Ex Parte Murdock

Patent Trial and Appeal BoardJun 9, 2014

12152790 (P.T.A.B. Jun. 9, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 12/152,790 05/16/2008 Zoe Murdock MRD-001 6469 52554 7590 06/10/2014 Southeast IP Group, LLC 13-B West Washington Street GREENVILLE, SC 29601 EXAMINER VOLZ, ELIZABETH J ART UNIT PAPER NUMBER 3781 MAIL DATE DELIVERY MODE 06/10/2014 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 ZOE MURDOCK ____________ Appeal 2012-006178 Application 12/152,790 Technology Center 3700 ____________ Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and MICHAEL C. ASTORINO, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-5. App. Br. 1. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2012-006178 Application 12/152,790 2 Claimed Subject Matter Claims 1 and 5 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A disposable plate comprising: a plate member having a flexible skirt around an outer periphery thereof, wherein said skirt member includes an elastic element allowing said skirt to be stretched about the outer periphery of a hard surface such as a hard plate when said disposable plate is placed on top of said hard plate, whereby said flexible skirt may be used to temporarily secure said disposable plate to a hard plate; and wherein said plate member is manufactured using a first material, and said skirt member is manufactured using a second material. Rejections The Appellant requests our review of the following Examiner’s rejections. Claims 1-4 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Claims 1-5 are rejected under 35 U.S.C. § 102(b) as anticipated by Garcia (US 6,772,800 B1, iss. Aug. 10, 2004). OPINION Indefiniteness Independent claim 1 recites “[a] disposable plate comprising: a plate member having a flexible skirt around an outer periphery thereof, wherein said skirt member includes an elastic element allowing said skirt to be stretched about the outer periphery of a hard surface such as a hard plate Appeal 2012-006178 Application 12/152,790 3 when said disposable plate is placed on top of said hard plate.” App. Br., Clms. App’x. (emphasis added). The Examiner determines that the phrase “such as” renders claim 1 indefinite because “it is unclear if the invention must be capable of being stretched over a hard plate.” Ans. 5-6 (citing MPEP §2173.05(d)); see Ex parte Hall, 83 USPQ 38 (Bd. App. 1948). The Appellant contends that claim 1 is not indefinite because the phrase, “a hard surface such as a hard plate,” “is not attempting to the claim the hard surface or hard plate to which the disposable plate and skirt member may be attached.” App. Br. 5. The Appellant’s contention is unpersuasive. The above-quoted claim limitation structurally limits the skirt member through its function, and it is unclear whether the skirt member is required to be stretched out over a hard surface or a hard surface, which is a hard plate. See Ans. 6. Since there are two reasonable interpretations of the above-quoted claim limitation and the scope of the claim would differ significantly depending on which of the reasonable interpretations one adopts, we agree with the Examiner that the claim is indefinite. See Ex Parte Miyazaki, 89 USPQ2d 1207, 1211-128 (BPAI 2008). Thus, the Examiner’s rejection of claims 1-4 under 35 U.S.C. §112, second paragraph, as indefinite is sustained. Anticipation based on Garcia Claims 1-4 For the reasons provided above, claims 1-4 are indefinite. Therefore, the Examiner’s rejection of claims 1-4 under 35 U.S.C. § 102(b) must fall, pro forma, because they necessarily are based on speculative assumptions as Appeal 2012-006178 Application 12/152,790 4 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 upon the adequacy of the prior art evidence applied in support of the rejection. Thus, the rejection of claims 1-4 under 35 U.S.C. § 102(b) as anticipated by Garcia cannot be sustained. Claim 5 Independent claim 5 recites, “[a] method of using dishware comprising the steps of: . . . providing a disposable plate . . . [and] placing food on said disposable plate.” App. Br., Clms. App’x. (emphasis added). The Examiner finds that Garcia’s disclosure of placing water into the disclosed liner corresponds to “placing food on said disposable plate,” as recited in claim 1. Ans. 6-7. The Examiner provides a dictionary definition of the term “food,” and takes the position, “water can be considered food since it meets the definition of food.” Ans. 71. The Appellant contends that the Examiner’s position is unreasonable because Garcia “discloses putting a liner in a foot pedicure basin to hold water” and “[n]o person skilled in the art would consider the step of placing food on a disposable plate to be the same step as pouring water into a lined pedicure basin for soaking one's feet.” App. Br. 6. We disagree. The 1 “Food” is defined as “any nourishing substance that is eaten, drunk, or otherwise taken into the body to sustain life, provide energy, promote growth, etc.” DICTIONARY.COM, available at http://dictionary. reference.com/browse/food?s=t (last visited May 30, 2014). Appeal 2012-006178 Application 12/152,790 5 Appellant’s Specification does not provide an explicit definition of the term “food.” If the Specification does not assign or suggest a particular definition to a claim term, it is appropriate to consult a general dictionary definition of the word for guidance in determining the ordinary and customary meaning of the claim term as viewed by a person of ordinary skill in the art. See Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010). Thus, the term “food” is given its ordinary and customary meaning as viewed by one of ordinary skill in the art. We accept the Examiner’s dictionary definition as evidence of the ordinary meaning of “food” as “a nourishing substance that is . . . drunk, or otherwise taken into the body to sustain life.” Ans. 7 (quoting dictionary.com). We agree with the Examiner’s position that water falls within the ordinary meaning of the term “food.” As such, the Examiner’s finding that Garcia’s disclosure of placing water into the disclosed liner corresponds to “placing food on said disposable plate,” as recited in claim 1, is adequately supported. For the foregoing reason, the Examiner’s rejection of claim 5 as anticipated by Garcia is sustained. DECISION We AFFIRM the rejections of: claims 1-4 under 35 U.S.C. § 112, second paragraph; and claim 5 under 35 U.S.C. §102(b). Appeal 2012-006178 Application 12/152,790 6 We REVERSE the rejection of claims 1-4 under 35 U.S.C. § 102(b). 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 Klh/rvb