Ex Parte Broen et alDownload PDFPatent Trial and Appeal BoardJan 17, 201711249676 (P.T.A.B. Jan. 17, 2017) 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. 11/249,676 10/13/2005 Nancy L. Broen J-4405 2763 28165 7590 01/19/2017 S.C. JOHNSON & SON, INC. 1525 HOWE STREET RACINE, WI53403-2236 EXAMINER NGO, LIEN M ART UNIT PAPER NUMBER 3754 NOTIFICATION DATE DELIVERY MODE 01/19/2017 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): F074168@scj.com selechne @ scj. com mjzolnow @ scj .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NANCY L. BROEN and JY ANPING RUNG Appeal 2015-001276 Application 11/249,676 Technology Center 3700 Before MICHAEL L. HOELTER, LYNNE H. BROWNE and CARL M. DeFRANCO, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL* 1 1 The present application (11/249,676) was the subject of both an earlier Decision on Appeal (Appeal 2011-008453 mailed August 21, 2013, hereinafter “Decision”) and a Decision on Request for Rehearing (mailed November 18, 2013). At that time, Appellants grouped independent claims 1 and 16 together and argued matters that were common to both. See Appellants’ Briefs in that earlier appeal. We addressed these common elements and affirmed the Examiner’s rejection of claims 1 and 16 (and their dependent claims) under 35U.S.C. § 101. See Decision 3—7. Appellants thereafter filed an RCE to continue prosecution of this application, and Appellants also canceled all but presently pending claims 16—35. See Ans. 5. The Examiner currently states that Appellants’ submitted arguments “traversing the 101 rejection” “but will not address them as they have been improperly presented in this appeal” because of the earlier decisions in this matter. Ans. 5. Appellants reply that they “have put forth new arguments in light of Alice Corp. v. CLS Banklnt.l, 573 U.S. _ (2014), which was decided following the Board’s previous decision in this application.” Reply Br. 3. Appeal 2015-001276 Application 11/249,676 STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from the Examiner’s final rejection of claims 16—35. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. THE CLAIMED SUBJECT MATTER The disclosed subject matter “relates to a method and an apparatus that facilitate dispensing of a granular product from a hand-held container.” Spec. 14. Claims 16, 31, and 35 are independent. Claim 16 is illustrative of the claims on appeal and is reproduced below: 16. An apparatus for dispensing a flowable solid substance, comprising: a receptacle having a first end and a second end, wherein a dispensing portion is located on the first end; and a flowable solid substance disposed within the receptacle, wherein a section of the receptacle disposed between the first end and the second end includes a minor width dimension and a major width dimension; and wherein the receptacle has a Broen-Rung Principal Component Index of about zero. As such, according to Appellants, “the Appeal Brief submitted by Applicants presents new arguments based on newly decided Supreme Court precedent showing that the claims at issue are directed toward patent-eligible subject matter” and that the Board should hear them “because Applicants have presented new arguments in light of new law.” Reply Br. 3. Taking the above into consideration, we presently address the rejection under 35 U.S.C. § 101 of pending claims 16—35 anew. 2 Appeal 2015-001276 Application 11/249,676 REFERENCES RELIED ON BY THE EXAMINER Ayotte US 3,260,426 July 12, 1966 Allen US 3,325,066 June 13, 1967 Mohary US Des. 404,307 Jan. 19, 1999 THE REJECTIONS ON APPEAL Claims 16—35 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter. Claims 16—35 are rejected under 35 U.S.C. § 103(a) as unpatentable over Allen or Ayotte in view of Mohary. ANALYSIS The rejection of claims 16—35 because the claimed invention is directed to non-statutory subject matter The Examiner rejects all the claims because they recite “a well-known statistical analysis or a mathematical formula or a law of nature” and as such, the claims are “not directed to patent eligible subject matter.” Final Act. 2. The claims do indeed recite “a Broen-Rung Principal Component Index” (hereinafter “BRPC Index”) which the Examiner characterized as above. See Final Act. 2. Appellants’ Specification states that “[t]he BRPC Index is thereafter calculated by utilizing the following equation.” Spec. 193 (setting forth the equation in question which we need not replicate here). As such, we do not fault the Examiner’s above characterization of this BRPC Index as being an analysis, formula, or law of nature. See supra. We note the Examiner also characterizes the BRPC Index as being “well-known.” In the earlier Decision, we addressed the Examiner’s “well-known” understanding and we further stated in that Decision, 3 Appeal 2015-001276 Application 11/249,676 “[n]one of these findings are disputed by Appellants.” Decision 3^4. Appellants now, however, in the present appeal, are seeking a different understanding as to the well-known nature of this index. See App. Br. 8, 11. Suffice it to say, we need not re-visit this matter for the reasons that follow. The claims on appeal (i.e., claims 16—35) are not solely directed to this recited analysis/formula/law of nature. Instead, the claims on appeal also recite “a receptacle” and “a flowable solid substance” within that receptacle (or other similar structure).2 As such, we do not agree with the Examiner that just because a claim includes an analysis/formula/law of nature limitation among other structural limitations, that the inclusion of this analysis/formula/law of nature limitation renders the claim as not being directed to eligible subject matter.3 We are reminded of the following statements by the Supreme Court in Diamond v. Diehr, 450 U.S. 175, 187 (1981), “a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula, computer program, or digital computer” and further, “[i]t is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”4 In the matter before us, the claims are drawn to a receptacle 2 Appellants argue (and we agree) that “the claims at issue include various tangible physical components.” App. Br. 9. 3 Appellants contend, “[t]he BRPC is no different from other known and accepted parameters as it defines a way to characterize the shape and size of the container.” App. Br. 10; see also App. Br. 9—10 listing various patents with “claims having parameters associated with a container or dispensing device.” 4 Such statements, however, are further refined by a subsequent holding by the Supreme Court that “simply appending conventional steps, specified at a 4 Appeal 2015-001276 Application 11/249,676 and a substance therein. See supra. There is no indication that such receptacle and substance are not statutory subject matter. Accordingly, and in view of the above, we reverse the Examiner’s rejection of claims 16—35 as being directed to non-statutory subject matter. The rejection of claims 16—35 as unpatentable over Allen or Ayotte in view ofMohary Appellants argue independent claims 16, 31, and 35 together. App. Br. 19—21. Appellants do not present separate arguments for dependent claims 17—30 and 32—34. We select independent claim 16 for review with claims 17—35 standing or falling with claim 16. See 37 C.F.R. § 41.37(c)(l)(iv). Each of Allen, Ayotte, and Mohary is relied on by the Examiner for disclosing either a dispenser or a container. Final Act. 3. Allen and Ayotte are cited for disclosing a dispenser “for dispensing powdered or flowable solid substances” while Mohary is cited for disclosing a container “which is capable of dispensing powdered or flowable solid substances.” Final Act. 3. Appellants do not dispute these findings. The Examiner further finds that “Allen or Ayotte in view of Mohary” disclose “a dispenser comprising a shape substantially as claimed.” Final Act. 4; see also Ans. 7. The Examiner also finds that, as a result, “the dispenser of Allen or Ayotte in view of Mohary et al. is capable of having a BRPC index of about zero.” Final Act. 4; see also Ans. 7. Although Appellants dispute this “capable of’ language (see App. Br. 19), Appellants high level of generality, to laws of nature, natural phenomena, and abstract ideas cannot make those laws, phenomena, and ideas patentable.” Mayo Collaborative Servs. v. Prometheus Labs, Inc., 132 S. Ct. 1289, 1297 (2012). 5 Appeal 2015-001276 Application 11/249,676 nevertheless recognize that pre-existing containers may meet this criteria5 or, more importantly, already do so.6 In support of Appellants’ contention that the cited references do not teach a receptacle that is capable of having a BRPC Index of about zero, Appellants state, “it appears that the Examiner is improperly suggesting that the containers of Allen or Ayotte inherently have a BRPC within the claimed ranges.” App. Br. 20 (emphasis added). Appellants are mis-reading the Examiner’s rejection and are imposing a stricter “inherency” requirement when that is not the rationale relied on by the Examiner. See App. Br. 20; Final Act. 4; Ans. 7. The Examiner’s “capable of’ rationale is not undone simply because a certain result may occur, i.e., such possibility not being “sufficient to establish the inherency of that result.” App. Br. 20. In short, we agree with Appellants that the determination to be made is “whether it would have been obvious” for a container to have a BPRC Index of about zero. App. Br. 20 (referencing In re Giannelli, 739 F.3d 5 Appellants state, “if a container manufacturer does not determine the BRPC of the container being contemplated, the container is manufactured according to long-standing and known processes, which results in containers that may be unwieldy and cause hand fatigue.” App. Br. 15—16. In other words, containers that have been manufactured according to long-standing processes may or may not cause hand fatigue, which is what a BRPC Index of about zero addresses. See Spec. H 95—97. 6 Spec. H 69, 71 and 89—93, for example, discuss pre-existing test containers and how a BRPC Index is calculated for these containers using values arising from tests performed employing these containers. Tables 5 and 6 (see Spec. 193) list these pre-existing test containers and indicate that their computed BRPC Index values extend to both sides of zero (i.e., the test containers are computed to have both positive and negative BRPC Index values). 6 Appeal 2015-001276 Application 11/249,676 1375 (Fed. Cir. 2014)). Appellants’ test results (i.e., the testing and results on existing containers as set forth in Appellants’ Specification) seem to answer that question already since Appellants are reciting a range within that which is already found to exist. See Spec. 193 and particularly Tables 5 and 6 therein. Consequently, based on the record presented, we are not persuaded the Examiner erred in rejecting claims 16—35 as being obvious over Allen or Ayotte in view of Mohary. DECISION The Examiner’s rejection of claims 16—35 under 35 U.S.C. § 101 is reversed. The Examiner’s rejection of claims 16—35 as being obvious over Allen or Ayotte in view of Mohary is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN-PART 7 Copy with citationCopy as parenthetical citation