Ex Parte KON et al

Patent Trial and Appeal BoardMar 22, 2016

12025858 (P.T.A.B. Mar. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/025,858 02/05/2008 Richard Henry KON 28410 7590 03/24/2016 BERENATO & WHITE, LLC 6550 ROCK SPRING DRIVE SUITE 240 BETHESDA, MD 20817 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. 16240.M365 C 2038 EXAMINER AKBASLI, ALP A ART UNIT PAPER NUMBER 3635 NOTIFICATION DATE DELIVERY MODE 03/24/2016 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): uspto.filings@bw-iplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RICHARD HENRY KON, GARY THOMAS FAGAN, and MATTHEW DONALD WHITE Appeal2013-009386 Application 12/025,858 Technology Center 3600 Before JOHN C. KERINS, CHARLES N. GREENHUT, and ANNETTE R. REIMERS, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Richard Henry Kon et al. (Appellants) seek our review under 35 U.S.C. Â§ 134 of the Examiner's final rejection of claims 1-18. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE, and enter NEW GROUNDS OF REJECTION UNDER 37 C.F.R. Â§ 41.50(b). An oral hearing was conducted on February 18, 2016, with David S. Taylor, Esq., appearing on behalf of Appellants. Appeal2013-009386 Application 12/025,858 THE INVENTION Appellants' invention is directed to a door lite assembly and a door including a door lite assembly. Independent claim 1 is illustrative: 1. A door lite assembly, comprising: a translucent panel having a periphery and opposite first and second sides; a high-impact plastic frame extending along the periphery of the translucent panel and comprising first and second panel support portions having first and second panel support lips facing the first and second sides of the translucent panel, respectively; and first and second door receiving portions having first and second door body receiving lips, respectively, spaced apart from one another to permit receipt of a door body between the first and second door body receiving lips; and a chemical sealant establishing a \~1ater-proof seal bet\~1een the first and second panel supporting lips and the translucent panel, wherein the high-impact plastic frame, translucent panel and the sealant establish a door lite assembly capable of withstanding, without assistance of fastener attachment of the door lite assembly into the door body, the effects of hurricane conditions as measured by successful passing of Testing Application Standard 201-94 (TAS 201) based on a missile velocity of 35 miles per hour and Testing Application Standard 203-94 (T AS 203) based on a 9000-cycle regime applied consecutively, wherein the door lite assembly is free of holes positioned for receiving fasteners into the door body. 2 Appeal2013-009386 Application 12/025,858 THE REJECTIONS Appellants appeal from the following rejections: (i) claims 1, 7-10, and 16-18 under 35 U.S.C. Â§ 103(a) as being unpatentable over Pease (US 3,903,669, issued Sept. 9, 1975) in view of Kobayashi (US 2003/0159375 Al, published Aug. 28, 2003); (ii) claims 2 and 11under35 U.S.C. Â§103(a) as being unpatentable over Pease in view of Kobayashi and Pelfrey (US 7, 726,092 B 1, issued June 1, 2010); (iii) claims 3, 5, 12, and 14 under 35 U.S.C. Â§103(a) as being unpatentable over Pease in view of Kobayashi and Clement (US 4,189,457, issued Feb. 19, 1980); (iv) claims 4 and 13 under 35 U.S.C. Â§103(a) as being unpatentable over Pease in view of Kobayashi and Trill (US 2002/0005512 Al, published Jan. 17,2002);and (v) claims 6 and 15 under 35 U.S.C. Â§ 103(a) as being unpatentable over Pease in view of Kobayashi and DeBlock (US 6,546,682 Bl, issued Apr. 15, 2003); ANALYSIS Re} ections (i)-(v) Each of the rejections under 35 U.S.C. Â§ 103(a) involves the teaching in Pease of a structure bearing a high degree of similarity to the structure recited in at least Appellants' claims 1, 7, 10, and 16. Final Act. 2---6. Pease additionally discloses that the molding member or frame of its window lite assembly may be made of acrylonitrile-butadiene-styrene (ABS), a material well known for its high impact resistant properties. See, fn. 1, infra. 3 Appeal2013-009386 Application 12/025,858 Where Pease appears to deviate from the claimed window lite assembly is in its possible performance under simulated hurricane conditions. The claims require that the recited window lite assembly, or window lite assembly and door, be capable of withstanding the effects of hurricane conditions as measured by successful passing of T AS 201 and T AS 203. In apparent contrast, Pease describes that As assembled, the molding unit [frame] has good stability due to the type of connection between connector pin 52 and the studs 24a and 24b .... In a like manner, the described connection takes up normal stresses and strains from temperature change, humidity change, jarring, etc. Pease, col. 6, 11. 28--45. Were it not for the above statement regarding the ability of the Pease structure to take up normal stresses and strains, and, inferentially, potentially not necessarily capable of withstanding hurricane-like forces, we find that the Pease reference would have been properly citable in an anticipation rejection under 35 U.S.C. Â§ 102, under the premise that where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). However, our jurisprudence cautions that, before an applicant can be put to this burdensome task, the Patent and Trademark Office must provide sufficient evidence or scientific reasoning to establish there is a sound basis for the belief that the functional limitation is an inherent characteristic of the prior art. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). The explicit 4 Appeal2013-009386 Application 12/025,858 statement in Pease undermines the reasoning that, because the prior art discloses essentially the same structure, the functional language directed to the ability to pass tests indicative of hurricane-worthiness must necessarily be present in the Pease structure. The Examiner acknowledges that Pease fails to disclose that the structure therein is capable of passing T AS 201 and T AS 203. Final Act. 2. The Examiner points to Kobayashi as evidencing a door assembly capable of passing those test standards, and concludes that "[i]t would [have been] obvious ... to use materials in the [Pease] door ... that are able to withstand tests that mimic hurricane loads to ensure the door will last in such an extreme event and to meet the building standards." Id. The Examiner, however, does not point to evidence nor explain using sound technical reasoning, as to how the Pease structure is proposed to be modified in order to be capable of passing TAS 201 and TAS 203. The Examiner merely "submits that making and/or testing a door to withstand known standards is well within the ability of one of ordinary skill in the art." Ans. 9--10. The Examiner's position fails to establish a prima facie obviousness of the claims at issue. The rejections of claims 1-18 under 35 U.S.C. Â§103(a) as being unpatentable over Pease and the additional cited references are not sustained. 5 Appeal2013-009386 Application 12/025,858 NEW GROUNDS OF REJECTION--Â§ 41.50(B) Claims 1-18-35 US.C. Â§ 112,first paragraph-Written Description Claims 1-18 are rejected, in a new ground of rejection pursuant to 37 C.F .R. Â§ 41. 50(b ), as failing to meet the written description requirement thereof. The first paragraph of 35 U.S.C. Â§ 112 contains a written description requirement that is separate and distinct from the enablement requirement. Ariad Pharms., Inc. v. EliLilly & Co., 598 F.3d 1336, 1340 (Fed. Cir. 2010) (en bane). To satisfy the written description requirement, the specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed. Cir. 1991 ). Specifically, the specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention. Id. at 1562-63; Ariad, 598 F.3d at 1351. The written description requirement of 35 U.S.C. 112, first paragraph applies to all claims including original claims that are part of the disclosure as filed. Ariad, 598 F.3d at 1349. As stated by the Federal Circuit, "[a]lthough many original claims will satisfy the written description requirement, certain claims may not." Ariad, 598 F.3d at 1349; see also LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1343-46 (Fed. Cir. 2005); Regents' of the University of California v. Eli Lilly & Co., 119 F.3d 1559, 1568 (Fed. Cir. 1997). For instance, generic claim language in the original disclosure does not satisfy the written description requirement if 6 Appeal2013-009386 Application 12/025,858 it fails to support the scope of the genus claimed. Ariad, 598 F.3d at 1350; Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968 (Fed. Cir. 2002) (holding that generic claim language appearing in ipsis verbis in the original specification did not satisfy the written description requirement because it failed to support the scope of the genus claimed); Fiers v. Revel, 984 F.2d 1164, 1170 (Fed. Cir. 1993) (rejecting the argument that "only similar language in the specification or original claims is necessary to satisfy the written description requirement"). 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. Ariad, 598 F.3d at 1349 ("[A]n adequate written description of a claimed genus requires more than a generic statement of an invention's boundaries.") (citing Eli Lilly, 119 F.3d at 1568). In this case, we find that all of claims 1-18 encompass far more than permitted by Appellants' disclosure. Appellants denigrate the Pease reference as "only requir[ing] that its connector 'takes up normal stresses and strains from temperature change, humidity change, jarring, etc."' Reply Br. 2, citing Pease, col. 6, 11. 44--46. Yet Pease structurally "anticipates" claim 1, in that it discloses structural features meeting all limitations set forth therein. We note, in this respect, that Pease discloses that an injection- molded acrylonitrile-butadiene-styrene (ABS), a well-known high impact resistant material, 1 may be used for the frame or molding member therein. 1 See, e.g., Goldberg (US 3,531,548, issued Sep. 29, 1970); Hagerman (US 3,555,120, issued Jan. 12, 1971); Paxton (US 3,879,496, issued Apr. 22, 197 5); "Acrylonitrile butadiene styrene", Wikipedia ("The most important 7 Appeal2013-009386 Application 12/025,858 Pease, col. 4, 11. 26-31. The only difference between Pease and the invention recited in claim 1 is that Appellants' device is claimed as being capable of passing two standards indicative of ability to withstand hurricane conditions. Looking to Appellants' Specification for a possible explanation of this seeming variance in performance from Pease, we find nothing at a generic structural level. Thus, the limitation reciting that the assembly is capable of passing the tests called for in the recited standards is seen as nothing more than a recitation of a desired outcome or desired properties. Although Appellants do not provide even a single working example evidencing that something that they have invented is capable of passing the recited test standards, we will take at face value that such a product was developed. The evidence provided in the Specification is to the effect that a particular material used for the frame, having particular tensile strength and impact strength levels, when used with a chemical sealant having a particular maximum Shore A hardness, with a particular laminate used for the translucent panel, and with the frame being made of two frame members joined by a frame connector, and the frame having a particular thickness, and giving Appellants the benefit of the doubt, "describes an inventive hurricane door light" that passes the stated standard tests. Spec., para. 67. mechanical properties of ABS are impact resistance and toughness.") accessed at https:// en. wikipedia.org/wiki/ Acrylonitrile_butadiene_styrene, March 1, 2016. 8 Appeal2013-009386 Application 12/025,858 This is notwithstanding the boilerplate statement that "the invention is not limited to the illustrated and described features." Id. Neither claim 1, nor any of claims 2-18, is limited in scope to the above-listed conditions. The Specification provides absolutely no guidance as to which of these aspects or combination of aspects are necessary or critical (as some or all must be, in order to differentiate structurally and functionally over Pease), and which are not. Ariad, 598 F .3d at 1349 ("the specification must demonstrate that the applicant has made a generic invention that achieves the claimed result and do so by showing that the applicant has invented species sufficient to support a claim to the functionally-defined genus"). The evidence in the record in the form of the Pease reference is to the effect that an essentially structurally identical door lite is described as being capable of sustaining merely normal forces. Appellants disclose little to nothing more than that already contributed by Pease, yet seek a patent directed to a product having potentially different performance characteristics, without adequately structurally describing that which is seen as contributing to the different characteristics. "Every patent must describe an invention. It is part of the quid pro quo of a patent; one describes an 9 Appeal2013-009386 Application 12/025,858 invention, and, if the law's other requirements are met, one obtains a patent." Id. at 1345. Claims 1-18 are thus rejected under 35 U.S.C. Â§ 112, first paragraph, as failing to meet the written description requirement thereof. This rejection is a NEW GROUND OF REJECTION pursuant to 37 C.F.R. Â§ 41.50(b). Claims 1-9-35 USCÂ§ 112, second paragraph-Indefiniteness The second paragraph of 35 U.S.C. Â§ 112 includes a requirement that the claims "particularly pointing out and distinctly claim the subject matter which the applicant regards as his invention." It has been stated that the "essence of that requirement is that the language of the claims must make it clear what subject matter they encompass." In re Hammack, 427 F.2d 1378, 1382 (CCPA 1970). This has been frequently stated in a shortened form as a requirement that the claims set forth the "metes and bounds" of their coverage. See, e.g., In re Venezia, 530 F.2d 956, 958 (CCPA 1976); In re Goffe, 526 F.2d 1393, 1397 (CCPA 1975); In re Watson, 517 F.2d 465, 477 (CCPA 1975); In re Knowlton, 481F.2d1357, 1366 (CCPA 1973). This requirement has usually been viewed from the perspective of a potential infringer, "so that they may more readily and accurately determine the boundaries of protection involved and evaluate the possibility of infringement and dominance." Hammack, 427 F.2d at 1382. Claims 1-9 are directed to a door lite assembly claimed to be "capable of withstanding, without assistance of fastener attachment of the door lite assembly into the door body, the effects of hurricane conditions as measured by successful passing of Testing Application Standard 201-94 (TAS 201) ... 10 Appeal2013-009386 Application 12/025,858 and Testing Application Standard 203-94 (TAS 203)." These claims do not recite the door lite assembly in combination with a door. Testing standards TAS 201 and TAS 203 each require that the test specimen include, "[t]he entire assembled unit submitted for test, including but not limited to anchorage devices and structure to which product is to be mounted." TAS 201, Â§ 3.2.2; TAS 203, Â§ 3.2.2 The test standards do not contemplate testing a door lite subassembly by itself, nor to allow for a determination as to whether such subassembly passes or does not pass the tests set forth in the standards. As such, it does not appear to be possible to determine whether any given door lite subassembly lacking a door to which it is to be mounted, falls within or outside the scope of claims 1-9. It is possible, for example, that the same door lite assembly, when secured to a particular door in a particular manner, would pass T AS 201 and T AS 203, whereas, when secured to some other door, would not pass the standards. Accordingly, claims 1-9 are not "written in such a way that they give notice to the public of the extent of the legal protection afforded by the patent, so that interested members of the public, e.g., competitors of the patent owner, can determine whether or not they infringe," which is the primary purpose of the definiteness requirement in 35 U.S.C. Â§112, second paragraph. All Dental Prodx, LLC v. Advantage Dental Prods., 309 F.3d 2 T AS 201 accessed at http://www2.iccsafe.org/states/Florida2001/FL_TestProtocols/PDFs/Testing %20Application%20Standard%20201-94.pdf; T AS 203 accessed at http://www2.iccsafe.org/states/Florida2001/FL_TestProtocols/PDFs/Testing %20Application%20Standard%20203-94.pdf, last accessed on March 9, 2016. 11 Appeal2013-009386 Application 12/025,858 774, 779-80 (Fed. Cir. 2002). Claims 1-9 are thus rejected under 35 U.S.C. Â§ 112, second paragraph, as being indefinite. This rejection is a NEW GROUND OF REJECTION pursuant to 37 C.F.R. Â§ 41.50(b). DECISION The rejections of claims 1-18 under 35 U.S.C. Â§ 103(a) are REVERSED. Claims 1-18 are rejected, in a NEW GROUND OF REJECTION, under 35 U.S.C. Â§ 112, first paragraph, as failing to meet the written description requirement thereof. Claims 1-9 are rejected, in a NEW GROUND OF REJECTION, under 35 U.S.C. Â§ 112, second paragraph, as being indefinite. 37 C.F.R. Â§ 41.50(b) provides that, "[A] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Regarding the new grounds of rejection, Appellants must, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, exercise one of the following options with respect to the new ground of rejection, in order 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 ... ; or (2) Request rehearing. Request that the proceeding be reheard under Â§ 41.52 by the Board upon the same record .... 12 Appeal2013-009386 Application 12/025,858 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). REVERSED; 37 C.F.R. Â§ 41.50(b) 13