Ex Parte Hensel

Patent Trial and Appeal Board

Jun 13, 2017

12119445 (P.T.A.B. Jun. 13, 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.
12/119,445 05/12/2008 Keith James Hensel MOLINS0018 3044
24203 7590 06/15/2017
GRIFFIN & SZIPL, PC
SUITE 112
2300 NINTH STREET, SOUTH
ARLINGTON, VA 22204
EXAMINER
CALVETTI, FREDERICK F
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
06/15/2017 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):
GandS @ szipl.com
burke @ szipl. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEITH JAMES HENSEL1
Appeal 2015-002583
Application 12/119,445
Technology Center 3700
Before: LINDA E. HORNER, JASON W. MELVIN, and
BRENT M. DOUGAL, Administrative Patent Judges.
DOUGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of
claims 43—61. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing
was held on May 23, 2017.
We affirm-in-part.
1 Although it appears from papers filed in this application that Richard
Hoare may also be an inventor, the USPTO records list Keith James Hensel
as the sole inventor.
Appeal 2015-002583
Application 12/119,445
CLAIMED SUBJECT MATTER
The claims are directed to a toaster with a supplemental cycle. Claims
43 and 52 are independent. Claim 43, reproduced below, is illustrative of
the claimed subject matter:
43. A toaster for a food, the toaster having heating elements and
an activation handle for lowering the food and activating the
heating elements, having a toasting cycle with a completion
defined by an extinguishing of the heating elements, and having
a user control for selecting a shade, and a processor that has
control over the heating elements, further comprising:
a supplemental cycle activator that when activated by a
user after the completion of an initial toasting cycle of the food
at an initially specified shade, communicates with the processor
and causes, when the activation handle is next depressed, a
supplemental cycle of a duration determined by the processor
that is shorter than the initial cycle;
the supplemental cycle providing to said food, a shade that
corresponds to approximately one half shade darker than the
initially specified shade.
REJECTIONS
Claims 43—61 are rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite.
Claims 43—61 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Hardin (US 6,311,608 Bl, iss. Nov. 6, 2001).
Claims 43—61 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Wanat (US 5,802,957, iss. Sept. 8, 1998).
Claims 43—61 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wanat and Ho (US 6,140,621, iss. Oct. 31, 2000).
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Appeal 2015-002583
Application 12/119,445
OPINION
35 U.S.C. § 112 - “Approximately”
The Examiner determines that the term “approximately” in claims 43
and 52 “is indefinite” and that it “does not define a time or color.” Final
Act. 2. Claims 43 and 52 both recite the phrase “a shade that corresponds to
approximately one half shade darker than the initially specified shade.”
Appellant argues that “shade refers to the shade or ‘color’ of the toast
and also to the arbitrary numerical values that are e.g. printed on a toaster
adjacent to the toast shade selector that is a near universal feature of all
toasters” where the shade selector subdivides the degree of shade into a
number of shades. Appeal Br. 20; see also Spec. 1,11. 20-27, Fig. 1 ref. nos.
12 and 21; and Hardin Fig. 3 ref. no. 88. Appellant further argues that “a
toaster is not a precise instrument of coloration” and that as “toast color is
not measured in any known absolute scale . . . approximations of shade are
useful and in fact preferable to rigid definitions of toast color that have no
means of universal measurement.” Appeal Br. 20, 21.
The Examiner does not address Appellant’s argument. See generally
Ans.
The use of relative terms does not automatically render a patent claim
indefinite. See, e.g., Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1359
(Fed. Cir. 2012). The Federal Circuit has approved of the use of terms such
as “about,” “substantially,” and “approximately.” See, e.g., id.', and Ecolab,
Inc. v. Envirochem, Inc., 264 F.3d 1358, 1367 (Fed. Cir. 2001). However,
the use of relative terms in a claim must be evaluated on a case-by-case
basis.
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Appeal 2015-002583
Application 12/119,445
Based on the facts and arguments before us, Appellant has
convincingly argued that “approximations of shade are useful” as “toast
color [has] no means of universal measurement.” Appeal Br. 20. Appellant
has also persuaded us that one having ordinary skill would understand this
claim limitation to refer to “a toast color that is an approximate mid-point
between two adjacent shades on whatever toaster is being used.” Id.
Accordingly, we conclude that the term “approximately” as used in the
phrase “approximately one half shade darker” in independent claims 43 and
52 is sufficiently clear to satisfy the requirements of 35 U.S.C. § 112, second
paragraph. Accordingly, we do not sustain the 35 U.S.C. § 112, second
paragraph, rejection on this basis.
35 U.S. C. §112- “Whether or Not”
The Examiner determines that the term “whether or not” in claims 49
and 58 “is alternative and indefinite.” Final Act. 2. Claims 49 and 58 both
recite: “the duration determined by the processor is based on whether or not
a special cycle had also been user selected in the initial toasting cycle.”
Appellant argues that “the term simply refers to the action of the
processor in the light of two alternatives (user selects special cycle, or not)
and the usage in this context is entirely conventional.” Appeal Br. 22.
The Examiner does not address Appellant’s argument (see generally
Ans.) and we see no reason why addressing alternatives in the manner
claimed renders the claims indefinite. Accordingly, we conclude that the
term “whether or not” in independent claims 49 and 58 is sufficiently clear
to satisfy the requirements of 35 U.S.C. § 112, second paragraph.
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Appeal 2015-002583
Application 12/119,445
Accordingly, we do not sustain the 35 U.S.C. § 112, second paragraph,
rejection on this basis.
35 U.S.C. § 112 — “Functional Language”
The Examiner determines that “[t]he scope of the claims is indefinite
because it is unclear whether the claims are a method or an apparatus.”
Final Act. 2. This is because “[t]he claims recite functional/process
language, that is, ‘recognizes’ — ‘determined’ — ‘communicates’, in an article
claim requiring structure for consideration with the art” which the Examiner
determines is inappropriate “pure functional claiming.” Id.
Appellant argues that “[t]he preamble of the claims specifies quite
clearly that the subject matter of the invention is an apparatus.” Appeal Br.
23. Appellant further argues that the claims properly “define the processor
and the mechanical activity of the toaster ... in accordance with the function
that they perform.” Id.
The Federal Circuit has
held that “a single claim covering both an apparatus and a
method of use of that apparatus” fails to meet the requirements
of § 112 because “it is unclear whether infringement. . . occurs
when one creates a[n infringing] system, or whether
infringement occurs when the user actually uses [the system in
an infringing manner].”
UltimatePointer, L.L.C. v. Nintendo Co., 816 F.3d 816, 826 (Fed. Cir. 2016)
(citing IP XL Holdings, LLC v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed.
Cir. 2005)). However, “[i]f an apparatus claim ‘is clearly limited to a[n
apparatus] possessing the recited structure and capable of performing the
recited functions,’ then the claim is not invalid as indefinite.” Id. (citing
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Appeal 2015-002583
Application 12/119,445
Microprocessor Enhancement Corp. v. Texas Instr. Inc., 520 F.3d 1367,
1375 (Fed. Cir. 2008) (emphasis in original)).
We agree with Appellant that the claims are not invalid as indefinite.
The claims make clear that the limitations associated with “recognizes,”
“determined,” and “communicates” “reflect[] the capability of that structure
[i.e. the processor] rather than the activities of the user.” UltimatePointer,
L.L.C. 816 F.3d at 827. Accordingly, we do not sustain the 35 U.S.C. § 112,
second paragraph, rejection that the claims are indefinite for being “unclear
whether the claims are a method or an apparatus.” Final Act. 2.
35 U.S.C. § 112 - “Not addressed”
Claims 51 and 60 are rejected as indefinite as “‘the factor’ . . . lacks
antecedent basis.” Id. Appellant does not address this rejection. See
generally Appeal Br. and Reply Br. We therefore summarily affirm the
rejection of dependent claims 51 and 60.2
35 U.S.C. § 102(b) — Hardin and Wanat
Appellant argues that the reheat and defrost cycles of Hardin and of
Wanat do not anticipate the processor of independent claims 43 and 52.
Appeal Br. 14—16 and 16—18. Claim 43 includes:
a supplemental cycle activator that . . . communicates with the
processor and causes, when the activation handle is next
depressed, a supplemental cycle of a duration determined by the
processor that is shorter than the initial cycle;
2 The Examiner also notes that claim 48 includes “a typo — [as] ‘a’ should be
‘an.’” Final Act. 2. We understand this to be informative to Appellant,
rather than a rejection of the claim.
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Appeal 2015-002583
Application 12/119,445
the supplemental cycle providing to said food, a shade that
corresponds to approximately one half shade darker than the
initially specified shade.
Claim 52 includes a similar limitation.
The Examiner takes the position that the prior art of Hardin and
Wanat both teach “a processor [that] has the capability to store and
subsequently implement a supplemental cycle,” and therefore when
reheating (i.e., a supplemental cycle) occurs after an initial cycle, this is
sufficient to teach the above-noted limitations of the claims. Final Act. 11;
see also Ans. 10. Moreover, the Examiner rejects the notion that “the claims
recite a computer program which achieves manipulations.” Id. at 11.
As discussed above, the limitations associated with “recognizes,”
“determined,” and “communicates” “reflect[] the capability of’ the
processor. UltimatePointer, L.L.C. 816 F.3d at 827. When functional
language is associated with programming or some other structure required to
perform the function, that programming or structure must be present in order
to meet the claim limitation. Typhoon Touch Tech., Inc. v. Dell, Inc., 659
F.3d 1376, 1380 (Fed. Cir. 2011) {discussing Microprocessor Enhancement
Corp., 520 F.3d at 1375); see also MPEP § 2111.05(111) (9th Ed, Rev.
07.2015, Nov. 2015). The “capable of’ test requires that the prior art
structure be capable of performing the function without further
programming. Typhoon Touch, 659 F.3d at 1380.
Here, the Examiner has not established that the processor of Hardin or
of Wanat is capable of performing the claimed function (i.e, causing the
supplemental cycle) without further programming. Rather, the Examiner
relies on an inappropriate claim construction. For these reasons, we do not
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Application 12/119,445
sustain the Examiner’s rejections of claims 43 and 52 and their dependents
under 35 U.S.C. § 102(b).
35 U.S.C. § 103(a) — Wanat and Ho
The Examiner’s obviousness rejection over Wanat and Ho relies on
the same reasoning we found deficient above. Final Act. 10. Thus, we do
not sustain the Examiner’s rejection under of claims 43 and 52 and their
dependents under 35 U.S.C. § 103(a).
DECISION
The Examiner’s rejection of claims 43—61 under 35 U.S.C. § 112,
second paragraph, as being indefinite is REVERSED, with the exception of
the Examiner’s rejection of claims 51 and 60 as being indefinite for lacking
antecedent basis which is AFFIRMED.
The Examiner’s rejections of claims 43—61 under 35 U.S.C. § 102(b)
and under 35 U.S.C. § 103(a) are REVERSED.
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)(l)(iv).
AFFIRMED-IN-PART
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