Ex Parte Schick et al

Patent Trial and Appeal Board

Feb 29, 2016

11568017 (P.T.A.B. Feb. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111568,017 10/30/2006 Jurgen Schick
6980 7590 03/02/2016
TROUTMANSANDERSLLP
600 Peachtree Street
Suite 5200
Atlanta, GA 30308
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.
RB207 8204
EXAMINER
ORTIZ, RAFAEL ALFREDO
ART UNIT PAPER NUMBER
3728
NOTIFICATION DATE DELIVERY MODE
03/02/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
j im. schutz@troutmansanders.com
ryan. schneider@troutmansanders.com
patents@troutmansanders.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JURGEN SCHICK and
JACOBUS SIMON PETRUS VAN DIEPEN
Appeal2014-002477
Application 11/568,017
Technology Center 3700
Before MICHELLE R. OSINSKI, ANNETTE R. REIMERS, and
THOMAS F. SMEGAL, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jurgen Schick and Jacobus Simon Petrus Van Diepen (Appellants)
appeal under 35 U.S.C. § 134(a) from the Examiner's decision to reject
under 35 U.S.C. § 103(a): (1) claims 3, 4, 11, 20-23, 26, 28, and 33-36 as
unpatentable over Geamisson (EP 1199254 Al; pub. Apr. 24, 2002) and
Willhite (US 3,260,359; iss. July 12, 1966) or Neumair (US 2,324,017; iss.
July 13, 1943); 1 and (2) claims 5, 6, 18, 19, 24, 25, and 37 as unpatentable
1 The Examiner includes claims 13, 27, 29, and 30 in this ground of rejection.
See Final Act. 2 (mailed Apr. 9, 2013); see also Ans. 2 (mailed Nov. 19, 2013).
Claims 13, 27, 29, and 30 have been canceled. See Amendments filed
Appeal2014-002477
Application 11/568,017
over Geamisson and Willhite or Nemnair and Thoeren (US 2001/0013476
Al; pub. Aug. 16, 2001). Claims 1, 2, 7-10, 12-17, 27, and29-32 have
been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter NEW GROUNDS OF REJECTION under
35 U.S.C. § 41.50(b).
CLAIMED SUBJECT MATTER2
The claimed subject matter "relates to a tubular sachet pack for
containing a rectilinear detergent tablet." Spec. 1; Figs. 1-3. 3 Claims 11,
20, 33, and 35 are independent.
Claim 33 is illustrative of the claimed subject matter and recites:
33. A tubular sachet pack containing a rectilinear detergent
tablet, the sachet pack comprising a sachet having a longitudinal
flap seam disposed in a border region between two adjoining
sides of the sachet, and that extends outwardly from the tablet,
with each of said two adjoining sides being parallel to the
longitudinal axis of the tablet.
ANALYSIS
NEW GROUNDS OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject (1)
claims 3---6, 11, 18-26, 28, and 33-37 under 35 U.S.C. § 112, first
paragraph, for lack of an adequate written description of the claimed
invention; and (2) claims 3-6, 11, 18-26, 28, and 33-37 under 35 U.S.C.
Aug. 1, 2012 and Feb. 12, 2013.
2 We refer to the claims filed Feb. 12, 2013. See Appeal Br. 3.
3 We refer to the Specification filed July 22, 2008 and the Drawings filed Aug.
1, 2012.
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Application 11/568,017
§ 112, second paragraph, for failure to particularly point out and distinctly
claim the subject matter of the invention.
35 US.C. § 112, First Paragraph
Claims 3-6, 11, 18-26, 28, and 33-37
In order to satisfy the written description requirement, "the
specification must describe an invention understandable to [a] skilled artisan
and show that the inventor actually invented the invention claimed." Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
bane). "[T]he test for sufficiency is whether the disclosure of the application
relied upon reasonably conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date." Id.
(citation omitted).
Each of independent claims 11, 20, 33, and 35 calls for a sachet pack
comprising a sachet having a longitudinal flap seam disposed in a border
region between two adjoining sides of the sachet. See Appeal Br. 25-26, 27,
28, 29 Claims App. 4 Appellants do not point to any explicit disclosure in the
application as originally filed of "a sachet having a longitudinal flap seam
disposed in a border region between two adjoining sides of the sachet." 5
Although pages 3, 5, 8, 9, and 10 of Appellants' Specification describe a
sachet having "a longitudinal flap seam disposed adjacent a border between
4 We note that claim 35 further includes a process step of "forming a
longitudinal flap seam disposed in said border region." See Appeal Br. 29
Claims App.
5 We note that page 8, lines 11-13, of Appellants' Specification describes a
sachet having "a longitudinal flap seam disposed adjacent a border between
two sides of the tablet." See Appeal Br. 4.
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Application 11/568,017
two sides of the tablet," it fails to describe an example of "a sachet having a
longitudinal flap seam disposed in a border region between two adjoining
sides of the sachet." Further, although Appellants' Figures 1-3 appear to
illustrate a sachet having a longitudinal flap seam adjacent a border region
between two adjoining sides of the sachet, they do not illustrate "a sachet
having a longitudinal flap seam disposed in a border region between two
adjoining sides of the sachet," as claimed. See Appeal Br. 25-26, 27, 28, 29
Claims App. Thus, the disclosure of Appellants' application does not
reasonably convey to those skilled in the art that Appellants had possession
of the subject matter now claimed as of the filing date of the application.
See Ariad, 598 F.3d at 1351.
For the above reasons, we find that the present application does not
reasonably convey to those skilled in the art that Appellants had possession
of the subject matter as now claimed, specifically, including "a sachet
having a longitudinal flap seam disposed in a border region between two
adjoining sides of the sachet," in independent claims 11, 20, 33, and 35.
Claims 3-6, 18, 19, 21-26, 28, 34, 36, and 37 are also rejected based on
their dependence from the independent claims.
35 USC§ 112, Second Paragraph
Claims 3-6, 11, 18-26, 28, and 33-37
We find, based on the record before us, that one of ordinary skill in
the art at the time of the invention would not understand the scope of the
claimed invention when read in light of the Specification. In particular, the
lack of disclosure regarding the limitation "a sachet having a longitudinal
flap seam disposed in a border region between two adjoining sides of the
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Application 11/568,017
sachet," as called for in independent claims 11, 20, 33, and 35 creates such
an inconsistency between the claims and the description and examples
appearing in Appellants' Specification that it prevents a skilled artisan from
understanding the scope of the independent claims. See, e.g., In re Cohn,
438 F.2d 989, 993 (CCPA 1971) (summarized at MPEP § 2173.03); see
also, In re Hammack, 427 F. 2d 1378, 1381-83 (CCPA 1970). Claims 3---6,
18, 19, 21-26, 28, 34, 36, and 37 are also rejected based on their dependence
from the independent claims.
Obviousness Rejections
Claims 3-6, 11, 18-26, 28, and 33-37
For the reasons set forth above in the 112, second paragraph, new
ground of rejection, the limitation "a sachet having a longitudinal flap seam
disposed in a border region between two adjoining sides of the sachet," in
independent claims 11, 20, 33, and 35 is unclear, thereby rendering claims
11, 20, 33, and 35 and claims 3---6, 18, 19, 21-26, 28, 34, 36, and 37
depending therefrom indefinite. This limitation is critical to deciding the
propriety of the prior-art rejections.
Because the subject matter encompassed by claims 11, 20, 33, and 35
cannot be reasonably understood without resort to speculation, we do not
render a final decision on the merits of the prior-art rejections of those
claims and their dependents at this time. We instead reverse the prior-art
rejections because 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 In re Steele,
305 F.2d 859, 862 (CCPA 1962); see also In re Wilson, 424 F.2d 1382, 1385
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(CCPA 1970). We do not sustain the obviousness rejections of claims 3-6,
11, 18-26, 28, and 33-37. It should be understood, however, that our
reversal is based on the indefiniteness of the claimed subject matter and does
not reflect on the merits of the underlying rejection.
DECISION
For the reasons set forth above, we REVERSE the Examiner's
decision to reject claims 3---6, 11, 18-26, 28, and 33-37 under 35 U.S.C.
§ 103(a).
We enter NEW GROUNDS OF REJECTION of claims 3---6, 11, 18-
26, 28, and 33-37 under (1) 35 U.S.C. § 112, first paragraph, for lack of
adequate written description; and (2) 35 U.S.C. § 112, second paragraph, for
failure to particularly point out and distinctly claim the subject matter
regarded as the invention.
37 C.F.R. § 41.50(b) provides "new ground[s] of rejection pursuant to
this paragraph shall not be considered final for judicial review." 37 C.F.R.
§ 41.50(b) also provides that Appellants, 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 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 ....
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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).
REVERSED; 37 C.F.R. § 41.50(b)
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