Ex Parte Ray et al

Patent Trial and Appeal Board

Apr 14, 2016

12963208 (P.T.A.B. Apr. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/963,208 12/08/2010 Eugene W. Ray
26360 7590 04/15/2016
Renner Kenner Greive Bobak Taylor & Weber Co., LPA
First National Tower, Suite 400
106 South Main Street
Akron, OH 44308-1412
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
GOJ.P.264 2395
EXAMINER
RANDALL, JR., KELVIN L
ART UNIT PAPER NUMBER
3651
MAILDATE DELIVERY MODE
04/15/2016 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 EUGENE W. RAY and MICHAEL J. GMEREK III
Appeal2014-001950
Application 12/963,208
Technology Center 3600
Before NEALE. ABRAMS, JILL D. HILL, and LISA M. GUIJT,
Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Eugene W. Ray and Michael J. Gmerek III (Appellants) 1 appeal under
35 U.S.C. § 134(a) from the Examiner's decision to reject claims 1-3, 6-8,
11, and 25-30. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is GOJO Industries, Inc.
Br. 1.
Appeal2014-001950
Application 12/963,208
THE CLAIMED SUBJECT MATTER
Claim 1 is the sole independent claim on appeal. Claim 1, reproduced
below, is representative of the subject matter on appeal.
1. A wipes dispenser comprising:
a container having an interior holding a plurality of wipes
that are interconnected such that pulling on a lead end of a lead
wipe of said plurality of wipes causes a following wipe of said
plurality of wipes to also be pulled and follow said lead wipe;
an aperture defined through an exterior wall of said
container;
a semi-rigid bridge member spanning said aperture and
extending exteriorly beyond said exterior wall to define a bridge
apex of said bridge member;
a feed slit in said bridge member communicating with the
interior of the container through said aperture, said feed slit
presenting a slit apex and extending downwardly from said slit
apex to a right-side terminal slit end and to a left-side terminal
slit end, wherein said slit apex, said right-side terminal slit end
and said left-side terminal slit end define a feed plane extending
away from said exterior wall said slit apex being located on said
feed plane at a distance further way from said exterior wall than
the location of both said left-side terminal slit end and said right-
side terminal slit end on said feed plane, and wherein said
plurality of wipes are removed from said container by being
pulled through aid feed slit, said feed slit separating a lead wipe
from a following wipe as said lead wipe is pulled through said
feed slit.
REJECTIONS
Claims 1-3 and 6 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Placik (US 6,412,656 Bl; iss. July 2, 2002).
Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable Placik and Morin (US 6,905,025 B2; iss. June 14, 2005).
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Appeal2014-001950
Application 12/963,208
Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Placik and Castelli (US 3,002,668; iss. Oct. 3, 1961).
Claims 25, 26, and 28-30 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Placik and Bendor (US 2007 /0215632 Al; pub. Sept. 20,
2007).
Claim 27 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Placik, Bendor, and Hartog (US 6,182,858 Bl; iss. Feb. 6, 2001).
OPINION
Claims 1-3 and 6-Anticipation by Placik
Regarding independent claim 1, the Examiner found, inter alia, that
Placik's dispensing structure 40 corresponds to the claimed semi-rigid
bridge member. Final Act. 4. In support, the Examiner notes that "Placik
teaches a member which has an original shape, [] may be deformed by
pressure, and returns to its original shape after said deformation," and that
Placik describes the dispensing structure as "formed of flexible and resilient
material." Ans. 3 (citing Placik, 2:13-16, Figs. 5-7).
Appellants submit that the Specification applies a special meaning to
the claim term "semi-rigid." Br. 5-7. Appellants' Specification states that
[b ]y "semi-rigid" it is intended that the material not be readily
capable of taking on altered shapes, except that slight flexing is
permitted as, for example that experienced by plastic materials
that have defined shapes but can be slightly deformed upon the
application of pressure and retain their defined shape upon the
removal of the applied pressure. "Semi-rigid" is intended
specifically to distinguish from those materials that are
purposefully flexible and capable of taking on substantially
different geometries due to applied stresses. A semi-rigid
material, in accordance with this invention, will tend to maintain
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Appeal2014-001950
Application 12/963,208
or revert to its established geometry after an applied stress is
removed, as for example the stress applied in feeding a wipe
through the feed slit.
Spec. i-f 33, see also id. at i-f 39. Appellants argue that Placik's dispensing
structure is very flexible, taking on substantially different shapes, "even to
the point of collapsing from a general dome-shape into a wavy-shape." Br. 5
(citing Placik, 3:16-22, Figs. 2, 4); see also id. at 7-8. Appellants also argue
that "slight flexing" distinguishes over Placik. Id. at 9.
"[T]he PTO must apply the broadest reasonable meaning to the claim
language, taking into account any definitions presented in the specification."
In re American Academy of Science Tech Center, 367 F. 3d 1359, 1364
(quoting In re Bass, 314 F.3d 575, 577 (Fed. Cir. 2002)). For an inventor to
act as his or her own lexicographer, the definition must be set forth in the
specification with reasonable clarity, deliberateness, and precision.
Renishaw PLC v. Marposs Societa'per Azioni, 158 F.3d 1243, 1249 (Fed.
Cir. 1998). Also, when an inventor chooses to be his own lexicographer so
as to give a term an uncommon meaning, he must set out his uncommon
definition in a manner within the patent disclosure, sufficient to give one of
ordinary skill in the art notice of the change. In re Paulsen, 30 F.3d 1475,
1480 (Fed. Cir. 1994).
Although an ordinary meaning of the claim term "semi-rigid" is "rigid
to some degree" (WEBSTER'S THIRD NEW INT'L DICTIONARY 2064
(1993), wherein an ordinary meaning of the term "rigid" is "very firm rather
than pliant" (id. at 1957), we agree that Appellants have acted as their own
lexicographers to more narrowly define the claim term "semi-rigid" as
meaning "not readily capable of taking on altered shapes, except for slight
flexing." See Spec. i-f 33 ("By 'semi-rigid' it is intended that the material not
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Appeal2014-001950
Application 12/963,208
be readily capable of taking on altered shapes, except that slight flexing is
permitted."). We also agree with Appellants that the Examiner has not
demonstrated by a preponderance of the evidence that Placik' s dispensing
members are semi-rigid, as construed supra and as required by independent
claim 1. Rather, Placik describes dispensing structure 20 as readily capable
of taking on a flattened shape in a pre-use condition (Fig. 2) and as readily
capable of taking on an outwardly projecting, convex, bulbous shape in a use
condition (Fig. 3), which requires more than slight flexing. Placik, 2:14--16,
36-38.
Accordingly, we do not sustain the Examiner's rejection of
independent claim 1 and claims 2, 3, and 6 depending therefrom.
Claims 7, 8, 11, and 25-30- Obviousness over Placik and Morin
The Examiner's reliance on Morin, Castelli, Bendor, and Hartog does
not cure the deficiencies in the Examiner's finding with respect to Placik.
Therefore, we do not sustain the Examiner's rejection of claims 7, 8, 11, and
25-30 under 35 U.S.C. § 103(a).
DECISION
The Examiner's decision to reject claims 1-3 and 6 under 35 U.S.C.
§ 102(b) is REVERSED.
The Examiner's decision to reject claims 7, 8, 11, and 25-30 under 35
U.S.C. § 103(a) is REVERSED.
REVERSED
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