Ex Parte Ren

Patent Trial and Appeal Board

Sep 20, 2018

14335670 (P.T.A.B. Sep. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/335,670 07/18/2014
27939 7590 09/20/2018
Philip H. Burrus, IV
Burrus Intellectual Property Law Group LLC
222 12th Street NE
Suite 1803
Atlanta, GA 30309
FIRST NAMED INVENTOR
XingQuan Ren
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.
BPMDL0084XR (11109U) 3014
EXAMINER
DEMEREE, CHRISTOPHER R
ART UNIT PAPER NUMBER
3782
MAIL DATE DELIVERY MODE
09/20/2018 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 XINGQUAN REN 1
Appeal2017-010063
Application 14/335,670
Technology Center 3700
Before JOHN C. KERINS, MICHELLE R. OSINSKI, and
JEREMY M. PLENZLER, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-18, which are all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Medline Industries, Inc. ("Appellant") is the Applicant as provided in
37 C.F.R. § 1.46 and is identified as the real party in interest. Appeal Br. 2.
Appeal2017-010063
Application 14/335,670
THE CLAIMED SUBJECT MATTER
Claims 1 and 16 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter on appeal.
l, A bag, comprising:
an elongated bag body defining two opposing e11ds1 the
two opposing ends comprising an openab1e end and a closed end;
an adhesive strip disposed upon an exterior of the
elongated bag body; and
a flexible strip disposed upon the exterior of the elongated
bag body;
the flexible strip bendable to retain the openable end in an
open position;
a width of the flexible strip less than another width of a
major face of the elongated bag body,
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Gore
White
Wolske
Redmond
Reaux
us 3,426,958
us 3,589,595
us 4,761,079
US 6,685,058 B2
US 8,371,448 Bl
THE REJECTIONS
Feb. 11, 1969
June 29, 1971
Aug.2, 1988
Feb.3,2004
Feb. 12,2013
I. Claims 1 and 16 stand rejected under 35 U.S.C. § I02(b) as
anticipated by Gore. Non-Final Act. 2-3.
II. Claims 2---6, 11, 13, 14, 17, and 18 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Gore and White. Id. at 3--4.
III. Claim 7 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Gore, White, and Wolske. Id. at 4.
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Application 14/335,670
IV. Claims 8-10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Gore, White, Wolske, and Redmond. Id. at 4--5.
V. Claims 12 and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Gore, White, and Reaux. Id. at 5.
OPINION
Claim Construction
Claim 1 recites that an adhesive strip and a flexible strip are each
"disposed upon an exterior of [an] elongated bag body." Appeal Br. 15
(Claims App.). The Examiner and Appellant disagree upon the proper
interpretation to be accorded to this claim limitation. The Examiner
explicitly interprets this claim limitation as not requiring the adhesive strip
and flexible strip to be "directly attached" to the exterior of the elongated
bag body. Ans. 2. Appellant counters that "[t]he Examiner's allegation that
attachment is not required not only ignores the ordinary definitions of the
words themselves, but Appellant's use of those words in the
[S]pecification." Reply Br. 9. Appellant points to paragraph 43 of its
Specification (stating that the flexible strip and adhesive strip are "disposed
on" the major faces of the elongated bag body) and Figures 2-3 (illustrating
same). Id. at 8-9. Appellant identifies the ordinary meaning of the claimed
phrase as "arranged in a particular position ON the elongated bag body." Id.
at 8 ( citing New Oxford American Dictionary, electronic edition 2.2.3
(118.5) 2005-2011). Appellant asserts that "Appellant uses the terms
'disposed' and 'upon' consistently with their Standard English definitions."
Id. at 9.
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Application 14/335,670
We give claim terms "their broadest reasonable interpretation
consistent with the specification" and "in light of the specification as it
would be interpreted by one of ordinary skill in the art." In re Am. Acad. Of
Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted).
According to the Federal Circuit:
The correct inquiry in giving a claim term its broadest reasonable
interpretation in light of the specification is not whether the
specification proscribes or precludes some broad reading of the
claim term adopted by the examiner. And it is not simply an
interpretation that is not inconsistent with the specification. It is
an interpretation that corresponds with what and how the
inventor describes his invention in the specification, i.e., an
interpretation that is "consistent with the specification." In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) (citation and
internal quotation marks omitted); see also In re Suitco Surface,
603 F.3d 1255, 1259-60 (Fed. Cir. 2010).
In re Smith Int 'l, Inc., 871 F.3d 1375, 1382-83 (Fed. Cir. 2017).
The Specification does not provide a lexicographic definition for the
term "disposed upon." The Specification does state that the flexible strip
and adhesive strip are disposed on the elongated bag body, including for
example, disposed on the exterior of the elongated bag body or on a major
face of the elongated bag body. Spec. ,r,r 24, 40, 43, 51. These paragraphs
in the Specification provide no indication that direct attachment is required
for one element to be "disposed upon" another element. Moreover,
paragraph 40 states that "in one embodiment, the flexible strip 208 is
adhesively disposed along the exterior of the elongated bag body 201." Id.
,r 40 (emphasis added). This portion of paragraph 40 suggests that the
inclusion of an element ( e.g., an adhesive) between the flexible strip and the
exterior of the elongated bag body does not preclude the flexible strip from
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Application 14/335,670
being disposed upon the exterior of the elongated bag body. Moreover, this
portion of paragraph 40 implies that the flexible strip may be disposed along
the exterior of the elongated bag body in other ways (e.g., other than by
adhesive attachment).
In connection with a description of a method for "manufacturing a bag
in accordance with one or more embodiments of the disclosure" (id. ,r 48),
the Specification describes "adhesively applying the flexible strip to the
exterior of the bag body" or "thermally attaching the flexible strip to the
exterior of the bag body" (id. ,r 49) and "appl[ying] an adhesive strip to the
exterior of the bag body" (id. ,r 50). Again, the reference to adhesively
applying the flexible strip suggests that the inclusion of an element ( e.g., an
adhesive) between the flexible strip and the exterior of the elongated bag
body does not preclude the flexible strip from being disposed upon the
exterior of the elongated bag body. Moreover, that one method of
manufacturing a bag involves adhesively or thermally attaching a strip to the
exterior of the bag body does not mean that adhesive or thermal attachment
is the only way that an adhesive strip or flexible strip can be disposed upon
the exterior of the elongated bag body. The Specification simply describes a
method for manufacturing a bag in accordance with the disclosure, not the
sole method for doing so.
Overall, the Specification fails to describe that an element that has
merely been "disposed upon" another element must be directly attached to
that element. We next tum to whether the Examiner, in taking the position
that one element being "disposed upon" another element does not require
direct attachment between the elements, is "alleging that English words
mean something that they do not." Reply Br. 9. An ordinary and customary
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Application 14/335,670
meaning of the term "dispose" is "[ t Jo place or set in a particular order;
arrange" and an ordinary and customary meaning of the term "upon" is "on."
The American Heritage Dictionary of the English Language, 5th ed. (2018).
"On" can be used to indicate various arrangements, including being "[ u ]sed
to indicate position above and supported by or in contact with" and "[ u ]sed
to indicate contact with or extent over (a surface) regardless of position." Id.
In particular, we note that the word "on" can connote not only contact, but
also can connote merely support by and/ or extent over a surface ( whether
there is contact or not). Id. As such, interpreting the term "disposed upon"
as not requiring direct attachment is not inconsistent with the ordinary
definitions of the words themselves.
Given that the Specification contemplates a flexible strip being
disposed upon the exterior of the elongated bag body despite the inclusion of
an intervening element ( e.g., an adhesive) and that the ordinary and
customary meaning of the claimed phrase merely requires that an element be
placed or set in a particular order so as to have the element extend over the
surface of another element (whether there is contact or not), we are not
persuaded that "disposed upon" requires direct attachment. Accordingly, we
do not construe "disposed upon" so as to require direct attachment. Instead,
we construe the term "disposed upon" merely as requiring being placed or
set in a particular order ( arranged) so as to have contact with or to extend
over (whether there is contact or not). As such, the claimed invention
requires the adhesive strip and flexible strip to each be placed or set in a
particular order ( arranged) so as to be in contact with or to extend over the
exterior of the elongated bag body. Items that are arranged on a surface can
connote both a structural characteristic and a process to obtain that
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Application 14/335,670
characteristic. When such a connotation occurs, the claim limitation should
be construed in the structural sense. Accordingly, the broadest reasonable
claim construction for an adhesive strip and a flexible strip each disposed
upon an exterior of the elongated bag body, as set forth in claim 1, is a
structural relationship in which the adhesive strip and flexible strip are each
physically arranged with respect to the exterior of the elongated bag body so
as to be in contact with or to extend over the exterior of the elongated bag
body.
Rejection I
Claim 1
The Examiner finds that Gore discloses, in relevant part, "an adhesive
strip (50) disposed upon an exterior of [an] elongated bag body; and a
flexible strip (12) disposed upon the exterior of the elongated bag body."
Non-Final Act. 2. Appellant argues that neither the adhesive member nor
the flexible member are attached to an exterior of the bag. Appeal Br. 10,
12. Given the above claim construction for an adhesive strip and flexible
strip that are disposed upon an exterior of an elongated bag body,
Appellant's argument is not persuasive. That is, Appellant has not
adequately explained how Gore lacks a structural relationship in which the
adhesive strip and flexible strip are each physically arranged with respect to
the exterior of the elongated bag body so as to extend over the exterior of the
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elongated bag body, in accordance with the broadest reasonable
interpretation of the disputed claim term. 2
For the foregoing reasons, Appellant has not shown that the Examiner
erred in finding that claim 1 is anticipated by Gore. We sustain the rejection
of claim 1 under 35 U.S.C. § 102(b) as anticipated by Gore.
Claim 16
Claim 16 is a method of manufacturing a bag that includes the steps of
"applying a flexible strip ... to an exterior of the bag body" and
"additionally applying an adhesive strip to an exterior of the bag body."
Appeal Br. 16 (Claims App.). The Examiner makes the same findings as in
connection with claim 1 (Non-Final Act. 2-3) and maintains that "Gore's
flexible strip (12) and adhesive strip (50) [are considered] to be applied upon
an exterior of Gore's bag" (Ans. 3). The Examiner takes the position that
"the back of element 44 [the center section of holder 12], where the adhesive
is provided (Col 2 line 70), [is] an exterior part of the 'bag body."' Ans. 3.
Appellant argues that Gore "fails to teach an adhesive strip attached to
an exterior of a bag body" and "[i]nstead, Gore teaches adhesive attached
2 We note that we have considered Appellant's argument that "Gore's
[flexible strip 12] is either 'under the overfolded flap' or 'behind' and
'outside' the flap," and thus, is not disposed upon an exterior of the bag.
Appeal Br. 12. In our view, either (i) the bag comprises the folded flap such
that the exterior of the folded flap is an exterior of the bag, in which case
flexible strip 12 at least in part and adhesive strip 50 thereon are arranged to
extend over the exterior of the folded flap, and thus, the exterior of the bag;
or (ii) the exterior of the bag is determined prior to folding of the flap, in
which case the folded flap, flexible strip 12, and adhesive strip 50 thereon
are arranged to extend over the exterior of the bag.
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Application 14/335,670
only to a separate and independent holder." Appeal Br. 13; see also Reply
Br. 9 ("Gore applies its adhesive strip to the hanger, not the bag."). An
ordinary and customary meaning of the word "apply" is "[ t Jo bring into
contact with something; put on." The American Heritage Dictionary of the
English Language, 5th ed. (2018). Here, we view the step of "applying" one
element to another element to require contact between the elements. Despite
the Examiner's attempt to couch the back of holder 12 as part of the "bag
body" (Ans. 3), we do not agree. Rather, we agree with Appellant that
Gore's adhesive strip 50 is applied to (or put into contact with) holder 12,
not applied to ( or put into contact with) an exterior of the bag body, as
required by the method claim. Thus, the Examiner's finding that Gore's
adhesive strip 50 is applied to an exterior of Gore's bag is not supported by a
preponderance of the evidence.
For the foregoing reasons, Appellant has shown that the Examiner
erred in finding that claim 16 is anticipated by Gore. We do not sustain the
rejection of claim 16 under 35 U.S.C. § 102(b) as anticipated by Gore.
Rejections 11-V
Claims 2-15 depend from independent claim 1, and claims 1 7 and 18
depend from independent claim 16. Appellant presents no additional
arguments in support of the patentability of dependent claims 2-15 other
than those that relate to the perceived deficiencies in Gore. Appeal Br. 9.
Because we have found no such deficiencies in Gore with respect to
independent claim 1, we are not persuaded of error in the Examiner's
rejections of claims 2-15. Accordingly, we sustain, under 35 U.S.C.
§ 103(a), the rejections of: claims 2---6, 11, 13, and 14 as unpatentable over
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Gore and White; claim 7 as unpatentable over Gore, White, and Wolske;
claims 8-10 as unpatentable over Gore, White, Wolske, and Redmond; and
claims 12 and 15 as unpatentable over Gore, White, and Reaux.
The Examiner's rejection of claims 17 and 18 relies on "modify[ing]
Gore's collapsible bag to place the adhesive strip on an opposite face from
the flexible strip in order to hang said bag from a support surface, as taught
by White." Final Act. 4. Thus, it appears that the Examiner's rejection of
claims 1 7 and 18 does not rely on the Examiner's erroneous finding for
claim 16 that Gore's adhesive strip 50 is applied to an exterior of Gore's
bag. Instead, the Examiner's rejection of claims 17 and 18 is based on
modification of Gore so as to apply the adhesive strip 50 on an opposite face
from the flexible strip 12, and consequently, to an exterior of Gore's bag.
Therefore, Appellant has not shown that the Examiner erred in concluding
that the subject matter of claims 17 and 18 is rendered obvious by the
combination of Gore and White. We sustain the rejection of claims 17 and
18 under 35 U.S.C. § 103(a) as unpatentable over Gore and White.
NEW GROUND OF REJECTION
We enter a new ground of rejection of claims 1 and 16 under 35
U.S.C. §103(a) as unpatentable over Gore and White. We adopt and
incorporate by reference the Examiner's findings with respect to Gore on
pages 2-3 of the Non-Final Action and page 2 of the Answer. We also
adopt and incorporate by reference the Examiner's findings on page 3 of the
Answer that Gore's flexible strip 12 is "applied upon an exterior of Gore's
bag" and that Gore's flexible strip 12 "has a width that is less than the entire
width of the bag." We also adopt and incorporate by reference the
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Examiner's findings with respect to White on pages 3--4 of the Non-Final
Action and the Examiner's conclusion that "[i]t would have been obvious to
one of ordinary skill in the art at the time of Applicant's filing to further
modify Gore's collapsible bag to place the adhesive strip on an opposite face
from the flexible strip in order to hang said bag from a support surface, as
taught by White." Non-Final Act. 4. White teaches that the adhesive strip
"affixed across the rear wall ... permits the openable mouth of the bag to be
accessibly suspended" and the "sleeved bendably malleable wire bridges and
is attached to the interior of the front wall and has ... end portions which
can be suitably angled and bent ... in a manner to spread and retain the
mouth of the bag in an open condition." Gore, Abstract. Placing or
applying Gore's adhesive strip 50 on the opposite face from flexible strip 12
so as to place Gore's adhesive strip 50 in contact with an exterior surface of
Gore's bag would allow the adhesive strip 50 to have an increased length,
and thus, more surface area for fastening the bag to a surface for suspension
and would allow Gore's flexible strip 12 to function to maintain the mouth
of the bag in an open condition in the manner taught by White.
Accordingly, we enter a new ground of rejection of claims 1 and 16
under 35 U.S.C. § 103(a) as unpatentable over Gore and White.
DECISION
The Examiner's decision to reject claim 1 under 35 U.S.C. § 102(b) as
anticipated by Gore is affirmed.
The Examiner's decision to reject claim 16 under 35 U.S.C. § 102(b)
as anticipated by Gore is reversed.
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The Examiner's decision to reject claims 2-6, 11, 13, 14, 17, and 18
under 35 U.S.C. § 103(a) as unpatentable over Gore and White is affirmed.
The Examiner's decision to reject claim 7 under 35 U.S.C. § 103(a) as
unpatentable over Gore, White, and Wolske is affirmed.
The Examiner's decision to reject claims 8-10 under 35 U.S.C.
§ 103(a) as unpatentable over Gore, White, Wolske, and Redmond is
affirmed.
The Examiner's decision to reject claims 12 and 15 under 35 U.S.C.
§ 103(a) as unpatentable over Gore, White, and Reaux is affirmed.
We enter a NEW GROUND OF REJECTION of claims 1 and 16
under 35 U.S.C. § 103(a) as unpatentable over Gore and White.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). Section 40.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 4I.50(b) also provides:
When the Board enters such a non-final decision, 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 prosecution will be remanded to the
examiner. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.
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(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART; 37 C.F.R. § 4I.50(b)
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