13770803 - (D) (P.T.A.B. Dec. 6, 2019)

Waldo, George E. et al.

Patent Trials and Appeals BoardDec 6, 2019

13770803 - (D) (P.T.A.B. Dec. 6, 2019)

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. 13/770,803 02/19/2013 George E. Waldo II ITW-60542 8267 45482 7590 12/06/2019 PAULEY ERICKSON & KOTTIS 2800 W. HIGGINS ROAD SUITE 365 HOFFMAN ESTATES, IL 60169 EXAMINER POON, ROBERT ART UNIT PAPER NUMBER 3735 MAIL DATE DELIVERY MODE 12/06/2019 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 GEORGE E. WALDO II, CHRISTOPHER J. LUDWIG, and LESLIE S. MARCO ____________ Appeal 2019-004136 Application 13/770,803 Technology Center 3700 ____________ Before STEFAN STAICOVICI, RICHARD H. MARSCHALL, and BRENT M. DOUGAL, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE. Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’s decision in the Final Office Action (dated June 28, 2018) rejecting claims 1– 17 and 21–23.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Illinois Tool Works Inc. is identified as the real party in interest in Appellant’s Appeal Brief (filed Nov. 26, 2018, hereinafter “Appeal Br.”). Appeal Br. 2. 2 Claims 18–20 are canceled. Appeal Br. 2, 18 (Claims App.). Appeal 2019-004136 Application 13/770,803 2 SUMMARY OF DECISION We AFFIRM-IN-PART and enter a NEW GROUND of REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). INVENTION Appellant’s invention relates to a container carrier. Spec. 1. Claims 1, 11, and 16 are independent. Claim 1 is illustrative of the claimed invention and reads as follows: 1. A carrier for carrying a plurality of containers, the carrier comprising: a planar sheet of a plastic material, the sheet having a plurality of container receiving apertures arranged in longitudinal rows and transverse ranks; a panel integrally formed with the sheet, the panel extending outward from an edge of the sheet, the panel including a non-linear outer edge, and the panel shaped in a form of at least one of: a product name, a product shape, a trademark, a tradename, and alpha-numeric characters, wherein the panel is shaped at least in part by the non-linear outer edge, and the non-linear outer edge is and forms an outer peripheral side of the at least one of the product name, the product shape, the trademark, the tradename, and the alpha-numeric characters. REJECTIONS I. The Examiner rejects claim 9 under 35 U.S.C. 112(b) as being indefinite. II. The Examiner rejects claims 1–9, 11, 13–17, 21, and 22 under 35 U.S.C. § 102(b) as being anticipated by Olsen (embodiment of Figure 1).3 3 Olsen, US 6,182,821 B1, issued Feb. 6, 2001. Appeal 2019-004136 Application 13/770,803 3 III. The Examiner rejects claims 1, 10, 11, 14, and 23 under 35 U.S.C. § 102(b) as being anticipated by Olsen (embodiment of Figure 4). IV. The Examiner rejects claim 12 under 35 U.S.C. § 103(a) as being unpatentable over Olsen and Marco.4 NEW GROUND OF REJECTION Claims 1–17 and 21–23 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the invention which applicant regards as the invention. Independent claim 1 requires, inter alia, “a panel . . . shaped in a form of at least one of a product name, a product shape, a trademark, a tradename, and alpha- numeric characters.” Appeal Br. 15 (Claims App.) (emphasis added). In a similar manner, independent claim 11 recites “a panel . . . including a non-linear outer edge . . . shaped . . . to form at least one of a product name, a product shape, a trademark, a tradename, alpha-numeric characters, and symbols.” Id. at 17 (emphasis added.). Finally, independent claim 16 recites, inter alia, “a handle . . . with at least one non-linear side . . . cut in a shape of an outer peripheral side of at least one of a product name, a product shape, a trademark, a tradename, and alpha- numeric characters.” Id. at 18 (emphasis added). The essence of the requirement under 35 U.S.C. § 112(b), that the claims must be definite, is that the language of the claims must make it clear what subject matter the claims encompass. In re Hammack, 427 F.2d 1378 (CCPA 1970). A 4 Marco et al., US 6,230,880 B1, issued May 15, 2001. We view the Examiner’s reference to US 5,944,171 as a typographical error. See Final Act. 10. Appeal 2019-004136 Application 13/770,803 4 claim is indefinite if a person of ordinary skill in the art cannot translate the claim terms into meaningfully precise claim scope. Haliburton Energy Services, Inc. v. M-I LLC, 514 F.3d 1244, 1251 (Fed. Cir. 2008). Although applicants are allowed to claim their inventions broadly, they must do so in a way that distinctly identifies the boundaries of their claims. Id. at 1253. Here, each of independent claims 1, 11, and 16 fails to meet such a standard. In particular, the limitation of a “product shape,” as called for by each of independent claims 1, 11, and 16, is indefinite because any object produced by humans throughout history constitutes a “product” that has a “product shape.” Further, the claims do not limit the extent of the product shape formed by the panel. Claims 1 and 16 require that the panel “form an outer peripheral side of,” the product shape, but not how much of the side is required. Hence, the scope of each of independent claims 1, 11, and 16 encompasses such a large number of “products,” their respective “product shape[s]” and portions thereof, as to constitute an infinite array of designs. Along the same line, the limitation of “symbols” in independent claim 11 is indefinite because any marking produced by humans throughout history constitutes a “symbol,” and, thus, the claim encompasses an infinite array of “symbols.” Accordingly, the limitations of “product shape” and “symbols” noted above “do not define the invention (i.e., the subject matter which the applicant regards as his invention) with a reasonable degree of particularity,” and, thus, lack sufficient precision so that one endeavoring to practice the invention could not determine the metes and bounds thereof. See Hammack, 427 F.2d at 1382. In conclusion, for the foregoing reasons, independent claims 1, 11, and 16, and their respective dependent claims 2–10, 12–15, 17, and 21–23, are indefinite for failing to particularly point out and distinctly claim the invention. Appeal 2019-004136 Application 13/770,803 5 ANALYSIS Rejection I Claim 9 depends from independent claim 1, and adds the limitation “wherein the product shape comprises an outline of one of the containers.” Appeal Br. 16 (Claims App.). The Examiner finds that claim 9 is indefinite because a “container” is not explicitly claimed in independent claim 1, and, thus, it is not clear how the “product shape can have an outline as a portion of the outline of the container.” Final Act. 2–3. In other words, as the “particular container” is not claimed, the Examiner takes the position that “the shape and outline of the container . . . is unclear.” Ans. 9–10.5 In response, Appellant notes that “[t]he carriers of the present invention are made independently from the containers to be carried, but made for a particular container. Appeal Br. 6. According to Appellant, “[o]ne of ordinary skill in the art would understand that the carrier of [c]laim 9 is formed with a panel shape of the intended container-to-be-carried.” Appeal Br. 6. We appreciate Appellant’s position that the panel shape of claim 1 is limited in claim 9 to the shape of the container-to-be-carried. However, even though the scope of claim 9 is narrower than that of claim 1, nonetheless, we are not persuaded by Appellant’s position because the Examiner is correct that “it would be impossible to determine what . . . [the claimed] shape is since containers come in all forms of shape, size and outlines.” Ans. 9. In other words, because containers have been produced throughout human history, the scope of claim 9 5 Examiner’s Answer, dated Mar. 8, 2019. Appeal 2019-004136 Application 13/770,803 6 encompasses an endless, i.e., infinite, array of “containers,” and their respective “outlines.” Further, even when evaluating a particular carrier with a particular container, the scope of claim 9 is unclear. There is not a clearly identified connection between the shape of the container and the panel shape of the intended container- to-be-carried as asserted by Appellant. For example, as seen in Appellant’s Figures 6–9, there does not appear to be any clear relationship between the shapes of the container receiving apertures of the panel and the shape of the container. Further, as discussed above, claim 9 does not clarify how much of the shape of the side of the container is required to form the panel. Therefore, the limitation “wherein the product shape comprises an outline of one of the containers” “do[es] not define the invention (i.e., the subject matter which the applicant regards as his invention) with a reasonable degree of particularity,” and, thus, lacks sufficient precision so that one endeavoring to practice the invention could not determine the metes and bounds thereof. See Hammack, 427 F.2d at 1382. Accordingly, for the foregoing reasons, we sustain the rejection under 35 U.S.C. 112(b) of claim 9 as being indefinite. Rejections II–IV In view of our determination that claims 1–17 and 21–23 are indefinite, it follows that the rejections of claims 1–17 and 21–23 under 35 U.S.C. §§ 102 and 103 must fall because it is necessarily based on speculative assumptions as to the meaning of the claims. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962). It should be understood, however, that our decision in this regard is pro forma and based solely on the indefiniteness of the claimed subject matter, and does not Appeal 2019-004136 Application 13/770,803 7 reflect on the adequacy of the prior art evidence applied in support of the rejections. CONCLUSION Claim(s) rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 9 112(b) Indefiniteness 9 1–9, 11, 13– 17, 21, 22 102(b) Olsen 1–9, 11, 13–17, 21, 22 1, 10, 11, 14, 23 102(b) Olsen 1, 10, 11, 14, 23 12 103(a) Olsen, Marco 12 1–17, 21–23 112(b) Indefiniteness 1–17, 21– 23 Overall outcome 9 1–17, 21– 23 1–17, 21– 23 This decision contains new grounds 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 Appeal 2019-004136 Application 13/770,803 8 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. AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)