Ex Parte Lin

Patent Trial and Appeal Board

Mar 13, 2013

11005906 (P.T.A.B. Mar. 13, 2013)

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.
11/005,906 12/06/2004 Tsong-Yow Lin CFP-2777 (20041147.ORI) 3212
69638 7590 03/13/2013
KAMRATH IP Lawfirm, P.A.
4825 OLSON MEMORIAL HIGHWAY
SUITE 245
GOLDEN VALLEY, MN 55422
EXAMINER
HICKS, ROBERT J
ART UNIT PAPER NUMBER
3728
MAIL DATE DELIVERY MODE
03/13/2013 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 TSONG-YOW LIN
____________________

Appeal 2010-011865
Application 11/005,906
Technology Center 3700
____________________

Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-011865
Application 11/005,906

2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the final rejection of
claims 1-201. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and ENTER NEW GROUNDS OF REJECTION
PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b).
The rejected claims are directed to a metal trashcan that includes an
irregular barrel extending between a base and an opening (Spec. 1). Claims
1 and 13 are the sole independent claims. Claim 1 is reproduced below.
Exemplary Claim
1. A metal trashcan comprising a base with
a profile and a barrel standing on the base, with the
base including the profile being in a single plane,
with the barrel having a lower annular edge and an
upper annular edge, with the lower annular edge
interconnected to the base and having the profile of
the base, with the upper annular edge being a free
edge and defining an opening with a profile
different from the profile of the base, with the
barrel having an irregular shape, with the base and
opening being parallel, with the barrel having
cross-sections parallel to the base and the opening,
and with the cross-sections varying in shape
continuously between the lower annular edge and
the upper annular edge defining the opening.

1 Our decision will refer to Appellant’s Specification (“Spec.,” filed Dec. 6,
2004), Appeal Brief (“App. Br.,” filed Jun. 11, 2010), and Reply Brief
(“Reply Br.,” filed Aug. 17, 2010), as well as the Examiner’s Answer
(“Ans.,” mailed Jun. 30, 2010).
Appeal 2010-011865
Application 11/005,906

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Examiner’s Rejections
The Examiner rejects the claims as follows:
Claims 1-20 stand rejected under 35 U.S.C.§ 112, first paragraph, as
failing to comply with the written description requirement;
Claims 1, 4, 8, 13, and 20 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Otto (US 5,697,625, iss. Dec. 16, 1997);
Claim 2 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Otto in view of Maish (US 2,112,465, iss. Mar. 29, 1938);
Claims 3 and 7 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Otto in view of Lin ‘239 (US D454,239 S, iss. Mar. 5,
2002);
Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Otto in view of DeRewal (US D319,123, iss. Aug. 13, 1991) and Lin ‘308
(US D447,308 S, iss. Aug. 28, 2001);
Claims 10 and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Otto in view of DeRewal;
Claims 11, 12, and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Otto in view of Lin ‘308;
Claims 6, 9, and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Otto in view of Mitchell (US D256,669, iss. Sep. 2, 1980);
and
Claims 17-19 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Otto in view of Mitchell and DeRewal.

Appeal 2010-011865
Application 11/005,906

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ANALYSIS
Rejection under 35 U.S.C. § 112
Each of the pending claims stands rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description requirement
(Ans. 16). Specifically, the Examiner asserts that the limitation in
independent claim 1 of “the barrel having cross-sections parallel to the base
and the opening, and with the cross-sections varying in shape continuously
between the lower annular edge and the upper annular edge defining the
opening,” was not described in the Specification in such a way as to convey
Appellant had possession of the claimed invention at the time the application
was filed (italics added) (Ans. 16, 19).
We agree with the Examiner, and find that the meaning of these
limitations cannot be determined from the Specification. The factual inquiry
for determining whether a Specification provides sufficient written
description for the claimed invention is whether the specification conveys
with reasonable clarity to those skilled in the art that, as of the filing date
sought, applicant was in possession of the invention as now claimed. Vas-
Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). An
applicant shows possession of the claimed invention by describing the
claimed invention with all of its limitations using such descriptive means as
words, structures, figures, diagrams, and formulas that fully set forth the
claimed invention. Lockwood v. American Airlines, Inc., 107 F.3d 1565,
1572 (Fed. Cir. 1997).
Appellant first points to page 3, lines 24 and 25 of the original
Specification as providing support for the above-cited limitations of claim 1
(App. Br. 7). But, this portion of the Specification only states in relevant
Appeal 2010-011865
Application 11/005,906

5
part that “[t]hus, the barrel 13 includes an irregular shape, i.e., it does not
include a circular wall or a plurality of flat walls,” and does not address
anything about the cross-section of the barrel, or how such a cross-section
varies and this portion fails to show possession of the claimed invention.
Appellant also argues the original drawings provide support for the claims
(App. Br. 7, Reply Br. 2). However, the drawings at most show that a
profile of an outer surface of barrel 13 varies in some way between the
opening 11 and the base 12 of the trashcan 10, and thus these portions also
fail to show possession of the claimed invention.
For the above-discussed reasons, it is even unclear whether the
claimed cross-section is referring to a cross-section of the wall of barrel 13
or instead to a profile of the outer surface of the wall. We also note that the
original Specification and drawings do not show or describe, for example,
any of the following: whether a cross-section of the wall of barrel 13 varies;
whether an amount of variation is constant or changes along the length of the
wall; whether a variation occurs along the entire length of the wall or only
along a portion of the length of the wall; whether a change in the profile of
the outer surface of barrel 13 is constant or variable; or whether a change in
the profile of the outer surface of barrel 13 occurs along the entire length of
the wall or only along a portion of the length of the wall. Thus, these
portions fail to shows possession of the claimed invention.
Where the Specification and drawings do not clearly and conclusively
disclose claimed subject matter that Appellant seeks to enter by amendment,
and the Specification is completely silent in this respect, the Examiner is
justified in rejecting the claim under 35 U.S.C. § 112, first paragraph. See,
e.g., In re Olson, 212 F.2d 590 (CCPA 1954) (affirming a rejection based on
Appeal 2010-011865
Application 11/005,906

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improperly inserting the limitation “equally spaced”). Thus, we sustain the
Examiner’s rejection of independent claim 1 under 35 U.S.C. § 112, first
paragraph.
The Examiner also rejects independent claim 14, which recites “the
barrel having cross-sections parallel to the base and the opening, with the
cross-sections varying in shape continuously between the profile of the base
and the profile of the opening,” for similar reasons. We therefore sustain the
Examiner’s rejection of independent claim 14 under 35 U.S.C. § 112, first
paragraph.
Claims 2-13 and 15-20 depend from independents claim 1 and 14.
Thus, we sustain the rejection of claims 2-13 and 15-20 for the same reasons
as the independent claims.

Rejections under 35 U.S.C. §§ 102(b) and 103(a), and a New Grounds
of Rejection under 35 U.S.C. § 112, second paragraph
Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection
of claims 1-20 under 35 U.S.C. § 112, second paragraph as being indefinite.
For the foregoing reasons, we find that the Specification does not adequately
describe a barrel having cross-sections parallel to the base and the opening,
with “the cross-sections varying in shape continuously” between the lower
annular edge and the upper annular edge defining the opening, as recited in
independent claims 1 and 14. Because the Specification fails to disclose this
feature such that one of ordinary skill in the art could determine the scope of
the claims, we reject claims 1-20 under 35 U.S.C. § 112, second paragraph,
as being indefinite.
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Because claims 1-20 are rejected under 35 U.S.C. § 112, second
paragraph as being indefinite, in comparing the subject matter of claims 1-20
with the applied prior art, it is apparent to us that considerable speculations
and assumptions are necessary in order to determine what in fact is being
claimed. As a rejection based on prior art cannot be based on speculations
and assumptions, see In re Steele, 305 F.2d 859, 862 (CCPA 1962), we are
constrained to reverse, pro forma, the Examiner's rejection of the claims
under 35 U.S.C. § 103(a) and 35 U.S.C. § 102(b). We add that this is a
procedural reversal rather than one based upon the merits of the rejections.

DECISION
The Examiner’s rejection of claims 1-20 under 35 U.S.C. § 112, first
paragraph is AFFIRMED.
The Examiner’s rejections of claims 1-20 under 35 U.S.C. § 102(b)
and 35 U.S.C. § 103(a) are REVERSED pro forma.

Appeal 2010-011865
Application 11/005,906

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This decision contains new grounds of rejection of claims 1-20 under
35 U.S.C. § 112, second paragraph, pursuant to 37 C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.” 37 C.F.R. §
41.50(b) also provides that Appellants, 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
proceeding will be remanded to the Examiner . . . .
• (2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record . . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED; 37 C.F.R. § 41.50(b)

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