Ex Parte Ray et al

Patent Trial and Appeal BoardApr 14, 2016

12963208 (P.T.A.B. Apr. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/963,208 12/08/2010 Eugene W. Ray 26360 7590 04/15/2016 Renner Kenner Greive Bobak Taylor & Weber Co., LPA First National Tower, Suite 400 106 South Main Street Akron, OH 44308-1412 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. GOJ.P.264 2395 EXAMINER RANDALL, JR., KELVIN L ART UNIT PAPER NUMBER 3651 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 EUGENE W. RAY and MICHAEL J. GMEREK III Appeal2014-001950 Application 12/963,208 Technology Center 3600 Before NEALE. ABRAMS, JILL D. HILL, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Eugene W. Ray and Michael J. Gmerek III (Appellants) 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision to reject claims 1-3, 6-8, 11, and 25-30. Br. 1. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. 1 According to Appellants, the real party in interest is GOJO Industries, Inc. Br. 1. Appeal2014-001950 Application 12/963,208 THE CLAIMED SUBJECT MATTER Claim 1 is the sole independent claim on appeal. Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A wipes dispenser comprising: a container having an interior holding a plurality of wipes that are interconnected such that pulling on a lead end of a lead wipe of said plurality of wipes causes a following wipe of said plurality of wipes to also be pulled and follow said lead wipe; an aperture defined through an exterior wall of said container; a semi-rigid bridge member spanning said aperture and extending exteriorly beyond said exterior wall to define a bridge apex of said bridge member; a feed slit in said bridge member communicating with the interior of the container through said aperture, said feed slit presenting a slit apex and extending downwardly from said slit apex to a right-side terminal slit end and to a left-side terminal slit end, wherein said slit apex, said right-side terminal slit end and said left-side terminal slit end define a feed plane extending away from said exterior wall said slit apex being located on said feed plane at a distance further way from said exterior wall than the location of both said left-side terminal slit end and said right- side terminal slit end on said feed plane, and wherein said plurality of wipes are removed from said container by being pulled through aid feed slit, said feed slit separating a lead wipe from a following wipe as said lead wipe is pulled through said feed slit. REJECTIONS Claims 1-3 and 6 stand rejected under 35 U.S.C. Â§ 102(b) as anticipated by Placik (US 6,412,656 Bl; iss. July 2, 2002). Claims 7 and 8 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable Placik and Morin (US 6,905,025 B2; iss. June 14, 2005). 2 Appeal2014-001950 Application 12/963,208 Claim 11 stands rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Placik and Castelli (US 3,002,668; iss. Oct. 3, 1961). Claims 25, 26, and 28-30 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Placik and Bendor (US 2007 /0215632 Al; pub. Sept. 20, 2007). Claim 27 stands rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Placik, Bendor, and Hartog (US 6,182,858 Bl; iss. Feb. 6, 2001). OPINION Claims 1-3 and 6-Anticipation by Placik Regarding independent claim 1, the Examiner found, inter alia, that Placik's dispensing structure 40 corresponds to the claimed semi-rigid bridge member. Final Act. 4. In support, the Examiner notes that "Placik teaches a member which has an original shape, [] may be deformed by pressure, and returns to its original shape after said deformation," and that Placik describes the dispensing structure as "formed of flexible and resilient material." Ans. 3 (citing Placik, 2:13-16, Figs. 5-7). Appellants submit that the Specification applies a special meaning to the claim term "semi-rigid." Br. 5-7. Appellants' Specification states that [b ]y "semi-rigid" it is intended that the material not be readily capable of taking on altered shapes, except that slight flexing is permitted as, for example that experienced by plastic materials that have defined shapes but can be slightly deformed upon the application of pressure and retain their defined shape upon the removal of the applied pressure. "Semi-rigid" is intended specifically to distinguish from those materials that are purposefully flexible and capable of taking on substantially different geometries due to applied stresses. A semi-rigid material, in accordance with this invention, will tend to maintain 3 Appeal2014-001950 Application 12/963,208 or revert to its established geometry after an applied stress is removed, as for example the stress applied in feeding a wipe through the feed slit. Spec. i-f 33, see also id. at i-f 39. Appellants argue that Placik's dispensing structure is very flexible, taking on substantially different shapes, "even to the point of collapsing from a general dome-shape into a wavy-shape." Br. 5 (citing Placik, 3:16-22, Figs. 2, 4); see also id. at 7-8. Appellants also argue that "slight flexing" distinguishes over Placik. Id. at 9. "[T]he PTO must apply the broadest reasonable meaning to the claim language, taking into account any definitions presented in the specification." In re American Academy of Science Tech Center, 367 F. 3d 1359, 1364 (quoting In re Bass, 314 F.3d 575, 577 (Fed. Cir. 2002)). For an inventor to act as his or her own lexicographer, the definition must be set forth in the specification with reasonable clarity, deliberateness, and precision. Renishaw PLC v. Marposs Societa'per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998). Also, when an inventor chooses to be his own lexicographer so as to give a term an uncommon meaning, he must set out his uncommon definition in a manner within the patent disclosure, sufficient to give one of ordinary skill in the art notice of the change. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Although an ordinary meaning of the claim term "semi-rigid" is "rigid to some degree" (WEBSTER'S THIRD NEW INT'L DICTIONARY 2064 (1993), wherein an ordinary meaning of the term "rigid" is "very firm rather than pliant" (id. at 1957), we agree that Appellants have acted as their own lexicographers to more narrowly define the claim term "semi-rigid" as meaning "not readily capable of taking on altered shapes, except for slight flexing." See Spec. i-f 33 ("By 'semi-rigid' it is intended that the material not 4 Appeal2014-001950 Application 12/963,208 be readily capable of taking on altered shapes, except that slight flexing is permitted."). We also agree with Appellants that the Examiner has not demonstrated by a preponderance of the evidence that Placik' s dispensing members are semi-rigid, as construed supra and as required by independent claim 1. Rather, Placik describes dispensing structure 20 as readily capable of taking on a flattened shape in a pre-use condition (Fig. 2) and as readily capable of taking on an outwardly projecting, convex, bulbous shape in a use condition (Fig. 3), which requires more than slight flexing. Placik, 2:14--16, 36-38. Accordingly, we do not sustain the Examiner's rejection of independent claim 1 and claims 2, 3, and 6 depending therefrom. Claims 7, 8, 11, and 25-30- Obviousness over Placik and Morin The Examiner's reliance on Morin, Castelli, Bendor, and Hartog does not cure the deficiencies in the Examiner's finding with respect to Placik. Therefore, we do not sustain the Examiner's rejection of claims 7, 8, 11, and 25-30 under 35 U.S.C. Â§ 103(a). DECISION The Examiner's decision to reject claims 1-3 and 6 under 35 U.S.C. Â§ 102(b) is REVERSED. The Examiner's decision to reject claims 7, 8, 11, and 25-30 under 35 U.S.C. Â§ 103(a) is REVERSED. REVERSED 5