Ex Parte Drwiega

Patent Trial and Appeal BoardMar 10, 2016

12660352 (P.T.A.B. Mar. 10, 2016)

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. 12/660,352 02/25/2010 Jerzy Drwiega 5258-1001 8446 7590 03/10/2016 Gregory B. Beggs Law Office of Gregory B. Beggs 928 Warren Avenue Downers Grove, IL 60515 EXAMINER HELVEY, PETER N. ART UNIT PAPER NUMBER 3782 MAIL DATE DELIVERY MODE 03/10/2016 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 JERZY DRWIEGA ____________ Appeal 2014-002654 Application 12/660,352 Technology Center 3700 ____________ Before EDWARD A. BROWN, GEORGE R. HOSKINS, and BRANDON J. WARNER, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Jerzy Drwiega (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1 and 2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). CLAIMED SUBJECT MATTER The disclosure relates to “a protective casing intended for presentation and protection against damage, soiling and harmful impact of the environment of the stored documents or other inserted items.” Spec. 1. Appeal 2014-002654 Application 12/660,352 2 Claims 1 and 2 are independent. Claim 1 is illustrative of the claimed subject matter, and reads: 1. A protective casing comprising two foil sheets of different lengths conjoined along three edges, an upper edge of the longer sheet being conjoined with an overlap creating a protective flap, and a bottom side of the longer sheet being provided with slips and magnets. Appeal Br. 25 (Claims App.). REJECTION Claims 1 and 2 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Segal (US 3,561,670, issued Feb. 9, 1971) and Rogers (US 6,116,412, issued Sept. 12, 2000). ANALYSIS Obviousness over Segal and Rogers Claim 1 recites, in part, a “protective casing comprising two foil sheets of different lengths conjoined along three edges” and “an upper edge of the longer sheet being conjoined with an overlap creating a protective flap.” Appeal Br. 25 (Claims App.) (emphasis added). The Examiner finds that Segal discloses a protective casing comprising two foil sheets 1, 2 conjoined together along three edges, and an upper edge of the rear sheet being conjoined with a flap 5. Final Act. 2 (citing Segal, Fig. 1). The Examiner states that Segal does not expressly disclose “the longer rear sheet (without including the flap).” Id. The Examiner also finds that Rogers discloses a casing similar to that of Segal, having a rear sheet that is longer than a front sheet. Final Act. 3 (citing Rogers, Fig. 3). The Examiner concludes that it would have been an obvious matter of design choice to make different portions of the front and Appeal 2014-002654 Application 12/660,352 3 back sheets in Segal of whatever relative sizes were desired, such as having a longer rear sheet as taught by Rogers. Id. Appellant contends that Segal does not disclose an overlap or a protective flap. Appeal Br. 14–15. According to Appellant, because Segal teaches a casing open to receive contents, an overlap as well as a flap would be an impediment. Id. at 14. Appellant asserts that because the casing is held open, the “flap” of Segal, as described by the Examiner, does not protect anything. Id. at 15. Segal discloses a receptacle including a front panel 1 and a cooperating rear panel 2 joined together along three edges. Segal, Fig. 1; col. 2, ll. 4–6. Rear panel 2 is formed with an extension 5. Id. at col. 2, ll. 6–7. Segal teaches that when the receptacle is full, its “flap” is folded down to retain its contents within. Id. at col. 2, ll. 14–18. We interpret this “flap” to correspond to the “extension” consistent with the disclosure that the flap is “folded down to retain” the contents within the receptacle. Id. As shown in Figure 1 of Segal, extension 5 of rear panel 2 can be folded down toward front panel 1 for this purpose. We also find that Segal does disclose a “longer sheet,” as claimed. Segal’s extension 5 forms a portion of rear panel 2. Consequently, rear panel 2 is longer than front panel 1 because extension 5 extends above front panel 1. Id. at Fig. 1. Segal teaches that the extension may be folded down, and does not limit where on the rear panel the fold may be made. Id. at col. 2, ll. 14–18. When the extension is folded down at the selected location along the extension (above end wall 4), a protective flap is created. Id. at Fig. 1. The flap will help to retain the contents of the receptacle. The flap may be created along the extension in such a way that the area below the Appeal 2014-002654 Application 12/660,352 4 fold would be a “longer sheet” relative to front panel 1, due to the position of the fold along the extension. We disagree with Appellant’s contention that Segal does not disclose an overlap or a protective flap. Appeal Br. 14–15. Extension 5, when folded, creates an overlap between the extension and the portion of the receptacle that the extension is folded over. Additionally, the flap created by the extension, in helping the receptacle retain its contents, protects the contents from spilling outside the receptacle. Appellant contends that in interpreting claim 1, the longer sheet must end where it is conjoined to the protective flap. Appeal Br. 15. Appellant also contends that the longer sheet must be distinctive from the overlap and protective flap, as they may not be the same element. Id. at 16. These contentions are not persuasive. Claim 1 recites that the protective casing comprises two foil sheets of different lengths. We construe “the longer sheet” as one of the two foil sheets, and the “shorter” sheet as the other foil sheet. To the extent Appellant may be contending that the longer sheet is a “separate” piece of material from the “overlap” or “protective flap,” claim 1 does not recite any limitation that requires such construction. The Patent and Trademark Office “determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (citing In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (“‘claims . . . are to be given their broadest reasonable interpretation consistent with Appeal 2014-002654 Application 12/660,352 5 the specification, and . . . claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.’”) (citations omitted). Accordingly, we look to Appellant’s Specification to determine whether it provides guidance as to the meaning of “the longer sheet being conjoined with an overlap creating a protective flap.” We note that the term “conjoined” is used in the Specification (apart from the original claim) only in describing the preferred embodiment shown in Figures 1 and 2. Spec. 3, ll. 7–13. The most relevant portion of the Specification with respect to Appellant’s interpretation states that “[u]pper edge 7 of the longer sheet 2 of the protective casing is conjoined 8, 9 with the protective flap.” Id. at ll. 9–10. To act as his own lexicographer, “the patentee must ‘clearly express an intent’ to redefine the term.” See Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (internal citations omitted). Nothing in this description indicates a clear intent by Appellant to define “conjoined” to require the longer sheet to effectively end where it is “conjoined” to the protective flap, or the longer sheet to be distinctive from the overlap and protective flap. Consequently, we disagree with Appellant’s claim interpretation. Moreover, folding Segal’s extension 5 down to create a flap would result in an upper edge of back panel 2 (which includes the portion of extension 5 below the fold), “being conjoined with an overlap creating a protective flap.” Claim 1 does not specify the extent of the “overlap,” or the structure or location of the “protective flap,” in a way that distinguishes over Segal’s structure. For the above reasons, we find that Segal discloses the claim limitations requiring a protective casing comprising two foil sheets of Appeal 2014-002654 Application 12/660,352 6 different lengths conjoined along three edges, and an upper edge of the longer sheet being conjoined with an overlap creating a protective flap. Claim 1 further recites that “a bottom side of the longer sheet [is] provided with slips and magnets.” Appeal Br. 25 (Claims App.). The Examiner determines that Segal does not disclose the required slips and magnets. Final Act. 2. The Examiner finds that Rogers discloses a casing having magnets 20, 21 within compartments, interpreted as slips, on the back of the casing. Id. at 3 (citing Rogers, Fig. 3). Appellant does not contest the Examiner’s interpretation of the compartments of Rogers as slips. See Appeal Br. 14–23. Additionally, we note that Rogers discloses that the magnets are used to stabilize the casing in their placement on the back of the casing. See Rogers, col. 2, ll. 13–15. The Supreme Court in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) stated that in “‘simply arrang[ing] old elements with each performing the same function it had been known to perform’ and yield[ing] no more than one would expect from such an arrangement, the combination is obvious” (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)). Here, Rogers discloses that slips and magnets are old elements, and Segal discloses that the receptacle is an old element. In placing these slips and magnets on the bottom side of the rear panel of Segal’s receptacle, these elements would perform the same function they had been known to perform, yielding what is expected from such an arrangement. Accordingly, it would have been obvious for someone skilled in the art to add the slips and magnets of Rogers to one or more locations on rear panel 2 of Segal, such as to the “bottom side” of rear panel 2. As Rogers discloses the use of the Appeal 2014-002654 Application 12/660,352 7 magnets in stabilizing a casing, further motivation to add these magnets to the bottom side of rear panel 2 of Segal could be found in their ability to stabilize the receptacle and securely hold it to a surface. Rogers, col. 2, ll. 13–15. Claim 2 is similar to claim 1, also reciting, in part, a “protective casing comprising two foil sheets of different lengths conjoined along three edges” and “an upper edge of the longer sheet being conjoined with an overlap creating a protective flap.” Appeal Br. 25 (Claims App.). For these features, our above analysis in relation to claim 1 applies equally to claim 2. Claim 2 further recites the protective casing comprising “a back side of the longer sheet being provided with sleeves and magnets.” Appeal Br. 25 (Claims App.). These limitations are slightly different from those in claim 1 in that claim 2 requires “a back side” and “sleeves” instead of “a bottom side” and “slips,” respectively. Id. As with the above analysis regarding slips for claim 1, Appellant does not contest the Examiner’s interpretation of the compartments of Rogers as sleeves. Id. at 14–23. Consequently, our analysis in relation to slips recited in claim 1 similarly applies to sleeves recited in claim 2. The limitation of “a back side” recited in claim 2 is slightly different than “a bottom side,” as recited in claim 1. However, our obviousness analysis above for claim 1 still applies to the “back side” limitation because one of ordinary skill in the art likewise would have found it obvious to place the magnets and sleeves of Rogers anywhere on the back side of rear panel 2 of Segal where these elements would provide the desired function. For the above reasons, we sustain the rejection of claims 1 and 2 under 35 U.S.C. § 103(a) as unpatentable over Segal and Rogers. However, Appeal 2014-002654 Application 12/660,352 8 because our analysis in affirming this rejection elaborates on, and supplements, the findings and reasoning articulated by the Examiner, we designate our affirmance as a new ground of rejection pursuant to 37 C.F.R. § 41.50(b) to provide Appellant with an opportunity to respond thereto. DECISION We AFFIRM the Examiner’s decision rejecting claims 1 and 2 as unpatentable over Segal and Rogers, and designate our affirmance as a NEW GROUND OF REJECTION. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b), which provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) 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 considered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. . . . 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; 37 C.F.R. § 41.50(b)