Ex Parte Nicklas et al

Patent Trial and Appeal Board

Jun 30, 2016

11969632 (P.T.A.B. Jun. 30, 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.
11/969,632 01/04/2008 James NICKLAS 201990.00232 1286
64956 7590 07/05/2016
HAHN T OFSFR / T INFOT N
EXAMINER
ONE GOJO PLAZA GRANO, ERNESTO ARTURIO
SUITE 300
AKRON, OH 44311-1076 ART UNIT PAPER NUMBER
3788
NOTIFICATION DATE DELIVERY MODE
07/05/2016 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):
patents@hahnlaw.com
desiree_cunin @ lincolnelectrie .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES NICKLAS, LISA BYALL, and
ANDREA BRIGHTON
Appeal 2014-006455
Application 11/969,632
Technology Center 3700
Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
James Nicklas et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision to reject under 35 U.S.C. § 102(b) claims 1, 7,
and 8 as anticipated by Jones (US 6,932,266 B2; iss. Aug. 23, 2005); and to
reject under 35 U.S.C. § 103(a): (1) claim 5 as unpatentable over Jones and
De Coninck (US 2006/0057315 Al; pub. Mar. 16, 2006); (2) claims 1, 7, 8,
11, 12, 14, 19, and 20 as unpatentable over Matsuguchi (US 2003/0019776
1 The Examiner has withdrawn the rejection of claims 1, 5, 7—12, 14, 16, and
18—20 under 35 U.S.C. § 112, first paragraph, for lack of written description.
Ans. 16.
Appeal 2014-006455
Application 11/969,632
Al; pub. Jan. 30, 2003) and Jones; (3) Claim 9 as unpatentable over
Matsuguchi, Jones, and Glocker (US 2,357,322; iss. Sept. 5, 1944); and (4)
claims 10, 16, and 18 as unpatentable over Matsuguchi, Jones, and De
Coninck. Claims 2-4, 6, 13, 15, 17, 21, and 22 have been cancelled.2 We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to “packaging for welding
electrodes, and more particularly, to containers that provide a moisture
barrier for bulk electrode packaging.” Spec. 12, Figs. 1, 2. Claims 1,11,
and 20 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A container for storing welding wire, said wire
susceptible to the effects of moisture which degrades weld
quality, comprising:
an inner rigid or semi-rigid fibrous container wall having
a plurality of connected sides which define an interior region for
storing welding wire;
an outer rigid or semi-rigid fibrous container wall having
a plurality of connected sides;
at least one middle rigid or semi-rigid fibrous container
wall between said inner and outer walls; and,
at least two layers on opposed sides of said middle
container wall, at least one of said at least two layers integrally
fashioned with the outer wall and conjoined therewith for
substantially preventing moisture or moisture vapor from
penetrating into said container by forming a moisture barrier or
moisture vapor barrier with said middle and outer container
walls, said at least two layers for substantially preventing
moisture or moisture vapor being selected from the group
2 See Amendment filed Sept. 10,2013.
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Application 11/969,632
consisting of a planar sheet of polymer and a planar sheet of
metallic material;
said at least two layers on opposed sides of said middle
container wall reducing gas marking or worm tracking by
reducing the amount of moisture or moisture vapor which
ingresses through said container walls, thereby improving weld
quality in comparison to a container without said at least two
layers on opposed sides of said middle container wall.
ANALYSIS
Anticipation by Jones
Claims 1, 7, and 8
Independent claim 1 calls for, a container including, in relevant part,
“at least two layers on opposed sides of said middle container wall, at least
one of said at least two layers integrally fashioned with the outer wall and
conjoined therewith for substantially preventing moisture or moisture vapor
from penetrating into said container.” Appeal Br. 30, Claims App. (emphasis
added). The Examiner finds that Jones discloses all the limitations of claim
1 including the aforementioned at least two layers. Final Act. 3—5; Ans. 3—5.
In particular, the Examiner finds that Jones discloses:
at least two layers (combination of layers of woven
polypropylene and bag/liner) on opposite sides of said middle
container wall, at least one of said at least two layers integrally
fashioned with the outer wall an[d] conjoined therewith (as a
finished product), capable of substantially preventing moisture
or moisture vapor from penetrating into said container.
Final Act. 4; Ans. 4 (both citing Jones, col. 3,11. 4—20 and col. 18,11. 38—
45); see also Jones, Figs. 1—3, 20. The Examiner further states: “[i]t is noted
that the Examiner interprets ‘integrally fashioned’ as being a plurality of
parts formed together to form a single unit.” Final Act. 5; see also Ans. 5.
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Application 11/969,632
Appellants’ contend that the portions of Jones cited by the Examiner
(Jones, col. 3,11. 4—20 and col. 18,11. 38-45) fail to disclose “at least two
layers on opposed sides of said middle container wall, at least one of said at
least two layers integrally fashioned with the outer wall.” See Appeal Br.
17—20. According to Appellants, “Jones teaches a plastic bag within a
cardboard box. . . . There are certainly no teachings of ‘integrally-
fashioned’ ... the plastic bag [of Jones] is not an integral part of the
container construction, but rather is inserted within.” Id. at 20.
Our resolution of this appeal requires us to determine the meaning of
the phrase “integrally fashioned” since this phrase appears in each of the
independent claims. 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 Set Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004). Appellants’ Specification does not expressly define the phrase
“integrally fashioned.” However, the Examiner provides dictionary
definitions for the terms “integral” and “fashioned” obtained from the
online dictionary website www.merriam-webster.com, namely: “integral:
formed as a unit with another part” and “fashioned: to give shape or form
to.” Final Act. 5; see also Ans. 5, 16. We accept the Examiner’s
definitions of “integral” and “fashioned” as representative of the ordinary
meanings of those terms, which is consistent with their usage in the context
of Appellants’ Specification.
Jones, column 3, lines 4—20, discloses: (1) “[additional layers of the
woven polypropylene may be used around the forming member to provide
additional strength” (11. 4—6); (2) “[a]san option, additional layers of
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Appeal 2014-006455
Application 11/969,632
corrugated material or woven polypropylene material or their combination
may be used as inserts engaging the inner peripheral sidewall areas of the
forming member to provide additional strength” (11. 10-14); and (3) “[a]
standard bag/liner can be and typically is placed within the forming
member or within the insert to protect the contents from contamination or
the environment and/or to retain liquids” (11. 16—20). Jones further
discloses:
The optional bag/liner, illustrated at 16 in FIGS. 1,2, and 3, may
be of any appropriate film or sheet of flexible impervious
material, preferably polyethylene or polypropylene, to protect
the contents of the container system and/or to prevent leakage of
liquids or sifting of powders out of the forming member insert.
Such liners are well-known in the art and have been used in the
past for both corrugated and FIBC packaging.
Jones, col. 18,11. 38—45 (emphasis omitted). Jones also discloses that the
bag/liner 16 “is placed within the forming member 12.” Jones, col. 7,11. 36—
39 (emphasis omitted); see also id. at Figs. 1, 2.
Neither of the passages in Jones relied on by the Examiner nor column
7, lines 36—39, disclose that the woven polypropylene layers or bag/liner 16
are anything other than separate layers inserted into the bulk material
container. In other words, neither the woven polypropylene layers nor
bag/liner 16 of Jones is formed together with outer wall 12 of the container
so as to form a single unit (i.e., neither woven polypropylene layers nor
bag/liner 16 of Jones is “integrally fashioned” with outer wall 12 of the
container). See Appeal Br. 17—20; see also Ans. 16. As such, the Examiner
fails to establish by a preponderance of the evidence that Jones anticipates
the container of claim 1.
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Accordingly, based on the foregoing reasons, we do not sustain the
Examiner’s rejection of claim 1 and its dependent claims 7 and 8 as
anticipated by Jones.
Obviousness over Jones and De Coninck
Claim 5
The Examiner’s rejection of claim 5 as unpatentable over Jones and
De Coninck (see Final Act. 9—10) is based on the same unsupported findings
discussed above with respect to the rejection of claim 1. The Examiner does
not rely on De Coninck to remedy the deficiency of Jones. Accordingly, for
reasons similar to those discussed above for claim 1, we do not sustain the
Examiner’s rejection of claim 5 as unpatentable over Jones and De Coninck.
Obviousness over Matsuguchi and Jones or Matsuguchi, Jones, and either
Glocker or De Coninck
Claims 1, 7-12, 14, 16, 18-203
The Examiner’s rejections of (1) claims 1, 7, 8, 11, 12, 14, 19, and 20
as unpatentable over Matsuguchi and Jones; (2) claim 9 as unpatentable over
Matsuguchi, Jones, and Glocker; and (3) claims 10, 16, and 18 as
unpatentable over Matsuguchi, Jones, and De Coninck (see Final Act. 5—15)
are each based on the same unsupported findings discussed above with
respect to the rejection of claim 1 as anticipated by Jones. The Examiner
does not rely on Matsuguchi, Glocker, or De Coninck to remedy the
deficiency of Jones. Accordingly, for reasons similar to those discussed
3 Each of independent claims 1, 11, and 20 calls for a container including
similar limitations to a layer being “integrally fashioned” with a container
wall. See Appeal Br. 30, 31, 33, Claims App.
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Application 11/969,632
above, we do not sustain the Examiner’s rejections of (1) claims 1, 7, 8, 11,
12, 14, 19, and 20 as unpatentable over Matsuguchi and Jones; (2) claim 9 as
unpatentable over Matsuguchi, Jones, and Glocker; and (3) claims 10, 16,
and 18 as unpatentable over Matsuguchi, Jones, and De Coninck.
DECISION
We REVERSE the decision of the Examiner to reject claims 1, 5,
7-12, 14, 16, and 18-20.
REVERSED
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