Ex Parte Erlebach et al

Patent Trial and Appeal Board

Mar 22, 2018

14158652 (P.T.A.B. Mar. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/158,652 01/17/2014
67559 7590 03/22/2018
Parsons Behle & Latimer
Attn: Docketing
800 W. Main Street, Suite 1300
Boise, ID 83702
FIRST NAMED INVENTOR
Shaun Thomas Erlebach
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.
21177.00lUSOl 6248
EXAMINER
ACKUN, JACOB K
ART UNIT PAPER NUMBER
3728
MAILDATE DELIVERY MODE
03/22/2018 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 SHAUN THOMAS ERLEBACH and
HARRY THOMAS ERLEBACH
Appeal2017-001079
Application 14/158,652
Technology Center 3700
Before BIBHU R. MOHANTY, CYNTHIA L. MURPHY, and
AMEE A. SHAH, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants 1 appeal under 35 U.S.C. § 134 from the Examiner's
rejections of claims 1--4, 7, and 8. We have jurisdiction over this appeal
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 "The Real Party in Interest is LIMB I, LLC." (Appeal Br. 3.)
Appeal2017-001079
Application 14/158,652
STATEMENT OF THE CASE
The Appellants' invention "relates generally to holders for scoops,
spoons, ladles, or other bulk good moving tools." (Spec. i-f 2.)
Illustrative Claim
1. A scoop holder comprising:
an insert portion configured to fit inside a lid of a
container, the lid comprising an outer wall, and the insert
portion further comprising:
end·
'
a first convex edge having a first end and a second end;
a second convex edge having a first end and a second
a first concave edge extending between the first end of
the first convex edge and the first end of the second convex
edge;
a second concave edge extending between the second end
of the first convex edge and the second end of the second
convex edge; and
wherein only the first convex edge and the second
convex edge of the insert portion contact the outer wall of the
lid·
'
a tab portion, connected to the insert portion and
configured to receive and retain at least a portion of a scoop that
is usable to retrieve contents from within the container; and a
flexible attachment portion connecting the tab portion to the
insert portion.
Rejections
I. The Examiner rejects claims 1--4, 7, and 8 under 35 U.S.C.
§ 112, first paragraph, as containing new matter and failing to comply with
the written description requirement. (Final Action 4.)2
2 Also, "[a]ll of the text added" to the Specification in an amendment filed
September 16, 2015 "is objected to under 35 U.S.C. [§] 132(a) because it
introduces new matter into the disclosure." (Final Action 3.) When, as here,
the issue of new matter presented is the subject of both an objection and a
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Application 14/158,652
II. The Examiner rejects claims 1--4, 7, and 8 under 35 U.S.C.
§ 112, second paragraph, as indefinite. (Final Action 8.)
III. The Examiner rejects claims 1--4, 7, and 8 under 35 U.S.C.
§ 103(a) as unpatentable over Yang3 or Wenger. 4 (Final Action 9.) 5
ANALYSIS
Claim 1 is the sole independent claim on appeal, with the rest of the
claims on appeal (i.e., claims 2--4, 7, and 8) depending therefrom. (See
Appeal Br., Claims App.) Independent claim 1 recites a "scoop holder"
having "an insert portion" that is configured to "fit inside a lid" comprising
"an outer wall," and "a flexible attachment portion" that connects "[a] tab
portion to the insert portion." (Id.)
Rejection I
As indicated above, independent claim 1 recites a lid having an "outer
wall" and a "flexible attachment portion." (Appeal Br., Claims App.) We
agree with the Appellants (see e.g., Appeal Br. 8) that the original
Specification conveys that the Appellants had possession of a lid comprising
an outer wall and a flexible attachment portion at the time the application
was filed. Figures 2 and 3 of the original application provide sufficient
rejection, the issue is appealab1e. See NIPEP § 2163.06 ("If both the claims
and specification contain new 1natter either directly or indirectly, and there
has been both a rejection and objection by the examiner, the issue becmnes
appealab1e~').
3 US 2012/0205376 Al, published August 16, 2012.
4 US 2,738,900 issued March 20, 1956.
5 The Examiner's rejection of claims 1--4, 7, and 8 under 35 U.S.C. § 112,
first paragraph as non-enabled (see Final Action 7-8) has been withdrawn
(see Answer 2).
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Appeal2017-001079
Application 14/158,652
written descriptive support for a "lid comprising an outer wall." And the
original Specification expressly states that the invention includes "a flexible
attachment portion connecting the tab portion to the insert portion." (Spec.
i-f 16.) Accordingly, text added to the Specification in the amendment filed
September 16, 2015 corresponding to the above-recited claim limitations
does not constitute new matter.
Independent claim 1 additionally recites that the insert portion
comprises "a first convex edge having a first end and a second end," "a
second convex edge having a first end and a second end," and "a first
concave edge extending between the first end of the first convex edge and
the first end of the second convex edge." (Appeal Br., Claims App.) We
agree with the Appellants (see e.g., Appeal Br. 5---6) that the original
Specification conveys that the Appellants had possession of an insert with
such edges at the time the application was filed. Figure 5 of the original
application provides sufficient written descriptive support for the claim
limitations at issue. Accordingly, text added to the Specification in the
amendment filed September 16, 2015 corresponding to the above-recited
claim limitations does not constitute new matter.
Independent claim 1 also recites that "only the first convex edge and
the second convex edge of the insert portion contact the outer wall of the
lid." (Appeal Br., Claims App.) We agree with the Examiner (see Final
Action 5) that the original Specification did not convey that the Appellants
had possession of this feature at the time of the application was filed, and we
are not persuaded by the Appellants' arguments to the contrary (see Appeal
Br. 7-8; see also Reply Br. 4--5). The claimed "contact" between "only" the
convex edges is not depicted in original Figure 5 and is not described in the
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Appeal2017-001079
Application 14/158,652
original Specification. Accordingly, text added to the Specification in the
amendment filed September 16, 2015 corresponding to the above-recited
claim limitation constitutes new matter.
The Appellants argue that "a person of ordinary skill in the art would
understand how the embodiment of the insert 20 shown in [Figure] 5 would
fit within a lid" without this being illustrated. (Appeal Br. 7-8.) The
Appellants note that the original Specification "contains at least two
figures," [Figures] 2 and 3, "showing the insert 20 fitting inside a lid 60."
(Appeal Br. 7.) The Appellants also remind us that it is not improper "to
rely on the disclosure of other embodiments for support to the claimed
embodiment" and that "the teachings of all embodiments (plural) are
relevant to the written description requirement." (Reply Br. 5.)
We are not persuaded by the Appellants' position because Figure 2 "is
a front view of a scoop holder" and Figure 3 "is a side view of a scoop
holder." (Spec. i-f 35.) These front and side views show the insert 20
extending completely across the lid 60 in both transverse directions. As
shown in our annotated versions of original Figures 2, 3, and 5 below, this
would not be so if "only the first convex edge and the second convex edge"
of the insert 20 shown in Figure 5 contacted a circular lid 60.
Figure 2 - front view Figure 3 - side view Figure 5 - top view
.JO : ........ -.......... -.......................................... ~ ........................... <-......... ~ ........................... ~ ..... ;:.o
l~''''''''''''"'~"'~''''':":-:,":.:~~':'''''"''''''''~~
L:·:_. .. ·----··.--t:·------·:''·t:::--~;~~-----:~J , .. ~;n
1~·~: .-· .,.., .... ;.--.... -., .. -. ............ ~
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_....~-·· n:
~: G ff.~--... -)'2.
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Appeal2017-001079
Application 14/158,652
Thus, when original Figures 2, 3, and 5 are considered in conjunction, they
do not support a claimed embodiment in which the insert 20 does not extend
completely across the lid in both transverse directions.
Moreover, the Specification defines the term "lid" as "a separate
structure or a portion of the container that closes (e.g., a portion of a bag or
the like that closes the container)." (Spec. i-f 33.) As explained by the
Examiner, the lid in question could have a non-circular shape, such as a lid
shape "closely conforming" to the shape of the insert portion shown in
Figure 5, and/or a lid shape having "a projection" that contacts a concave
edge of the insert portion shown in Figure 5. (Answer 9.)
Thus, we sustain the Examiner's rejection of independent claim 1, and
claims 2--4, 7, and 8 depending therefrom, under 35 U.S.C. § 112, first
paragraph. We, accordingly, also sustain the Examiner's objection under
35 U.S.C. § 132(a) in that the amendment filed September 16, 2015 contains
text (i.e., "only the first convex edge and the second convex edge of the
reduced sized insert 20 contact the outer wall of the lid 60") that introduces
new matter into the disclosure.
Rejection II
As indicated above, independent claim 1 recites a "lid comprising an
outer wall" and requires "only the first convex edge and the second convex
edge of the insert portion contact the outer wall of the lid." (Appeal Br.,
Claims App.) The Examiner maintains that it is not clear whether the
Appellants are claiming a "scoop holder only" or the combination of a
"scoop holder with a lid." (Final Action 8.) We agree with the Appellants
(see Appeal Br. 12-13) that independent claim 1 clearly conveys that it is
the "scoop holder" being claimed. A person of ordinary skill in the art
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Appeal2017-001079
Application 14/158,652
would understand that the recitation of the lid and/or its outer wall in
independent claim 1 are for the purpose of imparting structural features to
the insert portion, in that it is "configured to fit" such a lid.
The Examiner also maintains that the scope of independent claim 1
"cannot be completely determined" due to it containing subject matter "not
sufficiently described" in the original Specification. (Final Action 8.) As
discussed above, the flexible attachment member, the lid's outer wall, and
the insert's convex/concave edges are sufficiently described in the original
Specification. As for the limitation reading "only the first convex edge and
the second convex edge of the insert portion contact[ing] the outer wall of
the lid" (Appeal Br., Claims App.), it is clear to us what the Appellants are
trying to claim. The problem with this limitation is that it is not supported
by the original Specification, not that it is indefinite.
Thus, we do not sustain the Examiner's rejection of claims 1--4, 7,
and 8 under 35 U.S.C. § 112, second paragraph.
Rejection III
As indicated above, independent claim 1 requires the insert portion to
comprise "a first convex edge having a first end and a second end," "a
second convex edge having a first end and a second end," and "a first
concave edge extending between the first end of the first convex edge and
the first end of the second convex edge." (See Appeal Br., Claims App.)
The Examiner maintains that the scoop holder having such an insert shape
would have been obvious over Yang or Wenger. (See Final Action 9-10.)
We agree with the Appellants that the Examiner does not adequately
establish that either prior art reference shows or suggest the claimed non-
circular arrangement of convex/concave edges in the insert portion. (See
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Appeal2017-001079
Application 14/158,652
Appeal Br. 14.) According to the Examiner, "[i]t would have been obvious
to provide the insert in either reference in the claimed shape as an obvious
choice of design." (Final Action 9.) However, the Examiner does not
provide us with any credible reason why a skilled artisan would have made
the specific design choice recited in independent claim 1.
Thus, we do not sustain the Examiner's reiection of claims 1--4, 7,
and 8 under 35 U.S.C. § 103(a) as unpatentable over Yang or Wenger.
DECISION
We AFFIRM the Examiner's rejection of claims 1--4, 7, and 8 under
35 U.S.C. § 112, first paragraph, as containing new matter and failing to
comply with the written description requirement; and we, accordingly, also
AFFIRM the Examiner's objection under 35 U.S.C. § 132(a) based upon
new matter being introduced into the disclosure.
We REVERSE the Examiner's rejection of claims 1--4, 7, and 8 under
35 U.S.C. § 112, second paragraph, as indefinite.
We REVERSE the Examiner's rejection of claims 1--4, 7, and 8 under
35 U.S.C. § 103(a) as unpatentable over Yang or Wenger.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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