Ex Parte Winnen et al

Patent Trial and Appeal Board

Jun 14, 2016

12087302 (P.T.A.B. Jun. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/087,302 06/08/2009
21186 7590 06/16/2016
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
Martin Winnen
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.
1238.038US 1 6863
EXAMINER
BASICHAS, ALFRED
ART UNIT PAPER NUMBER
3743
NOTIFICATION DATE DELIVERY MODE
06/16/2016 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):
uspto@slwip.com
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAR TIN WINNEN and HERBERT KLEWE
Appeal2014-003504
Application 12/087,302
Technology Center 3700
Before NEALE. ABRAMS, LYNNE H. BROWNE, and
MICHELLE R. OSINSKI, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEivIENT OF THE CASE
Martin Winnen and Herbert Klewe (Appellants) 1 appeal under 35
U.S.C. § 134 from the Examiner's final decision rejecting claims 27-33, 41,
and 43--46. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is Gebr. Muller
Kerzenfabrik AG. Appeal Br. 3.
Appeal2014-003504
Application 12/087,302
THE CLAIMED SUBJECT MATTER
Claim 27, the sole independent claim is reproduced below and is
representative of the claimed subject matter on appeal.
27. A candle comprising:
a wick longitudinally extending from a bottom end to a top
exposed end,
a candle fuel surrounding a portion of the wick and
defining at least a base surface and an outer surface,
a candle dish having a top surface and a bottom surface,
the top surface of said dish including a central depression located
substantially in the center of the candle dish and the candle dish
being in contact with the base surface of the candle fuel, and
a dip coating wax layer surrounding the outer surface of
the candle fuel and at least the bottom surface of the candle dish.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Engman
Pappas
Derges
us 1,344,446
US 2003/0064340 Al
US 7,003,905 Bl
REJECTIONS
June 22, 1920
Apr. 3, 2003
Feb.28,2006
I. Claim 44 stands rejected under 35 U.S.C. § 112 (pre-AIA), first
paragraph, as failing to comply with the written description
requirement. Final Act. 2. 2
II. Claims 27-29, 33, 41, 43, 45, and 46 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Pappas and Derges. Id. at 3-5.
2 Applications filed before September 16, 2012 are governed by the first
paragraph of pre-AIA 35 U.S.C. § 112. Manual of Patent Examining
Procedure § 2161.
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Appeal2014-003504
Application 12/087,302
III. Claims 30-32 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pappas, Derges, and Engman. Id. at 5-6.
OPINION
Rejection I
The Examiner rejects claim 44 under 35 U.S.C. § 112 (pre-AIA), first
paragraph as failing to comply with the written description requirement.
Final Act. 2. The Examiner asserts that the claim contains subject matter
which was not described in the Specification in such a way as to reasonably
convey to one skilled in the art that the inventors had possession of the
claimed invention at the time the application was filed. Id. In particular, the
Examiner asserts that "[ t ]here is no mention of direct contact between the
bottom end of the wick and the top surface of the dish." Id. (emphasis
omitted).
To satisfy 35 U.S.C. § 112, first paragraph, the written description
must convey with reasonable clarity to those skilled in the art that the
inventor was in possession of the claimed invention. Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563---64 (Fed. Cir. 1991). One shows
"possession" of the invention by describing the invention using such
descriptive means as words, structures, figures, diagrams, formulas, etc. that
fully set forth the claimed invention. Lockwood v. Am. Airlines, Inc., 107
F.3d 1565, 1572 (Fed. Cir. 1997). The issue of whether the written
description requirement has been satisfied is a question of fact. Wang Labs.,
Inc. v. Toshiba Corp., 993 F.2d 858, 865 (Fed. Cir. 1993).
Appellants argue that Figure 1 "is sufficiently detailed to convey that
Appellants were in possession of the claimed invention." Appeal Br. 9-10.
In particular, Appellants argue that Figure 1 shows dish 4 having a top
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Appeal2014-003504
Application 12/087,302
surface that faces upward and a bottom surface that faces downward, and
that there is no gap between "wick 1 and the top surface of dish 4" such that
"the top surface of dish 4 is in contact, indeed in direct contact, with the
bottom end of wick 1." Id. at 9--10. The Examiner maintains that Figure 1
at most shows the top surface of the dish in direct contact with the wick, but
fails to "clearly show the 'bottom end' of the wick in direct contact to the
top surface of the dish." Ans. 2 (emphasis omitted).
In our view, the content of drawing Figure 1 is sufficient disclosure to
reasonably convey to a person of ordinary skill in the art that Appellants
possessed the claimed subject matter of the top surface of the candle dish
being in direct contact with the bottom end of the wick for the reasons
advanced by Appellants. Accordingly, we do not sustain the Examiner's
rejection of claim 44 under 35 U.S.C. § 112 (pre-AIA), first paragraph, as
failing to comply with the written description requirement.
Rejection II
Appellants' sole argument in support of the patentability of
independent claim 27 is that Pappas fails to teach a top surface of a candle
dish having "a central depression located substantially in the center of the
candle dish." Appeal Br. 11-12. The Examiner finds that Pappas' candle
dish 34 shown in Figure 12 includes central depression 514 located
substantially at the center (Final Act. 4) based on "the broadest reasonable
interpretation of the term[s] 'depression' and 'substantially in the center'
relative to the elevated bordering in the form of element 34" (Ans. 2).
Appellants counter that although Pappas "arguably has a depression,
relative to the flange 34, that depression is not 'located substantially in the
center of the candle dish."' Appeal Br. 11. Appellants assert that the
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Application 12/087,302
Examiner's construction of the claim does not take account of the
Specification as it would be interpreted by one of ordinary skill in the art,
and the Examiner's construction is "inconsistent with the embodiment
shown in Figure 1 of the instant application" Reply Br. 3.
Claims terms are generally given their ordinary and customary
meaning as understood by one of ordinary skill in the art in the context of
the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257
(Fed. Cir. 2007). The ordinary and customary meaning of central is
"[s]ituated at, in, or near the center" or "[f]orming the center." The
American Heritage Dictionary of the English Language, available at
www.ahdictionary.com (last visited June 10, 2016). The ordinary meaning
of "depression" is "[a]n area that is sunk below its surroundings," and the
ordinary meaning of "center" is "[a] point or place that is equally distant
from the sides or outer boundaries of something; the middle." Id.
Appellants have pointed to nothing in the Specification that indicates a
deviation from the ordinary meaning for any of these terms.
Even though the Specification includes a drawing showing a central
depression that is radially inset relative to the perimeter of the candle dish,
we decline to import into the claims limitations based on specific
embodiments in the Specification. See, e.g., SuperGuide Corp. v. DirecTV
Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) ("[A] particular
embodiment appearing in the written description may not be read into a
claim when the claim language is broader than the embodiment."); In re Van
Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) ("[L]imitations are not to be
read into the claims from the specification.") (citations omitted). We
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Application 12/087,302
determine that the claim language is broader than the particular embodiment
illustrated in Figure 1.
We further determine that the portion of Pappas' sheet labeled as 514
in Figure 12 is an area that is sunk below upward flange 34 and that is
situated in the center of the flame resistant sheet or forms the center of the
flame resistant sheet. Moreover, we determine that the area sunk below
upward flange 34 is equally distant from the outer boundary formed by
upward flange 34. Accordingly, Pappas' sheet 514 meets the language of
the claims-i.e., "a central depression located substantially in the center of
the candle dish"-when the claims are given their broadest reasonable
interpretation in light of the Specification. 3
Accordingly, we are not persuaded that the Examiner's rejection of
claim 27, or claims 28, 29, 33, 41, 43, 45, and 46 for which Appellants rely
on the same arguments and reasoning (see Appeal Br. 12) was in error. We
sustain the rejection of claims 27-29, 33, 41, 43, 45, and 46 under 35 U.S.C.
§ 103(a) as being unpatentable over Pappas and Derges.
Rejection III
Claims 30-32 depend directly or indirectly from claim 27.
Appellants' arguments in support of the patentability of claims 30-32 solely
relate to the perceived deficiencies in the disclosure of Pappas (Appeal Br.
12). Because we have found no such deficiency in the disclosure of Pappas,
3 To the extent Appellants' contention that wick support 16 is a central
protrusion (Appeal Br. 11) is considered to be a separate argument, we are
not persuaded of error in the Examiner's rejection because we agree with the
Examiner that "[t]he fact there is also a raised portion ... in the form of ...
wick holder 16 is irrelevant, as the claim recites the term 'comprising'
thereby permitting the presence of additional structure" (Ans. 2).
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Application 12/087,302
we sustain the rejection of claims 30-32 under 35 U.S.C. § 103(a) as being
unpatentable over Pappas, Derges, and Engman.
DECISION
The Examiner's decision to reject claim 44 under 35 U.S.C. § 112
(pre-AIA), first paragraph, as failing to comply with the written description
requirement is reversed.
The Examiner's decision to reject claims 27-29, 33, 41, 43, 45, and
46 under 35 U.S.C. § 103(a) as being unpatentable over Pappas and Derges
is affirmed.
The Examiner's decision to reject claims 30-32 under 35 U.S.C.
§ 103(a) as being unpatentable over Pappas, Derges, and Engman is
affirmed.
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
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