Ex Parte Schluger

Board of Patent Appeals and Interferences

Aug 23, 2002

09655147 (B.P.A.I. Aug. 23, 2002)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ALLEN SCHLUGER
____________
Appeal No. 2002-0950
Application No. 09/655,147
____________
ON BRIEF
____________
Before FRANKFORT, MCQUADE and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claim 1, the
sole claim pending in this application.
We AFFIRM.
BACKGROUND
The appellant's invention relates to a mailing envelope which presents the
appearance of having contents with bulk, even with a one-sheet insert (specification,
page 1). Claim 1, the sole claim on appeal, reads as follows:
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1 As only one right flap has been recited in the claim, “a” is inappropriate and should be deleted.
2 Insertion of language such as “said top and bottom panels each having” before “a selected width
size” would greatly improve the clarity and readability of the claim.
3 The term “width size” lacks strict antecedent basis, in that a width, but not a width size, of the
rear panel has been recited in the claim. While this informality does not render the scope of the claim
indefinite, correction to maintain consistent terminology should be considered.
1. A rectangular shaped sealed mail envelope of cardboard
construction material characterized by presenting a miter
joint appearance at each of four corners thereof comprising
a rectangular rear panel delimiting a selected width
between opposite left and right side edges and having top
and bottom edges,
left and right flaps respectively wholly joined from a
top to a bottom location of one said left and right edge of
said rear panel and having operative positions folded upon
said rear panel, each said left and right flap having top and
bottom inclined edges oriented in a converging relation to
each other starting from a said top and bottom location and
terminating at a clearance location therefrom,
a bottom panel and top panel respectively joined to
said top and bottom edges of said rear panel and having
operative positions folded upon and adhesively secured to
said left and a1 said right flap in said underlying operative
positions interposed between said rear panel and said top
and bottom panels, and2 a selected width size delimited
between opposite sides of said top and bottom panels of an
extent less than said width size3 of said rear panel and also
of an extent less than distances between length portions of
said left and right flap top and bottom inclined edges so as
to leave exposed a beginning length portion of said inclined
edges of said opposite top and bottom edges of said left and
right flaps,
said top and bottom panels having opposite side
inclined edges oriented in a converging relation to each
other and aligning in parallel relation to each said exposed
beginning length portion of said inclined edges of said left
and right flaps and bounding a clearance therebetween,
whereby said aligned edges in said parallel relation and said
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4 The issue identified as Issue A on page 4 of the brief relates to petitionable subject matter rather
than appealable subject matter. See Manual of Patent Examining Procedure (MPEP) §§ 1002 and 1201.
That issue is thus not within the jurisdiction of the Board and will not be reviewed by this panel. In re
Mindick, 371 F.2d 892, 894, 152 USPQ 566, 568 (CCPA 1967).
clearance therebetween present an appearance of a miter
joint at each corner of said sealed mail envelope.
The examiner relied upon the following prior art references of record in rejecting
the appealed claim:
Knight 3,015,438 Jan. 2, 1962
Back et al. (Back) 5,487,826 Jan. 30, 1996
The following rejections are before us for review.4
Claim 1 stands rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject matter which
appellant regards as the invention.
Claim 1 stands rejected under 35 U.S.C. § 103 as being unpatentable over
Knight in view of Back.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the answer
(Paper No. 7) for the examiner's complete reasoning in support of the rejections and to
the brief and reply brief (Paper Nos. 6 and 8) for the appellant's arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claim, to the applied prior art references, and to the
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respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
The indefiniteness rejection
The legal standard for definiteness is whether a claim reasonably apprises those
of skill in the art of its scope. See In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d
1754, 1759 (Fed. Cir. 1994).
The examiner offers two bases for the indefiniteness rejection (see page 3 of the
answer). The first is that the phrase “terminating at a clearance location therefrom” is
unclear because it cannot be determined what “therefrom” refers to and because it is
unclear what a “clearance location” is. The second basis is that there is no antecedent
basis for “said underlying operative positions.” For the reasons which follow, we share
the examiner’s view that these phrases render the scope of the claim indefinite.
Appellant offers an explanation of the terminology “clearance location” on pages
6 and 7 of the brief. According to this explanation, the “clearance location” refers to the
fact that the inclined top and bottom edges of the flaps stop short of a theoretical point
of intersection of their converging relation (see the drawing on page 6 of the brief). We
are not aware of a conventional definition of “clearance location” which connotes the
meaning set forth in this explanation and appellant has not presented any evidence that
“clearance location” would be so understood by one of ordinary skill in the art. The only
mention of the term “clearance” in appellant’s underlying disclosure refers to the
clearance 50 between the initial length portions 44 of the edges 42 of the flaps and the
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other side 48 (the inclined edges of the top and bottom panels) of the miter joint
appearance. Thus, in light of the underlying disclosure, one skilled in the art would look
to that “clearance” in attempting to understand what is meant by “clearance location” in
claim 1 and would be confused as to what is meant thereby.
Moreover, we also agree with the examiner that it is unclear to what “therefrom”
refers in the phrase “terminating at a clearance location therefrom,” especially when
viewed in light of appellant’s explanation of “clearance location.” Simply stated, it is
unclear whether “therefrom” refers to “each other” (i.e., the top and bottom inclined
edges) or to the “top and bottom location.”
Furthermore, the examiner’s position that “said underlying operative positions”
lacks antecedent basis is well taken. The claim recites two “operative positions,” those
of the left and right flaps and those of the top and bottom panels. As pointed out by the
examiner, neither of these “operative positions” has been recited as being “underlying.”
As the use of the term “said” indicates that the terminology following “said” refers to
previously recited terminology in the claim and “underlying operative positions” have not
previously been recited in appellant’s claim, it is impossible to determine with any
certainty to what “said underlying operative positions” refers.
The examiner has withdrawn as a basis for the rejection under the second
paragraph of 35 U.S.C. § 112 the reason set forth in the last paragraph of the section
numbered “4" (see page 3 of the final rejection, Paper No. 4) and, hence, this basis is
not before us for review. Nevertheless, we, like the examiner, cannot escape the
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observation that the claim strings together a series of limitations so long that it is
difficult, if not impossible, for the reader to determine which elements of the claim have
the recited features and that, contrary to appellant’s comments in the first paragraph on
page 9 of the brief, the interests of appellant would be well served if appellant’s counsel
followed the recommendations made by the examiner.
For the foregoing reasons, we agree with the examiner that the terminology
alluded to by the examiner is unclear and renders the scope of the claim indefinite.
Thus, we shall sustain the examiner’s rejection of claim 1 under the second paragraph
of 35 U.S.C. § 112.
The obviousness rejection
We recognize the inconsistency implicit in our holding that claim 1 is indefinite
under 35 U.S.C. § 112, second paragraph, as failing to particularly point out and
distinctly claim the invention, with a determination as to whether claim 1 is unpatentable
under 35 U.S.C. § 103. Normally, when substantial confusion exists as to the
interpretation of a claim and no reasonably definite meaning can be ascribed to the
terms in a claim, a determination as to patentability under 35 U.S.C. § 103 is not made.
See In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962) and In re
Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970). However, in this
instance, inasmuch as claim 1 contains another limitation which can be understood and
which we have determined is not met by the prior art applied by the examiner, we have
reached a determination as to the patentability of claim 1 over the applied prior art to
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avoid the inefficiency of piecemeal appellate review. See Ex parte Ionescu, 222 USPQ
537, 540 (Bd. App. 1984).
In particular, claim 1 calls for
said top and bottom panels having opposite side inclined
edges oriented in a converging relation to each other and
aligning in parallel relation to each said exposed beginning
length portion of said inclined edges of said left and right
flaps and bounding a clearance therebetween, whereby said
aligned edges in said parallel relation and said clearance
therebetween present an appearance of a miter joint at each
corner of said sealed mail envelope.
This limitation refers to the miter joint appearance 14 at each corner of the envelope
provided by the approximately 45 degree angled edges 46 and 52 in parallel relation to
each other and bounding “the intentionally left nominal clearance 50 therebetween”
(specification, page 4; emphasis ours). In other words, the clearance between the
angled edges 46 and 52 is not merely an incidental clearance resulting from
manufacturing tolerances; it is intentionally designed into the envelope to enhance the
appearance of the miter joints.
As explained in column 3, lines 50-75, Knight discloses inclined edges (10c, 11c,
14d, 10d, 12d, 14c, 12c, 11d) cut at approximately 45 degree angles to prevent an
excess of material at the corners of the envelope A which are adhered together to form
the strips 20-23. Specifically, these edges are cut at approximately 45 degree angles
so that they are in “substantially abutting contact rather than overlapping with each
other.” While this disclosure suggests that there may be some clearance left between
adjacent inclined edges (i.e.,1 0c and 11c, 14d and 10d, 12d and 14c, 12c and 11d,
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5 Appellant does not contest the examiner’s position with regard to these modifications.
respectively) as a result of imprecision in cutting the 45 degree angles, it is also
apparent that Knight’s objective is to have the adjacent edges as close to abutting as
possible within manufacturing tolerances. Even accounting for incidental clearances
which might result from imprecise cutting of the 45 degree angles, there is no indication
in Knight that the adjacent edges will be aligned in parallel relation and have a
clearance therebetween as called for in claim 1. Thus, we do not agree with the
examiner that Knight meets this limitation.
Even accepting that it would have been obvious to modify Knight’s envelope by
making it of cardboard and by forming the flaps E and F thereof with straight vertical
edges, in view of the teachings of Back, as proposed by the examiner on page 4 of the
answer5, this would still not overcome the above-noted deficiency of Knight so as to
arrive at the claimed invention. Accordingly, we conclude that the applied references
are insufficient to establish a prima facie case of obviousness of the subject matter of
claim 1 and, consequently, we will not sustain the rejection.
CONCLUSION
To summarize, the decision of the examiner to reject claim 1 under 35 U.S.C.
§ 112, second paragraph, is affirmed and the examiner’s decision to reject claim 1
under 35 U.S.C. § 103 is reversed. In that one rejection of the sole claim on appeal is
sustained, the examiner’s decision is affirmed.
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No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. MCQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
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Application No. 09/655,147
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