Ex Parte Berkowitz et alDownload PDFPatent Trial and Appeal BoardSep 26, 201412627235 (P.T.A.B. Sep. 26, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte BARBARA BERKOWITZ, GREGORY F. JACOBS, BRETT THIBODEAU, and HUSNU M. KALKANOGLU ____________________ Appeal 2012-006543 Application 12/627,235 Technology Center 3600 ____________________ Before JOHN C. KERINS, MICHAEL L. HOELTER, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Barbara Berkowitz, Gregory F. Jacobs, Brett Thibodeau, and Husnu M. Kalkanoglu (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 1–7, 9, 11, 15–20. Appeal Br. 6. Claims 8, 10, and 12–14 have been withdrawn.1 Ans. 9. Additionally, the Examiner 1 The Examiner’s May 26, 2011 Non-Final Action omits the prior withdrawal of claims 8, 10, and 12–14 and instead rejects claims 1–16 under 35 U.S.C. § 112; however, this apparent error is corrected in the Examiner’s Answer, which states “[c]laims 8, 10 and 12-14 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b).” Ans. 9. Appeal 2012-006543 Application 12/627,235 2 has withdrawn claims 17–20 from consideration. Ans. 8. An oral hearing was held on September 23, 2014. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. THE INVENTION Appellants’ invention is directed to roll roofing. Independent claim 1, reproduced below, is illustrative. 1. A roll of roofing material with an anti-roll device for preventing rolling of the roll of roofing material off a roof when the roll of roofing material is disposed in a cylindrical roll on and against the surface of a sloped roof, comprising: (a) a generally cylindrical roll comprising a roll of roofing material including an asphalt-impregnated web with particulate material in the form of granules applied thereto; with the roll of roofing material having a substantially hollow core portion at at least one end, and with the genrally [sic] cylindrical roll having an outer cylindrical surface of a given diametric dimension; (b) an anti-roll device comprising a transverse member of a transverse dimension greater than said given diametric dimension, carried by said cylindrical roll and protruding generally outwardly of said cylindrical surface; with the anti- roll device comprising means whereby, when the generally cylindrical roll is disposed on a sloped roof with its outer cylindrical surface against the surface of the sloped roof, the transverse member will comprise resistance means resisting rolling of the cylindrical roll off the roof. THE REJECTIONS The Examiner has rejected: (1) claims 1–7, 9, 11, 15, and 16 under 35 U.S.C. § 112, second paragraph, as indefinite; Appeal 2012-006543 Application 12/627,235 3 (2) claims 1–7, 9, 11, 15, and 16 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement; (3) claims 1–6 and 11 under 35 U.S.C. § 103(a) as being unpatentable over Tyson (US 4,444,313; iss. Apr. 24, 1984) and Benuska (US 4,099,682; iss. July 11, 1978); (4) claim 7 under 35 U.S.C. § 103(a) as being unpatentable over Tyson, Benuska, and Alderman (US 4,222,212; iss. Sept. 16, 1980); and (5) claims 9, 15, and 16 under 35 U.S.C. § 103(a) as being unpatentable over Tyson, Benuska, and Gay (US 4,226,380; iss. Oct. 7, 1980). ANALYSIS (1) Rejection of claims 1–7, 9, 11, 15, and 16 under 35 U.S.C. § 112, second paragraph The Examiner finds claims 1–7, 9, 11, 15, and 16 are “vague and indefinite” because “it is unclear whether the ‘anti-roll device comprising a transverse member…’, ‘the anti-roll device comprising means…’, and ‘the transverse member comprising resistance means…’ are a single anti-roll device” or “three separate anti-roll devices.” Ans. 10. The Examiner further finds that “the independent claim nor the dependent claims specify what structure is required by the terms ‘means’ nor how the structures relate to each other.” Ans. 12–13. Appellants explain that the anti-roll device is a single device claimed “in two manners[,]” namely, as “a transverse member” and as a “means whereby . . . the transverse member will comprise resistance means.” Appeal Br. 7. Appellants refer to an explanation previously provided by Appellants’ attorney to the Examiner that “it is commonplace to claim a Appeal 2012-006543 Application 12/627,235 4 device more than one way; that if one of these is a ‘means plus function’ way, and additionally defines that ‘means’ by another structure, as here, the result simply is that the claim does not receive § 112 paragraph 6 treatment under M.P.E.P. §2181.” Id. In support of this claim construction, Appellants refer to the common practice of claiming an invention more broadly in an independent claim and more narrowly in a dependent claim. Id. at 8–9. We agree with the Examiner that claim 1, and claims 2–7, 9, 11, 15, and 16 which ultimately depend from claim 1, are indefinite. As Appellants contend, claim 1 indeed recites that the anti-roll device is claimed to comprise both “a transverse member” and also “means.” The “means” is recited as “means whereby . . . the transverse member will comprise resistance means.” The latter “resistance means” is distinct from the former “means” modifying the anti-roll device. The Summary of Claimed Subject Matter set forth in the Appeal Brief cites to “pg. 4 L 30-pg. 5 L 2; 50 and 51 of Fig. 4; 26, 27 of Fig. 1” of the Specification as supporting written description for the “means whereby” language. In particular, page 4, line 30 to page 5, line 2 describes a sloped roof, in Figure 4 (a non-elected species), element 50 is the roll of roofing material and element 51 is the roof, and in Figure 1, elements 26, 27 refer to the upper surface of the roof and roll of roofing material. However, as noted by the Examiner, “[A]ppellants do not point to anywhere in the Specification as to what these means are.” Ans. 13. In other words, no explanation is provided as to how the roll of roofing material and the roof structures correspond to the “means” recitations in the claims. The Supreme Court has recently interpreted the claim definiteness requirement of 35 U.S.C. § 112 in Nautilus, Inc. v. Biosig Instruments, Inc., Appeal 2012-006543 Application 12/627,235 5 134 S. Ct. 2120 (2014). The Supreme Court said: “we read §112, ¶2 to require that a patent's claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus, 134 S. Ct. at 2129. We do not believe that claim 1 in this application meets the Nautilus standard because Appellants have failed to identify any definition or corresponding structure at least with respect to the claim language “means whereby . . . the transverse member will comprise resistance means,” which is recited separately from the transverse member itself, and because such definition or structure is not evident from the Specification or prosecution history. Therefore, we are constrained to sustain the Examiner’s rejection of claims 1–7, 9, 11, 15, and 16 under 35 U.S.C. § 112, second paragraph. (2) Rejection of claims 1–7, 9, 11, 15, and 16 under 35 U.S.C. § 112, first paragraph We do not reach the merits of the Examiner’s rejection under 35 U.S.C. § 112, first paragraph. Before a proper review of this rejection can be performed, the subject matter encompassed by the claims on appeal must be reasonably understood without resort to speculation. Because claim 1 fails to satisfy the requirements of 35 U.S.C. § 112, second paragraph, we reverse, pro forma, this rejection. See In re Steele, 305 F.2d 859, 862 (CCPA 1962). (3) Rejection of claims 1–6 and 11 over Tyson and Benuska Independent claim 1, and hence dependent claims 2–6 and 11, includes the limitation of the roll of roofing material that, when disposed on the sloped roof, has “its outer cylindrical surface against the surface of the Appeal 2012-006543 Application 12/627,235 6 sloped roof.” Appellant argues that neither Tyson nor Benuska disclose that the generally cylindrical roll is disposed on a sloped roof with its outer cylindrical surface against the surface of the sloped roof, as required by claim 1. Appeal Br. 10–12. Appellant points out that “Tyson never has the situation where the roll of carpet [not roofing] is disposed against the surface of a sloped roof.” Id. at 10 (bracketing in original). Referring to Figure 3 of Tyson, Appellant explains that “[b]oth the space and the bottom of the box prevent the roll from touching any surface, (roof or otherwise); the ends 30A and 30B hold the roll well above the surface.” Id. at 12. The Examiner determined that “there are no limitations set forth [in claim 1] which would preclude the box from being present.” Ans. 16. We disagree. We are persuaded by Appellants that the Examiner erred in that the claim limitation requiring the roll’s outer cylindrical surface to be against the surface of the sloped roof does preclude a box from causing the roll’s outer cylindrical surface not to be against the surface of the sloped roof. We note that the Examiner did not find that Benuska alternatively meets this claim limitation. Therefore, we do not sustain the Examiner’s rejection of claims 1–6 and 11 as unpatentable over Tyson and Benuska. (4) Rejection of claim 7 over Tyson, Benuska, and Alderman Claim 7 depends from claim 1 and includes the additional limitation that the transverse member is triangular. The Examiner repeats the findings with respect to Tyson and Benuska as applied to claim 1, and relies on Alderman for teaching a triangular transverse member. Ans. 11. For the reasons stated above with respect to Tyson and Benuska, as applied to claim 1, we do not sustain the Examiner’s rejection of claim 7 over Tyson, Benuska, and Alerman. Appeal 2012-006543 Application 12/627,235 7 (5) Rejection of claims 9, 15, and 16 over Tyson, Benuska, and Gay Each of claims 9, 15, and 16 ultimately depend from claim 1 and further include an additional limitation directed to a strap. The Examiner repeats the findings with respect to Tyson and Benuska as applied to claim 1, and relies on Gay for teaching a strap connector means. Ans. 12. For the reasons stated above with respect to Tyson and Benuska, as applied to claim 1, we do not sustain the Examiner’s rejection of claim 9, 15, and 16 over Tyson, Benuska, and Gay. Claims 17–20 Appellants argue the validity of the Examiner’s withdrawal of claims 17–20 and also the patentability of the withdrawn claims. Reply Br. 1–2. The Examiner withdrew claims 17–20 from consideration, and also all rejections of claims 17–20, albeit for the first time in the Examiner’s Answer. Ans. 5. The Board does not review decisions of Examiners to withdraw claims from consideration. See In re Hengehold, 440 F.2d 1395, 1402–03 (CCPA 1971). Because there are no rejections of claims 17–20 on appeal, we are constrained to decline Appellants’ request to review claims 17–20. DECISION The Examiner's rejection of claims 1–7, 9, 11, 15, and 16 under 35 U.S.C. § 112, second paragraph, as being indefinite is affirmed. The Examiner's rejection of claims 1–7, 9, 11, 15, and 16 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement is reversed. Appeal 2012-006543 Application 12/627,235 8 The Examiner’s rejection of claims 1–6 and 11 as unpatentable over Tyson and Benuska is reversed. The Examiner’s rejection of claim 7 as unpatentable over Tyson, Benuska, and Alderman is reversed. The Examiner’s rejection of claims 9, 15, and 16 as unpatentable over Tyson, Benuska, and Gay is reversed. 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 mls Copy with citationCopy as parenthetical citation