Alice O'Donnell Kiely

Patent Trials and Appeals BoardAug 18, 2021

2020002962 (P.T.A.B. Aug. 18, 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. 11/634,624 12/06/2006 Alice Mary O'Donnell Kiely 5346 7590 08/18/2021 Alice O. Kiely 71 Stonewall Court Yorktown Heights, NY 10598 EXAMINER CHAWLA, JYOTI ART UNIT PAPER NUMBER 1792 MAIL DATE DELIVERY MODE 08/18/2021 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 ALICE MARY O’DONNELL KIELY ____________ Appeal 2020-002962 Application 11/634,624 Technology Center 1700 ____________ Before TERRY J. OWENS, MICHAEL P. COLAIANNI, and DONNA M. PRAISS, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING This is in response to a Request, filed July 19, 2021, for rehearing of our Decision dated May 19, 2021. Regarding the 35 U.S.C. § 112, ¶ 2 rejection, Appellant argues claim 41 is not a Markush claim (Request 2). Appellant argues claim 41 is an open claim, not a closed claim (Request 2–3). Appellant contends that the phrase “selected from the group comprising” has been used in numerous patents and is proper (Request 3). Appellant argues that each term listed in claim 41 (i.e., person, an animal, an animated character, a creature, an alien, a toy, a vegetable, and a fruit) are familiar to an ordinarily skilled person and these terms are not ambiguous (Request 3–4). Appellant argues that a person Appeal 2020-002962 Application 11/634,624 2 of ordinary skill in the art would understand the Specification to teach differently shaped torso pieces that can be combined by a user (Request 5). Contrary to Appellant’s argument, the Examiner’s rejection is based upon an improper Markush group that uses open-ended transitional language comprising, not ambiguity in the meaning of the specific members that compose the group (Final Act. 2–3). Although, Appellant argues that the claim is not a Markush claim, § 2117 of the Manual of Patent Examining Procedure (MPEP) supports the Examiner’s rejection. Specifically, MPEP § 2117 states “any claim that recites alternatively useable members, regardless of format should be treated as a Markush claim.” Accordingly, the Examiner properly treated the claim as a Markush claim. As a Markush group in claim 41, the claim requires a selection from a closed group “consisting of” the alternative members. See MPEP § 2117. Because Markush groups require selection from a closed group, Appellant’s use of “comprising” is improper and should be corrected. See Abbott Labs. v. Baxter Pharm. Products, Inc., 334 F.3d 1274, 1281 (Fed. Cir. 2003) (“[A] proper Markush group is limited by the closed language term ‘consisting of.’” See also, MPEP § 2173.05(h). Appellant’s argument that the phrase “selected from the group comprising” has been used in numerous patents in unpersuasive for the reasons given on pages 4 to 5 of the Decision. Specifically, we stated “whether the claims in the present appeal comply with statutory requirements including § 112, ¶ 2, is not controlled by the fact that similar claims have been allowed by the United States Patent and Trademark Office in a different application. In re Schechter, 205 F.2d 185, 191 (CCPA 1953). Appeal 2020-002962 Application 11/634,624 3 For the above reasons, and those Specified in our Decision, we adhere to our finding that claim 41 is indefinite. Regarding claims 45 and 64, Appellant argues that the terms “whimsical” and “silly” do not render the claims indefinite because examples are provided in the Specification as to the meaning of these terms (Request 6). Appellant argues the Examiner does not point to any evidence of indefiniteness in light of the Specification disclosure (Request 7). Appellant contends whimsical and silly are not facially subjective terms and have sufficiently objective meanings to the skilled artisan (Request 7). Appellant argues that claims 45 and 64 further recite humorous and unnatural, which provide a standard for determining when something is natural versus unnatural (Request 7). Appellant’s arguments in a Rehearing Request are limited to arguments raised in the Briefs unless arguing one of the following: a recent relevant decision of the Board or Federal Circuit, new arguments in response to a new ground of rejection, and new arguments that the Board’s decision includes an undesignated new ground. See 37 C.F.R. § 41.52(a). Appellant never argued that recitation of humorous or unnatural provides a standard for determining when something is silly or whimsical. This new argument will not be considered. We have considered Appellant’s examples in the Specification of whimsical or silly as noted on page 6 of the Decision. We found that the Specification provides no standard to ascertain when the torso or appendage is considered whimsical or silly within the meaning of the claim (Decision 6). Appellant’s arguments do not persuade us of error in the Decision. Appeal 2020-002962 Application 11/634,624 4 Regarding the Examiner’s rejection of claims 49, 52, and 54 under 35 U.S.C. § 112, ¶ 2 as invoking 35 U.S.C. § 112, ¶ 6 by reciting “attachment means” without reciting any corresponding structure in the Specification, Appellant submits an amendment to the claims dated July 19, 2021, which Appellant alleges overcomes this rejection (Request 8). Appellant is not permitted to make amendments to the claims as part of the rehearing request. 37 C.F.R. § 41.52. Amendments may not be made after a decision by the Board unless the amendments comply with 37 C.F.R. §1.116(g). Code of Federal Regulations § 1.116(g) permits amendments as provided in §§ 1.198, 1.981 or to carry into effect a recommendation under § 41.50(c). Section 1.198 requires written authority from the Director to reopen prosecution which is not the case here. Section 1.981 applies to inter partes reexams which does not apply to this appeal. Finally, § 41.50(c) concerns new grounds of rejection made by the Board, which the Board did not exercise its authority to make in this appeal. Because Appellant’s amendments are untimely, we will not consider them. On this record, we adhere to our Decision to affirm with regard to the § 112, ¶ 2 rejections. Appellant argues the Examiner’s interpretation of claim 41 as a kit that includes an “unfinished thing” would include nearly all kits so as to render the claim meaningless (Request 9). Appellant argues that the Office has shown no evidence that a person of ordinary skill in the art in view of the Specification would interpret torso or appendage as an “unfinished thing” (Request 9). Appellant contends that Merriam-Webster’s dictionary defines torso as including unfinished literary works (Request 9). Appellant Appeal 2020-002962 Application 11/634,624 5 argues the Board applied on page 7 of the Decision a plain language standard as opposed to a plain meaning standard that is required for a fair examination (Request 9). Appellant disputes the Board’s claim interpretation on page 7 of the Decision where the Board determined that claim 41 is open-ended and “does not exclude a kit having both claim limitations [i.e., torso and appendage] and any additional limitations” (Request 10). Appellant argues that a claim cannot be anticipated by non- recited elements (Request 10). Appellant argues that claim 62 depends from claim 41 and recites said torso further comprises an integral appendage (Request 10). Appellant contends that the doctrine of claim differentiation “precludes including something that the independent claims further comprise.” (Request 10). Appellant argues that the interpretation of torso as an unfinished thing and appendage as an ancillary part attached to something is clearly erroneous (Request 10). We adhere to our claim interpretation for the reasons discussed on pages 7–8 of the Decision. We add the following for emphasis. Claim 41 plainly requires a kit comprising a torso or an appendage. The transitional phrase “comprising” is an open-ended term in patent law that includes the elements recited in a claim as well as other unrecited elements. Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1271 (Fed. Cir. 1986). Therefore, claim 41 requires a kit that comprises a torso or an appendage but may also include both a torso and an appendage as well as any non-recited additional elements taught by a prior art reference that also includes the recited limitations of claim 41. Our recitation on page 7 of the Decision to “plain language” refers to the actual language recited in claim 41 as part of our interpretation of the limitations required by the claim. Our analysis to as Appeal 2020-002962 Application 11/634,624 6 what meets the recited “torso” and “appendage” in terms of the plain meaning of those terms is addressed on page 8 of the Decision. Appellant’s argument regarding claim 62 and claim differentiation is not persuasive. Claim differentiation refers to “the presumption that an independent claim should not be construed as requiring a limitation added by a dependent claim.” Curtiss-Wright Flow Control Corp. v. Velan, Inc., 438 F.3d 1374, 1380 (Fed. Cir. 2006). In this case, we interpret claim 41 as requiring a torso or an appendage or both with additional unrecited limitations allowed. In this case, claim 62 requires a torso with an integral appendage. Claim 41 does not require an integral appendage and so the doctrine of claim differentiation does not appear to be an issue. In terms of the meaning of torso and appendage, it is not entirely clear how claim 62 establishes that our interpretation of these terms is clearly erroneous. Stated differently, claim 62 depends from claim 41 and recites torso with an integral appendage. Claim 62 may reasonably be interpreted as an unfinished thing (torso) having an ancillary part (appendage) integrally attached to it. As stated in our Decision, “[g]iven the breadth of what may be considered a torso and an appendage (i.e., an animal, an animated character, a creature, an alien, a toy, a structure, a vegetable, and a fruit) (claim 41), we discern no error in the Examiner[’s] interpretation of torso and appendage in an attempt to determine the metes and bounds of the claim.” (Decision 8–9). Appellant argues the Examiner’s sole evidence of anticipation of a “torso” is based on Moreau’s disclosure that the edible block portions can be “virtually anything including representation of known characters and Appeal 2020-002962 Application 11/634,624 7 familiar objects of everyday life, people, animals, etc.,” which was adopted by the Board (Request 11–12). Appellant argues the mere naming or description of virtually anything is insufficient to find the claims anticipated by Moreau (Request 12). Appellant argues Moreau fails to teach all limitations in claim 41 (Request 13). We are unpersuaded by Appellant’s arguments regarding the § 102 rejection. Claim 41 is broad in what constitutes a torso and an appendage as discussed in the Decision and in this Decision on Rehearing. Moreau’s disclosure that the three-dimensional objects to be formed can be virtually anything including representations of known characters, familiar objects of everyday life, people, and animals reasonably includes forming a depiction of a person or an animal which would include forming a torso as properly construed in the Decision (Decision 10). Stated differently, a torso of a “structure” as recited in claim 41 may include a truck body as in Moreau with the appendages being the roof and tires (Decision 10; Spec. 51: “axils for a car” as appendages). Regarding the § 103 rejection of claim 47 over Moreau and Babos, Appellant argues that claim 47 depends from claim 41 and because claim 41 is not rejected under § 103, then claim 47 is unobvious (Request 14). Contrary to Appellant’s argument, each claim is treated on its own merits. In the context of dependent claim 47, independent claim 41 is rejected under § 102 over Moreau. The subject matter added to claim 41 via claim 47 is what required the Examiner to make a § 103 rejection over Moreau and Babos. Moreover, in the context of claim 41, anticipation is the epitome of obviousness. In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982). Appeal 2020-002962 Application 11/634,624 8 With respect to the § 103 rejection, Appellant again argues that neither Moreau nor Babos teaches a torso. We disagree for the reasons given in the Decision and in this Decision on Rehearing. On this record, we adhere to the Decision to affirm the Examiner’s rejections of record. Outcome of Decision on Rehearing: Claim(s) 35 U.S.C § Reference(s)/Basis Denied Granted 41–54, 56, 57, 59–64 112, ¶ 2 Indefiniteness 41–54, 56, 57, 59–64 41–54, 56, 57, 59–64 102(b) Moreau 41–54, 56, 57, 59–64 47 103(a) Moreau 47 57, 59, 60 103(a) Moreau, Babos 57, 59, 60 Overall Outcome 41–54, 56, 57, 59–64 Final Outcome of Appeal after Rehearing: Claim(s) 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 41–54, 56, 57, 59–64 112, ¶ 2 Indefiniteness 41–54, 56, 57, 59–64 41–54, 56, 57, 59–64 102(b) Moreau 41–54, 56, 57, 59–64 47 103(a) Moreau 47 57, 59, 60 103(a) Moreau, Babos 57, 59, 60 Overall Outcome 41–54, 56, 57, 59–64 DENIED