Ex Parte RajaDownload PDFPatent Trial and Appeal BoardSep 14, 201512455912 (P.T.A.B. Sep. 14, 2015) 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. 12/455,912 06/10/2009 Arjuna Raja RAJA400 9832 23590 7590 09/15/2015 RICHARD L HUFF 19304 OLNEY MILL ROAD OLNEY, MD 20832 EXAMINER SHAVER, KEVIN P ART UNIT PAPER NUMBER 3754 MAIL DATE DELIVERY MODE 09/15/2015 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 ARJUNA RAJA ____________________ Appeal 2012-007965 Application 12/455,912 Technology Center 3700 ____________________ Before: CHARLES N. GREENHUT, MICHAEL L. HOELTER, and JAMES J. MAYBERRY, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1– 14. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to identifying devices for the visually handicapped. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A combination of a condiment shaker and a device comprising a band having tactile indicia and visually readable indicia identifying the contents the condiment shaker. Appeal 2012-007965 Application 12/455,912 2 REJECTIONS Claims 1–3, 5–11, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over US 3,739,827, iss. June 19, 1973 to Sondel in view of GB 2360871 A, pub. Oct. 3, 2001 to Edwards. Claims 4 and 12 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Sondel, Edwards, and further in view of US 6,488,794 B1, iss. Dec. 3, 2002 to Bright. OPINION “[T]he name of the game is the claim.” In re Hiniker Co., 150 F. 3d 1362, 1369 (Fed. Cir. 1998). The Examiner’s rejection does not address the language of either of the independent claims involved in this appeal, claim 1 or 13. Even if we assume that the Examiner inadvertently misquotes “dispenser” in place of “shaker,” the Examiner relies on the top 11 of Sondel’s container 10 to be the recited “band.” Claim 1 calls for both “a condiment shaker and a device comprising a band.” As Sondel’s top 11 is interpreted by the Examiner as the recited “band,” removal of that top should still leave a complete shaker behind. However, removal of Sondel top 11 would result in just an open-topped container. The Examiner provides no indication as to why a person skilled in the art would identify such a container as a “condiment shaker.” The Examiner provides no response or rebuttal to Appellant’s arguments (App. Br. 15–16) in this regard. The limitations of claim 13, do not appear to be addressed by the Examiner so it is not apparent why the Examiner determined claim 13 to be unpatentable. App. Br. 26–27. Appeal 2012-007965 Application 12/455,912 3 “[T]he precise language of 35 U.S.C. § 102 that ‘(a) person shall be entitled to a patent unless,’ concerning novelty and unobviousness, clearly places a burden of proof on the Patent Office which requires it to produce the factual basis for its rejection of an application under sections 102 and 103.” In re Warner 379 F.2d 1011, 1016 (CCPA 1967). The Patent Trial and Appeal Board is primarily a tribunal of review. See Ex Parte Frye, 94 USPQ2d 1072, 1075–77 (BPAI 2010) (precedential). For that review to be meaningful it must be based on some concrete evidence in the record to support the Examiner’s factual findings and legal conclusions. In re Zurko, 258 F.3d 1379, 1386 (Fed. Cir. 2001). A rejection must be set forth in sufficiently articulate and informative manner as to meet the notice requirement of § 132, such as by identifying where or how each limitation of the rejected claims is met by the prior art references. In re Jung, 637 F. 3d 1356, 1363 (Fed. Cir. 2011); see also 37 C.F.R. § 1.104(c)(2) (“The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.”); Gechter v. Davidson 116 F.3d 1454, 1460 (Fed. Cir. 1997) (providing that the PTO must create a record that includes “specific fact findings for each contested limitation and satisfactory explanations for such findings.”). It is neither our place, nor Appellant’s burden, to speculate as to the basis for rejecting claims. In re Stepan Co., 660 F. 3d 1341, 1345 (Fed. Cir. 2011) (providing that it is the PTO’s obligation to provide prior notice to the applicant of all matters of fact and law asserted prior to an appeal hearing before the Board.) DECISION The Examiner’s rejections are reversed. Appeal 2012-007965 Application 12/455,912 4 REVERSED mp Copy with citationCopy as parenthetical citation