Ex Parte Schnaars et alDownload PDFPatent Trial and Appeal BoardSep 25, 201311379436 (P.T.A.B. Sep. 25, 2013) 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. 11/379,436 04/20/2006 Daniel R. Schnaars A05429US (64686.58) 9847 22920 7590 09/26/2013 GARVEY SMITH NEHRBASS & NORTH, LLC LAKEWAY 3, SUITE 3290 3838 NORTH CAUSEWAY BLVD. METAIRIE, LA 70002 EXAMINER PASCUA, JES F ART UNIT PAPER NUMBER 3782 MAIL DATE DELIVERY MODE 09/26/2013 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 DANIEL R. SCHNAARS and JEAN-ANDRE' BEARD ____________________ Appeal 2011-010431 Application 11/379,436 Technology Center 3700 ____________________ Before: CHARLES N. GREENHUT, PATRICK R. SCANLON, and BARRY L. GROSSMAN, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-010431 Application 11/379,436 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1- 22. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims are directed to an improved design for stabilizing fabric bulk bags. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An improved fabric bulk bag of the type having sidewalls, whereby a non-uniform dart is formed along an upper portion of at least one of the sidewalls to define an area of a reduced diameter than the portion of the bag sidewalls below the non-uniform dart, so that when product is placed into the bag to a point above the lower portion of the non-uniform dart fanned in the bag sidewalls, the portion of the sidewalls below the non-uniform dart are maintained in tension, which provides for a more stable bag which is capable of supporting itself and other filled bags positioned thereupon. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Beaven Schnaars Morishita US 4,301,848 US 4,953,987 GB 2 184 422 A Nov. 24, 1981 Sep. 4, 1990 Jun. 24, 1987 REJECTIONS Claims 1-22 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Ans. 3. Claims 1-22 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Ans. 4. Appeal 2011-010431 Application 11/379,436 3 Claims 1, 2, 4-7 and 12-22 are rejected under 35 U.S.C. § 102(b) as being anticipated by Beaven. Ans. 4. Claims 1, 2, 4-7 and 12-20 are rejected under 35 U.S.C. § 102(b) as being anticipated by Morishita. Ans. 6. Claims 8-11 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Beaven or Morishita and Schnaars. Ans. 7. Claim 3 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Beaven or Morishita. Ans. 8. OPINION The rejections under 35 U.S.C. § 112 The Examiner rejected the claims under both the first and second paragraphs of 35 U.S.C. § 112. Ans. 3, 4. Appellants initially contested only the rejection under the first paragraph of 35 U.S.C. § 112. App. Br. 5-6. Appellants clarified their intent to contest the rejections under each paragraph. Reply Br. 3, 4. The Examiner’s only stated basis for the rejection under the first paragraph of § 112 is that “[t]he specification fails to provide an adequate written description of a “non-uniform dart” to distinguish it from a uniform dart.” Ans. 4. The Examiner has also rejected the claims under the second paragraph of § 112 for similar reasons—the inability to determine the metes and bounds of the claim due to the phrase “non-uniform dart.” It is evident from the Examiner’s explanation that the basis for these rejections is the inability to accurately determine the metes and bounds of the claim due the recitation of the term “non-uniform” preceding “dart.” Ans. 4. This being the case, we, like Appellants, will interpret the Examiner’s rejections to be based on a lack clarity as to the claim scope under § 112 second paragraph, Appeal 2011-010431 Application 11/379,436 4 and not a lack of descriptive support under the first paragraph of § 112. See In re Borkowski, 422 F.2d 904 (CCPA 1970); MPEP § 2174. There does not seem to be any confusion as to the meaning of the term “dart,” which, as Appellants correctly point out, is expressly defined in the Specification. App. Br. 5, citing Spec. 7:19-28. Rather, the uncertainty in the scope of the claims surrounds the term “non-uniform.” Ans. 3-4. In an effort to clarify the meaning of the phrase, Appellants offer the following definition in their brief: “non-uniform darts” are darts which are not designed to increase the lifting strength of the bag, as with the prior art, so in that sense the darts are non-uniform, despite their length or width. App. Br. 6. The first problem with this definition is that it asks a potential infringer to inquire into the subjective intent of the bag designer in placing the darts. Even if we were to adopt this meaning of the term, we could not agree with Appellants that such a meaning would make it clear to the potential infringer what the claims encompass. In re Hammack, 427 F.2d 1378, 1382 (CCPA 1970). The second problem with Appellants’ proposed definition is that there does not appear to be any basis in the language of the claims or the rest of the Specification to apprise one skilled in the art of the meaning proposed. Uniformity can be determined based on a variety of factors such as size, shape, weight, or strength, and there are varying degrees to which something might be considered uniform or not. There is nothing in the Specification to apprise one skilled in the art of the basis for making that determination. Since the Specification does not provide some standard for measuring uniformity so that one of ordinary skill in the art would understand what is claimed when the claims are read in light of the Appeal 2011-010431 Application 11/379,436 5 Specification, we must agree with the Examiner that the claims are indefinite. See Seattle Box Co., v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984). We therefore affirm the Examiner’s rejection insofar as it relies on the second paragraph of § 112 and reverse it insofar as it relies upon the first paragraph of § 112. The rejections under 35 U.S.C. §§ 102 and 103 We recognize that “[i]f no reasonably definite meaning can be ascribed to certain terms in the claim, the subject matter does not become obvious[or anticipated]—the claim becomes indefinite.” In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). However, for the sake of completeness and compact prosecution, we will address the issues raised in the rejections on the prior art. Appellants appear to repeatedly assert that there is a distinction between the “pleats” in the prior art references as compared to the recited “darts.” App. Br. 6-16. “The claims as a whole must be analyzed in light of the disclosure to see if the article defined thereby is distinguishable in fact, vis-à-vis in verbis, over the prior art.” In re Neugebauer, 330 F.2d 353, 356 (CCPA 1964) (“In the construction of words, not the mere words, but the thing and the meaning, are to be inquired after.”). Appellants have chosen to broadly define the term “dart” in the Specification, as discussed above, and the prior art structures of Beaven and Morishita cited by the Examiner each clearly meet that definition. The darts of Beaven and Morishita, having non- uniform width, are reasonably interpreted as non-uniform and this point does not appear to be contested by Appellants. Appellants also repeatedly argue the purpose of their darts, “provid[ing] for a more stable bag,” differs from that of the prior art Appeal 2011-010431 Application 11/379,436 6 structure cited by the Examiner. App. Br. 6-7, 9-10, 14. Regardless of whether this is true or not, where the claims do not structurally distinguish over the prior art the “mere statement of a new use for an otherwise old or obvious composition cannot render a claim to the composition patentable.” In re Zierden, 411 F.2d 1325, 1328 (CCPA 1969); see also In re Benner, 174 F.2d 938, 942 (CCPA 1949) (“no provision has been made in the patent statutes for granting a patent upon an old product based solely upon discovery of a new use for such product”). Neither the purpose of Appellants’ darts nor the distinctions between the preferred embodiments of Appellants’ darts from those described in U.S. Patent No. 4,010,784 are in dispute. These appear to be the only points sought to be made by the October 5, 2009 Declaration of Mr. Schnaars. The Examiner found that the prior art disclosed darts formed along an upper portion of at least one of the sidewalls, not that it would have been obvious to modify the prior art to do so. Contra App. Br. 13. Appellants have not apprised us of any reason why the Examiner’s claim interpretation or factual findings on this point are in error. Concerning claim 3, we must agree with the Examiner that, absent some evidence or assertion of criticality or unexpected results, one skilled in the art would have a reasonable expectation that a change in proportions or size will predictably result in a change in degree not in kind. The Examiner’s prima facie case of obviousness stands unrebutted. See, e.g., MPEP § 2144.04(IV) and cases cited therein. The only other arguments offered by the Appellants are mere repetitions of the claim language coupled with naked assertions that the prior art does not teach the elements recited. App. Br. 7-9, 9-11. Where, as here, Appellants do not make an effort to address the position advanced by the Appeal 2011-010431 Application 11/379,436 7 Examiner, such statements will not be considered separate arguments for patentability. See In re Lovin 652 F.3d 1349, 1357 (Fed. Cir. 2011); 37 C.F.R. § 41.37(c)(1)(vii). DECISION The Examiner’s rejection under 35 U.S.C. § 112, first paragraph, is reversed. The Examiner’s rejections under 35 U.S.C. § 112, second paragraph, 35 U.S.C. § 102, and 35 U.S.C. § 103, are affirmed. 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)(1)(iv). AFFIRMED mls Copy with citationCopy as parenthetical citation