Ex Parte NAKAMURA et al

Patent Trial and Appeal Board

Jul 27, 2018

14330262 (P.T.A.B. Jul. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/330,262 07/14/2014
27562 7590 07/31/2018
NIXON & V ANDERHYE, P.C.
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Kosuke NAKAMURA
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.
RYM-723-4031 9811
EXAMINER
ACKUN, JACOB K
ART UNIT PAPER NUMBER
3728
NOTIFICATION DATE DELIVERY MODE
07/31/2018 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KOSUKE NAKAMURA and YUI EHARA
Appeal2017-011698 1
Application 14/330,2622
Technology Center 3700
Before NINA L. MEDLOCK, KENNETH G. SCHOPPER, and
AMEE A. SHAH, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of
claims 1, 2, and 4--6. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Our decision references the Appeal Brief ("Appeal Br.," filed May 16,
2017), the Reply Brief ("Reply Br.," filed Sept. 21, 2017), the Examiner's
Answer ("Ans.," mailed July 27, 2017), and the Non-Final Office Action
("Non-Final Act.," mailed Jan. 18, 2017).
2 According to Appellants, the real party in interest is Nintendo Co., Ltd.
Appeal Br. 3.
Appeal 2017-011698
Application 14/330,262
BACKGROUND
According to Appellants, "[t]his application describes a packing
container and a package, packing an arbitrary device." Spec. 1, 11. 9--10.
CLAIMS
Claims 1 and 6 are the independent claims on appeal. Claim 1 is
illustrative of the appealed claims and recites:
1. A packing container which packs a content, comprising:
a first member configured to carry the content;
a second member that covers a part of the first member to
hold the content; and
a hole in one of the first member and the second member,
a tab on the other of the first member and the second
member at a position that covers only a first part of the hole so
that a second part of the hole remains uncovered as a hole for
hanging the packing container in the one of the first member and
the second member,
wherein all of the hole that is not covered by the tab is
contiguous.
Appeal Br. 16.
REJECTIONS
1. The Examiner rejects claims 1, 2, and 4---6 under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement.
2. The Examiner rejects claims 1, 2, and 4---6 under 35 U.S.C. § 112(b) as
indefinite.
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Application 14/330,262
3. The Examiner rejects claims 1, 2, and 4--6 under 35 U.S.C. § 103 as
unpatentable over Kuchenbecker, 3 Chow, 4 or Schierlmann. 5
DISCUSSION
Written Description
The Examiner finds that the claims include language that was "not
described in the specification so as to convey possession of the claimed
invention by applicant" including the last lines of both claims 1 and 6, which
recite, "wherein all of the hole that is not covered by the tab is contiguous."
Non-Final Act. 5. The Examiner further finds:
Id.
There is no specification description of the feature whatsoever.
There is no way to tell from the disclosure specifically what the
limitation means. It is noted that the limitation includes a
negative limitation that has been added to the claims for the first
time by amendment. Additionally, looking at Fig 3 the portion
of hole 134 not covered by the tab has two small indentations,
one on either side of the tab. How is one supposed to tell what
"contiguous" means in the context of what is shown in Fig 3
without the written description not even mentioning the
limitation?
The purpose of the written description requirement is to convey with
reasonable clarity to those skilled in the art that, as of the filing date sought,
applicant was in possession of the invention as now claimed. Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). This requirement
may be satisfied by "such descriptive means as words, structures, figures,
3 Kuchenbecker, US 4,119,203, iss. Oct. 10, 1978.
4 Chow, US 5,447,232, iss. Sept. 5, 1995.
5 Schierlmann, US 2006/0278561 Al, pub. Dec. 14, 2006.
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Application 14/330,262
diagrams, formulas, etc., that fully set forth the claimed invention."
Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).
We are persuaded that the claims here satisfy the written description
requirement for the reasons provided by Appellants. See Appeal Br. 7-10.
In particular, we find that the figures provide clear support for the claims,
including the claim limitations addressed by the Examiner. Accordingly, we
do not sustain this rejection.
Indefiniteness
The Examiner finds that "[ t ]he claims are indefinite because they
cannot be properly understood and therefore interpreted by the examiner.
This in tum is because the claims contain limitations that were inadequately
described in the specification ( or not described therein at all) as indicated
above." Non-Final Act. 6-7. As discussed above, we see no issues in the
claims with respect to the written description requirement, and the Examiner
does not otherwise explain why the scope of the claims is unclear.
Accordingly, we do not sustain this rejection.
Obviousness
In rejecting the independent claims as obvious, the Examiner provides
a separate discussion of each reference. Non-Final Act. 7-8. With respect
to Schierlmann, the Examiner finds:
In Schierlmann, the hole in the first member is the top
passage 16 in Fig 2. The tab is the generally triangular portion
surrounding the bottom passage 16 in the same figure. Portions
of this part cover only part of top passage 16 leaving a portion of
top passage 16 that appears to be contiguous.
Id. at 8. The Examiner then concludes "[t]o the extent none of the
references may show the portions of the claims considered to be indefinite it
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Application 14/330,262
would have been obvious to provide these to the prior art devices as a matter
of obvious choice of design." Id.
As discussed below, we are not persuaded of reversible error with
respect to the Examiner's rejection of the claims over Schierlmann.
With respect to Schierlmann, Appellants argue that Schierlmann does
not disclose a tab or, alternatively, a hole for hanging, because Schierlmann
does not disclose those elements in different members as required by the
claims. Appeal Br. 14. In particular, Appellants assert:
Id.
Schierlmann discloses that the "passage 16 facilitat[ es] the
display of the device on a post hanger." i-fl4. Also, when
comparing Fig. 1 to Fig. 2 of Schierlmann, it is evident that the
portion of the disclosed package upon which the package hangs
is the "coat hanger" shaped passage 16 in the lower end of Fig. 2.
The triangular passage 16 in the upper end of Fig. 2 will not bear
weight because it is completely outside of the "coat hanger"
shaped passage 16 when the package is closed. See Fig. 1. Thus
one of ordinary skill would interpret the "coat hanger" shaped
passage 16 as the hole for hanging.
Since the Office Action alleges that the tab is "the
generally triangular portion surrounding the bottom passage 16,"
the alleged tab and the hole for hanging, as it would be
understood by one of ordinary skill, are both in the same
member. This is contrary to the above quoted features of claims 1
and 6.
Also, the material around the triangular passage 16 (at the
top of Fig. 2) cannot be the tab because that that material covers
no part of the "coat hanger" shaped passage 16. See Fig. 1.
Appellants essentially argue that only the "coat hanger" shaped hole at
the bottom of Schierlmann's Figure 2 can be considered a hole for hanging
because it is the only hole that is configured to bear weight when the
package is closed and hung. We disagree with Appellants' characterization
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Application 14/330,262
of the claims. Claim 1, for example, requires only that a part of the hole
remains uncovered "as a hole for hanging the packing container." The claim
does not require that the hole bears any weight when the package is hung,
and we find that the broadest reasonable interpretation of the claim requires
only a hole that is capable of allowing the packing container to be hung.
Thus, we disagree that the uncovered portion of the top hole 16 cannot be
considered a hole for hanging as claimed when Schierlmann's device is
closed, as depicted in Figure 1. Further, the claim otherwise only requires
that the uncovered portion of the hole is contiguous, i.e. the uncovered
portions of the hole must be in contact. See "Contiguous," Merriam-
Webster. com, https://www.merriam-webster.com/ dictionary/ contiguous (last
visited July 23, 2018). Schierlmann plainly discloses such a contiguous
uncovered portion.
For these reasons, we agree with the Examiner that Schierlmann
teaches a hole in a first member (top passage 16), and when closed, the
Examiner has identified a tab portion ( triangular portions of bottom passage
16) that covers the hole in the first member in part such that the uncovered
portion of the hole allows for hanging and is contiguous. See Schierlmann
Figs. 1, 2.
Appellants also argue that the application of design choice with
respect to Schierlmann has been rebutted. Appeal Br. 14. We disagree.
Appellants only specifically discuss the application of design choice with
respect to Kuchenbecker and not with respect to the rejection over
Schierlmann. And we agree with the Examiner to the extent the Examiner's
conclusion indicates that a change in shape of the uncovered portion of the
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Application 14/330,262
hole would have been a design choice so long as the device retains a tab
portion and the ability to use the hole for hanging.
Based on the foregoing, we are not persuaded of reversible error with
respect to the rejection of claim 1 as obvious over Schierlmann.
Accordingly, we sustain the rejection over Schierlmann. Appellants do not
provide separate arguments regarding claims 2 and 4---6, and thus, we also
sustain the rejection of claims 2 and 4--6 over Schierlmann for the same
reasons. Further, because our decision with respect to the rejection over
Schierlmann is dispositive with respect to all claims on appeal, we do not
reach the separate rejections over Kuchenbecker or Chow.
CONCLUSION
We REVERSE the rejections of claims 1, 2, and 4---6 under 35 U.S.C.
§ 112. We AFFIRM the rejection of claims 1, 2, and 4--6 under 35 U.S.C.
§ 103 over Schierlmann.
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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