Ex Parte McLoughlin et al

Patent Trial and Appeal BoardAug 31, 2018

14563248 (P.T.A.B. Aug. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/563,248 12/08/2014 Andrew James McLaughlin 20350 7590 09/05/2018 KILPATRICK TOWNSEND & STOCKTONLLP Mailstop: IP Docketing - 22 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 UNITED ST A TES OF AMERICA 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. 91845-0926905 (004811US) CONFIRMATION NO. 5554 EXAMINER KATCHEVES, BASILS ART UNIT PAPER NUMBER 3638 NOTIFICATION DATE DELIVERY MODE 09/05/2018 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): ipefiling@kilpatricktownsend.com KTSDocketing2@kilpatrick.foundationip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDREW JAMES MCLOUGHLIN, TIMOTHY ROBERT JONES, RICHARD MATTHEW BOOTH, and DAVID ALEXANDER HAMILTON Appeal2016-008691 Application 14/563,248 1 Technology Center 3600 Before WILLIAM V. SAINDON, CARLL. SILVERMAN and ERIC C. JESCHKE, Administrative Patent Judges. JESCHKE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks review under 35 U.S.C. Â§ 134(a) of the Examiner's decision, as set forth in the Final Office Action dated September 18, 2015 ("Final Act."), rejecting claims 16-30. Claims 1-15 have been cancelled. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. 1 Appellant is the Applicant, Six Continents Hotels, Inc., which, according to the Appeal Brief, is the real party in interest. Appeal Br. 3. Appeal2016-008691 Application 14/563,248 BACKGROUND The disclosed subject matter relates to hotel rooms and methods of retrofitting hotels. Claims 16, 20, 26 are independent. Claim 16 is reproduced below, with emphasis added: 16. A method of retrofitting a hotel, the hotel comprising a pair of structural walls with a space including two original rooms defined between the structural walls, and a dividing wall separating the two original rooms, the method comprising: removing the dividing wall; and replacing the dividing wall with a structure that separates the space into two new rooms and defines separate alcoves in each of the two new rooms, wherein, the two new rooms are shaped like a T and L, respectively; wherein the structure defines a first alcove including a first portion that adds space to the first new room compared to a first original room and takes away space from the second new room compared to a second original room, and a second alcove including a second portion that adds space to the second new room compared to the second original room and takes space away from the first new room compared to the first original room; and wherein the first alcove and the second alcove are each sized and configured to fully contain at least one of a bed, fold-out bed, recliner, or sofa. 2 Appeal2016-008691 Application 14/563,248 REJECTIONS 1. Claims 28 and 30 stand rejected under 35 U.S.C. Â§ 112, first paragraph, as failing to comply with the written description requirement. 2. Claims 16-30 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Travez (US 2003/0226323, published Dec. 11, 2003) and Swensson (US 6,256,936 Bl, issued July 10, 2001). DISCUSSION Rejection I -The rejection of claims 28 and 30 under 35 U.S.C. Â§ 112,first paragraph The Examiner rejected dependent claims 28 and 30 as failing to comply with the written description requirement. Final Act. 2-3. The Examiner stated "[a] partition element aligned with a first portion is not in the specification" and "must be removed." Id. at 3. Appellant argues that "the allegedly unsupported features of claims 28 and 30, including 'a partition element aligned with a first portion,' are adequately described and depicted in the original disclosure." Appeal Br. 18. For the reasons below, we agree with Appellant. The test for compliance with the written description requirement 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." Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). As argued by Appellant, the disclosures and depictions related to separator wall 172 indicate that the inventors had possession of the limitations at issue in claims 28 and 30. See Appeal Br. 17-18 (discussing Spec. ,r,r 42--43, Figs. 2, 3, 5); see also id. at 3 Appeal2016-008691 Application 14/563,248 17 ( arguing that "separator wall 172 is depicted as aligned in the same direction as portions of the S-shaped wall 154 in FIGS. 2 and 3"). To the extent the statement of this Rejection indicates the Examiner's position that the Specification must expressly include the limitations at issue as worded in claims 28 and 30, as noted by Appellant, "the legal standard for written description requirement is not whether a term is found in haec verba in the specification." Appeal Br. 17; see also Ariad, 598 F.3d at 1352 (stating that the written "description requirement does not demand any particular form of disclosure or that the specification recite the claimed invention in haec verba" (internal citations omitted)). As to the Examiner's statement that Appellant "provides no argument" regarding this Rejection (Ans. 3), we disagree. As an initial matter, the Examiner, not Appellant, has the burden of proof on this issue. In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996). Moreover, in the Appeal Brief, Appellant provides various arguments addressing this Rejection. See Appeal Br. 16-18. And, as argued by Appellant, in the Answer, the Examiner does not address the aspects of the Specification identified by Appellant as providing written description support for the limitations at issue. See Reply Br. 5 ("The Answer does not address these descriptions and does not describe why such elements, clearly described and depicted in the original specification and figures, are insufficient to show that the applicant had possession of the claimed invention."); see also Alton, 76 F.3d at 117 5 ("If, on the other hand, the specification contains a description of the claimed invention, albeit not in ipsis verb is (in the identical words), then the examiner ... must provide reasons why one of ordinary skill in the art would not consider the description sufficient."). 4 Appeal2016-008691 Application 14/563,248 In addition to the rejection of claims 28 and 30 under 35 U.S.C. Â§ 112, first paragraph, the Examiner objected to an Amendment (filed June 30, 2015) "under 35 U.S.C. [Â§] 132(a) because it introduces new matter into the disclosure." Final Act. 2. According to the Examiner "[t]he limitations of 'alcove' and 'partition element' are not found in the specification and are new matter." Id. The term "alcove" is recited in independent claims 16 and 20, and the phrase "partition element" is recited in claims 28 and 30. We first address the new matter objection to "partition element." "[T]he kind of adverse decisions of examiners which are reviewable by the board must be those which relate, at least indirect1y, to 1natters involving the rejection of daims." in re Hengehold, 440 F.2d 1395, 1404 (CCPA 1971). Here, the new matter objection of "partition element" relates directly to the Rejection of claims 28 and 30 under 35 U.S.C. Â§ 112, first paragraph discussed above. As argued by Appellant, both tun1 on whether the Specification provides adequate written description support for the amended claim language. See Appeal Br. 7; Reply Br. 2-3 (discussing MPEP Â§ 2163). Thus, our decision as to the written description Rejection also disposes of the con-esponding new rnatter objection as to "partition element." As to this part of the new matter objection, the Examiner states that "the term 'partition element' is broad" and that"[ o ]ne skilled in the art may construe a 'partition element' as a portion of a partition such as the frame within, a locking, or supporting portion of a partition or any component thereof." Ans. 2. We agree with Appellant that this response by the Examiner does not address the relevant issue-i.e., the written description support for the amended claim language. See Reply Br. 2 ( asserting that the 5 Appeal2016-008691 Application 14/563,248 Examiner's "statements [ d]o not accurately reflect the standard by which amended claim language may be deemed 'new matter"'). We tum now to the new matter objection of "alcove." As noted by Appellant, independent claims 16 and 20 (which now recite "alcove") have not been rejected under 35 U.S.C. Â§ 112, first paragraph, as failing to comply with the written description requirement See Reply Br. 2. As further noted by Appellant (id.), in this situation-------in which the claims were amended but the application was not otherwise amended-------the proper course was likely a rejection of the claims including the alleged new matter under 35 U.S.C. Â§ 112, first paragraph, rather than a new matter objection. See \/fPEP Â§ 2163.06 (I) ("If new subject rnatter is added to the disdosure, whether it be in the abstract, the specification, or the drawings, the examiner should object to the introduction of new matter under 35 U.S.C. 132 ... , and require applicant to cancel the new matter. If new matter is added to the claims, the examiner should reject the claims under ... pre-AIA 35 U.S.C. 112, first paragraph- \Witten description requirement." (emphasis added)); see alsoÂ§ 608.04(c) ("[\V]here the aHeged new matter is introduced into or affects the claims, thus necessitating their rejection on this ground, the question becomes an appealable one, and should not be considered on petition even though that new matter has been introduced into the specification also."). Assuming that the Examiner intended to reject claims 16 and 20 (and their dependent claims) under 35 U.S.C. Â§ 112, first paragraph, as failing to comply with the written description requirement based on the Amendment, we now address the new matter objection of "alcove." 6 Appeal2016-008691 Application 14/563,248 Appellant argues that "alcove" means "a small recessed section of a room." Appeal Br. 7 (quoting J\1erriam-\Vebster.com). According to Appellant, support for "alcove" can be found in the Specification's disclosures of (1) providing "separate seating/living space and sleeping spaces for a hotel guest or guests" in paragraph 43 and (2) "creat[ing] separate spaces in each of the rooms" in paragraph 44. ld. Appellant argues that the amendments as to "alcove" are thus a "mere rephrasing of described features," which does not amount to new matter. ld. at 7, 6 ( citing J\1PEP Â§ 2163.07). The Examiner responds that "the term [alcove] has several definitions and the mere term of 'alcove' is not specific enough, in light of the claims of the instant application, to provide a reasonable interpretation." Ans. 2. According to the Examiner, the "mere term 'alcove' is broad enough that a description in the specification is required." Id. Although the term "alcove" is only found in the claims at issue, we agree that Appellant has merely rephrased (for example) the disclosed "separate seating/living space" into the claimed "alcove." Spec. ,T 43; see also 'fv1PEP Â§ 2163.07 ("J\1ere rephrasing of a passage does not constitute new matter. /\ccordingly, a rewording of a passage where the same meaning remains intact is permissible."); Appeal Br. 10 (identifying "alcoves" in the embodiment shmvn in Figure 2 ). 'vVe also agree with Appellant that the Examiner's response does not address the written description support for the amended claim language. See Reply Br. 2. To the extent the Examiner viewed the term "alcove" as somehow broader to a person of ordinary skill in the art than that which is supported by the Specification, we have insufficient argument or evidence upon which to sustain such a rejection. 7 Appeal2016-008691 Application 14/563,248 For these reasons, we do not sustain the rejection of claims 28 and 30 under 35 U.S.C. Â§ 112, first paragraph, nor the new matter objections to the Amendment. Rejection 2-The rejection of claims 16--30 under 35 U.S.C. Â§ 103(a) Independent claim 16 recites a "method of retrofitting a hotel, ... the method comprising: removing the dividing wall; and replacing the dividing wall with a structure that separates the space into two new rooms and defines separate alcoves in each of the two new rooms, wherein the two new rooms are shaped like a T and L" and, among other requirements, "wherein the first alcove and the second alcove are each sized and configured to fully contain at least one of a bed, fold-out bed, recliner, or sofa." Appeal Br. 20 (Claims App.) (emphasis added). Independent claims 20 and 26 recite requirements similar to that shown with emphasis in claim 16. See id. at 21 ( claim 20 reciting, among other requirements, that "at least one of the alcoves is sized to accommodate at least one of a desk, a bed, or a couch"), 22 ( claim 26 reciting, among other requirements, an "offset having a depth at least sized to accommodate one or more of a bed, fold-out bed, recliner, or sofa"). 2 Addressing the three independent claims together, the Examiner relied on Travez for certain limitations but stated that Travez "does not specifically disclose the dividing wall as S shaped to form a T and an L shape for adjoining rooms." Final Act. 4. The Examiner found, however, that "Swensson discloses a modular structure (fig. 16) for use in rooms which separates the rooms ( see marked figure), the structure being S shaped and 2 We refer to these limitations, collectively, as the "sizing limitations." 8 Appeal2016-008691 Application 14/563,248 forming a T alcove in one room and an L alcove ( see T and L alcoves in figure below) in an adjacent room." Id. The Examiner provided the following annotated version of a portion of Figure 16 of Swensson: Final Act. 5. Swensson describes Figure 16 as "a plan view of several alternative lay-outs for room interiors." Swensson, 2:32-33. To a portion of Figure 16, the Examiner added annotations identifying various aspects, including an "S shape dividing structure" with a "first portion," a "perpendicular segment (second portion)," and a "third portion," as well as identifying a "T shape" and an "L shape." Final Act. 5. The Examiner 9 Appeal2016-008691 Application 14/563,248 stated that the "alcoves [are] inherently capable of containing a bed or recliner." Id. at 4. 3 According to the Examiner, it would have been obvious for one of ordinary skill in the art at the time of the invention "to modify Travez by using the S shaped dividing structure disclosed by Swensson as a mere design choice since Travez discloses the use of most any shape." Id. at 6. The Examiner added that "[t]his would have been an obvious design choice based upon the intended use of the rooms." Id. Appellant argues that the Examiner's inherency findings as to the sizing limitation in claim 16 ( shown with emphasis above) "are unsupported and legally insufficient." Appeal Br. 11. Appellant relies on the same argument for the sizing limitations in claims 20 and 26. See id. at 14, 15. For the reasons below, we agree with Appellant. A prima facie case of inherency requires a basis in fact and/or technical reasoning to reasonably support a determination that the allegedly inherent characteristic as recited in the sizing limitations necessarily flows from the teachings of the appHed prior art. Ex pa rte TVhalen, 89 USPQ2d 1078, l 083 (BP AI 2008) (precedential). A .. s argued by Appe11ant, the Examiner has not provided the necessary basis in fact or technical reasoning to support the relevant findings here. See Appeal Br. 10----11. 3 Although the Examiner does not expressly identify in annotated Figure 16 the "first alcove" or "second alcove" of claim 16 ( or the related requirements in claims 20 or 26), we understand (1) the area between the identified "first portion" and the identified "L shape" as the "first alcove" and (2) the area between the identified "third portion" and the identified "T shape" as the "second alcove." 10 Appeal2016-008691 Application 14/563,248 We first address the scope of the term "bed" in the independent claims. The Examiner stated that "most any space may accommodate a bed" and that "[a] bed may simply by a fold out canvas bed with folding legs," which, according to the Examiner, "can easily be folded and leaned against a wall." Final Act. 7. The Examiner also stated that a "bed" "may be a rolled heavy blanket such as a sleeping bag," which "may also fit in this area." Id. In the Answer, the Examiner states that "[ c Jots are well known as being temporary sleeping beds and are popular because of their compactness" and that "[a] cot may be folded and rolled upon itself to the form of a roll." Ans. 3. According to the Examiner, a cot "may be placed along most any alcove and is construed as being a type of bed." Id. We agree with Appellant that the Examiner has applied an unreasonably broad construction of "bed," when considering that term in light of the Specification as it would be interpreted by one of ordinary skill in the art. See In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990). The record supports Appellant's proposed construction of a "bed" as "a piece of furniture on or in which to lie and sleep." Reply Br. 7. As an initial matter, we note that claims 16 and 26 distinguish between a "bed" and a "fold-out bed." Cf Final Act. 7 (stating that "[a] bed may simply by a fold out canvas bed with folding legs"). Moreover, as noted by Appellant, the Specification includes numerous depictions and descriptions in which a "bed" is a piece of furniture on or in which to lie and sleep rather than, for example, anything on or in which to lie or sleep. See, e.g., Spec. ,r 1 ( discussing how "[ e Jach [hotel] room includes a bed"), ,r 34 ( discussing "beds 50, 52" in Figure 1 ), ,r 40 ( discussing "bed[ s] 150, 152" in Figure 2), ,r 51 ( discussing "bed 242" in Figure 7). We further note that the sleeping arrangements in the context 11 Appeal2016-008691 Application 14/563,248 of the Specification as a whole are for hotels, rather than just any setting. For these reasons, we agree with Appellant that "bed" as recited in the claims at issue does not encompass any of ( 1) a "fold out canvas bed with folding legs," (2) "a rolled heavy blanket such as a sleeping bag," or (3) a "cot [that] may be folded and rolled upon itself to the form of a roll." Final Act. 7; Ans. 3. Moreover, even assuming that "bed" includes these options, we agree with Appellant that the Examiner has not adequately shown that the relied- upon areas in Swensson necessarily satisfy the sizing limitations. See rVhalen, 89 USPQ2d at l 083. We agree with Appellant that Swensson (1) does not describe the function of the relied-upon areas, (2) does not include dimensions for those areas, and (3) does not indicate that Figure 16 is drawn to scale. Appeal Br. 11; see Reply Br. 7 ( arguing "there is no indication in Swensson that the alleged corresponding spaces are sized and configured to full contain 'a cot' either"). 4 We tum now to the term "fold-out bed" in claims 16 and 26. In the Answer, the Examiner states that "fold out beds may rest along the wall in an upright position when not in use and fold down when in use" and that "[t]hese require very little space." Ans. 3. For the same reasons provided in the prior paragraph, even assuming the correctness of these findings as to "fold-out bed[s]" generally, the Examiner has not adequately shown that the 4 To the extent the Examiner takes the position that a "crib[]" falls within the scope of "bed" as discussed above, we generally agree. See Ans. 3 (stating that a "bed" could be "cots, cribs, etc."). For the reasons discussed in this paragraph, however, the Examiner has not adequately shown, however, that the relied-upon areas in Swensson necessarily satisfy the sizing limitations when viewing a "crib" as a "bed." 12 Appeal2016-008691 Application 14/563,248 relied-upon areas in Swensson necessarily satisfy the sizing limitations. See Reply Br. 6 ("Whether or not fold out beds 'require very little space' does not establish that the allegedly corresponding spaces in Swensson are sized and configured to fully contain at least one of a bed, fold-out bed, recliner, or sofa, as claimed."). For these reasons, we do not sustain the rejection of independent claims 16, 20, and 26, and also do not sustain the rejection of claims 17-19 (which depend from claim 16), claims 21-25 (which depend from claim 20), and claims 27 and 28 (which depend from claim 26), as unpatentable over Travez and Swensson. We tum now to an alternative argument by Appellant regarding this Rejection. Appellant contends that the features in the sizing limitations "are clearly described in the [S]pecification as providing an advantage and particular purpose," thereby "render[ing] the 'design choice' rationale inapplicable." Appeal Br. 12. We agree that the Examiner has not provided adequate articulated reasoning to combine Travez and Swensson to support the legal conclusion of obviousness here. In the context of a rejection based on design choice, a relevant issue is whether the alleged differences between the claimed invention and the prior art "result in a difference in function or give unexpected results" or whether they are "no more than obvious variations consistent with the principles known in that art." See In re Rice, 341 F.2d 309,314 (CCPA 1965). Here, we agree with Appellant that modifying Travez based on Swensson as proposed to allegedly arrive at the claimed invention would result in a "difference in function" as compared to Travez alone. As noted by 13 Appeal2016-008691 Application 14/563,248 Appellant, the Specification identifies certain added functionality provided with the claimed configurations. See Appeal Br. 12 (discussing Spec. ,r 43). As to this argument, the Examiner responds that ( 1) the "two references are related to various room shapes and may be combined since they are related in the art" and (2) "Travez may be modified by Swensson since Travez discloses the panels system as being modular and taking most any form and Swensson discloses differing wall shapes." Ans. 3. With these statements, the Examiner addresses why one of ordinary skill in the art could have modified Travez as proposed, but the Examiner does not adequately address why one would have done so, as is necessary in an obviousness analysis. See Belden Inc. v. Berk-Tek LLC, 805 F .3d 1064, 1073 (Fed. Cir. 2015) ("[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention."); see also Reply Br. 8 ("[C]ontrary to the suggestion in the Answer, the mere fact that references could be combined is not sufficient to establish obviousness."). The lack of adequate reasoning here provides an additional and alternative basis to not sustain the rejection of claims 16-30 as unpatentable over Travez and Swensson. DECISION We reverse the decision to reject claims 28 and 30 under 35 U.S.C. Â§ 112, first paragraph, and we reverse the decision to reject claims 16-30 under 35 U.S.C. Â§ 103(a). REVERSED 14