Ex Parte Cooper

Patent Trial and Appeal Board

Feb 12, 2018

13897782 (P.T.A.B. Feb. 12, 2018)

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.
13/897,782 05/20/2013 Scott Cooper 19217 US 8974
27081 7590 02/12/2018
OWENS-ILLINOIS, INC.
ONE MICHAEL OWENS WAY
Plaza One - Legal Department
PERRYSBURG, OH 43551-2999
EXAMINER
XU, XIAOYUN
ART UNIT PAPER NUMBER
1797
MAIL DATE DELIVERY MODE
02/12/2018 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 SCOTT COOPER
Appeal 2017-005537
Application 13/897,782
Technology Center 1700
Before: ADRIENE LEPIANE HANLON, JEFFREY T. SMITH, and
JANE E. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1, 5—10, 21—27, and 29-35. We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to 37 C.F.R. § 41.50(b).
1 Appellant identifies Owens-Brockway Glass Container, Inc., as the real
party in interest. Appeal Brief, filed November 1, 2016 (“App Br”), 2.
Appeal 2017-005537
Application 13/897,782
STATEMENT OF THE CASE
Appellant claims a package that includes a container, a product
dispensably disposed within the container, a closure for the container, and an
indicator carried by the container, the closure, or both the container and the
closure. App. Br. 4—5. Independent claims 1 and 24 illustrate the subject
matter on appeal and are reproduced below:
1. A package that includes:
a container,
a product dispensably disposed within said container,
a closure for said container, and
an indicator carried by said container, said closure, or
both said container and said closure,
wherein said indicator indicates whether or not said
product within said container is authentic or counterfeit when
said indicator is exposed to a sample of said product by
producing a response when a predetermined chemical
compound is detected in said sample of said product that is
known to be associated with an authentic product and that has
not been added to said product for identification or
authentication purposes.
24. A package that includes:
a container,
a product dispensably disposed within said container,
a closure for said container, and
an indicator carried by said container, said closure, or both said
container and said closure,
wherein, when said indicator is wetted with a sample of
said product, said indicator provides an indication as to whether
said product disposed within said container is authentic or
counterfeit by producing a visual response when said indicator
detects the presence of a predetermined chemical compound
that is known to be associated with an authentic product.
App. Br. 26 (Claims Appendix) (emphasis added).
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The Examiner sets forth the following rejections in the Non-Final
Office Action entered April 8, 2016 (“Office Act.”), and maintains the
rejections in the Examiner’s Answer entered December 15, 2016 (“Ans.”):
I. Claims 1, 5—9, 21—31, and 33—35 under 35 U.S.C. § 103 as
unpatentable over Green et al. (US 2006/0035288 Al, published February
16, 2006) in view of Gan (US 2009/0128803 Al, published May 21, 2009);
and
II. Claims 10 and 32 under 35 U.S.C. § 103(a) as unpatentable
over Green in view of Gan and Lin (US 2006/0154414 Al, published July
13,2006).
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we procedurally reverse the Examiner’s
rejections of claims 1, 5—10, 21—27, and 29—35 under 35 U.S.C. § 103, and
enter a new ground of rejection against these claims under 35 U.S.C.
§ H2(b).
Rejections I and II
Claim 1 recites that the “indicator indicates whether or not said
product within said container is authentic or counterfeit when said indicator
is exposed to a sample of said product by producing a response when a
predetermined chemical compound is detected in said sample of said product
that is known to be associated with an authentic product.” And independent
claim 24 similarly recites that the “indicator provides an indication as to
whether said product disposed within said container is authentic or
counterfeit by producing a visual response when said indicator detects the
presence of a predetermined chemical compound that is known to be
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associated with an authentic product.”
In view of the limited description provided in Appellant’s
Specification (discussed below), we are unable to ascertain the metes and
bounds of an “authentic or counterfeit” product and “a predetermined
chemical compound” “that is known to be associated with an authentic
product” as these phrases are used the context of claims 1 and 24. Spec. Tflf
22, 23, 37, and 38. We therefore cannot determine what is, and what is not,
encompassed by these phrases. Consequently, we cannot determine the
propriety of the Examiner’s 35 U.S.C. §103 rejections of claims 1 and 24
and their dependent claims (5—10, 21—23, 25—27, and 29-35) because to do
so would require considerable speculation with regard to the metes and
bounds of the claimed subject matter, and such speculation would not be
appropriate. In re Steele, 305 F.2d 859, 862 (CCPA 1962); In re Wilson,
424 F.2d 1382, 1385 (CCPA 1970).
Accordingly, we procedurally reverse the rejections of claims 1, 5—10,
21—27, and 29—35 under 35 U.S.C. § 103 and enter a new ground of
rejection against these claims under 35 U.S.C. § 112(b), set forth below. We
emphasize that this is a technical reversal of the rejections under 35 U.S.C.
§ 103, and is not a reversal based upon the merits of the rejections.
New Rejection Under 35 U.S.C. § 112, second paragraph
Claims 1, 5—10, 21—27, and 29-35 are rejected under 35 U.S.C.
§ 112(b) as being indefinite for failing to particularly point out and distinctly
claim the subject matter that the inventor regards as the invention.
The evaluation of a claim with respect to prior art begins with
understanding the meaning of the claim. Our reviewing court has instructed
that “[i]t is the applicants’ burden to precisely define the invention, not the
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Application 13/897,782
PTO’s........ f35 U.S.C. $ 112(b)]_puts the burden of precise claim drafting
squarely on the applicant.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir.
1997). After giving claims a broadest reasonable interpretation consistent
with the Specification, if the metes and bounds of the claimed subject matter
cannot be determined, the claims are indefinite and should be rejected. In re
Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014).
The metes and bounds of an “authentic or counterfeit” product and “a
predetermined chemical compound” “that is known to be associated with an
authentic product” as these phrases are used in the context of claims 1 and
24 cannot be ascertained from Appellant’s original disclosure, for at least the
following reasons.
First, we find no limiting description of “product” in the Specification.
The Specification discloses that “the present disclosure can be used to
indicate whether a variety of different types of products dispensably
disposed within containers are authentic or counterfeit.” Spec. 137. The
only products exemplified in the Specification are wine or liquor. The
Specification specifically states that “[f]or example, the anti-counterfeit
indicator 40 can be used to establish the authenticity of fine wine or liquor.”
Id. Thus, the Specification does not place any restriction on the type of
“product dispensably disposed within said container.” Therefore, under a
broadest reasonable interpretation consistent with Appellant’s Specification,
the “product” recited in claims 1 and 24 can be any product dispensably
disposed within a container, such as wine, liquor, motor oil, perfume, grape
juice, urine, blood, transmission fluid, baby formula, or insect repellent. In
re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007)
(During prosecution of patent applications, “the PTO must give claims their
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Application 13/897,782
broadest reasonable construction consistent with the [Specification. . . .
Therefore, we look to the [Specification to see if it provides a definition for
claim terms, but otherwise apply a broad interpretation.”).
Second, we do not find a limiting description or definition in
Appellant’s Specification of an “authentic” product and a “counterfeit”
product. The Specification states that the “indicator is configured to produce
a response when it detects the presence of a certain substance or chemical
compound in the aforementioned product.” Spec. 122 (reference numerals
omitted). Appellant’s Specification goes on to state that:
For example, the indicator may be configured to detect the
presence of certain chemical compounds that are known to be
associated with authentic products. In such case, a positive
response by the indicator would indicate that the product
dispensably disposed within the container is authentic, and the
absence of a response would indicate that the product is
counterfeit. The indicator also may be configured to detect the
amount of certain chemical compounds in a product, for
example to determine if the amount corresponds to the amount
associated with an authentic product. In another example, a
response may be produced when the indicator detects the
presence of a certain substance or chemical compound that is
known to be associated with a counterfeit product.
Spec. H22, 23 (emphasis added) (reference numerals omitted).
Appellant’s Specification also states that “[a] chemical compound, or
the amount of a chemical compound that is known to be associated with a
certain product may be a compound or amount that is normally present, or
can be expected to be present, in a product that has been produced by a
certain process using certain ingredients.” Spec. 123 (emphasis added).
Appellant’s Specification does not describe the basis for determining the
“certain” substances or chemical compounds, the “certain” processes, or the
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Application 13/897,782
“certain” ingredients. Rather, Appellant’s Specification indicates that the
indicator may distinguish authentic from counterfeit products by detecting
the presence of certain unspecified chemical compounds that are known to
be associated with unspecified authentic products, which may be an
unspecified compound or unspecified amount that is normally present, or
can be expected to be present, in an unspecified product that has been
produced by a certain unspecified process using certain unspecified
ingredients. In thus setting forth how the indicator “may” distinguish
authentic from counterfeit products, Appellant’s Specification does not
describe any limiting characteristics or features of an “authentic” product
that distinguish it from a “counterfeit” product.
Third, Appellant’s Specification does not describe predetermined
chemical compounds that are known to be associated with a given (authentic
or counterfeit) product. Appellant’s Specification indicates that “[i]n one
embodiment the indicator 40 may be formulated to establish the authenticity
of a wine or liquor product by indicating whether or not certain ‘signature’
chemical compounds are present in the product, and/or if the signature
chemical compounds are present in appropriate amounts.” Spec. 138
(emphasis added). The Specification goes on to state that “[ejxamples of
‘signature’ chemical compounds in products include flavor compounds, e.g.,
alcohol or phenol compounds.” Id. However, beyond this non-limiting
example of unspecified “alcohol or phenol compounds,” the Specification
does not provide guidance as to what “predetermined” chemical compounds
are “known to be associated with” a given (authentic or counterfeit) product.
In other words, Appellant’s Specification does not describe the basis for
determining the “certain” substances or chemical compounds, the “certain”
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processes, or the “certain” ingredients associated with the “products”
encompassed by the claimed invention.
Accordingly, due to the unlimited nature of the “product” recited in
claims 1 and 24, and the lack of disclosure in Appellant’s Specification of a
limiting distinction between an “authentic” product and a “counterfeit”
product, one of ordinary skill in the art would be unable to determine the
meaning of an “authentic or counterfeit” “product” as recited in claims 1 and
24. In addition, because the nature of an “authentic” product is unclear, one
of ordinary skill in the art would also be unable to determine if a
“predetermined chemical compound” is “known to be associated with an
authentic product,” as also recited in claims 1 and 24. Claims 1 and 24 are
therefore of indefinite scope, and we accordingly reject claims 1, 5—10, 21—
27, and 29-35 under 35 U.S.C. § 112(b).
DECISION
We enter a new ground of rejection against claims 1, 5—10, 21—27,
and 29-35 under 35 U.S.C. § 112(b), and we reverse the Examiner’s
rejections of these claims under 35 U.S.C. § 103 for the procedural reasons
stated above, rather than for substantive reasons.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b), which provides that 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 the Appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must
exercise one of the following two options with respect to the new ground of
rejection to avoid termination of the appeal as to the rejected claims:
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Application 13/897,782
(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).
REVERSED
NEW GROUND OF REJECTION PURSUANT TO
37 C.F.R, $ 41.50(b)
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