Ex Parte Taylor et al

Patent Trial and Appeal Board

Feb 28, 2013

11410764 (P.T.A.B. Feb. 28, 2013)

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.
11/410,764 04/25/2006 Curtis Taylor HWPE 200003US02 4491
27885 7590 02/28/2013
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
EXAMINER
JENNISON, BRIAN W
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
02/28/2013 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 CURTIS TAYLOR, DOUGLAS E. WHITNER, and
MARC LOUIS VITANTONIO
____________

Appeal 2010-005477
Application 11/410,764
Technology Center 3700
____________

Before KEN B. BARRETT, GAY ANN SPAHN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Curtis Taylor et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s rejection of claims 45-95. Appellants cancelled
claims 1-44. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

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The Claimed Subject Matter
The claimed subject matter relates to “a portable warming device . . .
for warming one or more towels.” Spec. 1, para. [0002]. Claims 45, 65, and
87 are independent and claim 45, reproduced below, with emphasis added, is
illustrative of the subject matter on appeal.
45. A portable textile warmer designed to
dry heat warm a textile comprising:
a housing body having a bottom portion, a
top portion, an inner shell, and a lid; said inner
shell having an inner surface that at least partially
forms a warming cavity; said warming cavity
having a base wall and a side wall; said warming
cavity having a volume to hold at least one
standard bath towel; said lid positionable on said
top portion of said housing; said lid movable
between an open and a closed position wherein
said lid in the closed position causing said one or
more textiles in said warming cavity to be
substantially encapsulated by said warming cavity;
said lid in the open position enabling one or more
textiles to be inserted and removed from said
warming cavity; and
a heating arrangement designed to dry heat
one or more textiles positioned in said warming
cavity; said heating arrangement including a
resistive heating element, a heating controller, a
current connector, and an activation switch; said
resistive heating element positioned on an outer
surface of said inner shell and about said side wall
of said warming cavity, in close proximity to said
outer surface of said inner shell and about said side
wall of said warming cavity, and combinations
thereof; said resistive heating element designed to
heat said inner surface of said inner shell; said
current connector designed to connect to a current
source to provide current to said resistive heating
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element; said heating controller terminating a flow
of current to said resistive heating element once a
predetermined period of time has passed since said
activation switch has been actuated by a user, after
a temperature sensor senses a predetermined
temperature after a user has actuated said
activation switch, and combinations thereof.

The Rejections
The following Examiner’s rejections are before us for review:
I. claims 45-95 under 35 U.S.C. § 112, second paragraph, as
indefinite for failing to particularly point out and distinctly claim the subject
matter which Appellants regard as the invention;
II. claims 45, 46, 48-51, 56, 60, 62, and 64 under 35 U.S.C.
§ 102(b) as anticipated by Warren (US 5,231,266, issued Jul. 27, 1993);
III. claim 47 under 35 U.S.C. § 103(a) as unpatentable over
Warren, DeMars ʼ146 (US 4,694,146, issued Sep. 15, 1987), and Ferguson
(WO 03/053101 A1, published Jun. 26, 2003);
IV. claims 52, 54, 57, 61, and 64 under 35 U.S.C. § 103(a) as
unpatentable over Warren and Lovett (US 4,927,995, issued May 22, 1990);
V. claims 53 and 54 under 35 U.S.C. § 103(a) as unpatentable over
Warren and Watchman (US 4,644,136, issued Feb. 17, 1987);
VI. claims 52 and 55 under 35 U.S.C. § 103(a) as unpatentable over
Warren and Swanson (US 5,569,403, issued Oct. 29, 1996);
VII. claim 58 under 35 U.S.C. § 103(a) as unpatentable over Warren
and Cayley (US 4,117,309, issued Sep. 26, 1978);
VIII. claim 59 under 35 U.S.C. § 103(a) as unpatentable over Warren
and Maruca (US 7,191,546 B2, issued Mar. 20, 2007);
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IX. claim 63 under 35 U.S.C. § 103(a) as unpatentable over Warren
and DeMars ʼ290 (US 4,918,290, issued Apr. 17, 1990);
X. claims 65, 68-70, 72, 73, 76-79, and 81-86 under 35 U.S.C.
§ 103(a) as unpatentable over Warren and, Lovett, Cayley, and Maruca, as
evidenced by Governale (US 3,626,152, issued Dec. 7. 1971);
XI. claims 66 and 71 under 35 U.S.C. § 103(a) as unpatentable over
Warren, Lovett, Cayley, Maruca, Ferguson, and Braun (US 4,794,228,
issued Dec. 27, 1988), as evidenced by Governale;
XII. claim 67 under 35 U.S.C. § 103(a) as unpatentable over
Warren, Lovett, Cayley, Maruca, and DeMars ʼ146, as evidenced by
Governale;
XIII. claim 74 under 35 U.S.C. § 103(a) as unpatentable over
Warren, Lovett, Cayley, Maruca, and Watchman, as evidenced by
Governale;
XIV. claim 75 under 35 U.S.C. § 103(a) as unpatentable over
Warren, Lovett, Cayley, Maruca, and Swanson, as evidenced by Governale;
XV. claim 80 under 35 U.S.C. § 103(a) as unpatentable over
Warren, Lovett, Cayley, Maruca, and DeMars ʼ290, as evidenced by
Governale;
XVI. claim 87 under 35 U.S.C. § 103(a) as unpatentable over
Warren, Lovett, Cayley, Maruca, and Rose (US 4,694,973, issued Sep. 22,
1987), as evidenced by Governale; and
XVII. claims 88-95 under 35 U.S.C. § 103(a) as unpatentable over
Warren, Lovett, Cayley, Maruca, Rose, Ferguson, and Braun, as evidenced
by Governale.

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OPINION
Rejection I – Indefiniteness
Claims 45-86 and 89-95
Appellants argue claims 45-86 and 89-95 as a group and we select
independent claim 45 as the representative claim. See App. Br. 12-15 and
Reply Br. 2-5; see also 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claims 46-86
and 89-95 stand or fall with claim 45.
The Examiner determines that claims 45-86 and 89-95 are indefinite
for including a limitation reciting a plurality of elements together with the
phrase “and combinations thereof,” wherein the elements and the phrase
“and combinations thereof” are not recited in the alternative. Ans. 4 and 31-
32.
Appellants argue that all of the claim limitations including a plurality
of elements together with the phrase “and combinations thereof” recite the
elements and the phrase “and combinations thereof” in the alternative and
thus, present no uncertainty or ambiguity with respect to the question of
scope or clarity of the claims. App. Br. 13. For example, Appellants argue
that claim 45’s limitation of “said resistive heating element positioned on an
outer surface of said inner shell and about said side wall of said warming
cavity, in close proximity to said outer surface of said inner shell and about
said side wall of said warming cavity, and combinations thereof” is an
“alternative limitation directed to the position of the resistive heating
element.” App. Br. 13-14. Appellants also argue that “[t]he limitation
requires that the resistive heating element can be positioned ‘on an outer
surface of said inner shell and about said side wall of said warming cavity’
and/or ‘in close proximity to said outer surface of said inner shell and about
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said side wall of said warming cavity,” and “this is the only reading for this
limitation.”
We are not persuaded by Appellants’ arguments that the claim
limitations including a plurality of elements together with the phrase “and
combinations thereof” are recited in the alternative in order to present no
uncertainty or ambiguity as to claim scope. Although Appellants are correct
that a claim limitation need not be written in Markush group format in order
to be considered an alternative limitation, we note that Appellants’
limitations including a plurality of elements together with the phrase “and
combinations thereof” are not alternative limitations because they do not
contain “or” or “optionally” terminology. See the Manual of Patent
Examining Procedure (MPEP) § 2173.05(h) II and III. Thus, we agree with
the Examiner that all of Appellants’ claims reciting a limitation including a
plurality of elements together with the phrase “and combinations thereof”
are indefinite as not being recited in the alternative and thus, presenting
uncertainty or ambiguity as to claim scope.
Accordingly, we sustain the Examiner’s rejection of claims 45-86 and
89-95 under 35 U.S.C. § 112, second paragraph, as being indefinite.
Claims 87 and 88
Appellants correctly note that claims 87 and 88 do not contain any
disputed alternative limitations. App. Br. 15. Accordingly, we do not
sustain the Examiner’s rejection of claims 87 and 88 under 35 U.S.C. § 112,
second paragraph, as being indefinite.
Rejection II – Anticipation based on Warren
The Examiner finds that Warren discloses each and every limitation to
anticipate independent claim 45. Ans. 4-6. In particular, the Examiner finds
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that Warren discloses a portable textile warmer including, inter alia, a
warming cavity “having a volume to hold at least one standard bath towel
(towelettes are used for cleansing which is equivalent to bathing and Figure
2 discloses a plurality of towelettes; column 1, lines 19-26).” Ans. 4-5. The
Examiner explains that “the recitation [of] . . . ‘the at least one towel’ (i.e.[,]
standard towel) [is] not part of the invention and [is] intended/functional
use.” Ans. 34. The Examiner further explains that Warren’s towelettes are
considered to be standard under the broadest reasonable interpretation, and
because “there is no recitation to size, thickness, or volume of a standard
towel recited in any of the claims,” Warren meets the claim language. Ans.
34-35.
Appellants argue that “the volume limitation is part of claim 45 and is
not merely a functional limitation that can be ignored,” and “claim 45 does
require that the warming cavity have a volume large enough to hold a
standard bath towel.” App. Br. 19; Reply Br. 6. Appellants note that the
Specification defines the term “standard bath towel” as “a bath towel that is
‘about 27-30" by 52-60" and has a thickness of about 0.125-025", thus
having an average volume of about 175-450 cubic inches.’” App. Br. 16
(quoting Spec. 3, para. [0008]). Thus, Appellants also argue that “Warren
does not disclose the volume of the towelette warmer,” and “Warren does
not disclose a towelette warmer having a cavity that can hold at least one
bath towel.” Reply Br. 6.
We agree with Appellants that Warren fails to disclose that its
towelette warmer satisfies the claim limitation of “said warming cavity
having a volume to hold at least one standard bath towel.” Warren’s
towelette warmer is disclosed as being “for warming and dispensing pre-
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moistened, prepackaged disposable towelettes.” Warren, Abst. The
towelette warmer has a body 1, and inside the body 1, the towelette warmer
has a watertight vessel 11. Warren, col. 2, ll. 11-12 and 18-20. The vessel
11 is shaped to accept either round or rectangular towelette dispensers 12.
Warren, col. 2, ll. 21-23. However, Warren does not explicitly disclose any
volume for vessel 11 and it is not implicit that a vessel shaped to accept
either a round or rectangular towelette dispenser is large enough to hold a
standard bath towel defined as having an average volume of about 175-450
cubic inches.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 45, and claims 46, 48-51, 56, 60, 62, and 64 dependent
thereon, under 35 U.S.C. § 102(b) as anticipated by Warren.
Rejections III-IX – Obviousness based on Warren/DeMars ʼ146/
Ferguson, Warren/Lovett, Warren/Watchman, Warren/Swanson,
Warren/Cayley, Warren/Maruca, and Warren/DeMars ʼ290, respectively
The Examiner’s rejections of claims 47, 52-55, 57-59, 61, 63, and 64
under 35 U.S.C. § 103(a) all rely upon the erroneous finding that Warren
teaches “said warming cavity having a volume to hold at least one standard
bath towel.” Accordingly, for the reasons discussed supra with respect to
independent claim 45, we do not sustain the Examiner’s rejections, under 35
U.S.C. § 103(a), of: claim 47 as unpatentable over Warren, DeMars ʼ146,
and Ferguson; claims 52, 54, 57, 61, and 64 as unpatentable over Warren
and Lovett; claims 53 and 54 as unpatentable over Warren and Watchman;
claims 52 and 55 as unpatentable over Warren and Swanson; claim 58 as
unpatentable over Warren and Cayley; claim 59 as unpatentable over
Warren and Maruca; and claim 63 under 35 U.S.C. § 103(a) as unpatentable
over Warren and DeMars ʼ290.
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Rejection X – Obviousness based on Warren,
Lovett, Cayley, and Maruca, as evidenced by Governale
The Examiner finds that Warren discloses “said warming cavity
having a volume to hold at least one standard bath towel and up to two
standard bath towels.” Ans. 5 and 58-59. Appellants argue that this
limitation “is not taught, disclosed or made obvious from the teachings of
Warren.” App. Br. 40. For the reasons discussed supra with respect to
independent claim 45, we do not sustain the Examiner’s rejection of
independent claim 65, and claims 68-70, 72, 73, 76-79, and 81-86 dependent
thereon, under 35 U.S.C. § 103(a) as unpatentable over Warren, Lovett,
Cayley, and Maruca, as evidenced by Governale.
Rejections XI-XV – Obviousness based on
Warren/Lovett/Cayley/Maruca in combination with any
one of Ferguson/Braun, DeMars ʼ146, Watchman, Swanson,
and DeMars ʼ290, respectively, all as evidenced by Governale
The Examiner’s rejections of claims 66, 67, 71, 74, 75, and 80 under
35 U.S.C. § 103(a) all rely upon the erroneous finding that Warren teaches
“said warming cavity having a volume to hold at least one standard bath
towel and up to two standard bath towels.” Accordingly, for the reasons
discussed supra with respect to independent claim 45, we do not sustain the
Examiner’s rejections, under 35 U.S.C. § 103(a), of: claims 66 and 71 as
unpatentable over Warren, Lovett, Cayley, Maruca, Ferguson, and Braun, as
evidenced by Governale; claim 67 as unpatentable over Warren, Lovett,
Cayley, Maruca, and DeMars ʼ146, as evidenced by Governale; claim 74 as
unpatentable over Warren, Lovett, Cayley, Maruca, and Watchman, as
evidenced by Governale; claim 75 as unpatentable over Warren, Lovett,
Cayley, Maruca, and Swanson, as evidenced by Governale; and claim 80 as
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unpatentable over Warren, Lovett, Cayley, Maruca, and DeMars ʼ290, as
evidenced by Governale.
Rejection XVI – Obviousness based on Warren,
Lovett, Cayley, Maruca, and Rose, as evidenced by Governale
The Examiner finds that Warren discloses a portable textile warmer
including, inter alia, “a lid (first lid 5; see Figures 1, 2).” Ans. 4-5.
Appellants note that “Warren discloses a towelette warmer that
includes two lids 5, 7.” App. Br. 39 (citing Warren, col. 2, ll. 11-17).
Appellants argue that the Examiner’s analysis is “factually and legally
unsound in view of the teachings of Warren,” because claim 87 requires that
the portable towel warmer includes only a single lid. App. Br. 39 and Reply
Br. 26.
The Examiner replies that because claim 87 uses the transitional
phrase “comprising” which is open-ended and does not exclude additional,
unrecited elements, Warren fully meets the claim recitation of “a single lid”
giving the claim its broadest reasonable interpretation.
We agree with Appellants. The recitation of “a single lid” is
construed in view of the ordinary and customary meaning of the word
“single.” The ordinary and customary meaning of the word “single” is
“ONLY, SOLE.” WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY,
UNABRIDGED, Merriam-Webster, Inc., © 1993.1 A person of ordinary skill
in the art would understand that claim 87 is reciting one and only one lid.
Thus, the Examiner has incorrectly applied the broadest reasonable
interpretation of the word “comprising” to mean that Warren’s two lids
satisfies the claim recitation of a single lid. See In re Skvorecz, 580 F.3d

1 Accessed at http://lionreference.chadwyck.com/searchRefShelf.do (last
viewed February 3, 2013).
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1262, 1268 (Fed. Cir. 2009) (holding that “the examination expedient of
‘broadest reasonable interpretation’ was incorrectly applied to interpret
‘comprising’ to mean that not all the Skvorecz wire legs need have offsets,
despite the claims that state that ‘each wire leg’ has an offset.”).
Accordingly, we do not sustain the Examiner’s rejection of claim 87
under 35 U.S.C. § 103(a) as unpatentable over Warren, Lovett, Cayley,
Maruca, and Rose, as evidenced by Governale.
Rejection XVII – Obviousness based on Warren, Lovett,
Cayley, Maruca, Rose, Ferguson, and Braun, as evidenced by Governale
The Examiner’s rejection of claims 88-95 under 35 U.S.C. § 103(a)
relies upon the erroneous finding that Warren teaches “a single lid.”
Accordingly, for the reasons discussed supra with respect to independent
claim 87, we do not sustain the Examiner’s rejection of claims 88-95 under
35 U.S.C. § 103(a) as unpatentable over Warren, Lovett, Cayley, Maruca,
Ferguson, and Braun, as evidenced by Governale.

DECISION
We AFFIRM the Examiner’s rejection of claims 45-86 and 89-95
under 35 U.S.C. § 112, second paragraph, as indefinite.
We REVERSE the Examiner’s rejection of: claims 87 and 88 under
35 U.S.C. § 112, second paragraph, as indefinite; claims 45, 46, 48-51, 56,
60, 62, and 64 under 35 U.S.C. § 102(b) as anticipated by Warren; claim 47
under 35 U.S.C. § 103(a) as unpatentable over Warren, DeMars ʼ146, and
Ferguson; claims 52, 54, 57, 61, and 64 under 35 U.S.C. § 103(a) as
unpatentable over Warren and Lovett; claims 53 and 54 under 35 U.S.C.
§ 103(a) as unpatentable over Warren and Watchman; claims 52 and 55
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under 35 U.S.C. § 103(a) as unpatentable over Warren and Swanson; claim
58 under 35 U.S.C. § 103(a) as unpatentable over Warren and Cayley; claim
59 under 35 U.S.C. § 103(a) as unpatentable over Warren and Maruca; claim
63 under 35 U.S.C. § 103(a) as unpatentable over Warren and DeMars ʼ290;
claims 65, 68-70, 72, 73, 76-79, 81-86 under 35 U.S.C. § 103(a) as
unpatentable over Warren and, Lovett, Cayley, and Maruca, as evidenced by
Governale; claims 66 and 71 under 35 U.S.C. § 103(a) as unpatentable over
Warren, Lovett, Cayley, Maruca, Ferguson, and Braun, as evidenced by
Governale; claim 67 under 35 U.S.C. § 103(a) as unpatentable over Warren,
Lovett, Cayley, Maruca, and DeMars ʼ146, as evidenced by Governale;
claim 74 under 35 U.S.C. § 103(a) as unpatentable over Warren, Lovett,
Cayley, Maruca, and Watchman, as evidenced by Governale; claim 75 under
35 U.S.C. § 103(a) as unpatentable over Warren, Lovett, Cayley, Maruca,
and Swanson, as evidenced by Governale; claim 80 under 35 U.S.C.
§ 103(a) as unpatentable over Warren, Lovett, Cayley, Maruca, and DeMars
ʼ290, as evidenced by Governale; claim 87 under 35 U.S.C. § 103(a) as
unpatentable over Warren, Lovett, Cayley, Maruca, and Rose, as evidenced
by Governale; and claims 88-95 under 35 U.S.C. § 103(a) as unpatentable
over Warren, Lovett, Cayley, Maruca, Rose, Ferguson, and Braun, as
evidenced by Governale.
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)(1)(iv).

AFFIRMED-IN-PART

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