Ex Parte Haschke et al

Patent Trial and Appeal BoardOct 20, 2015

12778597 (P.T.A.B. Oct. 20, 2015)

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. 12/778,597 05/12/2010 EGGO HASCHKE 34990/137729/38 6729 7590 10/20/2015 Raiford A. Blackstone, Jr. Clark Hill PLC 150 N. Michigan Ave., Ste. 2700 Chicago, IL 60601 EXAMINER PASCUA, JES F ART UNIT PAPER NUMBER 3782 MAIL DATE DELIVERY MODE 10/20/2015 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 EGGO HASCHKE and DENNIS NOLAN ____________________ Appeal 2013-004433 Application 12/778,597 Technology Center 3700 ____________________ Before JENNIFER D. BAHR, EDWARD A. BROWN, and MICHAEL L. WOODS, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Eggo Haschke and Dennis Nolan (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1–16. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM and enter a NEW GROUND OF REJECTION. Appeal 2013-004433 Application 12/778,597 2 THE CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A bag for encasing material, the bag comprising: an impervious sheet comprising a top panel, a bottom panel, an extended panel, a tear line separating the extended panel from the bottom panel, and a fold line separating the bottom panel from the top panel, the top panel being defined by a top border, a bottom edge, a bottom border, and the fold line, the bottom panel being defined by a top border, the fold line, a bottom border, and the tear line, and the extended panel being defined by a top border, the tear line, a bottom border, and a top edge; and an impervious liner attached to a first side of the sheet and intersecting the fold line; the first side of the sheet being folded onto itself at the fold line, the top panel top edge being joined to the bottom panel top edge, and the top panel bottom edge being joined to the bottom panel bottom edge. REJECTIONS I. Claims 1–16 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement.1 II. Claims 1–3, 7–12, 14, and 16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Yeager (US 5,839,572, issued Nov. 24, 1998) and Pickering (US 5,495,946, issued Mar. 5, 1996). 1 This was a new ground of rejection introduced in the Examiner’s Answer. Ans. 3–4. Appeal 2013-004433 Application 12/778,597 3 III. Claims 4–6, 13, and 15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Yeager, Pickering, and Lustig (US 4,447,480, issued May 8, 1984). OPINION The issues in this appeal turn on the construction of the term “impervious” in claims 1 and 9. See Ans. 3–10; Appeal Br. 6–10; Reply Br. 2–5. As evidenced by the dictionary definitions cited by Appellants, copies of which are appended to the Appeal Brief as Exhibits A, B, and C, the term “impervious” has a plurality of well-established meanings, which include “not permitting penetration or passage; impenetrable,” “incapable of being injured or impaired, “ and “incapable of being influenced, persuaded, or affected.” Appeal Br., Exh. A, http://dictionary.reference.com/browse/impervious (retrieved June 28, 2012); see also id. at Exh. B., http://www.the freedictionary.com/impervious (retrieved June 28, 2012) and Exh. C, http://www.yourdictionary.com/impervious? (retrieved June 28, 2012). When claim terminology is construed in the United States Patent and Trademark Office, claims are to be given their broadest reasonable interpretation consistent with the specification, reading claim language in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Thus, in light of the plurality of different established meanings for the term “impervious,” we look to Appellants’ Specification for guidance in construing the term. Appeal 2013-004433 Application 12/778,597 4 Aside from claims 1 and 9, Appellants’ Specification does not use the term “impervious.” Spec., passim. Appellants urge us to construe the claimed “‘impervious liner’ [] as one that does not allow liquids to travel therethrough.” Appeal Br. 7. According to Appellants, “[t]his interpretation is completely in accord with the common meaning of the term ‘impervious’” as evidenced by the definitions contained in Exhibits A, B, and C. Id. at 7– 8. Further, Appellants contend that “this meaning is one commonly accepted by those of skill in the art.” Id. at 8 (citing Yeager’s description of “impervious plastic film 315”). Appellants also submit that the description in their Specification of a bag and liner that “would not leak, would not have holes, and would protect from sharp neck bones” clearly conveys that “the liner must be impervious to liquids.” Id. at 9. Appellants’ Specification describes the invention as relating to packaging material for enclosing material such as dressed poultry, including both whole birds and cut-up parts. Spec. 1:15–18. The Specification also explains that “producers tend to place chickens in a bag top end first” and that, when a chicken is beheaded, the neck bones often have sharp edges or points that tend to pinch or pierce the bottom of the bag. Id. at 3:4–7. According to the Specification, Appellants’ invention seeks to address the problem that “[a] pierced bag will leak and will fail to seal the chicken from outside contamination.” Id. at 3:8. The Specification also discloses that liner sheet 160 protects what will become the bottom of the bag from sharp neck bones. Id. at 9:16–18. Thus, when read in light of the Specification, any of the various well- established meanings of the term “impervious” discussed above is a plausible construction for the claim term “impervious” in claims 1 and 9. In Appeal 2013-004433 Application 12/778,597 5 other words, the term “impervious” in claims 1 and 9 could reasonably be construed in light of the disclosed objective of preventing leaks and contamination in Appellants’ Specification as requiring the sheet, liner, and panels of claims 1 and 9 to be incapable of being penetrated by liquids, along the lines of one of the examples from a non-exhaustive list enumerated in one of the definitions contained in Exhibit A. Appeal Br., Exh. A, citing impervious. (1998, 2000, 2003, 2005, 2006, 2007, 2009). In Collins English Dictionary—Complete & Unabridged 10th Ed. Retrieved from http://dictionary.reference.com/browse/impervious (“not able to be penetrated, as by water, light, etc[.]; impermeable”); see also id.at Exh. B., citing same definition. However, these stated objectives also are consistent with an alternative reading of the term “impervious”—as suggested by the Examiner—as preventing passage of solids, such as poultry parts or dirt, as well as a reading of the term as incapable of being injured, impaired, or affected, such as by pinching or piercing by sharp bones. See, e.g., Ans. 6– 8. For the above reasons, the term “impervious” in claims 1 and 9 is amenable to more than one plausible construction, rendering the metes and bounds of this term unclear. Accordingly, pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims 1 and 9 under 35 U.S.C. § 112, second paragraph, as being indefinite. See Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential) (“if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.”). Claims 2–8 and 10–16, each of which depends Appeal 2013-004433 Application 12/778,597 6 either directly or indirectly from one of claims 1 and 9, contain no recitations that might resolve the ambiguity with respect to the construction of the term “impervious,” and, thus, also are indefinite. Accordingly, we also reject claims 2–8 and 10–16 under 35 U.S.C. § 112, second paragraph, as indefinite. We turn now to the rejection of claims 1–16 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. The Examiner rejected claims 1–16 on the basis that Appellants’ Specification, as originally filed, fails to provide support for the language “impervious sheet” and “impervious liner” in claim 1 and the language “impervious top panel,” “impervious bottom panel,” and “impervious liner” in claim 9. Ans. 4. Moreover, the Examiner found that “the specification fails to provide an adequate written description of the metes and bounds of the modifying term ‘impervious’ used to describe the ‘sheet[,’] ‘liner[,’] ‘top panel[,’] and ‘bottom panel’ in claims 1 and 9.” Id. The purpose of the written description requirement in 35 U.S.C. § 112, first paragraph, is to “clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (quoting Vas- Cath Inc. v. Mahurkar, 935 F.2d 1355, 1563 (Fed. Cir. 1991)). “[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad, 598 F.3d at 1351 (citing In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989)). The term “impervious” does not appear in the original disclosure of the present application. As noted above, Appellants’ Specification, aside Appeal 2013-004433 Application 12/778,597 7 from claims 1 and 9,2 does not contain the term “impervious.” The absence of the term “impervious” from the original disclosure is not dispositive as to the question of compliance with the written description requirement. The claimed subject matter need not be described “in haec verba” in the original specification in order to satisfy the written description requirement. In re Wright, 866 F.2d 422, 425 (Fed. Cir. 1989). However, “[t]he disclosure must allow one skilled in the art to visualize or recognize the identity of the subject matter purportedly described.” Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 968 (Fed. Cir. 2002) (citation omitted). Appellants argue that “the fact that the disclosed sheet and liner are ‘impervious’ is an inherent characteristic of the disclosed sheet and liner, and the amendment to include the term ‘impervious’ only defines a known characteristic of the disclosed sheet and liner which is supported in the original specification.” Reply Br. 2–3. According to Appellants, the term “‘[i]mpervious[,’] as used in the claims of the present application, means liquids cannot flow through [and the fact that] the material of the bag and the liner of the bag have this property is inherent in the description of the bag in the specification.” Id. at 3–4 (citing Spec. 1:15–16, 2:16–17, 3:7–8, 9:16– 18); see also id. at 4–5 (contending that, not only do “inherent components of elements recited have antecedent basis in the recitation of the components themselves[, but Appellants] went further . . . also describing an intent to avoid [holes, piercing, leaks, and subsequent contamination], and to protect the bottom of the bag from sharp neck bones”). For the reasons discussed above, the portions of the Specification cited by Appellants do not 2 The term “impervious” was first introduced into these claims in the Amendment filed June 4, 2012, subsequent to the filing date of the present application. Appeal 2013-004433 Application 12/778,597 8 reasonably convey that the bag and liner inherently prevent flow of liquid there through; other interpretations of the cited disclosures are possible. Even if one were to infer from the Specification that holes by piercing would allow leaks of liquid to occur, that does not mean that some types of liquid could not otherwise flow through the materials (without such holes), consistent with the discussion of piercing and leaks in the Specification. Finally, Appellants point out that claims 3, 5, 12, and 14 recite, and their original Specification discloses, polyethylene as an example of the type of material that can be used for the plastic sheet and liner, and assert that the Environmental Protection Agency (EPA) of the United States Government “recognizes that polyethylene is impervious.” Reply Br. 5. In support of this assertion, Appellants quote language from an EPA regulation, which, according to Appellants, “states “An impervious barrier of polyethylene film, a modification of the double pot method, glass plate, or other appropriate apparatus should be used to prevent volatilization from the root zone.’ (emphasis added).” Id. The quoted regulation language does not support Appellants’ assertion. Rather, the reference to an “impervious barrier of polyethylene film” merely shows recognition that there is a polyethylene film that is impervious to volatilization from a root zone, not recognition that all polyethylene structures inherently are impervious. For the above reasons, Appellants fail to persuade us that their Specification reasonably conveys to persons of ordinary skill in the art that Appellants were in possession of the subject matter of independent claims 1 and 9, namely, the impervious panels, sheet, and liner, at the time the present application was filed. Accordingly, we sustain the rejection of claims 1–16 Appeal 2013-004433 Application 12/778,597 9 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Having determined that claims 1–16 are indefinite, we do not sustain the rejections of these claims under 35 U.S.C. § 103(a), 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); 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), because the rejection was based on speculative assumptions as to the meaning of the claims). DECISION The Examiner’s decision rejecting claims 1–16 under 35 U.S.C. § 112, first paragraph, is AFFIRMED. The Examiner’s decision rejecting claims 1–16 under 35 U.S.C. § 103(a) is REVERSED. We enter a new ground of rejection of claims 1–16 under 35 U.S.C. § 112, second paragraph, as indefinite. FINALITY OF DECISION This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b) (2014). 37 C.F.R. § 41.50(b) 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 Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of Appeal 2013-004433 Application 12/778,597 10 the following two options with respect to the new ground 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 reconsidered by the examiner, in which event the prosecution 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. . . . Should Appellants elect to prosecute further before the Examiner pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, the effective date of the affirmance will be deferred until conclusion of the prosecution before the Examiner unless the affirmed rejection is overcome. If Appellants elect prosecution before the Examiner and this does not result in allowance of the application, abandonment, or a second appeal, this case should be returned to the Patent Trial and Appeal Board for final action on the affirmed rejection, including any timely request for rehearing thereof. 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) mls