Ex Parte Gredley

Patent Trial and Appeal Board

Jun 8, 2016

10521139 (P.T.A.B. Jun. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/521,139 01112/2005 Sarah Gredley
22910 7590 06/10/2016
BANNER & WITCOFF, LTD.
28 STATE STREET
SUITE 1800
BOSTON, MA 02109-1701
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.
006329.00005 2752
EXAMINER
DAVIS, CASSANDRA HOPE
ART UNIT PAPER NUMBER
3638
NOTIFICATION DATE DELIVERY MODE
06/10/2016 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):
PT0-2291 O@bannerwitcoff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SARAH GREDLEY
Appeal2014-004843
Application 10/521, 139
Technology Center 3600
Before WILLIAM A. CAPP, AMANDA F. WIEKER, and
SEAN P. O'HANLON, Administrative Patent Judges.
WIEKER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Sarah Gredley ("Appellant") appeals under 35 U.S.C. § 134(a) from
the Examiner's March 22, 2013 Non-Final Rejection ("Non-Final Act.") of
claims 25-39. 1 We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 Claims 1-24 have been cancelled. Appeal Br. 6.
Appeal2014-004843
Application 10/521, 139
CLAHvfED SUBJECT ~vfATTER
The invention concerns an apparatus for framing a picture. Spec.,
Abstract. Claim 25, the only independent claim, is illustrative of the subject
matter on appeal, and recites:
25. An apparatus for framing or hanging pictures which
comprises:
one or more framing portions, wherein each framing
portion is made from a flexible material and is provided with a
releasable securing means, each framing portion having a first,
unsecured, position in which it can be freely moved from a
substantially flat conformation to other conformations and a
second, secured, position in which it is secured in a three-
dimensional shape by said releasable securing means; and
a backing portion for the or each framing portion,
comprising a flexible material secured to at least one of the one
or more framing portions;
wherein the backing portion is a combined integral
packaging means and backing portion and is provided with a
releasable securing means, the backing portion having a first
position in which it can be freely moved from a substantially flat
conformation to other conformations and a second position in
which it is releasably secured into a package by its releasable
securing means, with the flexible material forming the backing
portion for the or each framing portion when it is in the first
position and with the flexible material forming a releasably
secured tubular package around the or each framing portion for
storage and transportation when it is in the second position;
such that when it is desired to store or transport a picture
framed in the apparatus, each framing portion may be placed in
its first, unsecured position by unsecuring its releasable securing
means and unfolding the framing portion so that it is in a
substantially flat configuration, and the combined packaging
means and backing portion may then be releasably secured in its
second position as a tubular package for the framed picture,
and when it is desired to hang a picture framed in the
apparatus on a wall, the combined packaging means and backing
portion may be placed into its first, unsecured position and then
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Appeal2014-004843
Application 10/521, 139
each framing portion may be placed into its second, secured
position by folding the flexible material of each framing portion
into the three-dimensional shape and securing it by means of its
releasable securing means.
Aug. 22, 2013 Appeal Br., Claims App. (emphasis added).
REJECTIONS
The claims stand rejected as follows:
I. Claims 25-39 under 35 U.S.C. § 112, first paragraph, as failing
to comply with the enablement requirement.
II. Claims 25-39 under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement. 2
III. Claim 25 under 35 U.S.C. § 112, second paragraph, as
indefinite.
IV. Claims 25-37 and 39 under 35 U.S.C. § 102(b) as anticipated
by Fisher (US 796,310, iss. Aug. 1, 1905).
V. Claim 38 under 35 U.S.C. § 103(a) as unpatentable over Fisher
and Katz (US 4, 180, 114, iss. Dec. 25, 1979).
2 The Examiner objects to the November 4, 2010 amendments to the
Drawings and Specification as adding new matter. Non-Final Act. 2--4.
Because resolution of the new matter objections is interwoven with
resolution of the written description rejection, this Decision addresses the
new matter objections. See MPEP § 2163.06(II). The Examiner's
remaining objections are petitionable matters that are not appealable to the
Board. Id.§§ 706.01, 1201; 37 C.F.R. § 1.181; see, e.g., In re Mindick, 371
F.2d 892, 894 (CCPA 1967).
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Appeal2014-004843
Application 10/521, 139
ANALYSIS
Enablement- Claims 25-39
The Examiner finds that the subject matter of the claims is not
described sufficiently in the Specification to enable a person of ordinary skill
in the art to make and/or use the claimed invention. Non-Final Act. 4.
Specifically, the Examiner finds that the Specification does not describe
adequately the claimed packaging means including, inter alia, how the
packaging means interconnects with the frame portion to form a package.
Id. at 4--5; see also Ans. 7-9.
Appellant contends that "[r]ead in light of the original specification as
a whole," specifically paragraphs 14--20 and 25 of the published application,
"a skilled artisan would understand how to make and use the apparatus of
claim 25 without undue experimentation." Appeal Br. 20-23. 3 Appellant
contends that "[a] skilled artisan would know how to roll a flexible material
into a tube ... [and] secure a rolled tube in a rolled position." Id. at 22-23.
Appellant's argument is unpersuasive. Appellant has not identified
any portion of the original specification that enables a person of ordinary
skill in the art to make and/or use the packaging means as claimed, namely,
how to make and/or use the combined packaging means and backing
portion, which is secured to at least one framing portion, to "form[] a
releasably secured tubular package around the or each framing portion for
storage and transportation when it is in the second position." Although the
Specification may enable one skilled in the art to roll a flexible material into
a tube, as argued by Appellant, the Specification does not enable one skilled
3 For consistency with the Appeal Brief, this Decision refers to paragraph
numbers as they appear in US 2010/0212200 Al, pub. Aug. 26, 2010.
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Appeal2014-004843
Application 10/521, 139
in the art to form a package around the or each fi·arning portion, because
Appellant's disclosed framing portions extend beyond the disclosed integral
packaging means and backing portion.
Specification paragraphs 14 and 15 disclose that the picture is
attached to the backing portion. Paragraph 16 discloses that the or each
framing portion is attached to the backing portion "at the part of the framing
portion which in the second, secured position, is the base of the three-
dimensional shape." These disclosures, together with original Figures 1
and 2, instruct that framing portions 2 extend beyond the edges of picture 1
and its attached backing portion such that, when rolled, framing portions 2
extend beyond the edges of the newly-formed tubular package, formed from
the combined packaging means and backing portion. As such, Appellant's
Specification does not enable the making and/or use of the claimed
packaging means to "form[] a releasably secured tubular package around the
or each framing portion."
For these reasons, we affirm the Examiner's rejection of claim 25 and
claims 26-39, which depend therefrom.
Written Description- Claims 25-39
The Examiner finds that the claims contain subject matter that was not
described in the Specification in such a way as to reasonably convey
possession of the claimed invention at the time of filing. Non-Final Act. 5.
Specifically, the Examiner finds that "[i]n claim 25, the reference to the
combined packaging means and backing portion being releasably secured in
its second position as a tubular package introduces new matter." Id.; see
also Ans. 9.
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Appeal2014-004843
Application 10/521, 139
Appellant contends that the original disclosure, specifically
paragraphs 14, 18, 19, and 25, provide written description support for
claim 25. Appeal Br. 24--25.
Appellant's argument is unpersuasive. Appellant has not identified
any portion of the original disclosure that demonstrates possession of the
claimed combined packaging means and backing portion to "form[] a
releasably secured tubular package around the or each framing portion for
storage and transportation when it is in the second position," as claimed. For
reasons similar to those discussed above with respect to the Examiner's
enablement rejection, we conclude that Appellant's original disclosure does
not demonstrate how a tubular package can be formed around the or each
framing portion in the second position, when the disclosed framing portions
extend beyond the edges of the backing portion and tubular package.
For these reasons, we affirm the Examiner's rejection of claim 25 and
claims 26-39, which depend therefrom.
New Matter Objections to Drawings and Specification
The Examiner objects to the November 4, 2010 amendments to the
Drawings and Specification, as adding new matter. Non-Final Act. 2--4
(noting that "the reference to figure 3, the backing portion 8, [and] the rolled
up frame picture being secured by a releasable securing means introduces
new matter"). 4
In the Appeal Brief, Appellant does not dispute the Examiner's new
matter objections to the November 4, 2010 amendments to the Drawings or
4 The Examiner's objection to the Drawings as failing to show the packaging
means and the hole/hanging means, (see Non-Final Act. 2-3), is a
petitionable matter that is not before the Board. See n.2 supra.
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Application 10/521, 139
Specification. See Appeal Br. 12-20. Therefore, we summarily sustain
those objections. Furthermore, as discussed above, we affirm the
Examiner's written description rejection, which involves similar issues as
the Examiner's new matter objections. See n.2 supra.
Appellant presents arguments directed to the Examiner's objection to
the replacement Drawings filed June 21, 2011 and November 22, 2011 as
failing to comply with 37 U.S.C. § 1.83(a). Appeal Br. 13-16. Appellant
also presents arguments directed to the Examiner's objection to
Specification amendments filed November 22, 2011. Id. at 16-20. These
objections were presented in the Examiner's February 15, 2012 Office
Action and are not part of the Office Action from which this appeal is taken.
Further, these objections relate to petitionable matters that are not before the
Board. See n.2 supra; see also Ans. 6.
Indefiniteness- Claim 25
The Examiner finds that claim 25 is indefinite because, inter alia, "[i]t
is unclear how the packaging means and backing portion are releasably
secured in a second position as a tubular package for the framed picture."
Non-Final Act. 5; see also Ans. 9-10.
Appellant contends that "[a] skilled artisan would readily understand
from the disclosure provided by the application as originally filed how the
packaging means and backing portion may be releasably secured in a second
position as a tubular package for a framed picture," citing Specification
paragraphs 14, 17-20, and 25. Appeal Br. 30-31.
Appellant's argument is unpersuasive. Appellant has not explained
persuasively how "one skilled in the art would understand the bounds of the
claim when read in light of the specification." Miles Labs., Inc. v. Shandon,
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Application 10/521, 139
Inc., 997 F.2d 870, 875 (Fed. Cir. 1993). Specifically, Appellant has not
explained how a person of ordinary skill in the art would understand the
bounds of the claim language requiring that the combined packaging means
and backing portion "form[] a releasably secured tubular package around the
or each framing portion for storage and transportation when it is in the
second position." Appellant has not explained persuasively how one skilled
in the art would understand what is meant by the claim language requiring
the package be secured "around" the or each framing portion, when the
combined packaging means and backing portion as disclosed in the
Specification and Drawings is smaller than the extent of the framing portions
around which they are required to be secured, in accordance with claim 25.
Therefore, we conclude that the language of claim 25 requiring that the
tubular package be formed around the or each framing portion in the second
position, is indefinite.
For these reasons, we affirm the Examiner's rejection of claim 25.
Anticipation and Obviousness- Claims 25-39
Because we determine that independent claim 25 is indefinite, as
discussed above, we reverse the Examiner's prior art rejections under
35 U.S.C. §§ 102(b) and 103(a), because any analysis of the prior art would
involve a speculative interpretation of the claims. See In re Wilson, 424
F.2d 1382, 1385 (CCPA 1970); In re Steele, 305 F.2d 859, 862---63 (CCPA
1962) (determinations as to obviousness cannot be made for indefinite
claims). Although the Examiner did not reject claims 26-39 as indefinite,
we note that the indefiniteness of independent claim 25 precludes our
analysis of the prior art with respect to dependent claims 26-39 because
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Application 10/521, 139
those claims incorporate the indefiniteness of claim 25, from which they
depend.
DECISION
The Examiner's rejection of claims 25-39 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement is
AFFIRMED;
the Examiner's rejection of claims 25-39 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement is
AFFIRMED;
the Examiner's rejection of claim 25 under 35 U.S.C. § 112, second
paragraph, as indefinite is AFFIRMED;
the Examiner's rejection of claims 25-37 and 39 under 35 U.S.C.
§ 102(b) as anticipated by Fisher is REVERSED; and
the Examiner's rejection of claim 38 under 35 U.S.C. § 103(a) as
unpatentable over Fisher and Katz is REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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