Staley, Nicholas

Patent Trials and Appeals Board

Jan 6, 2020

13820990 - (D) (P.T.A.B. Jan. 6, 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.
13/820,990 03/05/2013 Nicholas Staley STN-1301-US 2240
36088 7590 01/06/2020
KANG LIM
3494 Camino Tassajara #444
Danville, CA 94506
EXAMINER
ALLEN, JEFFREY R
ART UNIT PAPER NUMBER
3733
MAIL DATE DELIVERY MODE
01/06/2020 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NICHOLAS STALEY

Appeal 2019-004752
Application 13/820,990
Technology Center 3700
____________

Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–5, 7, and 12–21. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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
Nicholas Staley. Appeal Br. 3.
Appeal 2019-004752
Application 13/820,990
2
BACKGROUND
The Specification discloses that “[t]he present invention relates to a
storage housing for a waste receptacle and particularly, but not exclusively
to a storage housing for a so-called ‘wheelie bin.’” Spec. 1, ll. 3–4.

ILLUSTRATIVE CLAIM
Independent claim 1 is the only independent claim on appeal and
recites:
1. An assembly comprising a storage housing and a wheeled
waste receptacle contained within the housing, the housing
comprising front, rear and opposite side walls which extend from
a base, and which terminate at an upper periphery of the housing
thereof, at least the front side wall comprising a door which can
be opened and closed relative to the side wall to enable the waste
receptacle to be removably positioned within and removed from
the housing through the front side wall;
the housing further comprising locking means for
releasably locking the door when closed and a lid slidably
mounted with respect to said opposite side walls which is
slidably moveable in a horizontal direction with respect to the
front side wall between a first position in which the lid
substantially closes the housing and a second position in which
the lid substantially opens the housing;
the waste receptacle comprising a hinged cover and the
housing comprising a linkage which is secured at an end opposite
the hinge of the hinged cover and the lid of the housing closest
to the hinge of the hinged cover, wherein the linkage hinges the
cover of the waste receptacle upwardly and forwardly as the lid
is slid horizontally forwardly from said first to said second
position to open the cover of the waste receptacle and to enable
waste to be deposited within the open receptacle, the housing
being arranged to close the cover of the waste receptacle as the
lid is slid horizontally rearwardly from said second to said first
position.
Appeal Br. 18.
Appeal 2019-004752
Application 13/820,990
3
REJECTIONS2
1. The Examiner rejects claims 1–5, 7, and 12–21 under 35 U.S.C. § 112(a)
as failing to comply with the written description requirement.
2. The Examiner rejects claims 1–5, 7, and 12–21 under 35 U.S.C. § 112(b)
as indefinite.
DISCUSSION
Written Description
With respect to claim 1, the Examiner finds that there is insufficient
written description support for “a linkage which is secured at an end
opposite the hinge of the hinged cover and the lid of the housing closest to
the hinge.” Final Act. 3. The Examiner further states that “[i]f the claim
requires that the linkage is attached to the lid closest to the hinge the
limitation is new matter since the original disclosure did not teach this
specific connection location.” Id.
Appellant argues that the Specification
at Figure 2 clearly illustrates a waste bin (element 11) with a
cover (element 23) that is hinged open. A linkage (element 22)
is also clearly illustrated as being connected to the cover by a
clip. This linkage then runs down the top of the waste bin cover
and connects to the sliding lid (element 16) of the housing
(element 10).
Appeal Br. 8. Appellant asserts that text of the Specification provides
further support. Id. citing Spec. 5, ll. 1–7. Appellant asserts that this
evidence provides “explicit disclosure that 1) there is a linkage, 2) it is
coupled to the waste bin cover opposite the hinge, and 3) it couples to the

2 The Examiner has withdrawn the rejections under 35 U.S.C. § 103. See
Ans. 4.
Appeal 2019-004752
Application 13/820,990
4
housing lid at the other end. This includes every element of the newly added
claim language.” Id. at 9. Finally, Appellant asserts that a person of
ordinary skill in the art would understand that the basic functionality of the
device is dependent on the structure as claimed, and thus it is considered
inherently disclosed. Id.
“[T]he test for the sufficiency of the written description ‘is whether
the disclosure of the application relied upon reasonably conveys to those
skilled in the art that the inventor had possession of the claimed subject
matter as of the filing date.’” Vasudevan Software, Inc. v. MicroStrategy,
Inc., 782 F.3d 671, 682 (Fed. Cir. 2015).) “[T]he written description
requirement is not met if the specification merely describes a ‘desired
result.’” Id. The “telling question is whether the specification shows
possession by the inventor” of how this desired result “is achieved.” Id.
at 683.
Here, we agree with the Examiner that the Specification does not
adequately support the limitation at issue. As discussed below, we agree
with the Examiner that the claim language is unclear regarding to what
location of the lid the linkage is attached. Similarly, we find that the
disclosure cited by Appellant also lacks a clear teaching regarding where the
linkage is attached to the lid. Regarding Figure 2, we are not persuaded that
it shows a particular attachment point, as the figure merely depicts the
linkage extending under the lid of the housing. Regarding the cited
paragraph of the Specification, no specific location for attachment of the
linkage to the lid is disclosed. Rather, the Specification states that the tether
“is securable at one end of the lid.” Spec. 5, ll. 1–7; see also id. at 6, ll. 18–
22. Notably, the Specification requires a specific point of attachment of the
linkage to the hinged cover, i.e. opposite the hinge, without further
Appeal 2019-004752
Application 13/820,990
5
specifying the location of the point of attachment to the lid. Id. The
Specification goes on to describe the function of the linkage, but we do not
agree with Appellant that this function necessarily limits the point of
attachment between the lid and linkage to any particular location. Thus, we
determine that the Specification does not reasonably convey that the
inventor was in possession of a linkage with any particular attachment point
to the lid.
Based on the foregoing, we sustain this rejection.
Indefiniteness
The Examiner rejects claim 1 as indefinite based on the recitation
“and the lid of the housing closest to the hinge.” Final Act. 2. The
Examiner finds that “[i]t is unclear if the linkage is attached to this point.”
Id. Appellant does not appear to specifically address the substance of this
rejection in the Appeal Brief. See Appeal Br. 8–9.
We agree with the Examiner that it is unclear from the claim language
to which end of the claimed lid the linkage must be attached. Specifically,
the claim appears to require different locations for the linkage depending on
whether the lid is in the first or second position as claimed. When the lid is
in the first position, i.e., everything is closed, the “end opposite . . . the lid of
the housing closest to the hinge of the hinged cover” would be the end of the
lid closest to the unhinged end of the hinged cover. In contrast, when the lid
is in the second position, i.e. the receptacle is open, the “end opposite . . . the
lid of the housing closest to the hinge of the hinged cover” would be the
other end of the lid. Further, because there is not adequate written
description support for any specific location of the attachment of the tether
to the lid, one of ordinary skill would not be able to understand the scope of
the claim by reference to the Specification.
Appeal 2019-004752
Application 13/820,990
6
Because this limitation is amenable to multiple plausible claim
constructions, the USPTO is justified in requiring the Appellant to more
precisely define the metes and bounds of the claimed invention. See Ex
parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (Precedential).
Accordingly, we sustain this rejection.
CONCLUSION
We AFFIRM the rejections of claims 1–5, 7, and 12–21.
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)(l)(iv).

In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–5, 7, 12–21 112(a) Written
Description
1–5, 7, 12–
21

1–5, 7, 12–21 112(b) Indefiniteness 1–5, 7, 12–
21

Overall
Outcome
1–5, 7, 12–
21

AFFIRMED