Ex Parte Zhang et al

Patent Trial and Appeal Board

Oct 23, 2018

12981312 (P.T.A.B. Oct. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/981,312 12/29/2010 Han Zhang
69684 7590 10/25/2018
ABEL LAW GROUP, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
AUSTIN, TX 78759
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.
TW-05778-US 6326
EXAMINER
ACKUN, JACOB K
ART UNIT PAPER NUMBER
3736
NOTIFICATION DATE DELIVERY MODE
10/25/2018 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):
mail@abel-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HAN ZHANG and DAVID E. WOOLLEY
Appeal 2018-001431 1
Application 12/981,3122
Technology Center 3700
Before KENNETH G. SCHOPPER, BRADLEY B. BAY AT, and
TARA L. HUTCHINGS, 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--4, 6-9, 11, 29, 30, 33-35, and 38--43. 3 We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
1 Our decision references the Appeal Brief ("Br.," filed Jan. 30, 2017), the
Examiner's Answer ("Ans.," mailed Aug. 31, 2017), and the Final Office
Action ("Final Act.," mailed July 28, 2016).
2 According to Appellants, the real parties in interest are Saint-Gobain
Abrasives, Inc. and Saint-Gobain Abrasifs. Br. 3.
3 The list of claims includes two claims labelled as claim 42. For clarity, we
refer to the second listed claim 42 (see Br. 21) as claim 43 in this decision.
Appeal 2018-001431
Application 12/981,312
BACKGROUND
According to Appellants, the "disclosure ... relates to packaged
abrasive articles and methods for preparing such." Spec. ,r 2.
ILLUSTRATIVE CLAIM
Claim 1 is the only independent claim one appeal and recites:
1. An article comprising:
a package defining an enclosed volume, a side of the
package made of a rigid self-supporting wall having a support
material comprising a fibrous material and a barrier material
comprising a metal material and a polymeric material, wherein
the barrier material defines an interior surface of the rigid self-
supporting wall and is disposed between the support material and
a bonded abrasive disposed within the enclosed volume, and
further wherein the rigid self-supporting wall has a water vapor
transfer rate of not greater than 0.6 g/m2-day; and wherein a the
bonded abrasive article disposed within the enclosed volume
comprises abrasive grains dispersed in a polymer matrix.
Br. 19.
REJECTIONS
1. The Examiner rejects claims 1--4, 6-9, 11, 29, 30, 33-35, and 38--43
under 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement.
2. The Examiner rejects claims 1--4, 6-9, 11, 29, 30, 33-35, and 38--43
under 35 U.S.C. § 112, second paragraph, as indefinite.
3. The Examiner rejects claims 1--4, 6-9, 11, 29, 30, 33-35, and 38--43
under 35 U.S.C. § I03(a) as unpatentable over Schwabel4 or Scheller. 5
4 Schwabel et al., US 2007/0000214 Al, pub. Jan. 4, 2007.
5 Scheller, US 2006/0003121 Al, pub. Jan. 5, 2006.
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Application 12/981,312
DISCUSSION
Objections
To the extent Appellants address objections in their briefs that are not
related to the written description rejections discussed below, such objections
are not properly before us on appeal. Such matters are reviewable by
petition under 3 7 C.F .R. § 1.181.
Written Description
Claim 1
The Examiner finds that the Specification as filed lacks support for
the claim requirement that the barrier material is disposed between the
support material and a bonded abrasive. See Final Act. 2.
"Adequate written description means that the applicant, in the
specification, must 'convey with reasonable clarity to those skilled in the art
that, as of the filing date sought, he or she was in possession of the [ claimed]
invention."' Agilent Techs., Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1379
(Fed. Cir. 2009). The possession test alone, however, is not always
sufficient to meet the written description requirement. Enzo Biochem, Inc. v.
Gen-Probe Inc., 323 F.3d 956, 969 (Fed. Cir. 2002). Rather, "the written
description requirement is satisfied by the patentee's disclosure of 'such
descriptive means as words, structures, figures, diagrams, formulas, etc., that
fully set forth the claimed invention."' Id. ( quoting Lockwood v. American
Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)).
We agree with the Examiner that the disclosure, including the figures,
does not fully set forth the claimed invention to the extent that the disclosure
is silent regarding whether the barrier material is disposed between the
support material and bonded abrasive. Appellants assert that the claimed
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Application 12/981,312
arrangement of the barrier layer and support layer are supported in Figures 3
and 4, and that, based on these figures, "there are two arrangements of the
barrier material and the support material with respect to each other and with
respect to which material defines the interior surface." Br. 5. Appellants
argue that "[b ]oth arrangements are equally disclosed." Id. We disagree.
Rather, we agree with the Examiner that Appellants' disclosure and figures
do not provide an indication as to which layer defines the interior surface.
Thus, the disclosure, including Figures 3 and 4, fails to fully set forth the
claimed invention.
Based on the foregoing, we sustain the rejection of claim 1 as failing
to comply with the written description requirement. For the same reasons,
we sustain the rejection of dependent claims 2--4, 6-9, 11, 29, 30, 33-35,
and 38--43.
Claim 33
The Examiner indicates that the Specification lacks support for the
claim requirement that the bottom is made of a rigid self-supporting
material. Final Act. 3.
Appellants argue, and we agree, that the Specification provides
adequate support for this claim requirement. See Br. 8-9. Specifically, the
Specification describes both that the self-supporting walls of the package are
made of rigid material and that the bottom can be formed of the same
material as the walls. See Spec. ,r,r 40, 85. Thus, one would reasonably
conclude that Appellants were in possession of a device as claimed at the
time the Specification was filed.
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Claim 35
The Examiner finds that the Specification lacks support for the claim
requirement that the bottom is adhered to the wall with an adhesive because
"the specification fails to teach exactly how the bottom wall is adhered with
adhesive." Final Act. 5 ( emphasis omitted).
Appellants argue, and we agree, that the Specification provides
sufficient support for this claim limitation. See Br. 10-11. We find it
sufficient, for the purposes of the written description requirement, that the
Specification discloses that "[ t ]he bottom 314 can be integrally formed with
the wall 302 or can be adhered to the wall 302, such as with an adhesive."
Spec. ,r 40.
Claims 42 and 43
The Examiner indicates that claims 42 and 43 lack written description
support. See Final Act. 2. More particularly, the Examiner indicates that the
Specification does not explain"[ e ]xactly how" the parts are friction fit. Id.
at 5.
Appellants argue, and we agree, that the Specification provides
sufficient support for the limitations required by claims 42 and 43. See Br.
11-12. Specifically, we find it sufficient, for the purpose of the written
description requirement, that the Specification discloses that "[t]he top 306
can be secured to the wall 302 by a friction fitting. In another example, the
top 306 can be secured to the wall 302 using a screw top configuration."
Spec. ,r 41.
Indefiniteness
The Examiner rejects the claims as "indefinite because they contain
limitations that were not properly described in the specification or were not
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Application 12/981,312
described in the specification at all." Final Act. 6. Yet, the Examiner has
not explained how any of the claims include language that fails to set forth
the metes and bounds of the claims such that one of ordinary skill in the art
would not understand the scope of the claims. Thus, we do not sustain this
rejection.
Obviousness
With respect to this rejection, Appellants group all claims together
and provide arguments only directed to claim 1. See Br. 14--18. Thus, we
address claim 1 below, and claims 2--4, 6-9, 11, 29, 30, 33-35, and 38--43
stand or fall with claim 1.
With respect to claim 1, the Examiner finds that Schwabel discloses
an article including a flexible package 10 with sidewalls that comprise a
multilayer composite that may include multiple layers that are substantially
permanently combined or temporarily combined. Final Act. 7 ( citing
Schwabel ,r,r 24--26). The Examiner also finds that Schwabel discloses the
use of shrink wrap can form a layer of a multilayer composite that serves as
a protective layer. Id. at 7-8 (citing Schwabel ,r,r 35, 36). The Examiner
concludes:
In view of these teachings, it would have been obvious to
provide embodiments of the multilayer barrier composite of
Schwabel as cardboard, metal (foil) and polymeric layers,
whether substantially permanently combined, temporarily
combined or both, for the purpose of providing optimal
protection for the abrasive articles. Based on the function taught
for the cardboard layer (protective layer), the multilayer barrier
composite above has walls that meet the limitations "rigid and
self supporting" as defined in the subject application, or it would
also have been obvious to construct the cardboard layer to have
a thickness such that the multilayer barrier composite walls were
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Application 12/981,312
rigid and self supporting, in order to provide appropriate
protection for the abrasive articles as well as for the packaging.
Id. at 8. Alternatively, the Examiner finds that "Scheller has similar
disclosure to Schwabel and it is applied in the same way." Id. at 9.
Appellants argue that the Examiner has not shown that the art of
record discloses a barrier layer defining an interior surface of a rigid self-
supporting wall. Br. 14. In particular, Appellants assert that each of the
references relied upon only teach the use of a cardboard layer, i.e. the rigid
support layer, between the barrier layer and the abrasive articles. Id. at 15.
Appellants assert that the cardboard layer is placed inside a barrier layer in
order to protect the barrier layer from damage by the abrasive articles. Id.
Thus, Appellants argue that the art teaches the opposite configuration of the
claims, that the art teaches away from the arrangement claimed, and that
changing the arrangement would render the art unsuitable for its intended
purpose. Id. at 15-18.
We are not persuaded by Appellants' arguments for the unrebutted
reasons provided by the Examiner in the Answer. See Ans. 14--20. As an
initial matter, we note that the rejection does not appear to rely on moving or
removing Schwabel's disclosed cardboard layer. See Final Act. 7-8. To the
extent the rejection was unclear in that regard, the Examiner has sufficiently
clarified the rejection in the Answer to indicate that Schwabel's teaching of
cardboard is only relied upon to the extent that Schwabel teaches that
cardboard may be a part of the barrier layer and not a separate structure. See
Ans. 17. Further, the Examiner notes that Schwabel discloses embodiments
that do not rely on the presence of interior cardboard to protect the barrier
layer. Id. at 17-18. Also, the Examiner makes clear that the rejection relies
on the ordinary knowledge of a skilled artisan insofar as the Examiner
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concludes that it would have been obvious to include an exterior rigid
support layer to better support and protect the package. Id. at 18. Finally,
the Examiner provides examples of prior art packaging with rigid self-
supporting walls for holding abrasive articles and the use of methods to
make cardboard moisture resistant. Id. at 19-20.
Based on the Examiner's unrebutted response and characterization of
the rejection, we are not persuaded of error in the rejections. Accordingly,
we sustain the rejection of claim 1 over either Schwabel or Scheller. We
also sustain the rejection of claims 2--4, 6-9, 11, 29, 30, 33-35, and 38--43,
which fall with claim 1.
CONCLUSION
We AFFIRM the rejections of claims 1--4, 6-9, 11, 29, 30, 33-35, and
38--43 under 35 U.S.C. § 112, first paragraph, and 35 U.S.C. § 103(a). We
REVERSE the rejection of claims 1--4, 6-9, 11, 29, 30, 33-35, and 38--43
under 35 U.S.C. § 112, second paragraph.
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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