LIPP, Xaver

Patent Trials and Appeals Board

Jan 29, 2021

2020004256 (P.T.A.B. Jan. 29, 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.
15/034,561 05/05/2016 Xaver LIPP 2016-0507A 7364
513 7590 01/29/2021
WENDEROTH, LIND & PONACK, L.L.P.
1025 Connecticut Avenue, NW
Suite 500
Washington, DC 20036
EXAMINER
PERREAULT, ANDREW D
ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
01/29/2021 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):
eoa@wenderoth.com
kmiller@wenderoth.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte XAVER LIPP

Appeal 2020-004256
Application 15/034,561
Technology Center 3700
____________

Before HUBERT C. LORIN, JAMES P. CALVE, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 12–22 and 28–30.2 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. Appellant identifies the real party in interest as Xaver Lipp.
Appeal Br. 1.
2 Claims 1–11 have been cancelled, and claims 23–27 have been withdrawn.
See Amendment filed Jan. 18, 2019.
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Application 15/034,561

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BACKGROUND
The Specification discloses that “[t]he invention relates to a container
produced from a spiral-shaped, curved sheet strip, which may be used, for
example, as storage container for liquid or solid agricultural produce or
waste, or as biogas reactor.” Spec. 1.

CLAIMS
Claims 12 and 29 are the independent claims on appeal. Claim 12 is
illustrative of the appealed claims and recites:
12. A container, comprising:
a spiral strip being elongated and being wound
circumferentially about and axially along a longitudinal axis,
said spiral strip including first edge section being spiral shaped
and folded in a direction toward or away from said longitudinal
axis forming a spiral-shaped fold out edge and including a spiral-
shaped second edge section disposed opposite said first edge
section relative to a longitudinal direction of said spiral strip, said
second edge section overlapping a third section of said spiral
strip, said third section being disposed opposite said fold out
edge between said first edge section and said third section; and
a single welding seam connecting said second edge section
and said third section in a vicinity of overlapping of said second
edge section and said third section, said welding seam extending
at least partially into an area between said second edge section
on said third section from outside said area.
Appeal Br., App. A i.
REJECTIONS
1. The Examiner rejects claims 12–22 and 28 under 35 U.S.C. § 112(b) as
indefinite.
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Application 15/034,561

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2. The Examiner rejects claims 12, 19–22, and 28–30 under 35 U.S.C.
§ 102(a)(1) as anticipated by Butler.3
3. The Examiner rejects claims 13–18 under 35 U.S.C. § 103 as
unpatentable over Butler.
DISCUSSION
Indefiniteness
The Examiner finds that claim 12 is indefinite because the claim
requires “said welding seam extending at least partially into an area between
said second edge section on said third section from outside said area.” Final
Act. 3. The Examiner explains that the claim fails “to make clear as to how
the seam both extends at least partially into an area from outside an area.”
Id.
We are persuaded of error. The Examiner fails to identify any
ambiguity in this claim language. One of ordinary skill in the art would
readily understand that something may extend from outside an area to within
an area, e.g., a road might extend from outside the city limits to within the
city limits. We also agree with Appellant that one of ordinary skill in the art
would understand this claim language in the context of the Specification.
Appeal Br. 4. Appellant explains that “in Figure 4, the welding seam
extends from the area between the second edge section 32 and the third
section 28 and extends beyond that area or from that area to the area
between the first edge section and the second edge section.” Id.
Based on the foregoing, we are persuaded of error and do not sustain
the indefiniteness rejection of claims 12–22 and 28.

3 Butler, US 3,078,818, iss. Feb. 26, 1963.
Appeal 2020-004256
Application 15/034,561

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Anticipation and Obviousness
Independent claim 12 requires a first edge section that is “folded in a
direction toward or away from said longitudinal axis” of a wound spiral
strip. Appeal Br., Claims App. i. Similarly, independent claim 29 requires a
first edge section that is “folded in a radial direction toward or away from
said longitudinal axis” of a wound spiral strip. Id. at iv. We agree with
Appellant that the Examiner has not shown adequately that Butler discloses
such a first edge section. See Appeal Br. 6.
With respect to this requirement, the Examiner finds that Butler
discloses a first “section adjacent the number ‘20’ (or a lower diagonal
marking in fig 2) and to the right in fig 1, including 21, 22, 13 in fig 1” with
an edge, which may be “any edge of first section such as edge near offset in
fig 1 and/or edge portion of 13 and/or edge right side of 22 in” Figure 1.
Final Act. 3. In the Answer, the Examiner further explains:
The Office notes that Butler discloses first section (section
adjacent the number “20” (or a lower diagonal marking in fig 2)
and to the right in fig 1, including 21, 22, 13 in fig 1; also note
“1” in the above included figure). Appellant appears to have
failed to consider that the first section of the prior art includes
both a portion adjacent 20, as provided in the above figure, and
also a portion of 13, also as provided in the above figure. In other
words, the above features both include areas that change
direction (as the device is not completely flat and straight), such
as for example pieces of the offset as well as pieces of the edge
at the top of 13, and therefore must be folded in a direction
toward or away from the longitudinal axis as recited in claim 12
or in a radial direction as additionally recited in claim 29.
Ans. 9. Thus, the Examiner appears to identify a first section of Butler’s
spiral strip and then identifies that either an edge of that first section that
includes “a portion adjacent 20” or “a portion of 13” may be considered as
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Application 15/034,561

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portions that are folded toward or away from the longitudinal axis as
required by the claims.
We find that the Examiner’s analysis does not adequately or clearly
identify which portion or portions of Butler the Examiner is relying on as the
“first edge portion.” The Examiner appears to separately identify a first
section in Butler and then the Examiner separately identifies edges of that
section. For example, in the Final Action, the Examiner identifies a first
section as a portion adjacent to element 20 in Butler and then indicates that
the edge may be any edge of the first section. Final Act. 4. However, the
claim requires “a first edge section” of the spiral strip and not a first section
having an edge. In other words, the claims require that the “first edge
section” includes an edge of the strip. Thus, to the extent the Examiner
relies on element 20 as an edge, we fail to see how that it is a first edge
section of the strip that is folded as required by the claim.
Butler discloses that element 13 is an edge of the spiral strip. See
Butler col. 2, ll. 36–38. However, the Examiner also does not adequately
explain in the rejection or Answer how element 13 is being relied upon as
part of the first edge portion to show that Butler teaches an edge portion that
is folded as claimed. The Examiner finds that “pieces of the edge at the top
of 13” are areas that change direction. Ans. 9. This statement is unclear and
the Examiner fails to provide any further analysis showing what is meant by
“pieces of the edge” 13 that change direction.
For these reasons, we find that the Examiner has not set forth an
adequate showing as to how Butler is being relied upon to disclose a first
edge section as claimed. Accordingly, we are persuaded of error in the
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rejection of each of the independent claims. We are also persuaded of error
in the rejection of dependent claims 19–22, 28, and 30 for the same reasons.
With respect to the obviousness rejection of claims 13–18, the
Examiner does not rely on any further evidence or analysis that would cure
the deficiency in the rejection of the independent claims. Thus, we are also
persuaded of error in the rejection of claims 13–18. Accordingly, we do not
sustain the rejections of claims 12–22 and 28–30.

CONCLUSION
We REVERSE the rejections of claims 12–22 and 28–30.

In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
12–22, 28 112(b) Indefiniteness 12–22, 28
12, 19–22,
28–30
102(a)(1) Butler 12, 19–22,
28–30
13–18 103 Butler 13–18
Overall
Outcome
12–22 28–
30

REVERSED