Ricciardi, Carl L. et al.

Patent Trials and Appeals Board

Oct 25, 2021

2020006777 (P.T.A.B. Oct. 25, 2021)

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.
15/947,896 04/09/2018 Paul Baumgartner 3698 8280
44649 7590 10/25/2021
DONALD J. ERSLER, S.C.
1165 Terrace Drive
Elm Grove, WI 53122
EXAMINER
HENSEL, BRENDAN A
ART UNIT PAPER NUMBER
1799
MAIL DATE DELIVERY MODE
10/25/2021 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 PAUL BAUMGARTNER, CARL L. RICCIARDI, and
JONATHAN J. RICCIARDI
Appeal 2020-006777
Application 15/947,896
Technology Center 1700
Before JEFFREY B. ROBERTSON, DONNA M. PRAISS, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–7 and 9–21. We have jurisdiction
under 35 U.S.C. § 6(b). We REVERSE.

1 In this Decision, we refer to the Specification filed April 9, 2018 (“Spec.”);
the Final Office Action dated December 30, 2019 (“Final Act.”); the Appeal
Brief filed January 31, 2020 (“Appeal Br.”); the Claims Appendix filed
February 21, 2020 (“Claims App.”); and the Examiner’s Answer dated April
22, 2020 (“Ans.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Carl L. Riccardi and Jonathan J.
Riccardi. Appeal Br. 1.
Appeal 2020-006777
Application 15/947,896

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CLAIMED SUBJECT MATTER
The claims are directed to a multi-function product disinfection
cabinet. Independent claim 1, reproduced below with emphasis to highlight
key disputed limitations, is illustrative of the claimed subject matter:
1. A multi-function product cabinet for electrical
testing and at least one of sanitizing, disinfecting, high level
disinfecting and sterilization of at least one object, comprising:
a test cabinet including a sealed test chamber and a
sealed door that provides access to said sealed test chamber;
a device for supplying a treatment substance for
application to an outside surface of the at least one object tested
in said sealed test chamber;
an electrical function tester including an electronic test
module and a plurality of interface test blocks, said plurality of
interface test blocks are electrically connected to said electronic
test module, said plurality of interface test blocks are located
in said sealed test chamber, wherein the at least one object is
electrically connected to at least one of said plurality of
interface test blocks, said electronic test module tests electrical
functionality of the at least one object; and
an air blower for circulating air through said sealed test
chamber.
Claims App. 1.
Independent claim 12 includes the same disputed limitations
highlighted in claim 1 above. Claims App. 5.
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Application 15/947,896

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REJECTIONS
Rejection I: Claims 1–3, 10–14, and 19–21 are rejected under 35
U.S.C. § 103 over Ricciardi3 and Kime.4 Final Act. 5–12.
Rejection II: Claims 4, 5, and 16 are rejected under 35 U.S.C. § 103
over Ricciardi, Kime, and Sergio.5 Final Act. 12–14.
Rejection III: Claim 9 is rejected under 35 U.S.C. 103 over Ricciardi,
Kime, and Bruce.6 Final Act. 14–15.
Rejection IV: Claims 6, 7, 17, and 18 are rejected under 35 U.S.C.
§ 103 over Ricciardi, Kime, Sergio, and Iwasaki.7 Final Act. 15–17.
Rejection V: Claim 15 is rejected under 35 U.S.C. § 103 over
Ricciardi, Kime, and Imabayashi.8 Final Act. 17–18.
DISCUSSION
The dispositive issue before us on appeal is:
Has the Examiner reversibly erred in finding that Kime teaches “an
electrical function tester including an electronic test module and a plurality
of interface test blocks . . . said plurality of interface test blocks are located
in said test chamber . . . said electronic test module tests electrical
functionality of the at least one object” in a sealed test chamber. We answer
this question in the affirmative.
The Examiner finds that Ricciardi teaches all elements of claim 1’s
multi-function product cabinet for electrical testing and sanitizing at least

3 Ricciardi et al., US 8,506,900 B1, issued Aug. 13, 2013.
4 Kime et al., US 2003/0208115 A1, published Nov. 6, 2003.
5 Sergio et al., US 2002/0044898 A1, published April 18, 2002.
6 Bruce et al., US 2015/0374868 A1, published Dec. 31, 2015.
7 Iwasaki, US 2018/0325367 A1, published Nov. 15, 2018.
8 Imabayashi et al., US 3,777,508, issued Dec. 11, 1973.
Appeal 2020-006777
Application 15/947,896

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one object except for “an electrical function tester including an electronic
test module and a plurality of interface test blocks, said plurality of interface
test blocks are electrically connected to said electronic test module, said
plurality of interface test blocks are located in said sealed test chamber,
wherein the plurality of electrical components are capable of being
connected to said plurality of interface test blocks, said electronic test
module tests the electrical functionality of the at least one object.” Final Act.
5–6 (citing Ricciardi 47:42–47, 4810–15, 51:25–28, Fig. 30). To account for
this difference, the Examiner relies on Kime. Final Act. 6.
Kime teaches an apparatus for disinfecting and storing a trans-
esophageal probe. Kime, code (57). The Examiner finds that Kime teaches
its disinfecting unit can be equipped with optional connectors (Fig. 1,
optional connectors 36), corresponding to claim 1 and claim 12’s “plurality
of interface test blocks,” by which electrical leak testing can be performed.
Final Act. 6 (citing Kime ¶ 16). The Examiner finds that Kime teaches the
optional connectors are “located inside of a chamber” (Fig. 1, wall 40) and
“must necessarily and inherently be interfaced with at least some module to
make use of any information collected.” Final Act. 6; Kime ¶ 13.
Appellant argues that Kime does not teach or suggest that Kime’s
apparatus, which includes a disinfecting unit that can be equipped with
optional connectors 36, is located inside a sealed test chamber. See Appeal
Br. 8. Appellant also argues that Kime does not teach an electronic test
module that tests the electrical functionality of an object in its apparatus. See
id. at 9.
Appellant’s arguments identify reversible error in the Examiner’s
rejection. Kime teaches that disinfecting unit 10, which can include optional
Appeal 2020-006777
Application 15/947,896

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connectors 36, is commonly mounted on wall 40, in the open, of an
examination room. Kime ¶ 13; Fig. 1. Thus, the Examiner’s finding that
Kime’s optional connectors 36 are located “inside of a chamber (Fig. 1 wall
40)” is not factually supported by Kime’s teachings.
Claim 1 and 12’s recitation that the electronic test module “tests
electrical functionality of the at least one object” describes the function, not
the structure of the electrical test module. A patent applicant is free to recite
features of an apparatus either structurally or functionally. In re Schreiber,
128 F.3d 1473, 1478 (Fed. Cir. 1997). Functional recitations in an apparatus
claim are given weight in that the corresponding prior art structure must
inherently possess the capability of performing the recited function. See
Schreiber, 128 F.3d at 1477–78.
The Examiner finds Ricciardi’s apparatus as modified by Kime “is
well capable of performing the claimed function and is reasonably expected
to do so.” Final Act. 7. Kime teaches that optional connectors 36 can
perform “electrical leak testing” of disinfecting unit 10. Kime ¶ 16.
Although we agree with the Examiner that Kime’s optional connectors 36
“must necessarily and inherently be interfaced with at least some module to
make use of any information collected” (Final Act. 6), the Examiner has not
identified sufficient factual evidence that a module interfaced with Kime’s
optional connectors 36 is not only necessarily capable of testing the
functionality of Kime’s disinfecting unit but is also necessarily capable of
testing electrical functionality of the object in Kime’s disinfecting unit.
Because each of the Examiner’s rejections rely on the same deficient
findings discussed above with respect to claims 1 and 12, we do not sustain
any of the rejections under 35 U.S.C. § 103.
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CONCLUSION
The Examiner’s decision to reject claims 1–7 and 9–21 is reversed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 10–14,
19–21
103 Ricciardi, Kime 1–3, 10–14,
19–21
4, 5, 16 103 Ricciardi, Kime,
Sergio
4, 5, 16
9 103 Ricciardi, Kime,
Bruce
9
6, 7, 17, 18 103 Ricciardi, Kime,
Sergio, Iwasaki
6, 7, 17, 18
15 103 Ricciardi, Kime,
Imabayashi
15
Overall
Outcome
1–7, 9–21

REVERSED