Keith Alan. Mullin et al.Download PDFPatent Trials and Appeals BoardAug 6, 201914694951 - (D) (P.T.A.B. Aug. 6, 2019) 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. 14/694,951 04/23/2015 Keith Alan MULLIN 3025.033 2803 36790 7590 08/06/2019 TILLMAN WRIGHT, PLLC PO BOX 49309 CHARLOTTE, NC 28277-0076 EXAMINER WONG, JESSICA BOWEN ART UNIT PAPER NUMBER 3644 MAIL DATE DELIVERY MODE 08/06/2019 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 KEITH ALAN MULLIN and LOREN TAYLOR ____________ Appeal 2018-008126 Application 14/694,951 Technology Center 3600 ____________ Before JENNIFER D. BAHR, WILLIAM A. CAPP, and NATHAN A. ENGELS, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Keith Alan Mullin and Loren Taylor (hereinafter collectively “Appellant”)1 seek our review under 35 U.S.C. § 134(a) of the final rejection of claim 33 under 35 U.S.C. § 112(b) as indefinite, claims 1, 7, and 12 under 35 U.S.C. § 102(a) as anticipated by Day (US 9,107,390 B1, iss. Aug. 18, 2015),2 and claims 3–6, 10, 11, 13–15, and 33 as unpatentable under 35 U.S.C. § 103(a) over Day. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE-IN-PART and REMAND. 1 Make Ideas, LLC, is the Applicant and real party in interest. Appeal Br. 3. 2 Claim 12 has been cancelled. Claims App. Appeal 2018-008126 Application 14/694,951 2 THE INVENTION Appellant’s invention relates to pet toys that dispense medicine. Spec. 1. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A pet toy for dispensing medicine, comprising: an outer shell; an actuator assembly coupled to the outer shell; a mortar and pestle, wherein either the mortar or the pestle is supported by the actuator assembly; and an ingestible material initially disposed within the outer shell, wherein the ingestible material is initially disposed in the mortar; wherein manipulation, by a pet, of the actuator assembly relative to the outer shell causes the pestle to enter the mortar, thereby displacing the ingestible material from the mortar such that it exits the outer shell for ingestion by the pet. OPINION Indefiniteness of Claim 33 A claim is properly rejected as indefinite under 35 U.S.C. § 112 second paragraph, if, after applying the broadest reasonable interpretation in light of the specification, the metes and bounds of a claim are not clear because the claim “contains words or phrases whose meaning is unclear.” In re Packard, 751 F.3d 1307, 1310, 1315 (Fed. Cir. 2014) (per curiam) (approving, for pre-issuance claims, the standard from MPEP § 2173.05(e)); see also Ex parte McAward, Appeal 2015-006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (adopting the approach for assessing indefiniteness approved by the Federal Circuit in Packard). In the instant case, the Examiner considers that the phrase “the pestle is a blunt tool” renders claim 33 indefinite. Final Action 3. According to Appeal 2018-008126 Application 14/694,951 3 the Examiner, using the words “a tool” suggests an alternative/additional element apart from the pet toy. Id. Appellant argues that “blunt tool” is merely descriptive of a pestle, which already has an established meaning. Appeal Br. 24–26. “A mortar and pestle is a well-known tool (or tools), and in fact are among the most ancient tools known to mankind.” Id. at 25. In response, the Examiner redefines the rejection as being a problem with antecedent basis. Ans. 10–11. We disagree with the Examiner that there is an antecedent basis problem or that the claim is otherwise indefinite. Claim 33 depends from claim 1 and adds the limitation: “wherein the mortar is bowl-shaped and the pestle is a blunt tool whose distal end fits into the bowl-shaped mortar.” Claims App. The recited claim elements of “the mortar” and “the pestle” have sufficient antecedent bases, clearly referring back to the recited element(s) of “a mortar and pestle” recited in claim 1. Reciting that “the pestle is a blunt tool” merely adds more detailed description to “the pestle” and, in our opinion, would cause no confusion to a person of ordinary skill in the art attempting to determine the metes and bounds of the claims. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (explaining that, during prosecution, claim terms are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure). We do not sustain the Examiner’s Section 112 indefiniteness rejection of claim 33. Appeal 2018-008126 Application 14/694,951 4 Anticipation of Claims 1 and 7 Claim 1 The Examiner finds that Day discloses each and every limitation of claim 1. Final Action 4–5. In particular, the Examiner finds that rib elements 1208 shown in Figure 27 of Day correspond to Appellant’s claimed mortar and pestle. Id. at 4. The Examiner purportedly relies on dictionary.com as supplying a “general definition” and, therefore, appropriate construction of “mortar and pestle.” Id. Appellant argues, among other things, that Day lacks a mortar and pestle as claimed. Appeal Br. 29. Appellant cites a Wikipedia article for the proposition that a mortar and pestle is a kitchen device used since ancient times. Id. Appellant argues, correctly, that the “mortar” is a bowl and the “pestle” is a club-shaped object that is pressed and rotated onto a substance to be ground within the bowl of the mortar. Id. In response, the Examiner provides an annotated version of Figure 27 of Day where ribs 1208 are labeled with “mortar” portions and “pestle” portions. Ans. 12–13. Determining whether claims are anticipated involves a two-step analysis. In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012). The first step involves construction of the claims of the patent at issue. Id. The second step involves comparing the claims to prior art. Id. A prior art reference anticipates a patent claim under 35 U.S.C. § 102 if it discloses all of the limitations of the claim, “arranged or combined in the same way as in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008). Appeal 2018-008126 Application 14/694,951 5 With respect to the first step of claim construction, it appears to us that the alleged dictionary definition relied on by the Examiner in the Final Action is a definition for “pestle,” not “mortar and pestle,” as alleged.3 We recently accessed the definition of “pestle” in dictionary.com and noted that there are two definitions of the noun form of “pestle,” namely: 1. a tool for pounding or grinding substances in a mortar; and 2. any of various appliances for pounding, stamping, etc. www.dictionary.com/browse/pestle last accessed July 17, 2019 (emphasis added). The Examiner bases the rejection on the second definition recited above to the complete exclusion of the first definition. With respect to construing “mortar and pestle,” we are at a loss to explain how or why the Examiner: (1) uses a definition of just “pestle” instead of attempting to define “mortar and pestle;” and, in so doing, (2) selectively ignores the first above recited definition of pestle as related to a tool for grinding substances “in a mortar.” During examination of a patent application, pending claims are given their broadest reasonable construction consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under the broadest reasonable interpretation standard, claim terms are given their ordinary and customary meaning as would be 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). However, a construction that is “unreasonably broad” and which does not “reasonably reflect the plain 3 See www.dictionary.com/browse/pestle last accessed July 17, 2019. We are unable to locate a definition of “mortar and pestle” in dictionary.com. Appeal 2018-008126 Application 14/694,951 6 language and disclosure” will not pass muster. Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). Here, the Examiner errs by relying on an incorrect and overly broad construction of “mortar and pestle.” Whether or not the Examiner’s dictionary definition is accurate insofar as it relates to the meaning of “pestle,” it does not reflect the ordinary and customary meaning of “mortar and pestle” as it would be understood of by one of ordinary skill in the context of the entire disclosure. See, e.g., Spec. ¶¶ 10 (“the pet medicine dispenser further includes a mortar and pestle”), 41–47, Figs. 1C, 1E–1G. Day discloses a pet toy that receives a food item. The Figure 27 embodiment is defined by wall 1212 that mimics the shape of an apple. Day, col. 12, ll. 4–6. The apple shape is substantially hollow, featuring internal chamber 1218. Id. Fig. 27, col. 12, ll. 4–10. Within internal chamber 1218 are a plurality of relatively narrow, spaced apart ribs 1208 that extend between the top and bottom of chamber 1218. Id. Ribs 1208 and flaps 1202 form a valve that opens and closes to insert and then retain a foot item. Id. col. 12, ll. 14–16. Following insertion of a food item, ribs 1208 operate as a sort of cage to help retain food within chamber 1218. Id. col. 12, ll. 28–47. We have reviewed the annotated version of Figure 27 supplied by the Examiner in the Answer. Ans. 13. Such annotated Figure, the Examiner’s analysis thereof, and the remaining disclosure of Day fail to support the Examiner’s findings of fact that Day possesses either a “mortar” or a “pestle,” much less a combined “mortar and pestle” as claimed. For example and without limitation, the Examiner’s alleged “mortar portions” of Appeal 2018-008126 Application 14/694,951 7 ribs 1208 do not reasonably resemble a bowl shaped receptacle as one would traditionally understand constitutes a “mortar.” The Examiner’s findings of fact that all limitations are disclosed in Day are not supported by a preponderance of the evidence. Net MoneyIN, 545 F.3d at 1370. Accordingly, we do not sustain the Examiner’s Section 102 rejection of claims 1 and 7. Unpatentability of Claims 3–6, 10, 11, 13–15 and 33 over Day Claims 3–6, 10, 11, and 33 These claims depend, directly or indirectly, from claim 1. Claims App. The Examiner’s rejection of these claims suffers from the same infirmity that was identified above with respect to claim 1, which infirmity is not cured by additional findings, analysis, or rationale attendant upon the grounds of rejection being under Section 103 instead of Section 102. Thus, for essentially the same reason expressed above in connection with claim 1, we do not sustain the rejection of claims 3–6, 10, 11, and 33. Claims 13–15 These claims depend, directly or indirectly, from claim 12. Claims App. However, claim 12 has been cancelled. Id. It is unclear to us whether claims 13–15 should be treated as cancelled in view of their dependency from cancelled claim 12, or whether they should be treated as now depending from another, albeit unidentified, claim.4 4 Appellant indicates that claims 13–15 depend, either directly or indirectly, from claim 1 and should be reversed for the same reasons noted previously with respect to the rejection of claim 1 under Section 102. Appeal Br. 40. However, without more, this is insufficient to advise us of the metes and bounds of these claims to permit review of the rejection on the merits. Appeal 2018-008126 Application 14/694,951 8 Under the circumstances, we do not reach the merits and, instead, remand the Examiner’s rejection of claims 13–15 so that Appellant and the Examiner can better clarify the posture and status of these claims. See 37 C.F.R. § 41.50 (a)(1) (authorizing remand to the Examiner). DECISION The decision of the Examiner to reject claims 1, 3–7, 10, 11, and 33 is REVERSED. The Examiner’s rejection of claims 13–15 is hereby REMANDED to the Examiner for further consideration in view of Appellant’s cancellation of claim 12. REVERSED-IN-PART, REMANDED Copy with citationCopy as parenthetical citation