12048758 (P.T.A.B. Oct. 17, 2014)

Ex Parte Weissbrod

Patent Trial and Appeal BoardOct 17, 2014

12048758 (P.T.A.B. Oct. 17, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte PAUL A. WEISSBROD ____________________ Appeal 2012-009078 Application 12/048,758 Technology Center 3700 ____________________ Before: CHARLES N. GREENHUT, LYNNE H. BROWNE, and SCOTT A. DANIELS, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1– 20. App. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b). We affirm and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). The claims are directed to a reinforcing member for a sealed container. Claim 1, reproduced below, is illustrative of the claimed subject matter: Appeal 2012-009078 Application 12/048,758 2 1. A system for containing associated materials, comprising: a container body having at least a first opening enclosed by a removable seal, said container body having a top lip having a lip external diameter and a cylindrical container body having a cylinder body external diameter, said lip external diameter being smaller than said cylinder body external diameter; and means for protectively supporting the container body for substantially preventing impact forces from breaking the removal seal, said means having an upper and a lower essentially parallel pair of sidewalls, said sidewalls interconnected by an outwardly extending shoulder, said upper sidewall having an internal diameter which is smaller than an internal diameter of said lower sidewall, said internal diameter of said lower sidewall essentially mating with said cylinder body external diameter, and said internal diameter of said lower sidewall being larger than said lip external diameter so as to create a gap between said internal diameter of said lower sidewall and said external diameter of said lip. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Boyd Heath Wylder US 4,917,258 US 5,105,964 US 5,749,491 Apr. 17, 1990 Apr. 21, 1992 May 12, 1998 Dawidowicz US 2008/0217336 A1 Sep. 11, 2008 REJECTIONS Claims 1–20 have been rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Ans. 4. Appeal 2012-009078 Application 12/048,758 3 Claims 1–6, 9–12, 14, 15 and 17–20 have been rejected under 35 U.S.C. § 102(b) as being anticipated by Heath. Ans. 5. Claims 7 and 8 have been rejected under 35 U.S.C . § 103(a) as being unpatentable over Heath and Boyd. Ans. 6. Claim 13 has been rejected under 35 U.S.C. § 103(a) as being unpatentable over Heath and Wylder. Ans. 6. Claim 16 has been rejected under 35 U.S.C. § 103(a) as being unpatentable over Heath and Dawidowicz. Ans. 6. OPINION The rejection under 35 U.S.C. § 112, first paragraph, is affirmed. New or amended claims which introduce elements or limitations which are not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967 (CCPA 1971). The purpose of the written description requirement is to prevent an applicant from later asserting that he invented that which he did not; the applicant for a patent is therefore required “‘to recount his invention in such detail that his future claims can be determined to be encompassed within his original creation.’” Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1330 (Fed. Cir. 2003) (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). While there is no in haec verba requirement, newly added claim limitations must be supported in the specification or the drawings through express, implicit, or inherent disclosure. The fundamental factual inquiry is whether the specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed. See, e.g., Vas-Cath, Inc., 935 F.2d at 1563–64. When an explicit limitation in a claim is not present in the Appeal 2012-009078 Application 12/048,758 4 written description it must be shown that a person of ordinary skill would have understood that the description requires that limitation. Hyatt v. Boone, 146 F.3d 1348, 1353 (Fed. Cir. 1998). If the originally filed disclosure does not provide support for each claim limitation, a new or amended claim must be rejected under 35 U.S.C. § 112, first paragraph, as lacking adequate written description. Appellant points to the dashed lines in Figure 3 and the statement that “'the clearance between the reinforcing member 30 and the container 10 may be close to or substantially zero” in paragraph 25 of the Specification as providing descriptive support for the recitation of “a gap between said internal diameter of said lower sidewall and said external diameter of said lip.”1 App. Br. 20–21. We cannot agree with Appellant that one skilled in the art would understand the description of the spacing between the reinforcing member 30 and the container as “close to or substantially zero,” thus indicating that there is a gap between, specifically, the internal diameter of the lower sidewall of the reinforcing member 30 and the external diameter of the lip of the can. If anything, this statement in the Specification would indicate that if there is any space between the reinforcing member and the container, that space is negligible. More importantly, even assuming arguendo that the qualifiers “close to or substantially” would indicate a non-zero spacing, as Appellant suggests, this statement provides no indication that such a non- 1 We note that the “internal diameter of said lower sidewall” relates to an element of the “protectively supporting” means. However, claims 1 and 17 recite sufficient structures and steps to overcome the presumption that Appellant intended to invoke 35 U.S.C. § 112, paragraph six. See MPEP § 2181(I)(C) and cases cited therein. Neither Appellant nor the Examiner makes any assertion to the contrary. Appeal 2012-009078 Application 12/048,758 5 zero spacing is in the specific location recited in the claims—between the internal diameter of the lower sidewall of the reinforcing member and the external diameter of the lip of the can. The dashed lines in Figure 3, at most, seem to indicate a general correspondence between the lower external diameter of the can and the lower external diameter of the reinforcing member. No discussion regarding the meaning of these lines is provided in Appellant’s Specification. As the Examiner correctly points out, there is a seemingly infinite number of possible configurations for the internal diameter of the lower sidewall of the reinforcing member, which will dictate the relationship between that member and the external diameter of the lip of the canister 12. Appellant alleges that “it is more likely that the configuration illustrated on the left [at Reply Br. 6] is the more accurate interpretation.” Reply Br. 7. However, Appellant’s disclosure does not include any discussion or depiction of the inner walls of the lower sidewall of the reinforcing member. Appellant’s assertion is not supported with any evidence to demonstrate that one skilled in the art would have been able to predict the inner wall configuration without the aid of a disclosure by Appellant. Cases involving issues such as these often arise in the chemical arts. However, the first paragraph of 35 U.S.C. § 112 is equally applicable across all disciplines. See, e.g., In re Cook, 439 F.2d 730, 734 (CCPA 1974). Here, there is no disclosure of even a single embodiment or “representative species” of inner wall for the lower sidewalls of the reinforcing member. Nor is there any indication as to the “structural features common to the members of the genus” of lower sidewalls of the reinforcing member. Thus, there is no way for one skilled in the art to “visualize or recognize” the various “species” of internal diameters of lower sidewalls that Appellant was Appeal 2012-009078 Application 12/048,758 6 in possession of as of the filing date. See Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1350 (Fed. Cir. 2010). It is true that specifications are written for those skilled in the art and do not require a disclosure of all that is known to those skilled in the art. Nevertheless, [t]o fulfill the written description requirement, the patent specification “must clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.” In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed.Cir.1989). An applicant complies with the written description requirement “by describing the invention, with all its claimed limitations.” Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (1997). Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 1479 (Fed. Cir. 1998). It is contradictory for Appellant to, on the one hand, allege that one skilled in the art would understand that they possessed a reinforcing member having the configuration illustrated on the left side of page six of the Reply Brief, without specifically disclosing such a configuration in their Specification or drawings, while at the same time alleging that that configuration makes the claimed subject matter novel and nonobvious. See App. Br. 23–25; Reply Br. 9. [W]e were also careful to point out in [Ethicon Endo-Surgery, Inc. v. United States Surgical Corp., 93 F.3d 1572 (Fed.Cir.1996)] that the applicant “was free to draft claim[s] broadly (within the limits imposed by the prior art) to exclude the lockout’s exact location as a limitation of the claimed invention” only because he “did not consider the precise location of the lockout to be an element of his invention.” Id. Here, as indicated above, it is clear that Sproule considered the location of the recliner controls on the console to be an essential element of his invention. Appeal 2012-009078 Application 12/048,758 7 Gentry Gallery, Inc. v. Berkline Corp., supra. In sum, we must disagree with Appellant’s argument that although “the Office may prefer to have answers to the above questions [regarding the internal configuration of the lower sidewall of the reinforcing member], those answers are simply not required to support the claims as written or as they have been amended.” Reply Br. 6. Appellant chose to make a broad generic disclosure regarding the internal diameter of the lower sidewall of the reinforcing member. This generic disclosure supports only a generic claim and, in this case, defeats a more specific one because there is insufficient evidence to demonstrate that Appellant was in possession of a system having the specific features recited in the claim as of the filing date sought. See, e.g., In re Smith, 458 F.2d 1389 (CCPA 1972); In re Ruschig, 379 F.2d 990, 995 (CCPA 1967)( “Appellants are pointing to trees. We are looking for blaze marks which single out particular trees. We see none.”). 35 U.S.C. § 112, first paragraph, is properly applied by the Examiner to prevent Appellant from asserting that he invented that which he did not. See Amgen Inc. v. Hoechst Marion Roussel Inc., supra. The prior-art rejections. The annotated figure provided on page twelve of the Examiner’s Answer demonstrates only that there is distance between the external diameter of lip 27 of Heath’s can 13 and the internal diameter of skirt 31, interpreted as the recited “lower sidewall” of the protective means2. The presence of distance does not establish the presence of a “gap” which 2 See note 1. Appeal 2012-009078 Application 12/048,758 8 requires a space between two structures.3 As the Examiner’s determination in this regard forms the basis for all of the Examiner’s prior-art rejections, we cannot sustain the Examiner’s rejections under either § 102 or § 103 on the basis set forth by the Examiner. Unlike Appellant’s disclosure, Heath’s disclosure specifies the internal configuration of can cap 11. See Fig. 2. In the final installed configuration of Heath’s cap, as depicted in Figure 3, the lower section 45 of the cap, having a continuous inner surface (portion of 31), closely mates with sidewalls 21 of the can 13. See, e.g., Fig. 4 (shown when oriented on the bottom 19 of the can). Heath discloses that the lower section 45 has a greater diameter than the upper section 41 and intermediate section 43 which cooperate to surround the can lip 17. Col. 3, ll. 1–25. Except for the portion 49 where material is removed from the outer thickness of the lower section 45, the thicknesses of these cap sections are consistent. Id. Thus, it can be deduced from both Heath’s figures and corresponding description that the inner diameter of the lower section 45 is greater than the outer diameter of can lip 17, over which the lower section must pass during installation. During that installation process, when lower section 45 first makes contact with can sidewalls 21, and is therefore “essentially mating with” those can walls as required by claims 1 and 17, a “gap” necessarily exists between the inner diameter of the lower section 45 and the external diameter of the can lip 17. There is no language in either of independent claims 1 or 17 that serves to exclude this intermediate arrangement of Heath’s cap and can which necessarily occurs during the installation process of Heath’s cap. 3 Gap. (2011). In THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE. Retrieved from http://search.credoreference.com/content/entry/hmdictenglang/gap/0 Appeal 2012-009078 Application 12/048,758 9 It has long been held that the intermediate or transitory nature of a product or article in a reference does not detract from the efficacy of that reference as prior art. See, e.g., In re Mullin, 481 F.2d 1333, 1335–36, (CCPA 1973) (citing In re Herbert, 461 F.2d 1390 (CCPA 1972). Accordingly, Heath does, in fact, anticipate at least claims 1 and 17, because the installation process of Heath’s cap results in an arrangement that includes each and every element of claims 1 and 17, arranged according to the claims. As we have found facts and relied on analysis that differs from that of the Examiner, we will designate our affirmance of the rejection of claims 1 and 17 as anticipated by Heath a NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b) in order to ensure Appellant has a fair opportunity to respond. We leave the analysis of the dependent claims to the Examiner in any further prosecution and note that although the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See MPEP § 1213.03. DECISION The rejection of claims 1–20 under 35 U.S.C. § 112, first paragraph, is affirmed. The rejection of claims 1 and 17 under 35 U.S.C. § 102(b) is affirmed but our affirmance is designated as a NEW GROUND OF REJECTION under 37 C.F.R. 41.50(b). The rejections of claims 2–6, 9–2, 14, 15 and 18–20 under 35 U.S.C. § 102(b), and of claims 7, 8, 13 and 16 under 35 U.S.C. § 103(a), are reversed. Appeal 2012-009078 Application 12/048,758 10 FINALITY OF DECISION Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides “Appellant may file a single request for rehearing within two months from the date of the original decision of the Board.” In addition to affirming the Examiner’s rejections of one or more claims, this decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b) (2008). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds 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 proceeding will be remanded to the Examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . Should Appellant elect to prosecute further before the Examiner pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution before the Examiner unless, as a mere incident to the limited prosecution, the affirmed rejection is overcome. Appeal 2012-009078 Application 12/048,758 11 If Appellant elects prosecution before the Examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to the Patent Trial and Appeal Board for final action on the affirmed rejection, including any timely request for rehearing thereof. 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). AFFIRMED4; 37 C.F.R. § 41.50(b) mls 4 The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim, except as to any ground specifically reversed. 37 C.F.R. § 41.50(a).