Emily Kociolek et al.

Patent Trials and Appeals Board

Mar 18, 2022

2022001119 (P.T.A.B. Mar. 18, 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. 29/727,062 03/08/2020 Emily S. Kociolek SCTDesign_R 8402 25260 7590 03/18/2022 LAW OFFICE OF MARCIA L. DOUBET, P. L. P. O. BOX 1087 Lake Placid, FL 33862 EXAMINER HYDER, PHILIP S ART UNIT PAPER NUMBER 2917 NOTIFICATION DATE DELIVERY MODE 03/18/2022 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): mld@mindspring.com PTOL-90A (Rev. 04/07) IEF UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EMILY S. KOCIOLEK and KRZYSZTOF J. KOCIOLEK Appeal 2022-001119 Reissue Application 29/727,062 Patent D812,426 S Technology Center 2900 BEFORE RAE LYNN P. GUEST, MICHELLE R. OSINSKI, and JILL D. HILL, Administrative Patent Judges. GUEST, 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 the single design claim in the application for reissue of U.S. Patent D812,426 S (“the ’426 patent”). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as the inventors of record. Appeal Br. 3. Appeal 2022-001119 Reissue Application 29/727,062 Patent D812,426 S 2 CLAIMED SUBJECT MATTER The claim is directed to non-porous weights for use in fermenting vessels, and three embodiments of such weights are currently disclosed. The first and second embodiments, illustrated with representative Figures 1 and 6, respectively, below, are original to the patent. The third embodiment, illustrated with representative Figure 10 below, was added by amendment during in this reissue application. Figure 1 depicts a perspective view of two generally semicircular- shaped weight sections, with each section of equal size positioned slightly askew from one another. Appeal 2022-001119 Reissue Application 29/727,062 Patent D812,426 S 3 Figure 6 depicts a perspective view of four identically-shaped weight sections positioned such that they generally form a circle shape with a gap between each section. Appeal 2022-001119 Reissue Application 29/727,062 Patent D812,426 S 4 Figure 10 depicts a perspective view of three identically-shaped weight sections positioned such that they generally form a circle shape with a gap between each section. REJECTION The claim stands rejected under 35 U.S.C. § 251 as including new matter added to the patent for which reissue is sought. Final Act. 2.2 The Examiner found that the applicant was not in possession of an embodiment comprising three equal sized weight sections (e.g., Figure 10) at the time the underlying application (US Application 29/523,477, which became the ’426 patent) was filed, and, thus, such subject matter is not eligible for reissue. Id. Particularly, the Examiner found the priority utility application (US Application 14/523,936, hereinafter the “’936 utility application”) lacked written descriptive support under 35 U.S.C. § 112, ¶ 1, such that an embodiment comprising three equal sized weight sections “would have been considered new matter then, and it is considered new matter now.” Id. at 3. 2 On appeal, we address the arguments raised by the Appellant in the Appeal Brief filed September 18, 2021 (Appeal Br.) and Reply Brief filed December 12, 2021, and Examiner’s rejections and position set forth in the Final Office Action mailed January 21, 2021 (Final Act.) and the Examiner’s Answer mailed October 13, 2021. We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the [E]xaminer’s rejections.”). Appeal 2022-001119 Reissue Application 29/727,062 Patent D812,426 S 5 OPINION Appellant contends that support for an embodiment comprising three equal sized weight sections can be found in the ’936 utility application. Appeal Br. 15-19. In particular, the Appellant contends that a designer of ordinary skill would have recognized the ornamental appearance of an embodiment comprising three equal sized weight sections based on the following disclosures from the ’936 utility application. 1) The drawings in Figures 2-5 and 7-8 shows 2-sectioned and 4- sectioned embodiments. Appeal Br. 15-16 (also citing Paragraph 3, describing 2- and 4-sectioned embodiments). According to Appellant, the Figures “show each of the sections as be[ing] substantially identical to the other sections” as well as the general overall similar look of sections - e.g., uniform thickness, flat top surface, curved edges, cut-out area along the inner edge - and when the sections are placed together - e.g., abutting edges without overlapping, having the “shape of a single circular object with a center round-shaped cut-out section.” Id. at 17. 2) Paragraph 23 of the Specification recites “in another embodiment, the multi-sectioned weight disclosed herein may be constructed of more than 2 sections.” Id. at 16. 3) Paragraph 3 of the Specification recites “the length of each such section 810 [i.e., one section of the 4-sectioned embodiment] is generally half of the length of the sections of a 2-sectioned weight.” Id. According to Appellant, this disclosure “explains how Appeal 2022-001119 Reissue Application 29/727,062 Patent D812,426 S 6 the section lengths are related when the number of sections changes from 2.” Id. See also Reply Br. 7. Appellant argues that “the designer of ordinary skill in the art readily understands that this latter language sets out a class or range for the number of sections included in Appellant’s invention of a multi-sectioned weight,” with a lower bound of 2 and an undefined upper bound, which “extends at least through an embodiment having 4 sections.” Appeal Br. 18-19; see also Reply Br. 2, 9, and 11. We are not persuaded by Appellant’s argument that the utility application provides written descriptive support for a design claim including an embodiment having three equal sized weight sections. Initially, we agree with Appellant (Reply Br. 8) that a design application can rely on a utility priority application to demonstrate written descriptive support.3 See e.g., Racing Strollers, Inc. v. Tri Industries Inc., 878 F.2d 1418 (Fed. Cir. 1989). Indeed, an applicant may point to a prior utility application, for which priority is claimed, to show “whether the 3 We note that the same is not likely true for meeting the original patent requirement of 35 U.S.C. § 251. See Forum US, Inc. v. Flow Valve, LLC, 926 F.3d 1346 (Fed. Cir. 2019) (“[F]or broadening reissue claims, the specification of the original patent must do more than merely suggest or indicate the invention recited in reissue claims; ‘[i]t must appear from the face of the instrument that what is covered by the reissue was intended to have been covered and secured by the original.’”) (quoting U.S. Indus. Chems., Inc. v. Carbide & Carbon Chems. Corp., 315 U.S. 668, 676 (1942)). In light of our affirmance, we decline to exercise our discretion under 37 C.F.R. § 41.50(b) to enter a new ground of rejection under 35 U.S.C. § 251 based on the original patent requirement. Appeal 2022-001119 Reissue Application 29/727,062 Patent D812,426 S 7 disclosure of the application relied upon reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter.” In re Daniels, 144 F.3d 1452, 1456 (Fed. Cir. 1998) (quoting Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985) (internal quotations omitted)). We disagree with the Examiner that the “standard” for written description is different in a design patent and a utility patent. Ans. 4. In re Owens, 710 F.3d 1362, 1366 (Fed. Cir. 2013) (“The test for sufficiency of the written description, which is the same for either a design or a utility patent, has been expressed as ‘whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.’”) (quoting Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)). However, we agree with the Examiner that “[i]n design patent practice, the appearance is the claim.” Ans. 4. Thus, “[i]n the context of design patents, the drawings provide the written description of the invention” such that “in the context of design patent prosecution, one looks to the drawings of the earlier application for disclosure of the subject matter claimed in the later application.” Owens, 710 F.3d at 1366 (citing Daniels, 144 F.3d at 1456).4 However, we need not decide whether the words of a 4 Indeed, in Owens the Federal Circuit presented the following guidance: “unclaimed boundary lines typically should satisfy the written description requirement only if they make explicit a boundary that already exists, but was unclaimed, in the original disclosure” in that “unclaimed boundary lines generally should affect entitlement to an earlier filing date Appeal 2022-001119 Reissue Application 29/727,062 Patent D812,426 S 8 utility patent specification could provide written description support for a design application because, even if we consider the words or text of the utility patent, we still agree with the Examiner (Ans. 5-6), that the ’936 utility application, viewed as a whole, provides no specificity as to a generic visual impression or ornamental design either of a “class” of weights or of any particular number of weight sections, other than the specific 2-sectioned and 4-sectioned weight design expressly shown in the Figures.5 Indeed, any number of sectioned weights having any sort of visual impression might be encompassed by the provided broad textual description, as the words are not limited in any way to the specific visual appearance of the embodiment of Figure 10, or to any other particular visual impression. Nor are we persuaded that the disclosure of the specific 2-sectioned and 4-sectioned embodiment is sufficient to indicate a visual impression of any other particular weight embodiment, as the scope of these disclosure are indeed limited to those specific embodiments alone. Taken as whole we find no under § 112, ¶ 1, and § 120.” Owens, 710 F.3d at 1369 (emphasis added). Specifically, in Owens, the court found a lack of written descriptive support in an almost identical figure but for presentation of a newly introduced broken line representing an area of the design that is unclaimed where no solid line previously existed. In the instant case, there is no question that certain boundary lines of the newly added 3-sectioned embodiment of Figure 10 did not exist anywhere in the 2-sectioned or 4-sectioned embodiment drawings of the utility application. Thus, Figure 10 necessarily includes particular lines in a design application that were never presented in the original figures. 5 The support being relied upon in Owens and Daniels were drawings of earlier applications and not the text thereof, thus, any extension of the principle to the text of a specification appear to be dicta. Appeal 2022-001119 Reissue Application 29/727,062 Patent D812,426 S 9 description that would lead to the precise visual appearance represented in the embodiment of Figure 10. We further agree with Appellant (Appeal Br. 19) that disclosures of a representative number of species may be sufficient to provide written description support for a genus comprising those species. See Juno Therapeutics, Inc. v. Kite Pharma, Inc., 10 F.4th 1330, 1335 (Fed. Cir. 2021) (“Generally, a genus can be sufficiently disclosed by ‘either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can ‘visualize or recognize’ the members of the genus.’”) (quoting Ariad, 598 F.3d at 1350). However, this principle cannot then be extended such that support for a genus is further evidence of possession of any particular undescribed species within that genus. For example, in a utility application, naming several species (e.g., a nail and a brad) might provide support for a word or phrase representing a genus encompassing those species (e.g., a fastener) but would not provide support for other particular undescribed species within that genus (e.g., a screw or a staple). Here too, even if we were to accept all of Appellant’s arguments regarding a “class” being described in the utility application, we still cannot find that the particular ornamental appearance of the three-sectioned weight of Figure 10 of the design claim is sufficiently described. See Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1326- 27 (Fed. Cir. 2000) (“[O]ne cannot disclose a forest in the original application, and then later pick a tree out of the forest and say here is my invention. In order to satisfy the written description requirement, the blaze Appeal 2022-001119 Reissue Application 29/727,062 Patent D812,426 S 10 marks directing the skilled artisan to that tree must be in the originally filed disclosure.”) (citing In re Ruschig, 379 F.2d 990, 994-95 (CCPA 1967)); Gen. Hosp. Corp. v. Sienna Biopharmaceuticals, Inc., 888 F.3d 1368, 1372 (Fed. Cir. 2018) (“The disclosure of a range of concentrations from less than 1×1011 particles per ml to some unidentified maximum, does not provide written description support for the claimed concentration of ‘about 6.6×1011 particles per ml,’ nor does the disclosure of particular discrete values within that range, none of which are the claimed value.”). Thus, given the facts of this case, we cannot find the claimed overall visual appearance of the 3-sectioned weight represented in Figure 10 has sufficient written descriptive support in the ’936 utility application. CONCLUSION The Examiner’s rejection of the sole design claim under 35 U.S.C. § 251, for new matter, is affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1 251 Improper Broadening, Reissue 1 TIME PERIOD FOR RESPONSE 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). AFFIRMED