Ex Parte Wegryn

Board of Patent Appeals and Interferences

May 23, 2011

11123616 (B.P.A.I. May. 23, 2011)

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.
11/123,616 05/06/2005 David Wegryn WEG-10002/29 8164
25006 7590 05/23/2011
GIFFORD, KRASS, SPRINKLE,ANDERSON & CITKOWSKI, P.C
PO BOX 7021
TROY, MI 48007-7021
EXAMINER
ARYANPOUR, MITRA
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
05/23/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DAVID WEGRYN
____________________

Appeal 2010-001403
Application 11/123,616
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, JOHN C. KERINS, and WILLIAM V.
SAINDON, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-001403
Application 11/123,616
2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-5, 7-9, and 15. Claim 6 has been canceled. The
Examiner has indicated claims 10-14 and 16-20 contain allowable subject
matter. We have jurisdiction under 35 U.S.C. § 6(b).

The Invention
Claim 1, reproduced below with added emphasis, is illustrative of the
claimed subject matter.
1. A hockey puck receiver and carrier, comprising:
an enclosure having an open end, a closed end, and three
or more substantially flat sides, each side terminating in a side
edge at the open end; and
a ramp hingedly affixed to each side edge, such that
when the enclosure is thrown or placed onto an ice surface,
the ramp at the bottom folds down, creating a smooth surface
for puck receiving.

References
The Examiner relies upon the following prior art reference:
Power US 7,066,847 B2 Jun. 27, 2006

Rejections
I. Claims 1-5, 7-9, 15 are rejected under 35 U.S.C § 112, second
paragraph, as indefinite. Ans. 4.
II. Claims 1-5 and 15 are rejected under 35 U.S.C § 102(b) as
anticipated by Power. Ans. 4-6.
III. Claim 9 is rejected under 35 U.S.C § 103(a) as unpatentable
over Power. Ans. 6.

Appeal 2010-001403
Application 11/123,616
3
SUMMARY OF DECISION
We AFFIRM.

OPINION
Indefiniteness Rejections
The Examiner rejected claim 1 as indefinite because “the bottom”
lacks sufficient antecedent basis. Ans. 4. Appellant raises the issue of
whether claim 1 is indefinite, arguing that, “given the context of the
language, the meaning should be clear and unambiguous.” Appeal Br. 3.
If the language of a claim is such that a person of ordinary skill in the
art could not interpret the metes and bounds of the claim so as to understand
how to avoid infringement, a rejection of the claim under 35 U.S.C. § 112,
second paragraph, is appropriate. See Orthokinetics, Inc. v. Safety Travel
Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986); Datamize, LLC v.
Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005) (“Some
objective standard must be provided in order to allow the public to
determine the scope of the claimed invention.”). During prosecution,
Appellant has the ability to amend the claim, justifying a lower standard for
ambiguity. In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969) (Applicant
has the opportunity to amend the claims during prosecution, and broad
interpretation reduces the possibility that the claim, once issued, will be
interpreted more broadly than is justified); see Ex parte Miyazaki, 89
USPQ2d 1207, 1211-12 (BPAI 2008) (precedential) (“The USPTO is
justified in using a lower threshold showing of ambiguity … because the
applicant has an opportunity and a duty to amend the claims during
prosecution to more clearly and precisely define the metes and bounds of the
Appeal 2010-001403
Application 11/123,616
4
claimed invention and to more clearly and precisely put the public on notice
of the scope of the patent”).
Claim 1 requires a ramp affixed in a way “such that when the
enclosure is thrown or placed onto an ice surface, the ramp at the bottom
folds down.” The claim does not specify any particular structure of the
enclosure corresponding to the “bottom,” nor does the Specification define
which structure of the enclosure is “the bottom.” Since any portion
(including, but not limited to, the closed end, open end, or three or more
substantially flat sides) could end up facing the ice surface, any portion of
the enclosure could be reasonably considered “the bottom.” While the
Specification describes an embodiment wherein the “substantially flat sides”
are intended to be placed on the ice surface, claim 1 is not so limited.
Superguide Corp. v. DirecTV Enter., Inc., 358 F.3d 870, 875 (Fed. Cir.
2004) (a particular embodiment appearing in the written description may not
be read into a claim when the claim language is broader than the
embodiment). It is unclear if the claim reads on prior art having a ramp that
folds down even if the enclosure is placed on an ice surface open end down,
closed end down, or on another part of the enclosure. The limitation, “such
that when the enclosure is thrown or placed onto an ice surface, the ramp at
the bottom folds down,” is “amenable to two or more plausible claim
constructions” and therefore indefinite. Ex parte Miyazaki, 89 USPQ2d at
1211. As such, we find claim 1 indefinite and sustain the Examiner’s
rejection of claims 1-5, 7-9, and 15.
The Examiner additionally rejected claim 4 as indefinite because “the
container” lacks antecedent basis. Ans. 4. Appellant does not set forth a
rebuttal. Accordingly, we sustain the Examiner’s rejection of claim 4 as
indefinite on this additional basis.
Appeal 2010-001403
Application 11/123,616
5
Art Rejections
Normally, when substantial confusion exists as to the interpretation of
a claim and no reasonably definite meaning can be ascribed to the terms in a
claim, a determination as to patentability under 35 U.S.C. §§ 102 or 103 is
not made. See In re Steele, 305 F.2d 859, 862 (CCPA 1962) and In re
Wilson, 424 F.2d 1382, 1385 (CCPA 1970). However, in this instance, we
consider it to be desirable to address the art rejections to avoid the
inefficiency of piecemeal appellate review. See Ex parte Ionescu, 222
USPQ 537, 540 (Bd. App. 1984). Therefore, we have made a determination
below as to the patentability under 35 U.S.C. §§ 102 and 103 of the appealed
claims in the interest of judicial economy.
Claims 1-5, 9, and 15 require a ramp hingedly affixed to each side
edge of an enclosure. In relevant part, the Examiner found that Power
describes a ramp 12 affixed to three side edges (left, right, and bottom) of an
enclosure. Ans. 4-5. Appellant raises the dispositive issue of whether
Power describes an enclosure having a ramp “hingedly affixed to each side
edge.” Appeal Br. 5. Appellant emphasizes that the ramp is not attached to
all three side edges. Id.
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Appeal 2010-001403
Application 11/123,616
7
Thus, the Examiner’s finding that the ramp in Power is attached to at least
three sides as required by claim 1 is in error. Claims 2-5 and 15 depend
from claim 1 and thus contain a similar limitation. The Examiner’s
obviousness rejection of claim 9, which depends from claim 1, does not
include any findings or conclusions regarding modifying Power’s enclosure
to have three or more substantially flat sides with a ramp hingedly affixed to
each side edge.

DECISION
For the above reasons, we do not sustain the Examiner’s rejections
under §§ 102 and 103 of claims 1-5, 9, and 15. We sustain the Examiner’s
indefiniteness rejection of claim 1-5, 7-9, and 15. No time period for taking
any subsequent action in connection with this appeal may be extended under
37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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