Ex Parte Rader

Board of Patent Appeals and Interferences

Mar 31, 2006

10284474 (B.P.A.I. Mar. 31, 2006)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HENNING RADER
____________

Appeal No. 2006-0823
Application No. 10/284,474
____________

ON BRIEF
____________

Before KRATZ, TIMM, and JEFFREY T. SMITH, Administrative Patent
Judges.
KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1-7.
BACKGROUND
Appellant's invention relates to a plastic lid or hinge
assembly for securing a lid to a container. An understanding of
the invention can be derived from a reading of exemplary claims 1
and 5, which are reproduced below.
1. A plastic lid securable to a container using a
substantially straight hinge pin, the plastic lid comprising a
hinge line shaped to receive the substantially straight hinge pin
and secure the lid to the container, wherein the hinge line is
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initially closed via a plastic wall at at least one end, and
wherein the hinge pin is held in the hinge line via contraction
of an entry hole formed by passing the hinge pin through the
plastic wall.

5. A hinge assembly for securing a lid to a container, the
hinge assembly comprising:

a hinge line formed in one of the lid and the container, at
least one end of the hinge line being initially closed via a
plastic wall; and

a substantially straight hinge pin secured in the hinge line
via contraction of an entry hole formed by passing the hinge pin
through the plastic wall.

The sole prior art reference of record relied upon by the
examiner in rejecting the appealed claims is:
Schurman 3,886,645 Jun. 03, 1975
Claims 1-7 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Schurman.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art reference, and to the respective
positions articulated by appellant and the examiner. As a
consequence of our review, we make the determinations which
follow.
The initial inquiry into determining the propriety of the
examiner’s Section 102(b) rejection is to correctly construe the
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scope of the claimed subject matter. Gechter v. Davidson, 116
F.3d 1454, 1457, 1460 n.3, 43 USPQ2d 1030, 1032 n.3 (Fed. Cir.
1997); In re Paulsen, 30 F.3d 1475, 1479, 31 USPQ2d 1671, 1674
(Fed. Cir. 1994). Upon careful review of the claimed subject
matter in light of the specification, it is apparent to us that
the metes and bounds of the claimed subject matter cannot be
ascertained. Therefore, we are unable to determine the propriety
of the examiner’s Section 102(b) rejection. To do so would
require speculation with regard to the metes and bounds of the
claimed subject matter for reasons set forth below. See In re
Wilson, 424, F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970); In
re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962).
Accordingly, we procedurally reverse the examiner’s Section
102(b) rejection1 and enter a new ground of rejection against the
claims on appeal as shown below:

1 This procedural reversal is not based upon the merits of the examiner’s Section
102(b) rejection.

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Pursuant to the provisions of 37 CFR § 41.50(b)(2004),
claims 1 through 7 are rejected under 35 U.S.C. § 112, second
paragraph for failing to particularly point out and distinctly
claim the subject matter which the appellant regards as his
invention.2
A principal purpose of the second paragraph of § 112 is to
provide those who would endeavor, in future enterprises, to
approach the area circumscribed by the claims of a patent, with
adequate notice demanded by due process of law, so that they may
more readily and accurately determine the boundaries of
protection involved and evaluate the possibility of infringement
and dominance. See In re Hammack, 427 F.2d 1378, 1382, 166 USPQ
204, 208 (CCPA 1970).
As the court stated in In re Moore, 439 F.2d 1232, 1235,
169 USPQ 236, 238 (CCPA 1971), the determination of whether the
claims of an application satisfy the requirements of the second
paragraph of Section 112 is

2 The examiner had maintained separate rejections of claims 1-7 under the first
and second paragraphs of 35 U.S.C. § 112, as set forth in the final rejection mailed
December 02, 2004. However, those rejections were withdrawn, as indicated at page 2
of the answer.
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merely to determine whether the claims do, in fact, set
out and circumscribe a particular area with a
reasonable degree of precision and particularity. It
is here where the definiteness of language employed
must be analyzed -- not in a vacuum, but always in
light of the teachings of the prior art and of the
particular application disclosure as it would be
interpreted by one possessing the ordinary level of
skill in the pertinent art. [Footnote omitted.]
In order to satisfy the requirements of the second paragraph
of § 112, a claim must accurately define the invention in the
technical sense. See In re Knowlton, 481 F.2d 1357, 1366,
178 USPQ 486, 492-93 (CCPA 1973).
As further explained by our reviewing court in Allen Eng’s
Corp. v. Bartell Indus. Inc., 299 F.3d 1336, 1348, 63 USPQ 2d
1769, 1775 (Fed. Cir. 2002), the second paragraph of Section 112
requires that (1) the claims on appeal “particularly point out
and distinctly claim an invention” and (2) the claims on appeal
set forth what “the applicant regards as his invention.” The
former requires the claims on appeal to be definite while the
latter requires the claims on appeal to recite the appellants’
invention. Allen Eng’s Corp. v. Bartell Indus. Inc., 299 F.3d at
1348-49, 63 USPQ2d at 1775-76.
Although no limitation in the specification is normally
imputed to the claims being interpreted, see In re Paulsen, 30
F.3d at 1480, 31 USPQ2d at 1674, the specification can still be
used to impart the meaning of words in the claims, see In re
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Barr, 444 F.2d 588, 593, 170 USPQ 330, 335 (CCPA 1971). After
all, it is well established that appellant can be his own
lexicographer so long as terms are clearly defined and not given
meanings repugnant or abhorrent to the ordinary meaning.
Applying these principles to the present case, we observe
that all of the claims before us require either a plastic lid
including a hinge line (claims 1-4) or a hinge assembly including
“a hinge line formed in one of the lid and the container...”, as
recited in independent claim 5 and, consequently, also required
in dependent appealed claims 6 and 7. In the brief (pages 10 and
11), appellant notes that the claim term “hinge line” is defined
at page 3, paragraph 0015 of their specification. In the cited
specification paragraph, a hinge line (14) is “defined by aligned
openings of the container and lid(s) and a hinge pin ....” See
drawing figure 1.
However, the above reproduced specification definition for
the claim term “hinge line”, as asserted by appellant in the
brief as being operative, is internally inconsistent with the use
of that term in the appealed claims.
As for appealed claims 1-4, this is so because those claims
do not require a container and a lid with aligned openings.
Rather they are drawn to a plastic lid including a hinge line.
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Yet, as appellant has asserted in the brief, the specification
definition for the claim term “hinge line” requires not only a
lid but a container in combination therewith to furnish the
requisite aligned openings in the container and lid(s), as well
as a hinge pin as the specification definition provides for.
Consequently, the meaning of the term “hinge line” as it relates
to a plastic lid, as called for in claims 1-4, is not readily
determinable as the definition provided for that term in the
specification would require other components that are not part of
the lid of claim 1.
Moreover, appealed claims 5-7 are drawn to a hinge assembly
that require a hinge line formed in “one of the lid and
container” and a hinge pin. As evident by reviewing appellant’s
definition for the claim term “hinge line”, the claim requirement
for a hinge line in either a lid or a container is inconsistent
therewith. Also, the separate claim requirement for a hinge pin
in addition to the hinge pin that is part of the hinge line, by
definition, appears inconsistent.
In light of the above noted inconsistencies in each of the
independent claims on appeal, i.e., claims 1 and 5, we are of the
view that one of ordinary skill in the art cannot ascertain the
boundaries of protection sought by the claims on appeal. Also,
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as a result of these inconsistencies between the claims on appeal
and the description of the invention in the specification, we are
of the view that the claims on appeal do not recite subject
matter which the appellant regards as his invention as required
by the second paragraph of Section 112.
In other words, the appealed claims are inconsistent and
fail to particularly point out and distinctly claim appellant’s
invention as a final assembled lid and container including
aligned openings of both of those parts, including an entry hole
in at least one of those assembled parts with a hinge pin secured
or held in the aligned openings of both of those parts, as argued
in the briefs.
Looked at another way, it is reasonable to construe the language used in claims
1 and 5 as suggesting, albeit ambiguously, an intermediate unassembled part that
includes a hinge line forming portion rather than the final product argued by appellants
as invention. Of course, such a possible claim construction further evidences the
indefiniteness thereof and would yield the same result of the claims being in violation of
the second paragraph of Section 112. See In re Collier, 397 F.2d 1003,
1005, 158 USPQ 266, 267 (CCPA 1968).
Thus, we determine that the appealed claims run afoul of
both requirements of the second paragraph of § 112.

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CONCLUSION
In view of the new rejection set forth above, the examiner’s
Section 102(b) rejection is procedurally reversed.
This decision contains a new ground of rejection pursuant to 37 CFR § 41.50(b)
(effective September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004), 1286 Off. Gaz.
Pat. Office 21 (September 7, 2004)). 37 CFR § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial review.”
37 CFR § 41.50 (b) also provides that the appellant, 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:
(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 CFR
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§ 1.136(a).
REVERSED/§ 41.50(b)

PETER F. KRATZ )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CATHERINE TIMM ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )

PK/rwk
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