Ex Parte Brothers

Board of Patent Appeals and Interferences

Jan 12, 2004

09965496 (B.P.A.I. Jan. 12, 2004)

1
The opinion in support of the decision being entered today
was not written for publication and is not binding precedent
of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte RICHARD BROTHERS
__________
Appeal No. 2004-0314
Application 09/965,496
__________
ON BRIEF
__________
Before PAK, OWENS, and KRATZ, Administrative Patent Judges.
Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the refusal to allow claims 4-6 as
amended after final rejection. Claim 7, which is the only other
claim pending in the application, has been allowed.
THE INVENTION
The appellant’s claimed invention is directed toward
“covered food containers wherein a structural feature of the
container receives a matching structural component of the cover
to provide a temporary resting location for the cover when access
Appeal No. 2004-0314
Application No. 09/965,496
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to the interior of the container is required” (specification,
page 1, lines 10-13). Claim 4 is illustrative:
4. In a food container having a removable cover with a
first cover support, said first cover support and a surface of
said food container forming a sealed relation, the improvement
comprising:
a secondary cover support formed in said removable cover;
and
a secondary mounting platform formed in said food container,
said mounting platform of a configuration to receive and
selectively retain said secondary cover support of said removable
cover in a manner exposing a substantial portion of said food
container to outside access, wherein said container and said
removable cover are substantially rectangular, said container
further comprising:
a cover handle extension formed along a side of said
removable cover; and
a retaining slot formed within said container, said
retaining slot having a raised edge support surface forming a
lower surface thereof, said support surface of substantially
matching configuration to an outer edge of said cover handle
extension,
whereby said removable cover may selectively be received and
retained by said receiving slot upon insertion of said cover
handle extension therein, and wherein said retaining slot
comprises:
an inner retaining wall located within said food container;
and
an outer retaining wall spaced from said inner retaining
wall and forming an outer wall of said food container,
wherein said inner retaining wall is not of uniform height along
a length thereof.
Appeal No. 2004-0314
Application No. 09/965,496
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THE REFERENCE
Wewetzer 2,461,711 Feb. 15, 1949
THE REJECTION
Claims 4-6 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Wewetzer.
OPINION
We reverse the aforementioned rejection. We need to address
only claim 4, which is the sole independent claim.
Wewetzer discloses a cosmetics compact made partly or
entirely of plastic (col. 1, lines 1-4). The sole point of
dispute between the appellant and the examiner is whether the
cover of Wewetzer’s compact is removable.
Wewetzer discloses that 1) “[t]o assemble the cover hinge
parts, the pintle [rounded bar 28] is slid endwise within the
channels of the plug [32] prior to fitting of the latter within
the base; when assembled, and the plug is secured in its final
position, the base side walls then extend over the ends of the
bars whereby to prevent any endwise movement between the cover
and its hinge plug” (col. 3, lines 26-34), and 2) the parts are
“secured together by heat and pressure, by an adhesive, or by any
method as now commonly employed” (col. 3, lines 56-59).
Appeal No. 2004-0314
Application No. 09/965,496
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The examiner argues that Wewetzer’s compact is made of
plastic, and that plastics are sufficiently resilient that the
pintle can be pulled out of the slotted channels (31) of the plug
and reinserted without breaking the pintle or the plug (answer,
page 5). The examiner is relying upon the pintle and the plastic
around the openings of the slotted channels inherently having the
required resiliency. When an examiner relies upon a theory of
inherency, “the examiner must provide a basis in fact and/or
technical reasoning to reasonably support the determination that
the allegedly inherent characteristic necessarily flows from the
teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d
1461, 1464 (Bd. Pat. App. & Int. 1990). Inherency “may not be
established by probabilities or possibilities. The mere fact
that a certain thing may result from a given set of circumstances
is not sufficient.” Ex parte Skinner, 2 USPQ2d 1788, 1789 (Bd.
Pat. App. & Int. 1986). The examiner points out that Wewetzer
teaches that “[p]rojecting from the central portion of the outer
flange of the cover is a rib 40 adapted to engage in a locking
groove 41 of corresponding length, the resiliency of the parts
permitting the rib to flexibly engage in the groove, whereby to
seat the cover tightly against the shoulder 18 in its closed
Appeal No. 2004-0314
Application No. 09/965,496
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position” (col. 3, lines 46-52). The examiner argues that it
appears that all plastic parts of Wewetzer’s compact are made of
the same plastic and that, consequently, the pintle and the plug
have the same resiliency as the rib and the locking groove
(answer, pages 5-6). The examiner’s argument is deficient in
that the examiner has not established that 1) an amount of
resiliency which is sufficient for engaging the rib with the
locking groove is sufficient for removing the pintle from the
plug’s slotted channels without breaking the pintle or the plug,
and 2) the ability of the pintle to be removed from the plug
without breaking the pintle or the plug depends only upon the
resiliency of the plastic, rather than also depending upon other
factors such as the relative sizes of the pintle’ diameter and
the plug’s slotted channel openings and the thickness of the
plastic at the slotted channel openings. The examiner has not
provided evidence or technical reasoning which shows that factors
such as Wewetzer’s relative pintle diameter/slotted channel
opening sizes and the plastic thickness around the channel’s
slotted openings necessarily are such that there is sufficiently
resiliency that the pintle can be removed from the plug’s slotted
channels without breaking the pintle or the plug.
The examiner points out that Wewetzer states that “[a]
Appeal No. 2004-0314
Application No. 09/965,496
1See Webster’s New International Dictionary of the English
Language 1517 (G. & C. Merriam Co., 2nd ed. unabridged, 1940), a
copy of which is provided to the appellant with this decision.
6
further object of the invention is to provide an improved cover
structure and hinging arrangement therefor by which it may be
attached in a container” (col. 1, lines 10-13), and argues that
the term “may” “provides the possibility that the cover is not
attached and therefore could not be deemed non-removable”
(answer, page 6). At approximately the time Wewetzer’s
application was filed, “may” could indicate either ability or
possibility.1 The examiner has not explained why, in view of
Wewetzer’s teaching that the parts are secured together (col. 3,
lines 56-59), one of ordinary skill in the art would have
interpreted “may be attached” as meaning that the hinged cover
possibly is attached rather than meaning that the hinging
arrangement enables the cover to be attached.
The examiner argues that even if Wewetzer’s cover is
attached, when it is attached using an adhesive it can be removed
by melting, dissolving or cutting away the adhesive, and then can
be reattached by using fresh adhesive, and when it is attached by
heat and pressure it can be removed and reattached by heating the
plastic to expand it sufficiently to permit removal and
Appeal No. 2004-0314
Application No. 09/965,496
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reinsertion of the plug (answer, pages 6-7). The examiner,
however, has not provided evidence that Wewetzer’s cover is
removable by the techniques set forth by the examiner. The mere
possibility or probability that the cover can be removed in the
ways proposed by the examiner is not sufficient for establishing
a prima facie case of inherency. See In re Oelrich, 666 F.2d
578, 581, 212 USPQ 323, 326 (CCPA 1981). Moreover, the term
“removable” in the appellant’s claim 1 is interpreted not in a
vacuum but, rather, in light of the application disclosure and
the prior art. See In re Kroekel, 504 F.2d 1143, 1146, 183 USPQ
610, 612 (CCPA 1974); In re Moore, 439 F.2d 1232, 1235, 169 USPQ
236, 238-39 (CCPA 1971). The appellant’s disclosure indicates
that the cover is freely removable, not removable only after
adhesive is removed or the container or cover is expanded by
being heated, and the examiner has not provided prior art which
shows that one of ordinary skill in the art would have
interpreted “removable” in the context of removing a removable
cover from a food container as including such adhesive removal
and thermal expansion techniques.
For the above reasons we find that the examiner has not
carried the burden of establishing a prima facie case of
anticipation of the appellant’s claimed food container.
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Application No. 09/965,496
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Application No. 09/965,496
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DECISION
The rejection of claims 4-6 under 35 U.S.C. § 102(b) over
Wewetzer is reversed.
REVERSED
CHUNG K. PAK )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )
TJO:svt
Appeal No. 2004-0314
Application No. 09/965,496
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