Yoshiko TANAKA

Patent Trials and Appeals Board

Feb 2, 2022

2021002412 (P.T.A.B. Feb. 2, 2022)

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. 15/403,495 01/11/2017 Yoshiko TANAKA OCB-461-A 8938 21828 7590 02/02/2022 CARRIER BLACKMAN AND ASSOCIATES PC 22960 VENTURE DRIVE SUITE 100 NOVI, MI 48375 EXAMINER MORGAN, EMILY M ART UNIT PAPER NUMBER 3677 NOTIFICATION DATE DELIVERY MODE 02/02/2022 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): cbalaw@gmail.com wblackman@ameritech.net PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte YOSHIKO TANAKA __________ Appeal 2021-002412 Application 15/403,495 Technology Center 3600 __________ Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and ANNETTE R. REIMERS, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1 and 3-8. Claim 2 has been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Yoshiko Tanaka. Appeal Brief (“Appeal Br.”) 3, filed Nov. 30, 2020. Appeal 2021-002412 Application 15/403,495 2 CLAIMED SUBJECT MATTER The claimed subject matter “relate[s] to [an] ornamental device comprising diamonds.” Spec. 1.2 Claims 1, 3, and 6 are independent. Claim 1 is illustrative of the claimed subject matter and recites: 1. An ornamental device comprising: diamonds arranged on a single device in a designed physical arrangement, wherein all the diamonds in the designed physical arrangement have a blue fluorescence under ultraviolet light, said blue fluorescence equal to or stronger than strong blue. REJECTIONS I. Claim 3 stands rejected under 35 U.S.C. § 112(a), as failing to comply with the written description requirement. II. Claim 33 stands rejected under 35 U.S.C. § 112(b), as indefinite. III. Claims 1 and 3-8 stand rejected under 35 U.S.C. § 102(a)(1) as anticipated by Kwiat (US 6,553,786 B1, issued Apr. 29, 2003). ANALYSIS Rejection I - Written Description The Examiner determines that claim 3 fails to comply with the written description requirement because, in regard to the recitation “the device having a property,” the “Examiner is unsure what the ‘property’ is” and “[Appellant] does not disclose this phrase in the specification as originally 2 Because the lines in the Specification are not enumerated, we refer only to the page numbers. See Specification (“Spec.”), filed Jan. 11, 2017. 3 The rejection of claim 1 under 35 U.S.C. § 112(b) has been withdrawn by the Examiner. Examiner’s Answer (“Ans.”) 3, dated Dec. 22, 2020. Appeal 2021-002412 Application 15/403,495 3 filed.” Non-Final Act. 3.4 In regard to the recitation “any other device” in relation to the phrase “the device having a property distinguished from any other device,” the Examiner is “unsure if [Appellant] is comparing diamonds, or if [Appellant] is claiming the intended use of the ‘identification device’, or if [Appellant] is claiming multiple devices.” Id. The Examiner further states that Appellant “has not disclosed ‘any other device’, and does not clearly define the metes and bounds of this phrase.” Id. In rejecting a claim under 35 U.S.C. § 112, for lack of adequate descriptive support, it is incumbent upon the Examiner to establish that the originally-filed disclosure would not have reasonably conveyed to one having ordinary skill in the art that Appellant had possession of the now claimed subject matter. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Adequate description under 35 U.S.C. § 112, does not require literal support for the claimed invention. Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (“In order to satisfy the written description requirement, the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue.”); In re Herschler, 591 F.2d 693, 701 (CCPA 1979); In re Edwards, 568 F.2d 1349, 1351-52 (CCPA 1978); In re Wertheim, 541 F.2d 257, 262 (CCPA 1976). Rather, it is sufficient if the originally-filed disclosure would have conveyed to one having ordinary skill in the art that Appellant had possession of the concept of what is claimed. In re Anderson, 471 F.2d 1237, 1242 (CCPA 1973). Thus, “written description is about whether the skilled reader of the patent disclosure can recognize that 4 Non-Final Office Action (“Non-Final Act.”), dated June 30, 2020. Appeal 2021-002412 Application 15/403,495 4 what was claimed corresponds to what was described.” Alcon Research Ltd. v. Barr Labs., Inc., 745 F.3d 1180, 1191 (Fed. Cir. 2014). The Examiner appears to recognize that the Specification discloses a “property,” by questioning whether the property is fluorescence, among other things. See Non-Final Act. 3 (questioning “Does [Appellant] intend to refer to the fluorescence that is previously claimed? Or is [Appellant] referring to clarity, since [Appellant] later refers to ‘black spots’?” and stating “Examiner notes that either fluorescence or clarity is considered a physical property of a diamond”). With respect to both of the recitations at issue, the Examiner is questioning the clarity of the claim language. This is further evident from the Examiner’s comment that the term “any other device” “does not clearly define the metes and bounds of this phrase.” Id. Here, the Examiner is questioning what is meant by “any other device” (although it appears to us that “any other device” is an “identification device” without the recited “property”). Thus, the issue presented before us is one of indefiniteness, rather than failing to comply with the written description requirement. Moreover, we do not regard the recitation “the device having a property distinguished from any other device” as claimed subject matter that includes “any other device”--but rather, an attempt by Appellant to distinguish its “identification device” from “any other device.” Consequently, the Examiner fails to establish that the originally-filed disclosure would not have reasonably conveyed to one having ordinary skill in the art that Appellant had possession of the now claimed subject matter. For these reasons, we do not sustain the Examiner’s rejection of claim 3 as failing to comply with the written description requirement. Appeal 2021-002412 Application 15/403,495 5 Rejection II - Indefiniteness The Examiner determines that claim 3 is indefinite because of the recitation “becomes identical to the designed physical arrangement of the diamonds.” Non-Final Act. 4. The Examiner “notes that the diamonds do not move at all, and is therefore confused by this” recitation. Id. Further, the Examiner “is unsure how ‘becomes identical to the designed physical arrangement’ further limits the claimed device.” Id. The Examiner reiterates that claim 3’s recitations “any other device” and “property” in the phrase “the device having a property distinguished from any other device” is unclear for the reasons discussed above in connection with the rejection of claim 3 for lack of written description. Id. Appellant argues that [r]egarding the limitation ‘black spot or spots’ as used in claim 3, Appellant’s [S]pecification states, on page 2, lines 27-29, that “any groups of diamonds without selection should suffer from a black spot or spots existing in the specific physical arrangement under the ultraviolet radiation.” This quoted language makes it clear that the term “black spot” is being used in the context of exposure to ultraviolet radiation, and is referring to diamonds which have a non-fluorescent quality. Appeal Br. 12-13.5 As such, Appellant argues that “one skilled in the art would understand the bounds of the claims, when read in light of the specification, and that the present claims, when read in light of the [S]pecification, reasonably apprise those skilled in the art of the scope of the invention.” Id. at 13. 5 We note that on pages 10-11 of the Appeal Brief, Appellant reiterates the requirements for written description support although this rejection, instead, addresses indefiniteness. See Appeal Br. 10-11. Appeal 2021-002412 Application 15/403,495 6 Appellant’s contention is unpersuasive. The Examiner correctly responds that the term “black spots” “is not a phrase that is considered indefinite.” Ans. 10. In regard to the recitation “the device having a property distinguished from any other device,” as stated above in the written description rejection, it is clear to us that this recitation is an attempt by Appellant to distinguish its “identification device” from “any other device,” rather than an attempt to claim “any other device.” See Non-Final Act. 4 (questioning “Is [Appellant] positively including ‘any other device’?”). Although we note that breadth is not indefiniteness, we agree with the Examiner that the recitation “becomes identical to the designed physical arrangement of the diamonds” is unclear. See id.; See SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1341 (Fed. Cir. 2005). In this case, the full recitation of claim 3 that includes this language is “all the diamonds in the designed physical arrangement have a blue fluorescence equal to or stronger than strong blue so that blue radiation of the diamonds under ultraviolet light from a black light becomes identical to the designed physical arrangement of the diamonds.” Appeal Br. 21 (Claims App.). It appears to us that Appellant is attempting to claim the blue fluorescence emitted from the diamonds as a pattern similar to the pattern (or “physical arrangement”) of the diamonds. However, that is not what this claim language requires. Claim 3 recites “blue radiation of the diamonds under ultraviolet light from a black light becomes identical to the designed physical arrangement of the diamonds.” Id. (emphases added). This language suggests that the blue radiation is not the same as the prior recited “blue fluorescence” and that the blue radiation is altered to have the identical “designed physical Appeal 2021-002412 Application 15/403,495 7 arrangement” of the diamonds. In this regard, we do not fault the Examiner for stating that the “Examiner notes that the diamonds do not move at all, and is therefore confused by this [recitation]” and that the “Examiner is unsure how it ‘becomes identical to the designed physical arrangement’ further limits the claimed device.” Non-Final Act. 4. Thus, in its current form, claim 3 does not provide sufficient certainty for the potential infringer to evaluate the possibilities of being held liable for direct and/or contributory infringement. “[T]he claims must make it clear what subject matter they encompass.” In re Hammack, 427 F.2d 1378, 1382 (CCPA 1970). For these reasons, we sustain the Examiner’s rejection of claim 3 as indefinite. Rejection III - Anticipation by Kwiat Claim 1: Claim 1 recites an ornamental device comprising “diamonds arranged on a single device in a designed physical arrangement, wherein all the diamonds in the designed physical arrangement have a blue fluorescence under ultraviolet light, said blue fluorescence equal to or stronger than strong blue.” Appeal Br. 21 (Claims App.). The Examiner finds that Kwiat discloses this claimed subject matter. Non-Final Act. 5 (citing Kwiat 1:34, 2:39). Appellant contends that “Kwiat’s pendant 10 includes both fluorescent and non-fluorescent diamonds arranged on a rectangular grid on a mounting 12 made of a precious jewelry metal.” Appeal Br. 14. As such, Appellant argues that “[n]ot all of Kwiat’s diamonds in the rectangular grid have a blue fluorescence” and “[t]herefore, Kwiat fails to disclose an Appeal 2021-002412 Application 15/403,495 8 ornamental in which all of the diamonds in a designed physical arrangement have a blue fluorescence under ultraviolet light, said blue fluorescence equal to or stronger than strong blue.” Id. at 14-15; see also id. at 16. The Examiner correctly responds that “[A]ppellant’s arguments are more limiting than the [claim itself].” Ans. 10. The Examiner explains that because [t]he blue fluorescing diamonds of Kwiat are the diamonds that create the message (abstract), therefore the message of Kwiat is considered the “designed physical arrangement” of claim 1. This message/[]“designed physical arrangement” is exampled by “love” in figure 2, “2000” in figure 3, and a heart in figure 4. Only the diamonds that fluoresce blue can be in the group of diamonds that create the message. Therefore, “all the diamonds in the designed physical arrangement have a blue fluorescence” is met by the diamonds of Kwiat that create the message/ “designed physical arrangement”. Ans. 10-11. In other words, claim 1 does not preclude a device that has non-fluorescent diamonds. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[A]ppellant’s arguments fail from the outset because . . . they are not based on limitations appearing in the claims.”). Further, there is no language in claim 1 that precludes the “designed physical arrangement” from being the arrangement of only the diamonds that are fluorescent in Kwiat. Thus, Appellant’s argument does not apprise us of Examiner error. For these reasons, we sustain the Examiner’s rejection of claim 1 as anticipated by Kwiat. Claims 3 and 6: Claims 3 and 6 recite similar limitations to those of claim 1. See Appeal Br. 21-22 (Claims App.). Appellant presents similar arguments for Appeal 2021-002412 Application 15/403,495 9 claims 3 and 6 as those presented for claim 1, namely, that Kwiat does not disclose all of its diamonds in a “designed physical arrangement” have blue fluorescence under ultraviolet light. See id. at 16-18. Consequently, these arguments are unpersuasive for the same reasons discussed above for claim 1, i.e., Appellant argues limitations that are not claimed. Claim 3 also recites “An identification device designed to identify a membership.” Id. at 21 (Claims App.). Without elaboration, Appellant states that the Specification “on page 5, lines 15-19 states that ‘the distinguished blue radiation of the diamonds 14, 16 is expected to contribute to identification of a specific element or the human being. The necklace 11 may function as a proof of the membership, for example.” Id. at 16-17. Thus, it appears Appellant is arguing that Kwiat’s device is not “designed to identify a membership.” See id. The Examiner correctly responds that this recitation of claim 3 “is interpreted [as] intended use.” Ans. 12. The Examiner further explains that Kwiat discloses a “message,” which a user can consider as “designed to identify a membership.” See id. Indeed, Kwiat discloses “[a] jewelry design including . . . a plurality of fluorescent diamonds having at least medium blue fluorescent intensity which are set in the mounting to form a message.” Kwiat, Abstr. Thus, the Examiner reasonably finds that Kwiat discloses an “identification device designed to identify a membership,” as required by claim 3. In other words, we agree with the Examiner’s assessment that Kwiat’s device discloses a “message,” which is capable of being used to “identify membership.” See Non-Final Act. 6; see also Ans. 12. As such, Appellant’s argument does not apprise us of Examiner error. Appeal 2021-002412 Application 15/403,495 10 In regard to claim 6, Appellant argues that Kwiat fails to disclose an ornamental design in which a plurality of diamonds are arranged on, and adhered to a setting in a designed physical arrangement, wherein all of the diamonds in the arrangement have a clear shining property under a natural light, and have a blue shining property under ultraviolet light, wherein a rating of the blue shining property is equal to or stronger than strong blue. Appeal Br. 18. Here, by merely reciting claim limitations and asserting that the cited art lacks such teachings, Appellant fails to meet the requirements of 37 C.F.R. § 41.37(c)(1)(iv) and is thus unpersuasive of Examiner error. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). We also note that although the claim language replicated above for claim 1 is not identically recited in claim 6, we do not discern any arguments specific to the language of claim 6 in the Appeal Brief. See Appeal Br. 17-18. For these reasons, we sustain the Examiner’s rejection of claims 3 and 6 as anticipated by Kwiat. Claims 4, 5, 7, and 8: Claims 4 and 7 recites “wherein all of the diamonds on the device have a very strong blue fluorescence when exposed to ultraviolet light.” Appeal Br. 21-22 (Claims App.) (emphases added). Claim 5 depends from claim 4 and claim 8 depends from claim 7. Id. “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Appeal 2021-002412 Application 15/403,495 11 In this case, these claims require all of the diamonds on the device-- rather than all of the diamonds in the designed physical arrangement--have a very strong blue fluorescence. The Examiner acknowledges that Kwiat does not disclose this limitation by stating that Kwiat’s device has diamonds that do not “fluoresce blue.” See Ans. 10-11. In all of Kwiat’s embodiments, namely Figures 1-4, pendants 10 have non-fluorescent diamonds 22. Kwiat does not appear to disclose pendants that do not also have non-fluorescent diamonds 22, i.e., not all of the diamonds on Kwiat’s device have a very strong blue fluorescence. See Kwiat, passim, Figs. 1-4. As such, the rejection of claim 4, 5, 7, and 8 as anticipated by Kwiat cannot stand. For these reasons, we do not sustain the Examiner’s rejection of claims 4, 5, 7, and 8 as anticipated by Kwiat. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 3 112(a) Written Description 3 3 112(b) Indefiniteness 3 1, 3-8 102(a)(1) Kwiat 1, 3, 6 4, 5, 7, 8 Overall Outcome 1, 3, 6 4, 5, 7, 8 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). AFFIRMED IN PART