2020004054 (P.T.A.B. Feb. 10, 2021)

Annamarie Joseph

Patent Trials and Appeals BoardFeb 10, 2021

2020004054 (P.T.A.B. Feb. 10, 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. 13/731,660 12/31/2012 Annamarie Joseph 5726 7590 02/10/2021 Dennis Clarke 6717 Corner Lane McLean, VA 22101 EXAMINER LEWIS, KIM M ART UNIT PAPER NUMBER 3786 MAIL DATE DELIVERY MODE 02/10/2021 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 ANNAMARIE JOSEPH Appeal 2020-004054 Application 13/731,660 Technology Center 3700 Before JILL D. HILL, NATHAN A. ENGELS, and LEE L. STEPINA, Administrative Patent Judges. ENGELS, 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, 2, and 4–10. Claim 3 is canceled. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Annamarie Joseph. Appeal Br. 2. Appeal 2020-004054 Application 13/731,660 2 CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A system for providing a protective covering for at least a portion of a human or non-human animal comprising a supply of dispensable plastic stretch film having a predetermined thickness and width and a dispenser-applicator for dispensing a predetermined length of film from said supply thereof and applying said predetermined length of said film to said human or non-human animal wherein said dispenser-applicator is coupled to and longitudinally aligned with a telescoping mechanism which enables extension of said supply of dispensable plastic stretch film. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Strout US 4,522,348 June 11, 1985 Powell US 4,817,762 Apr. 4, 1989 Watson US 7,401,449 B2 July 22, 2008 Dufresne US 2006/0124490 A1 June 15, 2006 Basgil US 2006/0219365 A1 Oct. 5, 2006 Elan WO 01/68456 A1 Sept. 20, 2001 REJECTIONS Claim 6 is rejected under pre-AIA 35 U.S.C. § 112, second paragraph, as being indefinite. Final Act. 7. Claims 1 and 2 are rejected under pre-AIA 35 U.S.C. § 102(b) as being anticipated by Watson. Final Act. 8. Claim 4 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Watson in view of Powel. Final Act. 11. Appeal 2020-004054 Application 13/731,660 3 Claims 5 and 6 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Watson in view of Elan. Final Act. 11. Claims 7 and 8 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Watson in view of Strout. Claims 9 and 10 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Watson in view of Dufresne and Basgil. Final Act. 12. OPINION Indefiniteness Dependent claim 6 requires that the claimed plastic stretch film “is a skin tone color.” Appellant contends the term “skin tone color” is a recognized term of art, as evidenced by a number of issued U.S. patents that purportedly include the term. Appeal Br. 13; Reply Br. 3. The Examiner determines, and we agree, that because independent claim 1 recites that the plastic stretch film is for use on humans or non- human animals, the term “skin tone color” is indefinite. Final Act. 8–9. Even if a person of ordinary skill would understand “skin tone color” as it relates to humans, an issue we do not decide here, the inclusion of non- human animals renders the term, and thus the scope of the claim, unclear because the Specification provides no context for “skin tone color” as it relates to non-human animals. Further, contrary to Appellant’s argument (Reply Br. 3), the fact that the Examiner had not rejected claim 6 as indefinite at the time of Appellant’s previous Appeal does not estop the Examiner from rejecting this claim as indefinite now. Appeal 2020-004054 Application 13/731,660 4 Anticipation As explained by the Examiner, Watson discloses an apparatus for dispensing plastic stretch wrap, including a telescoping handle. Final Act. 8–10; Ans. 13. Appellant argues Watson’s disclosure of a telescoping feature is not enabled because Watson states that its telescoping handle is “not shown” in its Figure 2. Appeal Br. 17–19; Reply Br. 5–6. We disagree with Appellant. As acknowledged by Appellant, Watson expressly discloses “telescoping handle 27 of the type used on a paint roller frame.” Appeal Br. 17 (quoting Watson, 3:22–28). Appellant’s suggestion that Watson is not enabling because it states that its telescoping handle is “not shown” is without merit. As noted in case law cited by Appellant (Appeal Br. 18), a prior art publication is presumed to be enabled such that “an applicant must generally do more than state an unsupported belief that a reference is not enabling.” In re Morsa, 713 F.3d 104, 110 (Fed. Cir. 2013). Here, Watson’s disclosure of a telescoping handle of the type used with a paint roller carries an unrebutted presumption that it is sufficiently enabling to a person of ordinary skill, even without a figure depicting the telescoping feature. Accordingly, having considered the Examiner’s rejection in light of each of Appellant’s arguments and the evidence of record, we affirm the Examiner’s rejection of independent claim 1 as anticipated by Watson. Appellant relies on the same arguments for claims 2 and 4–10, and we affirm the Examiner’s rejections of those claims for the same reasons. Appeal 2020-004054 Application 13/731,660 5 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 6 112, second paragraph Indefiniteness 6 1, 2 102(b) Watson 1, 2 4 103(a) Watson, Powel 4 5, 6 103(a) Watson, Elan 5, 6 7, 8 103(a) Watson, Strout 7, 8 9, 10 103(a) Watson, Dufresne, Basgil 9, 10 Overall Outcome 1, 2, 4–10 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). AFFIRMED