LIPP, Xaver Download PDFPatent Trials and Appeals BoardJan 29, 20212020004256 (P.T.A.B. Jan. 29, 2021) Copy Citation 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 Appeal Br. 1. 2 Claims 1–11 have been cancelled, and claims 23–27 have been withdrawn.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. Appeal 2020-004256 Application 15/034,561 2 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. Appeal 2020-004256 Application 15/034,561 3 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 4 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 Appeal 2020-004256 Application 15/034,561 5 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 Appeal 2020-004256 Application 15/034,561 6 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 Copy with citationCopy as parenthetical citation