Ex Parte Berg et al

Board of Patent Appeals and Interferences

Apr 25, 2012

11068658 (B.P.A.I. Apr. 25, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/068,658 02/28/2005 Charles John Berg JR. 9918L 8349
27752 7590 04/25/2012
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
BRADEN, SHAWN M
ART UNIT PAPER NUMBER
3728
MAIL DATE DELIVERY MODE
04/25/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte CHARLES JOHN BERG, JR. and
JOHN DAVID NORCOM
________________

Appeal 2010-004063
Application 11/068,658
Technology Center 3700
________________

Before CHARLES N. GREENHUT, WILLIAM V. SAINDON and
MICHAEL L. HOELTER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-004063
Application 11/068,658

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STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1-8 and 10-15. Claims 9 and 16-20 have been canceled
(App. Br. 1). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

The Claimed Subject Matter
The claimed subject matter pertains to a container configured to have
an upper portion consisting of two generally planar opposing side panels.
Claim 1 is illustrative of the claims on appeal and is reproduced below:
1. An erectable and collapsible container comprising:
a structure comprising a bottom wall and at least a pair of
end walls pivotably attached to said bottom wall;
said end walls each comprising a plurality of end wall
sections having an end wall hinge disposed therebetween;
an upper portion consisting of two generally planar
opposing side panels attached to said structure, said upper
portion comprising engageable sides defining a closable
opening for said container; and
wherein said end walls are articulable about said end wall
hinges when said pair of end walls moves from a first position
relative to said bottom wall to a second position relative to said
bottom wall.

Reference Relied on by the Examiner
Hamilton US 6,149,304 Nov. 21, 2000

The Rejection on Appeal
Claims 1-8 and 10-15 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Hamilton (Ans. 3).

Appeal 2010-004063
Application 11/068,658

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ANALYSIS
Appellants argue claims 1-8 and 10-15 together (Br. 3). We select
independent claim 1 for review with claims 2-8 and 10-15 standing or falling
with claim 1 (37 C.F.R. § 41.37(c)(1)(vii) (2011)).

Claim construction analysis
Claim 1 requires a structure having a bottom wall, pivotably attached
end walls and “an upper portion consisting of two generally planar opposing
side panels attached to said structure.” The words of a claim are generally
given their ordinary and customary meaning as understood by a person of
ordinary skill in the art when read in the context of the specification and
prosecution history (see Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed.
Cir. 2005) (en banc)). There are only two exceptions to this general rule: 1)
when a patentee sets out a definition and acts as his own lexicographer, or 2)
when the patentee disavows the full scope of a claim term either in the
specification or during prosecution (Vitronics Corp. v. Conceptronic, Inc.,
90 F.3d 1576, 1580 (Fed. Cir. 1996)).
To act as its own lexicographer, a patentee must “clearly set forth a
definition of the disputed claim term” other than its plain and ordinary
meaning (CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.
Cir. 2002)). It is not enough for a patentee to simply disclose a single
embodiment or use a word in the same manner in all embodiments, the
patentee must “clearly express an intent” to redefine the term (Helmsderfer
v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008)).
Here, Appellants’ Specification identifies the two generally planar
opposing side panels as reference numbers 112 and 114 and describes them
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as “extending from the end walls 24, 26 and side walls 32, 34 to define a
flexible bag-like upper portion 116 for the container 10” (Spec. 5:22-24).
Appellants’ Specification further describes these side panels 112 and 114 as
extending from a respective front or back side wall 32, 34 and from half of
each of end walls 24, 26 such that the panels 112, 114 are attached together
along side seams 118 and 120 (Spec 5:24-27).
Appellants’ Specification does not clearly express an intent to
redefine the claim term “side panel” nor do Appellants assert that they are
acting as their own lexicographer. Further, Appellants do not expressly
disavow the ordinary and customary meaning of “side panel.” Instead,
Appellants disclose a single embodiment (that may be used in an open,
separated configuration (Figs. 7-12) or in a sealed configuration (Fig. 13))
while employing the term “side panel” in the same manner for both without
expressing an intent to redefine the term (Spec. 3:16-26, 5:22-29).
Instruction has been given that “[a]bsent claim language carrying a
narrow meaning, the PTO should only limit the claim based on the
specification or prosecution history when those sources expressly disclaim
the broader definition.” (In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)).
As Appellants do not expressly state that the claim term “side panel” carries
a narrow meaning or that the broader definition of this term is expressly
disclaimed, we give the claim term “side panel” its ordinary and customary
meaning as understood by a person of ordinary skill in the art.
The Examiner identifies Hamilton’s Figure 21 as disclosing “an upper
portion consisting of two generally planar opposing side panels (fig. 21)”
(Ans. 3, emphasis in original). The Examiner states that he “interprets
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Hamilton (see Figure 21) as only having two sidewalls” and concludes that
“Hamilton meets the limitations as claimed” (Ans. 6, 7).
Hamilton’s Figure 21 discloses panels whose upper edges are sealed
together in a linear fashion (see also Hamilton 16:7-8). One skilled in the art
would understand that Hamilton’s Figure 21 discloses a joining of two walls
for sealing at their upper end and accordingly, the Examiner’s interpretation
and conclusion has support in the teachings of Hamilton as would
reasonably be understood by one skilled in the art.
Appellants contend that “the Hamilton reference is comprised of at
least four panels” and that “[t]he structure disclosed in figure 15 of the
reference does not comprise the claimed element of an upper portion
consisting of two generally planar opposing side panels attached to said
structure” because the upper portion disclosed in the figures of Hamilton
“consists of more than two generally planar opposing side panels” (Br. 3).
Appellants’ argument, focusing on the different configuration shown
in Hamilton’s Figure 15, and not the configuration shown in Figure 21 as
identified by the Examiner, is not persuasive. Hamilton states that Figure 21
is “an alternative approach to folding and sealing the opening of the bag”
from that disclosed in Figure 15 (Hamilton 4:66-67, see also 15:35-36).
Appellants also assert that “[r]eferences must be taken as a whole and
may not be parsed so as to provide a biased teaching which is not present” is
not persuasive because there is no evidence that the Examiner’s reliance on
an “alternative approach” clearly set forth in Hamilton is an act of parsing
(Br. 3). This is especially the case since Hamilton’s Figures 15-21 pertain to
the same embodiment but with Figure 21 illustrating an alternative to folding
(Hamilton 4:50-67, 15:35-36). We thus agree with the Examiner’s
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interpretation (Ans. 6-7) that Hamilton shows “two generally planar
opposing side panels attached to said structure” as recited in claim 1.

“Consisting of”
Appellants’ claim 1 recites a limitation requiring an upper portion
“consisting of” two planar side panels. The phrase “consisting of” is a
closed transition phrase that is “understood to exclude any elements, steps,
or ingredients not specified in the claim” (AFG Indus., Inc. v. Cardinal IG
Co., 239 F.3d 1239, 1244–45 (Fed. Cir. 2001)). Here, it is the only
limitation of this claim that employs this closed transition phrase (the
preamble of claim 1 ends with the open-ended transition “comprising”). The
Examiner states that “Appellant’s [sic.] claim language ‘consisting of two
generally planar opposing side panels’ only limits the number of side panels
to two, it does not limit other structure such as end walls, tabs, pockets,
holes and closure means” (Ans. 6). Appellants contend that Hamilton does
not provide this structure because “the Hamilton reference is comprised of at
least four panels” (Br. 3). Appellants’ assertion is not persuasive as it
ignores the Examiner’s specific reference to Hamilton’s Figure 21 and what
the Examiner interprets as Hamilton’s side panels (Ans. 3 and 6-7). The
Examiner identifies where Hamilton discloses “only” two side panels and, as
such, we agree with the Examiner that “Hamilton meets the limitations as
claimed” (Ans. 7).
Accordingly, and in view of the record presented, we sustain the
Examiner’s rejection of claims 1-8 and 10-15.

Appeal 2010-004063
Application 11/068,658

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DECISION
The Examiner’s decision rejecting claims 1-8 and 10-15 under 35
U.S.C. § 102(b) as being anticipated by Hamilton is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

MP