Ex Parte Wauters et al

Patent Trial and Appeal Board

Oct 26, 2017

12449488 (P.T.A.B. Oct. 26, 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.
12/449,488 08/20/2010 Albert Wauters ABI172US (12-0049) 1722
83942 7590 10/26/2017
Levy & Grandinetti
P.O. Box 18385
Washington, DC 20036
EXAMINER
DESAI, KAUSHIKKUMAR A
ART UNIT PAPER NUMBER
3788
MAIL DATE DELIVERY MODE
10/26/2017 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 ALBERT WAUTERS and IAIN McDERMENT
____________________

Appeal 2016-002671
Application 12/449,488
Technology Center 3700
____________________

Before LINDA E. HORNER, CHARLES N. GREENHUT, and
GORDON D. KINDER, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of at
least claims 1 and 4. The status of claim 7 is unclear as it is indicated as
rejected in the Advisory Action but not mentioned in the Final Rejection.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter new grounds of rejection.

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Application 12/449,488
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CLAIMED SUBJECT MATTER
The claims are directed to a container and chime. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A container assembly comprising a container and a chime
fixed to each other, wherein
(a) the container has a peripheral side wall and an end part
comprising an attachment device situated at a distance from said
peripheral side wall,
(b) the chime comprises a substantially central inner hub
and a fixation device fixed to said attachment device of the
container, characterized in that
(c) said chime fixation device comprises an opening
circumscribed by respective free ends of a plurality of resilient
tines extending radially inwardly from the inner hub, and in that,
(d) said attachment device of the container comprises
tapered side walls extending transversally from the second end
and terminating in an overhanging abutment and are engaged
in the complementary features of the bottom chime to form a
releasable fixation.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims is:
Uhlig
Saito
US 4,088,239
US 4,482,067
May 9, 1978
Nov. 13, 1984

REJECTIONS
Claim 1 was provisionally rejected on the ground of nonstatutory
double patenting over claims 1 and 6 of copending Application No.
12/449,489.
Claims 1 and 4 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Uhlig.
Claims 1 and 4 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Saito and Uhlig.
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Application 12/449,488
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OPINION
Appellants do not contest, and we do not reach, the provisional double
patenting rejection. App. Br. 7; In re Mott, 539 F.2d 1291, 1296 (CCPA
1976) (“By making the rejection final the PTO has ‘jumped the gun[]’”).
We leave to the Examiner consideration of the issued claims of U.S. Patent
9,156,583 B2, which matured from application 12/449,489.
A central issue concerning the anticipation rejection is the
construction of the term “bottom.” See App. Br. 8; Ans. 2. In order to
properly ascertain the scope of claim 1 we must be able to understand what
structural implications, if any, the term “bottom” has when used to modify
“chime.” For example, if the frame of reference is space generally,
“bottom” could simply be an attribute satisfied by the container’s
orientation. If the frame of reference is the container to which the chime is
fixed and that container has a defined bottom, “bottom” could refer to a
specific location of the chime with respect to the container. We also
acknowledge that with sufficient intrinsic and/or extrinsic evidence, one
might be able to demonstrate “bottom” carries additional structural
implications in the art. See, e.g., App. Br. 8. In any case, the starting point
is the language of the claim itself. Phillips v. AWH Corp., 415 F.3d 1303,
1314 (Fed. Cir. 2005) (en banc) (“the claims themselves provide substantial
guidance as to the meaning of particular claim terms,” and “the context of
the surrounding words of the claim also must be considered in determining
the ordinary and customary meaning of those terms”) (citations omitted).
The last line of claim 1 refers to “the bottom chime.” However, the term
“bottom” is never previously recited in the claim. Thus, to determine a
definite scope of claim 1 would require us to make speculative assumptions
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Application 12/449,488
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as to how the term was intended to be introduced into the claim. We instead
reject claim 1 under 35 U.S.C. § 112, second paragraph, as failing to set
forth antecedent basis for the phrase “the bottom chime,” and decline to
reach the merits of the anticipation rejection at this time. See In re Morris,
127 F.3d 1048, 1056 (Fed. Cir. 1997) (“[i]t is the applicants’ burden to
precisely define the invention, not the PTO’s. See 35 U.S.C. § 112 ¶ 2 . . .
this section puts the burden of precise claim drafting squarely on the
applicant.”); In re Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art
rejection cannot be sustained if the hypothetical person of ordinary skill in
the art would have to make speculative assumptions concerning the meaning
of claim language.)
In response to Appellants’ arguments concerning the § 103(a)
rejection,1 which depict and concisely argue the absence of an overhanging
abutment in Saito (App. Br. 10), the Examiner responds
it is noted that said bottle is transversally positioned from the
second end [other end] abutment [support]. Therefore, circular
projection 20 extending transversally [across] from the second
end [other end flange 10, figure 1] and terminating in an
overhanging abutment.
Ans. 3.
We are unable to deduce from the Examiner’s response the specific
structure relied upon by the Examiner concerning the “overhanging
abutment” language of claim 1. “[T]he precise language of 35 U.S.C. § 102
that ‘(a) person shall be entitled to a patent unless,’ concerning novelty and
unobviousness,[] clearly places a burden of proof on the Patent Office which
requires it to produce the factual basis for its rejection of an application

1 We are able to render a decision on the § 103(a) rejection regardless of the
construction of the term “bottom.”
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Application 12/449,488
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under sections 102 and 103.” In re Warner 379 F.2d 1011, 1016 (CCPA
1967). A rejection must be set forth in sufficiently articulate and
informative manner as to meet the notice requirement of § 132, such as by
identifying where or how each limitation of the rejected claims is met by the
prior art references. In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011); see
also 37 C.F.R. § 1.104(c)(2) (“When a reference is complex or shows or
describes inventions other than that claimed by the applicant, the particular
part relied on must be designated as nearly as practicable. The pertinence of
each reference, if not apparent, must be clearly explained and each rejected
claim specified.”); Gechter v. Davidson 116 F.3d 1454, 1460 (Fed. Cir.
1997) (PTO must create a record that includes “specific fact findings for
each contested limitation and satisfactory explanations for such findings.”).
It is neither our place, nor Appellants’ burden, to speculate as to the basis for
rejecting claims. In re Stepan, 660 F.3d 1341, 1345 (Fed. Cir. 2011) (It is
the PTO’s obligation to provide timely notice to the applicant of all matters
of fact and law asserted.). Accordingly, the § 103(a) rejection cannot be
sustained on the grounds set forth by the Examiner.

DECISION
We do not reach the provisional double patenting rejection.
We reverse the Examiner’s anticipation rejection without opinion on
the merits thereof.
We reverse the Examiner’s obviousness rejection.
Pursuant to 37 C.F.R. § 41.50(b) we reject claims 1, 4, and 7 as
indefinite under 35 U.S.C. § 112, second paragraph.
This Decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
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Application 12/449,488
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pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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).

REVERSED; 37 C.F.R. § 41.50(b)