Ex Parte HenselDownload PDFPatent Trial and Appeal BoardJun 13, 201712119445 (P.T.A.B. Jun. 13, 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. 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). 2 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. 3 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. 4 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 5 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. 6 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 7 Appeal 2015-002583 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 8 Copy with citationCopy as parenthetical citation