Ex Parte McDonald et al

Patent Trial and Appeal Board

Aug 22, 2016

13219201 (P.T.A.B. Aug. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/219,201 08/26/2011
22474 7590 08/24/2016
Clements Bernard PLLC
4500 Cameron Valley Parkway
Suite 350
Charlotte, NC 28211
FIRST NAMED INVENTOR
Wayne Mitchell MCDONALD
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.
5293 9362
EXAMINER
MCNURLEN, SCOTT THOMAS
ART UNIT PAPER NUMBER
3782
NOTIFICATION DATE DELIVERY MODE
08/24/2016 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):
patlaw@worldpatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WAYNE MITCHELL MCDONALD,
COLTON SANDS MCDONALD, and
JOSEPH RIDGE MCDONALD
Appeal2014-005684
Application 13/219,201
Technology Center 3700
Before THOMAS F. SMEGAL, ERIC C. JESCHKE, and
MARK A. GEIER, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Wayne Mitchell McDonald et al. (Appellants) 1 seek our review under
35 U.S.C. § 134 of the Examiner's final rejection of claims 1-3, 6-9, and
11-19.2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to 37 C.F.R. § 41.50(b).
1 According to Appellants, the real party in interest is Globepac, LLC.
Appeal Br. 1.
2 Claims 4, 5, and 10 were canceled. See Appeal Br. 2 and 27-28 (Claims
App.).
Appeal2014-005684
Application 13/219,201
CLAIMED SUBJECT MATTER
Claims 1, 9, and 16 are independent. Claim 1 is reproduced below
and illustrates the claimed subject matter, with disputed limitations
emphasized.
1. A foldable bag, comprising:
a rear wall part having a front side, a back side, and first interior
side, and a second interior side; a front wall part having a front
side, a back side, and first interior side and a second interior side;
a first middle part having a front side, a back side, a first interior
side, and a second interior side, and a side wall part; a second
middle part having a front side, a back side, a first interior side,
and a second interior side, and a side wall part;
whereby the front wall part is engaged to the first middle part
along a first fold line, the first middle part is engaged to the
second middle part along a second fold line, and the rear wall
part is engaged to the second middle part along a third fold line,
wherein the foldable bag is moveable between:
a first position in which the front side of the front wall part is
adjacent the front side of the middle part, the front side of the
middle part is adjacent the front side of the rear wall part;
a second position in which the back side of the front wall part,
the back side of the middle part, and the back side of the rear wall
part are in a substantially planar relationship with the front side
of the front wall part, the front side of the middle part, and the
front side of the rear wall part; and
the second side wall part of the rear wall part contains a zipper
that extends substantially the length of the second side wall part
of the rear wall part and the second side wall part of the second
middle part contains a zipper that extends substantially the length
of the second side wall part of the second middle part for forming
a selectively secured arrangement between the second wall part
of the rear wall part and second wall part of the second middle
part; and
the second side wall part of the front wall part contains a zipper
that extends substantially the length of the second side wall part
of the front wall part and the second side wall part of the first
middle part contains a zipper that extends substantially the length
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Application 13/219,201
of the second side wall part of the first middle part for forming a
selectively secured arrangement between the second wall part of
the first middle part and the second wall part of the front wall
part.
REJECTIONS
The following Examiner's rejections are before us for review.
1. Claims 1and8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Manning (US 3,143,748, iss. Aug. 11, 1964),
Kraft (US 5,785,219, iss. July 28, 1998), and Tyler (US
2005/0039260 Al, pub. Feb. 24, 2005).
2. Claim 2 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Manning, Kraft, Tyler, and Seaman (US 4,277,859, iss. July 14,
1981 ).
3. Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Manning, Kraft, Tyler, and Haskell (US 4,177,909, iss. Dec. 11,
1979).
4. Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Manning, Kraft, Tyler, and Berry (US 2007 /0175941 Al, pub.
Aug. 2, 2007).
5. Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Manning, Kraft, Tyler, and Wolter (US 5,394,575, iss. Mar. 7,
1995).
6. Claims 9, 13, 14, 16, 18, and 19 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Manning, Kraft, Tyler, and Stewart
(US 7,051,386 B2, iss. May 30, 2006).
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Application 13/219,201
7. Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Manning, Kraft, Tyler, Stewart, and Haskell.
8. Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Manning, Kraft, Tyler, Stewart, and Berry.
9. Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Manning, Kraft, Tyler, Stewart, and Wester (US 1,380,167, iss.
May 31, 1921.
10. Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Manning, Kraft, Tyler, Stewart, and Lin (US 6,611,981 Bl,
iss. Sept. 2, 2003).
ANALYSIS
NEW GROUND OF REJECTION
Indefiniteness
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims
1-3, 6-9, and 11-19 under 35 U.S.C. § 112, second paragraph, as being
indefinite for failure to particularly point out and distinctly claim the subject
matter which the Appellants regard as the invention. A claim fails to
comply with 35 U.S.C. § 112, second paragraph, "when it contains words or
phrases whose meaning is unclear." In re Packard, 751F.3d1307, 1310,
1322 (Fed. Cir. 2014) (approving, for pre-issuance claims, the standard from
MPEP § 2173.05(e)). "It is the applicants' burden to precisely define the
invention, not the PTO's. See 35 U.S.C. § 112 i-f 2 .... [T]his section puts
the burden of precise claim drafting squarely on the applicant." See also In
re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997).
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Application 13/219,201
Appellants' Specification describes the invention by reference to the
single embodiment depicted in Figures 1-18, illustrating engagement means
(zippers 88, 90, 92, and 94) located along both sides of the bag when the bag
is in a folded first position. Figures 1-18 also illustrate that many of the
engagement means are "disposed in close proximity to the middle fold line
82," when the bag is in an unfolded second position. See Spec., paras. 39,
40.
However, independent claims 1, 9, and 16 recite that each of the front
wall part, rear wall part, and first and second middle parts, "contains a zipper
that extends substantially the length of the second side wall part." Appeal
Br. 28-31 (Claims App.). Importantly, the claim language does not recite an
antecedent basis for "the second side wall part." More specifically,
independent claims 1 and 9 fail to provide antecedent basis for the term
"second side wall part" of each of the rear wall part, the front wall part, or
the first and second middle parts, while claims 1, 9, and 16 also fail to even
recite a "first side wall part" for any of the rear wall part, the front wall part,
or the first and second middle parts. This lack of specificity causes the
scope of claims 1, 9, and 16 to be indefinite as it is unclear which structure is
defined by the term "second side wall part." For example, it is unclear
whether "second side wall part" refers to the side wall part formed by
folding the bag along the center fold line 82 (see Spec., fig. 11), or to the
side wall part defined by the peripheral edge of material from which the bag
is formed (see Spec., fig. 7).
For the foregoing reasons, we find that claims 1-3, 6-9 and 11-19 fail
to comply with 35 U.S.C. § 112, second paragraph, in failing to particularly
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point out and distinctly claim the subject matter which the Appellants regard
as the invention.
First through Tenth Grounds of Rejection
We do not sustain the Examiner's above-listed grounds of rejection of
claims 1-3, 6-9, and 11-19 because those grounds of rejection are
necessarily based on speculative assumptions as to the meaning of the
claims. See In re Steele, 305 F.2d 859, 862---63 (CCP A 1962). It should be
understood, however, that our decision in this regard is based solely on the
indefiniteness of the claimed subject matter and does not reflect on the
adequacy of the prior art evidence applied in support of the Examiner's
rejections.
DECISION
The Examiner's decisions to reject claims 1-3, 6-9, and 11-19 are
REVERSED.
We enter a new ground of rejection of claims 1-3, 6-9, and 11-19
under 35 U.S.C. § 112, second paragraph, as being indefinite.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the Appellants, 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
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Application 13/219,201
by the examiner, in which event the proceeding 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 ....
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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) (l)(iv).
REVERSED; 37 C.F.R. § 41.50(b)
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