Ex Parte Cordes et al

Patent Trial and Appeal Board

Sep 21, 2018

13421256 (P.T.A.B. Sep. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/421,256 03/15/2012
91887 7590 09/25/2018
Capitol Patent & Trademark Law Firm, PLLC
P.O. BOX 1995
Vienna, VA 22183
FIRST NAMED INVENTOR
Marc Cordes
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
3034-002 2312
EXAMINER
HANSEN, JAMES ORVILLE
ART UNIT PAPER NUMBER
3637
NOTIFICATION DATE DELIVERY MODE
09/25/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
info@cappat.com
j curtin @cappat.com
knetznik@cappat.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARC CORDES and PAUL LARA YE 1
Appeal2018-001728
Application 13/421,256
Technology Center 3600
Before KEVIN F. TURNER, BRETT C. MAR TIN, and
NATHAN A. ENGELS, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify the real party in interest as Defense, LLC. App. Br. 1.
Appeal2018-001728
Application 13/421,256
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1--4, 9, 12-17, 21, and 22. Claims 5-8, 10, 11, and 18-
20 were canceled or withdrawn during prosecution. App. Br. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
THE INVENTION
Appellants' claims are directed generally "to a glove box for handling
harmful material which is formed of lightweight material (i.e., rigid plastics)
and is modular in design, allowing for use in the field and various remote
locations where a full laboratory is not available." Spec. ,r 14. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A hand carriable, and air tight Class-3 glove box for
handling harmful material, the glove box comprising:
a top component;
a tank component comprising a lightweight, rigid plastic
and comprising an upper edge removably attached to the top
component, a floor and a plurality of external, vertical walls
comprising rigid, external vertical ribs, the vertical walls
including a plurality of passageways for removable connection
to other components, with all unused passageways covered with
a blank connector to maintain the airtight integrity of the glove
box
said top component and tank component configured to
maintain a negative pressure;
at least one pre-filter element component and a HEP A
filter removably attached to one of the passageways for filtering
air associated with the glove box, and an exhaust HEP A filter
removably attached to an exhaust opening;
an input/output component removably attached to one of
the passageways for introducing harmful material including
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Application 13/421,256
bacteriological agents, to, or extracting such harmful material
from, the glove box.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Piet
Landy
Box
Airey
Hetnarski
us 4,059,903
us 4,089,571
us 4,190,172
US 2007 /0039294 Al
US 2007 /0248354 Al
REJECTIONS
The Examiner made the following rejections:
Nov. 29, 1977
May 16, 1978
Feb.26, 1980
Feb.22,2007
Oct. 25, 2007
Claims 1--4, 9, 12, 13, 15-17, and 21 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Airey, Hetnarski, and Box. Ans. 2.
Claim 14 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Airey, Hetnarski, Box, and Piet. Ans. 6.
Claim 22 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Airey, Hetnarski, Box, and Landy. Ans. 7.
ANALYSIS
Appellants' main argument against the Examiner's rejection is that the
Examiner has improperly construed the term hand-carriable in an overly
broad fashion, contrary to the Specification. See, e.g., Reply Br. 1--4.
Appellants point to the Specification's disclosure that prior art glove boxes
are not considered portable because "their weight exceeds 100 lbs, making it
practically improbable for a single individual to carry or move such a glove
box." Reply Br. 2 (citing Spec. ,r 10). We do not consider, this, however, to
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Application 13/421,256
rise to the level of a definition that constrains the meaning of hand-carriable
only to devices under 100 pounds. The Examiner is correct that "Airey
specifically notes that the device can be manufactured with many different
overall sizes [0061] and with lightweight materials [0059] as evidence of a
portable functionality." Ans. 9.
Furthermore, we disagree with Appellants' argument that hand-
carriable somehow distinguishes from the original claim term of portable.
As noted above, the reference to "hand-carriable" in the Specification is an
explanation of why something would not be considered "portable." Spec. ,r
10. In essence, the Specification shows that these two terms are
interchangeable. Also, the fact that Airey specifically discloses the
capability for the device to be wheeled around does not necessarily
disqualify it as also being hand-carriable. Airey also specifically recites that
the device may have handles such that it may also be hand carried as
opposed to using the wheels. See Airey ,r 59.
We also note that the Examiner could have completely ignored this
recitation as having no patentable weight at all. The term appears only in the
preamble of claim 1 and nothing in the body of the claim specifically makes
the device hand-carriable, so as to breathe life and meaning into the term.
There is no recitation of structure that causes the device to be hand-carriable,
such as handles or the like. We do not consider the recitation of the tank
component merely comprising a lightweight material to be sufficient to give
meaning to the term hand-carriable. None of the other claim elements
requires lightweight materials, and the tank component merely need
"comprise" lightweight materials, meaning that it could also include heavier
materials that would completely defeat the purpose of being an overall
lightweight device.
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Application 13/421,256
Regarding claim 13 's requirement of a gasketing material comprising
an elastic polymer or an ethylene propylene diene monomer, we agree with
Appellants that the Examiner has failed to present a prima facie case of
obviousness. App. Br. 7. The Examiner provides no evidence that the
specific materials called out in claim 13 are known as being useful as
gaskets. Assuming the Examiner is correct, it should not be an issue for the
Examiner simply to find a reference teaching what is not currently in
evidence. Accordingly, we do not sustain the rejection of claim 13.
Likewise, the Examiner has presented no evidence that the prior art
teaches a glove box that does not specifically exceed 7 5 pounds. The
reference to size in Airey is insufficient without some relative basis upon
which to compare sizes. To draw an analogy, a compact car may be
considered small and lightweight, it is only so in comparison to a vehicle
that may weigh upwards of five thousand pounds, such that a two thousand
pound car is considered lightweight. Had the Examiner demonstrated that
the device in Airey weighed somewhere close to the claimed weight, we
could endorse a finding that the disclosure to make it of lightweight
materials and of smaller size as taught therein would lead one of skill in the
art to construct a device that weighs less than 7 5 pounds. Without some
baseline reference of what a normal device weighs, however, we cannot
agree that the simple disclosure of the device being of varying size as taught
in Airey is sufficient to meet the specific weight limitation of claim 21.
We do note, however, that the device in Piet appears to be a rather
compact device approximately the size of that disclosed in Appellants'
Specification such that if it were constructed of the lightweight materials
disclosed in Airey, it possibly could fall within the claimed weight
restrictions and at the very least would be hand-carriable. Even so, the
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Examiner must start with some reference point of a known weight of
comparable devices for any such comparison to have meaning.
Accordingly, we do not sustain the Examiner's rejection of claim 21.
DECISION
For the above reasons, we REVERSE the Examiner's decision to
reject claims 13 and 21 and AFFIRM the Examiner's decision to reject
claims 1--4, 9, 12, 14--17, and 22.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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