Ex Parte Grant et al

Patent Trial and Appeal Board

Jun 28, 2013

10908247 (P.T.A.B. Jun. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ROBERT GRANT and SCOTT C. BIONDICH
____________________

Appeal 2011-006841
Application 10/908,247
Technology Center 3700
____________________

Before EDWARD A. BROWN, RICHARD E. RICE, and
CARL M. DeFRANCO, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-006841
Application 10/908,247

2
STATEMENT OF THE CASE
Robert Grant et al. (Appellants) appeal under 35 U.S.C. § 134(a) from
the Examiner’s rejection of claims 1-7. App. Br. 2. Claims 8-30 have been
withdrawn. Id. We have jurisdiction over this appeal under 35 U.S.C.
§ 6(b).
We reverse and enter a new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).

CLAIMED SUBJECT MATTER
Claim 1 is the sole independent claim on appeal and reads:
1. A bottle, comprising:
an expanded rear end;
an offset spout; and
a substantially flat side and a substantially
curved side extending from a first portion of the
flat side to a second portion of the flat side and
positioned between the expanded rear end and the
offset spout;
wherein the expanded rear end comprises a
center point and an outer section adjacent to the
flat side and wherein the center point is elevated
from the outer section in a direction opposite the
offset spout.

REJECTIONS
1. Claims 1, 4, 5, and 7 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lloyd (US D45,565; iss. Apr. 7, 1914) and Khetani (US
D225,972; iss. Jan. 16, 1973).
2. Claim 2 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Lloyd, Khetani, and Semersky (US 5,482,170; iss. Jan. 9, 1996).
Appeal 2011-006841
Application 10/908,247

3
3. Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Lloyd, Khetani, and Chupak (US 2003/0116521 A1; pub. Jun. 26,
2003).
4. Claims 1, 4, 6, and 7 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Canepa (US D480,002 S; iss. Sep. 30, 2003) and Khetani.
5. Claims 2 and 5 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Canepa, Khetani, and Semersky.
6. Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Canepa, Khetani, and Chupak.
ANALYSIS
New ground of rejection under 35 U.S.C. § 112, second paragraph
Claim 1 recites “an expanded rear end” and “wherein the expanded
rear end comprises a center point and an outer section adjacent to the flat
side and wherein the center point is elevated from the outer section in a
direction opposite the offset spout.” Emphasis added. For the reasons
discussed infra, we find that the meaning of the term “expanded rear end” is
indefinite, and thus, claim 1 is not sufficiently clear and definite so as to
comply with the requirements of 35 U.S.C. § 112, second paragraph.
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). We note that the terms “expanded rear end” and “expanded end”
are used, but not meaningfully described or defined, at paragraphs [6] and
[7], respectively, of the Specification. In the “SUMMARY OF CLAIMED
Appeal 2011-006841
Application 10/908,247

4
SUBJECT MATTER” section of the Appeal Brief, Appellants reference
Figures 1-7 and paragraph [43] of the Specification and state that the bottle
110 has an “expanded rear end 150.” App. Br. 2-3. We note that paragraph
[43] does not use or define the term “expanded rear end.” Rather, this
paragraph states “[t]he base 150 may be somewhat rounded and enlarged,
i.e., the base 150 may have a generally semi-spherical shape with an outer
section 152 and a center point 154.” Spec., para. [43].1 Although the
Specification does not describe the base 150 as an “expanded rear end,”
Appellants’ position is that the base 150 corresponds to this claim term. As
noted, paragraph [43] indicates that the base 150 may be “enlarged.”
Appellants do not, however, contend that the claim term “expanded”
corresponds to the term “enlarged” used in paragraph [43]. Accordingly, we
are unable to find, and Appellants have not directed us to, any clear meaning
of the term “expanded rear end” in the Specification.
It is not clear to us in what way the claimed “expanded rear end” is
“expanded.”2 For example, claim 1 does not recite whether the “expanded
rear end” is “expanded” in a particular dimension or direction of the bottle,
in size, and/or in shape. It is also not clear to us what the “expanded rear
end” is “expanded” relative to. For example, claim 1 does not recite whether
the “expanded rear end” is “expanded” relative to: an adjacent portion of the
bottle, a non-adjacent portion of the bottle, the claimed “offset spout,” the
portion of the bottle encompassed by the limitation reciting “a substantially
flat side and a substantially curved side extending from a first portion of the

1 We include the amendment to paragraph [43] set forth in the Amendment
filed on March 18, 2009.
2 We note that construing “expanded” to mean “enlarged” would not
eliminate this ambiguity.
Appeal 2011-006841
Application 10/908,247

5
flat side to a second portion of the flat side and positioned between the
expanded rear end and the offset spout,” or some other particular portion of
the bottle, or to every other portion of the bottle. Accordingly, we find that
the meaning of the claim term “expanded rear end” is subject to different
plausible interpretations, and thus, is vague and indefinite. See Ex Parte
Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential) (“[I]f a claim
is amenable to two or more plausible claim constructions, the USPTO is
justified in requiring the applicant to more precisely define the metes and
bounds of the claimed invention by holding the claim unpatentable under 35
U.S.C. § 112, second paragraph, as indefinite.”) Thus, we determine that
claim 1, and its dependent claims 2-7, do not comply with the requirements
of 35 U.S.C. § 112, second paragraph.
We designate our rejection of claims 1-7 under 35 U.S.C. § 112,
second paragraph, as a new ground of rejection under 37 C.F.R. § 41.50(b)
to provide Appellants with a full and fair opportunity to respond to the
rejection.
Obviousness rejections (1)-(6)
We do not reach the merits of the Examiner’s rejections (1)-(6) under
35 U.S.C. § 103(a) at this time. The reason that we do not do so is that
before a proper review of these rejections can be performed, the subject
matter that they encompass must be reasonably understood without resort to
speculation. Because claims 1-7 fail to satisfy the requirements of the
second paragraph of 35 U.S.C. § 112, as discussed supra, we are constrained
to reverse, pro forma, each of the rejections (1)-(6) under 35 U.S.C. § 103.
See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art rejection
Appeal 2011-006841
Application 10/908,247

6
cannot be sustained if the hypothetical person of ordinary skill in the art
would have to make speculative assumptions concerning the meaning of
claim language.).

DECISION
The Examiner's decision rejecting claims 1-7 is reversed.
We enter a new ground of rejection of claims 1-7 under 35 U.S.C.
§ 112, second paragraph.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b), which 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 Appellants, 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:
(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).

REVERSED; 37 C.F.R. § 41.50(b)

Appeal 2011-006841
Application 10/908,247

7
hh