Ex Parte Nicklas et alDownload PDFPatent Trial and Appeal BoardJun 30, 201611969632 (P.T.A.B. Jun. 30, 2016) Copy Citation 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. 11/969,632 01/04/2008 James NICKLAS 201990.00232 1286 64956 7590 07/05/2016 HAHN T OFSFR / T INFOT N EXAMINER ONE GOJO PLAZA GRANO, ERNESTO ARTURIO SUITE 300 AKRON, OH 44311-1076 ART UNIT PAPER NUMBER 3788 NOTIFICATION DATE DELIVERY MODE 07/05/2016 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): patents@hahnlaw.com desiree_cunin @ lincolnelectrie .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMES NICKLAS, LISA BYALL, and ANDREA BRIGHTON Appeal 2014-006455 Application 11/969,632 Technology Center 3700 Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and ANNETTE R. REIMERS, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1 James Nicklas et al. (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner’s decision to reject under 35 U.S.C. § 102(b) claims 1, 7, and 8 as anticipated by Jones (US 6,932,266 B2; iss. Aug. 23, 2005); and to reject under 35 U.S.C. § 103(a): (1) claim 5 as unpatentable over Jones and De Coninck (US 2006/0057315 Al; pub. Mar. 16, 2006); (2) claims 1, 7, 8, 11, 12, 14, 19, and 20 as unpatentable over Matsuguchi (US 2003/0019776 1 The Examiner has withdrawn the rejection of claims 1, 5, 7—12, 14, 16, and 18—20 under 35 U.S.C. § 112, first paragraph, for lack of written description. Ans. 16. Appeal 2014-006455 Application 11/969,632 Al; pub. Jan. 30, 2003) and Jones; (3) Claim 9 as unpatentable over Matsuguchi, Jones, and Glocker (US 2,357,322; iss. Sept. 5, 1944); and (4) claims 10, 16, and 18 as unpatentable over Matsuguchi, Jones, and De Coninck. Claims 2-4, 6, 13, 15, 17, 21, and 22 have been cancelled.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER The claimed subject matter relates to “packaging for welding electrodes, and more particularly, to containers that provide a moisture barrier for bulk electrode packaging.” Spec. 12, Figs. 1, 2. Claims 1,11, and 20 are independent. Claim 1 is illustrative of the claimed subject matter and recites: 1. A container for storing welding wire, said wire susceptible to the effects of moisture which degrades weld quality, comprising: an inner rigid or semi-rigid fibrous container wall having a plurality of connected sides which define an interior region for storing welding wire; an outer rigid or semi-rigid fibrous container wall having a plurality of connected sides; at least one middle rigid or semi-rigid fibrous container wall between said inner and outer walls; and, at least two layers on opposed sides of said middle container wall, at least one of said at least two layers integrally fashioned with the outer wall and conjoined therewith for substantially preventing moisture or moisture vapor from penetrating into said container by forming a moisture barrier or moisture vapor barrier with said middle and outer container walls, said at least two layers for substantially preventing moisture or moisture vapor being selected from the group 2 See Amendment filed Sept. 10,2013. 2 Appeal 2014-006455 Application 11/969,632 consisting of a planar sheet of polymer and a planar sheet of metallic material; said at least two layers on opposed sides of said middle container wall reducing gas marking or worm tracking by reducing the amount of moisture or moisture vapor which ingresses through said container walls, thereby improving weld quality in comparison to a container without said at least two layers on opposed sides of said middle container wall. ANALYSIS Anticipation by Jones Claims 1, 7, and 8 Independent claim 1 calls for, a container including, in relevant part, “at least two layers on opposed sides of said middle container wall, at least one of said at least two layers integrally fashioned with the outer wall and conjoined therewith for substantially preventing moisture or moisture vapor from penetrating into said container.” Appeal Br. 30, Claims App. (emphasis added). The Examiner finds that Jones discloses all the limitations of claim 1 including the aforementioned at least two layers. Final Act. 3—5; Ans. 3—5. In particular, the Examiner finds that Jones discloses: at least two layers (combination of layers of woven polypropylene and bag/liner) on opposite sides of said middle container wall, at least one of said at least two layers integrally fashioned with the outer wall an[d] conjoined therewith (as a finished product), capable of substantially preventing moisture or moisture vapor from penetrating into said container. Final Act. 4; Ans. 4 (both citing Jones, col. 3,11. 4—20 and col. 18,11. 38— 45); see also Jones, Figs. 1—3, 20. The Examiner further states: “[i]t is noted that the Examiner interprets ‘integrally fashioned’ as being a plurality of parts formed together to form a single unit.” Final Act. 5; see also Ans. 5. 3 Appeal 2014-006455 Application 11/969,632 Appellants’ contend that the portions of Jones cited by the Examiner (Jones, col. 3,11. 4—20 and col. 18,11. 38-45) fail to disclose “at least two layers on opposed sides of said middle container wall, at least one of said at least two layers integrally fashioned with the outer wall.” See Appeal Br. 17—20. According to Appellants, “Jones teaches a plastic bag within a cardboard box. . . . There are certainly no teachings of ‘integrally- fashioned’ ... the plastic bag [of Jones] is not an integral part of the container construction, but rather is inserted within.” Id. at 20. Our resolution of this appeal requires us to determine the meaning of the phrase “integrally fashioned” since this phrase appears in each of the independent claims. Claims are to be given their broadest reasonable interpretation consistent with the specification, reading claim language in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad, of Set Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Appellants’ Specification does not expressly define the phrase “integrally fashioned.” However, the Examiner provides dictionary definitions for the terms “integral” and “fashioned” obtained from the online dictionary website www.merriam-webster.com, namely: “integral: formed as a unit with another part” and “fashioned: to give shape or form to.” Final Act. 5; see also Ans. 5, 16. We accept the Examiner’s definitions of “integral” and “fashioned” as representative of the ordinary meanings of those terms, which is consistent with their usage in the context of Appellants’ Specification. Jones, column 3, lines 4—20, discloses: (1) “[additional layers of the woven polypropylene may be used around the forming member to provide additional strength” (11. 4—6); (2) “[a]san option, additional layers of 4 Appeal 2014-006455 Application 11/969,632 corrugated material or woven polypropylene material or their combination may be used as inserts engaging the inner peripheral sidewall areas of the forming member to provide additional strength” (11. 10-14); and (3) “[a] standard bag/liner can be and typically is placed within the forming member or within the insert to protect the contents from contamination or the environment and/or to retain liquids” (11. 16—20). Jones further discloses: The optional bag/liner, illustrated at 16 in FIGS. 1,2, and 3, may be of any appropriate film or sheet of flexible impervious material, preferably polyethylene or polypropylene, to protect the contents of the container system and/or to prevent leakage of liquids or sifting of powders out of the forming member insert. Such liners are well-known in the art and have been used in the past for both corrugated and FIBC packaging. Jones, col. 18,11. 38—45 (emphasis omitted). Jones also discloses that the bag/liner 16 “is placed within the forming member 12.” Jones, col. 7,11. 36— 39 (emphasis omitted); see also id. at Figs. 1, 2. Neither of the passages in Jones relied on by the Examiner nor column 7, lines 36—39, disclose that the woven polypropylene layers or bag/liner 16 are anything other than separate layers inserted into the bulk material container. In other words, neither the woven polypropylene layers nor bag/liner 16 of Jones is formed together with outer wall 12 of the container so as to form a single unit (i.e., neither woven polypropylene layers nor bag/liner 16 of Jones is “integrally fashioned” with outer wall 12 of the container). See Appeal Br. 17—20; see also Ans. 16. As such, the Examiner fails to establish by a preponderance of the evidence that Jones anticipates the container of claim 1. 5 Appeal 2014-006455 Application 11/969,632 Accordingly, based on the foregoing reasons, we do not sustain the Examiner’s rejection of claim 1 and its dependent claims 7 and 8 as anticipated by Jones. Obviousness over Jones and De Coninck Claim 5 The Examiner’s rejection of claim 5 as unpatentable over Jones and De Coninck (see Final Act. 9—10) is based on the same unsupported findings discussed above with respect to the rejection of claim 1. The Examiner does not rely on De Coninck to remedy the deficiency of Jones. Accordingly, for reasons similar to those discussed above for claim 1, we do not sustain the Examiner’s rejection of claim 5 as unpatentable over Jones and De Coninck. Obviousness over Matsuguchi and Jones or Matsuguchi, Jones, and either Glocker or De Coninck Claims 1, 7-12, 14, 16, 18-203 The Examiner’s rejections of (1) claims 1, 7, 8, 11, 12, 14, 19, and 20 as unpatentable over Matsuguchi and Jones; (2) claim 9 as unpatentable over Matsuguchi, Jones, and Glocker; and (3) claims 10, 16, and 18 as unpatentable over Matsuguchi, Jones, and De Coninck (see Final Act. 5—15) are each based on the same unsupported findings discussed above with respect to the rejection of claim 1 as anticipated by Jones. The Examiner does not rely on Matsuguchi, Glocker, or De Coninck to remedy the deficiency of Jones. Accordingly, for reasons similar to those discussed 3 Each of independent claims 1, 11, and 20 calls for a container including similar limitations to a layer being “integrally fashioned” with a container wall. See Appeal Br. 30, 31, 33, Claims App. 6 Appeal 2014-006455 Application 11/969,632 above, we do not sustain the Examiner’s rejections of (1) claims 1, 7, 8, 11, 12, 14, 19, and 20 as unpatentable over Matsuguchi and Jones; (2) claim 9 as unpatentable over Matsuguchi, Jones, and Glocker; and (3) claims 10, 16, and 18 as unpatentable over Matsuguchi, Jones, and De Coninck. DECISION We REVERSE the decision of the Examiner to reject claims 1, 5, 7-12, 14, 16, and 18-20. REVERSED 7 Copy with citationCopy as parenthetical citation