Worldwise, Inc.

Patent Trials and Appeals Board

Nov 16, 2021

2021000199 (P.T.A.B. Nov. 16, 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.
15/239,393 08/17/2016 Tracy Rogers 545.459 4391
85444 7590 11/16/2021
Dergosits & Noah LLP
One Embarcadero Center, Suite 720
San Francisco, CA 94111
EXAMINER
KURILLA, ERIC J
ART UNIT PAPER NUMBER
3619
NOTIFICATION DATE DELIVERY MODE
11/16/2021 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):
lbultema@dergnoah.com
nkoenig@dergnoah.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
___________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
___________________

Ex parte TRACY ROGERS, JACOB DOMINGUEZ, and
ANDREW MURRER
____________________

Appeal 2021-000199
Application 15/239,393
Technology Center 3600
____________________

Before MICHAEL R. ZECHER, JUSTIN T. ARBES, and
BARBARA A. BENOIT, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION ON APPEAL

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I. STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–9. Appeal Br. 2–3. Appellant also appeals
claims 28 and 29, assuming these claims have been rejected based on the
same grounds as claims 1–9. Id. at 2. In response to the Examiner’s
restriction requirement entered on April 8, 2019, Appellant withdrew claims
10–27. See id. Consequently, claims 1–9, 28, and 29 remain for our
consideration. We have jurisdiction under 35 U.S.C. § 6.
We affirm in part.
Appellant’s Invention
Appellant’s purported invention relates to a method of converting
waste fiber to bed cushioning. Spec. 1:5–6. According to Appellant, using
lofted waste fibers as bed cushioning “has been unachievable to date”
because attempts to move the waste fibers using rotary positive displacement
fans or paddles cause the fibers to lose their loft. Id. at 1:19–24.
To address this problem, Appellant provides an injector comprising a
lofted fiber input nozzle, an output nozzle comprising a low friction tube,
and at least one annular compressed gas array. Spec. 2:8–10, 2:17–22.
Figure 2, reproduced below, illustrates “a side view of an injector” for
pneumatically transferring lofted fiber from a hopper without using fans or
paddles. Id. at 3:4–5, 5:8–12.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, the real party in interest is
Worldwise, Inc. Appeal Br. 1.
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Figure 2, reproduced above, illustrates injector 15 that “comprises inlet 21
for receiving lofted fibers from [an] aerated plenum or hopper,” “at least one
annular compressed gas array 23,” and “low friction tube 24 on its outlet
end.” Id. at 5:1–4, 5:10–12. “Injector 15 is also characterized as having
longitudinal axis 28 and substantially circular cross-section 29 noting that
injector 15 is devoid of any obstruction along longitudinal axis 28.” Id. at
5:8–10.
Illustrative Claim
Claim 1 is an independent claim directed to “[a] method of converting
waste to bed cushioning.” Appeal Br. 6 (Claims App.). Claims 2–9, 28, and
29 directly or indirectly depend from independent claim 1. Id. at 6, 8.
Independent claim 1 is illustrative of the disclosed invention and reproduced
below:
1. A method of converting waste to bed cushioning,
said method comprising:
feeding said waste to a fiber lofter and lofting said waste
therein to form lofted fiber;
pneumatically transferring said lofted fiber to a hopper;
and
transferring said lofted fiber from said hopper to an
injector, said injector comprising a lofted fiber input nozzle and
output nozzle, said output nozzle comprising a low friction tube.
Id. at 6.
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Prior Art Relied Upon
Inventor2 Patent or Publication No. Relevant Dates
Collida US 6,860,092 B2 Issued Mar. 1, 2005
Fulk US 3,574,658 Issued Apr. 13, 1971
Rejections on Appeal3
References/Basis 35 U.S.C. § Claims Rejected
Indefiniteness (for reciting the
relative term “low friction”)
112(b) 1–9
Collida 102(a)(1) 1–6
Collida, Fulk 103 7, 8
Collida 103 9
Examiner’s Findings and Conclusions
1. Upon reviewing the specification, the Examiner finds that the
“low friction tube” recited in independent claim 1 is a relative term that does
not limit the tube to specific materials or provide any coefficients of friction
to determine what is encompassed by “low friction.” Final Act. 2; Ans. 3–4.
Particularly, the Examiner finds that, in the scenario where any coefficient of
friction is “low,” the “low friction tube” would cease to limit the claimed
invention. See Ans. 4. Accordingly, the Examiner concludes that “low
friction” is a relative term with unclear bounds, rendering independent claim
1 and dependent claims 2–9 indefinite under § 112(b). Final Act. 2; Ans. 3–
4.

2 For clarity and ease of reference, we only list the first-named inventor.
3 As we explain in more detail below, the Examiner’s Final Action did not
address dependent claims 28 and 29, which Appellant entered in an
amendment after receiving a Non-Final Action on August 20, 2019. See
Final Act.; Appeal Br. 2.
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2. The Examiner finds that Collida’s stuffing machine discloses
all of the limitations of independent claim 1 and dependent claims 2–6.
Final Act. 3–4; Ans. 4–5. Notably, the Examiner finds that, because
“virtually any tube could be determined to be ‘low friction,’” Collida’s
Venturi nozzle meets the broad limitation of a “low friction tube.” Ans. 5.
Accordingly, the Examiner concludes that claims 1–6 are anticipated by
Collida under § 102(a)(1). Final Act. 3–4; Ans. 4–5.
3. The Examiner finds that Collida teaches all of the limitations of
dependent claims 7 and 8, except a “low friction tube compris[ing] a dry
lubricant” and “tungsten disulfide,” respectively. See Final Act. 4; Ans. 5–7.
The Examiner turns to Fulk’s disclosure of dry lubricants, including tungsten
disulfide, to teach these limitations. See Final Act. 4; Ans. 5–7. According
to the Examiner, it would have been obvious to a person of ordinary skill in
the art to modify Collida’s Venturi tube by “apply[ing] the dry lubrication of
Fulk to the injector of Collida to prevent snags on the ‘skin’ used in
Collida.” Final Act. 4, 8; Ans. 5–7 (citing Fulk 2:13–16, 2:24–26, 2:69–71).
Thus, the Examiner relies on the combined teachings of Collida and Fulk to
support the obviousness rejection of dependent claims 7 and 8 under § 103.
Final Act. 4; Ans. 5–7.
Appellant’s Contentions
1. Appellant contends that the Examiner’s indefiniteness rejection
of independent claim 1 and dependent claims 2–9 is improper because the
term “low friction tube” does not render these claims indefinite. Appeal Br.
3–4. Particularly, Appellant argues that, “when read[ing the specification] in
its entirety and given the examples of dry lubricants, polyethylene
terephthalate, polytetrafluoroethylene and tungsten disulfide, . . . one skilled
in the art would recognize the scope of . . . ‘low friction’ materials.” Id.
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Appellant further contends that the Examiner’s indefiniteness rejection
should not apply to dependent claims 7 and 8 because dependent claim 7
further limits the low friction tube to “comprise[] a dry lubricant” and
dependent claim 8 further limits the low friction tube to “comprise[]
tungsten disulfide.” Id. at 4.
2. Appellant contends that the Examiner’s anticipation rejection of
claims 1–6 is improper because Collida does not disclose the nature of its
Venturi nozzle. Appeal Br. 4. Appellant argues that the nature of the output
nozzle is irrelevant to the performance of Collida’s method, and Collida
does not disclose explicitly a “low friction” nozzle. Id.
3. Appellant contends that the Examiner’s obviousness rejection
of dependent claims 7 and 8 is improper because a person of ordinary skill in
the art would not have combined the teachings of Collida and Fulk. Appeal
Br. 4–5. Specifically, Appellant argues that the nature of the output nozzle
is irrelevant in carrying out Collida’s method and that Fulk “provides a
method of applying a dry lubricant to a surface by peening for uses unrelated
to creating a low friction Venturi-type nozzle.” Id. at 5.
II. ISSUES
Based on the record before us, the issues presented are as follows:
1. whether the Examiner erred in concluding that a person of
ordinary skill in the art, having read the specification, would have been
apprised of the scope of “low friction,” as recited in independent claim 1;
2. whether the Examiner erred in finding that Collida’s Venturi
nozzle constitutes a “low friction tube” for purposes of anticipation; and
3. whether the Examiner erred in concluding that a person of
ordinary skill in the art would have combined the teachings of Collida with
those of Fulk to account for the limitations of dependent claims 7 and 8.
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III. ANALYSIS
Indefiniteness Rejection
Claims 1–9
Based on the record before us, we discern error in the Examiner’s
indefiniteness rejection of independent claim 1, which recites the output
nozzle of the injector comprising a “low friction tube.” Appeal Br. 6
(Claims App.). By virtue of their dependency, claims 2–9 recite the same
limitation.
Pursuant to § 112(b), claims must “particularly point[] out and
distinctly claim[] the subject matter which the inventor or a joint inventor
regards as the invention.” 35 U.S.C. § 112(b) (2011). “As the statutory
language of ‘particular[ity]’ and ‘distinct[ness]’ indicates, claims are
required to be cast in clear—as opposed to ambiguous, vague, indefinite—
terms.” In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014) (alterations in
original). The test for determining the question of indefiniteness may be
formulated as whether the claims, when considered in light of the
specification and what is known in the art, “set out and circumscribe a
particular area with a reasonable degree of precision and particularity.”
In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236 (CCPA 1971); see
Packard, 751 F.3d at 1310, 1313.
We do not agree with the Examiner’s position that the term “low
friction tube” recited in independent claim 1 renders the claim indefinite.
Final Act. 2. When a word of degree is used, we “must determine whether
the patent’s specification provides some standard for measuring that
degree.” Seattle Box Co. v. Indus. Crating & Packing, Inc., 731 F.2d 818,
826 (Fed. Cir. 1984). According to Appellant, the output nozzle comprises a
“low friction tube” to reduce sticking and increase flow rates while
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maintaining fiber loft. Appeal Br. 3–4. This is consistent with the
specification, which states that “[n]ozzles with low friction coefficients
reduce sticking, [and] increase[] flow rates particularly for non-siliconized
fill materials.” Spec. 6:9–10. The objectives of reduced sticking and
increased flow rate help define the scope of “low friction” because they set
functional limitations for this term. The specification states that the low
friction tube “can be composed of any number of dry lubricants such as
polyethylene terephthalate and polytetrafluoroethylene,” or ideally of
“Dicronite® which is a tungsten disulfide.” Spec. 5:4–7. Dependent claims
7–9 also further limit the scope of independent claim 1 by specifying the
material of the low friction tube in different embodiments. Appeal Br. 6
(Claims App.). Put simply, the specification and plain language of the
claims provide some standard for measuring the degree of “low friction.”
We also do not agree with the Examiner’s position that “virtually any
tube could be determined to be ‘low friction.’” Ans. 5. It is well-settled that
“[b]readth is not indefiniteness.” In re Gardner, 427 F.2d 786, 788, 166
USPQ 138 (CCPA 1970) (concluding that antidepressant composition and
method claims were not indefinite for failing to name a host—they were
merely broad). Here, the specification’s failure to provide any specific
coefficients of friction does not mean that the claims are indefinite—they are
merely broad. Although a broad set of materials and coefficients of friction
could satisfy the “low friction tube” requirement of independent claim 1, we
agree with Appellant that a person of ordinary skill in the art would have
reasonably understood the scope of “low friction” in light of the
specification and the plain language of the claims. See Appeal Br. 3–4.
Accordingly, it follows that the Examiner erred in concluding that the
subject matter of claims 1–9 is indefinite.
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Anticipation Rejection Based on Collida
Claims 1–6
Based on the record before us, we discern no error in the Examiner’s
anticipation rejection of independent claim 1, which recites, in relevant part,
an “output nozzle comprising a low friction tube.” Appeal Br. 6 (Claims
App.). By virtue of their dependency, claims 2–6 recite the same limitation.
Although Appellant correctly notes that Collida does not describe
explicitly the nature of the Venturi tube as “low friction,” the specification
and Appellant’s arguments emphasize that the nature of the low friction tube
does not depend solely on the material of the nozzle. See Spec. 5:4–7;
Appeal Br. 4. Rather, Appellant’s arguments focus on the nozzle’s function
in reducing sticking and increasing flow rates. See Appeal Br. 4. In light of
the specification and Appellant’s representations, we agree that the nature of
the low friction tube can turn on its function (and/or on its material).
Collida describes the nature of the Venturi nozzle by explaining its
function, which is relevant to the performance of the Collida method.
Collida “places a venturi within the stuffing nozzle,” which creates a
negative pressure that suctions the stuffing fibers from the agitation cavity.
Collida 1:54–58. Collida explicitly states that by doing so, “the stuffing
fibers are not able to easily buildup or clog”—in other words, sticking is
reduced. See id. at 1:56–58. Collida’s Venturi nozzle also serves the
function of a low friction tube because the Venturi effect causes stuffing
fiber velocity to increase and its pressure to decrease as it flows through the
constricted section of the tube. See id. at 1:49–2:6. Because the nature of
the low friction tube can turn on its function, Collida discloses this limitation
by disclosing a Venturi nozzle that effectively operates in the same manner.
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It follows that the Examiner has not erred in determining that Collida
anticipates the subject matter of claims 1–6.
Obviousness Rejection Over Collida and Fulk
Claims 7–8
Based on the record before us, we do not discern error in the
Examiner’s obviousness rejection of dependent claims 7 and 8, which
indirectly depend from independent claim 1.
We do not agree with Appellant’s arguments that Collida fails to
address the physical nature of its output tube and that the nature of the
output tube is irrelevant in carrying out Collida’s method. Appeal Br. 5.
As we explain above, Collida discloses a Venturi tube that effectively
operates as a low friction tube by creating a negative pressure that prevents
clogging and increases flow rates. The Examiner merely relies on Fulk’s dry
lubrication, or tungsten disulfide specifically, to further reduce friction in
Collida’s Venturi tube. Ans. 6–7.
We also do not agree with Appellant’s argument that Fulk teaches a
method of applying a dry lubricant to a surface for uses unrelated to creating
a low friction Venturi-type nozzle. Appeal Br. 4–5. Contrary to Appellant’s
argument, Fulk explicitly discloses that an “object of the instant invention is
to provide a dry-lubricated surface having a low coefficient of friction.”
Fulk 2:13–15. Fulk further discloses typical dry lubricants useful for the
objective, including tungsten disulfide. Id. at 2:72–3:3. We agree with the
Examiner that a person of ordinary skill in the art would have had reasons to
modify Collida to use Fulk’s dry lubrication to further reduce sticking, and
would have known how to do so with a reasonable expectation of success.
See Final Act. 2; Ans. 5–7.
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It follows that the Examiner has not erred in determining that the
combined teachings of Collida and Fulk render the subject matter of
dependent claims 7 and 8 obvious.
Obviousness Rejection Over Collida
Claim 9
Based on the record before us, Appellant does not present separate
arguments with respect to the Examiner’s obviousness rejection of
dependent claim 9 in view of the teachings of Collida and by taking Official
Notice, nor did the Examiner withdraw this obviousness rejection in the
Answer. Final Act. 4–5; see Ans. 3. Consequently, we summarily sustain
the Examiner’s obviousness rejection of dependent claim 9. See Manual of
Patent Examining Procedure (“MPEP”) § 1205.02 (9th ed., R-08.2017, Jan.
2018) (“If a ground of rejection stated by the examiner is not addressed in
the appellant’s brief, appellant has waived any challenge to that ground of
rejection and the Board may summarily sustain it, unless the examiner
subsequently withdrew the rejection in the examiner’s answer.”); see also
Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (“When the appellant
fails to contest a ground of rejection to the Board, . . . the Board may treat
any argument with respect to that ground of rejection as waived.”).
No Prima Facie Rejection
Claims 28 and 29
The Examiner’s Final Action did not address dependent claims 28 and
29, which Appellant entered in an amendment after receiving a Non-Final
Action on August 20, 2019. See Final Act.; Appeal Br. 2. In its Appeal
Brief, Appellant assumes that dependent claims 28 and 29 should be rejected
under the same grounds as claims 1–9. Appeal Br. 2. Assuming that to be
the case, “the [patent] examiner bears the initial burden, on review of the
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prior art or on any other ground, of presenting a prima facie case of
unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see
also In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (explaining the
prima facie case as a prerequisite to rebuttal). Because the Examiner did not
satisfy this burden with respect to dependent claims 28 and 29, we cannot
affirm any rejection of these claims. See Oetiker, 977 F.2d at 1445
(establishing that only after a prima facie case of obviousness has been
established does the burden shift to the applicant); see also Piasecki, 745
F.2d at 1472 (same).
IV. CONCLUSION
For the foregoing reasons, the Examiner has not erred in rejecting:
(1) claims 1–6 as unpatentable under § 102(a)(1) as being anticipated by
Collida; (2) claims 7 and 8 as unpatentable under § 103 as being obvious
over the combined teachings of Collida and Fulk; and (3) claim 9 as
unpatentable under § 103 as being obvious over the teachings of Collida
together with the taking of Official Notice. Accordingly, we affirm the
Examiner’s decision to reject these claims.
The Examiner, however, erred in rejecting claims 1–9 as unpatentable
under § 112(b) as being indefinite for reciting the relative term “low friction
tube.” The Examiner also failed to present a prima facie case of
unpatentability with respect to dependent claims 28 and 29. Accordingly,
we reverse the Examiner’s decision to reject these claims.
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V. DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1–9 112(b) Indefiniteness
(for reciting the
relative term
“low friction”)
1–9
1–6 102(a)(1) Collida 1–6
7, 8 103 Collida, Fulk 7, 8
9 103 Collida 9
28, 29 28, 29
Overall
Outcome
1–9 28, 29
VI. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED IN PART