Ex Parte Wellman

Patent Trial and Appeal Board

May 16, 2016

12094262 (P.T.A.B. May. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/094,262 0512912009
8968 7590 05/18/2016
DRINKER BIDDLE & REATH LLP
ATTN: PATENT DOCKET DEPT.
191 N. WACKER DRIVE, SUITE 3700
CHICAGO, IL 60606
FIRST NAMED INVENTOR
Craig John Wellman
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
l 70321-2908US 1573
EXAMINER
CASTILLO, KEVIN CHARLES
ART UNIT PAPER NUMBER
3781
NOTIFICATION DATE DELIVERY MODE
05/18/2016 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):
DBRIPDocket@dbr.com
IPDockets@dbr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CRAIG JOHN WELLMAN
Appeal2014-003573
Application 12/094,262
Technology Center 3700
Before ANNETTE R. REIMERS, THOMAS F. SMEGAL, and
ERIC C. JESCHKE, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Craig John Wellman (Appellant) seeks review, under 35 U.S.C.
§ 134(a), of the Examiner's decision to reject claims 1, 2, 4, 9, 11, 19, 20,
23, 25-28, 30-34, 36, 37, 49, and 50. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM-IN-PART, and designate the affirmance as to claims 1,
9, 49, and 50 as anticipated by Schwartzman (US 3,347,410, issued Oct. 17,
1967) as a NEW GROUND OF REJECTION under 37 C.F.R. § 41.50(b).
Appeal2014-003573
Application 12/094,262
BACKGROUND
The disclosed subject matter relates "[a] closure for a container."
Spec. 1, 11. 4--6. Claims 1, 9, and 49 are independent. Claim 1 is reproduced
below:
1. A closure for mounting to a container having
an opening surrounded by a rim, the closure being
of unitary construction and comprising:
an external peripheral wall that is connected
to an internal wall that is inset from and that faces
and is surrounded by the external wall to form a
channel therebetween for receiving the rim, and a
compartment in which material can be positioned,
the compartment comprising a wall that is located
within a recess defined in the closure, wherein a
periphery of the compartment wall is connected to
the internal wall such that the internal wall forms a
side wall of the compartment,
whereby the compartment and compartment
wall are located within the container opening when
the closure is mounted thereto, and with the
compartment wall comprising a first region that is
surrounded by a second bellows-like region adapted
to facilitate displacement of the first region from a
first position to a second position to cause the
material to be released from the compartment into
the container.
REJECTIONS ON APPEAL
1. Claims 1, 2, 4, 9, 11, 19, 20, 24, 25, 30, 31, 35, 49, and 50 are
rejected under 35 U.S.C. § 102(b) as anticipated by Sergio (US 6,364,103
B 1, issued Apr. 2, 2002).
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2. Claims 1, 2, 4, 9, 11, 19, 20, 23, 24, 25, 28, 29, 30, 35, 36, 49,
and 50 are rejected under 35 U.S.C. § 102(b) as anticipated by Schwartzman
(US 3,347,410, issued Oct. 17, 1967).
3. Claims 1, 4, 9, 11, 19, 20, 23, 24, 25, 49, and 50 are rejected
under 35 U.S.C. § 102(b) as anticipated by Scudder (US 5,979,164, issued
Nov. 9, 1999).
4. Claims 26 and 27 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Schwartzman and Adams (US 6,571,994, issued June 3,
2003).
5. Claims 31 and 32 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Scudder and Plester (US 5,524, 788, issued June 11, 1996).
6. Claim 33 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Scudder, Plester, and Shastal (US 4,969,574, issued Nov. 13, 1990).
7. Claim 34 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Scudder, Plester, Shastal, and Conard (US 5,080,245, issued Jan. 14,
1992).
8. Claim 37 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Schwartzman and Pozzi (US 4,982,875, issued Jan. 8, 1991).
DISCUSSION
Rejection I -The rejection of claims 1, 2, 4, 9, 11, 19, 20, 24,
25, 30, 31, 35, 49, and 50 as anticipated by Sergio
A. Independent Claims 1 and 9 (and Claims
2, 4, 11, 19, 20, 24, 25, 30, 31, 35, and 50)
Independent claims 1 and 9 as well as dependent claim 50 (which
depends from independent claim 49) each recite, inter alia, a "closure" of
"unitary construction." Claims App. 1, 4.
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Appellant argues that, in light of the Specification, "unitary" means
"in a single (molded) piece or molded as a single unit rather than made of
separately formed pieces that are attached together." Br. 6. Appellant notes
that the dictionary relied on by the Examiner defines "unitary" as "1. Of or
relating to a unit" "2. Having the nature of a unit; whole" and "3. Based on
or characterized by one or more units." Id. at 6-7. According to Appellant,
the relied-upon third definition "is completely at odds with the teaching of
the specifications and the figures." Id. at 7.
On the record here, we agree with Appellant that the Examiner has
applied an unreasonably broad construction of "unitary construction"-as a
"connection of pieces and not a single piece or molded as a single unit"
(Ans. 18}-when considering that claim language in light of the
Specification. See In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990). As an
initial matter, we note that the Examiner does not take the position that the
phrase "unitary construction" does not limit claims 1 and 9, even though that
phrase is recited only in the preamble of those claims and also does not take
the position that Sergio discloses a single-piece closure. See Ans. 18. The
issue before us turns on claim construction.
As to the claim language, claims 1 and 9 indicate that "unitary
construction" includes configurations in which certain structures are
"connected" together. In addition, claims 49 and 50 (via claim
differentiation) indicate that "unitary construction" (as recited in claim 50)
may be narrower than configurations in which certain structures are
"connected" together (as recited in claim 49). The claim language itself
does not provide clear guidance on the meaning of "unitary construction."
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As noted by Appellant, however, the Specification discloses that the
closure can be "moulded as a unitary construction." Br. 6 (citing Spec. p. 1,
11. 28-30; p. 2, 11. 22-24). Moreover, these passages highlight the benefits of
such a construction: "considerable simplification" from "previous
approaches." Spec. p. 1, 11. 30-31; p. 2, 11. 24--25. In the "Background Art"
section, the Specification discusses a reference disclosing various "different
outer cap constructions ... that in tum each act on a separate envelope
enclosing the tablet, to force a rupture of the envelope and release the tablet
into a container." Spec. p. 1, 11. 12-15 (emphasis added). Viewed as a
whole, these statements implicitly define "unitary construction" as a single
piece of material, rather than as various structural elements attached
together. See also In re Morris, 127 F.3d 1048, 1055-56 (Fed. Cir. 1997)
("[O]ur predecessor court had on several prior occasions interpreted
'integral' to cover more tha[n] a unitary construction .... This court has
also endorsed that interpretation. See, e.g., Advanced Cardiovascular Sys. v.
Scimed Life Sys., 887 F.2d 1070, 1074, 12 USPQ2d 1539, 1542 (Fed. Cir.
1989) (nothing of record limited 'integral' to mean 'of one-piece'
construction)."
As to the statement at page 4, lines 21 to 22 of the Specification
(relied on by the Examiner in support of the broader proposed construction
(see Non-Final Act. 17 (dated Mar. 15, 2013); Ans. 18)), we agree with
Appellant that the meaning of this language is "that the connection of the
periphery of the compartment wall to the internal wall makes the molding of
a one piece or unitary closure possible." Br. 6. In other words, we view the
phrase "connected to" (in both the claims and the Specification) to refer to
(1) at least two structural elements of "unitary construction" and (2) at least
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two structural elements not of "unitary construction" but attached together.
A comparison of claims 49 and 50 supports this view of "connected to."
As to the dictionary definition relied on by the Examiner (Ans. 18),
we agree with Appellant (Br. 7) that a definition including various "units"
attached together is broader than and thus contradicts with the intrinsic
evidence here. See Phillips v. AWH Corp., 415 F.3d 1303, 1322-23 (Fed.
Cir. 2005) (en bane) (stating that judges may "'rely on dictionary definitions
when construing claim terms, so long as the dictionary definition does not
contradict any definition found in or ascertained by a reading of the patent
documents'") (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576,
1584 n.6 (Fed. Cir. 1996)); see also Phillips, 415 F.3d at 1317 ("[W]hile
extrinsic evidence 'can shed useful light on the relevant art,' we have
explained that it is 'less significant than the intrinsic record in determining
"the legally operative meaning of claim language.""') (quoting C.R. Bard,
Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004)).
Because the Examiner has not shown that Sergio satisfies claims 1, 9,
or 50 under the proper construction of "unitary construction," we do not
sustain the rejection of those claims, nor the rejection of claims 2, 4, 11, 19,
20, 24, 25, 30, 31, and 35, as anticipated by Sergio.
B. Independent Claim 49
Independent claim 49 recites, inter alia, a "closure" but does not
recite that the "closure" is of "unitary construction." Claims App. 3--4. In
rejecting claim 49, the Examiner made various findings and included an
annotated version of Figure 5 of Sergio. See Non-Final Act. 2-3; see also
Ans. 19 (additional annotated version of Figure 5 of Sergio).
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First, Appellant argues that "the features labeled 'External wall' and
'Internal wall' in annotated Figure 5 are not connected (since they are
separate parts)." Appeal Br. 7 (referring to Non-Final Act. 3). 1 The
Examiner responds that, as shown in the additional annotated version of
Figure 5 of Sergio (Ans. 19), "Sergio's internal and external walls are
connected by the annular land, as [A ]ppellant does not claim the internal and
external walls being made of one piece." Ans. 18.
For the reasons discussed above (see supra Rejection 1, §A), we do
not limit "connected to" in the limitation at issue to structural elements of
"unitary construction." Applying this construction, we see no error in the
Examiner's findings. See Non-Final Act. 2; Ans. 18-19; see also Spec. p. 7,
11. 26-27 ("The cap external wall 12 is connected to a cap internal wall 20
via an annular land 22.").
Second, Appellant argues that "[t]here is no rim-receiving channel
between the external and external walls in Sergio - the 'channel' is the
internal wall." Br. 7.2 Appellant has not persuasively shown, however, that
the "Channel" identified by the Examiner in Figure AA (Ans. 19}-formed
by the identified "External Wall," "Annular Land," and "Internal Wall"-
does not satisfy the limitation at issue. See Ans. 18 (stating that "there is
also a rim receiving channel between the internal and external walls").
Third, Appellant contends that "Sergio's 'compartment' is not located
within a recess within the closure - it is a separate capsule mounted below
1 Claim 49 recites "an external peripheral wall that is connected to an
internal wall." Claims App. 3.
2 Claim 49 recites "an internal wall that is inset from and that faces
and is surrounded by the external wall to form a channel therebetween."
Claims App. 3.
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the closure." Br. 7. We are not apprised of error because this argument is
not commensurate in scope with the claim language. In re Self, 671 F.2d
1344, 1348 (CCPA 1982) (rejecting arguments "not based on limitations
appearing in the claims"). The limitation at issue recites "a compartment in
which material can be positioned, the compartment comprising a wall that is
located within a recess defined in the closure." Claims App. 3. Thus, the
limitation does not require the entire "compartment"-but rather, a "wall" of
the "compartment"-to be located "within a recess defined in the closure."
Id.; see also Br. 2 (discussing a similar limitation in the "Summary of the
Claimed Subject Matter" and noting "a recess in which the compartment
wall 29/29' is located"); Br. 4 ("Independent claim 49 is directed to a
container with a closure as in claim 1. ").
Fourth, Appellant states that "[t]he periphery of Sergio's compartment
wall is not connected to the internal wall and the internal wall is not the
sidewall of the compartment." Br. 7. 3 As to the first part of the argument,
Appellant merely recites the language of the claim and asserts that the prior
art does not disclose that limitation. See 37 C.F.R. § 41.37(c)(l)(iv) ("A
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim."); see also In
re Lovin, 652 F.3d 1349, 1356-57 (Fed. Cir. 2011). As to the second part of
the argument, we agree with the Examiner that claim 49 does not recite that
the internal wall "is" the side wall of the compartment. Ans. 19. Instead,
the claim recites that "the internal wall forms a side wall of the
3 Claim 49 recites "wherein a periphery of the compartment wall is
connected to the internal wall such that the internal wall forms a side wall of
the compartment." Claims App. 3.
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compartment." Claims App. 3; see also Ans. 19. Based on Appellant's
discussion of the same limitation in claim 1, we construe "forms" in the
limitation at issue as "is connected to" rather than "is." See Br. 2 (stating
that "[t]he periphery of compartment wall 29/29' is connected to internal
wall 20 so that internal wall 20 forms a side wall of the compartment" and
showing a schematic representation of the claimed closure). Thus, we are
not apprised of error based on this argument. See In re Self, 671 F .2d at
1348.
Fifth, Appellant contends that "Sergio's compartment wall does not
compr[]ise a first region surrounded by a second bellows-like region to
facilitate its displacement to release material in the compartment. Rather,
material is released by puncturing capsule 104." Br. 7.4 The Examiner
responds that "the first region of the compartment wall 110, as it is the top
wall of the compartment, is surrounded by the second bellows like region,
102, as shown in Fig AA." Ans. 18-19. We agree with the Examiner
regarding the structural requirements in the limitation at issue. Further, we
see no error in the Examiner's finding that the identified structures are
"adapted to facilitate displacement of the first region from a first position to
a second position to cause the material to be released from the compartment
into the container," as recited in claim 49. See Non-Final Act. 3 (citing
Sergio, col. 13, 11. 1-8 and 26-35).
4 Claim 49 recites "the compartment wall comprising a first region
that is surrounded by a second bellows-like region adapted to facilitate
displacement of the first region from a first position to a second position to
cause the material to be released from the compartment into the container."
Claims App. 4.
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For the reasons set forth above, we sustain the decision to reject
independent claim 49 as anticipated by Sergio.
Rejection 2-The rejection of claims 1, 2, 4, 9, 11, 19, 20, 23, 24, 25,
28, 29, 30, 35, 36, 49, and 50 as anticipated by Schwartzman
In rejecting claims 1, 9, 49, and 50, the Examiner made various
findings related to the embodiment in Figure 9 of Schwartzman. See Non-
Final Act. 5---6 (claims 1, 49, and 50), 7-8 (claim 9).
A. "Unitary Construction"
Appellant argues that "Schwartzman is directed to a puncture release
mixing assembly that includes a number of separate parts" including, "as
illustrated by Figure 9 cited in the current Office Action, retainer ring 314,
sealing means 338 and cap 350." Br. 8. Thus, Appellant contends that, "for
the reasons explained above [with regard to Sergio], the mixing assembly [in
Schwartzman] is not unitary." Id. The Examiner relies on the same
proposed construction of "unitary construction." Compare Ans. 20
(Schwartzman) with, id. at 18 (Sergio). The Examiner does not take the
position that the structures identified as the recited closure in claims 1, 9,
and 50 are of a single piece of material.
As to claims 1, 49, and 50, we adopt as our own the Examiner's
findings regarding Schwartzman (Non-Final Act. 5---6) with certain
modifications as discussed below. First, as the "external peripheral wall,"
recited in claims 1 and 49, we identify fitting 318 in Figure 9, rather than the
"periphery of external wall 310." Id. at 5. Second, although the Rejection
states "the compartment comprised by wall 330, bellows region 326, and
retainer ring 314, 340, and bottom wall 342" (Non-Final Act. 5), we modify
those findings as follows: the compartment comprising a wall 330, with the
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remaining aspects of the compartment defined by, but not including,
applicator head 326, bellows 324, projecting portion 315, and bottom 342 (in
its location in Figure 9). Third, although the rejection identifies applicator
310 as the recited "closure" (Non-Final Act. 5), we modify that to instead
identify: fitting 318, projecting portion 315, overlying portion 316,
applicator head 326, bellows 324, outer surface 330, and stem 332. As to
claim 9, we adopt as our own the Examiner's findings (Non-Final Act. 7-8)
with the same modifications set forth above.
As modified, we find that the identified closure is of "unitary
construction," as construed above and as required by claims 1, 9, and 50. As
shown by Figure 9 (including the hatching) and the related description, the
structures identified as the recited "closure" above are of a single piece of
material. See Schwartzman, col. 4, 11. 32-71, Fig. 9; see also 37 C.F.R.
§ 1.84 ("Hatching must be used to indicate section portions of an object ....
The various parts of a cross section of the same item should be hatched in
the same manner .... ").
We tum now to Appellant's arguments. In the Rejection, as modified,
neither sealing means 338 nor cap 350 are structural elements of the recited
"closure." Thus, that they are "separate parts" (Br. 8) does not undermine
the "unitary construction" of the identified "closure." As to retainer ring
314, that structure includes projecting portion 315 (Schwartzman, col. 4, 11.
35-37}-a part of the identified "closure." Thus, Appellant has not shown
that retainer ring 314 is a different piece of material than the identified
"closure."
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B. Allegedly Missing "Essential Structural Features"5
First, Appellant argues that "[c]laims 1, 9 and 49 require that the
periphery of the compartment wall be connected to the internal wall so that
the internal wall is the side wall of the compartment." Br. 8. 6 According to
Appellant, "'internal wall' 315 is not the sidewall of the material-containing
compartment," but rather, "material 8 (referred to in the specification as 'B ')
is disposed in the separate sealing means 338 that is force fit into 'internal
wall' 315 and side walls 340 of sealing means 338 comprise the side wall of
Schwartzman 's material-holding compartment." Id.
We are not apprised of error based on this argument. For the reasons
discussed above (see supra, Rejection 1, § B (fourth argument)), we
construe "forms" in the limitations at issue as "is connected to" rather than
"is." Further, as demonstrated by Appellant's schematic (Br. 2), the
"internal wall" need not interface directly with the "compartment" or any
"material" positioned therein. Applying this construction, we see no error in
the Examiner's findings that the identified structures satisfy the limitations
at issue. See Non-Final Act. 5; Ans. 21.
Second, Appellant argues that "alleged compartment wall 330 lies
above the Schwartzman bellows and therefore cannot comprise a first region
surrounded by a second bellows-like region to facilitate its displacement to
release material in the compartment." Br. 9.7 The Examiner responds that
5 See Br. 8 (second heading).
6 Each of claims 1, 9, and 49 recites: "wherein a periphery of the
compartment wall is connected to the internal wall such that the internal wall
forms a side wall of the compartment." Claims App. 1, 3.
7 Claims 1, 9, and 49 recite "the compartment wall comprising a first
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"the compartment wall is placed at the radial center of the bellows like
region" and "[ t ]herefore, the compartment wall is surrounded by the
bellows-like region." Ans. 21.
Based on Appellant's discussion of the same limitation in claim 1, we
construe "surrounded by" in the limitations at issue as "placed at the radial
center of' rather than as proposed by Appellant. See Br. 2 (stating that "the
compartment wall comprises a first region 28 surrounded by a second
bellows-like or stepped region formed by wall 29/29"' and showing a
schematic representation of the claimed closure). Applying this
construction, we see no error in the findings that the identified structures
satisfy the limitations at issue. See Non-Final Act. 6 (claims 1 and 49), 7-8
(claim 9); Ans. 21.
For the reasons discussed above, we sustain the rejection of claims 1,
9, 49, and 50 as anticipated by Schwartzman. Because our fact findings
differ from those of the Examiner, we designate our affirmance as to those
claims as a new ground of rejection under 37 C.F.R. § 41.50(b) to provide
Appellant with a full and fair opportunity to respond to the Rejection as
modified. Because Appellant does not separately argue the remaining
claims in this Rejection, we also sustain the rejection of those claims.
region that is surrounded by a second bellows-like region." Claims App. 1,
2, 4.
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Rejection 3 -The rejection of claims 1, 4, 9, 11, 19, 20,
23, 24, 25, 49, and 50 as anticipated by Scudder
A. Independent Claims 1 and 9 (and Claims
4, 11, 19, 20, 23, 24, 25, and 50)
Appellant argues that the Examiner "characterizes module 376 [in
Scudder] as a closure" and that "[m]odule 376 comprises at least four
separate parts ... and therefore is not unitary for the reasons already
disclosed above." Br. 9. The Examiner relies on the same claim
construction position as discussed above (see supra Rejection 1, §A) stating
that "Scudder does in[] fact disclose the closure being of unitary construction
as it is not required that the unit be made of one piece." Ans. 22.
Because the Examiner has not shown that Scudder satisfies claims 1,
9, or 50 when applying the proper construction of "unitary construction" as
discussed above, we do not sustain the rejection of those claims, nor the
rejection of claims 4, 11, 19, 20, 23, 24, and 25, as anticipated by Scudder.
B. Independent Claim 49
In rejecting claim 49, the Examiner made various findings and
included an annotated version of Figure 17 of Scudder. See Non-Final Act.
8-10; see also Ans. 24 (additional annotated version of Figure 17).
First, Appellant contends that Scudder "discloses a thermic module
and not a closure for a container and so one of ordinary skill in the closure
art would not look to this reference." Br. 9. Here, Appellant recites the
language of the claim and asserts that the prior art does not disclose that
limitation but does not explain why. See 37 C.F.R. § 41.37(c)(l)(iv); see
also Lovin, 652 F.3d at 1356-57. Further, "the question whether a reference
is analogous art is irrelevant to whether that reference anticipates." In re
Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997).
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Second, Appellant argues that "the alleged 'external wall' 408 (which
actually is a crimp ring) is not connected to 'internal wall' 394. Rather, wall
or ring 408 is crimped onto the outer surface of container body 372." Br. 9. 8
The Examiner responds that, as shown in the additional annotated version of
Figure 17 of Scudder (Ans. 24), "the internal and external walls are in[] fact
connected. Appellant does not claim that they are made of one piece." Ans.
23. As discussed above (see supra Rejection 1, § B (first argument)), we do
not limit "connected to" in the limitation at issue to structural elements of
"unitary construction." Applying this construction, we see no error in the
Examiner's findings. See Non-Final Act. 8; Ans. 23-24.
Third, Appellant argues that "[t]he cylindrical portion of the module
cap 392 of the thermic module, which the Office Action characterizes as a
compartment, is not located within a recess in the closure. It is the
externally located bottom of the asserted 'closure."' Br. 9. For the same
reasons discussed above (see supra Rejection 1, § B (third argument)), we
are not apprised of error based on this argument because it is not
commensurate in scope with the claim language.
Fourth, Appellant argues that "it cannot reasonably be argued that the
periphery of 'internal wall' 3 94 is the side wall of the compartment"
"because cap flange 394 lies well above and outside of 'compartment' 392."
Br. 9.9 We are not apprised of error based on this argument. For the reasons
discussed above (see supra, Rejection 1, § B (fourth argument)), we
8 Claim 49 recites "an external peripheral wall that is connected to an
internal wall." Claims App. 3.
9 Claim 49 recites "wherein a periphery of the compartment wall is
connected to the internal wall such that the internal wall forms a side wall of
the compartment." Claims App. 3.
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construe "forms" in the limitation at issue as "is connected to" rather than
"is." In addition, contrary to Appellant's argument, the second part of the
limitation at issue recites that "the internal wall forms a side wall of the
compartment" not that the "periphery" of the internal wall forms (or is) a
side wall of the compartment. Thus, we are not apprised of error based on
this argument. See In re Self, 671 F.2d at 1348.
For the reasons set forth above, we sustain the decision to reject
independent claim 49 as anticipated by Scudder.
Rejections 4 and 8-the rejections of claims 26, 27, and 37
as unpatentable over Schwartzman and other prior art
Appellant does not separately argue claims 26, 27, or 37 (Br. 7-9),
which depend from claim 1. Thus, for the reasons discussed above (see
supra Rejection 2), we sustain the rejection of claims 26, 27, and 37.
Rejections 5-7-the rejections of claims 31-34 as
unpatentable over Scudder and other prior art
Claims 31-34 depend from claim 1. Claims App. 3. The Examiner's
reliance on Plester, Shastal, and Conard does not remedy the deficiencies in
the teachings of Scudder discussed above (see supra Rejection 3). Thus, for
the reasons discussed above, we do not sustain the rejection of claims 31-34.
DECISION
We (1) REVERSE the decision to reject claims 1, 2, 4, 9, 11, 19, 20,
24, 25, 30, 31, 35, and 50 as anticipated by Sergio; (2) AFFIRM the decision
to reject claim 49 as anticipated by Sergio; (3) AFFIRM the decision to
reject claims 1, 2, 4, 9, 11, 19, 20, 23, 24, 25, 28, 29, 30, 35, 36, 49, and 50
as anticipated by Schwartzman, designating our affirmance as to claims 1, 9,
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49, and 50 as a NEW GROUND OF REJECTION under 37 C.F.R.
§ 41.50(b); 10 (4) REVERSE the decision to reject claims 1, 4, 9, 11, 19, 20,
23, 24, 25, and 50 as anticipated by Scudder; (5) AFFIRM the decision to
reject claim 49 as anticipated by Scudder; (6) AFFIRM the decision to reject
claims 26, 27, and 37 as unpatentable over Schwartzman and other prior art;
and (7) REVERSE the decision to reject claims 31-34 as unpatentable over
Scudder and other prior art. 11
FINALITY OF DECISION
Regarding the affirmed rejections, 37 C.F.R. § 41.52(a)(l) provides
that, "[A ]ppellant 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 a new ground of rejection pursuant to
37 C.F.R. § 41.50(b), which provides that "new ground[s] of rejection
pursuant to this paragraph shall not be considered final for judicial review."
That section also provides that Appellant, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the
10 The exercise of authority under 3 7 C.F .R. § 41. 50(b) to enter a new
ground of rejection is discretionary. As such, with respect to the remaining
pending claims in the present application, no inference should be drawn
from a failure to exercise that discretion. See MPEP § 1213. 02 (9th ed.,
Rev. 07.2015, Nov. 2015).
11 See37 C.F.R. § 41.50(a)(l) ("The affirmance of the rejection ofa
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.").
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Appeal2014-003573
Application 12/094,262
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 ....
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Appeal2014-003573
Application 12/094,262
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record.
37 C.F.R. § 41.50(b).
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(l), in order to preserve the right to seek
review under 35 U.S.C. §§ 141or145 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.
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)(l )(iv).
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
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