Ex Parte Anderson et alDownload PDFPatent Trial and Appeal BoardAug 8, 201814059040 (P.T.A.B. Aug. 8, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/059,040 10/21/2013 32692 7590 08/10/2018 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 UNITED ST A TES OF AMERICA FIRST NAMED INVENTOR Kevin W. Anderson 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. 64325US008 3928 EXAMINER VONCH, JEFFREY A ART UNIT PAPER NUMBER 1781 NOTIFICATION DATE DELIVERY MODE 08/10/2018 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): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KEVIN W. ANDERSON, THOMAS E. DEWEY JR., JOSEPH T. BARTUSIAK, LEE A. THOMAS, and RUSSELL J. HEYRMAN Appeal2017-008396 Application 14/059,040 Technology Center 1700 Before TERRY J. OWENS, N. WHITNEY WILSON, and JEFFREY R. SNAY, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's rejection of claims 1--4. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim a folded roll of masking material. Claim 1 is illustrative: 1. A folded roll of thin and flexible masking material having a longitudinal axis and first and second folded end portions axially spaced from each other along the longitudinal axis, the folded roll of masking material comprising: Appeal2017-008396 Application 14/059,040 Lee opposing, first and second outermost layers extending in a direction of the longitudinal axis between the first and second folded end portions; a slit formed in the first outermost layer, the slit defining first and second elongated edges in the first outermost layer; a first radially extending end portion extending between the first and second outermost layers at the first folded end portion; a first intermediate layer immediately adjacent the second outermost layer, the first intermediate layer and the second outermost layer directly connected at a first fold formed at the second folded end portion; a second intermediate layer immediately adjacent the first outermost layer; and a third intermediate layer disposed between the first and second intermediate layers, the third intermediate layer directly connected to the first outermost layer at a second radially extending end portion at the second folded end portion; wherein the second intermediate layer is longitudinally between the first and second radially extending end portions; and wherein the first elongated edge is directly connect to the first radially extending end portion and the second elongated edge is directly connected to the second radially extending end. The Reference US 2009/0202771 Al The Rejection Aug. 13, 2009 Claims 1--4 stand rejected under 35 U.S.C. § 103 over Lee. OPINION Due to claim indefiniteness, we procedurally reverse the rejection and enter a new ground of rejection under 35 U.S.C. § 112(b). 2 Appeal2017-008396 Application 14/059,040 New ground of rejection Claims 1--4 are rejected under 35 U.S.C. § 112(b) as being indefinite due to failing to particularly point and distinctly claim the subject matter the inventors regard as the invention. We need address only the sole independent claim, i.e., claim 1. When the Appellants read claim 1 on their Specification they do not specifically address any claim limitation. Instead, they merely point to page 3, lines 23-25, page 3, line 28-page 4, line 6, page 4, lines 6-11 (all of which are in the "Summary" section), page 15, lines 1-8 (which is in the "Detailed Description" section but the Appellants do not address any details), and Figures 7 and 8 ("Response to Non-Compliant Appeal Brief under 37 C.F.R. § 41.37" filed Jan. 9, 2017, "Summary of Claimed Subject Matter"). Regarding claim 1, the Appellants' Specification appears to disclose a folded roll of thin and flexible masking material (800) having a longitudinal axis (590) and first (530) and second (540) folded end portions axially spaced from each other along the longitudinal axis (590), the folded roll of masking material (800) comprising: a first outermost layer (top layer in Fig. 8) extending in a direction of the longitudinal axis (590) between the first (530) and second (540) folded end portions; a slit (560) formed in the first outermost layer, the slit (560) defining first (562) and second (564) elongated edges in the first outermost layer; and a first radially extending end portion (566) (Spec. renumbered page 14, 1. I -renumbered page 16, 1. 27; Figs. 7, 8). 3 Appeal2017-008396 Application 14/059,040 The Specification is unclear as to the second outermost layer, first radially extending end portion, first folded end portion, first intermediate layer, first fold, second intermediate layer, third intermediate layer, first and second radially extending end portions, and their relationships. Accordingly, we reject claim 1 and its dependent claims 2--4 as indefinite under 35 U.S.C. § 112(b). In some instances it is possible to make a reasonable, conditional interpretation of claims adequate for the purpose of resolving patentability issues to avoid piecemeal appellate review. In the interest of administrative and judicial economy, this course is appropriate wherever reasonably possible. See Ex parte Saceman, 27 USPQ2d 14 72, 14 7 4 (BP AI 1993); Ex parte Ionescu, 222 USPQ 537, 540 (Bd. App. 1984). In other instances, however, it may be impossible to determine whether claimed subject matter is anticipated by or would have been obvious over references because the claims are so indefinite that considerable speculation and assumptions would be required regarding the meaning of terms employed in the claims with respect to the scope of the claims. See In re Steele, 305 F.2d 859, 862 (CCPA 1962). For the reason discussed above, we consider the Appellants' claims to be sufficiently indefinite that application of the prior art to the claims is not possible. On this basis, we do not sustain the rejection under 35 U.S.C. § 103. This reversal is not a reversal on the merits of the rejection but, rather, is a procedural reversal predicated upon the indefiniteness of the claims. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 4I.50(b). 4 Appeal2017-008396 Application 14/059,040 37 C.F.R. § 4I.50(b) provides that 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 .... (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. DECISION The rejection of claims 1--4 under 35 U.S.C. § 103 over Lee is procedurally reversed and a new rejection of those claims under 35 U.S.C. § 112(b) is entered. The Examiner's decision is procedurally reversed. REVERSED; 37 C.F.R. § 4I.50(b) 5 Copy with citationCopy as parenthetical citation