Ex Parte Hyp et al

Patent Trial and Appeal Board

Sep 25, 2013

11505503 (P.T.A.B. Sep. 25, 2013)

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.
11/505,503 08/17/2006 Eric D. Hyp 288903-00384 5761
7590 09/26/2013
David C. Jenkins
Eckert Seamans Cherin & Mellot, LLC
44th Floor
600 Grant Street
Pittsburgh, PA 15219
EXAMINER
PERREAULT, ANDREW D
ART UNIT PAPER NUMBER
3788
MAIL DATE DELIVERY MODE
09/26/2013 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 ERIC D. HYP and WILLIAM J. LOGAN
____________________

Appeal 2011-011941
Application 11/505,503
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, STEFAN STAICOVICI, and
GEORGE R. HOSKINS, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-011941
Application 11/505,503
2
STATEMENT OF THE CASE
Eric D. Hyp and William J. Logan (Appellants) appeal under
35 U.S.C. § 134 from the Examiner’s decision rejecting claims 2-4, 6-13,
and 15-18. The Examiner rejected claims 2-4, 6-13, and 15-18 under
35 U.S.C. § 112, second paragraph, as being indefinite. The Examiner also
rejected claims 2-4 and 6-11 under 35 U.S.C. § 103(a) as being unpatentable
over Patz (US 2005/0072704 A1, pub. Apr. 7, 2005) and Lynch (US
3,620,364, iss. Nov. 16, 1971) and rejected claims 12, 13, and 15-18 under
35 U.S.C. § 103(a) as being unpatentable over Patz, Lynch1, and Praetorius
(US 3,315,875, iss. Apr. 25, 1967). We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM, but designate our affirmance a NEW GROUND OF
REJECTION.
The Claimed Subject Matter
Claim 2, reproduced below, is illustrative of the claimed subject
matter.2
2. A carton for a first wheelbarrow kit, said wheelbarrow kit
having a hopper, a wheel, a frame assembly, and coupling
device, said hopper having a generally planar rim portion and a
bucket portion, said bucket portion extending out of the plane
of said rim portion, said bucket portion being generally tapered,
said carton structured to be stacked on a similar carton

1 We, like Appellants, understand the Examiner’s language “as applied to
claims 11 above” to mean Patz as modified in view of Lynch, because that
was how Patz was applied in rejecting claim 11. See Ans. 13; App. Br. 11.
2 The Claims Appendix in the Appeal Brief contains numerous errors. The
claims before us on appeal are as presented in the “Response to Office
Action” filed November 12, 2010, and entered by the Examiner. Advisory
Action mailed March 4, 2011; Image File Wrapper, “Miscellaneous Internal
Document” entered March 4, 2011 (copy of November 12, 2010, claims,
bearing annotation, “OK TO ENTER: /A.P./(03/01/2011)”).
Appeal 2011-011941
Application 11/505,503
3
enclosing second wheelbarrow kit and to engage the hopper
from the second wheelbarrow kit, said carton comprising:
a first generally planar member having a first opening
and a perimeter;
a second generally planar member having a second
opening and a perimeter;
a sidewall extending from said first planar member
perimeter to said second planar member perimeter;
wherein said first planar member, said second planar
member, and said sidewall define an enclosed carton space, said
enclosed carton space sized to enclose a hopper rim portion;
said first opening and said second opening sized to allow
a first wheelbarrow kit hopper bucket portion to pass
therethrough;
wherein said enclosed space is structured to allow a first
wheelbarrow kit hopper to be disposed therein with said hopper
rim portion within said enclosed space and with said first
wheelbarrow kit hopper bucket portion extending through said
first opening
said first opening is structured to conform to the shape of
a hopper bucket portion disposed in said enclosed space; and
said second opening is structured to conform to the shape
of a second wheelbarrow kit hopper bucket portion located in
another carton disposed below said carton.

OPINION
Indefiniteness
The stated basis of the Examiner’s rejection is that it is not clear
whether the claims are directed to a combination of a carton and a
wheelbarrow kit or to a subcombination of a carton for use with a
wheelbarrow kit. Ans. 5, 18.
We agree with Appellants that claims 2-4, 6-13, and 15-18 do not
positively recite (i.e., claim) the elements of the wheelbarrow kit identified
in the preamble. See App. Br. 11-12. While these claims define elements of
the carton by reference to elements of the wheelbarrow kit, none of these
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Application 11/505,503
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claim limitations import the wheelbarrow kit elements as part of the claimed
subject matter. Thus, the reasons articulated by the Examiner do not form a
basis on which the rejection can be sustained.
The Examiner is correct, however, that claims 2-4, 6-13, and 15-18
are indefinite. The claims recite several limitations which define elements
of the carton(s) by reference to the size or shape of unclaimed elements of a
wheelbarrow kit, the dimensions and shapes of which unclaimed elements
are not defined. As admitted by Appellants,
the wheelbarrow’s configuration, dimensions, etc. are not
defined. Wheelbarrows may have a virtually unlimited number
of configurations. The hopper may be any length, width, or
depth and with any degree of taper in the bucket portion of the
hopper. Given the number of shapes that a hopper may take,
and the fact that the claimed concept relates to a carton having
openings structured to conform to the shape of the hopper
bucket portion, there is a nearly infinite number of specific
dimensions, or sets of specific dimensions, that may be recited
in the claims.
Reply Br. 2.
Merely by way of example, claim 2 recites, “said enclosed carton
space sized to enclose a hopper rim portion,” said first and second openings
“sized to allow a first wheelbarrow kit hopper bucket portion to pass
therethrough,” “said enclosed space is structured to allow a first
wheelbarrow kit hopper to be disposed therein . . .,” “said first opening is
structured to conform to the shape of a hopper bucket portion disposed in
said enclosed space,” and “said second opening is structured to conform to
the shape of a second wheelbarrow kit hopper bucket portion . . . .” Claim 4
recites, “said enclosed carton space sized to enclose a hopper rim portion,”
said first and second openings “sized to allow said hopper bucket portion to
pass therethrough,” “said enclosed space is sized to enclose said
Appeal 2011-011941
Application 11/505,503
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wheelbarrow handle members, wheel, frame assembly and coupling device,”
and “said enclosed space structured to allow said handle members to be
disposed immediately adjacent to said hopper rim portion.” Claim 6 recites,
“said enclosed space sized to enclose a hopper rim portion,” said first and
second openings “sized to allow a hopper bucket portion to pass
therethrough,” “said first opening is structured to conform to the shape of
said hopper bucket portion disposed with [sic: within] the associated
enclosed space,” and “said second opening is structured to conform to the
shape of said hopper bucket portion disposed in a lower carton.”
In the claims before us on appeal, because, by Appellants’ admission,
“the wheelbarrow's configuration, dimensions, etc. are not defined,” the
claim recitations cited above do not present a structural limitation on the
shapes and sizes of the first and second openings and the enclosed space at
all. Thus, the language of independent claims 2, 4, and 6 is not sufficiently
definite that those skilled in the art would understand what is being claimed
when the claims are read in light of the Specification. Ex parte Miyazaki, 89
USPQ2d 1207, 1212 (BPAI 2008) (precedential) (holding indefinite claims
defining the height of a paper feeding unit relative to a person whose
position relative to the claimed printer was not well-defined in the claim,
because the claimed height of the paper feeding unit did not present a
structural limitation on the height at all). Likewise, dependent claims 3, 7-
13, and 15-18 fail to define the configuration, dimensions, etc., of the
wheelbarrow kit elements in question and thus are also indefinite by virtue
of their dependency from independent claims 2 and 6.
For the above reasons, we sustain the rejection of claims 2-4, 6-13,
and 15-18 under 35 U.S.C. § 112, second paragraph, as being indefinite.
However, because the basis of our conclusion differs from that articulated by
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Application 11/505,503
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the Examiner, we designate our affirmance of this rejection a new ground of
rejection pursuant to 37 C.F.R. § 41.50(b) to give Appellants an opportunity
to respond thereto.
Obviousness
Having determined that claims 2-4, 6-13, and 15-18 are indefinite, we
do not reach a decision on the merits of the rejections of these claims under
35 U.S.C. § 103(a), because to do so would require speculation as to the
scope of the claims. See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962)
(holding that the Board erred in affirming a rejection of indefinite claims
under 35 U.S.C. § 103(a), because the rejection was based on speculative
assumptions as to the meaning of the claims); cf. In re Moore, 439 F.2d
1232, 1235 (CCPA 1971) (One is not in a position to determine whether a
claim is enabled under the first paragraph of 35 U.S.C. § 112 until the metes
and bounds of that claim are determined under the second paragraph of this
section of the statute.).
DECISION
The Examiner’s decision rejecting claims 2-4, 6-13, and 15-18 is
affirmed.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) 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:
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Application 11/505,503
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(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).
AFFIRMED; 37 C.F.R. § 41.50(b)

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