Jacob Steinmann

Patent Trials and Appeals Board

Jan 25, 2022

2021000638 (P.T.A.B. Jan. 25, 2022)

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. 16/350,077 09/24/2018 Jacob F. Steinmann 4937 132723 7590 01/25/2022 Richard P. Fennelly 2320 Depeyster Dr. Cortlandt Manor, NY 10567 EXAMINER COLEMAN, RYAN L ART UNIT PAPER NUMBER 1714 MAIL DATE DELIVERY MODE 01/25/2022 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 JACOB F. STEINMANN _______________________ Appeal 2021-000638 Application 16/350,077 Technology Center 1700 _______________________ Before GEORGE C. BEST, JANE E. INGLESE, and DEBRA L. DENNETT, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 8-18 of Application 16/350,077. Final Act. (June 11, 2019). We have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we reverse. I. BACKGROUND Air conditioning units include large condenser coils. Spec. 1. In use, these coils become covered with debris, reducing their efficiency. A common coil cleaning method uses compressed air to blow the debris off the 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies CoilPod LLC as the real party in interest. Appeal Br. 1. Appeal 2021-000638 Application 16/350,077 2 coil. Id. This method, however, scatters the debris because it becomes airborne and is uncontained. Id. The ’077 Application describes a bag-type containment apparatus that can be used in coil cleaning operations. Id. at 1-3. The containment apparatus facilitates collection of the airborne debris by a vacuum system attached to or inserted through a hole in the containment system. For ease of reference, we reproduce the ’077 Application’s Figure 2 below. Figure 2 is a front perspective view of an embodiment of the containment apparatus. Spec .1. As shown in Figure 2, containment bag 21 is placed over and around condenser coil assembly 11. Spec. 2. Bag 21 includes mouth 22 that fits over condenser coil assembly 11. Id. A surface of bag 21 includes holes 23 and 24. Id. Compressed air supply hose 25 is inserted through hole 23, and vacuum source 27 is connected to the interior of bag 21 via hose 26, which is inserted through hole 24. Id. at 2-3. In use, compressed air supplied by hose 25 is used to blow debris from condenser coil 11. Id. The dislodged Appeal 2021-000638 Application 16/350,077 3 debris is removed from bag 21 via hose 26. Id. at 3. The Specification further describes embodiments in which a portion of bag 21 is formed from clear plastic to provide a view of the cleaning operation in progress. Id. at 3- 4. Claims 8 and 13 represent the ’077 Application’s claims and are reproduced below. 8. A dust containment hood which comprises a flexible bag [with2] an open mouth and having a portion of its front surface, which lies adjacent to the open mouth, transparent with the front surface of the bag also containing holes for a hose supplying compressed air and a hose supplying vacuum, respectively, for use in cleaning an apparatus encased therein, via passage through the open mouth of the bag, with compressed air and vacuum. Revised Summ. of Invention & Claims App. 3 (March 9, 2020) (“Resp.”) (paragraphing and indentation added). 13. A dust containment hood which comprises a flexible bag with an open mouth and having a portion of its front surface, which lies adjacent to the open mouth, transparent with that transparent surface also containing holes for a hose supplying compressed air and a hose supplying vacuum, respectively, 2 There appears to be a word missing from the text of claim 8 as reproduced in the Claims Appendix. We have inserted the word “with,” which appears in the version of claim 8 filed with Appellant’s May 13, 2019 Amendment. Appeal 2021-000638 Application 16/350,077 4 for use in cleaning an apparatus encased therein, via passage through the open mouth of the bag, with compressed air and vacuum. Id. (paragraphing and indentation added). II. REJECTIONS On appeal, the Examiner maintains the following rejections: 1. Claims 12, 16, and 18 are rejected under 35 U.S.C. § 112, ¶ 2, as being indefinite. Answer 3. 2. Claims 8-11, 13-15, and 17 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Peters3 and Harmon.4 Answer 4. 3. Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Peters, Harmon, and Loveless.5 Answer 8. 4. Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Peters, Harmon, and Loveless. Answer 10. 5. Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Peters, Harmon, and Loveless. Answer 11. III. DISCUSSION A. Rejection of claims 12, 16, and 18 as indefinite For the following reasons, we reverse the rejection of claims 12, 16, and 18 as indefinite. 3 US 1,620,390, issued March 8, 1927. 4 US 6,295,696 B1, issued October 2, 2001. 5 US 2008/0099053 A1, published May 1, 2008. Appeal 2021-000638 Application 16/350,077 5 In the Final Action, the Examiner rejected claims 12, 16, and 18 as indefinite. Final Act. 2-3. In the Examiner’s Answer, the Examiner maintains this rejection. Answer 3-4. The Examiner further notes that Appellant did not address the rejection in the Appeal Brief and asks us to affirm the rejection summarily. Id. at 12-13. We will not affirm the rejection. After entry of the Final Action, Appellant amended claims 12, 16, and 18. Amendment under Rule 116 (June 21, 2019). In an Advisory Action, the Examiner entered that amendment and indicated that the amendment to claims 12, 16, and 18 had overcome the indefiniteness rejection in the Final Action. Advisory Action 2 (July 3, 2019). Because the Examiner withdrew the indefiniteness rejection in the Advisory Action, we assume that the reassertion of the rejection in the Answer is an oversight. To the extent that this rejection continues to apply to claims 12, 16, and 18, we reverse. B. Obviousness rejections 1. Rejection of claims 8-11, 13-15, and 17 as unpatentable over the combination of Peters and Harmon Appellant argues for reversal of this rejection without differentiating between the claims. Appeal Br. 2-5. We, therefore, choose independent claims 8 and 13 to represent the rejected claims. 37 C.F.R. § 41.37(c)(1)(iv) (2019). We limit our discussion accordingly. Claim 8. The Examiner rejected claim 8 as unpatentable over the combination of Peters and Harmon. Final Act. 4-6. For ease of reference, we reproduce Peters’ Figure 5 below. Appeal 2021-000638 Application 16/350,077 6 Peters’ Figure 5 is an exterior view of a containment hood enclosing an electric motor. Peters 1, ll. 68-70. In rejecting claim 8, the Examiner found that Peters describes flexible bag 7 that can be placed over an object in need of cleaning. Final Act. 4. Peters further describes blasting compressed air into the bag’s interior through nozzle 6 via hose 5. Id. Nozzle 6 is inserted into bag 7 via the lower open end of bag 7. Peters Fig. 5. Dislodged debris is removed from the bag via vacuum tube 4, which is coupled to the bag’s interior via a hole in the bag’s surface. Final Act. 4. The Examiner found that Peters does not describe the presence of a hole through which compressed air is blasted. Id. at 5. The Examiner, however, also found that Harmon teaches that when attempting to supply air into an environment enclosed by a flexible surface in order to remove dust from an object enclosed by the flexible surface, the flexible surface can advantageously comprise a hole through which a conduit supplying the air can supply air-thus allowing air to enter the environment (Col. 2, line 34 to Col. 3, line 18). Id. Appeal 2021-000638 Application 16/350,077 7 Based on this finding, the Examiner determined that it would have been obvious to a person having ordinary skill in the art to modify Peters’ bag by creating a hole through which tube 5 and nozzle 6 can supply compressed air to the bag’s interior. Final Act. 5. The Examiner further found that the combination of Peters and Harmon does not teach that the bag has a transparent portion. Id. The Examiner, however, took official notice that “in the art of using containers to contain things, it is well known to have a container be transparent such that a person is advantageously able to see what is contained by the container.” Id. Based on this finding, the Examiner concluded that it would have been obvious to a person having ordinary skill in the art to modify the combination of Peters and Harmon so that a portion of the bag near the bag’s mouth is transparent so that a person can see into the bag when cleaning is performed. Id. Appellant argues that the rejection of claim 8 should be reversed for either of two reasons: (1) Peters and Harmon are not properly combinable, Appeal Br. 2-3, or (2) the combination of Peters and Harmon does not describe or suggest each limitation of claim 8, id. at 3-5. We address these arguments in turn. First, Appellant argues that the Examiner’s proposed combination of Peters and Harmon would change “the basic principle of dust entrapment achieved by the Peters bag-like dust hood to something far different, which is improper under Section 103.” Appeal Br. 3. This argument is not persuasive. In making this argument, Appellant relies upon In re Ratti, 270 F.2d 810 (CCPA 1959). In Ratti, the CCPA was confronted with claims directed to a seal for insertion in the cylindrical bore. Id. The Examiner had rejected Appeal 2021-000638 Application 16/350,077 8 the claims as unpatentable over the combination of Chinnery and Jepson. Id. at 811. In the claimed invention, the sealing element was held in place by outwardly biased resilient fingers. Id. at 810. Chinnery’s sealing element was held against the bore’s wall by an interference press fit. Id. at 813. The Examiner relied upon Jepson as describing a coffee maker gasket that was held in place by resilient fingers. Id. The Examiner found that Jepson suggested placing Chinnery’s interference press fit with a set of resilient fingers to hold the resilient sealing member in contact with the bore’s wall. Id. The CCPA, however, disagreed. Id. Court found that the “suggested combination of references would require a substantial reconstruction and redesign of the elements shown in Chinnery et al. as well as a change in the basic principles under which the Chinnery et al. construction was designed to operate.” Id. In this case, however, the combination of Peters and Harmon presents a different situation. Here, both Peters and Harmon operate on the principle of containing dust that has been blown off the condenser coil so that it can be removed via a vacuum hose. Appellant does not explain how or why incorporating Harmon’s opening for the compressed air hose into Peters’ bag-like dust hood would require a substantial redesign or reconstruction of Peters’ dust hood. Thus, Appellant’s first argument is not persuasive of reversible error. Second, Appellant argues that the prior art does not describe or suggest having both the compressed air inlet and the vacuum outlet holes in the front face of the bag-like dust hood. Appeal Br. 3-5. In rejecting claim 8, the Examiner found that it would have been obvious to modify the combination of Peters and Harmon to include a transparent portion of the bag adjacent to the bag’s mouth. Final Act. 5. The Appeal 2021-000638 Application 16/350,077 9 Examiner then states that “a surface of the bag comprising the transparent portion and the holes for section and compressed air corresponds to applicant’s front surface.” Id. at 5-6. Appellant argues that this finding is erroneous because neither Peters nor Harmon shows the compressed air inlet in the vacuum tube outlet hole located in the same surface of the bag. Appeal Br. 4. Indeed, Appellant argues that both Peters and Harmon “show application of compressed air and vacuum on opposed sides of the object to be cleaned.” Id. (emphasis omitted). Before we can address Appellant’s argument, we begin by considering claims 8’s language. In relevant part, claim 8 recites “a flexible bag . . . having a portion of its front surface, which lies adjacent to the open mouth, transparent with the front surface of the bag also containing holes for a hose supplying compressed air and a host supplying vacuum.” Resp. 3 (emphasis added). Thus, claim 8 recites that the holes for both a compressed air supply hose and a vacuum hose are in the bag’s front surface. To understand what claim 8 requires, we must interpret the claim term “front surface.” During prosecution, the PTO gives the language of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account any definitions or other enlightenment provided by the written description contained in the applicant’s specification. In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997). We begin by considering the ordinary meaning of the term “surface.” In the context provided by the rest of claim 8 and the Specification, a relevant dictionary definition is “[t]he outermost limiting part of a material body immediately adjacent to empty space or to another body; each of a Appeal 2021-000638 Application 16/350,077 10 number of such limiting parts.” 2 Shorter Oxford English Dictionary 2120 (6th ed. 2007); see also Surface Definition & Meaning - Merriam-Webster, https://www.merriam-webster.com/dictionary/surface (“a plane or curved two-dimensional locus of points (such as the boundary of a three- dimensional region)”). In claim 8, the term “surface” is modified by the adjective “front.” In the context of claim 8, the ordinary meaning of “front” is [t]he side or part of an object which appears to look out or to present itself to the view; the forepart of something, as a vehicle or a building. Also, the side or part of an object (esp. opp. to the back) which is less remote from a spectator or which is a naturally reached first, as the face in a mine or the like. 1 Shorter Oxford English Dictionary 1047 (6th ed. 2007); see also Front Definition & Meaning - Merriam-Webster, https://www.merriam- webster.com/dictionary/front (“the forward part or surface”). Thus, the term “front” describes the location of a portion of the bag’s surface relative to an observer. We turn to the ’077 Application’s Specification to (1) identify the relevant observer and (2) identify the time when the determination of which surface is the “front surface” is to be made. First, the Specification makes it clear that the relevant observer is the person using the dust hood to remove dust from a compressor coil. See, e.g., Spec. Fig. 2. Second, the determination of which side is the “front surface” is to be made when that person is actually using the compressed air to blow dust from the compressor coil. See id. We have reviewed the ’077 Application’s Specification and determine that a person having ordinary skill in the art would understand that it does not define the term “front surface” in a manner that is inconsistent with its ordinary meaning. Indeed, the Specification does not use the term “front Appeal 2021-000638 Application 16/350,077 11 surface.” However, its use of the term “surface” is consistent with the ordinary meaning. See, e.g., Spec. 2. Similarly, the Specification uses the term “front” in a manner consistent with its ordinary meaning. See, e.g., id. at 1. In view of the foregoing, we conclude that the term “front surface,” as it is used in claim 8, means “the portion of the outermost limits of the bag that is least remote from the operator when the bag is in use.” When the proper interpretation of the term “front surface” is considered, it is clear that the Examiner has reversibly erred. The combination of Peters and Harmon neither describes nor suggests locating the holes for both the compressed air hose and the vacuum hose in the front surface of the bag-like dust hood. Peters’ Figure 5 shows a hole for the vacuum connection located in the top surface of the dust hood when it is in use. Harmon’s Figure 1 shows the hole for the compressed air hose in the front of the dust containment system. The hole for connecting the vacuum hose to the vacuum manifold is located inside of the dust containment system such that the vacuum manifold is opposite the compressed air nozzle. Neither Peters nor Harmon describes or suggests locating both holes on the same surface of the dust containment system. The Examiner attempts to address this deficiency in the prima facie case by arguing that [w]hat qualifies as a “face” of a flexible bag is, of course, very arbitrary. When one imagines holding and manipulating a flexible bag in one’s hands, one can quickly understand that any two points on such a bag can be considered to belong to the same “face” of the bag. Answer 17. We are not persuaded by the Examiner’s argument, which does not address claim 8’s language. Appeal 2021-000638 Application 16/350,077 12 In sum, we determine that neither Peters nor Harmon describes or suggests positioning both holes on the front surface of the dust containment system. Nor has the Examiner explained why a person having ordinary skill in the art would have modified the combination of Peters and Harmon to locate both holes on that surface. Because the Examiner has not established a prima facie case of obviousness, we reverse the rejection of claim 8. Thus, we also reverse the rejection of claims 9-11, which depend from claim 8. Claim 13. As discussed above, Appellant presents a unified argument with respect to all of the claims subject to this rejection. See Appeal Br. 2-5. Furthermore, claim 13 contains similar language to claim 8. In relevant part, claim 13 recites “a flexible bag . . . having a portion of its front surface, which lies adjacent to the open mouth, transparent with that transparent surface also containing holes for a hose supplying compressed air and a hose supplying vacuum.” Resp. 3. For reasons that parallel our discussion of claim 8, we also determine that the Examiner reversibly erred by rejecting claim 13. In particular, the Examiner has not explained how the combination of Peters and Harmon describes or suggests positioning both the holes for the compressed air hose and the hole for the vacuum hose in the transparent portion of the bag’s front surface. Because the Examiner has not established that the subject matter of claim 13 is prima facie obvious, we reverse the rejection. Thus, we also reverse the rejection of claims 14, 15, and 17, which depend from claim 13. Appeal 2021-000638 Application 16/350,077 13 2. Rejection of claim 12 as unpatentable over the combination of Peters, Harmon, and Loveless Claim 12 depends from independent claim 8. Resp. 3. For the reasons set forth above, we have reversed the rejection of claim 8. Thus, we also reverse the rejection of claim 12. 3. Rejection of claim 16 as unpatentable over the combination of Peters, Harmon, and Loveless Claim 16 depends from independent claim 13. Resp. 4. For the reasons set forth above, we have reversed the rejection of claim 13. We, therefore, also reverse the rejection of claim 16. 4. Rejection of claim 18 as unpatentable over the combination of Peters, Harmon, and Loveless Claim 18 depends from independent claim 13. Resp. 4. For the reasons discussed above, we have reversed the rejection of claim 13. Thus, we also reverse the rejection of claim 18. IV. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 12, 16, 18 112 Indefiniteness 12, 16, 18 8-11, 13-15, 17 103 Peters, Harmon 8-11, 13-15, 17 12 103 Peters, Harmon, Loveless 12 16 103 Peters, Harmon, Loveless 16 18 103 Peters, Harmon, Loveless 18 Overall Outcome 8-18 REVERSED