Ex Parte Slack

Patent Trial and Appeal Board

Dec 14, 2017

14232754 (P.T.A.B. Dec. 14, 2017)

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 Claims 16, 17, 19, 24, 25, 27, 31 and 32 are withdrawn.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