Monique Johnson

Patent Trials and Appeals BoardJun 2, 2021

2021000202 (P.T.A.B. Jun. 2, 2021)

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. 15/961,107 04/24/2018 Monique Hope Johnson PSID 7096A 3612 61650 7590 06/02/2021 MYERS WOLIN, LLC 100 SOUTH JEFFERSON ROAD SUITE 202 WHIPPANY, NJ 07981-1009 EXAMINER CHIN, PAUL T ART UNIT PAPER NUMBER 3652 NOTIFICATION DATE DELIVERY MODE 06/02/2021 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): patent@myerswolin.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MONIQUE HOPE JOHNSON Appeal 2021-000202 Application 15/961,107 Technology Center 3600 Before BRETT C. MARTIN, ANNETTE R. REIMERS, and MICHAEL L. WOODS, Administrative Patent Judges. WOODS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 3–6, 8–11, 13–17, and 21–23, which constitute all the claims pending in this application. See Appeal Br. 7. Claims 2, 7, 12, and 18–20 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Monique Hope Johnson as the real party in interest. Appeal Br. 3. Appeal 2021-000202 Application 15/961,107 2 We AFFIRM IN PART. CLAIMED SUBJECT MATTER The application is titled “Methods and Devices for Training Pets and the Disposal of Waste.” Spec. 1 (capitalization omitted). Claims 1 and 13 are independent. Appeal Br. 17–18 (Claims App.). We reproduce independent claim 1 and dependent claim 10, below, with emphases added to particular language discussed in this Decision: 1. A waste collection, removal, and/or disposal device comprising: an absorbent member; and a bag-like member having an open end and an opposite closed end, said closed end coupled to a back surface of said absorbent member; wherein the closed end of the bag-like member has a boundary substantially similar to a perimeter of the absorbent member. 10. The device of claim 1, wherein the bag-like member extends from the closed end with a substantially consistent cross section. Appeal Br. 15–16 (Claims App.) (emphases added). Appeal 2021-000202 Application 15/961,107 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Rojko US 4,902,283 Feb. 20, 1990 Murray US 4,959,881 Oct. 2, 1990 See Final Act. 2–7. REJECTIONS The following rejections are before us on appeal: Claims Rejected 35 U.S.C. § Reference(s)/Basis 1, 3–6, 8, 10, 11, 13– 17, 21–23 102 Rojko 9 103 Rojko, Murray See Final Act. 3–8. OPINION 1. Claims Anticipated by Rojko The Examiner rejects claims 1, 3–6, 8, 10, 11, 13–17, and 21–23 as anticipated by Rojko. Final Act. 2. Appellant presents separate arguments for claim 10, but otherwise argues these claims as a group. See Appeal Br. 8–13. We select independent claim 1 as the representative claim, with claims 3–6, 8, 11, 13–17, and 21–23 standing or falling with claim 1. 37 C.F.R. § 41.37(c)(1)(iv). We also separately address the rejection of claim 10. a. Rejection of Claims 1, 3–6, 8, 11, 13–17, and 21–23 In rejecting claim 1, the Examiner finds that the embodiment of Rojko’s Figures 18–25 discloses the claimed structure. See Final Act. 2–4. Appeal 2021-000202 Application 15/961,107 4 To illustrate these findings, the Examiner submits annotated versions of Rojko’s Figures 23 and 25, which we reproduce, below: Final Act. 4. “Figure A”—the top figure—is an annotated version of Rojko’s Figure 25. Cf. Rojko, Fig. 25. Rojko’s Figure 25 is an isometric view of a disposal bag in which the skirt is shaped frustro-conically to aid in the eversion of the bag. See id. at 3:1–4, 3:27–30. “Figure B,” the bottom figure, is an annotated version of Rojko’s Figure 23. Cf. id. at Fig. 23. Appeal 2021-000202 Application 15/961,107 5 Rojko’s Figure 23 is a bottom view of Rojko’s bag. See id. at 3:24. The Examiner finds that Figure A (top figure), depicts a waste collection, removal, and/or disposal device 90’ comprising an absorbent member and a bag-like member having an open end. See Final Act. 2–3. The Examiner further finds that, as shown in Figure B (bottom figure), Rojko discloses that the closed end of the bag-like member has a boundary that is substantially similar to the perimeter of the absorbent member. See id. at 3. In contesting the rejection, Appellant argues that Rojko fails to disclose the claimed “closed end” in which the closed end has a boundary “substantially similar to a perimeter of the absorbent member.” See Appeal Br. 8–10. Appellant argues that Rojko’s [closed] end would be linear, as the bag shown in flattened. . . . Accordingly, the closed end does not have any area, and if any area is assigned to such a closed end, it would not have an identifiable boundary, as the device curves smoothly from the linear closed end to the full perimeter of the device. Id. at 10 (emphases added). Based on Appellant’s understanding of Rojko, Appellant explains, “Rojko does not provide any closed end of the bag-like member ha[ving] a boundary substantially similar to a perimeter of the absorbent member . . . [and that] the end of the cylindrical portion of [Rojko’s exterior] could not be a ‘perimeter’ of the absorbent material, nor could an arbitrary cross section of the sidewall of the cleaning mitt be considered a ‘boundary’ of the closed end.” Id. at 11 (emphasis omitted). Appellant asserts that a “perimeter is an outer edge of a closed plane . . . [and in] order for the pad of Rojko to have such a perimeter, it would have to have a substantially flat dimension to measure.” Id. at 10–11. Appeal 2021-000202 Application 15/961,107 6 Appellant’s argument is not persuasive, as Appellant misconstrues Rojko’s disclosed bag (or mitt) as being linear, and without a perimeter. We agree with the Examiner that “Appellant appears to confuse [the figures of Rojko’s Device relied on by the Examiner] with other different embodiments of Figs. 1–13 of Rojko’s Device.” Ans. 7. Rojko discloses multiple embodiments and the Examiner relies on the embodiment depicted in Rojko’s Figures 18–25. See Final Act. 2–3; see also Ans. 7 (“[T]he Examiner had clearly indicated that the rejections are based on Figs. 18–25 of Rojko’s Device.”). Importantly, the Examiner relies on Figure 23 of Rojko for depicting “the closed end of the bag-like member has a boundary substantially similar to a perimeter of the absorbent member.” See Final Act. 3 (referencing “Figure B,” which is an annotated version of Rojko’s Figure 23); cf. Rojko, Fig. 23. Contrary to Appellant’s understanding, Rojko’s Figure 23 does not depict a bag that is “linear” without a perimeter (see Appeal Br. 10); rather, Rojko’s Figures 18–25 collectively depict the bag having an oval-shaped cross section. To further illustrate how the recited “closed end of the bag-like member has a boundary substantially similar to a perimeter of the absorbent member,” the Examiner submits “Exhibit C,” which is an annotated version of Rojko’s Figure 22. Compare Ans. 8 (Exhibit C), with Rojko, Fig. 22. We reproduce Exhibit C, below: Appeal 2021-000202 Application 15/961,107 7 Exhibit C, or Rojko’s Figure 22, is a top view of Rojko’s disposable storage bag. Rojko, 3:23. The Examiner also submits an annotated version of Rojko’s Figure 24, titled “Exhibit D,” a copy of which we also reproduce, below: Appeal 2021-000202 Application 15/961,107 8 Exhibit D, or Rojko’s Figure 24, depicts an isometric view of Rojko’s disposal bag. See Rojko, 3:25. Collectively, we find that Rojko’s embodiment depicted in Figures 18–25 discloses a bag-like member with a boundary that is “substantially similar to a perimeter of the absorbent member.” Rather than finding these figures as depicting a linear bag without a perimeter, as Appellant understands (see Appeal Br. 10), we agree with the Examiner that these figures depict a closed end of a bag-like member with a well-defined, oval- shaped perimeter. See Ans. 10. As to Appellant’s argument that “[i]n order for the pad of Rojko to have [the claimed] perimeter, it would have to have a substantially flat dimension to measure” (Appeal Br. 10 (emphasis added)), we disagree. Appellant’s argument is not commensurate with the scope of the claim. Claim 1 does not require the closed end to be substantially flat, and we are not persuaded that the end must be flat in order for it to have a perimeter. For example, a sphere may have a perimeter despite not having any flat surfaces. As discussed above, we agree with the Examiner’s finding that the embodiment disclosed in Rojko’s Figures 18–25 depicts a “closed end of the bag-like member ha[ving] a boundary substantially similar to a perimeter of the absorbent member.” See Final Act. 3–4. Appellant also “submits that the finality of the pending Office Action was premature . . . [and] requests that the finality of the pending Office Action be withdrawn.” Appeal Br. 14. We decline Appellant’s request. Challenging the finality of an Office Action is a petitionable matter, not an appealable matter, and any question as to the prematureness of a final Appeal 2021-000202 Application 15/961,107 9 rejection “may therefore not be advanced as a ground for appeal, or made the basis of complaint before the Board of Patent Appeals and Interferences.” See MPEP § 706.07(c); see also Ex Parte Frye, 94 USPQ2d 1072, 1077–78 (BPAI 2010) (precedential). For the foregoing reasons, Appellant does not identify error in the Examiner’s rejection of claim 1, or of claims 3–6, 8, 10, 11, 13–17, and 21– 23, which fall therewith. 37 C.F.R. § 41.37(c)(1)(iv). b. Rejection of Claim 10 Claim 10 depends from claim 1 and further recites, “wherein the bag- like member extends from the closed end with a substantially consistent cross section.” Appeal Br. 17 (Claims App.) (emphasis added). In contesting the rejection, Appellant argues that “Rojko does not provide any closed end from which such a consistent cross section would extend.” Appeal Br. 13. In the Answer, the Examiner finds, “as shown in FIG. 24 of Rojko, the entirety of the mitt provided appears to have a consistent cross section.” Ans. 11. The Examiner further finds that Rojko’s embodiment “clearly show[s] ‘the closed end of the bag-like member has a flat and round boundary.’” Id. at 10 (referencing Rojko’s Figs. 22, 23, 24) (emphasis added). Appellant has the better position; we disagree with the Examiner’s findings as to Rojko. At the outset, we note that the Examiner construes claim 10 as requiring the “closed end” to have a “substantially consistent cross section.” See Ans. 11 (“the entirety of [Rojko’s mitt] appears to have such a consistent Appeal 2021-000202 Application 15/961,107 10 cross section”); see also id. at 10 (“Rojko’s Device . . . clearly show[s] ‘the closed end of the bag-like member has a flat and round boundary.’”). We further note that this construction is consistent with the embodiments shown in the Specification. See, e.g., Spec., Figs. 3A, 3B (depicting “closed end” 110 with a substantially consistent cross section). Basing our analysis on the Examiner’s construction, the Examiner’s finding that Rojko depicts a “closed end” with a “flat” and “substantially consistent cross section” is not supported by the record. See Ans. 10, 11. To illustrate our point, we reproduce Rojko’s Figures 20, 21, and 24, below: Figure 20 (left) is a “first side view” of Rojko’s disposal bag (see Rojko, 3:21); Figure 21 (middle) is a “second side view” of the disposal bag (see id. at 3:22); and Figure 24 (right) is an “isometric view” of the disposal bag Appeal 2021-000202 Application 15/961,107 11 after use (see id. at 3:25–30). We disagree with the Examiner’s finding that Figure 24 depicts a “closed end with a substantially consistent cross section.” See Ans. 11. Figure 24 is an isometric view that fails to provide a clear depiction of the “closed end,” let alone provide enough detail for us to discern the cross section of that end. Rather, upon reviewing Rojko’s Figures 20 and 21, we find that the closed end is rounded, and the cross section of that end increases from the tip for some distance until the rounded portion terminates. Although Rojko’s disposal bag appears to have a “substantially consistent cross section” that extends beyond the rounded portion, the Examiner’s finding that Rojko’s embodiment “clearly show[s] ‘the closed end of the bag-like member has a flat and round boundary’” (Ans. 10 (emphases added)) conflicts with that shown in Rojko’s side views. In other words, rather than having a flat closed end, as found by the Examiner (see Ans. 10, 11), Figures 20 and 21 clearly show Rojko’s closed end as having a rounded surface with a cross section that increases from the tip toward the open end of the bag/mitt. Because the Examiner erred in finding that Rojko’s “closed end” is “flat” and has a “substantially consistent cross section,” the Examiner’s rejection cannot be sustained. c. Summary of Anticipation Rejection Based on Rojko For the foregoing reasons, we affirm the rejection of claim 1, along with claims 3–6, 8, 11, 13–17, and 21–23, which fall therewith (see 37 C.F.R. § 41.37(c)(1)(iv)), and reverse the rejection of claim 10 as anticipated by Rojko. Appeal 2021-000202 Application 15/961,107 12 2. Claim 9 as Unpatentable over Rojko and Murray The Examiner rejects claim 9 as unpatentable over Rojko in view of Murray. Final Act. 6. Appellant does not present additional arguments contesting the rejection of this claim. See Appeal Br. 8–15. Accordingly, Appellant does not persuade us of Examiner error in the rejection of claim 9 as unpatentable over Rojko and Murray. CONCLUSION We affirm the prior art rejections of claims 1, 3–6, 8, 9, 11, 13–17, and 21–23. We reverse the prior art rejection of claim 10. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–6, 8, 10, 11, 13–17, 21–23 102 Rojko 1, 3–6, 8, 11, 13–17, 21–23 10 9 103 Rojko, Murray 9 Overall Outcome 1, 3–6, 8, 9, 11, 13–17, 21–23 10 TIME PERIOD FOR RESPONSE 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). Appeal 2021-000202 Application 15/961,107 13 AFFIRMED IN PART