UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES

Transcription

1 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES Ex parte SHERI L. MCGUIRE, THOMAS E. TAYLOR, and BRIAN EMANUEL Appeal Technology Center 1700 Decided: November 30, 2009 Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. 134 the final rejection of claims We have jurisdiction over the appeal pursuant to 35 U.S.C. 6(b).

2 We AFFIRM. Appellants invention is related to a mattress having a flammable core and a cellulosic flame-retardant nonwoven fabric that at least partially encloses the flammable core (Spec. 2). Claim 1 is illustrative: 1. A mattress having a flammable core and a flame retardant nonwoven fabric at least partially enclosing said flammable core, said nonwoven fabric produced from about 65 to about 85 weight percent cellulosic flame retardant coated fibers, and from about 15 to about 35 weight percent low melt binder fibers, said nonwoven fabric having a basis weight of about 5 20 oz./ sq. yd, wherein said flame retardant nonwoven fabric is substantially free of halogenated fibers. The Examiner relies on the following prior art reference as evidence of unpatentability: Mater WO 03/ A1 Mar. 20, 2003 Appellants appeal the following rejections: 1. Claims 1-14 are rejected under 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. 2. Claims 1-14 are rejected under 35 U.S.C. 112, second paragraph, as failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. 3. Claims 1-14 are rejected under 35 U.S.C. 102(b) as being anticipated by, or in the alternative under 35 U.S.C. 103(a) as being obvious over Mater. ISSUE Have Appellants shown that the Examiner reversibly erred in determining that the claim phrase substantially free of halogenated fibers 2

3 is unclear so as to render the claims indefinite under 35 U.S.C. 112, second paragraph? We decide this issue in the negative. PRINCIPLES OF LAW The test for definiteness under 35 U.S.C. 112, second paragraph, is whether those skilled in the art would understand what is claimed when the claim is read in light of the specification. Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). Definiteness problems often arise when words of degree (e.g., substantially ) are used in a claim. Seattle Box Co., Inc. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984). That some claim language may not be precise, however, does not automatically render a claim indefinite. Id. When a word of degree is used it must be determined whether the patent's specification provides some standard for measuring that degree. Id. It must be decided, that is, whether one of ordinary skill in the art would understand what is claimed when the claim is read in light of the specification. Id. Where a claim s meaning is indefinite under 35 U.S.C. 112, second paragraph, such that review of any rejection based on prior art or otherwise would be based on speculation as to the scope of the claim, review of the prior art or other rejection is not appropriate. In re Steele, 305 F.2d 859, (CCPA 1962). FACTUAL FINDINGS (FF) 1. The Examiner determines that the claim recitation substantially free of halogenated fibers is indefinite because it is unclear what amount 3

4 of halogenated fibers is considered a substantially free amount within the scope of the claims (Ans. 4). 2. The Specification does not define what is meant by the term substantially free of halogenated fibers. The Specification states that up to about 20 wt. % of the nonwoven batt or fabric may be other fibers, which may include modacrylic fibers or non-toxic fibers such as non-halogenated fibers (Spec. 8). Appellants state that modacrylic fibers are halogenated fibers (Br. 5, citing Mater, p. 14, ll ). Mater at page 14, lines disclose that the class of modacrylics include vinyl chloride or vinylidene chloride copolymers of acrylonitrile fibers, i.e., halogenated-type modacrylic fibers. The Specification does not indicate whether a non-woven fabric having about 20 wt.% modacrylic fibers (such as the known halogenated-type modacrylic fibers) is considered to be substantially free of halogenated fibers as claimed. ANALYSIS To determine whether the claim language substantially free of halogenated fibers is indefinite, we look to whether the Specification provides guidance as to its meaning. Seattle Box, 731 F.2d at 826. As the Examiner indicated (Ans. 10), the Specification describes that up to about 20 wt. % of the nonwoven batt optionally may be other fibers, which may include modacrylic (including halogenated) fibers (FF 1). Based on the Specification, the Examiner determines that the meaning of substantially free of halogenated fibers is unclear (Ans. 4). Specifically, the Examiner determines that it is unclear if, for example, the phrase substantially free of halogenated fibers encompasses a mattress having a nonwoven fabric 4

5 with up to about 20 wt. % of the halogenated-type modacrylic fibers (Ans. 14). We agree. In response, Appellants argue that the disputed claim language is definite because the plain meaning of substantially free means that if about 20 wt. % of additional fibers are included in the nonwoven batt, then those additional fibers must be substantially free of halogenated fibers (Reply Br. 4). However, Appellants circular analysis fails to address what is the scope of substantially free in light of the Specification; does substantially free of halogenated fibers include halogenated-type modacrylics, in amounts up to about 20 wt. % of the nonwoven batt? Appellants argue that Mater, the applied prior art, illuminates the meaning of substantially free as less than 10 wt. % halogenated fibers (Br. 6). Appellants reason that the Specification on page 6 discloses that halogenated coatings release harmful gases upon exposure to heat, such that Mater s disclosure on page 13 that halogenated fibers generate oxygen depleting gases and using a minimum of 10 wt. % Category 2, halogenated fibers to achieve the oxygen depleting gases demonstrates that substantially free of halogenated fibers means that an amount less than Mater s minimum halogenated fiber content (i.e., 10 wt. %) may be included by the substantially free claim phrase (Br. 6). Appellants contend that the Examiner is confusing what the Specification describes (i.e., including up to about 20 wt. % modacrylics) with what the claims require (Reply Br. 7). Contrary to these arguments, the Examiner properly notes the Appellants analysis does not address the meaning of substantially free of halogenated fibers in light of Appellants disclosure that up to about 20 wt.% of the nonwoven batt maybe modacrylic fibers (which would include 5

6 halogenated-type modacrylic fibers) (Ans. 13). Indeed, Appellants analysis of the claim phrase in light of Mater raises more questions about the meaning of substantially free of halogenated fibers in light of the prior art and Appellants disclosure. For example, Mater s disclosure regards the release of oxygen depleting gases from halogenated fibers (i.e., fibers with halogens as part of the polymer used to form the fiber), whereas the Specification discusses release of gases from halogenated coatings applied to fibers. Accordingly, it is unclear if the disparate teachings of Mater and the Specification provide any illumination as to the proper meaning of substantially free of halogenated fibers. Furthermore, the Examiner is not confusing what is disclosed in the Specification with what is being claimed. Rather, in accordance with case law, such as In re Moore, 439 F.2d 1232 (CCPA 1971) and In re Mattison, 509 F.2d 565 (CCPA 1975) cited by Appellants (Br. 5-6), the Examiner is attempting to construe the disputed claim language in light of the Specification and the prior art. However, the Specification and prior art fail to illuminate the meaning of substantially free of halogenated fibers. Appellants contention that the Specification explains that the present nonwoven fabric is to be non-toxic and thus any content of halogenated fibers is insubstantial (Reply Br. 7), fails to address whether substantially free of halogenated fibers encompasses a nonwoven fabric with up to 20 wt. % of modacrylic fibers (such as halogenated-type modacrylic fibers) or further illuminate the scope of the claim phrase. Accordingly, we affirm the Examiner s 112, second paragraph, rejection of claims 1-14 as failing to point out and distinctly claim the subject matter which applicant regards at the invention. 6

7 Because we determine that claim 1, the only independent claim on appeal, fails to comply with the requirement of 35 U.S.C. 112, second paragraph, to particularly point and distinctly claim the subject matter which applicant regards as the invention, any determination whether the claims fail to comply with the written description requirement of 35 U.S.C. 112, first paragraph, or whether any of the claims would have been obvious over the applied prior art improperly would be based speculation. Steele, 305 F.2d at Accordingly, we reverse pro forma the rejection of claims 1-14, under 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement, the rejection of claims 1-14 under 35 U.S.C. 102(b) as being anticipated by, or alternatively over 35 U.S.C. 103(a) as obvious over Mater. DECISION The Examiner s decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R (a)(1). AFFIRMED cam CLEMENTS BERNARD PLLC 1901 ROXBOROUGH ROAD SUITE 250 CHARLOTTE, NC