015-005430
Application 12/742,646
"[t]he metes and bounds of this limitation are not understood," and, for
examination purposes, the Examiner interprets the claim to mean "the
circulation pump sucks the liquid drained from the perforated drum into the
tub and pumps the liquid back into the perforated drum." Id.
In response to the rejection, the Appellant amended claim 50,
consistent with the Examiner's interpretation of the disputed limitation, to
recite "by sucking the liquid from a volume (39) between the perforated
drum ( 5) and the liquid tub ( 10) and pumping the liquid back to the
perforated drum (5)." See Claims dated Aug. 20, 2014. The Examiner
entered the amendment. See Amendment initialed by Examiner dated Sept.
12, 2014. Because that amendment appears to be consistent with the
Examiner's interpretation of the claim, it would appear to resolve the
Examiner's § 112, i-f 2 concern with claim 50.
In the Examiner's Answer, the Examiner does not expressly withdraw
the rejection, but fails to provide any explanation as to why amended claim
50 remains indefinite. See Ans. 2-3. Because the Examiner provides no
rationale as to why the amended claim remains indefinite, we reverse the §
112, i-f 2 rejection of claim 50 with respect to the language "by sucking the
liquid from a volume (39) between the perforated drum (5) and the liquid tub
(10) draining from the drum (5) into the volume (39) and pumping the liquid
back to the perforated drum (5)," which no longer exists in that form.
However, as noted above, we affirm the§ 112, i-f 2 rejection of claim 50 with
respect to the term "prevents harm," which is included in claim 50 by its
dependence from claim 1.
5
Appeal2015-005430
Application 12/742,646
B. Claim 49
The Examiner determines that the limitation "adequate height and
density" renders claim 49 indefinite. Final Act. 5. In particular, the
Examiner determines that "[t]he term 'adequate' is not defined by the claim,
the specification does not provide a standard for ascertaining the requisite
degree, and one of ordinary skill in the art would not be reasonably apprised
of the scope of the invention." Id. The Examiner assumes that the height
and number of protrusions "as expressed in claim 1 will result in the
'adequate height and density' of claim 49." Id. In the Answer, the
Examiner further explains:
Examiner finds the distinction between claims 1 & 49 to be
recital of "adequate" by claim 49. Examiner considers that
either the claimed invention of claim 49 is 1) distinct from
claim 1 as imparted by "adequate height and density," said
distinction not being understood, or 2) a duplicate of claim 1
per what is positively recited of the protrusions. Since
Appellant had not clarified/ confirmed examination
interpretation of 'adequate' on the record ... the [§ 112, i-f 2]
rejection remains applied.
Ans. 2-3.
The Appellant argues that claim 49 itself provides sufficient context to
render the disputed limitation definite. App. Br. 11. In particular, the
Appellant points to the following language of claim 49 (emphasized):
"adequate height and density to keep laundry away from perforations (21) to
prevent the perforations (21) being blocked by the laundry and to let water
reach the perforations (21) and drain out from the perforated drum (5)." Id.
The Appellant also argues that, because the Examiner "understands the
language to make a rejection," the claim cannot be indefinite. Id.
6
Appeal2015-005430
Application 12/742,646
We are not persuaded by those arguments because they do not address
the Examiner's rationale. The fact that the Examiner previously rejected
claim 49 under§ 112, i-f 4 (a rejection that is withdrawn in the Examiner's
Answer, see Ans. 2) does not of itself establish, or even suggest, that the
scope of the disputed term is reasonably clear to a person of ordinary skill in
the art. Consistent with the previous § 112, i-f 4 rejection, the Examiner finds
that claim 49 is indefinite because it is unclear to what extent, if any, the
scope of claim 49 differs from the scope of claim 1. See Final Act. 5; Ans.
2-3. In other words, it is unclear whether claim 1 's limitation of "at least
eight protrusions ( 45) having a size between 1 % and 6% of the perforated
drum diameter" (which is also repeated in claim 49) meets the "adequate
height and density" limitation of claim 49, or if something more is required.
Even considering the additional language of claim 49 emphasized by the
Appellant, the Appellant's argument does not explain whether, and to what
extent, claim 49 differs in scope from claim 1. Because the Appellant has
not persuasively addressed the Examiner's concern with respect to claim 49,
we are not persuaded of reversible error in the rejection. Cf Jung, 637 F.3d
at 1365; see also In re Zietz, 893 F.2d 319, 321 (Fed. Cir. 1989) ("[D]uring
patent prosecution when claims can be amended, ambiguities should be
recognized, scope and breadth of language explored, and clarification
imposed."). We therefore affirm the rejection.
II. Rejection 2
Claims 1 and 50-54 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sights. After review of the cited evidence in the appeal
record and the opposing positions of the Appellant and the Examiner, we
determine that the Appellant has not identified reversible error in the
7
Appeal2015-005430
Application 12/742,646
Examiner's rejection. Accordingly, we affirm the rejections for reasons set
forth below, in the Final Action, and in the Examiner's Answer. See
generally Final Act. 2-3, 6-10; Ans. 3-5.
The Appellant's arguments focus on limitations appearing in claim 1.
We select claim 1 as representative of the rejected claims, and we limit our
discussion to claim 1.
The Examiner finds that Sights teaches a washer and extractor
machine comprising the elements of claim 1, except that Sights "does not
explicitly teach" (1) a tub, (2) a shaft bearing, (3) a circulation pump, and ( 4)
the specific number and size of protrusions. Final Act. 6-7. Concerning the
tub, shaft bearing, and circulation pump, the Examiner takes official notice
that those features are commonly included in washing machines. Id.
Concerning the number and size of protrusions, the Examiner notes
that the Appellant's Specification states that conventional protrusion height
is 6% to 12% of the drum diameter, and that it is conventional to include 6 to
8 protrusions. Id. at 8; Spec. 2-3. Given that (1) the admitted conventional
height of 6% of drum diameter overlaps the claimed range of "between 1 %
and 6%," and (2) the admitted conventional number of eight protrusions
overlaps the claimed range of "at least eight protrusions," the Examiner
concludes that a washer and extractor machine having the claimed number
and size of protrusions would have been obvious. Final Act. 8; see also In
re Wertheim, 541F.2d257, 267 (CCPA 1976).
The Appellant principally argues that a person of ordinary skill in the
art would not have considered the claimed invention obvious over Sights
because Sights contemplates abrasion of garments, while the claimed
8
Appeal2015-005430
Application 12/742,646
invention is concerned with "preventing harm to textiles." See App. Br. 15-
16.
We are not persuaded by that argument. Claim 1 is directed to an
apparatus. "[A ]pparatus claims cover what a device is, not what a device
does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468
(Fed. Cir. 1990) (emphasis in original). The Appellant's argument fails to
identify a structural difference between the apparatus of Sights (as modified
according to the Examiner's analysis) and the claimed apparatus.
The Appellant's Specification contemplates as a goal "increase[d]
rubbing effect during a washing" and "augmenting friction ... between said
fabrics with drum protrusions." Spec. 10; Ans. 3. As the Examiner
explains, "[i]t is evident that Appellant's protrusions are also applying an
abrasive/frictional effect from these passages." Ans. 3. The Examiner
further explains that the harm sought to be prevented by the Appellant's
invention is that caused by perforations in the drum. See Spec. 1 ("The
machine according to this invention prevents the harm of the textile caused
by the drum perforations and also during the high speed spinning stage."), 9
("to prevent drum perforations damaging delicate textile .... "). While the
Specification also references "damage caused to textile by normal size ribs,"
Spec. 3, Sights expressly teaches that "[t]he degree of abrasion can be
controlled by the size and diameter of the protrusions as well as their
geometric shape," see Sights at 4:7-8. The Appellant does not persuasively
explain how or why the abrasion contemplated by Sights is incompatible
with, or otherwise teaches away from, "prevent[ing] harm to the textiles" as
recited by claim 1, particularly given that the Appellant's own Specification
appears to contemplate some level of abrasion (friction) caused by the
9
Appeal2015-005430
Application 12/742,646
protrusions. On this record, the Appellant fails to identify a patentable
distinction between the apparatus of claim 1 and the apparatus of Sights as
modified according to the Examiner's analysis. The Appellant's arguments
concerning abrasion do not persuade us of reversible error in the Examiner's
rejection.
With no elaboration or explanation, the Appellant also "disagrees with
the official notice taken for the liquid tub, the shaft bearing and the
circulation pump." See App. Br. 15; Reply Br. 6. However, as the
Examiner explains, a bald statement of disagreement with no identification
of specific errors in the Examiner's rationale is not persuasive. See, e.g., In
re Chevenard, 139 F.2d 711, 713 (CCPA 1943); see also MPEP § 2144.03.
The Examiner's undisputed finding that Uzkureit teaches a washing machine
comprising a liquid tub, shaft bearing, and circulation pump provides
support for the Examiner's finding that tubs, shaft bearings, and circulation
pumps are conventional aspects of washing machines. See, e.g., Final Act.
11. On this record, we are not persuaded that the Examiner committed
reversible error in taking official notice of certain facts. We affirm the
rejection.
III. Rejection 3
Claims 1, 55, 58, and 66 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Uzkureit. After review of the cited evidence in the appeal
record and the opposing positions of the Appellant and the Examiner, we
determine that the Appellant has not identified reversible error in the
Examiner's rejection. Accordingly, we affirm the rejections for reasons set
forth below, in the Final Action, and in the Examiner's Answer. See
generally Final Act. 10-13; Ans. 5-6.
10
Appeal2015-005430
Application 12/742,646
The Appellant's arguments focus on limitations appearing in claim 1.
We select claim 1 as representative of the rejected claims, and we limit our
discussion to claim 1.
The Examiner finds that Uzkureit teaches a washing machine
comprising each element of claim 1 except "Uzkureit only teaches 3 paddles
[protrusions] rather than 8, and is silent regarding the proportion in size of
the protrusions being between 1 and 6%." Final Act. 11. Similar to
Rejection 2, the Examiner relies on the Appellant's admission that a number
and size of protrusions overlapping the number and size recited by claim 1 is
conventional, and the Examiner concludes that claim 1 would have been
obvious in view of Uzkureit. Id. at 11-12.
The Appellant argues that U zkureit' s protrusions are greater than 12 %
of the diameter of the drum and "teach away from the present invention."
See App. Br. 19. The Appellant also argues that "Uzkereit [sic] would cause
abrasion with paddle greater tha[n] 12% of the diameter," and that, "even
when combined with the so-called 'conventional perforated drum' it would
not produce the present invention as it appears both would cause abrasion."
Id. at 20.
Those arguments are not persuasive. Regardless of the height of the
protrusions disclosed by Uzkureit, the Examiner finds that it would have
been obvious to use a known conventional protrusion height---e.g., 6% of
the diameter of the drum-with Uzkureit's protrusions. Final Act. 12. The
Appellant identifies nothing in Uzkureit that criticizes, discourages, or
otherwise teaches away from the use of such a protrusion height. The
Appellant provides no persuasive argument that Uzkureit as modified by the
Examiner's analysis would not meet the structural limitations of claim 1, or
11
Appeal2015-005430
Application 12/742,646
that it would result in more abrasion than the washing machine of claim 1 in
a way that would somehow remove it from the scope of claim 1. The
Appellant's arguments do not persuade us of reversible error in the
Examiner's rejection. We affirm the rejection.
CONCLUSION
We AFFIRM the Examiner's rejections of claims 1, 49--55, 58, and
66.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
12