Ex Parte Pirro et al

Board of Patent Appeals and Interferences

Aug 31, 2010

10893396 (B.P.A.I. Aug. 31, 2010)

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.
10/893,396 07/16/2004 Jeffrey P. Pirro SP-1789.1 US 3934
20875 7590 08/31/2010
MICHAEL C. POPHAL
EVEREADY BATTERY COMPANY INC
25225 DETROIT ROAD
P O BOX 450777
WESTLAKE, OH 44145
EXAMINER
KRAMER, JAMES A
ART UNIT PAPER NUMBER
3693
MAIL DATE DELIVERY MODE
08/31/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JEFFREY P. PIRRO and MATTHEW W. FARRELL
____________________

Appeal 2009-004211
Application 10/893,396
Technology Center 3600
____________________

Before: WILLIAM F. PATE III, STEFAN STAICOVICI, and KEN B.
BARRETT, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-004211
Application 10/893,396
2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
29. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection of claims 1-29.

The claims are directed to a four-way island merchandiser. Claim 1,
reproduced below, is illustrative of the claimed subject matter:

1. A merchandiser comprising:
at least three display modules, at least two of the display
modules having a substantially similar horizontal periphery;
the display modules each having a front and a rear;
at least two of the display modules having shelves, with
at least a portion of the rear of the at least two display modules
having shelves being open to allow stocking of the shelves from
the rear of the at least two display modules having shelves;
wherein the display modules are releasably connected
together to allow the display modules to be connected and
disconnected, whereby the display modules, when
disconnected, can be separated to allow the at least two display
modules having shelves and having the at least a portion of the
rear that is open to be stocked from the rear and whereby the
display modules, when connected, can be moved as a unit;
wherein each display module is directly connected to at
least two other display modules; and
wherein the merchandiser, when the display modules are
releasably connected together, has an outside periphery, and the
display modules are not accessible through the rear of the
display modules from the outside periphery along a horizontal
line.

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Application 10/893,396
3

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Short
Thauer
Fredrickson
Mason
US 1,711,329
US 4,299,327
US 4,627,542
US 6,752,281
Apr. 30, 1929
Nov. 10, 1981
Dec. 9, 1986
Jun. 22, 2004

REJECTIONS
Claims 1-5, 7, 10-13, 15, and 18 stand rejected under 35 U.S.C. §
102(b) as being anticipated by Thauer. Ans. 3.
Claims 6, 14, 19-25 and 28-29 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Thauer. Ans. 4-5.
Claims 9, 17 and 27 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Thauer and Fredrickson. Ans. 5.
Claims 1-5, 7-13, 15-23 and 25-29 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Mason and Short. Ans. 6.

OPINION
The dispute in this case involves the meaning of the phrase “wherein
the merchandiser, when the display modules are releasably connected
together, has an outside periphery, and the display modules are not
accessible through the rear of the display modules from the outside
periphery along a horizontal line,” recited in independent claims 1, 12 and
19. The Examiner contends this limitation is met by Thauer, since the rear of
any module is not accessible along a horizontal line taken when a viewer
views the rack in a face-to-face orientation with a module, that is, from a
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Application 10/893,396
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horizontal line drawn along the periphery as illustrated and discussed in the
Answer on pages 10-11.
Appellants contend that Thauer does not meet this limitation because
the modules are accessible through the rear of the display modules from an
outside periphery along a horizontal line, that is, a module may be accessed
from the rear on a horizontal line extending diagonally from an adjacent
module as illustrated and discussed in Appellants’ Brief on pages 9-10. This
dispute arises because the phrase in question is amenable to two or more
plausible claim constructions. “[A]long a horizontal line” may describe the
path through which the display modules are not accessible, as Appellant
suggests. However, “along a horizontal line” may also describe a location
along the periphery from which the display modules are not accessible, as
the Examiner suggests.
Both the Examiner’s and the Appellants’ interpretations are
reasonable. If a claim is amenable to two or more plausible claim
constructions, the USPTO is justified in requiring the applicant to more
precisely define the metes and bounds of the claimed invention by holding
the claim unpatentable under 35 U.S.C. § 112, second paragraph, as
indefinite. Accordingly, pursuant to our authority under 37 C.F.R. §
41.50(b), we enter new grounds of rejection of claims 1-29 under 35 U.S.C.
§ 112, second paragraph, as being indefinite, for the reasons set forth above.
We do not reach the merits of the rejections under 35 U.S.C. §§ 102
and 103 at this time. Before a proper review of the rejections under 35
U.S.C. §§ 102 and 103 can be performed, the subject matter encompassed by
the claims on appeal must be reasonably understood without resort to
speculation. Since claims 1, 12 and 19, and therefore dependent claims 2-11,
13-18, and 20-29 fail to satisfy the requirements of the second paragraph of
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35 U.S.C. § 112 we are constrained to reverse, pro forma, the rejections
under 35 U.S.C. §§ 102 and 103. See In re Steele, 305 F.2d 859, 862 (CCPA
1962) (A prior art rejection cannot be sustained if the hypothetical person of
ordinary skill in the art would have to make speculative assumptions
concerning the meaning of claim language.); see also In re Wilson, 424 F.2d
1382, 1385 (CCPA 1970) (“If no reasonably definite meaning can be
ascribed to certain terms in the claim, the subject matter does not become
obvious-the claim becomes indefinite.”).

DECISION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter new
grounds of rejection of claims 1-29 under 35 U.S.C. § 112, second
paragraph, as being indefinite.
We reverse, pro forma, the rejections under 35 U.S.C. §§ 102 and
103.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2008). 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 Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(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
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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)(1)(iv) (2009).

REVERSED; 37 C.F.R. § 41.50(b)

mls

MICHAEL C. POPHAL
EVEREADY BATTERY COMPANY INC
25225 DETROIT ROAD
P O BOX 450777
WESTLAKE, OH 44145