Ex Parte Hughes

Patent Trial and Appeal Board

Aug 31, 2017

12702150 (P.T.A.B. Aug. 31, 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.
KDH-0131 1511
EXAMINER
O'HARA, BRIAN M
ART UNIT PAPER NUMBER
3644
MAIL DATE DELIVERY MODE
12/702,150 02/08/2010
95280 7590 09/01/2017
Johnson, Marcou & Isaacs, LLC
27 City Square, Suite 1
Hoschton, GA 30548
KENNETH D. HUGHES
09/01/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNETH D. HUGHES
Appeal 2015-006981
Application 12/702,150
Technology Center 3600
Before CHARLES N. GREENHUT, BRETT C. MARTIN, and
GORDON D. KINDER, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2015-006981
Application 12/702,150
STATEMENT OF CASE
Appellant appeals under 35U.S.C. § 134 from the Examiner’s
rejection of claims 1—3, 5—9, 11—16, and 21—27. Claims 2, 4, 10, and 17—20
have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and enter a NEW GROUND OF REJECTION pursuant
to our authority under 37 C.F.R. § 41.50(b).
THE INVENTION
Appellant’s claims are directed generally to “methods and devices for
the maintenance of living organisms in a temperature controlled container.”
Spec. 1,11. 4—5. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A device for maintaining living organisms in a
temperature controlled environment comprising:
one or more separable aquarium or terrarium containers
for housing said living organisms, wherein said aquarium or
terrarium container consists of glass, plastics, or a combination
thereof; and
a container support structure, comprising a hole or cut-out
in a top surface of the container support structure for each
aquarium or terrarium container to sit above, and below which a
flat planar integrated temperature control element is mounted in
intimate contact with the container support structure;
wherein said temperature control element has less than 35
watts of power and is not in direct contact with said one or more
aquarium or terrarium containers; and
wherein said temperature control element is separated
from the bottom of said one or more aquarium or terrarium
containers by a volume of air contained within the container
support structure that transfers heat between said temperature
control element and said one or more aquarium or terrarium
containers.
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Application 12/702,150
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wernicke US 2,002,380 May 21, 1935
Holbrook US 4,313,048 Jan. 26, 1982
Hamilton US 4,523,083 June 11, 1985
REJECTIONS
The Examiner made the following rejections:
Claim 23 stands rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite. Final Act. 2.
Claims 1—3, 5—9, 11, 12, 14—16, and 21—25 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Wernicke and Holbrook. Final
Act. 3.
Claims 13, 26, and 27 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wernicke, Holbrook, and Hamilton. Final Act. 8.
ANALYSIS
Indefiniteness
Claim 23 depends from claim 1, adding “wherein all edges of the flat
planar heating element are in intimate contact with the container support
structure.” Appeal Br. 20 (Claims App.). The Examiner rejects claim 23
because Appellant’s use of the phrase “all edges” is unclear. Final Act. 2.
Specifically, the Examiner finds “[i]t is unclear how the control element can
be separated (presumably at a top edge/edges) by a volume of air and also be
in intimate contact with the container support structure at all of its edges.”
Id. See also Ans. 10. In response to Appellant’s arguments, the Examiner
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Application 12/702,150
asserts that Appellant’s definition of “edge,” “the outside limit of an object
area, or surface,” would mean that “any three dimensional flat planar object
would have at least six edges; a top, a bottom, and four sides.” Ans. 10.
Appellant argue, “[t]he term[s] ‘edge’ and ‘periphery’ are synonymous,” and
“[t]he Examiner appears to confuse the concept of an ‘edge’ with the
concept of a ‘surface.’” Reply Br. The Examiner’s rejection raises an issue
as to what constitutes an edge in reality versus the theoretical definition of a
plane.
We first note that dependent device claim 23 recites “all edges of the
flat planar heating dement.” While independent claim 21, which is a
method claim, does specifically recite “wherein said temperature control
element consists of a heating element,” no such recitation of “heating
element” is present in claim 1, from which claim 23 depends. On this basis
alone, claim 23 is indefinite for lack of antecedent basis. Claims 24 and 25
suffer from the same defect.
As for the “all edges” aspects of the Examiner’s rejection, any heating
element (or temperature control element, as actually claimed in claim 1)
would have a thickness, thus complicating what would constitute an edge, ft
would appear that what Appellant is attempting to claim, at least regarding
certain embodiments where the heating element rests on the support
structure, is that “all edges” of the bottom planar surface of the heating
element would be “in intimate contact with the container support structure.”
With a thickness, a physical embodiment of a heating element (if
square, for example) would actually have six sides/surfaces and edges at the
intersection between the various surfaces. Of those edges, fewer than “all”
of them would be “in intimate contact with the container support structure.”
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Application 12/702,150
Thus, while it may be reasonably ascertainable when the heating element is
particularly thin what the limits of the claims should be, as the heating
element becomes thicker, additional edges would come into play that could
be spaced away from the container structure. For example, a heating
element that is 1/16 inch or more thick may have enough thickness to still be
considered a “flat planar heating element,” but it would then have edges that
are spaced from, and thus not “in intimate contact with” the container
structure.
As such, it becomes unclear how “all edges” of such a heating
element could meet the limitation at issue. We see no way a potential
infringer can ascertain at what thickness a heating element ceases to be a
“flat planar heating element” and becomes something else. And, as noted
above, only a theoretical plane has no thickness, so in actuality we believe
that Appellant’s claims only make sense, and are consistent with the
disclosure, if the bottom planar surface, for example, of the heating element
has “all edges in intimate contact with the container support structure.”
Although we depart from the Examiner’s basis for rejecting claim 23 under
§112, second paragraph, we affirm the rejection of claim 23 as indefinite for
the reasons explained above. Because our reasoning differs from that
expressed by the Examiner, we denominate this as a new ground of
rejection. We also reject claims 24 and 25 as indefinite for the reasons
discussed above.
Prior Art Rejections
Claims 1 and 21
Appellant first argues that the Examiner’s application of Wernicke in
relation to claims 1 and 21 is improper because Wernicke does not disclose a
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Application 12/702,150
separable container. App. Br. 12—14. In support, Appellant points out that
the Specification explains that exemplary “devices include ... devices where
container and container support structure are easily separated [i.e.
separable].” App. Br. 12 (alterations in original).
Through this additional language Appellant attempts to equate the
actual claim term with language in the Specification that more clearly states
the relationship between the container and the container support structure;
namely that the two “are easily separated” from each other. The language of
claim 1, however, merely recites “one or more separable aquarium or
terrarium containers.” There is no language in claim 1 that explains what is
separable from what. Appellant clearly desires that this language refer to the
container being separable from the support, but it could just as easily refer to
two containers being separable from one another, or as the Examiner asserts,
merely require that parts of the aquarium be separable from themselves,
which is what is shown in Wernicke. The broadest reasonable interpretation
of this claim language includes any of these possibilities because of the
Appellant’s failure to state from what the aquarium is separable.
Given that we are not provided with the same kind of clear language
in the claims as is found in the Specification as to what is separable from
what, we see no reason to find the Examiner’s interpretation of claim 1
unreasonably broad. Furthermore, the term separable is usually used in a
manner describing one thing being separable from another, so it invites
additional uncertainty as to the definiteness of the claim term as used. We
decline to reject the claim as indefinite at this time, but also are not
persuaded that the Examiner has construed the term in an unreasonably
broad manner. As such, we agree that the Examiner’s application of
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Application 12/702,150
“separable” to the teachings of Wernicke is proper and we sustain the
rejection of claims 1 and 21. Appellant provides no separate arguments for
the dependent claims other than claims 26 and 27, which we address infra,
and as such we likewise sustain the rejection of claims 2, 3, 5—9, 11—16, and
22-25.
Claims 26 and 27
As with “separable,” Appellant’s arguments are not commensurate
with the claim language at issue. Claim 26 recites “said container support
structure is constructed from wood composites,” etc. The Examiner points
to the teachings of Hamilton that show “an aquarium or terrarium (12) and a
container support structure (11) comprised of wood (17; See Colum 2 Line
55).” Final Act. 8. In response, Appellant argues that “Hamilton may
disclose a support container comprising a wood trim, but Hamilton does not
disclose a container support structure constructed only from one of the
materials recited in claims 26 and 27.” App. Br. 14 (emphasis added). We
agree with the Examiner that “[t]he limitation ‘is constructed from’ does not
limit the materials to be only from the list of materials in Claim[s] 26 and
27.” Ans. 11. If Appellant desires to limit the structure only to wood or the
other materials listed therein, then the claim must clearly say so.
Accordingly, we sustain the Examiner’s rejection of claims 26 and 27.
DECISION
For the above reasons, we AFFIRM the Examiner’s decision to reject
claim 23 as indefinite, but denominate our affirmance as a new grounds of
rejection. We also reject claims 24 and 25 as indefinite. Lastly, we
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AFFIRM the Examiner’s decision to reject claims 1—3, 5—9, 11—16, and 21—
27 over the prior art of record.
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board.”
In addition to affirming the Examiner’s rejections of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2008). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to
the Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
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prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
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) (2009).
AFFIRMED; 37 C.F.R, $ 41.50(b)
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UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNETH D. HUGHES
Appeal 2015-006981
Application 12/702,150
Technology Center 3600
Before CHARLES N. GREENHUT, BRETT C. MARTIN, and
GORDON D. KINDER, Administrative Patent Judges.
KINDER, concurring.
CONCURRENCE
I agree with my colleagues’ decision affirming the prior art rejections.
I also agree with my colleagues that claims 23—25 are indefinite for lack of
an antecedent basis for the claim limitation “the heating element.”
Accordingly, I concur in the decision.
I write separately because I would reverse the Examiner’s decision
rejecting claim 23 on a different basis than that set forth by the majority. I
see no reasoned basis to distinguish “surface” from “edge” based on the
Specification and Figures. “Edge” is not used in, much less defined, by the
Specification. In my view “edge” has a broadest reasonable interpretation
that includes “surface,” and no rational basis has been offered to distinguish
between broad surfaces and narrow ones. Therefore, claim 23 is properly
limited to structures where all surfaces of the heating element are in contact
Appeal 2015-006981
Application 12/702,150
with the supporting structure, i.e., the heating element is embedded in the
supporting structure, and an air volume exists between the bottom of the
aquarium/terrarium and the supporting structure in which the heating
element is embedded.
The Examiner noted the Appellant’s definition of an edge as “the
outside limit of an object, area, or surface.” Ans. 10. Accepting this
definition the Examiner reasoned that it was impossible for all surfaces of
the heating element to be in contact with the support structure and also have
one edge in contact with the air. Id. I disagree with the Examiner’s finding
because there is no claim requirement for the heating element to be in
contact with the air. On this basis, I would reverse the Examiner’s rejection
of claim 23 for indefmiteness.
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