Ex Parte BlucherDownload PDFPatent Trial and Appeal BoardSep 21, 201511623009 (P.T.A.B. Sep. 21, 2015) Copy Citation 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. 11/623,009 01/12/2007 Timothy L. Blucher 2102.0010001 4061 26111 7590 09/22/2015 STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 NEW YORK AVENUE, N.W. WASHINGTON, DC 20005 EXAMINER BRADEN, SHAWN M ART UNIT PAPER NUMBER 3728 MAIL DATE DELIVERY MODE 09/22/2015 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 TIMOTHY L. BLUCHER ____________________ Appeal 2013-003490 Application 11/623,009 Technology Center 3700 ____________________ Before: CHARLES N. GREENHUT, ANNETTE R. REIMERS, and JAMES J. MAYBERRY, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from the Examiner’s Final rejection of claims 1, 2, 4, 5, 9, 10, 12, 13, 15, 17, 18, 20, 22, 23, and 25–28. An oral hearing was held on September 15, 2015. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). Appeal 2013-003490 Application 11/623,009 2 The claims are directed to a contour fit pan liner for a food service pan. Claim 9, reproduced below, is illustrative of the claimed subject matter: 9. A polymeric pan liner for use with a food service pan, consisting essentially of: two polymeric sides meeting at side edges and at a single contoured bottom edge and having open top edges, the single contoured bottom edge extending between the side edges, wherein the single contoured bottom edge substantially eliminates comers prone to food entrapment, wherein the pan liner is capable of withstanding a temperature of about 400 degrees Fahrenheit. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Bender US 3,889,870 June 17, 1975 Jentsch US 4,041,851 Aug. 16, 1977 PANSAVER marketing sheet: M&O Plastic Products, Inc., “Pan SaverTM” (Feb. 20, 1999). REJECTIONS1 Claims 9, 10, 12, 13, 15, 17, 18, 20, 22 and 23 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. 1 The Examiner withdrew a rejection under 35 U.S.C. § 112, first paragraph. Ans. 9. Appeal 2013-003490 Application 11/623,009 3 Claims 1, 2, 9, 10, 12, 13, 15, 17, 18, 20, 22, 23, and 25–28 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Pansaver™ and Bender. Claims 4 and 5 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Pansaver™, Bender and Jentsch. OPINION 35 U.S.C. § 112, second paragraph The claims rejected under 35 U.S.C. § 112, second paragraph are argued as a group for which we select claim 9 as representative. Appellant does not dispute the Examiner’s determination that the term “substantially” in the phrase “substantially eliminates corners prone to food entrapment” in claim 9 is a term of degree. See App. Br. 7; see also Ans. 2– 5. As such, we agree with the Examiner that it is the present Specification that must “provide[] some standard for measuring that degree.” MPEP § 2173.05(b)(I). The facts that the term may pass muster under 35 U.S.C. § 112, second paragraph, when used in the claims of other Specifications and the fact that the phrase “so dimensioned” was held not to render the claim at issue indefinite in Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986), are of little probative value in the instant case. Ans. 9. The issue of indefiniteness as it relates to relative terminology must be decided on a case-by-case basis, in light of the particular Specification associated with the claim at issue. There are no per se rules of indefiniteness. See, e.g., Exxon Research and Eng’g Co. v. U.S., 265 F.3d 1371, 1379–80 (Fed. Cir. 2001) (distinguishing In re Jolly, 172 F.2d 566 (CCPA 1949) (holding a claim including the same term, Appeal 2013-003490 Application 11/623,009 4 “substantially,” indefinite); noting the presumption of validity of the claims of an issued patent as compared to those of an application). We agree with the Examiner that one skilled in the art would be unable to ascertain the scope of independent claim 9 for several reasons. First, the term “eliminates” implicates some liner having corners which is used as a basis for comparison. Claim 9 does not contain any language that limits the liner used for comparison to, for example, a liner having only two right-angle corners. It is not clear whether “substantially eliminates corners” means that all corners must be eliminated to a substantial extent, or alternatively that only a substantial amount of corners must be eliminated. See Ans. 9. For example, a contoured bottom edge will result from eliminating all four lower corners of a liner such as that depicted in the Figure 8A embodiment, to arrive at a liner such as that depicted in Figure 9. It is not clear if claim 9 is met by eliminating two or three of those corners because two or three might be considered a substantial number of corners. Id. It is not clear if the claim is, also or instead, met by eliminating every corner by, for example 50%, because that may be a substantial amount of corners to eliminate. Id. We recognize that in the example above we make reference to the Figure 8A embodiment which Appellant presumably considers to fall within the scope of claim 9, as already having corners 25 prone to food entrapment substantially eliminated. Spec. 14:15–18; see App. Br. 4 (“Claim 9 recites a polymeric pan liner for use with a food service pan (e.g., any of the pan liners 20 shown in Figs. 8, 9, 11, 12 . . . .”). But, this brings us to the next problem with the language of claim 9; the only guidance we have in the claims or in the Specification regarding the degree of elimination is that the Appeal 2013-003490 Application 11/623,009 5 elimination is of “corners prone to food entrapment.” However, different liner corners, placed in different pans, are presumably prone to entrapping different foods in different amounts. See Spec. 13:22–25 (“The tapered edges 34 form an angle θ from a plane defined by the flat bottom edge 33. The angle θ . . . can vary based on the particular application and the shape and size of the pan 3 that the contour fit liner 20 will be used in.”). The same corner would be prone to different degrees of food entrapment depending on how well the pan conforms to the liner and how easily a particular food can migrate into those corners. Neither the pan nor the food forms part of the claimed combination. Nor are they set forth in such a way so as to inform a potential infringer what food and what pan should be used to determinate whether particular corners are, or are not, prone to food entrapment. Finally, even presuming we adopt what we understand to be Appellant’s position, that the term “substantially eliminates corners prone to food entrapment” means that all corners must be substantially eliminated, it remains unclear what constitutes a substantial amount or substantial extent of that elimination. For example, considering the embodiment depicted in Figure 11, the edge 34 must be formed at some distance from the right-angle intersection between the bottom end 22 and the side walls side wall edges 30 and it must intersect the bottom and a side wall at some angle. We are unable to find any language in the claim or instruction in the Specification so as to reasonably apprise one skilled in the art as to when that distance and those angles are such that corners prone to food entrapment are substantially eliminated. The uncertainty as to when the location of edges 34 would be Appeal 2013-003490 Application 11/623,009 6 such so as to “substantially eliminate[] corners prone to food entrapment” renders the metes and bounds of claim 9 unclear. In cases involving claims that recite terms of degree, those claims are generally held definite only so long as there is something in the Specification to enable one skilled in the art to determine the degree required. Often this may be set forth in terms of achieving a particular result. See, e.g., Exxon Research and Eng’g Co. v. U.S., 265 F.3d at 1381 (“Whether there is a ‘substantial absence of slug flow’ therefore can be determined with reference to whether reactor efficiency is materially affected.”). Here, the Examiner has articulated a reasonable basis for holding claim 9 indefinite. Appellant’s remarks do not direct our attention to anything in the instant Specification that can serve as guidance to ascertain when claim 9 would or would not be infringed. “[T]he language of the claims must make it clear what subject matter they encompass.” In re Hammack, 427 F.2d 1378, 1382 (CCPA 1970). Accordingly, Examiner is justified in requiring Appellant to more precisely define the metes and bounds of protection sought. See In re Packard, 751 F.3d 1307, (Fed. Cir. 2014). Thus, the rejection under 35 U.S.C. § 112, second paragraph is affirmed. Recognizing that in affirming the Examiner’s rejection under 35 U.S.C. § 112, second paragraph, we have supplemented the Examiner’s reasoning, we designate our affirmance as including a “new ground” of rejection pursuant to 37 C.F.R. § 41.50(b) so as to ensure Appellant has a fair opportunity to respond. See In re Stepan, 660 F. 3d 1341, 1345 (Fed. Cir. 2011) (providing that it is the PTO’s obligation to provide prior notice Appeal 2013-003490 Application 11/623,009 7 to the applicant of all matters of fact and law asserted prior to an appeal hearing before the Board). 35 U.S.C. § 103(a) In maintaining the rejection under 35 U.S.C. § 103(a), the Examiner refers to the following analysis (reproduced in its entirety) of Appellant’s declarations: The affidavit filed on 12/07/2011 under 37 CFR 1.131 has been considered but is ineffective to overcome the prior art references. It refer(s) only to the system described in the above referenced application and not to the individual claims of the application. Thus, there is no showing that the objective evidence of nonobviousness is commensurate in scope with the claims. See MPEP § 716. Applicant refers to an affidavit or declaration filed in the prior application. Affidavits or declarations, such as those submitted under 37 CFR 1.130, 1.131, and 1.132, filed during the prosecution of the prior application do not automatically become a part of this application. Where it is desired to rely on an earlier filed affidavit or declaration, the applicant should make the remarks of record in this application and include a copy of the original affidavit or declaration filed in the prior application. Also, the affidavits pertain to a different set of claims. It refers only to the system described in the a different referenced application and not to these individual claims of this application. Thus, there is no showing that the objective evidence of nonobviousness is commensurate in scope with this applications claims. See MPEP § 716. See Ans. 11 (apparently referring to Final Act. 9). The Examiner’s statements are not persuasive as to the ineffectiveness of the declarations in question. First, there does not appear to be any Appeal 2013-003490 Application 11/623,009 8 indication that these declarations were refused entry into the present application. App. Br. 23. Second, just because those declarations may have been presented in the same or substantially the same form in a parent application does not, without more, demonstrate that they are not commensurate in scope with the claimed subject matter of the present application. We do not find anything in MPEP § 716 to support the Examiner’s position in this regard. To the contrary, MPEP § 716.01 expressly states that the examiner must specifically explain why the evidence is insufficient. General statements such as “the declaration lacks technical validity” or “the evidence is not commensurate with the scope of the claims” without an explanation supporting such findings are insufficient. Thus, as the Examiner has improperly dismissed the declarations as not commensurate with the scope of the claims without any reasoned explanation for doing so, the Examiner has failed to demonstrate that, even in light of the evidence of the so-called “secondary considerations” offered by Appellant, the claimed subject matter would have been obvious to one having ordinary skill in the art. App. Br. 16; MPEP § 716.01(a) (quoting Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538, (Fed. Cir. 1983) (“[E]vidence rising out of the so-called ‘secondary considerations’ must always when present be considered en route to a determination of obviousness.”) (citation omitted). Accordingly, the rejections under 35 U.S.C. § 103(a) cannot be sustained on the record before us. Appeal 2013-003490 Application 11/623,009 9 DECISION The Examiner’s rejection under 35 U.S.C. § 112, second paragraph, is affirmed but designated as a new ground of rejection under 37 C.F.R. § 41.50(b). The Examiner’s rejections under 35 U.S.C. § 103(a) are reversed. 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds 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 proceeding 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. . . . No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). Appeal 2013-003490 Application 11/623,009 10 AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b) rvb Copy with citationCopy as parenthetical citation