15007780 - (D) (P.T.A.B. Mar. 30, 2020)

PaperBax, LLC

Patent Trials and Appeals BoardMar 30, 2020

15007780 - (D) (P.T.A.B. Mar. 30, 2020)

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. 15/007,780 01/27/2016 Charanne Rigsby Pittman AMK-6225-4 9794 23117 7590 03/30/2020 NIXON & VANDERHYE, PC 901 NORTH GLEBE ROAD, 11TH FLOOR ARLINGTON, VA 22203 EXAMINER ISLAM, SYED A ART UNIT PAPER NUMBER 3636 NOTIFICATION DATE DELIVERY MODE 03/30/2020 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): PTOMAIL@nixonvan.com pair_nixon@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHARANNE RIGSBY PITTMAN Appeal 2019-005088 Application 15/007,780 Technology Center 3600 Before JILL D. HILL, LEE L. STEPINA, and ARTHUR M. PESLAK, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 2, and 4–18. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION under 37 C.F.R. § 41.50(b). 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as PaperBax, LLC. Appeal Br. 3. Appeal 2019-005088 Application 15/007,780 2 CLAIMED SUBJECT MATTER Appellant’s invention relates to a temporary seat cover apparatus. Claim 1, reproduced below with emphasis added, is illustrative of the claimed subject matter: 1. A seat back cover comprising: a first side sized larger than a seat back over which the seat back cover is intended to mount; and a second side connected with the first side and sized larger than the seat back over which the seat back cover is intended to mount, wherein the first side being connected to the second side defines a bag assembly having an open end, closed sides, a closed end and an interior space, wherein the interior space is sized to fit over the seat back, and wherein the bag assembly is formed entirely of paper. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Menhall US 1,985,222 Dec. 18, 1934 Weinstein US 3,479,085 Nov. 18, 1969 Gross US 5,121,938 June 16, 1992 Solomon US 2003/0127889 A1 July 10, 2003 Zaharakos US 2006/0103196 A1 May 18, 2006 Chico US 2009/0284056 A1 Nov. 19, 2009 Barnett EP 0 457 992 A1 Nov. 27, 1991 REJECTIONS I. Claims 1, 2, and 4–6 are rejected under 35 U.S.C. § 103 as unpatentable over Solomon and Menhall. Appeal 2019-005088 Application 15/007,780 3 II. Claims 7 and 8 are rejected under 35 U.S.C. § 103 as unpatentable over Solomon, Menhall, Barnett, and Gross. III. Claim 9 is rejected under 35 U.S.C. § 103 as unpatentable over Solomon, Menhall, and Weinstein. IV. Claim 10 is rejected under 35 U.S.C. § 103 as unpatentable over Solomon, Menhall, Weinstein, and Chico. V. Claim 11 is rejected under 35 U.S.C. § 103 as unpatentable over Solomon, Menhall, and Chico. VI. Claims 12–14 are rejected under 35 U.S.C. § 103 as unpatentable over Zaharakos, Solomon, and Menhall. VII. Claims 16 and 17 are rejected under 35 U.S.C. § 103 as unpatentable over Zaharakos, Solomon, Menhall, Barnett, and Gross. VIII. Claims 15 and 18 are rejected under 35 U.S.C. § 103 as unpatentable over Zaharakos, Solomon, Menhall, Weinstein, and Chico. OPINION NEW GROUND of REJECTION, Claims 1, 2, and 4–18 For the reasons discussed below, we determine that claims 1, 2, and 4–18 are indefinite. Each of independent claims 1, 7, and 12 recites, inter alia, “a first side sized larger than a seat back over which the seat back cover is intended to mount.” Appeal Br. 15–16 (Claims App.). Thus, the claimed seat back cover is sized relative to a seat back over which the seat back cover is intended to mount. The seat back itself is not required by the claim. In determining whether a relative limitation is definite, the Federal Circuit has found that a claimed limitation is definite if the limitation makes a comparison to information that “could be easily obtained.” Orthokinetics, Appeal 2019-005088 Application 15/007,780 4 Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). In Orthokinetics, “the dimensions [permitting insertion of a wheelchair front leg portion through the ‘space between the doorframe of an automobile and one of the seats thereof’] could be easily obtained.” Orthokinetics, 806 F.2d at 1575–76. Seat shapes and sizes vary considerably with an infinite number of permutations, and a cover sized to mount one seat might be too small to fit another seat. Unlike the specific dimensions in Orthokinetics, which were based on a particular measurable characteristic of automobiles, a large, yet definable group of objects, the instant invention is not defined in terms of interaction with a particular seat. There is no per se rule prohibiting defining claimed subject matter in terms of its interaction with some unclaimed subject matter. However, limitations defining unclaimed subject matter interacted with, like claim limitations generally, must make it clear to the potential infringer what the claims encompass. Turning first to the Specification, we note that the Specification discloses that “bag 1 is sized to fit over the seat back 3 of a standard folding chair 4.” Spec. ¶ 27. Claims 1, 7, and 12 do not, however, recite any limitation relating to the type of seat, let alone whether the seat is a chair, or the size and shape of the seat. Care must be taken not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. See SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (citation omitted) (“Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim. For example, a particular embodiment appearing in the written description may not be Appeal 2019-005088 Application 15/007,780 5 read into a claim when the claim language is broader than the embodiment.”). The claim language is broader than the single disclosed embodiment. We decline to import the limitations of paragraph 27 of the Specification into the claims. As to the claims themselves, with regard to the [35 U.S.C. § 112(b)] requirement for “‘particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention,”’ it has been stated that the “essence of that requirement is that the language of the claims must make it clear what subject matter they encompass.” In re Hammack, 427 F.2d 1378, 1381–82 (CCPA 1970). This has been frequently stated in a shortened form as a requirement that the claims set forth the “metes and bounds” of their coverage. See, e.g., In re Venezia, 530 F.2d 956, 958 (CCPA 1976); In re Goffe, 526 F.2d 1393, 1397 (CCPA 1975); In re Watson, 517 F.2d 465, 477 (CCPA 1975); In re Knowlton, 481 F.2d 1357, 1366 (CCPA 1973). This requirement is normally viewed from the perspective of a potential infringer, “so that they may more readily and accurately determine the boundaries of protection involved and evaluate the possibility of infringement and dominance.” Hammack, 427 F.2d at 1382. In the present situation, independent claims 1, 7, and 12 do not permit artisans to ascertain whether a particular device infringes or does not infringe because (i) the claims require interpretation of a potential competitor’s subjective intention,2 and (ii) even assuming that no knowledge 2 For example, a person of ordinary skill in the art may manufacture a bag physically identical to one upon which claim 1 reads, except the person of ordinary skill in the art may have no intention of the bag assembly ever being mounted on a seat back. It is unclear whether such a bag assembly would infringe claim 1. Appeal 2019-005088 Application 15/007,780 6 of a potential infringer’s intention is a required by the claims, the potential infringer would need to make separate infringement determinations for every size and shape of seat.3 “When a proposed construction requires that an artisan make a separate infringement determination for every set of circumstances in which the composition may be used, and when such determinations are likely to result in differing outcomes (sometimes infringing and sometimes not), that construction is likely to be indefinite.” Halliburton Energy Servs., Inc. v M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008). Accordingly, independent claims 1, 7, and 12 are unclear for these reasons. Thus, we conclude that claims 1, 7, and 12, as well as their respective dependent claims, fail to comply with the requirements of 35 U.S.C. § 112(b). Therefore, pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection against claims 1, 2, and 4–18 under 35 U.S.C. § 112(b). Rejections I–VIII: Obviousness Having determined that claims 1, 2, and 4–18 are indefinite, for the reasons discussed above in the new ground of rejection, we do not sustain the Examiner’s rejections of claims 1, 2, and 4–18 under 35 U.S.C. § 103 because to do so would require speculation as to the scope of these claims. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) (holding that the Board erred in affirming a rejection of indefinite claims under 35 U.S.C. § 103(a), 3 If the claims do not require any knowledge of subjective intent, then even a bag assembly that does not meet the requirements of the claims because it has no “first side sized larger than a seat back” may infringe at some point in the future when a chair with a smaller seat back is made. Appeal 2019-005088 Application 15/007,780 7 because the rejection was based on speculative assumptions as to the meaning of the claims). It should be understood, however, that our decision in this regard is based solely on the indefiniteness of the claimed subject matter, and does not reflect on the adequacy of the prior art evidence applied in support of the rejection. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1, 2, 4–6 103 Solomon, Menhall 1, 2, 4–6 7, 8 103 Solomon, Menhall, Barnett, Gross 7, 8 9 103 Solomon, Menhall, Weinstein 9 10 103 Solomon, Menhall, Weinstein, Chico 10 11 103 Solomon, Menhall, Chico 11 12–14 103 Zaharakos, Solomon, Menhall 12–14 16, 17 103 Zaharakos, Solomon, Menhall, Barnett, Gross 16, 17 15, 18 103 Zaharakos, Solomon, Menhall, Weinstein, Chico 15, 18 1, 2, 4– 18 112(b) Indefiniteness 1, 2, 4– 18 Overall Outcome 1, 2, 4–18 Appeal 2019-005088 Application 15/007,780 8 TIME PERIOD FOR RESPONSE 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 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. REVERSED; 37 C.F.R. § 41.50(b)