Ex Parte Broen et al

Patent Trial and Appeal Board

Jan 17, 2017

11249676 (P.T.A.B. Jan. 17, 2017)

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
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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.
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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,
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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
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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).
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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).
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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
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