Ex Parte Anderson et al

Patent Trial and Appeal Board

Aug 8, 2018

14059040 (P.T.A.B. Aug. 8, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/059,040 10/21/2013
32692 7590 08/10/2018
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Kevin W. Anderson
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.
64325US008 3928
EXAMINER
VONCH, JEFFREY A
ART UNIT PAPER NUMBER
1781
NOTIFICATION DATE DELIVERY MODE
08/10/2018 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN W. ANDERSON, THOMAS E. DEWEY JR.,
JOSEPH T. BARTUSIAK, LEE A. THOMAS, and
RUSSELL J. HEYRMAN
Appeal2017-008396
Application 14/059,040
Technology Center 1700
Before TERRY J. OWENS, N. WHITNEY WILSON, and
JEFFREY R. SNAY, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1--4. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a folded roll of masking material. Claim 1 is
illustrative:
1. A folded roll of thin and flexible masking material
having a longitudinal axis and first and second folded end
portions axially spaced from each other along the longitudinal
axis, the folded roll of masking material comprising:
Appeal2017-008396
Application 14/059,040
Lee
opposing, first and second outermost layers extending in
a direction of the longitudinal axis between the first and second
folded end portions;
a slit formed in the first outermost layer, the slit defining
first and second elongated edges in the first outermost layer;
a first radially extending end portion extending between
the first and second outermost layers at the first folded end
portion;
a first intermediate layer immediately adjacent the second
outermost layer, the first intermediate layer and the second
outermost layer directly connected at a first fold formed at the
second folded end portion;
a second intermediate layer immediately adjacent the first
outermost layer; and
a third intermediate layer disposed between the first and
second intermediate layers, the third intermediate layer directly
connected to the first outermost layer at a second radially
extending end portion at the second folded end portion;
wherein the second intermediate layer is longitudinally
between the first and second radially extending end portions;
and
wherein the first elongated edge is directly connect to the
first radially extending end portion and the second elongated
edge is directly connected to the second radially extending end.
The Reference
US 2009/0202771 Al
The Rejection
Aug. 13, 2009
Claims 1--4 stand rejected under 35 U.S.C. § 103 over Lee.
OPINION
Due to claim indefiniteness, we procedurally reverse the rejection and
enter a new ground of rejection under 35 U.S.C. § 112(b).
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Appeal2017-008396
Application 14/059,040
New ground of rejection
Claims 1--4 are rejected under 35 U.S.C. § 112(b) as being indefinite
due to failing to particularly point and distinctly claim the subject matter the
inventors regard as the invention. We need address only the sole
independent claim, i.e., claim 1.
When the Appellants read claim 1 on their Specification they do not
specifically address any claim limitation. Instead, they merely point to
page 3, lines 23-25, page 3, line 28-page 4, line 6, page 4, lines 6-11 (all
of which are in the "Summary" section), page 15, lines 1-8 (which is in the
"Detailed Description" section but the Appellants do not address any
details), and Figures 7 and 8 ("Response to Non-Compliant Appeal Brief
under 37 C.F.R. § 41.37" filed Jan. 9, 2017, "Summary of Claimed Subject
Matter").
Regarding claim 1, the Appellants' Specification appears to disclose a
folded roll of thin and flexible masking material (800) having a longitudinal
axis (590) and first (530) and second (540) folded end portions axially
spaced from each other along the longitudinal axis (590), the folded roll of
masking material (800) comprising:
a first outermost layer (top layer in Fig. 8) extending in a direction of
the longitudinal axis (590) between the first (530) and second (540) folded
end portions;
a slit (560) formed in the first outermost layer, the slit (560) defining
first (562) and second (564) elongated edges in the first outermost layer; and
a first radially extending end portion (566) (Spec. renumbered
page 14, 1. I -renumbered page 16, 1. 27; Figs. 7, 8).
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Appeal2017-008396
Application 14/059,040
The Specification is unclear as to the second outermost layer, first
radially extending end portion, first folded end portion, first intermediate
layer, first fold, second intermediate layer, third intermediate layer, first and
second radially extending end portions, and their relationships.
Accordingly, we reject claim 1 and its dependent claims 2--4 as
indefinite under 35 U.S.C. § 112(b).
In some instances it is possible to make a reasonable, conditional
interpretation of claims adequate for the purpose of resolving patentability
issues to avoid piecemeal appellate review. In the interest of administrative
and judicial economy, this course is appropriate wherever reasonably
possible. See Ex parte Saceman, 27 USPQ2d 14 72, 14 7 4 (BP AI 1993); Ex
parte Ionescu, 222 USPQ 537, 540 (Bd. App. 1984). In other instances,
however, it may be impossible to determine whether claimed subject matter
is anticipated by or would have been obvious over references because the
claims are so indefinite that considerable speculation and assumptions would
be required regarding the meaning of terms employed in the claims with
respect to the scope of the claims. See In re Steele, 305 F.2d 859, 862
(CCPA 1962).
For the reason discussed above, we consider the Appellants' claims to
be sufficiently indefinite that application of the prior art to the claims is not
possible. On this basis, we do not sustain the rejection under 35 U.S.C. § 103.
This reversal is not a reversal on the merits of the rejection but, rather, is a
procedural reversal predicated upon the indefiniteness of the claims.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b).
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Appeal2017-008396
Application 14/059,040
37 C.F.R. § 4I.50(b) provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record.
DECISION
The rejection of claims 1--4 under 35 U.S.C. § 103 over Lee is
procedurally reversed and a new rejection of those claims under 35 U.S.C.
§ 112(b) is entered.
The Examiner's decision is procedurally reversed.
REVERSED; 37 C.F.R. § 4I.50(b)
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