Ex Parte HWANG et alDownload PDFPatent Trial and Appeal BoardSep 17, 201814847814 (P.T.A.B. Sep. 17, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/847,814 09/08/2015 Charles HWANG 47058 7590 09/19/2018 Dickinson Wright - BD 1825 Eye St., NW Suite 900 WASHINGTON, DC 20006 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. (P-8860Dl) 66810-1483 2272 EXAMINER COLLADO, CYNTHIA FRANCISCA ART UNIT PAPER NUMBER 3781 NOTIFICATION DATE DELIVERY MODE 09/19/2018 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): DWPatents@dickinsonwright.com ip.docket@bd.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHARLES HWANG, JOSHUA D. HORVATH, CHRISTOPHER SCHLENK, ROMAN TUNKEL, and ZENIA ZA VERI Appeal2017-011564 1 Application 14/847,8142 Technology Center 3700 Before HUBERT C. LORIN, NINA L. MEDLOCK, and BRADLEY B. BAY AT, Administrative Patent Judges. BAY AT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1-9. We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE. 1 Our Decision references Appellants' Appeal Brief ("App. Br.," filed March 22, 2017) and Reply Brief ("Reply Br.," filed September 13, 2017), the Examiner's Answer ("Ans.," mailed July 13, 2017), and Final Office Action ("Final Act.," mailed August 12, 2016). 2 Appellants identify "Becton, Dickinson and Company" as the real party in interest. App. Br. 1. Appeal2017-011564 Application 14/847,814 THE INVENTION Claim 1, the sole independent claim on appeal, is reproduced below with added emphasis, and representative of the claimed subject matter. 1. A shipping container, comprising: a disposal container comprising a first sidewall and a movable portion for adjusting an internal volume of said disposal container; a storage container comprising a bottom wall and a second sidewall defining a first volume for storing a new product and a second volume, said disposal container being disposed within said storage container in said second volume, and an exterior of at least said movable portion of said disposal container further defining said first volume of said storage container; and a lid adapted to be connected to said first sidewall of said disposal container and to said second sidewall of said storage container, said lid further comprising at least one opening for receiving the used product into said internal volume of said disposal container. App. Br. 13 (Claims Appendix.). THE REJECTIONS Claims 1--4, 8, and 9 are rejected under 35 U.S.C. § 102(b) as anticipated by Heaps, Jr. et al. (US 4,850,506, issued July 25, 1989) (hereinafter "Heaps"). Claims 5-7 are rejected under 35 U.S.C. § 103(a) as unpatentable over Heaps. 2 Appeal2017-011564 Application 14/847,814 ANALYSIS Anticipation Independent claim 1 and dependent claims 2-4, 8, and 9 Independent claim 1 requires, in part, "a storage container comprising a bottom wall and a second sidewall defining a first volume for storing a new product" and "an exterior of at least said movable portion of said disposal container further defining said first volume of said storage container" See App. Br. 13 (Claims Appendix). In other words, claim 1 requires a first volume defined by a bottom wall, a sidewall, and a movable portion of the disposal container. In rejecting claim 1 as anticipated by Heaps, the Examiner provides an annotated version of Figure 1 of Heaps (Final Act. 3), in which the Examiner identifies bag 30 as the claimed "disposal container," and container 20 as the claimed "storage container." Appellants argue, inter alia, that the Examiner's annotated Figure 1 of Heaps does not illustrate how container 20 defines "a first volume for storing a new product" as required by claim 1 (App. Br. 9). In the Answer, the Examiner introduces for the first time an annotated version of Heaps' Figure 8, which is reproduced below. Ans. 7. 3 Appeal2017-011564 Application 14/847,814 Hean.· s Figure 8 annotated bv the Examiner ~ - ~ According to the Examiner, "Figure 8 of Heaps which is the same figure on page 10 of [Appellants'] appeal brief shows a first and second volume." Id. at 6-7. The Examiner provides no additional explanation beyond the annotated figures of Heaps discussed above. We are persuaded by Appellants' arguments because the Examiner does not explain or show how Heaps explicitly describes "a bottom wall ... defining a first volume," as called for in independent claim 1. Heaps discloses, in pertinent part, a container 20 comprising a top plate 22, a bag 30 of liquid-impervious material, a bottom plate 40, and an inner liner 50. Heaps col. 3, 11. 35--41; col. 5, 11. 57---65. Figure 8 of Heaps is 4 Appeal2017-011564 Application 14/847,814 reproduced below . .."'•, :· . '"" """"--- ----;! -------.............. ------ ......... . I . • I . ) I / I I I So •,·, p~;~;;===~~~~~~~;;;~~ ' " . ,, . ,. ;~--:- As shown in Figure 8 of Heaps and the Examiner's annotated version of Figure 8 supra, the Examiner's finding for "a first volume" of claim 1 is defined by top plate 22, inner liner 50, and (an upper portion of) bag 30 of Heaps. As best understood, the Examiner's position is that inner liner 50 meets the claimed "second sidewall" and that upper portion of bag 30 meets the claimed "movable portion of said disposal container." By process of 5 Appeal2017-011564 Application 14/847,814 elimination, the Examiner's finding for "a bottom wall" of claim 1 can only be top plate 22 of Heaps. During examination, claims are to be given their broadest reasonable interpretation consistent with the specification, and the language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). In interpreting claim language, we apply the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the Specification. Here, the Specification uses the term "bottom wall" consistent with its plain and ordinary meaning. See, e.g., Spec. ,r 33 ("The storage container 241 has side walls 242 - 245 extending upwardly and substantially perpendicularly from a bottom wall 246.") Top plate 22 of Heaps is not "a bottom wall" of container 20 within the plain and ordinary meaning of that term. Heaps discloses that top plate 22 is situated at the top of container 20, and not at the bottom. See, e.g., Heaps col. 5, 11. 63---65 ("The top plate 22 is shown resting on the ledge formed by the upper edges 55 and 65, with the filling fitting 31 in the top plate 22. "). We, therefore, conclude that the Examiner's interpretation of "a bottom wall ... defining a first volume" as including top plate 22 of Heaps is unreasonably broad in light of the Specification and the plain and ordinary meaning of the claim language. In view of our determination that Heaps' s top plate 22 is not "a bottom wall," we determine that the Examiner's finding for "a first volume" 6 Appeal2017-011564 Application 14/847,814 defined by a bottom wall is deficient. The Examiner's finding for "a first volume" in Heaps is not defined by "a bottom wall" of the container as required by independent claim 1. As such, Heaps cannot anticipate claim 1. Accordingly, we do not sustain the Examiner's rejection of independent claim 1 under 35 U.S.C. § 102(b) as being anticipated by Heaps, including dependent claims 2--4, 8, and 9. Obviousness Dependent claims 5-7 Claims 5-7 depend from independent claim 1, and the Examiner's proposed modifications to Heaps (Final Act. 5-6) do not cure the above discussed deficiency. Therefore, we do not sustain the rejection of claims 5-7 under 35 U.S.C. § 103(a) as obvious over Heaps. DECISION The Examiner's rejection under 35 U.S.C. § 102(b) is reversed. The Examiner's rejection under 35 U.S.C. § 103(a) is reversed. REVERSED 7 Copy with citationCopy as parenthetical citation