Ex Parte Perales

Patent Trial and Appeal Board

Mar 17, 2017

13341897 (P.T.A.B. Mar. 17, 2017)

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.
13/341,897 12/30/2011 Beverly Ann Perales 11-133 1085
92137 7590 03/21/2017
Gagnon, Peacock & Vereeke P.C.
1349 Empire Central Drive, Suite 500
Dallas, TX 75247
EXAMINER
NORDMEYER, PATRICIA L
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
03/21/2017 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):
aaron@gapslaw.com
attorneys@gapslaw.com
jack@gapslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BEVERLY ANN PERALES
Appeal 2014-006629
Application 13/341,897
Technology Center 1700
Before ROMULO H. DELMENDO, MARKNAGUMO, and
CHRISTOPHER M. KAISER, Administrative Patent Judges.
KAISER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the decision1 of the
Primary Examiner rejecting claims 1, 3—9, and 19.2 Final Act. 2—7. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.
OPINION
Appellant’s invention addresses the problem of “increas[ing] and
maximizing] an individual’s privacy within a [restroom] stall” by “quickly
1 Final Office Action, mailed September 12, 2013 (“Final Act.”).
2 The Examiner rejected claims 1, 3—10, and 12—19, Final Act. 1, but
Appellant appeals only from the rejection of claims 1, 3—9, and 19. Appeal
Br. 3.
Appeal 2014-006629
Application 13/341,897
and affordably obstructing] the vision between the interior and exterior of a
stall.” Spec. 1119-20.
Claim 1, reproduced below, is representative of the appealed subject
matter:
1. A portable and disposable device for increasing
privacy in a stall, the device comprising:
a drape for covering a gap or aperture in the construct of
the stall wherein the drape is comprised of material that inhibits
visibility therethrough;
at least one adhesive element attached to the drape for
adhering the drape to the stall.
Appeal Br., Claims App’x 1.
The Examiner rejected claims 1,3,9, and 19 under 35 U.S.C.
§ 102(b) as anticipated by Gardner.3 Final Act. 2-A. The Examiner also
rejected claims 1,3, and 4 under 35 U.S.C. § 102(b) as anticipated by
JP ’707.4 Id. at 4—5. In addition, the Examiner rejected claims 5—8 under 35
U.S.C. § 103(a) as obvious over the combination of JP ’707, Gardner, and
Pomplun.5 Id. at 5—7. We consider each of Appellant’s arguments below.
“Inhibits Visibility” in Gardner: Claims 1, 3, 5—9, and 19
Each appealed claim rejected over Gardner requires that the recited
drape be “comprised of material that inhibits visibility therethrough.”
3 Gardner, U.S. Patent No. 5,551,096, issued Sept. 3, 1996.
4 Japanese Patent Application Publication No. JP2001-231707A, published
Aug. 28, 2001.
5 Pomplun et al., U.S. Patent No. 5,981,012, issued Nov. 9, 1999.
2
Appeal 2014-006629
Application 13/341,897
Appeal Br., Claims App’x 1—3. Appellant argues that Gardner does not
disclose this limitation. Appeal Br. 7—13.
Appellant’s argument relies on Appellant’s proposed construction of
“material that inhibits visibility therethrough.” Id. Appellant argues that
this phrase should be construed as “material that prevents a person from
seeing through it.” Id. at 8. This proposed construction is based on two
statements in Appellant’s Specification, both of which state that the
disclosed drape has the function of “preventing” people outside a restroom
stall “from seeing” into the stall. Id. at 7—8 (quoting Spec. H 21, 30). It also
is based on the definition of “inhibit” from Merriam-Webster.com, “to
prohibit from doing something.” Id. at 8 (quoting Inhibit, Merriam-
Webster.com (last accessed Mar. 13, 2017), http://www.merriam-
webster.com/dictionary/inhibit). In short, Appellant seeks to construe the
word “inhibit” as limited to the sense of “prohibit,” so that a material that
“inhibits visibility” through itself is one that renders seeing through the
material impossible. Based on this construction, Appellant argues that the
Examiner erred reversibly by finding that Gardner’s disclosure of a drape
made of paper is a disclosure of a material that inhibits visibility. Id. at 8—
13.
Appellant’s argument overlooks other language of Appellant’s
Specification that is important to construing “inhibits visibility.” In noting
that the drape “can be comprised of any material that inhibits visibility
through the drape,” the Specification states that “[a]ny material that impedes
a person’s ability to see through the drape 104 is suitable.” Spec. 1 30. A
material that “impedes a person’s ability to see” through it is not necessarily
limited to those materials that completely prohibit seeing through the
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Application 13/341,897
material. See Impede, Merriam-Webster.com (last accessed Mar. 13, 2017),
http://www.merriam-webster.com/dictionary/impede (defining “impede” as
“to interfere with or slow the progress of’). The Specification acknowledges
this by listing examples of materials that “impede a person’s ability to see
through the drape,” including polymer, plastic, and paper. Spec. 1 30.
Further, the Specification states that “[pjersons of ordinary skills in this
particular art will appreciate that toilet paper can be used as the dominant
construct of the drape.” Id. In light of this disclosure, a person of ordinary
skill in the art would understand that polymers, plastics, and paper,
particularly toilet paper, are materials that “impede a person’s ability to see
through” a drape constructed of those materials, and therefore are materials
that “inhibit visibility” through a drape constructed of those materials.
To the extent that, in light of Appellant’s Specification and claims,
both “prohibits visibility” and “impedes visibility” could be reasonable
constructions for “inhibits visibility,” the broader construction is “impedes
visibility.” “[DJuring examination proceedings, claims are given their
broadest reasonable interpretation consistent with the specification.” In re
Translogic Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re
Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). Accordingly, the appropriate
construction for this proceeding is that “inhibits visibility” means “impedes
visibility,” not that its meaning is limited to “prohibits visibility.”
Thus, Appellant’s claims recite a genus of materials, some of which
prohibit visibility, i.e., are opaque, but all of which at least impede visibility.
According to Appellant’s Specification, paper forms a subset of this genus,
and toilet paper is a species within the claimed genus. Where the prior art
discloses a species falling within a claimed genus, the genus is anticipated.
4
Appeal 2014-006629
Application 13/341,897
In re Slayter, 276 F.2d 408, 411 (CCPA 1960). Because Gardner discloses
drapes made from paper, Gardner, col. 6,11. 19-27, we are not persuaded
that the Examiner committed reversible error in finding that Gardner
anticipates claims 1, 3, 9, and 19.
“Inhibits Visibility” in JP ’707: Claims 1 and 3—8
Appellant makes the same argument with respect to JP ’707 as with
respect to Gardner: the reference does not disclose a material that “inhibits
visibility.” Appeal Br. 13—19. As with the argument relating to Gardner,
Appellant’s argument here is based on the proposed construction of
“material that inhibits visibility” as “material that prevents a person from
seeing through it.” As discussed above, this is not the broadest reasonable
construction of “inhibits visibility.” Under the broadest reasonable
construction, which is “material that impedes visibility” and which includes
toilet paper, we are not persuaded that the Examiner committed reversible
error in finding that the disclosure of toilet paper in JP ’707 was a disclosure
of a material that inhibits visibility. See JP ’707 H 3, 5.
“Packaging Unit”: Claims 9 and 19
Claims 9 and 19 each recite “a packaging unit for repositing one or
more drapes therein.” Appeal Br., Claims App’x 1—3. The Examiner
rejected both these claims as anticipated by Gardner, finding that Gardner
disclosed a packaging unit. Final Act. 3 (citing Gardner, col. 7,11. 24—31).
The Examiner based this on Gardner’s disclosure of a “compact roll” of its
product that “is convenient to carry in a pocket or purse,” as well as
Gardner’s disclosure of selling its product “in dispensing machines” and “in
5
Appeal 2014-006629
Application 13/341,897
grocery st[ores,] convenience st[ores], and drug st[ores].” Gardner, col. 7,11.
24—31.
Appellant’s sole argument6 is that the Examiner’s finding is reversible
error, because, in light of the written description and drawings in Appellant’s
disclosure, a person of ordinary skill in the art would not interpret the
“packaging unit” recited in claims 9 and 19 broadly enough to encompass
the “pocket or purse” or “dispensing machines” of Gardner. Appeal Br. 20—
22. Although Appellant’s drawings do not depict a pocket, purse, or
dispensing machine, we are not persuaded by Appellant’s argument that
Appellant’s Specification, including the claims, defines “packaging unit” so
narrowly as to exclude all of those structures from its scope. The
Specification states that “[t]he packaging unit 100 is a compact repository
and can be constructed from any material.” Spec. 126. It further states that
“[t]he drape 104 can be positioned and stored within the packaging unit 100
in a variety of ways.” Id. 128. This does not define the form of the
packaging unit in any particularly narrow way: the packaging unit need only
be “compact” and capable of having drapes placed within it “in a variety of
ways.”
As the Examiner noted, an ordinary definition of a “package” is “a
wrapper or container that covers or holds something.” Answer 12 (quoting
6 See 37 C.F.R. § 41.37(c)(l)(iv). Cf. In re Baxter Travenol Labs., 952 F.2d
388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the
claims in greater detail than argued by an appellant, looking for nonobvious
distinctions over the prior art.”); In re Baxter Int’l, Inc., 678 F.3d 1357, 1362
(Fed. Cir. 2012) (“Although Baxter recited the ‘means for delivering
anticoagulant’ claim language in the background of its opening brief before
the Board, Baxter did not raise that limitation in the arguments
section . . . .”).
6
Appeal 2014-006629
Application 13/341,897
Package, Merriam-Webster.com (last accessed Mar. 14, 2017),
http://www.merriam-webster.com/dictionary/package). Without a clear
definition of the term in the Specification, we are not persuaded that a
person of ordinary skill in the art would understand Appellant’s claims as
limited to a narrower definition than this. It is improper to import into the
claims a limitation from the Specification. Superguide Corp. v. DirecTV
Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Even where the
Specification describes only a single embodiment, it is improper to limit the
scope of the claims by importing into them a limitation to that embodiment.
Liebel-Flarsheim Co. v. MedradInc., 358 F.3d 898, 906 (Fed. Cir. 2004).
Accordingly, given that the claims here recite a “packaging unit,” and given
that the Specification does not limit the definition of “packaging unit” to
anything narrower than the ordinary meaning of “package,” it would be
improper for us to limit the claims to the single embodiment of a “packaging
unit” shown in Appellant’s drawings. Because claims 9 and 19 cannot be so
limited, and because Appellant has not explained why a pocket, purse, or
dispensing machine falls outside the scope of “a wrapper or container that
covers or holds something,” we are not persuaded that the Examiner erred in
finding that Gardner’s disclosure of a pocket, purse, or dispensing machine
anticipates the recited “packaging unit.”
Because we are not persuaded by any of Appellant’s arguments
regarding claims 1, 3—9, or 19, we affirm the rejections of those claims.
ORDER
The Examiner’s rejections (1) of claims 1, 3, 9, and 19 as anticipated
by Gardner; (2) of claims 1,3, and 4 as anticipated by JP ’707; and (3) of
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Application 13/341,897
claims 5—8 as obvious over the combination of JP ’707, Gardner, and
Pomplun are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
AFFIRMED
8