Ex Parte Casanova

Board of Patent Appeals and Interferences

Feb 26, 2010

10789858 (B.P.A.I. Feb. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JULIO CASANOVA
____________

Appeal 2009-002030
Application 10/789,858
Technology Center 3700
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Decided: February 26, 2010
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Before MICHAEL W. O’NEILL, STEFAN STAICOVICI, and
FRED A. SILVERBERG, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Julio Casanova (Appellant) appeals under 35 U.S.C. § 134 (2002)
from the Examiner’s decision rejecting claims 1-14, 19-34, and 39-41.
Claims 15-18 and 35-38 have been withdrawn by the Examiner. We have
jurisdiction over this appeal under 35 U.S.C. § 6 (2002).

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THE INVENTION
Appellant’s invention relates to a battery package including at least
two separate modules 12 and a cover 14 placed over the at least two separate
modules 12. Spec. 3, para. [0021] and figs. 2 and 3.
Claim 1 is representative of the claimed invention and reads as
follows:
1. A battery package comprising:

at least two separate modules, each module
including a base having a first face and a second
face, each module further including at least one
pocket extending outwardly from the first face;

at least one battery placed into each pocket;
and

a cover placed over the at least two separate
modules;

two of the at least two separate modules
have the first faces thereof facing each other, with
at least one pocket of a first one of the two of the
at least two separate modules being located
between a pair of pockets of a second one of the
two of the at least two separate modules;

wherein the at least two separate modules will
easily separate upon removal of the cover from
over the at least two separate modules; and

wherein none of the modules are able to be
removed from within the cover while the cover is
over all of the at least two separate modules.

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Douglas US 3,743,084 Jul. 3, 1973
Getz US 5,957,358 Sep. 28, 1999
Källgren US 6,253,920 B1 Jul. 3, 2001
Kumakura US D479,126 S Sep. 2, 2003
Casanova WO 01/98170 A2 Dec. 27, 2001
Miller WO 01/98171 A2 Dec. 27, 2001

The following rejections are before us for review:
1. The Examiner rejected claims 1-14, 19, 20, 22-34, 39, and 40 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
2. The Examiner rejected claims 1-14, 19, 20, 22-34, 39, and 40 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.
3. The Examiner rejected claims 1, 3, 4, 6-11, 13, 14, 20, 22-24, 26-31,
33, 34, and 40 under 35 U.S.C. § 103(a) as unpatentable over
Casanova, Douglas and/or Källgren.1

1 In the Final Rejection mailed Dec. 20, 2006, the Examiner
inadvertently left out independent claim 22 from the heading of this
rejection. Final Rejection, 3. However, the Examiner corrected this error in
the Examiner’s Answer. Ans. 3, 5. Since claims 23, 24, 26-31, 33, and 34,
which are dependent on claim 22, were included in this rejection, and the
Examiner explained to Appellant the error in the Interview Summary mailed
Apr. 12, 2007, for the purpose of this appeal, we shall consider the
Examiner’s omission of claim 22 in the heading of this rejection as a
typographical error. Accordingly, we will consider claim 22 as being part of
this rejection and this appeal.
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4. The Examiner rejected claims 2, 12, and 32 under 35 U.S.C. § 103(a)
as unpatentable over Casanova, Douglas, and/or Källgren, and
Official Notice.
5. The Examiner rejected claims 1, 3-5, 10, 11, 13, 14, 19, 20, 22-25, 30,
31, 33, 34, 39, and 40 under 35 U.S.C. § 103(a) as unpatentable over
Kumakura, Douglas and/or Källgren.
6. The Examiner rejected claims 2, 12, and 32 under 35 U.S.C. § 103(a)
as unpatentable over Kumakura, Douglas, and/or Källgren, and
Official Notice.
7. The Examiner rejected claims 6-9 and 26-29 under 35 U.S.C. § 103(a)
as unpatentable over Kumakura, Douglas, and/or Källgren, and
Casanova.
8. The Examiner rejected claims 21 and 41 under 35 U.S.C. § 103(a) as
unpatentable over Miller, Källgren, Getz, and Douglas.
9. The Examiner rejected claims 21 and 41 under 35 U.S.C. § 103(a) as
unpatentable over Kumakura, Källgren, Getz, and Douglas.

THE ISSUES
1. Does the originally filed application support the limitation “none of
the modules are able to be removed from within the cover while the
cover is over all of the at least two separate modules,” as called for by
each of independent claims 1 and 22?
2. Does the limitation “none of the modules are able to be removed from
within the cover while the cover is over all of the at least two separate
modules,” as recited in each of independent claims 1 and 22, render
the claims indefinite under 35 U.S.C. § 112, second paragraph?
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3. Does the Examiner’s interpretation of Douglas’s tablet holding insert
40, Källgren’s blister pack 1, and Getz’s battery packaging strip 40',
as “separate modules,” constitute a reasonable interpretation?

SUMMARY OF DECISION
We REVERSE.

OPINION
Issue (1) – Rejection (1)
We first consider the Examiner's rejection of claims 1-14, 19, 20, 22-
34, 39, and 40 under 35 U.S.C. § 112, first paragraph, as failing to comply
with the written description requirement.
Each of claims 1-14, 19, 20, 22-34, 39, and 40 requires the limitation
“none of the modules are able to be removed from within the cover while the
cover is over all of the at least two separate modules.” The Examiner takes
the position that because the cardboard box 14 shown in Appellant’s Figure
2 “has openings on both sides,” it “allows removal of at least one of the
modules.” Ans. 4. Pointing to the Specification, Appellant argues that
because the Specification states that, “the cover 14 covers all six sides of the
engaged modules 12,” the originally filed application supports the limitation
“none of the modules are able to be removed from within the cover while the
cover is over all of the at least two separate modules.” App. Br. 7. See also,
Spec. 6, para [0027]. The Examiner responds that:
[T]he description on page 6 does not disclose
whether the wrapping entirely covers all six sides
or partially covers six sides of the modules.
Ans. 13.
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To satisfy the written description requirement, the disclosure must
convey with reasonable clarity to skilled artisans that Appellant was in
possession of the claimed invention as of the filing date. Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). The inquiry into
whether the description requirement is met is a question of fact. In re
Wertheim, 541 F.2d 257, 262, (CCPA 1976); In re Ruschig, 379 F.2d 990,
996 (CCPA 1967). In this case, we find that the Specification states that the
cover 14 covers all six sides of the modules 12. See Spec. 6, para. [0027].
An ordinary and customary meaning of the term “all” is “the whole number,
quantity, or amount; TOTALITY” MERRIAM-WEBSTER’S COLLEGIATE
DICTIONARY (10th Ed. 1997). Since all of the sides of the modules 12 are
covered by cover 14, and the modules 12 have only six sides, we find that
the Specification conveys with reasonable clarity to a person of ordinary
skill in the art that the cover 14 totally covers the modules 12. Therefore,
the rejection of claims 1-14, 19, 20, 22-34, 39, and 40 under 35 U.S.C. §
112, first paragraph, as failing to comply with the written description
requirement, cannot be sustained.

Issue (2) – Rejection (2)
Next, we consider the Examiner's rejection of claims 1-14, 19, 20, 22-
34, 39, and 40 under 35 U.S.C. § 112, second paragraph, as being indefinite.
The Examiner takes the position that because the Specification does
not “clearly states [sic] that all six sides of the modules are entirely covered”
. . . “[i]t is not clear how the cover prevents the module from removal while
the cover is over the modules.” Ans. 4 and 13.
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However, it is well established that the test for definiteness under 35
U.S.C. § 112, second paragraph, is whether "those skilled in the art would
understand what is claimed when the claim is read in light of the
specification." Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986) (citations omitted). In this case, as we have
found above, the Specification describes a cover 14 that covers all of the
sides of the modules 12. See Spec. 6, para. [0027]. Since all of the sides of
the modules 12 are covered by cover 14, and the modules have only six
sides, we conclude that the claim language, when read in light of the
Specification clearly describes that the cover 14 totally covers modules 12.
Since the cover 14 totally covers modules 12, we conclude that the cover
prevents removal of the modules 12 while the cover 14 covers the modules
12. Accordingly, we conclude that claims 1-14, 19, 20, 22-34, 39, and 40
are not indefinite under 35 U.S.C. § 112, second paragraph. Hence, the
rejection of claims 1-14, 19, 20, 22-34, 39, and 40 cannot be sustained.

Issue (3)
Rejection (3) through Rejection (9)
The Examiner finds that neither Casanova, Kumakura, nor Miller
discloses “separate modules,” as required by each of independent claims 1,
21, 22, and 41. Ans. 5, 7, and 9. The Examiner relies on the teachings of
Douglas, Källgren, and Getz to show packaging systems having “separate
modules.” As such, the Examiner takes the position that, the tablet holding
insert 40 of Douglas, the blister pack 1 of Källgren, and the battery
packaging strip 40' of Getz, constitute “separate modules.” Specifically, the
Examiner takes the position that, “the blister packs 2, 3 [of Källgren] are
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separated at element 9 and are considered as two separate modules.” Ans.
16. Similarly, with respect to the teachings of Douglas, the Examiner states
that, “[t]he Douglas patent has two modules 50,60 that meet the claim
limitation of ‘separate modules.’” Ans. 29. Lastly, with regard to Getz, the
Examiner notes that, “[e]ach of four or five batteries are considered a
module.” Ans. 11.
When construing claim terminology in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004). In this case, Appellant’s Specification does not expressly define the
term “separate” or otherwise indicate that this term is used in a manner other
than its ordinary and customary meaning. Accordingly, we construe this
term in accordance with its ordinary and customary meaning. We find that
an ordinary and customary meaning of the term “separate” that is most
consistent with the Specification and the understanding of those of ordinary
skill in the art is “set or kept apart: DETACHED.” MERRIAM-WEBSTER’S
COLLEGIATE DICTIONARY (10th Ed. 1997).
It is our finding that the holding units 50 and 60 of the tablet holding
insert 40 of Douglas are connected (attached) by linking panel 42. Douglas,
col. 4, ll. 19-21 and figs. 1 and 2. Similarly, we find that the rows 2 and 3 of
Källgren’s blister pack 1 are connected by web 9 and the battery packages
40' of Getz are connected along perforation line 50. Källgren, fig. 1 and
Getz, fig. 2. Hence, in contrast to the Examiner’s position, we find that the
tablet holding insert 40 of Douglas, the blister pack 1 of Källgren, and the
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battery packaging strip 40' of Getz, do not constitute “separate modules,”
because they are each connected (attached) rather than detached or separate,
as called for by each of independent claims 1, 21, 22, and 41. Accordingly,
since the Examiner has erred in the interpretation of the disclosures of
Douglas, Källgren, and Getz, respectively, the Examiner’s conclusion of
obviousness based on the teachings of Casanova, Douglas and/or Källgren;
Kumakura, Douglas and/or Källgren; Miller, Källgren, Getz, and Douglas;
and Kumakura, Källgren, Getz, and Douglas is likewise flawed. Therefore,
Rejections (3), (5), (8), and (9) cannot be sustained.
With respect to Rejections (4) and (6), the Examiner’s proposed
modification based on Official Notice does not cure the deficiencies of
Douglas and Källgren as discussed above. Accordingly, Rejections (4) and
(6) likewise cannot be sustained.
Finally, regarding Rejection (7), the Examiner’s proposed
modification based on the disclosure of Casanova does not cure the
deficiencies of Douglas and Källgren as discussed above. Accordingly,
Rejection (7) also cannot be sustained.

CONCLUSIONS
1. The originally filed application supports the limitation “none of the
modules are able to be removed from within the cover while the cover
is over all of the at least two separate modules,” as called for by each
of independent claims 1 and 22.
2. The limitation “none of the modules are able to be removed from
within the cover while the cover is over all of the at least two separate
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modules,” as recited in each of independent claims 1 and 22, does not
render the claims indefinite under 35 U.S.C. § 112, second paragraph.
3. The Examiner’s interpretation, of Douglas’s tablet holding insert 40,
Källgren’s blister pack 1, and Getz’s battery packaging strip 40', as
“separate modules,” is not a reasonable interpretation.

DECISION
The Examiner’s decision to reject claims 1-14, 19, 20, 22-34, 39, and
40 under 35 U.S.C. § 112, first paragraph, for failing to comply with the
written description requirement, is reversed.
The Examiner’s decision to reject claims 1-14, 19, 20, 22-34, 39, and
40 under 35 U.S.C. § 112, second paragraph, as being indefinite, is reversed.
The Examiner’s decision to reject claims 1-14, 19, 20, 22-34, 39, and
40 under 35 U.S.C. § 103(a) is reversed.

REVERSED

Klh

MICHAEL C. POPHAL
EVEREADY BATTERY COMPANY INC
25225 DETROIT ROAD
P O BOX 450777
WESTLAKE, OH 44145