Ex Parte Andersen

Patent Trial and Appeal Board

Mar 19, 2018

11746279 (P.T.A.B. Mar. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111746,279 0510912007 John L. Andersen
277 7590 03/21/2018
PRICE HENEVELD LLP
695 KENMOOR SE
PO BOX 2567
GRAND RAPIDS, MI 49501
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.
BUI02 P321 2391
EXAMINER
MILLER, SAMANTHA A
ART UNIT PAPER NUMBER
3749
NOTIFICATION DATE DELIVERY MODE
03/21/2018 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):
ptomail@priceheneveld.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN L. ANDERSEN
Appeal2017-002729
Application 11/746,279
Technology Center 3700
Before CHARLES N. GREENHUT, LYNNE H. BROWNE, and
PAUL J. KORNICZKY, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134 from the rejection of claims
1--4, 6, 7, 12-14, and 21-26. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 The real party in interest is identified as Builder's Best Inc. Appeal Br. 1.
Appeal2017-002729
Application 11/746,279
CLAIMED SUBJECT MATTER
Claims 1, 12, 21, 25, and 26 are independent. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. An apparatus for removing material from an object,
compnsmg:
an object at least a portion of which has a substantially
uniform surface;
a first groove and a second groove, the first and second
grooves positioned adjacent each other and defining a strip
between them; and
a fingerpiece connected to the strip;
the fingerpiece being formed by the first groove and a
bottom groove connected to the second groove, wherein the
bottom groove does not connect to the first groove;
wherein the fingerpiece is adapted to facilitate the removal
of the fingerpiece and strip to modify the object;
the apparatus, including the strip and fingerpiece, wherein
each of the strip and the fingerpiece are substantially flat and
planar with one another, and the fingerpiece is substantially flat
and planar along its entire length; and
the fingerpiece and strip having a substantially uniform
thickness.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Dorosz
Burton, Jr.
Mai
Haynes
Chiang
us 3,281,007
us 4, 133,300
us 5,816,906
US 6,478,673 Bl
US 6,626,972 B2
2
Oct. 25, 1966
Jan.9, 1979
Oct. 6, 1998
Nov. 12, 2002
Sept. 30, 2003
Appeal2017-002729
Application 11/746,279
REJECTIONS
I. Claims 1--4, 6, 7, 12-14, and 21-26 stand rejected under 35
U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement.
II. Claims 1-3 and 6 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Haynes. 2
III. Claims 1, 4, and 7 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Haynes and Dorosz.
IV. Claims 12-14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Chiang, Haynes, and Dorosz.
V. Claims 21and24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Burton, Jr., Haynes, and Dorosz.
VI. Claims 22, 23, 25, and 26 stand rejected under 35 U.S.C §
103(a) as unpatentable over Burton, Jr., Haynes, Dorosz, and
Mai.
2 Although the Final Action states that claims 1--4, 6, and 7 are rejected
under 35 U.S.C. §103(a) as being unpatentable over Haynes and Drosz, the
explanation of the rejection with respect to claims 1-3 and 6 is couched in
terms of anticipation. See Final Act. 3-5. Moreover, the Final Action
explicitly states that claim 1 is rejected under 35 U.S.C. § 102(b) and that
Haynes meets the language of claims 2, 3, and 6. See id. at 4-5.
Accordingly, we understand claims 1-3 and 6 to stand rejected as
anticipated by Haynes. For claims 1-3, Appellants share our understanding.
See Appeal Br. 8-11.
3
Appeal2017-002729
Application 11/746,279
DISCUSSION
Rejection!: Compliance of Claims 1--4, 6, 7, 12-14, and 21-26
With the Written Description Requirement
The Examiner determines that claims 1, 12, 21, 25, and 26 contain
new matter. 3 See Final Act. 3. In support of this determination, the
Examiner explains that although these claims "state[] 'the fingerstrip being
formed by the first groove and a bottom groove connected to the second
groove, wherein the bottom groove does not connect to the first groove,'"
Appellant's Figure 3 clearly shows bottom groove 21 connected to the first
groove 12. Id.
Responding to this rejection, Appellant explains that "as shown in
Figs. 1 and 3, the aperture (22) is located between the bottom groove (21)
and the first groove (12) and separates the bottom groove (21) and the first
groove (12), thereby preventing the bottom groove (21) from connecting to
the first groove (12)." Appeal Br. 7. Appellant argues that "the bottom
groove (21) is in no way described as including the aperture (22)." Id.
Aperture 22 is best shown in Appellant's Figure 3 reproduced below:
3 We understand that claims 2--4, 6, 7, 13, 14, and 22-24 stand rejected
based on their dependence from claims 1, 12, or 21.
4
Appeal2017-002729
Application 11/746,279
20
I
FIG. 3
22
I I
12 14
10
I
/
/
21
Appellant's Figure 3 is "an elevational view of the cutaway portion of
an object ... embodying the present invention." Spec. iJ 12. As can be seen
in Appellant's Figure 3, aperture 22 separates the upper end of bottom
groove 21 from the both ends of first groove 12. Thus, Appellant's
argument is persuasive.
Accordingly, we do not sustain the Examiner's decision rejecting
claims 1--4, 6, 7, 12-14, and 21-26 as failing to comply with the written
description requirement.
Rejection II: Anticipation of Claims 1-3 and 6 by Haynes
The Examiner finds that Haynes discloses each and every limitation of
claim 1. See Final Act. 4. However, this rejection of claim 1 does not
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Appeal2017-002729
Application 11/746,279
address the limitation requiring that "the bottom groove does not connect to
the first groove." See id at 5; see also Appeal Br. Claims App. Thus, the
Examiner fails to set forth a prima facie case of anticipation for claim 1, and
its dependent claims 2, 3, and 6.
Accordingly, we do not sustain the Examiner's decision rejecting
claims 1-3 and 6 as anticipated by Haynes.
Rejection III: Obviousness of Claims 1, 4, and 74
Based on Haynes and Dorosz
The Examiner determines that Haynes fails to disclose an object
formed of polypropylene and a fingerstrip "formed by the first groove and a
bottom groove connected to the second groove, wherein the bottom groove
does not connect to the first groove." Final Act. 5. The Examiner finds that
Dorosz discloses a similar "container closure device (10) is formed of
polypropylene for the purpose of utilizing an easily manipulable material
that can be inexpensively manufactured, and can be safely used and disposed
of by consumers." See id. at 6. In addition, the Examiner finds that Dorosz
discloses a fingerstrip as claimed. See id. at 5-6. In particular, the
Examiner finds that Dorosz' "bottom groove (the groove from 32 to the
outer line of weakness 28 - Fig.2-3) does not connect to the first groove
(the bottom groove from 32 to the outer line of weakness 28 is not tangent
4 Claims 2, 3, and 6 are not further addressed in the part of this rejection that
applies 35 U.S.C. § 103. See Final Act. 5-6. Accordingly, we do not
understand these claims to stand rejected based on obviousness. Further, as
discussed infra, since Dorosz does not cure the deficiency in the rejection of
claim 1 based on anticipation by Haynes, even if we were to somehow
construe this rejection to include claims 2, 3, and 6, the outcome in this
instance would be the same.
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Appeal2017-002729
Application 11/746,279
with the first groove outer line of weakness 28 - Fig.2-3)." Id. Based on
these findings, the Examiner reasons that it would have been obvious "to
modify the removable cap device (10) of Haynes by forming the cap (10)
from a polypropylene plastic, as taught by Dorosz, in order to utilize an
easily manipulable material that can be inexpensively manufactured, and can
be safely used and disposed of by consumers." Id. at 6 (citing Dorosz 1:44-
47, 3:18-26, 31).
Appellant contends that the "rejection is based on an incorrect
interpretation of the claims." Appeal Br. 11. Appellant explains that
"[t]here is nothing in the disclosure of the present application that would
suggest an interpretation of the language that 'wherein the bottom groove
does not connect to the first groove' should mean that 'the bottom groove is
not tangent with the first groove."' Id. at 11-12 (citation omitted).
Appellant notes that the "bottom groove' as defined by the Examiner ...
extends between the inner line of weakness 28 to the outer line of weakness
28 ... and cannot render obvious that which is defined in claim l." Id. at
12. In other words, Appellant argues that Dorosz' bottom groove connects
to the first groove.
The Examiner identifies the groove from 32 to the outer line of
weakness 28 as corresponding to the claimed bottom groove. See, e.g., Final
Act. 5. The Examiner identifies the outer line of weakness 28 as
corresponding to the first groove. See id. As shown in Dorosz' Figures 2
and 3, these grooves are connected. Thus, the Examiner's finding is in error
and Dorosz does not cure the deficiency in Haynes discussed supra.
Accordingly, we do not sustain the Examiner's decision rejecting
claim 1, and claims 4 and 7 which depend therefrom as unpatentable over
Haynes and Dorosz.
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Appeal2017-002729
Application 11/746,279
Rejections IV-VI: Obviousness of
Claims 12-14 Based on Chiang, Haynes, and Dorosz
Claims 21and24 Based on Burton, Jr., Haynes, and Dorosz
Claims 22, 23, 25, and 26 Based on Burton, Jr., Haynes, Dorosz, and Mai
Rejections IV-VI all rely upon the same erroneous finding as
Rejection III discussed supra. Accordingly, we do not sustain the
Examiner's decisions rejecting claims 12-14 and 21-26.
DECISION
The Examiner's rejections of claims 1--4, 6, 7, 12-14, and 21-26 are
REVERSED.
REVERSED
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