Ex Parte SlackDownload PDFPatent Trial and Appeal BoardDec 14, 201714232754 (P.T.A.B. Dec. 14, 2017) 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. 14/232,754 02/27/2014 Henry William Slack DC 14.03 8266 26812 7590 HAYES SOLOWAY P.C. 175 CANAL STREET MANCHESTER, NH 03101 EXAMINER TAWFIK, SAMEH ART UNIT PAPER NUMBER 3721 NOTIFICATION DATE DELIVERY MODE 12/18/2017 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): TSULLIVAN@HAYES-SOLOWAY.COM dbrancheau@hayes-soloway.com rchriston @ hayes-soloway. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HENRY WILLIAM SLACK Appeal 2017-004088 Application 14/232,754 Technology Center 3700 Before ST. JOHN COURTENAY III, LARRY J. HUME, and JOYCE CRAIG, Administrative Patent Judges. CRAIG, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1, 2, 4, 6—13, and 34, which are all of the claims pending in this application. Claims 3, 5, 14, 15, 18, 20—23, 26, 28—30, and 33 are cancelled. Claims 16, 17, 19, 24, 25, 27, 31 and 32 are withdrawn. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 According to Appellant, the real party in interest is 3 Boys Limited. App. Br. 6. Appeal 2017-004088 Application 14/232,754 INVENTION Appellant’s invention relates to a “method of making a container having a separable inner lining and outer shell, the inner layer being adhered to the outer layer such that after use, the inner layer may be peeled away from the outer layer.” Spec. 1. Claim 1 reads as follows, with the disputed limitation shown in italics: 1. A method of making a container having a separable inner lining and outer shell, the method comprising the steps of: forming an outer shell of the container, the outer shell having a base, a sidewall and a rim surrounding an opening of the shell, the shell being made from a paperboard or plastics material; pre-forming a flexible, non self-supporting lining from a thin sheet of barrier material, at least a part of the lining conforming to a complete internal shape of the shell; inserting the pre-formed lining into the shell so that a first part of the lining is within the shell and a second part of the lining protrudes from the opening of the shell; adhering the first part of the lining to an internal surface of the shell; conforming the second part of the lining to an external surface of the shell; and attaching a sealing layer to the lining around said rim so that the sealing layer covers the opening, the sealing layer being made from a flexible sheet of barrier material, wherein the sealing layer is peelable from the lining such that the lining remains intact, and wherein the adhesion between the lining and the internal surface of the shell is such that the lining is peelable from the shell, so that the lining remains intact and no lining remains on the shell, to fully separate the inner lining and outer shell of the container. 2 Appeal 2017-004088 Application 14/232,754 REJECTIONS2 Claims 1, 2, 4, [6]—13, and 34 stand rejected under 35 U.S.C. § 112(a) as failing to comply with the enablement requirement.3 Final Act. 2. Claims 1, 2, 4, [6]—13, and 34 stand rejected under 35 U.S.C. § 112(b), as indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention.4 Final Act. 3. Claims 1, 2, 4, 6—13, and 34 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Meier et al. (U.S. 5,524,817; issued June 11, 1996) (“Meier”) and Strawder (U.S. 4,905,853; issued Mar. 6, 1990). Final Act. 5. ANALYSIS Rejection of Claims 1, 2, 4, 6—12, and 24 under 25 U.S.C. § 112(a) The Examiner found the claim term “non self-supporting” is not described in the Specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Final Act. 2. We agree with Appellant that the Specification provides support to enable one of ordinary skill in the art to make and use a non self-supporting lining (App. Br. 26—27) without undue experimentation, because the Specification describes a non self-supporting lining as one that only 2 The Examiner’s § 102(b) rejection of claims 1, 2, 4, 6, 8, 10-12, and 34 and § 103(a) rejection of claims 7, 9, and 13 was withdrawn. Ans. 5. 3,4 We presume the Examiner made a typographical error when enumerating claims “-13.” Final Act. 2—3. We understand the Examiner to have meant “6-13.” 3 Appeal 2017-004088 Application 14/232,754 maintains its required shape when placed over a suitable male former or adhered to a shell. Spec. 122. Accordingly, we do not sustain the Examiner’s enablement rejection of claims 1,2, 4, 6—13, and 34 under 35 U.S.C. § 112(a). Rejection of Claims 1, 2, 4, 6—13, and 34 under 35 U.S.C. § 112(b) The Examiner concludes the claim term “non self-supporting lining” is vague and indefinite because Appellant’s use and performance of the liner is unclear. Final Act. 3. We agree with Appellant that the Specification describes the non self- supporting liner as a thin sheet of plastic material folded and bonded to form a bag. App. Br. 28—29, Spec. 122. We also agree with Appellant that the Specification describes an embodiment for using the non self-supporting liner. App. Br. 29, Spec. 105—110. Thus, under a broad but reasonable interpretation consistent with the Specification, we agree that one of ordinary skill in the art would not conclude the claim term “non self- supporting lining” is indefinite. Accordingly, we reverse the Examiner’s rejection of claims 1, 2, 4, 6—13, and 34 under 35 U.S.C. § 112(b). Rejection of Claims 1, 2, 4, 6—13, and 34 under 35 U.S.C. § 103(a) In rejecting claim 1, the Examiner admits that Meier “may not be clear” in teaching the step of method claim 1: “pre-forming a flexible, non self-supporting lining from a thin sheet of barrier material, at least a part of the lining conforming to a complete internal shape of the shell f as recited in claim 1. Final Act. 5. The Examiner finds Strawder’s trash bags, shown in Figures 2 and 12, teach the disputed limitation because the inner liners 59 contact the entire surface of the outer shell 64. Final Act. 5—6. 4 Appeal 2017-004088 Application 14/232,754 Appellant contends Strawder’s triple trash bags do not teach the disputed limitation “at least a part of the lining conforming to a complete internal shape of the shell f as claim 1 requires, because none of the three trash bags can individually conform “to the complete internal shape of the shell” without the removal of the other bags. Appellants argue that, even a single trash bag, whether full or empty, in the trash can would not “conform to the complete internal shape of the” trash can due to the gaps between the bag and the can. App. Br. 23—24. Appellant explains the trash bag (liner) will naturally bunch and fold inward in various locations creating gaps between the bag and the can. Reply Br. 5—7. We disagree with the Examiner’s finding that Strawder’s trash bags conform to a complete internal shape of the trashcan because the cited figures depict gaps between the liner and the trashcan, which show a lack of complete conformity with the trashcan. See Strawder Figs. 2 and 12. In view of this evidence,5 we agree with Appellant the Examiner erred with respect to the obvious rejection of claim 1 and claims 2, 4, 6—13, and 34, which depend therefrom. Accordingly, we reverse the Examiner’s rejection of independent claim 1, as well as dependent claims 2, 4, 6—13, and 34. DECISION We reverse the Examiner’s decision rejecting claims 1, 2, 4, 6—13, and 34. REVERSED 5 Appellant raises additional arguments in the Appeal Brief. Because the identified issue is dispositive of the appeal, we do not reach the additional arguments. 5 Copy with citationCopy as parenthetical citation