Ex Parte Johnston

Patent Trial and Appeal Board

Sep 24, 2018

15151968 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
15/151,968 05/11/2016 Stephen A. Johnston
24112 7590 09/24/2018
COATS & BENNETT, PLLC
1400 Crescent Green, Suite 300
Cary, NC 27518
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
7241-002 9886
EXAMINER
MAESTRI, PATRICK J
ART UNIT PAPER NUMBER
3638
MAIL DATE DELIVERY MODE
09/24/2018 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 STEPHEN A. JOHNSTON
Appeal 2018-001344
Application 15/151,968
Technology Center 3600
Before: CHARLES N. GREENHUT, FREDERICK C. LANEY, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
13. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM, designating NEW GROUNDS OF REJECTION.
Appeal2018-001344
Application 15/151,968
CLAIMED SUBJECT MATTER
The claims are directed to a mobile home care unit. Claim 1,
reproduced below, with emphasis added, is illustrative of the claimed subject
matter:
1. A pod system for enabling multi-functional
healthcare space to be provided at a patient's home,
compnsmg:
a. a home medical care system having at least two
pods including a mobile bathroom pod and a mobile
flex room pod, as well as a mobile modular corridor for
connecting the pods to the home the patient;
b. the mobile bathroom pod including:
i. a floor, walls and a roof and including a
toilet, shower and a sink;
ii. adjustable supports for engaging the ground
or other support structure and for adjusting the height
of the mobile bathroom pod with respect to the
ground or other support structure;
iii. one or more drains formed in the floor;
iv. one or more access openings in at least one
wall and a sliding pocket door for opening and
closing the access opening; and
v. grab bars secured at various locations to the
walls and accessible in tile interior of the mobile
bathroom pod;
c. the mobile flex room pod including:
i. a floor, walls and a roof that define the
mobile flex room pod;
ii. one or more access openings formed in the
walls and a sliding pocket door for opening and
closing the access openings;
iii. grab bars secured at various locations to the
walls and accessible interiorly of the mobile flex
room pod;
iv. adjustable supports for engaging the ground
or other supporting structure and for adjusting the
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Application 15/151,968
height of the mobile flex room pod relative to the
ground or the outer support structure; and
v. one or more drains formed in the floor of tile flex
room pod;
d. an HV AC unit mounted to the wall of each pod for
heating and cooling the respective pods;
e. the mobile corridor module including:
i. a frame structure;
ii. a floor or ramp supported in the frame structure;
iii. a roof supported by the frame structure;
iv. a pair of adjustable accordion sidewalls supported
by the frame structure and forming sidewalls of the
corridor module; and
v. the frame structure including a pair of tracks for
receiving and supporting the adjustable accordion
sidewalls and permitting the accordion sidewalls to be
extended and retracted so as to effectively adjust the
length of the mobile corridor module;
f. wherein the mobile bathroom pod and the mobile flex
room pod are disposed in side-by-side relationship and
where at least one access opening associated with the
mobile bathroom pod and at least one access opening
associated with a mobile flex room pod are aligned such
that the patient can move back and forth between the two
pods;
g. utility provisions associated with one or both of the
pods and including:
i. an electrical panel mounted on at least one of the
pods;
ii. a water inlet associated with at least one of the pods;
and
iii. a water heater associated with at least one of the
pods for heating incoming water; and
h. wherein the corridor module is operatively connected
to one access opening of one of the pods and extends
therefrom to an access opening associated with the home
of the patient such that the patient can move between the
home and the two pods.
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Application 15/151,968
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hone et al.
("Hone")
Scott
Muha et al.
("Muha")
Stewart
Meserini
us 4,120,067
us 4,622,787
US 2003/0140571 Al
US 2013/0081333 Al
US 8,919,049 B2
REJECTIONS 1
Oct. 17, 1978
Nov. 18, 1986
July 31, 2003
Apr. 4, 2013
Dec. 30, 2014
Claims 1---6 are rejected under 35 U.S.C. § 112(a) as failing to comply
with the enablement requirement. 2
Claims 1-6 are rejected under 35 U.S.C. § 112(b) second paragraph as
being indefinite. 3
Claims 1--4, and 12 are rejected under 35 U.S.C. § 103 as being
unpatentable over Meserini, Muha, Hone and Scott.
Claims 5, 7, and 13 are rejected under 35 U.5.C. § 103 as being
unpatentable over Meserini and Hone.
Claims 6 and 8 are rejected under 35 U.5.C. § 103 as being
unpatentable over Meserini, Hone and Muha.
Claim 9 is rejected under 35 U.S.C. § 103 as being unpatentable over
1 As the Examiner's objection to the drawings does not relate to a rejection,
it is a petitionable matter outside the scope of our jurisdiction and not
addressed herein. In re Hengehold, 440 F. 2d 1395, 1404 (CCPA 1971).
2 As the grounds for rejection identified by the Examiner would seem to be
applicable to all dependent claims it is unclear why claims 9, 10, 12 and 13
were omitted from this rejection.
3 See note 2.
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Application 15/151,968
Meserini, Muha, Hone, Scott, and Stewart.
Claims 10 and 11 are rejected under 35 U.5.C. § 103 as being
unpatentable over Meserini, Hone, and Stewart.
OPINION
§§ l 12(a) and (b)
The basis for the Examiner's enablement rejection of independent
claim 1 appears to be that due to the phrase "so as to" in clause ( e )( v ), claim
1 attributes adjustment of the "length of the mobile corridor module"
( emphasis added) to the extension and retraction of only the "accordion
sidewalls," without more. Final Act 4; Ans. 4. Appellant's arguments (App.
Br. 14--16; Reply. Br. 4--5) are not particularly germane to this point and
reflect that Appellant did not fully appreciate the Examiner's reasoning in
this regard. Paragraph 28 of the Specification, cited by Appellant as
supporting the aforementioned limitation, states, with emphasis added,
"accordion walls 24 can be extended and retracted so as to adjust the length
of the sidewalls of the corridor module 14." App. Br. 3. However, this
differs from the language recited in claim 1, and reproduced above, which
lacks the phrase "of the sidewalls." It is noted that, although not cited by
Appellant, paragraph 19 of the Specification does describe how the length
of the corridor module, i.e., in its entirety is made adjustable. However, the
various attributes associated with that capability are omitted from claim 1.
Instead, claim 1 attributes the function of corridor module length
adjustability (i.e., according to Spec. para. 19) with the structure responsible
only for corridor sidewall length adjustability (i.e., according to Spec. para.
28). For a corridor module that includes the various other structures recited
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Application 15/151,968
in claim 1, Appellant does not apprise us of any disclosure in the
Specification that would enable one skilled in the art to make and use such a
module that can have its length adjusted by the extension and retraction of
only its sidewalls. Attributing the results of the functionality described in
paragraph 19 to the functionality described in paragraph 28, without more,
seems to create an impossibility in the Examiner's view, or at least covers
something not enabled by the Specification. Final Act. 4. It would have been
clearer and more consistent with the Specification to recite the "of the
sidewalls" language of paragraph 28. Alternatively, the claim could have
also been clearer and more consistent with paragraph 19 of the Specification
had it recited language expressly indicating that sidewall extension and
retraction "facilitates," or otherwise contributes to, corridor length
adjustment without being the only action responsible for bringing it about.
Though not expressly stated, we think one skilled in the art, reading the
claim in light of the Specification, would ultimately understand the claim
language "so as to" to mean that the accordion walls help bring about
module length adjustment without being exclusively responsible for it.
Although the claim could have been made more clear and more consistent
with the Specification, as we ultimately think one skilled in the art would
arrive at an understanding that differs from the one on which the Examiner's
enablement rejection is premised, we do not sustain the Examiner's
enablement rejection of claim 1 on this ground.
The Examiner also rejected claim 5 under§ 112(a) because of the
description of the corridor as "movable." Final Act. 4, 5. "[M]ovable" is a
broad term and could perhaps include movability in ways not described in
the Specification, such as after assembly or construction, as the Examiner
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seems to suggest. Id. However, it also encompasses the type of movability
undisputedly described in that the corridor can be collapsed and transported
to an alternate location. App. Br. 15. When giving the term "movable" its
broadest reasonable interpretation in light of the Specification, as the PTO
must, we cannot agree that one skilled in the art would interpret the term so
broadly so as to encompass unsupported subject matter such as the module
being movable during use at the installation site, to the extent that is the
Examiner's position. 4 See, e.g., In re Wolfensperger, 302 F.2d 950 (CCPA
1962) ("[A] disclosure, unequivocal in and of itself, may not be held
wanting merely by reason of a speculation that one skilled in the art might
interpret the teaching of the inventor in a remote and equivocal manner.").
Accordingly, we do not sustain the Examiner's enablement rejection of
claim 5 on this ground.
Although, for the reasons discussed above, it could perhaps have been
made clearer what Appellant intended to claim with claims 1 and 5, the
Examiner has not shown why there is sufficient uncertainty so as not to
reasonably apprise this skilled artisan as to the scope of the subject matter
claimed. Inconsistency between the claimed subject matter and the subject
matter disclosed in the Specification is an issue typically resolved under the
requirements of 35 U.5.C. § 112(a) as opposed to 35 U.5.C. § 112(b ). App.
Br. 15-16; see also MPEP § 217 4 ( citing In re Borkowski, 422 F .2d 904
(CCPA 1970)). Although, in some instances, this situation may create an
issue of claim clarity (see, e.g., MPEP §§ 2173.03, 608.0l(o), 1302.01), with
regard to the limitations discussed above, the Examiner has not provided
4 This is not expressly indicated by the Examiner in the Final Rejection and
the Answer does not provide any further clarification.
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sufficient explanation as to why the scope of the claimed subject matter is
unclear. See Final Act. 4 (focusing only on the uncertainty regarding how
the device would operate). Accordingly, we do not sustain the Examiner's
indefiniteness rejections of claims 1 and 5 on these grounds.
For the reasons discussed above, we do not sustain either the
Examiner's 35 U.5.C. § 112(a) rejection of claims 1-6 or the Examiner's 35
U.5.C. § 112(b) rejection of claims 1---6 rejection on the grounds discussed
above.
An additional grounds for rejecting claim 1 under 35 U.5.C. § 112(b)
was the apparent omission of the word "of' in the recited phrase, "the pods
to the home the patient." Final Act. 4--5. Appellant does not dispute this,
arguing only that the phrase should be interpreted as, "the pods to the home
of the patient" instead of being interpreted as recited. App. Br. 16. Although
this is a relatively minor issue, Appellant appears to recognize the need to
revise the claim and does not present any arguments explaining why the
§ 112(b) rejection on this grounds was inappropriate. In prosecution before
the PTO "it is the applicants' burden to precisely define the invention, not
the PTO's." In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997).
Accordingly, we sustain the Examiner's 35 U.5.C. § 112(b) rejection of
claims 1--4 on this ground.
Prior art rejections
The rejection of claims 1--4 and 12 on Meserini, Muha, Hone, and
Scott, hinges on the reasonableness of the Examiner's interpretation of the
recited term "tracks" as including the brackets 42 of Hone. Final Act. 8-9;
App. Br. 10-15. The Examiner appears to accept Appellant's proffered
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definitions of the term "tracks." Ans. 3. However, it is unclear why the
Examiner believes Hone's stationary brackets, responsible only for
supporting the pivoting or bending frame uprights 32, 32 ', are "a line or
route along which something moves." Id. Brackets 42 do not appear to
satisfy this definition or any other of record. Accordingly, the Examiner's
rejection of claims 1--4 and 12 on Meserini, Muha, Hone, and Scott cannot
be sustained on the basis expressly set forth by the Examiner.
Claims 5 and 7, which are rejected based on Meserini and Hope, are
argued as a group for which claim 5 is representative. 37 C.F.R.
§ 4I.37(c)(l)(iv). Appellant's arguments against this rejection are predicated
on the notion that because Meserini describes collar 120 as "important" it
would not have been obvious to replace or reconstruct it according to the
Examiner's proposed modification. App. Br. 10-13. We disagree with this
argument.
Characterizing something as "important" does not necessarily negate
the obviousness of making alterations or improvements to it. The
Examiner's proposed substitution to include accordion walls does not
remove or interfere with the purpose of Meserini's collar. Ans. 3. Rather,
such a modification would facilitate installation and alignment. Ans. 3. We
are not apprised of any specific technical reason why replacing a stationary
wall with an accordion wall involves such substantial reconstruction so as to
negate obviousness as Appellant contends. App. Br. 13. Accordingly, we
sustain the Examiner's rejection of claims 5 and 7 based on Meserini and
Hope.
Appellant does not discuss the remaining claims or rejections under
37 C.F.R. § 4I.37(c)(l)(iv). The absence of arguments constitutes a waiver
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of any arguments pertaining related to the remaining claims or rejections.
See e.g. In re Berger, 279 F.3d 975 (Fed. Cir. 2002); Hyatt v. Dudas, 551
F.3d 1307, 1314 (Fed. Cir. 2008) ("[T[he applicant can waive appeal ofa
ground of rejection."). Accordingly, the rejections of claims 6, 8, 10, 11, and
13 are sustained.
The rejection of claim 9 is also not argued by Appellant. In rejecting
claim 9 the Examiner cited the Stewart reference as satisfying the more
specific recitations further limiting the "tracks" recited in claim 1. Final Act.
14--15. That Stewart's track 24 is a "track" in accordance with the broadest
reasonable meaning of the term discussed above is not disputed by
Appellant. The Examiner also articulated reasoning as to why it would have
been obvious to incorporate tracks like that depicted in Stewart into a device
based on the teachings ofMeserini, Muha, Hone and Scott. Final Act. 15.
This Board has held that an Examiner's rejection of a dependent claim under
35 U.S.C § 103 may constitute an implied obviousness rejection of the
independent claim from which that claim depends. See Ex parte
Janakiraman, 2009 WL 1270322 (BP AI May 6, 2009) (informative)
(discussing In Ormco Corp. v. Align Technology, Inc., 498 F.3d 1307, 1309--
20 (Fed. Cir 2007)). The Stewart reference was previously of record and
appears to remedy the major deficiency in the Examiner's rejection of claim
1 argued by Appellant and discussed above. However, Appellant does not
offer any arguments pertaining to Stewart or the Examiner's reliance
thereupon.
On the record before us, we think it was implicit that had the rejection
of claim 1 not been sustained due to the unreasonably broad interpretation of
the term "tracks," as Appellant argued, the Examiner's reliance on Stewart
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would have remedied this deficiency. Accordingly, we sustain the
Examiner's rejection of claims 1--4 and 12 as implicitly being based on the
combination of Meserini, Muha, Hone, Scott, and Stewart as discussed with
regard to dependent claim 9. Although Appellant had an opportunity to
address this issue in their briefing and elected not to do so, we will
nevertheless, in "an abundance of fairness," designate this opinion as
including new grounds of rejection so as to ensure Appellant has a fair
opportunity to respond. See Ex parte Janakiraman, supra ( citing Ex parte
Letts, 88 USPQ2d 1854, 1859 (BPAI 2008)).
DECISION
The Examiner's rejection of claims 1-6 under 35 U.S.C. § 112(a) as
failing to comply with the enablement requirement is reversed.
The Examiner's rejection of claims 1--4 under 35 U.S.C. § 112(b) as
being indefinite is affirmed, but only on the ground specified above. The
Examiner's rejection of claims 5 and 6 under 35 U.S.C. § 112(b) as being
indefinite is reversed.
The Examiner's rejection of claims 1--4, and 12 under 35 U.S.C. § 103
as being unpatentable over Meserini, Muha, Hone and Scott is affirmed and
modified to expressly include Stewart. We designate our affirmance of this
rejection as introducing new grounds.
The Examiner's rejection of claims 5, 7, and 13 under 35 U.5.C. § 103
as being unpatentable over Meserini and Hone is affirmed.
The Examiner's rejection of claims 6 and 8 under 35 U.5.C. § 103 as
being unpatentable over Meserini, Hone and Muha is affirmed.
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The Examiner's rejection of claims 9 under 35 U.S.C. § 103 as being
unpatentable over Meserini, Muha, Hone, Scott, and Stewart is affirmed.
The Examiner's rejection of claims 10 and 11 under 35 U.5.C. § 103
as being unpatentable over Meserini, Hone, and Stewart is affirmed.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the
[ A Jppellant, within two months from the date of the decision,
must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal as
to the rejected claims:
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 prosecution will be remanded to the
examiner. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, [ A Jppellant may
again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
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Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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)(l )(iv).
AFFIRMED5; 37 C.F.R. § 4I.50(b)
5 "The affirmance of the rejection of a claim on any of the grounds specified
constitutes a general affirmance of the decision of the examiner on that
claim, except as to any ground specifically reversed." 37 C.F.R. § 4I.50(a).
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