Ex Parte Schultz

Patent Trial and Appeal BoardApr 20, 2015

12757366 (P.T.A.B. Apr. 20, 2015)

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. 12/757,366 04/09/2010 Richard John Schultz SSIC 200024US01 2523 27885 7590 04/21/2015 FAY SHARPE LLP 1228 Euclid Avenue, 5th Floor The Halle Building Cleveland, OH 44115 EXAMINER LEWIS, JUSTIN V ART UNIT PAPER NUMBER 3725 MAIL DATE DELIVERY MODE 04/21/2015 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 RICHARD JOHN SCHULTZ ____________ Appeal 2013-003932 Application 12/757,366 Technology Center 3700 ____________________ Before ANNETTE R. REIMERS, JILL D. HILL, and TIMOTHY J. GOODSON, Administrative Patent Judges. GOODSON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant Richard John Schultz appeals under 35 U.S.C. § 134(a) from the rejection of claims 1–17. App. Br. 6. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER Claim 7 illustrates the subject matter on appeal and is reproduced below: 7. An inspection mat to control the quality of inspection and cleaning of surgical, medical and veterinary instruments comprising: Appeal 2013-003932 Application 12/757,366 2 illustrations gathered of the instruments to be cleaned and inspected; portions identified of the instruments most subject to wear and retention of contamination and these portions marked on the illustrations; illustrations annotated with instructions on inspection and cleaning with reference to the marked portions; and the annotated illustrations positioned on an upper surface of a resilient, smooth, waterproof mat. PRIOR ART The Examiner relies on the following evidence: Perelli Fleming Chickvara US 2003/0033740 A1 US 2003/0192121 A1 US 2005/0277105 A1 Feb. 20, 2003 Oct. 16, 2003 Dec. 15, 2005 GROUND OF REJECTION Claims 1–17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Perelli, Chickvara, and Fleming. Ans. 4. OPINION Claims 7–11 The Examiner finds that the combination of Perelli, Chickvara, and Fleming teaches a resilient, smooth, waterproof mat with annotated illustrations positioned on its upper surface. Ans. 8. Appellant does not dispute the Examiner’s finding that the cited references teach a resilient, smooth, waterproof mat, but does argue that the cited references do not disclose illustrations as claimed. See App. Br. 11–12. Specifically, Appellant argues that the cited references do not disclose “illustrations gathered of the instruments to be cleaned and inspected,” as recited in claim Appeal 2013-003932 Application 12/757,366 3 7. Id. at 11. The Examiner finds that the freezer depicted in Chickvara’s Figure 8 is an illustration of an instrument to be cleaned and inspected. See Ans. 17. Appellant argues that a freezer is not an instrument, but provides no evidence or persuasive explanation as to why a freezer cannot reasonably be considered an instrument. App. Br. 11, Reply Br. 5. We note that Appellant does not contest the Examiner’s finding that the freezer shown in Chickvara is an item to be cleaned and inspected (Ans. 17), nor does Appellant contend that the preamble serves as a limitation in claim 7. Instead, Appellant simply relies on the word “instrument” to distinguish Chickvara’s upright freezer. See id. Appellant does not point to, and we do not find, any express definition of “instrument” in the Specification. An ordinary dictionary definition of instrument is “a tool or device used for a particular purpose.” See http://www.merriam- webster.com/dictionary/instrument (last visited Apr. 3, 2015). Upright freezers are used for the particular purpose of keeping items cold. Thus, applying the broadest reasonable interpretation, the Examiner did not err in finding that Chickvara’s freezer is an instrument. Appellant also challenges the Examiner’s finding that Chickvara discloses “illustrations annotated with instructions on inspection and cleaning with reference to the marked portions,” as recited in claim 7. App. Br. 11. In particular, Appellant argues that in Chickvara, “the instructions . . . do not refer to marked portions of illustrations on the mat. Further, Chickvara does not annotate illustrations. . . . The instructions are merely placed proximate to the illustration.” Id.; see also Reply Br. 5. We are not persuaded by Appellant’s attempt to distinguish annotating from placing Appeal 2013-003932 Application 12/757,366 4 instructions next to an illustration.1 With regard to Appellant’s argument that Chickvara’s instructions do not refer to marked portions, the Examiner agrees that the cited references do not disclose “portions identified of the instruments most subject to wear and retention of contamination and these portions marked on the illustrations.” Ans. 8–9. But the Examiner determines that these limitations are directed to printed matter that is not functionally related to the substrate, which therefore cannot be relied on to patentably distinguish the claim from the prior art. Id. at 9 (citing In re Gulack, 703 F.2d 1381, 1385–86 (Fed. Cir. 1983)). Appellant argues that the Examiner’s application of the printed matter doctrine is improper because the illustrations have a functional relationship to the substrate: “Namely, the illustrations allow the mat to be employed to control the quality of inspection and cleaning of surgical, medical and veterinary instruments. Without the illustrations, the mat would not be able to perform this function.” App. Br. 12. We are mindful of the Federal Circuit’s guidance that the Patent Office must consider all limitations in determining patentability, and may not disregard limitations comprised of printed matter. In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994); In re Gulack, 703 F.2d 1381, 1385 n.8 (Fed. Cir. 1983). Nevertheless, “[w]here the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability.” Gulack, 703 F.2d at 1385; see also King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 1 An ordinary dictionary definition of “annotate” is “to add notes or comments to (a text, book, drawing, etc.).” See http://www.merriam- webster.com/dictionary/annotate (last visited Apr. 3, 2015). Appeal 2013-003932 Application 12/757,366 5 2010) (“[T]he relevant question is whether ‘there exists any new and unobvious functional relationship between the printed matter and the substrate.’”) (citations omitted). Here, we agree with the Examiner that the limitations requiring markings on the illustrations cannot serve as the basis for patentability over the cited references because there is no functional relationship between the illustration and the mat. Appellant’s argument that the illustrations allow the mat to be employed for inspection and cleaning does not demonstrate a functional relationship. In essence, Appellant argues that the illustrations functionally interrelate with the mat because they represent instructions for using the mat to carry out inspection and cleaning. Yet the Federal Circuit’s precedents have “foreclosed the argument that simply adding new instructions to a known product creates the functional relationship necessary to distinguish the product from the prior art.” AstraZeneca LP v. Apotex Inc., 633 F.3d 1042, 1065 (Fed. Cir. 2010) (citing In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004)). In Ngai, the court found that, in a kit claim, recited instructions for using the kit were not entitled to patentable weight because “the printed matter in no way depends on the kit, and the kit does not depend on the printed matter. All that the printed matter does is teach a new use for an existing product.” Ngai, 367 F.3d at 1339. Likewise, here, the illustrations on the mat do not depend on the mat, and the mat does not depend on the illustrations. The illustrations simply convey information to a user about cleaning and inspection operations that can be carried out on the mat. “The rationale behind [the printed matter] line of cases is preventing the indefinite patenting of known products by the simple inclusion of novel, Appeal 2013-003932 Application 12/757,366 6 yet functionally unrelated limitations.” King Pharm., 616 F.3d at 1279 (Fed. Cir. 2010); see also Ngai, 367 F.3d at 1339 (“If we were to adopt Ngai’s position, anyone could continue patenting a product indefinitely provided that they add a new instruction sheet to the product.”). In this case, permitting Appellant to distinguish the prior art based on the contents of the illustrations appearing on the mat would allow continued patenting of a known product by the mere inclusion of novel non-functional descriptive material. C.f. Ans. 16 (expressing repeated patenting concern with respect to other rejected claims). For the foregoing reasons, we sustain the Examiner’s rejection of claim 7. Dependent claim 8 recites “illustrations gathered of the testing procedures and standards.” Appellant contests the Examiner’s finding that Chickvara discloses this limitation insofar as Chickvara shows illustrations of equipment (such as safety eyewear and gloves) used in carrying out the maintenance of the upright freezer. App. Br. 12; see also Ans. 6, Chickvara Fig. 8. Appellant argues that “the equipment used to perform a procedure does not illustrate a procedure.” Reply Br. 5; see also App. Br. 12. We disagree that illustrations of equipment used to perform a procedure cannot reasonably be considered illustrations of the procedure. Moreover, for the reasons discussed above with respect to claim 7, the content of the recited illustrations on the mat constitutes nonfunctional printed matter that cannot be relied on to distinguish the prior art. Appellant also challenges the Examiner’s finding that Chickvara discloses testing illustrations annotated with instructions, because “the illustrations of the cleaning equipment are not annotated. The instructions are merely placed proximate to the illustrations.” App. Br. 12–13; see also Appeal 2013-003932 Application 12/757,366 7 Reply Br. 5. However, we are not persuaded that it is unreasonable for the Examiner to interpret Chickvara’s instructions, which refer to illustrated items and are placed proximate to the illustrations, as annotations to the illustrations. Thus, we sustain the Examiner’s rejection of claim 8. Appellant does not present any argument for the patentability of claims 9–11 separate from claim 7, from which they depend. Therefore, we sustain the rejection of claims 9–11. Claims 1–6 With respect to claim 1, Appellant argues that the cited references do not disclose gathering illustrations and identifying portions of the gathered illustrations, nor do they disclose annotating illustrations. App. Br. 6–9. These arguments parallel the arguments Appellant presented regarding the “illustrations gathered” and “illustrations annotated” limitations in claim 7, and they are not persuasive for the reasons discussed above. An argument that Appellant presents for claim 1 beyond those presented for claim 7 is that the Examiner’s application of the printed matter doctrine to claim 1 is improper because claim 1 is a method claim. App. Br. 9. While most of the case law concerning the printed matter doctrine involves claims to a product, the doctrine has also been applied to method claims. For example, the Court of Customs and Patent Appeals held that a claim directed to writing sheet music was properly rejected because “[i]t is well established in patent law that invention cannot rest alone in novel printing arrangement, although it may reside in some physical structures of printed matter.” In re Rice, 132 F.2d 140, 141 (CCPA 1942) (citations omitted). Rice noted that earlier printed matter cases “did not involve Appeal 2013-003932 Application 12/757,366 8 method claims, but the principles therein declared are equally applicable to method and article claims.” Id. More recently, in King Pharmaceuticals, the Federal Circuit held that an otherwise anticipated method claim does not become patentable because it includes a step of “informing” someone about the existence of an inherent property of that method. 616 F.3d at 1278. The Court explained that the rationale behind printed matter cases—that is, preventing the indefinite patenting of known products by the simple inclusion of novel, yet functionally unrelated limitations—extends to the situation wherein an instructional limitation is added to a method, as opposed to a product, known in the art. Id. at 1279. Thus, we disagree with Appellant’s argument that the printed matter doctrine is inapplicable to method claims. In the Reply Brief, Appellant emphasizes that claim 1 requires “identifying portions of the instruments most subject to wear and retention of contamination and marking these portions on the illustrations.” Reply Br. 3. Appellant argues that the Examiner has not identified the recited markings in the refrigerator of Chickvara’s Figure 8, which the Examiner points to as the claimed illustration. Id.; see also Ans. 13–14. We agree with Appellant that the upright freezer illustration in Chickvara’s Figure 8 does not include markings to indicate the portion of the freezer most subject to wear and retention of contamination. Nevertheless, the limitation of marking portions on the illustrations is directed to nonfunctional descriptive matter. Under the printed matter case law discussed above, this limitation cannot be relied on to distinguish the prior art. Accordingly, we sustain the Examiner’s rejection of claim 1. Appeal 2013-003932 Application 12/757,366 9 Because the reasoning upon which we rely to sustain the rejection of claim 1 differs somewhat from the reasoning articulated by the Examiner, we denominate our affirmance of the rejection of claim 1 as a NEW GROUND OF REJECTION to provide Appellant with a full and fair opportunity to respond to the thrust of the rejection. Appellant’s arguments concerning claim 2 mirror the arguments for claim 8. See App. Br. 9–10; Reply Br. 3–4. These arguments are unpersuasive for the same reasons discussed above with respect to claim 8. With respect to claims 3–5, Appellant argues that the Examiner’s rejection is improper because the printed matter doctrine does not apply to method claims. App. Br. 10–11; Reply Br. 4. As discussed above, the printed matter doctrine is not limited to product claims. Appellant does present any separate argument for the patentability of dependent claim 6. Thus, we sustain the Examiner’s rejection of claims 2–6. We denominate our affirmance of the rejection of claims 2–6 as a NEW GROUND OF REJECTION to provide Appellant with a full and fair opportunity to respond to the thrust of the rejection, as the reasoning upon which we rely to sustain the rejection of claim 1, from which claims 2–6 depend, differs somewhat from the reasoning articulated by the Examiner. Claims 12–17 Appellant’s arguments regarding claim 12 are the same as the arguments Appellant presents for claim 1. App. Br. 13–14, Reply Br. 6. As discussed above in claim 1, we agree with Appellant that the upright freezer illustration in Chickvara’s Figure 8 does not include markings to indicate the portion of the freezer most subject to wear and retention of contamination. Appeal 2013-003932 Application 12/757,366 10 Nevertheless, the limitation of marking portions on the illustrations is directed to nonfunctional descriptive matter. Under the printed matter case law discussed above, this limitation cannot be relied on to distinguish the prior art. Appellant’s arguments for the patentability of claims 13–15 are the same as those presented for claims 3–5. App. Br. 10–11; Reply Br. 4. For the reasons discussed above, these arguments are not persuasive. Appellant does not present any separate argument for the patentability of dependent claims 16 and 17. Accordingly, we sustain the rejection of claims 12–17. We denominate our affirmance of the rejection as a NEW GROUND OF REJECTION to provide Appellant with a full and fair opportunity to respond to the thrust of the rejection because the reasoning upon which we rely to sustain the rejection of claim 12 and claims 13–17, which depend from claim 12, differs somewhat from the reasoning articulated by the Examiner. DECISION We affirm the Examiner’s rejection of claims 1–17. For the reasons discussed above, we denominate our affirmances of the rejections of claims 1–6 and 12–17 as new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). Regarding the affirmed rejection, 37 CFR § 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 rejection of one or more claims, this decision contains a NEW GROUND OF REJECTION pursuant Appeal 2013-003932 Application 12/757,366 11 to 37 C.F.R. § 41.50(b), which provides that “new ground[s] of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) provides “new ground[s] 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 prosecution before the Examiner unless, as a mere incident to the limited prosecution, the affirmed rejections are 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). See 37 C.F.R. § 1.136(a)(1)(iv). Appeal 2013-003932 Application 12/757,366 12 AFFIRMED; 37 C.F.R. § 41.50(b) em