12283769 (P.T.A.B. Feb. 23, 2016)

Ex Parte Bindra

Patent Trial and Appeal BoardFeb 23, 2016

12283769 (P.T.A.B. Feb. 23, 2016)

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. 12/283,769 09/16/2008 Sarvjeet S. Bindra E-2690 8439 7590 02/23/2016 Frank J. Bonini, Jr. Harding, Earley, Follmer & Frailey 1288 Valley Forge Road, P.O. Box 750 Valley Forge, PA 19482-0750 EXAMINER LEWIS, JUSTIN V ART UNIT PAPER NUMBER 3725 MAIL DATE DELIVERY MODE 02/23/2016 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 SARVJEET S. BINDRA ____________________ Appeal 2013-005064 Application 12/283,769 Technology Center 3700 ____________________ Before CHARLES N. GREENHUT, JAMES P. CALVE, and THOMAS F. SMEGAL, Administrative Patent Judges. CALVE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from the final rejection of claims 1–25. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2013-005064 Application 12/283,769 2 CLAIMED SUBJECT MATTER Claims 1, 22, 23, and 25 are independent. Claim 1 is reproduced below. 1. A binder for securing papers comprising: a) a front panel, b) a spine; and c) a rear panel; wherein said front panel, spine and rear panel comprise a lightweight material, said lightweight material comprising a polyfoam material. REJECTIONS Claims 23–25 are rejected under 35 U.S.C. § 102(e) as anticipated by Merzon. Claims 1–22 are rejected under 35 U.S.C. 103(a) as unpatentable over Merzon (US 7,699,553 B1, iss. Apr. 20, 2010) and Ong (US 6,213,516 B1, iss. Apr. 20, 2001). ANALYSIS Claims 23–25 as anticipated by Merzon The Examiner found that Merzon anticipates claim 23 by disclosing a binder with front panel 40, spine 48, and rear panel 42 with inner and outer surfaces where the inner surface 134 can include an integrally formed folder with pockets formed of a mesh material. Ans. 5–6, 15. The Examiner found that the mesh material forms a closable pocket with the outer surface of rear panel. Id. at 5, 15. The Examiner found that the mesh material will be the front of the pocket and the outer surface of the rear panel will be the outer surface of the rear of the pocket. Id. The Examiner interpreted claim 23 to require that the pocket is disposed on the rear panel but not that the pocket Appeal 2013-005064 Application 12/283,769 3 needs to be formed “on” the outside of the binder. Id. at 15–16. Instead, the Examiner argues “the pocket need only be formed ‘with’ said rear panel’s outer surface.” Id. at 16. Appellant argues that Merzon appears to disclose a folder that has a mesh pocket. Br. 14. Appellant also argues that Merzon’s alleged mesh pocket is not on the outside of the binder, as claimed, but is in the interior or inner surface of the rear panel. Id. Thus, Appellant argues that Merzon fails to disclose a closable pocket on the outside of its binder, as claimed. Br. 14. In addition, Appellant argues that claim 23 requires the mesh material to form the closable pocket with the outer surface of the rear panel. Id. at 14– 15. Appellant argues that Merzon discloses a folder with a mesh pocket but the outer surface of the rear panel does not form a pocket with the mesh material because the mesh material is not on the rear panel outer surface, as claimed. Id. at 15. The Examiner has not established by a preponderance of evidence that Merzon discloses a binder with a closable mesh pocket “wherein said mesh material forms with said outer surface of said rear panel, said closable pocket” as recited in claim 23. Merzon teaches that inner surfaces 132, 134 of binder front and rear cover 40, 42 can include an integrally formed folder with an article holding pocket(s) made of a mesh material (not shown), as the Examiner acknowledges. Merzon, 11:26–30, Fig. 4; Ans. 5, 15. The Examiner has not explained sufficiently how a mesh pocket folder formed adjacent an inner surface of rear panel 42, forms a closable pocket with an outer surface of rear panel 42 that has no connection to the mesh pocket. The Examiner’s interpretation is unreasonably broad and inconsistent with the language of claim 23. We do not sustain the rejection of claim 23. Appeal 2013-005064 Application 12/283,769 4 We also do not sustain the rejection of claim 24, which depends from claim 23. The Examiner’s finding that the inner mesh pocket is accessible when the zipper is only partially zipped (Ans. 5, 17) does not explain how the inner mesh pocket is formed with the outer surface of the rear panel, as recited in claim 23. Independent claim 25 recites a binder with a closure for securing the front and rear panel together, “wherein said closure includes at least one elastic element and a holding element” and “wherein said elastic element is stretchable to an elongate condition and contracts to engage with said holding element.” The Examiner found that Merzon discloses such a closure as an elastic element (fabric sidewalls 34) and a holding element (zipper 56) where fabric sidewall 34 is stretchable to engage zipper 56. Ans. 5–6, Appellant argues that Merzon does not disclose an elastic element that is stretchable to an elongate condition and contracts to engage with a holding element. Br. 16. Appellant argues that Merzon teaches a zipper that secures fabric sidewalls 34 together with pull tab 60, lanyard 62, and handle 64, rather than by stretching one member over another, as claimed. Id. at 16–17. The Examiner has not established by a preponderance of evidence that Merzon discloses the claimed closure. Even if fabric sidewalls 34 could be considered to stretch to an elongate condition, the Examiner has not shown that the fabric sidewalls 34 contract to engage with the zipper 56, which the Examiner asserts to be the claimed holding element. Ans. 17–18. Instead, Merzon teaches that fabric sidewalls 34 are joined together by the zipper 56, which extends along the edge of each sidewall 34. Merzon, 7:7–21, Fig. 4. The sidewalls 34 are attached permanently to zipper 56. They do not stretch or contract to engage zipper 56. We do not sustain the rejection of claim 25. Appeal 2013-005064 Application 12/283,769 5 Claims 1–22 as unpatentable over Merzon and Ong The Examiner found that Merzon discloses a binder, as recited in independent claims 1 and 22 with front panel 40, spine 48, and rear panel 42. Ans. 7, 12. The Examiner also found that “Ong teaches the concept of constructing core panels of a binder cover using polyfoam material (see col. 4, lines 13-15, providing that the spine, front and back covers are formed from stiff polyethylene plastic sheets).” Id. The Examiner determined that “Appellant explicitly defines the term ‘polyfoam’ to include polystyrene, extruded polystyrene, polyurethane, and polyethylene.” Id. at 19. The Examiner relied on the following disclosure in Appellant’s Specification to support this finding that Appellant acted as his own lexicographer and defined “polyfoam” to include polyethylene: Examples of materials which may be used to construct the binder 10 include polyfoam materials, and more particularly, polyfoam materials such as, for example, polystyrene, extruded polystyrene, polyurethane, and polyethylene. Id. (citing Appellant’s Specification filed Dec. 29, 2008). The Examiner then found that Ong discloses “the use of a polyfoam material (as defined by Applicant) in the form of polyethylene plastic sheets.” Id. Appellant argues that neither reference discloses a polyfoam binder because Merzon teaches a cardboard binder and Ong discloses polyethylene sheets. Br. 18. Appellant argues that Dictionary.com defines “polyfoam” as a rigid, semirigid, or rubbery foam composed of minute bubbles of air or carbon dioxide embedded in a polymer matrix, often polyurethane: used in mattresses, padding, insulation, etc. Id. at 19. Appellant argues that a polyfoam is made from a matrix with air or carbon dioxide bubbles embedded in the material. Id. Appeal 2013-005064 Application 12/283,769 6 The Examiner has not established by a preponderance of evidence that Ong teaches or suggests a “polyfoam material,” as recited in claim 1. The Specification does not provide a lexicographic definition of “polyfoam material,” as the Examiner determined. 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. . . . 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. Thorner v. Sony Computer Entertainment Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citations omitted); Manual of Patent Examining Procedure ¶ 2111.01 IV. (Rev. 7 Nov. 2015) (“the applicant must clearly set forth a special definition of a claim term in the specification that differs from the plain and ordinary meaning that it would otherwise possess”). We agree with Appellant that the Specification indicates binder 10 may be made of a polyfoam material and further specifies that the polyfoam material made be polyurethane and other polymers that include polystyrene, extruded polystyrene, and polyethylene. Br. 20. Even if Appellant used “polyfoam” in a slightly broader sense than a normal usage,1 we do not discern a clear intent to redefine “polyfoam” to include a rigid, polyethylene plastic sheet, as the Examiner has done. Ans. 7, 19. We interpret “polyfoam material” to mean “a foam material made of a polymer such as polyurethane, polyethylene, polystyrene, and extruded polystyrene.” 1 “Polyfoam” is defined as “material used in foam mattresses, consisting of bubbles of air or carbon dioxide in a polymer (often polyurethane) matrix.” Academic Press Dictionary of Science and Technology retrieved from http:// search.credoreference.com/content/entry/apdst/polyfoam/ on Feb. 22, 2016. Appeal 2013-005064 Application 12/283,769 7 This interpretation is supported by Appellant’s Specification, which discloses that preferably a cover layer is provided on each side of polyfoam layer 25. Spec. 4:21–22. Appellant also discloses that these surface layers 28, 30 “preferably provide surfaces which are water resistant and durable, as well as being lightweight.” Id. at 5:10–12. These disclosures indicate that polyfoam layer 25 is not water resistant or particularly durable, which is consistent with Appellant’s argument that the polyfoam material is a foam2 made of a polymer material. Appellant illustrates this embodiment in cross- section in Figure 2, which depicts polyfoam layer 25 with diagonal lines and stippling, which pertain to a foam or synthetic resin. See Manual for Patent Examining Procedure § 608.02 IX. (Rev. 7, Nov. 2015). We do not sustain the rejection of independent claims 1 or 22. We also do not sustain the rejection of claims 2–21, which depend from claim 1. DECISION We reverse the rejections of claims 1–25. REVERSED 2 A definition of “foam” includes “[a] dispersion of gas in a liquid or solid, such as shaving cream or sponge rubber.” See Academic Press Dictionary of Science and Technology “retrieved from http://search.credoreference.com/ content/entry/apdst/foam/ on Feb. 22, 2016.