Ex Parte Wiest

Patent Trial and Appeal Board

Nov 22, 2017

13512252 (P.T.A.B. Nov. 22, 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.
13/512,252 05/25/2012 Florian Wiest ABAKP0212WOUS 6007
43076 7590 11/27/2017
MARK D. SARALINO (GENERAL)
RENNER, OTTO, BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE, NINETEENTH FLOOR
EXAMINER
ACKUN, JACOB K
CLEVELAND, OH 44115-2191 ART UNIT PAPER NUMBER
3728
NOTIFICATION DATE DELIVERY MODE
11/27/2017 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):
ipdocket @ rennerotto. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FLORIAN WIEST
Appeal 2017-002074
Application 13/512,2521
Technology Center 3700
Before PHILIP J. HOFFMANN, BRUCE T. WIEDER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 and 21. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
According to Appellant, “[t]he invention relates to a packaging[,]
which performs a passive flight motion, in particular a gliding and/or
autorotation motion, during free fall.” Spec. 1,11. 3^4. Below, we
reproduce claim 1 as illustrative of the appealed claims.
1 According to Appellant, “the real party in interest... is FLORIAN
WIEST.” Appeal Br. 3.
Appeal 2017-002074
Application 13/512,252
1. A packaging which performs an autorotation
motion during free fall, the packaging comprising:
at least one rotor blade; and
at least one accommodating space configured for an object
to be inserted therein for packaging, wherein with the weight GA
of the accommodating space when the object is inserted therein
being higher than the weight GR of the rotor blade, as a result of
the autorotation motion, the object along with the packing
enclosing it slowly falls to the ground while rotating and is
substantially protected from damage, the autorotation motion
functioning to reduce a speed at which the packaging hits the
ground.
REJECTIONS AND PRIOR ART
The Examiner rejects claims 1 and 21 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
The Examiner rejects claims 1 and 21 under 35 U.S.C. § 112, second
paragraph, as indefinite for failing to particularly point out and distinctly
claim the subject matter Appellant regards as the invention.
The Examiner rejects claims 1 and 21 under 35 U.S.C. § 103(a) as
unpatentable over either Nourse (US 3,129,740, iss. Apr. 21, 1964),
Woodford (US 5,779,052, iss. July 14, 1998), VanNatter (US 5,553,570, iss.
Sept. 10, 1996), or Schultz (US 2,454,616, iss. Nov. 23, 1948).
ANALYSIS
Written Description Rejection
We are persuaded by Appellant that one of ordinary skill would
understand that the Specification provides support for the recitation of
“autorotation” motion as recited in each of claims 1 and 21, as “rotation of
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Application 13/512,252
an object caused by the flow of moving air or water around the shape of the
object.” Appeal Br. 12 (citation omitted). Support is provided by
Appellant’s Figure 2 and Appellant’s Specification as a whole.
We are also persuaded by Appellant that “the instant application
sufficiently describes the structural configuration of the packaging, including
the rotor blade. See [Spec.] pp. 5 and 8.” Reply Br. 10.
The Examiner further rejects the claims based on the following
reasoning:
The [Specification refers to the weight of the accommodating
space along with the inserted object being higher than the weight
of the rotor blade sticking out sideways from the accommodating
space. See [Specification page 3 [,] last paragraph. ... On the
other hand the problem is that the specific claim limitations as
the claims are drafted, suggests that what may be encompassed
in the claims is that the weight of the accommodating space only
(no object), is greater than that of the rotor blade because the
object was inserted into the accommodating space and because
of the autorotation motion. See the manner in which claim 1 is
drafted.
Answer 8—9. We disagree, however. Both claims 1 and 21 recite the weight
of the space and the inserted object, which, the Examiner finds, the
Specification supports. In particular, claim 1 recites “at least one
accommodating space configured for an object to be inserted therein for
packaging, wherein with the weight... of the accommodating space when
the object is inserted therein being higher than the weight... of the rotor
blade” (emphasis added), while claim 21 recites “at least one
accommodating space having the object therein, wherein the weight... of
the accommodating space with the object inserted therein is higher than the
weight... of the rotor blade” (emphasis added).
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Application 13/512,252
Thus, based on the foregoing, we do not sustain the rejection under
35 U.S.C. § 112, first paragraph, of claim 1 or claim 21.
Indefiniteness Rejection
The Examiner rejects claims 1 and 21 based on the following
reasoning:
The claims are indefinite because the claim limitations ... cannot
be properly interpreted as a result of the features in question not
being adequately described in the [Specification. For example
only, the lack of adequate written description for the term
“autorotation motion” means that the record is not clear
regarding the specific motion intended. In another example it is
not clear how to interpret “rotor blade.” The claims are therefore
indefinite.
Answer 9. Inasmuch as we disagree with the Examiner that the
Specification lacks written description support, we disagree that the claims
are indefinite for this reason.
The Examiner also rejects claim 1 because, although the claim recites
“at least one accommodating space configured for an object to be inserted
therein for packaging” (emphasis added), the claim later appears to recite
that the object is, in fact, inserted into the space—i.e., claim 1 recites that
“the weight... of the accommodating space when the object is inserted
therein [is] higher than the weight... of the rotor blade.” See Answer 9—10.
Appellant argues that the rejection is in error because the Examiner “refused
to enter an amendment that would have overcome the . . . rejection, [so] the
Examiner cannot now fault. . . [Appellant for his failure to enter such
amendment.” Reply Br. 12. This argument is not persuasive, and, thus,
although we do not sustain claim 21’s rejection under 35 U.S.C. § 112,
second paragraph, we do sustain the rejection of claim 1.
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Application 13/512,252
Obviousness rejections
With respect to the obviousness rejection of claim 1, because we
determine that language in the claim renders the claim indefinite, we pro
forma reverse the rejection of claim 1, as an analysis would be based on a
speculative interpretation. See In re Wilson, 424 F.2d 1382, 1385
(CCPA 1970); In re Steele, 305 F.2d 859, 862-63 (CCPA 1962).
With respect to claim 21, the claim recites the following:
at least one accommodating space having the object therein,
wherein the weight GA of the accommodating space with the
object inserted therein is higher than the weight GR of the rotor
blade, and as a result of the autorotation motion, the object along
with the packing enclosing it slowly falls to the ground while
rotating and is substantially protected from damage, the
autorotation motion functioning to reduce a speed at which the
packaging hits the ground.
Appeal Br., Claims App. Appellant argues that “[njone of the prior art
performs the autorotation motion recited in claim[ ] ... 21.” Reply Br. 14.
Based on our review, the Examiner does not support adequately a finding
that any of the references discloses autorotation, as claimed, or that it would
have been obvious to modify any of the references to provide the claimed
autorotation.
For example, although the Examiner references Nourse’s column 2 as
teaching autorotation (Answer 11), the cited portion of Nourse states, in
relevant part, only that the “[f]in . . . assists in stabilizing the container and
to a lesser extent retards the free fall speed” (Nourse col. 2,11. 43 44).
Notwithstanding the Examiner’s statements to the contrary (Answer 11), it is
not clear that Nourse is describing autorotation, or any rotation at all, as
opposed to, for example, describing only freefall. Further, it is not clear
from the record whether any of the other references disclose autorotation.
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Thus, the Examiner’s determination that because “all of the features of the
claims appear to be per se conventional, it would have been obvious to
provide the apparatus in any one of the . . . references with all of the
elements of the claims” (Non-Final Office Action mailed Aug. 19, 2015, 15)
does not amount to an adequate reason with rational underpinnings,
sufficient to support the conclusion of obviousness. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) (“[R]ejections on obviousness cannot
be sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.”). Therefore, we do not sustain any of the
rejections under 35 U.S.C. § 103(a).
DECISION
We REVERSE the rejection of claims 1 and 21 under 35 U.S.C.
§112, first paragraph.
We AFFIRM the rejection of claim 1 under 35 U.S.C. § 112, second
paragraph.
We REVERSE the rejection of claim 21 under 35 U.S.C. § 112,
second paragraph.
We pro forma REVERSE the rejection of claim 1 under 35 U.S.C.
§ 103(a).
We REVERSE the rejection of claim 21 under 35 U.S.C. § 103(a).
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No more time for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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