Ex Parte GarasiDownload PDFPatent Trials and Appeals BoardJun 18, 201912675865 - (D) (P.T.A.B. Jun. 18, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/675,865 03/01/2010 29689 7590 06/20/2019 DAVID A. GUERRA INTERNATIONAL PATENT GROUP, LLC Suite 700 1816 Crowchild Trail N.W. CALGARY, AB T2M 3Y7 CANADA FIRST NAMED INVENTOR Giovanni Garasi 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. AP272-10 7485 EXAMINER MATHEW, FENN C ART UNIT PAPER NUMBER 3733 NOTIFICATION DATE DELIVERY MODE 06/20/2019 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): davidguerra@internationalpatentgroup.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GIOVANNI GARASI Appeal2018-008668 Application 12/675,865 Technology Center 3700 Before: CHARLES N. GREENHUT, MICHAEL J. FITZPATRICK, and WILLIAM A. CAPP, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims 14, 15, 17-22, 31, and 32. We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter new grounds of rejection. Appeal2018-008668 Application 12/675,865 CLAIMED SUBJECT MATTER The claims are directed to hygienic protection for beverages' containers. Claim 14, reproduced below, is the sole independent claim before us: Claim 14: A protection device for beverages' containers, said protection device comprising: at least an annular collar configured to define an annular site, said annular collar being removably fitted by means of said annular site on an upper edge of a container to protect it from external contamination, said annular collar comprising: a lateral external wall tracing and contacting an external face of a side wall of said container for a predetermined portion of its entire height; a lateral internal wall tracing and contacting an internal face of said side wall of said container for a predetermined portion of its entire height; and an upper junction base joining said lateral external and internal walls, said upper junction base defining a portion of said annular site, said upper junction base tracing at least approximately a profile of an upper edge of said container with said portion of said annular site removably receiving therein said upper edge, said upper junction base further comprising: a first annular portion projecting from said internal wall upward and projecting toward an outside of said container according to a first convex profile of a predetermined radius RI; a second annular portion projecting from said external wall upward and projecting toward the outside of said container according to a second convex profile of a predetermined radius R2; and a third annular portion being an annular portion junction joining said first and said second annular portions defining said portion of said annular site for said upper edge of said container, said third annular portion having an outermost radial surface radially exterior of said first annular portion and said second annular portion, said outermost radial surface of said third 2 Appeal2018-008668 Application 12/675,865 annular portion being between said first annular portion and said second annular portion; REJECTIONS Claims 14, 15, 17, 18, 31, 32 are rejected under 35 U.S.C. § I02(b) as being anticipated by Ferngren (U.S. 2,099,056 iss. Nov. 16, 1937). Claims 19--21 are rejected under 35 U.S.C. § I03(a) as being unpatentable over Ferngren and Huh (US 3,758,519 iss. Jan. 15, 1974). Claim 22 is rejected under 35 U.S.C. § I03(a) as being unpatentable over Ferngren and Kim, (WIPO Pub. WO 2005/120966 Al pub. Dec. 22, 2005). OPINION All of the Examiner's rejections are predicated on finding in Ferngren, inter alia, structures satisfying the following limitations: and a lateral external wall tracing and contacting an external face of a side wall of said container for a predetermined portion of its entire height a second annular portion projecting from said external wall upward and projecting toward the outside of said container according to a second convex profile of a predetermined radius R2· ' Final Act. 2--4. The Examiner's analysis is reasonable in stating that "although Ferngren's external wall does not trace and contact along the whole surface of the whole wall, it does meet the claim limitation, because it meets the requirement of tracing and contacting at a predetermined portion." Ans. 8. However, this means that, in order to meet the claim language, the Examiner is relying on the portion ofFerngren's skirt 18 contacting the bulging 3 Appeal2018-008668 Application 12/675,865 section 20 of the bottle's lip wall 17 (as seen on the right-hand side of Ferngren Figure 2) as the recited "external wall." See Final Act. 4 (annotating Ferngren Fig. 2). The problem with the Examiner's position is that the Examiner also relies on the lowermost, outwardly flared, portion of Ferngren's skirt 18 as the recited "second annular portion" projecting outward according to "convex profile [] R2." See Final Act. 4 (annotating Ferngren Fig. 2). This results in the "second annular portion" (labeled R2 by the Examiner) being below (as viewed in Figure 2) the structure relied upon for the "external wall." As such, there does not appear to be any way for the "second annular portion" to form part of the recited "upper junction base joining said lateral external and internal walls." There also does not appear to be any way for the "second annular portion" to be 'joining" the structure regarded by the Examiner as the recited "first annular portion" by the structure regarded by the Examiner as the recited "third annular portion" (see Final Act. 4 (annotating Ferngren Fig. 2)), because the structure regarded by the Examiner as the "external wall" is between the structures regarded by the Examiner as the second and third annular portions. As the Examiner has not sufficiently explained how Ferngren satisfies each and every element of claim 14 with the elements being arranged as in the claim, or provided additional evidence or reasoning to account for the differences between the claimed subject matter and Ferngren, the Examiner's rejections cannot stand on the bases set forth by the Examiner. New grounds of rejection under 35 US.C. § 112, second paragraph Based on the preamble of claim 14, "[a] protection device for beverages' containers," one skilled in the art would expect the claim to be 4 Appeal2018-008668 Application 12/675,865 directed to a protection device, in and of itself, and not the combination of the protection device with a container. Such a reading is consistent with the preambles of the dependent claims which refer to "[ t ]he protection device according to claim 14." However, based on various limitations appearing in the body of the claim, claim 14 seems to require a positive interaction between the protection device and a container in order to fully satisfy the claim language. Some, but not all, examples in claim 14 include: annular collar [ of the protection device] being removably fitted ... on an upper edge of a container[;] a lateral wall [ of the protection device] tracing and contacting an external face of a side wall of said container[;] annular site [ of the protection device] removably receiving therein said upper edge [of the container] [; and] said protection device being removably fitted on said upper edge of said container to protect it from external contamination .... Whatever Appellant intends to claim the preamble and body of the claim should agree with each other. The preamble could indicate the claim is directed to the beverage container and protection device combination or, alternatively, the claim's body could clarify that the container is merely used as a reference 1 to define the subject matter actually claimed. 1 There is nothing wrong, per se, with using unclaimed subject matter as a reference to help define the subject matter claimed. However, where unclaimed subject matter, for example a "container," is recited in an overly broad or unrestricted fashion, it may create indefiniteness issues because it might not sufficiently apprise the potential infringer as to what among a vast and/or unknown collection of unclaimed subject matter should be chosen to analyze the claim. See, e.g., Geneva Pharmaceuticals v. GlaxoSmithKline, 349 F. 3d 1373, 1384 (Fed. Cir. 2003). If Appellant's claim requires only the protection device, a closure would be anticipatory so long as any container matching its profile in the manner recited exists, regardless of whether it is 5 Appeal2018-008668 Application 12/675,865 Dependent claim 17 recites that the "protection device is engagable on said upper edge of said container." This language is consistent with the current preamble of claim 14 but is unclear when read in light of limitations in the body of claim 14 (reproduced above) that seemingly require the protection device to already be engaged with the upper edge of the container. If actual engagement on the container's edge is required, it is unclear what purpose further defining the protection device as engageable with that edge would serve. The claims should be clarified to indicate whether they are directed to just the protection device or the combination of the protection device and a container. In their current form, the claims do not provide sufficient certainty for the potential infringer to evaluate the possibilities of being held liable for direct and/or contributory infringement. "[T]he claims must make it clear what subject matter they encompass." In re Hammack, 427 F.2d 1378, 1382 (CCPA 1970). For these reasons, we reject claim 14 and those claims depending therefrom under 35 U.S.C. § 112, second paragraph, in order to require this ambiguity to be definitively resolved, one way or another, during prosecution. See Ex Parte Miyazaki, 89 USPQ2d 1207, 1211 (BP AI 2008); accord In re Packard, 751 F.3d 1307, (Fed. Cir. 2014); In re Zietz, 893 F. 2d 319, 321 (Fed. Cir. 1989). DECISION The Examiner's rejection is reversed. coupled with that closure. It cannot yet be determined whether Appellant's reference to a container is problematic here because it cannot yet be definitively determine what claim 14 is directed to. This is noted only for the sake of advancing any further prosecution. 6 Appeal2018-008668 Application 12/675,865 Pursuant to 37 C.F.R. § 4I.50(b) we reject claims 14, 15, 17-22, 31, and 32 under 35 U.S.C. § 112, second paragraph, as being indefinite. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 4I.50(b). Section 4I.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. 7 Appeal2018-008668 Application 12/675,865 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). REVERSED; 37 C.F.R. § 4I.50(b) 8 Copy with citationCopy as parenthetical citation