Ex Parte HUTCHINS

Patent Trials and Appeals BoardJun 28, 2019

15086431 - (D) (P.T.A.B. Jun. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 15/086,431 03/31/2016 71372 7590 07/01/2019 JEFFREY H. RODDY 525 ROY AL CREST DRIVE RICHARDSON, TX 75081 FIRST NAMED INVENTOR CHRISTY Z. HUTCHINS 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 ATTORNEY DOCKET NO. CONFIRMATION NO. HUTCHINS_CIP _032016 6547 EXAMINER THEIS, MATTHEW T ART UNIT PAPER NUMBER 3734 MAIL DATE DELIVERY MODE 07/01/2019 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 CHRISTY Z. HUTCHINS Appeal2018-009137 Application 15/086,431 Technology Center 3700 Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and LISA M. GUIJT, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. Â§ 134(a) from the Examiner's decision to reject claims 1--4 and 10-15. Claim 5 has been canceled and claims 6-9 have been withdrawn from consideration. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE and enter a NEW GROUND OF REJECTION under 35 U.S.C. Â§ 41.50(b). Appeal2018-009137 Application 15/086,431 CLAIMED SUBJECT MATTER The claimed subject matter "relates generally to a disposal system for vacuumed dust and debris using sealable bags." Spec. ,r 1; Figs. 20, 21, 28. Claims 1 and 10 are independent. Claim 1 is illustrative of the claimed subject matter and recites: 1. A waste transfer and disposal bag for bagless vacuum cleaners comprising: (1) a bag including an opening with at least a first lip, an inner surface, an outer surface, a front side with a maximum width, a back side, a bottom edge, and, a projecting flap opposite from and superior to the first lip, the projecting flap extending beyond the opening, the projecting flap including a flap width, at least an inside surface, and wherein an uppermost portion of the projecting flap defines a top edge of the bag; (2) a first adhesive strip with a peel away backing on the inside surface of the projecting flap, the first adhesive strip configured to span the flap width, the first adhesive strip located above the first lip of the bag, and the first adhesive strip adapted to temporarily form a first seal between the bag opening and a disconnected dust collection canister of a bagless vacuum cleaner wherein the projecting flap is flexibly conformable and adhesively sealable around the dust collection canister; and, (3) an elastic member adapted to provide a circumferential seal about plural sizes of dust chutes ofbagless vacuum cleaners, the elastic member forms an elastic annulus including a minimum width, the elastic annulus is stretchable over portions of the dust collection canister, and the elastic annulus is configured to constrict to a closed and relaxed state when the elastic annulus is disconnected from the dust chute and the minimum width of the relaxed elastic annulus is less than one- half the maximum width of the front side of the bag in order to prevent escape of particulate matter. 2 Appeal2018-009137 Application 15/086,431 THE REJECTIONS I. Claims 1--4 and 10-15 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Melvan (US 2007 /0248290 Al, published Oct. 25, 2007), Allegro (US 2009/0060397 Al, published Mar. 5, 2009), and Belmont (US 2,585,214, issued Feb. 12, 1952). II. Claims 3 and 14 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Mel van, Allegro, Belmont, and Beam (US 7,914,207 B 1, issued Mar. 29, 2011). 1 ANALYSIS Rejection I - Obviousness over Melvan, Allegro, and Belmont Claim 1 is directed to a disposal bag including an elastic member that "forms an elastic annulus" in which "the elastic annulus is configured to constrict to a closed and relaxed state when the elastic annulus is disconnected from [a] dust chute." Appeal Br. 15 (Claims App.; emphasis added). 2 Claim 10 recites a similar limitation. Id. at 18 (Claims App.). The Examiner finds that Melvan discloses a cinching member (first draw tape) 724 that is "structurally capable of providing circumferential sealing" and notes that "elastic and cinching members are structures to allow the opening of the bag to follow the shape of a tubular insert." Final Act. 2. The Examiner also finds that "the elastic member [ of Mel van] forms an elastic annulus including a minimum width ... , and the elastic annulus is 1 The Examiner presents this rejection as an alternative rejection for claims 3 and 14. See Final Office Action 5 ("Final Act."), dated Aug. 9, 2017. 2 Appeal Brief ("Appeal Br."), filed Mar. 9, 2018. 3 Appeal2018-009137 Application 15/086,431 configured to constrict to a closed and relaxed state when the elastic annulus is disconnected from the dust chute." Id. at 3 ( citing Melvan Figs. 2, 11 ). 3 In the Answer, the Examiner notes that Appellant's Specification "does not disclose that the elastic annulus by itself causes a closed state when in a relaxed and constricted state." Ans. 6 ( emphasis added); Cf claim 1, supra ("the elastic annulus is configured to constrict to a closed and relaxed state when the elastic annulus is disconnected from the dust chute"). 4 Pointing to Appellant's Figures 18 through 20, the Examiner finds that Figures 18 through 20 of the subject application "display the device in a relaxed state" and that Figure 21 of the subject application "display[s] a closed and relaxed state of the bag." Id.; see also Spec. Figs. 18-21. Based on these findings, the Examiner explains that "Melvan demonstrates a bag including an elastic annulus that when removed from a mounting structure will constrict to a relaxed state, and in this state the annulus is in a state which the bag opening is then closed by additional structure of the bag" and that "[t ]his is considered to meet the limitation of claim 1 to a similar degree as the present invention." Ans. 6 (emphasis added). We disagree with the Examiner's findings for the following reasons. Claim 1 explicitly recites that "the elastic annulus is configured to constrict to a closed 5 and relaxed state when the elastic annulus is disconnected from 3 The Examiner relies on the teachings of Allegro and Belmont for limitations other than the limitation discussed above. See Final Act. 3-5. 4 Examiner's Answer ("Ans."), dated July 25, 2018. 5 An ordinary and customary meaning of the term "closed" is "not open." https://www.merriam-webster.com/dictionary/closed (last accessed June 27, 2019). 4 Appeal2018-009137 Application 15/086,431 [a] dust chute." Appeal Br. 15 (Claims App.). As pointed out by the Examiner, the elastic annulus being configured to constrict to a "closed" state means that the elastic annulus "itself' is configured to constrict to a closed (non-open) state when the elastic annulus is disconnected from a dust chute, not that "additional structure" is needed to close the bag opening. Appeal Br. 15 (Claims App.); see also Ans. 6. In addition, we note that Figures 2, 11, and 16, which includes cinching member (first draw tape) 724, represent different embodiments of "elastic" members ofMelvan. See Melvan ,r,r 19, 27, 28, 33. Figures 11 and 16 of Mel van illustrate "open" bags. See Mel van Figs. 11, 16. Thus, it is clear from Figures 11 and 16 ofMelvan that retaining strips 320/321 of Figure 11 and draw tape (cinching member) 724/735 of Figure 16 ofMelvan are not configured to constrict to a closed (non-open) state when disconnected from a dust chute. See Melvan ,r,r 61, 62, 68, 68, Figs. 11, 16; see also Appeal Br. 8, 10; In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972) ("[T]hings patent drawings show clearly are [not] to be disregarded.") ( emphasis in original) With respect to Figure 2 of Mel van, it is not clear from Figure 2 of Melvan whether restraining strip 120 is configured to constrict to a closed (non-open) state when disconnected from a dust chute. When a reference does not disclose that the drawings are to scale and is silent as to dimensions, the drawing features are of little value in establishing measurements. See MPEP Â§ 2125; Hockerson-Halberstadt, Inc. v. Avia Group Int'!, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000) ("[I]t is well established that patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the 5 Appeal2018-009137 Application 15/086,431 specification is completely silent on the issue."). Moreover, the Examiner does not direct us to any discussion in Mel van of restraining strip 120 being configured to constrict to a closed (non-open) state when disconnected from a dust chute. See Final Act. 2-3. To the contrary, the Examiner takes the position that "additional structure" is required to close the bag opening of Melvan. See Ans. 6. 6 For these reasons, the Examiner fails to establish by a preponderance of the evidence the Mel van discloses an elastic annulus that is configured to constrict to a "closed" state when the elastic annulus is disconnected from a dust chute, as required by claim 1. Accordingly, we do not sustain the rejection of claims 1 and 10 and claims 2--4 and 11-15 as unpatentable over Melvan, Allegro, and Belmont. Rejection II - Obviousness over Melvan, Allegro, Belmont, and Beam Claims 3 and 14 depend from claims 1 and 10, respectively. Appeal Br. 16, 19 (Claims App.). The Examiner does not rely on the teachings of Beam in any manner that remedies the deficiencies of the combination of Melvan, Allegro, and Belmont discussed above. Final Act. 5---6. Accordingly, for reasons similar to those discussed above for claims 1 and 6 We further note that the Examiner relies on Allegro as disclosing secondary closure means to "ensur[ e] that items are held within the bag do not escape" (see Final Act. 4 ), but the Examiner does not explain why redundancy in closure is needed for Melvan's bag. See Appeal Br. 8 (arguing that there is no motivation to modify or combine the cited references to allegedly arrive at the claimed invention). See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) ("The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not ... resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies" in the cited references.). 6 Appeal2018-009137 Application 15/086,431 10, we do not sustain the Examiner's rejection of claims 3 and 14 as unpatentable over Melvan, Allegro, Belmont, and Beam. NEW GROUNDS OF REJECTION7 Pursuant to our authority under 37 C.F.R. Â§ 4I.50(b), we reject claims 1--4 and 10-15 under 35 U.S.C. Â§ 112(a) for lack of an adequate written description of the claimed invention. In order to satisfy the written description requirement, "the specification must describe an invention understandable to [a] skilled artisan and show that the inventor actually invented the invention claimed." Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). "[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date." Id. ( citation omitted). To have "possession," "the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed." Ariad, 598 F.3d at 1351. In addition, original claims may fail to satisfy the written description requirement when the invention is claimed and described in functional language but the Specification does not sufficiently identify how the invention achieves the claimed function. Id. at 1349 ("[ A ]n adequate written description of a 7 Because Appellant's application was filed after September 16, 2012, the effective date of the amendments to 35 U.S.C. Â§ 112 enacted by the Leahy- Smith America Invents Act (AIA), the AIA version of the statute applies. See AIA, Pub. L. No. 112-29, Â§ 4(e), 125 Stat. 284,297 (2011). 7 Appeal2018-009137 Application 15/086,431 claimed genus requires more than a generic statement of an invention's boundaries.") (citing Regents of the University of California v. Eli Lilly & Co., 119 F.3d 1559, 1568 (Fed. Cir. 1997)). Compliance with the written description requirement set forth in the first paragraph of 35 U.S.C. Â§ 112 does not require that the claimed subject matter be described identically in the Specification, but the disclosure as originally filed must convey to those skilled in the art that applicant had invented the subject matter later claimed. In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983). The drawings in an application can be relied upon to show that an inventor was in possession of the claimed invention as of the filing date. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1565 (Fed. Cir. 1991) ("[D]rawings alone may be sufficient to provide the 'written description of the invention' required byÂ§ 112, first paragraph."). In the description of Figures 13 through 16d and 18 through 19, Appellant's Specification describes elasticized waist 220 "in a relaxed state forms gathers 230 about the bag circumference whereby the opening diameter is reduced." Spec. ,r 3 5 ( emphasis added), Figs. 13-16d and 18- 19. There is no description in Appellant's Specification of "elasticized waist 220" of bag 100 being configured to constrict to a "closed" state when "elasticized waist 220" is disconnected from a dust chute. Further, the only description in the subject application of the bag being "closed" is found in paragraph 57 of the Specification, which describes "[ fJold the projecting portion of the plastic bag over the bag top opening, securing the adhesives to the plastic bag, sealing it closed." Spec. ,r 57 (emphasis added). 8 Appeal2018-009137 Application 15/086,431 Appellant contends that Figures 20 and 21 of the subject application "are side views showing what is clearly a closed state with regard to the elastic narrowing." Reply Br. 1. 8 We disagree with Appellant's contention for the following reasons. First, Figure 20 of the subject application illustrates "a side view of a waste transfer and disposal bag according to the present invention showing a flaring portion above the elasticized waist 220 of the bag" and Figure 21 of the subject application illustrates "a side view of a filled waste transfer and disposal bag according to the present invention in which projecting portion 210 occludes [closes] the opening." Spec. ,r,r 34, 35 (emphasis added), Figs. 20, 21. A further description of Figure 21 describes that "[a]fter filling the bag, projecting portion 210 is folded over the opening" and "[a]lthough figure 21 shows a gap (at top) between the projecting and lower portions, this would not ordinarily be the case, because the projecting portion can adhere to any adjacent region of the bag and completely occlude [close] the bag's opening." Spec. ,r 59 (emphasis added), Fig. 21. Thus, based on Appellant's disclosure, projecting portion 210 is necessary for the opening of bag 10 to be in a "closed" state. See Spec. ,r,r 35, 57, 59. Second, as Figures 20 and 21, are "side views" of bag 100, it is not clear from Figures 20 and 21 whether elasticized waist 220 is or is not in a "closed" state. See MPEP Â§ 2125; Hockerson 222 F.3d at 956. Appellant contends that Figure 28 of the subject application illustrates "a constricted annulus being prised [ (sic)] apart by hands. Accordingly, Appellant's disclosure does teach relaxed and closed as the terms are 8 Reply Brief ("Reply Br."), filed Sept. 25, 2018. 9 Appeal2018-009137 Application 15/086,431 reasonably understood" and that "[ c ]learly, there is no other constricting mechanism other than the size and configuration of the taught elastic annulus - hence the elastic annulus of Appellant is taught as capable of closing by itself." Reply Br. 1. We disagree with Appellant's contention for the following reasons. First, although elasticized waist 220 appears to be constricted in Figure 28, an illustration of elasticized waist 220 being pried apart is not indicative of elasticized waist 220 originating in a "closed" state. Second, according to the Specification, Figure 28 "shows a bag being grasped by the flared portion." Spec. ,r 42, Fig. 28. A further description of Figure 28 shows "the constricted waist and the flaring of the bag opening." Spec. ,r 61, Fig. 28. There is nothing in the description of Figure 28 of the subject application that describes elasticized waist 220 originating in a "closed" state or being configured to constrict to a "closed" state when "elasticized waist 220" is disconnected from a dust chute. Third, claim 1 does not recite that the elastic annulus is "capable of closing by itself'; rather claim 1 recites "the elastic annulus is configured to constrict to a closed and relaxed state when the elastic annulus is disconnected from the dust chute." Appeal Br. 15 (Claims App.; emphasis added); see also Reply Br. 1. Independent claim 10 recites similar claim language. Appeal Br. 18 (Claims App.). The Federal Circuit has held that when a claim recites an element that is "configured to" achieve a function, the claim requires that the specific element is not only "capable of' performing the recited function, but is also specifically designed to accomplish the function that is claimed. See Aspex Eyewear, Inc. v. Marchan Eyewear, Inc., 672 F.3d. 1335, 1349 (Fed. Cir. 2012) (The court 10 Appeal2018-009137 Application 15/086,431 indicated that claim language "configured to" is construed more narrowly than "capable of," and held that where claim language is construed consistent with "configured to," the claim language requires that the structure must be "designed or configured to accomplish the specified objective, not simply that [it] can be made to serve that purpose."). For the above reasons, we find that the present application does not reasonably convey to those skilled in the art that Appellant had possession of the subject matter as now claimed, specifically, an elastic annulus configured to constrict to a "closed" state when the elastic annulus is disconnected from a dust chute, as called for in independent claims 1 and 10. See Appeal Br. 15, 18 (Claims App.). Claims 2--4 and 11-15 are also rejected based on their dependence from the independent claims. For the above reasons, we REVERSE the Examiner's rejection of claims 1--4 and 10-15 under 35 U.S.C. Â§ 103(a). We enter a NEW GROUND OF REJECTION of claims 1--4 and 10- 15 under 35 U.S.C. Â§ 112(a) for lack of adequate written description. This decision contains a new ground of rejection pursuant to 37 C.F.R. Â§ 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Section 41.50(b) also provides: When the Board enters such a non-final decision, [Appellant], within two months from the date of the decision, must exercise one of the following two options with respect to the new ground 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 11 Appeal2018-009137 Application 15/086,431 rejected, or both, and have the matter reconsidered by the Examiner, in which event the prosecution will be remanded to the Examiner. The new ground of rejection is binding upon the Examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the Examiner, overcomes the new ground of rejection designated in the decision. Should the Examiner reject the claims, Appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under Â§ 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining ProcedureÂ§ 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). REVERSED; 37 C.F.R. Â§ 4I.50(b) 12