13731660 (P.T.A.B. Aug. 22, 2018)

Ex Parte Joseph

Patent Trial and Appeal BoardAug 22, 2018

13731660 (P.T.A.B. Aug. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 13/731,660 7590 Dennis Clarke 6717 Corner Lane McLean, VA 22101 FILING DATE FIRST NAMED INVENTOR 12/31/2012 Annamarie Joseph 08/22/2018 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. 5726 EXAMINER LEWIS,KIMM ART UNIT PAPER NUMBER 3772 MAIL DATE DELIVERY MODE 08/22/2018 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 ANNAMARIE JOSEPH Appeal2016-008702 Application 13/731,660 Technology Center 3700 Before: STEVEN D.A. MCCARTHY, JILL D. HILL, and NATHAN A. ENGELS, Administrative Patent Judges. ENGELS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. Â§ 134(a) from a rejection of claims 1, 2, and 4--10. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We reverse. Appeal2016-008702 Application 13/731,660 ILLUSTRATIVE CLAIM Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A system for providing a protective covering for at least a portion of a human on non-human animal 1 comprising a supply of dispensable plastic stretch film having a predetermined thickness and width and a dispenser-applicator for dispensing a predetermined length of film from said supply thereof and applying said predetermined length of said film to said human or non-human animal wherein said dispenser-applicator is coupled to and longitudinally aligned with a telescoping mechanism which enables extension of the roll of said film. THE REJECTIONS Claims 1, 2, and 4--10 stand rejected under 35 U.S.C. Â§ 112, second paragraph, as being indefinite. Claims 1 and 2 stand rejected under 35 U.S.C. Â§ I02(e) as being anticipated by Parry (US 4,248,392; issued Feb. 3, 1981). Claims 1, 2, and 4 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable in view of Hadlock (US 2004/0045266 Al; published Mar. 11, 2004) and Parry. Claims 5 and 6 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable in view of Parry and Elan (WO 01/68456 Al; published Sept. 20, 2001). 1 It is our understanding that the Appellant intended to recite "[a] system for providing a protective covering for at least a portion of a human or non- human animal." The word "on," as used here, appears to be a typographical error. The opinion will review the claim on that basis. In the event of further prosecution, the Appellant should consider amending the claim to correct this error. 2 Appeal2016-008702 Application 13/731,660 Claims 7 and 8 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable in view of Parry and Rosenberg (US 7,183,454 Bl; issued Feb. 27, 2007). Claims 9 and 10 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable in view of Parry and Samuel (US 2,172,455; issued Sept. 12, 1939). ANALYSIS The Indefiniteness Rejection The Examiner rejects claim 1 as indefinite for claiming a method step in a system claim. Specifically, the Examiner reads the claim language "applying said predetermined length of said film to said human or non- human" to claim a step for using the claimed dispenser-applicator. Final Act. 5; Ans. 8. Appellant argues the "applying" limitation of claim 1 is functional language that defines the claimed dispenser-applicator, not a separate recitation of a method step. Appeal Br. In other words, Appellant argues claim 1 should be read to mean "dispenser-applicator for dispensing a predetermined length of film from said supply thereof and [for] applying said predetermined length of said film to said human or non-human animal." A claim that recites both an apparatus and a method for subsequently using the apparatus is indefinite, IPXL Holdings v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005), but functional language does not necessarily render an apparatus claim indefinite, UltimatePointer LLC v. Nintendo Co., 816 F.3d 816, 826 (Fed. Cir. 2016). Here, we agree with Appellant that the "applying" limitation is reasonably read to be functional 3 Appeal2016-008702 Application 13/731,660 language reciting a property of the claimed dispenser-applicator, not a claimed step of using the dispenser-applicator. Accordingly we do not sustain the Examiner's rejection of claims 1, 2, and 4--10. The Prior Art Rejections In each of the anticipation and obviousness rejections, the Examiner finds Parry discloses a telescoping mechanism. Final Act. 6, 7. Specifically, the Examiner finds Parry discloses a dispenser-applicator having a core 14 and "a telescoping mechanism constituted by elements (12, 18, 20, and 22) which enables extension of said film in that elements (20 and 22) of the identified telescoping mechanism are slidingly inserted into each end of (14)." Ans. 9 (citing Parry 3:68--4:2). The cited portion of Parry states "[a]n insertable adapter 20 is shown in FIG. 1 inserted in the core 14 (a similar insertable adapter 20 is also in the opposite end of the core 14)." Appellant argues, and we agree, that Parry does not disclose a telescoping mechanism, as claimed. Describing the part of Parry's device cited by the Examiner as the alleged telescoping mechanism, Parry states "hand grips 16 are shown located on the insertable adapter 20, which in tum is shown in relation to the core 14." Parry 4:11-13. Parry further states "[i]n order to hold the insertable adapter 20 securely in place inside of the ends of core 14, a rubberized or other frictionable covering 22 is secured to the outside of the insertable portion of the insertable adapters 20." Id. at 4: 18-21 ( emphasis added). In other words, Parry discloses that using its dispenser requires inserting adapter 20 into core 14 with frictionable covering 22 holding the adapter in place, but Parry does not disclose a telescoping option for adapter 20. We disagree with the Examiner's 4 Appeal2016-008702 Application 13/731,660 interpretation of claim 1 to the extent that it would equate a "telescoping mechanism" with an element that is merely "insertable." Accordingly, we agree with Appellant that the Examiner erred in the rejection of claim 1 as anticipated by Parry. For the same reasons, we agree with the Appellant that the Examiner erred in finding Parry discloses the telescoping mechanism required in claims 2 and 4--10. DECISION We reverse the Examiner's rejection of claims 1, 2, and 4--10 under 35 U.S.C. Â§ 112, second paragraph, as indefinite. We reverse the Examiner's rejection of claims 1 and 2 under 35 U.S.C. Â§ 102(e) as being anticipated by Parry. We reverse the Examiner's rejection of claims 1, 2, and 4 under 35 U.S.C. Â§ 103(a) as being unpatentable in view of Hadlock and Parry. We reverse the Examiner's rejection of claims 5 and 6 under 35 U.S.C. Â§ 103(a) as being unpatentable in view of Parry and Elan. We reverse the Examiner's rejection of claims 7 and 8 under 35 U.S.C. Â§ 103(a) as being unpatentable in view of Parry and Rosenberg. We reverse the Examiner's rejection of claims 9 and 10 under 35 U.S.C. Â§ 103(a) as being unpatentable in view of Parry and Samuel. REVERSED 5