12108432 (P.T.A.B. Nov. 10, 2014)

Ex Parte Kovacevich et al

Patent Trial and Appeal BoardNov 10, 2014

12108432 (P.T.A.B. Nov. 10, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 12/108,432 04/23/2008 Ian D. Kovacevich 1702.022.16 1595 64935 7590 11/12/2014 TILLMAN WRIGHT, PLLC P.O. BOX 49309 CHARLOTTE, NC 28277-0076 EXAMINER WALKER, NED ANDREW ART UNIT PAPER NUMBER 3788 MAIL DATE DELIVERY MODE 11/12/2014 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 IAN D. KOVACEVICH, DANIEL LEE BIZZELL, MATTHEW BLAKE WYNN, and THOMAS J. PHILPOTT ____________________ Appeal 2012-009532 Application 12/108,432 Technology Center 3700 ____________________ Before: CHARLES N. GREENHUT, BARRY L. GROSSMAN, and BART A. GERSTENBLITH, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 97–100, 102–107, and 109–116. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2012-009532 Application 12/108,432 2 The claims are directed to a trashcan assembly insert having a plurality of fingers defining a passageway therethrough. Claim 97, reproduced below, is illustrative of the claimed subject matter: 97. An insert for placement in an opening of a trashcan assembly, the insert comprising a plurality of resilient, flexible fingers that define a passageway and that are configured to receive and retain a portion of a pliable liner that is extended through the passageway, wherein each finger includes a portion that extends in a first direction and then curves back to extend in a generally opposite direction. REJECTION Claims 97–100, 102–107, and 109–116 are rejected under 35 U.S.C. §§ 102(a) and 102(e) as being clearly anticipated by Ramsey (US Pub. No. 2007/0034334 A1, pub. Feb. 15, 2007, filed June 19, 2006). OPINION We adopt Appellants’ proposed claim grouping pursuant to 37 C.F.R. § 41.37(c)(1)(vii). App. Br. 8 (“claims 97–100, 102–107 and 109–116 stand or fall together, with independent claim 97 being representative of this grouping”). Appellants begin by attacking the clarity of the Examiner’s rejection without reference to any specific claim limitations of claim 97. App. Br. 8. [T]he PTO carries its procedural burden of establishing a prima facie case when its rejection satisfies 35 U.S.C. § 132, in “notify[ing] the applicant . . . [by] stating the reasons for [its] rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application.” 35 U.S.C. § 132. That section “is violated when a rejection is Appeal 2012-009532 Application 12/108,432 3 so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection.” In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (citations omitted). The authority of the Board under 35 U.S.C. § 6 is limited to reviewing adverse decisions of patent examiners. Petitions to the Director are available under 37 C.F.R. § 1.181 to require an examiner to clarify an official action in accordance with 37 C.F.R. § 1.104, or to afford an applicant additional procedural options if the examiner has changed the thrust of a rejection after an appeal is taken (see 37 C.F.R. § 41.40). “[P]etitionable matters should be addressed before an appeal reaches the Board.” Ex Parte Frye, 94 USPQ2d 1072, 1078 (BPAI 2010). “Filing a Board appeal does not, unto itself, entitle an appellant to de novo review of all aspects of a rejection.” Id. at 1075–76. Each of the Appellants is named as an inventor on the Ramsey publication.1 By entering an oath or declaration in both applications Appellants aver that they understand both claim 97 and the content of the Ramsey disclosure. See 37 C.F.R. § 1.63(c) (“A person may not execute an oath or declaration for an application unless that person has reviewed and understands the contents of the application, including the claims, and is aware of the duty to disclose to the Office all information known to the person to be material to patentability.”). Appellants have not apprised us of any reason why the Examiner’s rejection is “so uninformative” that they are prevented from explaining how claim 97 distinguishes over their previous 1 The availability of Ramsey as a prior-art reference was discussed previously during prosecution. See Final Rej., mailed Apr. 18, 2011. This point is apparently conceded by Appellants because it is not raised in, and therefore deemed waived for purposes of, this appeal. Appeal 2012-009532 Application 12/108,432 4 device. Indeed, Appellants attempt to do just that in making their next argument. The only limitation of claim 97 contested with specificity is the “insert for placement in an opening of a trashcan assembly.” App. Br. 9. The Examiner correctly points out that this feature is clearly depicted in Figure 1E of Ramsey. Ans. 13. Thus, the record before us sets forth “specific fact findings for each contested limitation.” See Gechter v. Davidson, 116 F.3d 1454, 1460 (Fed. Cir. 1997) (emphasis added). Accordingly, we affirm the Examiner’s rejection. DECISION The Examiner’s rejection is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED rvb