Ex Parte Kawakami

Patent Trial and Appeal BoardApr 15, 2016

12699800 (P.T.A.B. Apr. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/699,800 02/03/2010 51702 7590 04/15/2016 CLYDE L COUGHENOUR 16607 SUTTON PLACE WOODBRIDGE, VA 22191 FIRST NAMED INVENTOR Tomoya Kawakami 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. 6614 EXAMINER MATHEW, FENN C ART UNIT PAPER NUMBER 3781 MAILDATE DELIVERY MODE 04/15/2016 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 TOMOYA KAWAKAMI Appeal2014-002711 Application 12/699,800 Technology Center 3700 Before: WILLIAM A. CAPP, LEE L. STEPINA, and FREDERICK C. LANEY, Administrative Patent Judges. STEPINA, Administrative Patent Judge. STATEMENT OF CASE Appellant appeals under 35 U.S.C. Â§ 134 from a rejection of claims 1- 20. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM-IN-PART and enter a new ground of rejection pursuant to 37 CPRÂ§ 41.50(b). The claims are directed to a multipurpose elastic loop gasket for use with a container. Spec. 21 (Abstract). Claim 1, reproduced below, is illustrative of the claimed subject matter: A multipurpose elastic loop gasket including: Appeal2014-002711 Application 12/699,800 said elastic loop gasket formed by a base with an upper leg and a lower leg extending from said base: said elastic loop gasket upper leg and said elastic loop lower leg are essentially parallel to each other and form an inwardly opening elongated narrow recess there-in-between so as to be capable of receiving a horizontally outwardly extending flange of a container; a raised ridge extending upwardly from said elastic loop gasket upper leg along the extent of said elastic loop gasket for positioning a container lid or foil; a bead extending upwardly from said elastic loop gasket lower leg along the extent of said elastic loop gasket for positioning and retaining the flange of a container; said elastic loop gasket being stretchable by more than 2% of its unstretched length with the ability to return to its unstretched length, so as to be able to elastically deform and be held inplace over a container flange. Appeal Br. 4 7 (emphasis added). REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Schramm Hupp us 5,964,368 us 6, 722,520 REJECTIONS Oct. 12, 1999 Apr. 20, 2004 (I) Claims 1-11 are rejected under 35 U.S.C. Â§ 102(b) as anticipated by Schramm. (II) Claims 12-20 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Schramm and Hupp. 2 Appeal2014-002711 Application 12/699,800 Claim 1 OPINION Rejection (I) The Examiner finds that Schramm includes all the features recited in claim 1. Final Act. 2. Specifically, the Examiner finds Schramm teaches "a raised ridge extending upwardly from the upper leg (30); a bead extending upwardly from the lower leg (14); wherein said gasket is capable of being elastically deformed by more than 2% of its original length (col. 2, line 17)." Id. Appellant argues that Schramm does not disclose a raised ridge extending upwardly from an elastic loop gasket upper leg along the extent of the elastic loop gasket for positioning a container lid or foil, as required by claim 1. Appeal Br. 12. Rather, contends Appellant, Schramm teaches a recess extending into upper leg 11, and "[t]his is precisely the opposite structure from the claimed structure." Id. at 12-13. We do not agree with Appellant's arguments on this point because they are not commensurate with the Examiner's rejection of claim 1. The Examiner relies on strip 30 to teach the above-noted raised ridge, not recess 16. See Final Act. 2. Regarding the requirement in claim 1 that the recited ridge extend "along the extent of said elastic loop gasket for positioning a container lid or foil," Appellant asserts, "Schramm does not even disclose and apparently wants to avoid the use of a lid." Appeal Br. 13. Appellant asserts: First, the recess 16 of Schramm is not capable of positioning a container lid. Second, the recess 16 of Schramm only has a function in concert with the clamping strip 30. Third, the clamping strip 30 is not a raised ridge on the upper leg of the elastic loop and it is not even necessary that there be a clamping 3 Appeal2014-002711 Application 12/699,800 strip present (column 3, lines 6-7). Fourth, the extensions 31 on clamping strip 30 are flat and are only present for pressing and removing the strip from the elastic loop (column 3, lines 11-14 ), they only extend upward as much as necessary. Fifth, the only function of the strip 30 is to clamp. Sixth, the material of the strip can be of any desired hardness from soft to rigid (column 3, lines 20-27). Id. at 13-14 (emphases added). With regard to the first two arguments above, as we already discussed, the Examiner relies on strip 30 to teach the above-noted raised ridge and does not rely on recess 16 for this feature. See Final Act. 2. With regard to the third argument, Appellant does not persuasively explain why strip 30 does not qualify as a raised ridge on the upper leg of the elastic loop. During prosecution, 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). Although strip 30 is not integrally connected to leg 11, we do not construe claim 1 to require such a connection. Claim 1 does not use the word "integral" to describe the ridge, but claim 10 does. See Appeal Br. 48, claim 10 (reciting "a raised integral ridge"). The fact that Appellant explicitly claims a raised integral ridge in claim 10, but not in claim 1, supports an interpretation that claim 1 that does not require the ridge to be integral with the upper leg. Moreover, Appellant does not persuasively explain why claim 1 should be interpreted to require an integral ridge despite the absence of this feature from the plain language of claim 1. Further, the fact that the presence of strip 30 in Schramm "is not even necessary," as asserted by Appellant, does not negate the fact that Schramm discloses strip 30 extending from the upper leg in Schramm. 4 Appeal2014-002711 Application 12/699,800 With regard to the fourth argument, that "the extensions 31 on clamping strip 30 are flat and are only present for pressing and removing the strip from the elastic loop ... they only extend upward as much as necessary," assuming, for the purposes of argument, that this is true, Appellant does not persuasively explain why strip 30 is not, as the Examiner finds, "capable of positioning a lid or foil in place" (Ans. 4) or why such capability does not satisfy the limitation that the ridge is "for positioning a container lid or foil" as recited in claim 1. We interpret the phrase "for positioning a container lid or foil" in claim 1 to require that the raised ridge is for positioning at least one of the container and foil. In other words, claim 1 does not require the ridge to be "for positioning" both the lid and the foil. See Spec. i-f 2 (stating "A 'U' shaped endless elastic loop gasket having its recess facing inwardly is stretched over the flange of the container to hold a foil or wrap in place over the open top of the container and/or seal a lid over the container"). Appellant states, "[ t ]he strip may clamp a foil anywhere it is positioned, but there is no way it can clamp or position a 'lid' by being placed anywhere. This is especially so when there is no lid in Schramm." Reply Br. 4. Thus, Appellant apparently admits that the strip may clamp a foil anywhere it is positioned. In any event, Appellant has not persuasively explained why strip 30 would not work for this simple function. Further, although claim 1 does not require the ridge to be "for positioning" both the container and the foil, we agree with the Examiner's additional finding that "a lid matching the contour and shape of the clamping strip is capable of being positioned over and secured to it." Ans. 8. In other words, the dimensions and shape of the lid are not defined in claim 1, and strip 30 is capable of positioning a lid of proper size and shape. Therefore, although claim 1 does not require the ridge to be "for positioning" both the 5 Appeal2014-002711 Application 12/699,800 lid and the foil, we agree with the Examiner's finding that Schramm's ridge 30 is capable of positioning foil and/or a container lid. See id. Regarding the fifth argument above, that the only function of ridge 30 in Schramm is to clamp, Appellant does not persuasively explain why the ridge 30, even if used only to clamp in Schramm, is not also capable of the functional language at issue in the rejection of claim 1. As discussed above, we agree with the Examiner's finding that strip 30 can be used for positioning a container lid or foil as recited in claim 1. Regarding the sixth argument above, that "the material of the strip can be of any desired hardness from soft to rigid," Appellant fails to persuasively explain how the hardness or softness of strip 30 affects whether strip 30 is capable of the functional language required of the ridge in claim 1. Further, the fact that Schramm states that strip 30 "can be made from a hard material or of the same material as the elastic loop or of a material softer than that of the elastic loop" (col. 3, 11. 21-23) indicates that Schramm discloses all three of these options, not that Schramm is limited to any particular option that, in Appellant's opinion, does not satisfy the requirements of claim 1. Appellant further argues, "[i]t is clear from the dictionary definition of 'ridge' that 'flat' and 'ridge' are inconsistent structures since ridge inherently requires some angle or taper while flat, by definition, has none" and "[t]he claim use of 'raised ridge' and the Examiner's use of 'flat, clamping strip' as equal and anticipating is erroneous and unsupportable either from the dictionary or the specification of Schumann." Appeal Br. 14 (emphasis added). The Examiner states, "the fact that the top surface of the clamping strip is flat does not obviate [its] use as a raised ridge." Ans. 11. Citing Dictionary.com, the Examiner determines that the term "ridge" corresponds 6 Appeal2014-002711 Application 12/699,800 to "any raised, narrow strip." See Ans. 11; see also http://www.dictionary.com/browse/ridge?s=t, last accessed April 1, 2016, (defining "ridge" as "any raised, narrow strip, as on cloth)." We agree with the Examiner on this point. Appellant's Specification refers to item 16, depicted in Figure 2, as a "raised ridge." Spec. if 16. It is clear from Appellant's Figure 2 that the top of raised ridge 16 includes a flat portion. Accordingly, the Examiner's construction of the term "raised ridge" as allowing for a structure with a flat top is consistent with Appellant's Specification. In view of Appellant's Specification and drawings, we agree with the Examiner that strip 30 qualifies as a raised ridge as recited in claim 1. Appellant further argues that the Examiner misinterprets the prior art and that "the prior art actually teaches away from presently claimed modifications. These teachings may not be modified either alone or in combination with something present or not present to reject the claims." Reply Br. 3. We do not agree with Appellant's argument. A preponderance of the evidence supports the Examiner's finding that Schramm discloses all the features recited in claim 1. Whether Schramm teaches away from the arrangement recited in claim 1 is not relevant to whether Schramm anticipates claim 1. We have considered all of Appellant's arguments for the patentability of claim 1, but we find them unpersuasive, and we sustain the Examiner's rejection of claim 1 as anticipated by Schramm. Claims 4-6 Dependent claim 4 recites, "said elastic loop gasket has four sides that intersect each other at right angles; comer webs are formed inwardly at the 7 Appeal2014-002711 Application 12/699,800 areas said upper legs intersect to rigidify the comers and provide easy insertion and removal of said elastic loop gasket." Dependent claims 5 and 6 also require comer webs. Appellant argues that "the strip 30 is formed so as to intersect at essentially right angles at the comers, there is no 'web' added to the basic clamping strip that can logically or legally be interpreted so as to anticipate the claims." Appeal Br. 16. Appellant further argues, that there is no web at the intersecting comers of Schramm, and "[t]he legs 11 have a sharp comer where the legs meet. Viewing the present invention in Figs. 1, 3 and 4 it is clear that there are webs ( 18, 19) that extend inward further at the comers than that of the inward extent of the legs (11,13)." Reply Br. 5. The Examiner states, "the fact that Schramm discloses a web that extends about the entire periphery of the elastic loop does not obviate Schramm's disclosure of a comer web as claimed." Ans. 14. We are persuaded by Appellant's arguments on this point. The right angles formed at the comers of Schramm do not correspond to "comer webs" as required by claims 4---6. Rather, consistent with Appellant's Specification, we interpret the term "comer webs" to require structure provided in addition to the existing comer. See Spec. 3--4 (explaining that a loop that is otherwise square or rectangular extends inward to form comer webs that stabilize the comers). Accordingly, we do not sustain the Examiner's rejection of claim 4. Claim 9 Dependent claim 9 recites, in part, "said elastic loop gasket bead extends upwardly and is essentially the height of a container lid outer flange 8 Appeal2014-002711 Application 12/699,800 curvature; and said elastic loop raised ridge extending upwardly is essentially the height of a container outer flange curvature." The Examiner finds that Figure 5 of Schramm depicts all the features recited in claim 9. Final Act. 3. In the Answer, the Examiner provides an annotated copy of Schramm's Figure 5, which we reproduce below. 4l- /40 i hd flange Ctffv'ature height The annotated copy of Figure 5 of Schramm depicts a cross-section of foil 41 sandwiched between strip 30 and elastic loop 10 including arrows identifying what the Examiner finds are the "ridge height," "bead height," lid flange curvature height," and "container flange curvature." Appellant argues that Schramm does not teach a specific size or shape for either a bead or a ridge. Appeal Br. 17. Referring to the Examiner's citation to Figure 5 of Schramm, Appellant states, "[i]t is difficult to understand how that drawing figure anticipates claim 9 since there is no 9 Appeal2014-002711 Application 12/699,800 disclosure of a lid or showing of one and the container flange has no curvature shown nor is one disclosed." Id. We do not sustain the Examiner's rejection of claim 9 under 35 U.S.C. Â§ 102(b) as anticipated by Schramm. For the reasons expressed below, claim 9 is indefinite. Therefore, the prior art rejection must fall because it is necessarily based on speculative assumptions as to the meaning of the claims. See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962). It should be understood, however, that our decision in this regard is based solely on the indefiniteness of the claimed subject matter, and does not reflect on the adequacy of the prior art evidence applied in support of the rejection. NEW GROUND OF REJECTION "Because the claims perform the fundamental function of delineating the scope of the invention, the purpose of the definiteness requirement is to ensure that the claims delineate the scope of the invention using language that adequately notifies the public of the patentee's right to exclude." Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Circ. 2005) (abrogated on other grounds by Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120 (2014)). Claim 9 recites two dimensions in terms of undefined, unclaimed structure. Specifically, claim 9 requires the elastic loop gasket bead height to be essentially the height of a container lid outer flange curvature, but claim 9 does not specify the height of the container lid outer flange curvature, and the lid is not recited by claim 9. Further, claim 9 requires the elastic loop raised ridge height to be essentially the height of a container outer flange curvature. Claim 9 does not specify the container outer flange curvature height, and the container is not recited by claim 9. Appellant's 10 Appeal2014-002711 Application 12/699,800 Specification does not impose any meaningful limitation on the above-noted features. There are an infinite number of possible heights for the above- noted curvatures. Without knowing the height of a container lid outer flange curvature and the height of a container outer flange curvature, one of skill in the art would not be able to determine whether a gasket with the remaining features required by claim 9 would be covered by claim 9. See Ex parte Miyazaki, 89 USPQ2d 1207 (Bd. Pat. App. & Inter. 2008) (precedential) (holding that a claim reciting a paper feeding unit located at a height enabling a user who is approximately 170 cm tall to execute a paper feeding process was indefinite for failing to specify the positional relationship of the user and printer to each other). Thus, we enter a new ground of rejection of claim 9 under 35 U.S.C. Â§ 112, second paragraph, as indefinite. Claim 10 Appellant argues, "[ s ]imilar to the failure of Schramm to anticipate claim 1, Schramm does not disclose or suggest a raised integral ridge on an upper leg of an elastic gasket for securing a container lid or foil." Appeal Br. 18 (emphasis added). Appellant further argues, "Schramm has no integral raised ridge and no lid or foil positioned by a raised ridge." Id. Conversely, the Examiner states, "neither the claims nor the specification require the ridge to be formed integrally in one piece with the upper arm of the elastic loop gasket." Ans. 10 (emphasis added). The Examiner further states, "although appellant correctly states that Schramm discloses a securing mechanism that utilizes two pieces (the elastic gasket and the clamping strip), and that the instant application obviates the use of a separate clamping strip, the claims are silent with regard to the raised ridge beingformed integrally in one piece with the elastic loop." Id. at 7. (emphasis added). 11 Appeal2014-002711 Application 12/699,800 Appellant's arguments are persuasive. Although the Examiner is correct in that claim 1 does not require the ridge to be integral with any other structure, claim 10 recites, "a raised integral ridge extends upwardly from said elastic loop gasket upper leg around the extent of said elastic loop gasket." Thus, we do not agree with the Examiner that claim 10 does not require an integral raised ridge. Although the Examiner finds that Schramm discloses that strip 30 may include a recess, and loop 10 may include a cooperating protrusion (Ans. 6-7), Schramm does not describe any protrusion on loop 10 as taking the form of a ridge. See Schramm, col. 3, 11. 6-10. Further, the Examiner does not provide any analysis as to whether modifying Schramm to include an integral ridge would have been obvious to a person of skill in the art. See Final Act. 2. Accordingly, we do not sustain the Examiner's rejection of claim 10. Claim 11 depends from claim 10, for the reasons discussed above regarding the rejection of claim 10, we do not sustain the Examiner's rejection of claim 11. Rejection (11) The Examiner's use of Hupp does not remedy the deficiency in the rejection of claim 10 as anticipated by Schramm. Accordingly, we do not sustain the Examiner's rejection of claims 12-20 as unpatentable over Schramm and Hupp. DECISION (I) We affirm the Examiner's rejection of claims 1-3, 7, and 8 as anticipated by Schramm. We reverse the Examiner's rejection of claims 4-- 6, 10, and 11 as anticipated by Schramm. (II) We reverse the Examiner's rejection of claims 12-20 as unpatentable over Schramm and Hupp. 12 Appeal2014-002711 Application 12/699,800 (III) We enter a new ground of rejection of claim 9 as indefinite. FINALITY OF DECISION Regarding the affirmed rejection(s), 37 C.F.R. Â§ 41.52(a)(l) provides "Appellant may file a single request for rehearing within two months from the date of the original decision of the Board." In addition to affirming the Examiner's rejection of one or more claims, this decision contains a new ground of rejection pursuant to 37 C.F.R. Â§ 41.50(b). 37 C.F.R. Â§ 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. Â§ 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: ( l) 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 proceeding will be remanded to the Examiner. ... (2) Request rehearing. Request that the proceeding be reheard under Â§ 41.52 by the Board upon the same record .... Should Appellant elect to prosecute further before the Examiner pursuant to 37 C.F.R. Â§ 41.50(b)(l), in order to preserve the right to seek review under 35 U.S.C. Â§Â§ 141or145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution before the Examiner unless, as a mere incident to the limited prosecution, the affirmed rejection is overcome. 13 Appeal2014-002711 Application 12/699,800 If Appellant elects 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. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED-IN-PART; 37 C.F.R. Â§ 41.50(b) 14