Gerry Gersovitz

Patent Trials and Appeals Board

Sep 13, 2021

2021002232 (P.T.A.B. Sep. 13, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
14/693,765 04/22/2015 Gerry Gersovitz 088507-0941275 4280
20350 7590 09/13/2021
Kilpatrick Townsend & Stockton LLP - West Coast
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
BRADEN, SHAWN M
ART UNIT PAPER NUMBER
3736
NOTIFICATION DATE DELIVERY MODE
09/13/2021 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GERRY GERSOVITZ

Appeal 2021-002232
Application 14/693,765
Technology Center 3700
____________

Before MICHAEL C. ASTORINO, JAMES P. CALVE, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 1–7, 9, 10, 13, 14, 16, 17, 19, and 20.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
“Gerry Gersovitz.” Appeal Br. 3 (“Appeal Br.” refers to the Appeal Brief
filed Sept. 28, 2020).
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STATEMENT OF THE CASE
Claimed Subject Matter
Claims 1 and 13 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter.
1. A multi-compartment storage device, comprising:
a container comprising:
a first end;
a second end; and
at least one surface extending from the first end to
the second end;
a divider wall defining a first compartment extending
from the divider wall to the first end and a second compartment
extending from the divider wall to the second end;
a first seal coupled to the first compartment;
a second seal coupled to the second compartment,
wherein at least one of the first seal or the second seal is
a reusable closure element,
wherein the container includes first pleats between the
first end and the divider wall,
wherein the container includes second pleats between the
second end and the divider wall, and
wherein the divider wall includes third pleats, and
wherein the first pleats, the second pleats, and the third
pleats are similar.

Petitionable Matter
The Appellant seeks review of the Examiner’s restriction and
withdrawal of claim 23 as being independent or distinct from the originally
claimed invention. Appeal Br. 8–9; see Non-Final Act. 3–4 (“Non-Final
Act.” refers to the Non-Final Office Action, mailed April 30, 2020). This
matter is reviewable by petition under 37 C.F.R. §§ 1.144 and 1.181 (see
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Manual of Patent Examining Procedure (“MPEP”) §§ 1002, 1002.02(c),
1201 (9th ed., rev. 10.2019, last rev. June 2020)) and is not within the
jurisdiction of the Board. In re Hengehold, 440 F.2d 1395, 1403 (CCPA
1971).
Further, the Appellant appears to argue for the patentability of
claim 23 over the cited references. See Appeal Br. 14. As a consequence of
claim 23 being withdrawn, as well as never being rejected, the patentability
of claim 23 is not an appealable matter. See Non-Final Act. 1, 3–4; Ans. 11,
12–13 (“Ans.” refers to the Examiner’s Answer, mailed Dec. 14, 2020).

Objection
The drawings are objected to under 37 C.F.R. § 1.83(a) because they
fail to show every feature of the invention of the claims. Non-Final Act. 2.

Rejections
Claims 1 and 13 are rejected under 35 U.S.C. § 112(a) or 35 U.S.C.
§ 112 (pre-AIA), first paragraph, as failing to comply with the written
description requirement.
Claims 1 and 13 are rejected under 35 U.S.C. § 112(b) or 35 U.S.C.
§ 112 (pre-AIA), second paragraph, as indefinite.
Claims 1–7, 9, 10, 13, 14, 16, 17, 19, and 20 are rejected under (pre-
AIA) 35 U.S.C. § 102(b) as anticipated by Woods (US 1,889,882, iss.
Dec. 6, 1932).

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ANALYSIS
Objection to the drawings and rejection of claims 1 and 13 as failing to
comply with the written description requirement
Ordinarily an objection is petitionable to the Director and a rejection
is appealable to the Board. When the issue of new matter is the subject of
both an objection and a rejection, the issue is appealable. See MPEP
§ 2163.06(II).
Independent claims 1 and 13 recite “wherein the divider wall includes
third pleats, and wherein the first pleats, the second pleats, and the third
pleats are similar.” Appeal Br., Claims App.
The Examiner originally objected to the drawings because they fail to
show a feature in the foregoing claim recitation; namely, the original
drawings do not show the divider wall including third pleats, and more
specifically, how the third pleats are similar to the first and second pleats.
See Final Act. 2 (“Final Act.” refers to the Final Office Action, mailed
May 14, 2018). The Examiner based this objection on original Figure 9,
which is specific to an embodiment directed toward packing bread, i.e., a
bread bag. Spec. ¶ 42.2 The Appellant filed replacement sheets for Figure 9

2 There is an issue of whether or not the Examiner entered the amendment to
the Specification, filed January 31, 2018. We note that the Examiner
objected to the Specification in a Final Office Action (mailed May 14,
2018). Final Act. 2–3. The objection to the Specification concerned a
similar issue as the drawing objection and the Written Description rejection.
The Appellant argued the merits of the Specification objection in a response
to the Final Office Action. See Amendment 6 (filed Aug. 14, 2018). The
record is unclear on whether or not the Specification objection has been
withdrawn or maintained. See, e.g., Appeal Br. 10 (“Appellant further notes
that the Examiner has not addressed Appellant’s arguments in response to
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on January 31, 2018. These replacement sheets included Figures 9A, 9B,
and 9C. The Examiner maintained the drawing objection to Figure 9C
because it allegedly includes new matter. Ans. 11. It is the Examiner’s
position that “[t]he original disclosure never mentions a third pleat and the
new drawings attempted to show[] this new element that was never
mentioned.” Ans. 11. It is the Appellant’s position that Figure 9C is fully
supported by the original Specification and by original Figure 9 when
interpreted by one of ordinary skill in the art. See Appeal Br. 10.
The Examiner rejects claims 1 and 13 as failing to comply with the
written description requirement for a similar reason as provided in the
drawing objection. Non-Final Act. 5. The Examiner explains:
Applicant’s paragraph [42] and figure 9 do [not] show or
clearly define what is consider [sic] a third pleats on the divider
wall that are similar to the first pleats (which close an open end)
or the second pleats (which again close an open end). Viewing
fig. 9, [i]t is not clear how pleats on a divider wall (910) would
be similar to the shown pleats (911) which are made from
closing the openable portion (907). The divider wall does not
have an openable portion, how or why would the pleats be
similar? Paragraph [42], only reiterates that the pleats are
similar, no further details.
Non-Final Act. 5 (some bracketing in original). It is the Appellant’s position
that “one of ordinary skill in the art of the subject matter to be patented

the objection to the [S]pecification in the Office Action of 5/14/18 and has
not maintained the objection hereafter.”). Nonetheless, the issues
concerning the drawing objection and the written description rejection can
be resolved without a clear understanding of whether this matter has been
resolved.
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would clearly understand how the third pleats would be similar to the first
pleats and the second pleats.” Appeal Br. 10.
As for the written description rejection, the Examiner’s explanation
falls short because it fails to account for the ability of one of ordinary skill in
the art to understand how pleats in a divider wall would be similar to the
pleats at the open ends of the container. See Appeal Br. 10, 11. We note
that the original Specification describes “[t]he pleats of divider 910 can be
similar to pleats 911.” Spec. ¶ 42. “The pleats of divider 910” correspond
to the claimed “third pleats,” and “pleats 911” correspond to the claimed
“first pleats” and “second pleats.” In this case, the similarity between the
claimed “third pleats,” and the “first pleats” and “second pleats” is between
the folds of the container material forming the pleats. See Spec. ¶ 42. We
determine that the description in the Specification, along with the depiction
in original Figure 9, reasonably conveys to one of ordinary skill in the art
that the inventor had possession of the claimed invention. Therefore, we do
not sustain the Examiner’s rejection of claims 1 and 13 as failing to comply
with the written description requirement.
As for the Examiner’s drawing objection to Figure 9C, we fail to
understand how the illustration of Figure 9C is beyond that which is
described in the original Specification and original Figure 9 when
interpreted by one of ordinary skill in the art. Therefore, we do not sustain
the Examiner’s drawing objection to Figure 9C.

Rejection of claims 1 and 13 as indefinite
The Examiner rejects claims 1 and 13 as indefinite because the claims
do not specify how the third pleats (i.e., pleats in a divider wall) would be
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similar to the first and second pleats (i.e., pleats at the open ends of the
container). Non-Final Act. 5–6. The Examiner’s rejection concerns the
same language of claims 1 and 13 as discussed above; namely, “wherein the
divider wall includes third pleats, and wherein the first pleats, the second
pleats, and the third pleats are similar.” In the Examiner’s words, “[t]he
Examiner cannot tell what the third pleat is, how it is made, how it’s folded,
how the first and second pleats are made or folded.” Ans. 12.
We determine that the Examiner’s reasoning is flawed because it
mistakes breadth for indefiniteness. See In re Gardner, 427 F.2d 786, 788
(CCPA 1970). As discussed above, the similarity between the claimed
“third pleats,” and the “first pleats” and “second pleats” is between the folds
of the container material forming the pleats. The claims do not specify
particular features of the pleats, which suggests that the claims are broad and
not indefinite.
Thus, we do not sustain the Examiner’s rejection of claims 1 and 13 as
indefinite.

Rejection of claims independent claims 1 and 13 and dependent claims 2–7,
9, 10, 14, 16, 17, 19, and 20 as anticipated by Woods
Independent claims 1 and 13 each require a divider wall between a
first compartment and a second compartment, where the divider wall
includes third pleats. See Appeal Br., Claims App. (Independent claims 1
and 13 recite “a divider wall defining a first compartment extending from
the divider wall to the first end and a second compartment extending from
the divider wall to the second end” and “wherein the divider wall includes
third pleats.”).
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Woods’ “invention relates to packages, and more particularly to a
combination package of a food stuff, such as doughnuts, and a material such
as powdered sugar with which the doughnuts may be dusted or coated
subsequently.” Woods 1:1–6. Woods’ package includes doughnut
compartment 13 and second chamber 14 with treating material 15, such as
powdered sugar. See Woods 2:25–36, Figs. 2, 3.
The Examiner’s rejection is based on a finding that the claimed “first
compartment” corresponds to Woods’ chamber 14 and the claimed “second
compartment” corresponds to Woods’ doughnut compartment 13. Non-
Final Act. 6–7; see Woods 2:25–36, Fig. 3. The Examiner finds that the
claimed “divider wall” corresponds to a wall between Woods’ second
chamber 14 and doughnut compartment 13. See Non-Final Act. 6–7, 10.
Also, the Examiner finds that the claimed “third pleats” corresponds to the
closure formed along Woods’ dotted lines 7, 8. Non-Final Act. 7, 8
(annotating Woods Fig. 1); see Woods 2:13–17.
The Appellant argues that the Examiner’s rejection of claims 1 and 13
as anticipated by Woods is in error. Appeal Br. 13–14. The Appellant
argues Woods’ “third pleats are on a wall that is not a dividing wall between
the first chamber and the second chamber as required by the claim.” Appeal
Br. 13; see Appeal Br. 14. The Appellant’s argument is persuasive.
We find that the closure formed along Woods’ dotted lines 7, 8, i.e.,
what the Examiner identifies as the “third pleats,” is situated at the bottom
end of Woods’ container. See Non-Final Act. 6–8; Woods Fig. 1. The
bottom end of the container is situated completely apart from where the
Examiner finds Woods discloses the claimed “divider wall” (i.e., a wall
between Woods’ second chamber 14 and doughnut compartment 13). See
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Non-Final Act. 6–7; Woods Figs. 2–3. In other words, we find that the
closure formed along Woods’ dotted lines 7, 8 –– i.e., what the Examiner
identifies as the “third pleats” –– is not on a wall between what the
Examiner identifies as first and second compartments, i.e., Woods’ chamber
14 and doughnut compartment 13, respectively. Therefore, we determine
that the structure which the Examiner identifies as the claimed “third pleats”
is not part of what the Examiner identifies as the “divider wall defining a
first compartment extending from the divider wall to the first end and a
second compartment extending from the divider wall to the second end,” as
recited in independent claims 1 and 13. Accordingly, we determine that the
Examiner’s finding that Woods discloses “wherein the divider wall includes
third pleats” is inadequately supported.
Further, we note that the Examiner fails to respond substantively to
the Appellant’s argument. Instead, the Examiner’s only response is directed
to Appellant’s phrasing of what the claim requires. Ans. 12 (“[T]he features
upon which applicant relies (i.e.,[ ‘]that the third pleats are on a wall that is
not a dividing wall between the first chamber and the second chamber’) are
not recited in the rejected claim(s).”). The Examiner’s response does not
explain how the Examiner’s finding that Woods discloses “wherein the
divider wall includes third pleats,” as required by independent claims 1 and
13, is adequately supported.
Thus, we do not sustain the Examiner’s rejection of independent
claims 1 and 13, and the claims that depend therefrom, as anticipated by
Woods.

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CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1, 13 112 Written Description

1, 13
1, 13 112 Indefiniteness 1, 13
1–7, 9, 10,
13, 14, 16,
17, 19, 20
102(b) Woods 1–7, 9, 10,
13, 14, 16,
17, 19, 20
Overall
Outcome
1–7, 9, 10,
13, 14, 16,
17, 19, 20

REVERSED