Ex Parte Schramm

Patent Trial and Appeal Board

Apr 17, 2018

13936375 (P.T.A.B. Apr. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/936,375 07 /08/2013
52966 7590
Schramm-Personal-ACT
Michael R. Schramm
350 West
2000 South
Perry, UT 84302
04/19/2018
FIRST NAMED INVENTOR
Michael R. Schramm
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.
MRS-034U 9283
EXAMINER
ELOSHWAY, NIKI MARINA
ART UNIT PAPER NUMBER
3728
NOTIFICATION DATE DELIVERY MODE
04/19/2018 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):
mikeschramm@besstek.net
mschramm@juneaubiosciences.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL R. SCHRAMM
Appeal 2016-004017
Application 13/936,375
Technology Center 3700
Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
JILL D. HILL, Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Michael R. Schramm ("Appellant") appeals under 35 U.S.C. § 134(a)
from the Examiner's final decision rejecting claims 1-20. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Appeal2016-004017
Application 13/936,375
BACKGROUND
Independent claims 1, 8, 14, and 17 are pending. Independent claim
1, reproduced below, illustrates the claimed invention, with certain disputed
limitations italicized.
1. A spill resistant bubble solution container for use in low
cost spill resistant creation of bubbles, wherein said container
comprises plastic sheet having a substantially uniform thickness.
REJECTIONS
I. Claims 1-20 stand rejected under 35 U.S.C. § l 12(a) or 35
U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement. Ans. 2. 1
II. Claims 1, 2, and 5-7 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Thai (US 6,638,131 Bl, iss. Oct. 28, 2003). Final Act. 2.
III. Claims 3 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Thai. Id. at 3.
IV. Claim 4 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Thai and Lackey (US 2009/0071925 Al, pub. Mar. 19,
2009). Id. at 9.
V. Claims 8-20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Thai, Lackey, and Prodel (US 3,927,789, iss. Dec. 23,
1975). Id. at 4.
1 The written description rejection was entered as a new ground in the
Examiner's Answer.
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Application 13/936,375
ANALYSIS
Written Description - Substantially Uniform Thickness
The Examiner issued a new rejection of the pending claims based on
an amendment adding that the plastic sheet has "substantially uniform
thickness," finding that the invention fails to comply with the written
description requirement, because the amended claims are not described or
claimed in the originally-filed disclosure. Ans. 2. According to the
Examiner, the Specification states that the container upper portion "'is
preferably vacuum formed (or thermoformed) from plastic sheet,"' the
container lower portion "'is preferably vacuum formed (or thermoformed)
from plastic sheet,"' and the originally filed claims recite that the container
(or first and second portions thereof) is "'constructed of thermoformed
plastic sheet."' Id. at 2-3 (citing Spec. i-fi-f 15, 16). According to the
Examiner, the original disclosure "makes no mention of the sheet or
container having a uniform thickness. The drawings also do not
conclusively show that the container has a uniform thickness. Vacuum
forming or thermoforming does not require a sheet of uniform thickness nor
does this process always produce a container with a uniform thickness." Id.
at 3. The Examiner therefore finds that the limitation that the container
comprises a plastic sheet of "substantially uniform thickness" is new matter.
Id.
We do not sustain the Examiner's written description rejection. The
analysis of whether a specification complies with the written description
requirement calls for an examiner to compare the scope of the claim with the
scope of the description to determine whether applicant has demonstrated
possession of the claimed invention from the standpoint of one of ordinary
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Application 13/936,375
skill in the art at the time the application was filed. See, e.g., Wang Labs.,
Inc. v. Toshiba Corp., 993 F.2d 858, 865 (Fed. Cir. 1993)). Further, what is
conventional or well known to one of ordinary skill in the art need not be
disclosed in detail. See Capon v. Eshhar, 418 F.3d 1349, 1357 (Fed. Cir.
2005).
Because one skilled in the art would understand that plastic sheets
used for thermoforming or vacuum forming are typically of substantially
uniform thickness, this understanding need not have been disclosed in detail
in Appellant's original disclosure for one skilled in the art to appreciate that
Appellant had possession of the "substantially uniform thickness" limitation
that was added to the claims. We thus do not sustain the Examiner's
rejection of claims 1-20 as failing to comply with the written description
requirement.
Prior Art Rejection II - Substantially Uniform Thickness
Appellant argues claims 1, 2, and 5-7 as a group. We select claim 1
as representative. 37 C.F.R. § 41.37(c)(l)(iv). Claims 2 and 5-7 stand or
fall with claim 1.
Independent claim 1 recites a spill resistant container comprising,
inter alia, "plastic sheet having a substantially uniform thickness." Appeal
Br. (Claims App.).
The Examiner finds that Thai discloses this limitation. Final Act. 2-3
("'said container comprises a plastic sheet' is understood to mean that the
container is formed from a plastic sheet material, [and] the container of Thai
is formed from a single layer of plastic material. As shown in figures 3 and
4, a portion of the container (the outer wall) has a substantially uniform
thickness, to the degree set forth in the claims.").
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Application 13/936,375
Appellant argues that "Thai also cites, 'acrylic, metal, glass or certain
fabrics' as '[p ]ossible materials for the lower body 22 and the upper body
26'." Appeal Br. 4 (citing Thai 4:12-14). Appellant does not explain how
this argument established error in the Examiner's findings or conclusions
and is therefore not persuasive of Examiner error.
Appellant states that claim 1 was previously amended "to delete the
words 'at least a portion of' and [A ]ppellant clarified claim 1 by adding the
words 'having a substantially uniform thickness'." Id. Thereafter,
Appellant argues that Thai's "external threads 34 of flared rim 32 and
internal threads 38 of flared rim 36 ... teach away from 'substantially
uniform thickness' and are consistent with structures formed via injection
molding." Id. at 5. We are not persuaded that Thai teaches away from a
uniform thickness, because "disclosure of more than one alternative does not
constitute a teaching away from any of these alternatives because such
disclosure does not criticize, discredit, or otherwise discourage the solution
claimed .... " In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Teaching injection molding and a device formed thereby does not, itself,
teach away from thermoforming or vacuum forming, or a device made
thereby. Likewise, we are not persuaded that having non-uniformity of
thickness in one portion of a device teaches away from a device formed
from, or elsewhere comprising, a sheet of substantially uniform thickness.
Appellant further argues that Thai does not anticipate claim 1 because
Thai "teaches a plastic container of non-uniform thickness." Appeal Br. 5.
According to Appellant, "even if Thai did teach a portion of the container
ha[ ving] a substantially uniform wall thickness, clearly the Thai disclosure -
and more especially the drawings - teach that the entirety of Thai is not
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substantially uniform in thickness." Id. Appellant further contends that
claim 1 was narrowed "such that substantially the entire container - not just a
portion of the container - is of a substantially uniform thickness." Id.; but
see Reply Br. 10.
The Examiner responds that, if the term "substantially uniform
thickness" is not new matter, it is disclosed by Thai, because "a large
majority of [Thai's] container has a substantially uniform thickness." Ans.
3--4 (citing Thai Figs. 3 and 4). The Examiner further responds that "claim 1
does not require that the entire container has a uniform thickness, but rather
that the plastic sheet has a substantially uniform thickness. Id. at 4.
Appellant replies that ( 1) the limitation "said container comprises
plastic sheet having a substantially uniform thickness" "goes beyond merely
being of substantially uniform thickness," and (2) Thai does not teach
"sheet" because it discloses "sharply divergent thickness and features
formed in a single side of a wall which is inconsistent with sheet." Reply
Br. 9. Thus, Appellant contends, even ifthe vast majority of Thai's
container has a substantially uniform thickness, Thai's "sharply divergent
thicknesses and features formed in a single side of a wall of the container
completely undermines any allegation that Thai comprises sheet." Id.
The Examiner has the better argument. Appellant has not provided,
either in the Specification or the arguments, a definition of the term
"substantially uniform thickness" that excludes the plastic of Thai' s
container, even with its thicker threaded area. Most of Thai' s container has
a uniform thickness, such that its thickness is substantially uniform. Further,
Appellant has not provided, either in the Specification or the arguments, a
definition of the term "sheet" that excludes the plastic of Thai' s container.
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The Examiner defines the term sheet to mean "a single layer of plastic
material" (Final Act. 2), which is disclosed in Thai, and Appellant has not
refuted the Examiner's definition. We further decline to read the method of
formation (thermo/vacuum forming v. injection molding) into the term
"sheet."
Further, as the Examiner correctly points out, the claim recites that its
container "comprises" a sheet of substantially uniform thickness," and
"comprises" is an open ended transition term that does not exclude
additional unrecited elements. Id. at 4; see MPEP 2111.03. Appellant
contends that the definition of the word "comprises" is neither in dispute nor
does the issue in question tum on the definition. Reply Br. 10. The fact that
the claims utilize the transition term "comprises" is relevant to the claim
scope because "comprises" is an open ended transition term and, therefore,
does not limit the claim scope to the elements recited in the claim. The
relevance of this fact to the rejection based on Thai is that, while the prior art
must include a container having the claimed "plastic sheet having a
substantially uniform thickness," the prior art can include additional
structure, such as a thicker threaded portion. See MPEP 2111.03.
For the reasons explained above, we discern no error in the
Examiner's findings regarding the disclosure of Thai. We therefore sustain
the rejection of claim 1. Claims 2 and 5-7 fall with claim 1.
Rejections 111-V
Appellant makes no argument that claims 3, 4, and 8-20 would be
patentable over the applied references, if claim 1 is not patentable over Thai.
We therefore sustain Rejections III-V for the reasons set forth above
regarding Rejection II.
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DECISION
We REVERSE the rejection of claims 1-20 under 35 U.S.C. § 112(a)
or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement.
We AFFIRM the rejection of claims 1, 2, and 5-7 under 35 U.S.C. §
102(b) as anticipated by Thai.
We AFFIRM the rejection of claim 3 under 35 U.S.C. § 103(a) as
unpatentable over Thai.
We AFFIRM the rejection of claim 4 under 35 U.S.C. § 103(a) as
unpatentable over Thai and Lackey.
We AFFIRM the rejection of claims 8-20 under 35 U.S.C. § 103(a) as
unpatentable over Thai, Lackey, and Prodel.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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