Slice, Inc.

Patent Trials and Appeals BoardDec 17, 2021

2021003877 (P.T.A.B. Dec. 17, 2021)

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. 16/009,136 06/14/2018 Thomas Scimone 16468.026 9423 94884 7590 12/17/2021 Ellenoff Grossman & Schole LLP Attn: James Smedley and Alex Korona 1345 Avenue of the Americas 11th Floor New York, NY 10105 EXAMINER MATTHEWS, JENNIFER S ART UNIT PAPER NUMBER 3724 NOTIFICATION DATE DELIVERY MODE 12/17/2021 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): Mpolychronides@egsllp.com USPTO@dockettrak.com akorona@egsllp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte THOMAS SCIMONE, SCOT HERBST, and ALAN REGALA ____________ Appeal 2021-003877 Application 16/009,136 Technology Center 3700 ____________ Before STEFAN STAICOVICI, MICHAEL L. HOELTER, and MICHAEL L. WOODS, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE. Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision in the Non-Final Office Action (dated Dec. 21, 2020, hereinafter “Non-Final Act.”) rejecting claims 1, 3, 6, and 8–21.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Slice Inc. is identified as the real party in interest in Appellant’s Appeal Brief (filed Mar. 22, 2021, hereinafter “Appeal Br.”). Appeal Br. 2. 2 Claims 2, 4, and 5 are withdrawn and claim 7 is canceled. Appeal Br., Appendix A, 1–3. Appeal 2021-003877 Application 16/009,136 2 SUMMARY OF DECISION We AFFIRM. INVENTION Appellant’s invention is directed “to cutting blades manufactured from ceramics.” Spec. para. 1. Claims 1, 16, and 19 are independent. Claim 1 is illustrative of the claimed invention and reads as follows: 1. A ceramic cutting blade, comprising a first edge; a second edge; a third edge that extends from a first end of the first edge to a first end of the second edge; and a fourth edge that extends from a second end of the first edge to a second end of the second edge; wherein said second edge is a pointed cutting edge portion; wherein said ceramic blade is a single part, entirely ceramic unitary blade that begins to taper down in thickness along a longitudinal midline of said blade from said first edge to said second edge, said longitudinal midline extending from the third edge to the fourth edge of said blade in a plane parallel to said first and second edges; wherein a first intersection portion between said third edge and said second edge is rounded; wherein a second intersection portion between said fourth edge and said second edge is rounded; wherein the rounded first intersection portion decreases in thickness from a first thickness to a second thickness in a direction moving from the third edge to the second edge; wherein the rounded first intersection portion extends from said third edge to said second edge and is entirely rounded from said third edge to said second edge; and wherein the rounded first intersection portion includes a flat side face that decreases in width from said third edge to said second edge. Appeal Br., Appendix A, 1 Appeal 2021-003877 Application 16/009,136 3 REJECTIONS I. The Examiner rejects claims 1, 3, 6, and 8–21 under 35 U.S.C. § 112, second paragraph, as being indefinite. II. The Examiner rejects claims 1, 3, 6, and 8–21 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. III. The Examiner rejects claims 1, 3, 6, 8–11, 13, 16, and 18–20 under 35 U.S.C. § 103(a) as being unpatentable over Seager3 and Green.4 IV. The Examiner rejects claims 12, 15, 18, and 21 under 35 U.S.C. § 103(a) as being unpatentable over Seager, Green, and Johnson.5 V. The Examiner rejects claims 14 and 17 under 35 U.S.C. § 103(a) as being unpatentable over Seager, Green, and Gross.6 VI. The Examiner provisionally rejects claims 1, 3, 6, and 8–20 on the ground of non-statutory double patenting as being unpatentable over claims 1, 3, 8, 10, 11, 15, and 17–27 of copending U.S. Application No. 14/049,098.7 VII. The Examiner provisionally rejects claim 21 on the ground of non-statutory double patenting as being unpatentable over claims 1, 3, 4, 8, 10, 11, 15, and 17–24 of copending U.S. Application No. 14/049,098 and Johnson. 3 Seager, US 3,543,402, issued Dec. 1, 1970. 4 Green, US 2007/0101576 Al, published May 10, 2007. 5 Johnson, US 2004/0187314 Al, published Sept. 30, 2004. 6 Gross, US 5,093,996, issued Mar. 10, 1992. 7 We note that copending U.S. Application No. 14/049,098 corresponds to Appeal No. 2021-003869. Appeal 2021-003877 Application 16/009,136 4 ANALYSIS Rejection I In regards to independent claims 1, 16, and 19, the Examiner finds that “the phrase ‘unitary blade begins to taper down in thickness along a longitudinal midline of said blade from said first edge to said second edge’ is indefinite.” Non-Final Act. 6. In response, Appellant contends that originally-filed Figure 4 “points out and distinctly claims the invention on its face.” Appeal Br. 10. It is well established that “[e]ven if a claim term’s definition can be reduced to words, the claim is still indefinite if a person of ordinary skill in the art cannot translate the definition into meaningfully precise claim scope.” Haliburton Energy Services, Inc. v. M-I LLC, 514 F.3d 1244, 1251 (Fed. Cir. 2008). In this case, the recited “longitudinal midline” is illustrated in Appellant’s Figure 4 as extending along the middle portion of the blade. See also Appeal Br. 21. Thus, because the recited tapering of the blade occurs “along” the “longitudinal midline of said blade,” it is not clear how the claimed blade can also taper “from said top edge to said bottom edge” as additionally recited. We, thus, agree with the Examiner that “[i]t is unclear if the blade tapers down in thickness beginning at the midline of the blade,” as per Appellant’s Figure 4, “or if the blade tapers down in thickness beginning at the top edge of the blade,” as per the language of independent claims 1, 16, and 19. Non-Final Act. 6. Accordingly, for the foregoing reasons, we sustain the indefiniteness rejection of independent claims 1, 16, and 19, and their respective dependent claims 3, 6, 8–15, 17, 18, 20, and 21. Appeal 2021-003877 Application 16/009,136 5 Rejection II The Examiner also determines that claims 1, 3, 6, and 8–21 include subject matter not supported by Appellant’s disclosure. Non-Final Act. 4–5. However, as we determine that claims 1, 3, 6, and 8–21 are indefinite and their scope is unclear, we do not reach this issue. See In re Walter, 698 F. App’x 1022, 1027 (Fed. Cir. 2017) (non-precedential). Rejections III–V In view of our determination that claims 1, 3, 6, and 8–21 are indefinite, it follows that the rejections of these claims under 35 U.S.C. § 103(a) must fall because it is necessarily based on speculative assumptions as to the meaning of the claims. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962). It should be understood, however, that our decision in this regard is pro forma and based solely on the indefiniteness of the claimed subject matter, and does not reflect on the adequacy of the prior art evidence applied in support of the rejections. Rejections VI and VII Appellant does not challenge the merits of the Examiner’s provisional obviousness-type double patenting rejections of claims 1, 3, 6, and 8–21. See Appeal Br. 7–26. As such, Appellant has waived any argument of error, and, thus, we summarily sustain Rejections VI and VII. See In re Berger, 279 F.3d 975, 984, 985 (Fed. Cir. 2002) (holding that the Board did not err in sustaining a rejection under 35 U.S.C. § 112, second paragraph, when the applicant failed to contest the rejection on appeal). Appeal 2021-003877 Application 16/009,136 6 CONCLUSION Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 6, 8–21 112 Indefiniteness 1, 3, 6, 8–21 1, 3, 6, 8–21 1128 Written Description 1, 3, 6, 8–11, 13, 16, 18–20 103(a) Seager, Green 1, 3, 6, 8–11, 13, 16, 18–20 12, 15, 18, 21 103(a) Seager, Green, Johnson 12, 15, 18, 21 14, 17 103(a) Seager, Green, Gross 14, 17 1, 3, 6, 8–20 Provisional Non-statutory Double Patenting 14/049,098 1, 3, 6, 8–20 21 Provisional Non-statutory Double Patenting 14/049,098, Johnson 21 Overall outcome 1, 3, 6, 8–21 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) (2013). AFFIRMED 8 Rejection not reached as discussed supra in Rejection II.