Ex Parte Gerard

Patent Trial and Appeal Board

Aug 15, 2016

13296592 (P.T.A.B. Aug. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/296,592 11/15/2011
22822 7590
LEWIS RICE LLC
ATTN: BOX IP DEPT.
600 Washington Ave.
Suite 2500
ST LOUIS, MO 63101
08/17/2016
FIRST NAMED INVENTOR
Justin C. Gerard
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.
455/1953US 3315
EXAMINER
ANDERSON, DON M
ART UNIT PAPER NUMBER
3781
NOTIFICATION DATE DELIVERY MODE
08/17/2016 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):
IPDEPT@LEWISRICE.COM
KDAMMAN@LEWISRICE.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUSTIN C. GERARD
Appeal2014-007273
Application 13/296,592
Technology Center 3700
Before CHARLES N. GREENHUT, LYNNE H. BROWNE, and
THOMAS F. SMEGAL, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Justin C. Gerard (Appellant) appeals under 35 U.S.C. § 134 from the
rejection of claims 1-17. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter NEW GROUNDS OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
Appeal2014-007273
Application 13/296,592
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A receptacle for receiving waste, the receptacle comprising:
an inner can having opposing ends and an outer wall
defining a hollow interior volume, the first end being closed and
the second end being open for receiving waste within the interior
volume; and
an outer cover for receiving the inner can, the outer cover
compnsmg:
a side wall designed to partially and correspondingly
surround the outer wall of the inner can in close proximity
therewith, the side wall only partially enclosing the outer cover
such that the outer cover can receive the inner can through an
open side of the side wall; and
a top and a foot extending beyond the side wall and
forming an interior space within the outer cover, such that when
the outer cover receives the inner can, the top and the foot extend
above and below, respectively, from the outer wall of the inner
can;
wherein the outer cover only partially surrounds the inner
can such that at least a portion of the outer wall of the inner can
forms a portion of an outer surface of the receptacle; and
wherein there is a gap between the second end of the inner
can and the top of the outer cover at the open side of the outer
cover, through which gap waste can pass to be received in the
hollow interior volume.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Petras
Pruitt
Harris
Chang
Sawford
us 5,890,615
us 5,897,018
US 2005/0087534 Al
US 6,962,301 B 1
US 2009/0001203 Al
2
Apr. 6, 1999
Apr. 27, 1999
Apr. 28, 2005
Nov. 8, 2005
Jan. 1,2009
Appeal2014-007273
Application 13/296,592
REJECTIONS
I. Claims 1, 2, 4, 6, 8, 11, 12, and 14 stand rejected under 35
U.S.C. §102(b) as being anticipated by Petras.
II. Claim 3 and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Petras and Pruitt.
III. Claims 5, 10, and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Petras and Chung.
IV. Claims 7 and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Petras and Harris.
V. Claims 8, 9, 14, and 15 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Petras and Sawford.
DISCUSSION
New Grounds of Re} ection
Written Description
35 U.S.C. § 112, first paragraph states:
The specification shall contain a written description of the
invention, and of the manner and process of making and using it,
in such full, clear, concise, and exact terms as to enable any
person skilled in the art to which it pertains, or with which it is
most nearly connected, to make and use the same, and shall set
forth the best mode contemplated by the inventor of carrying out
his invention.
Claims 1-11 are rejected under 35 U.S.C. § 112, first paragraph, for
failing to comply with the written description requirement.
Claim 1 requires "a top and a foot extending beyond the side wall and
forming an interior space within the outer cover, such that when the outer
cover receives the inner can, the top and the foot extend above and below,
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Application 13/296,592
respectively, from the outer wall of the inner can." Appeal Br. 24 (emphasis
added). The emphasized portion of this limitation is directed to new matter
not supported by the original disclosure. In describing the top and foot of
the first embodiment of the invention the Specification states:
the outer cover (103) also includes a top (319) and a foot (315)
which are attached to the side wall (311) and together serve to
form an enclosed structure generally having at least one open
side (303). The top (319) and foot (315) generally extend beyond
the side wall (311) in such fashion that the outer cover (103)
effectively forms a hollow shape corresponding to the shape of
the inner can (101 ), however, the shape is generally larger and is
incomplete due to the existence of open side (303). The outer
cover (103) is also significantly taller than the inner can (101) so
that the underside (329) of the top (319) is spaced from the rim
(119) when the inner can (101) is placed within the outer cover
(103) as shown in FIGS. 1-3.
Spec. i-f 31. The Specification further states:
The foot (315) may include an extension (341) which also
pushes up into the hollow interior (343) of the outer cover (103).
The extension (341) will generally be sized and shaped to fit
within the depression ( 141) in the base (ll5) of the inner can so
that the inner can (101) is effectively provided with a female
connector designed to mate with the male connector of the outer
cover (103). This serves to help hold the inner can in place ....
Further, the inner can (101) may include a swing latch or similar
connection (805) to help hold the inner can (101) in place or the
foot (315) may include depression in the opposing direction to
correspond to "feet" depressions on the base (115) of the inner
can (101).
Spec. i-f 33. Thus, the inner can sits on the foot 315 below the top 319. The
Drawings illustrate the structure as described.
An ordinary and customary meaning of the claim term "from" is "-
used as a function word to indicate a starting point of a physical movement
or a starting point in measuring or reckoning or in a statement of limits."
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Merriam-Webster.com, http://www.merriam-webster.com/dictionary/from
(accessed August 10, 2016). In accordance with this definition and
consistent with the description of the top and foot in the Specification and as
shown in the Drawings, the original disclosure does not provide support for
a top or a foot that extend "from the outer wall of the inner can" as required
by claim 1 because, neither the top nor the foot have any type of starting
point at the outer wall of the inner can. As, the original disclosure does not
support this limitation which was added by amendment in the paper filed
April 3, 2013, it is directed to new matter.
Claims 2-11 depend from claim 1 and likewise contain the same new
matter.
Indefiniteness
35 U.S.C. § 112, second paragraph, states, "[t]he specification shall
conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his invention."
Claims 1-11 are rejected under 35 U.S.C. § 112, second paragraph, as
indefinite.
When read in light of the Specification the meaning of the claim
limitation "the top and the foot extend above and below, respectively, from
the outer wall of the inner can" in claim 1 cannot be understood. Appeal Br.
24. The plain meaning of this limitation is that the top and foot extend in
some direction from the outer wall of the inner can; however, as discussed
supra, this understanding is not supported by the Specification.
Accordingly, this limitation fails to particularly point out and distinctly
claim the subject matter that Appellant regards as his invention.
Claims 2-11 depend from claim 1 and likewise are indefinite.
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Application 13/296,592
Claims 1, 2, 4, 6, 8, and 11
Rejection I
Having determined that claims 1, 2, 4, 6, 8, and 11 are indefinite, we
cannot sustain the rejections of these claims under 35 U.S.C. § 102(b)
because to do so would require speculation as to the scope of the claims.
See In re Aoyama, 656 F.3d 1293, 1300 (Fed. Cir. 2011) (holding that the
Board erred in affirming an anticipation rejection of indefinite claims).
For this reason, we do not sustain the rejection of claims 1, 2, 4, 6, 8,
and 11 as anticipated by Petras.
Claims 12 and 14
Appellant does not provide separate arguments for the patentability of
claim 14. See Appeal Br. 9-17. Accordingly, claim 14 stands or falls from
independent claim 12 from which it depends.
The Examiner finds that Petras discloses each and every limitation of
claim 12. See Final Act. 2. In particular, the Examiner finds that Petras
discloses "a foot (24, col. 411. 9-15, figure 1) extending beyond the side
wall (in the vertical direction as oriented in figure 1 )." Final Act. 2.
Appellant argues that "the housing bottom (24) of Petras does not
extend 'beyond' housing side (26 & 30) of Petras, as does the foot (315) of
Applicant's claims." Appeal Br. 10. Responding to this argument, the
Examiner explains how Petras meets the limitation at issue stating:
Petras has clearly delimited the side wall and foot by the lower
border called out by the Examiner in annotated figure 1. The
region below (as oriented in figure 1) the border is the foot and
the region between the upper and lower borders is the side wall.
The foot of Petras clearly extends beyond the side wall in the
vertical direction as oriented in figure 1. In other words, the
thickness of the foot extends below the side wall as oriented in
figure 1.
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Ans. 8.
Appellant further argues that "[ t ]he Examiner has clearly
misinterpreted the meaning of the term 'beyond' and has taken liberties with
the disclosure of Petras." Appeal Br. 11. In support of this argument,
Appellant notes that "Figure 1 of Petras depicts only a bottom (24) with a
contiguous adjoining side wall (26 & 30) with no indication of where side
wall (26 & 30) ends and housing bottom (24) begins." Id.
The Specification describes multiple embodiments of the invention.
See, generally, Spec. The claims at issue are not limited to a particular
embodiment. In the embodiment shown in Figures 8a and 8b sidewall 311
and foot 315 are joined in the same manner as the sidewall and foot of
Petras. Compare Figs. 8a and 8b with Petras Fig. 1. Thus, to the extent that
the foot of the instant invention "extends beyond" the sidewall, so does
Petras' foot. Accordingly, Appellant's argument is unconvincing.
In addition, Appellant argues that in the context of the Specification,
the "Examiner's inteipretation of the term 'beyond' does not comport with
the meaning of this term as would be understood by one of ordinary skill in
the art, because 'beyond' in this context (see, e.g., Claim 12) would be
understood as meaningfarther on than or more distant than, with respect to
the major plane of the described element." Appeal Br. 12.
Responding to this argument, the Examiner finds that "[t]he
Cambridge Advanced Learner's Dictionary, online edition, provides the
following definition for 'beyond', 'further away in the distance (than
something)."' Ans. 8. Appellant does not contest this definition, nor does it
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Application 13/296,592
appear to be inconsistent with the use of the term "beyond" in the
Specification. Thus, Appellant's argument is unconvincing. 1
Next, Appellant contends that "if the housing bottom (24) of Petras
did extend beyond the adjoining side wall (26 & 30), Petras would fail to
operate as intended. Appeal Br. 12. In support of this contention, Appellant
notes that Petras includes "a foot pedal is used for 'pivoting the bin forward
when in use" and argues that "[i]f the housing bottom (24) of Petras
extended beyond the adjoining element, the bin (14) would be unable to
pivot to an open position because there would not be adequate clearance to
allow for the pivoting of the bin (14)." Appeal Br. 12-13.
Appellant is correct that Petras discloses a foot pedal. See, e.g., Petras
4:24--25. However, Petras further shows a cutout in housing bottom 24
which permits the foot pedal to operate. See Petras Fig. 1. We note that
claim 12 does not preclude the provision of such a cutout. Thus, Appellant's
argument is unconvincing.
Turning to the requirement for a top which extends beyond a side wall
of the receptacle, Appellant essentially repeats the same arguments
discussed supra. See Appeal Br. 13-15. These arguments are unconvincing
for the reasons discussed above because claim 12 does not specify the
direction in which the top must extend beyond the side wall. 2
Then, Appellant argues that Petras fails to disclose a top and a foot
that extend above and below, respectively, from the outer wall of the inner
can. See Appeal Br. 15 (citing claim 12). Claim 12 does not include this
1 We further note that Petras' foot 24 does extend beyond sidewall 26 in a
horizontal direction (i.e. with respect to the major plane of the sidewall).
2 We note that Petras' top 28 also extends beyond sidewall 26 in a horizontal
direction, which is all that is required by claim 12.
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Application 13/296,592
limitation. See Appeal Br. 25-26. Thus, Appellant's argument is not
commensurate in scope with claim 12.
Finally, Appellant argues that Petras fails to disclose "the limitation
when the outer cover surrounds the inner can, the top and the foot extend
beyond the outer wall, above and below the first end and the second end,
respectively, the inner can." Appeal Br. 16. In support of this argument,
Appellant contends that "the Examiner's interpretation of 'beyond' if
applied to the preceding portion of the claim 'beyond the side wall' would
render the further limitation useless." Id. However, as discussed supra, the
Examiner's claim construction for the term "beyond" is reasonable and
consistent with Appellant's disclosure-in particular the embodiment
shown in Figures 8a and 8b. Thus, Appellant's argument is unconvincing.
For these reasons, we sustain the Examiner's decision rejecting
independent claim 12, and claim 14 which falls therewith.
Rejections II and III
Claims 3, 5, and 10
Having determined that claims 3, 5, and 10 are indefinite, we cannot
sustain the Examiner's decision rejecting these claims under 35 U.S.C.
§ 103(a) because to do so would require speculation as to the scope of the
claims. In re Steele, 305 F.2d 859, 862---63 (CCPA 1962) (Holding that the
Board erred in affirming a rejection of indefinite claims under 35 U.S.C.
§ 103(a)).
Claims 13 and 16
Appellant does not provide separate arguments pertaining to
Rejections II and III. Rather, Appellant asserts that the Examiner has
incorrectly based all of the § 103 rejections off of the Petras reference.
Appeal Br. 1 7.
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As we find no deficiencies in the rejection of claim 12, from which
claims 13 and 16 depend, as anticipated by Petras, Appellant's argument is
unpersuasive. Accordingly, we sustain the Examiner's decision rejecting
claim 13 as unpatentable over Petras and Pruitt and we sustain the
Examiner's decision rejecting claim 16 as unpatentable over Petras and
Chang.
Rejection IV
Claim 7
Having determined that claim 7 is indefinite, we cannot sustain the
Examiner's decision rejecting these claims under 35 U.S.C. § 103(a) because
to do so would require speculation as to the scope of the claims. Steele, 305
F.3d at 862-863.
Claim 17
The Examiner determines that Petras fails to disclose a hole in the side
wall as claimed. See Final Act. 5. The Examiner finds that Harris "discloses
a receptacle designed to hold a plastic bag that has an outer cover with a hole
arranged within the side wall in a position opposed to the open side." Id. at
6 (citations omitted). Based on these findings, the Examiner determines that
it would have been obvious to "include[] a hole in the side wall of the outer
container of Petras as taught by Harris so that trash could be thrown into the
receptacle from either side." Id.
Appellant contends that "[t]he Examiner has failed to provide an
adequate reason to combine because the Examiner's suggested combination
of Petras and Harris would be unusable." Appeal Br. 18. In support of this
contention, Appellant argues that:
Since the Examiner relies on the gap of Petras between the end
of the inner can and the top of the outer cover, the side opposite
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is the back wall (26) of Petras. However, the back wall (26) of
Petras is securely attached to a wall or cabinet. Petras discloses
"[ m ]ounting means on the housing suitable for attaching the
housing to a wall, floor, interior of a cabinet, the underside of the
counter" and that the container assembly should be "fastened
securely to studs." (Petras, Col. 2, Line 22-24, 53-55). If Petras
is modified by the hole of Harris, the hole is in the back wall of
Petras and is completely obscured by the adjoining cabinetry,
meaning trash cannot be discarded through the hole.
Id. at 19-20.
Responding to this argument, the Examiner notes that "[ m ]ounting the
invention such that the back wall is blocked is just one of several options
disclosed by the Petras reference. Petras also discloses that the invention
may be 'free standing' and attached to the floor (col. 5 11. 24--29)." Ans. 11.
The Examiner correctly determines that "[ s ]uch an arrangement would allow
for the hole in the back wall to be accessed by a user." Id. Thus,
Appellant's argument in unconvincing.
Appellant further contends that "the whole point of Petras is a
garbage can that prevents 'unauthorized opening by domestic pets,
especially dogs and small children.' (Petras, Col. 3, Lines 15-16)." Appeal
Br. 21. In support of this contention, Appellant argues that:
Id.
A person of ordinary skill in the art would not add a hole allowing
trash to be discarded from both sides because, even assuming the
hole could be placed such that trash could actually be discarded
through it, any such hole would also allow unauthorized access
to the bin contents by children and dogs, which is the precise
problem that Petras proposes to solve.
Responding to this argument, the Examiner reasons that
[s]lots and holes of all sizes are used for depositing trash (and
other material) into receptacles. Since the purpose of the Petras
invention is to protect the contents of the receptacle from pets
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and children it would make sense that a small hole or slot would
be used so as to prevent unwanted removal of the contents.
Ans. 12. The Examiner further finds that "[i]t is well known in the art to
place a hole or slot in a receptacle so that objects can be deposited in said
receptacle while still making it difficult for objects to be removed," citing
the deposit boxes at bank ATMs as an example of such slots. Id. Based on
this finding, the Examiner determines that "[ t ]he inclusion of a hole in the
back wall of Petras would not frustrate the purpose of the invention." Id.
Appellant does not contest this finding or explain why the Examiner's
reasoning lacks rational underpinnings. Thus, Appellant does not apprise us
of error.
For these reasons, we sustain the Examiner's decision rejecting claim
17.
DECISION
We enter NEW GROUNDS OF REJECTION of claims 1-11 under
35 U.S.C. § 112, first and second paragraphs.
The Examiner's rejections of claims 1-11 are REVERSED.
The Examiner's rejections of claims 12-17 are AFFIRMED.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(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 Appellant,
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:
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( 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 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, appellant 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.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
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