CARL FREUDENBERG KG

Patent Trials and Appeals Board

Dec 2, 2020

2020000785 (P.T.A.B. Dec. 2, 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.
14/427,338 03/11/2015 Dennis Smeijer 814768 7030
95683 7590 12/02/2020
Leydig, Voit & Mayer, Ltd. (Frankfurt office)
Two Prudential Plaza, Suite 4900
180 North Stetson Avenue
Chicago, IL 60601-6731
EXAMINER
MARKOFF, ALEXANDER
ART UNIT PAPER NUMBER
1711
NOTIFICATION DATE DELIVERY MODE
12/02/2020 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):
chgpatent@leydig.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DENNIS SMEIJER,
THOMAS CARUSO, LEO GUBENKO,
and JOSEPH SEIFTS
____________

Appeal 2020-000785
Application 14/427,338
Technology Center 1700
____________
Before TERRY J. OWENS, GEORGE C. BEST, and MONTÉ T. SQUIRE,
Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals from the Examiner’s decision to reject claims 1
and 3–13 of Application 14/427,338. Non-Final Act. (December 14, 2018).
We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we affirm in part.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Carl Freudenberg KG as the real party in
interest. Appeal Br. 1
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Application 14/427,338
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I. BACKGROUND
The ’338 Application describes a flat mop cover for arranging on a
mop-cover holder and methods for using such a flat mop cover. Spec. ¶ 2.
By way of explanation, we reproduce Figure 1 below.

Figure 1 is a perspective view of a mop-cover
holder having a flat mop cover. Id. ¶ 17.
Figure 1 shows flat mop cover 1 arranged on mop-cover holder 1a. Id.
¶ 58. Flat mop cover 1 comprises elongate basic body 2, which has a first
and second elongate surfaces 3 and 4. Id. First and second elongate surfaces
3 and 4 lie opposite one another. Id. Plate-shaped carrying element 5 of
mop-cover holder 1a and foam-material layer 6 are sandwiched between first
and second elongate surfaces 3 and 4. Id. First and second elongate surfaces
3 and 4 are each designed as cleaning surfaces. Id.
Claims 1 and 10 illustrate the ’338 Application’s claims and are
reproduced below from the Appeal Brief’s Claims Appendix.
1. A flat-mop cover for a flat-mop-cover holder, the flat-
mop cover comprising:
an elongate basic body having an enveloping layer
including a first elongate surface and a second elongate surface
lying opposite one another, wherein at least one foam-material
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Application 14/427,338
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layer is disposed between the elongate surfaces, and wherein
the two elongate surfaces are each configured to be cleaning
surfaces and disposed such that a plate-shaped carrying element
of the flat-mop-cover holder is configured to be sandwiched
between the two surfaces,
wherein the basic body is configured to absorb at least
four times, and at most twenty times, its dry weight in cleaning
liquid and to discharge the cleaning liquid in a uniform and
metered manner onto a surface to be cleaned, and wherein the
foam-material layer has no fibers, and
wherein the foam-material layer is continuous over the
surface area of the foam-material layer.
Appeal Br. 15.
10. A method of cleaning a clean room, the method
comprising:
providing a flat-mop cover comprising:
an elongate basic body having an enveloping layer
including a first elongate surface and a second elongate
surface lying opposite one another, wherein at least one
foam-material layer is disposed between the elongate
surfaces, and wherein the two elongate surfaces are each
configured to be cleaning surfaces and disposed such that
a plate-shaped carrying element of a flat-mop-cover
holder is configured to be sandwiched between the two
surfaces,
wherein the basic body is configured to absorb in a
reversible manner at least four times, and at most twenty times,
its dry weight in cleaning liquid and to discharge the cleaning
liquid in a uniform and metered manner onto a surface to be
cleaned, and wherein the foam-material layer has no fibers, and
wherein the foam-material layer has a continuous
surface area; and
wiping a floor of the clean room with the mop
cover.
Id. at 16–17.
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II. REJECTIONS
On appeal, the Examiner maintains2 the following rejections:
1. Claims 1 and 3–13 are rejected under 35 U.S.C. § 112, ¶ 2 as
indefinite. Final Act. 3.
2. Claims 1 and 3–13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of McBride,3 Ashe,4 and Free.5
Final Act. 8.
III. DISCUSSION
A. Rejection of claims 1 and 3–13 as indefinite
1. Claims 1, 3–6, and 8–13
The Examiner rejected all of the pending claims in the ’338
Application as indefinite based on the following language, which is common
to all three independent claims:
an elongate basic body having an enveloping layer including a
first elongate surface and a second elongate surface lying
opposite one another, wherein at least one foam-material layer
is disposed between the elongate surfaces, and wherein the two
elongate surfaces are each configured to be cleaning surfaces
and disposed such that a plate-shaped carrying element of the
flat-mop-cover holder is configured to be sandwiched between
the two surfaces . . . .
Claims 1, 9, and 10 (emphasis added).

2 The Examiner has withdrawn the rejection of claims 9 and 10 under 35
U.S.C. § 112, ¶ 1 as lacking written description support. Answer 9.
3 US 5,678,278, issued October 21, 1997.
4 US 2006/0005338 A1, published January 12, 2006.
5 US 6,756,416 B2, issued June 29, 2004.
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The Examiner provided three reasons for determining that the claim
language quoted above rendered independent claims 1, 9, and 10 indefinite.
First, the Examiner held that the terms “the elongate surfaces,” “the
two elongate surfaces,” and “the two surfaces” lack proper antecedent basis
because it is not clear whether these terms refer back to the previously
recited “a first elongate surface and a second elongate surface.” Non-Final
Act. 4.
During examination, the relevant inquiry under 35 U.S.C. § 112,
second paragraph, “is . . . to determine whether the claims do, in fact, set out
and circumscribe a particular area with a reasonable degree of precision and
particularity.” In re Moore, 439 F.2d 1232, 1235 (CCPA 1971) (emphasis
added); see also In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014) (“[a]
claim is indefinite when it contains words or phrases whose meaning is
unclear”).
The Federal Circuit has held that a lack of antecedent basis is not per
se a reason for finding a claim indefinite. “In Bose Corp. v. JBL, Inc., 274
F.3d 1354, 1359 (Fed. Cir. 2001) the court held that despite the absence of
explicit antecedent basis, ‘[i]f the scope of a claim would be reasonably
ascertainable by those skilled in the art, then the claim is not indefinite.”’
Energizer Holdings Inc. v. United States ITC, 435 F.3d 1366, 1370–71 (Fed.
Cir. 2006).
We have reviewed the ’338 Application’s Specification and hold that
the Examiner erred by determining that a person having ordinary skill in the
art would not have understood that the terms “the elongate surfaces,” “the
two elongate surfaces,” and “the two surfaces” refer back to the previously
recited “a first elongate surface and a second elongate surface.” We note that
the Examiner has not explained how the terms in question might be
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confusing. In other words, the Examiner has not identified to what, other
than the first and second elongate surfaces, those terms might be referring to.
While the Examiner’s preference for rote consistency in claim terminology
represents good practice, it is not an absolute requirement imposed by § 112,
¶ 2.
Because the Examiner has not explained why the scope of these
claims would not be reasonably ascertainable by those skilled in the art, a
prima facie case of indefiniteness resting on the allegation that the above-
noted terms lack antecedent basis, has not been established.
Second, the Examiner rejected the independent claims because the
Examiner interprets the claims as simultaneously requiring the first and
second elongate surfaces to face the foam material layer and to face the
exterior of the claimed elongate basic body. Non-Final Act. 4. Based on this
interpretation, the Examiner states that “the claims recite contradictive
limitations and could not be properly understood.” Answer 15.
Contrary to the Examiner’s determination, the ’338 Application’s
claims are not internally inconsistent. The Examiner determined that the
recitations “including a first elongate surface and a second elongate surface
lying opposite one another” and “wherein the two elongate surfaces are . . .
disposed such that a plate-shaped carrying element of the flat-mop-cover
holder is configure to be sandwiched between the two surfaces” each require
that the first and second elongate surfaces face each other. See, e.g., Answer
4–6. This determination is based on incorrect interpretations of the claim
language.
During prosecution, the PTO gives the language of the proposed
claims 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
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account any definitions or other enlightenment provided by the written
description contained in the applicant’s specification. In re Morris, 127 F.3d
1048, 1054–55 (Fed. Cir. 1997) (emphasis added).
We begin by considering the proper interpretation of the word
“opposite.” One dictionary provides the following alternative definitions for
“opposite”; “on either side of an intervening space or thing” and “facing.”
Shorter Oxford English Dictionary 2013 (6th ed. 2007). We begin with the
principle that we should adopt the broadest reasonable meaning. Morris, 127
F.3d at 1054–55. We determine that “on either side of an intervening space
or thing” is broader than “facing.” The former definition is broader than the
latter because it does not require a particular orientation of the first and
second elongate surfaces relative to the rest of the flat mop cover’s basic
body. Moreover, as the Examiner notes, the Specification describes the first
and second elongate surfaces of the enveloping layer as located on the
outside of the mop cover. Answer 12 (citing Spec. Figures 3, 4).
Next, we consider the proper interpretation of the phrase “to be
sandwiched between the two surfaces.” Once again we start with the
ordinary meaning of the verb “sandwich.” In this context, “to sandwich”
means “to insert or squeeze a thing between two other dissimilar things.” See
Shorter OED 2663. Neither the ordinary meaning nor the Specification
provide any reason for us to limit the scope of the phrase “sandwiched
between the two surfaces” by requiring a particular orientation of the
surfaces relative to one another.
In view of the foregoing, we determine that the Examiner erred by
interpreting the independent claims to require the first elongate surface and
the second elongate surface to face each other. Thus, we do not affirm the
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rejection of the independent claims for the second reason set forth by the
Examiner.
Third, the Examiner held that the independent claims are indefinite
“because it is not clear whether or not ‘at least one foam-material layer’ and
‘the foam material layer’ are the same.” Non-Final Act. 7.
In our view, this basis for rejection suffers from the same defects that
we identified in our discussion of the rejection based on the varying
terminology used for the first and second elongate surfaces.
For the reasons set forth above, we reverse the rejection of claims 1,
3–6, and 8–13 as indefinite.
2. Claim 7
The Examiner also set forth an additional basis for specifically
rejecting claim 7 as indefinite. Non-Final Act. 7.
Appellant states that it is not appealing this rejection. Appeal Br. 13.
We, therefore, summarily affirm the rejection of claim 7 as indefinite.
B. Rejection of claims 1 and 3–13 as unpatentable over McBride, Ashe,
and Free
Appellant argues that the rejection of independent claims 1, 9, and 10
should be reversed because, inter alia, the Examiner has not demonstrated
that the asserted combination of references describes or suggests every
limitation of the claims. Appeal Br. 5–6.
We are unable to determine the persuasiveness of Appellant’s
argument. This is because the Examiner has not mapped the elements of
each of the claims to the references in any detail. By way of illustration, we
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reproduce the portion of the rejection discussing the McBride reference in its
entirety:
McBride et al[.] teach a device and a method as claimed.
The device comprises the layers as claimed. The method
comprises cleaning a clean room with the device. See entire
document, especially Figures 1, 3, 4 and the related description.
McBride et al[.] do not specifically teach that the foam layer of
the device is configured to absorb the claimed amount of liquid.
Non-Final Act. 8.
As can be seen, the Examiner has not explained, for example, which
features in McBride’s disclosure amount to a description or suggestion of the
claimed first elongate surface, second elongate surface, and plate-shaped
carrying element.
Because the Examiner has not met his burden of establishing the
prima facie obviousness of any of the appealed claims, we reverse. Our
reversal, however, is procedural in nature. If prosecution continues, the
Examiner is free to reject the ’338 Application’s claims as obvious over the
combination of McBride, Ashe, and Free. If the Examiner chooses to do so,
however, the rejection must provide a complete and detailed mapping of
each claim element to the specific places in the various references that the
Examiner is relying upon as describing or suggesting each limitation of each
rejected claim. Moreover, the rejection of each claim must include a
sufficiently detailed explanation of the basis for the rejection. See In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.”).
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IV. CONCLUSION
In summary:
Claims Rejected 35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
1, 3–13 112, second paragraph Indefiniteness 7 1, 3–6, 8–13
1, 3–13 103(a) McBride, Ashe, Free 1, 3–13
Overall Outcome 7 1, 3–6, 8–13
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED IN PART