Pisacane, Ferdinand Frederick. et al.

Patent Trials and Appeals Board

Aug 4, 2020

2019003654 (P.T.A.B. Aug. 4, 2020)

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.
13/212,276 08/18/2011 Ferdinand Frederick Pisacane 44921.5300 5938
95996 7590 08/04/2020
Zeman-Mullen & Ford, LLP
233 White Spar Road
Prescott, AZ 86303
EXAMINER
PAGAN, JENINE MARIE
ART UNIT PAPER NUMBER
3736
NOTIFICATION DATE DELIVERY MODE
08/04/2020 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):
ktopolewski@zmfiplaw.com
lzemanmullen@zmfiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FERDINAND FREDERICK PISACANE,
CHEOK LONG THNG, and MICHAEL EDWARD STRAUSS
____________

Appeal 2019-003654
Application 13/212,276
Technology Center 3700
____________

Before EDWARD A. BROWN, BENJAMIN D. M. WOOD, and
BRANDON J. WARNER, Administrative Patent Judges.

WARNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 13–22. Appeal Br. 1, 2. Claims 1–12
have been withdrawn. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to the “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Foamtec
International Co., Ltd. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
Appellant’s disclosed invention relates to “a cleanroom cleaning
device which includes a nonbreakable/nonburstable outer pouch, a
breakable/burstable inner pouch containing a liquid, and a cleaning
implement where the inner pouch and the cleaning implement are contained
within the outer pouch.” Spec. ¶ 2. Claim 13, reproduced below, is the sole
independent claim and is representative of the subject matter on appeal.
13. A cleanroom cleaning device comprising:
a nonbreakable and nonburstable outer pouch[;]
a plurality of cleaning implements contained within the
outer pouch; and
at least one breakable or burstable inner pouch contained
within the outer pouch that is larger in length and width than
each individual cleaning implement of the plurality of cleaning
implements where the at least one inner pouch contains at least
one liquid and is positioned over only a portion of each of the
individual cleaning implements of said plurality of cleaning
implements and extends beyond at least one edge of each of the
individual cleaning implements of said plurality of cleaning
implements.

EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Denton US 5,802,655 Sept. 8, 1998
Paley US 6,062,381 May 16, 2000

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REJECTIONS
The following rejections are before us for review:
I. Claims 13–22 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement. Final Act. 3–5.
II. Claims 13–22 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. Id. at 6.
III. Claims 13–22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Paley and Denton. Id. at 7–9.

ANALYSIS
Rejection I – Written Description
The Examiner found that the claims fail to comply with 35 U.S.C.
§ 112, first paragraph, for including subject matter that was insufficiently
disclosed. The Examiner concluded that Appellant’s Specification fails to
provide adequate written description support for various aspects of the
claims, such as the comparative dimensions recited for the inner pouch and
the cleaning implements. Final Act. 3–4. In particular, the Examiner noted
that, while the claims indicate the cleaning implements (or wipers) are
smaller in some dimensions than the inner pouch, the Specification does not
state or explain the relative sizes of these elements. Id. at 4. The Examiner
further found that the drawings did not cure this deficiency, as the drawings
were not to scale and could not provide relative dimensional constraints. Id.
at 4–5.
Although we appreciate the Examiner’s position that the Specification
contains relatively little information with regard to the relative dimensions
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of the claimed components, we agree with Appellant that the drawings
sufficiently illustrate the claimed dimensional relationships. Appeal
Br. 10–11. In particular, original Figure 9 shows an inner pouch that is
larger than a stack of wipers. See Spec., Fig. 9 (original). From this
drawing, we agree with Appellant that “a person skilled in the art would
suspect that there was some reason for the relationships shown in the
drawing and would not regard such disclosure as accidental or arbitrary.”
Appeal Br. 11 (citing In re Application of Reynolds, 443 F.2d 384, 389
(CCPA 1971)).
Appellant is correct that “it is of no ‘legal significance whether the
disclosure is found in the specification or in the drawings so long as it is
there.’” Appeal Br. 12 (quoting In re Application of Wolfensperger, 302
F.2d 950, 956 (CCPA 1962)). Accordingly, we do not sustain the
Examiner’s rejection based on the written description requirement of
35 U.S.C. § 112, first paragraph.

Rejection II – Indefiniteness
In determining whether a claim is definite under 35 U.S.C. § 112,
second paragraph, “[t]he USPTO, in examining an application, is obliged to
test the claims for reasonable precision.” In re Packard, 751 F.3d 1307,
1313 (Fed. Cir. 2014). “[A] claim is indefinite when it contains words or
phrases whose meaning is unclear.” Id. at 1322 (citing MPEP § 2173.05(e)).
The Examiner determined that it was unclear from the claims how the
various cleaning implements (including wipers and stacks of wipers) were
arranged relative to the inner pouch of cleaning solution. Final Act. 6. The
Examiner also determined that it was unclear how these cleaning
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implements are “positioned in the outer pouch”; “whether the cleaning
implements are in a planar or folded state”; and how that arrangement would
preserved. Id.
We agree with the Examiner that the claims are not a model of clarity
regarding the arrangement of the various elements (in particular, the
cleaning implements, inner pouch, and outer pouch). But, in light of the
Specification and the drawings, a person of ordinary skill in the art would
sufficiently understand the placement of these elements, at least at the time
the elements were originally arranged. The claim recitations regarding
position are broad, but they are not indefinite.
Accordingly, because we are able to define the scope of the claims,
we do not sustain the rejection based on indefiniteness.

Rejection III – Obviousness
The Examiner determined that a combination of teachings from Paley
and Denton renders obvious the subject matter recited in claims 13–22. See
Final Act. 7–9. Appellant argues that the Examiner’s reasoning is
insufficient to support the obviousness rejection. See Appeal Br. 13–14.
Appellant’s argument is unpersuasive.
Upon review of the cited art, we agree with the Examiner that Paley
discloses a cleanroom cleaning device including a non-breakable outer
pouch 12, a plurality of cleaning implements, and at least one breakable or
burstable inner pouch 16. See Final Act. 7. Although the Examiner is
correct that Paley does not expressly disclose the relative dimensions of the
inner pouch to the cleaning implements claimed here, or the relative
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arrangement of those elements, we agree with the Examiner that Denton
sufficiently suggests these limitations. See id. at 7–8.
In particular, the Examiner correctly noted that Denton teaches “an
inner pouch 14 containing a liquid being larger in length and width than each
individual cleaning implement 16” and “positioned over only a portion of
the individual cleaning implements.” Id. at 8. While these dimensions may
not exactly mirror Appellant’s claims, the Examiner’s reasoning is sound
that “it would have been obvious to one having ordinary skill in the art at the
time of the invention to have modified the inner pouch (liquid) in Paley by
providing a larger inner pouch in length and width than each individual
cleaning implement as taught by Denton for the purposes of allowing the
wipes to absorb the liquid faster.” Id.
Appellant argues that the Examiner’s rationale fails to account for the
“purpose” behind the specific positioning here—that “the stacks of wipers
and inner pouch are packaged in the way described above in order to provide
optimal moistening of the wipers.” Appeal Br. 14. But the Examiner
correctly points out that there is no evidence to support this allegation in the
Specification, nor is any particular function to the arrangement required by
the claims. See Ans. 7. We agree.
Accordingly, Appellant’s argument does not identify error in the
Examiner’s ultimate conclusion that the claimed subject matter as a whole
would have been obvious at the time the invention was made to a person
having ordinary skill in the art to which said subject matter pertains. See
35 U.S.C. § 103(a). We discern no shortcoming in the Examiner’s
reasoning, as discussed above, that it would have been obvious to a person
having ordinary skill in the art to modify Paley’s inner pouch by increasing
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its size and thereby meeting the dimensioning and positioning limitations of
the claims. Appellant does not provide persuasive argument or technical
reasoning to suggest that such a modification would have been outside the
realm of ordinary skill in the art or would have produced any unexpected
result in the recited cleaning device. See KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007).
After careful consideration of the record before us, Appellant’s
arguments do not apprise us of error in the Examiner’s factual findings,
which are supported by a preponderance of the evidence, or the Examiner’s
reasonable conclusion of obviousness, which is rationally articulated based
on prior art teachings. See KSR, 550 U.S. at 417. In short, we sustain the
rejection of claims 13–22 based on the reasoned positions set forth therein,
and in light of the Examiner’s responses to Appellant’s arguments. See
Final Act. 7–9; Ans. 7.

DECISION
We REVERSE the Examiner’s decision rejecting claims 13–22 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
We REVERSE the Examiner’s decision rejecting claims 13–22 under
35 U.S.C. § 112, second paragraph, as being indefinite.
We AFFIRM the Examiner’s decision rejecting claims 13–22 under
35 U.S.C. § 103(a) as being unpatentable over Paley and Denton.
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).
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CONCLUSION
In summary:

Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
13–22 112 ¶ 1 Written Description 13–22
13–22 112 ¶ 2 Indefiniteness 13–22
13–22 103(a) Paley, Denton 13–22
Overall
Outcome
13–22

AFFIRMED