Ex Parte Huang et al

Patent Trial and Appeal Board

Apr 4, 2013

11894140 (P.T.A.B. Apr. 4, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CHOW-CHI HUANG, SCOTT EDWARD SMITH,
and MATTHEW JOHN MARTIN
____________________

Appeal 2011-000830
Application 11/894,140
Technology Center 3700
____________________

Before BIBHU R. MOHANTY, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/894,140

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the final rejection of
claims 1-3 and 5-131. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The rejected claims are directed to a container attached to a base cup
(Spec. p. 4, ll. 23-29). Claims 1 and 8 are the sole independent claims.
EXEMPLARY CLAIM
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A container attachable to a base cup, the
container having a top, an irregular bottom, and
side walls, said side walls being visible when the
container is disposed on a horizontal surface and
further having a point of tangency between said
side walls and said bottom, the container having a
longitudinal axis therethrough and a 45 degree
bottom cone having a vertex disposed on said
longitudinal axis at a position corresponding to
said point of tangency and diverging outwardly
towards said bottom of said container; and
a mechanical engagement for joining said
container to a base cup, said mechanical
engagement being disposed on said bottom of said
container at least partially within said bottom cone,
whereby said side walls of said container are free

1 Our decision will refer to Appellants’ Specification (“Spec.,” filed Aug. 20,
2007), Appeal Brief (“App. Br.,” filed Mar. 19, 2010), and Reply Brief
(“Reply Br.,” filed Jul. 20, 2010), as well as the Examiner’s Answer (“Ans.,”
mailed Jun. 24, 2010).

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of said mechanical engagement when said base
cup is attached thereto.
THE REJECTIONS
Appellants appeal the following rejections made by the Examiner:
Claims 1-3 and 5-13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Saito (US 4,482,067, iss. Nov. 13, 1984); and
Claims 1-3 and 5-13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Saito in view of Grebowiec (US 2,837,245, iss. Jun. 3,
1958)2.
ANALYSIS
The Obviousness Rejection based solely on Saito
Independent claim 1 is rejected as unpatentable over Saito. We begin
by construing claim 1.
Analysis begins with a key legal question - what is the
invention claimed? Courts are required to view the claimed
invention as a whole. 35 U.S.C. § 103. Claim interpretation, in
light of the specification, claim language, other claims, and
prosecution history, is a matter of law[] and will normally
control the remainder of the decisional process.

2 We note claims 14 and 15, which depend from independent claim 8, are
rejected under 35 U.S.C. § 103(a) as unpatentable over Saito in view of
Hagan (US 4,694,975, iss. Sep. 22, 1987), and as unpatentable over Saito in
view of Grebowiec and Hagan. Appellants state these rejections are being
appealed (App. Br. 1), but do not argue against these rejections. Thus, we
do not address the rejection of these claims.

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Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567-68 (Fed. Cir.
1987).
Claim 1 requires “a mechanical engagement for joining said container
to a base cup, said mechanical engagement being disposed on said bottom of
said container at least partially within said bottom cone, whereby said side
walls of said container are free of said mechanical engagement when said
base cup is attached thereto” (emphasis added). Thus, we find that as a
matter of claim construction claim 1 requires the mechanical engagement
that is disposed on the bottom of the container not be on the side walls of the
container, but that the limitations of claim 1 do not preclude another
mechanical engagement from being on the side walls of the container. We
agree with the Examiner’s findings that the claimed mechanical engagement
is taught by Saito, which teaches projection 20 secured with flange 10 (Ans.
4-6). We note that neither Appellants’ Appeal Brief nor Reply Brief argues
Saito does not disclose a mechanical engagement disposed at the bottom of
the container. Therefore, we sustain the rejection of independent claim 1
under 35 U.S.C. § 103(a) as unpatentable over Saito.
Notwithstanding the above, we also find that Saito renders obvious
the interpretation of claim 1 argued by Appellants, that the side walls are
free of any mechanical engagement when the base cup is attached to the
container (App. Br. 4-6, Reply Br. 2). Appellants argue
Saito teaches a bottle 1 having a bottom wall
2 and body 3. At the end of the bottom wall 2 is a
circular projection 20. The bottom 2 of the bottle
fits into cylindrical base 8. The base 8 has a
flange-like member 10 which fits into the circular
projection 20 (2:3-5). The base 8 also has a
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peripheral wall 9. The lower external surface of
the body is twice taught to be “fitted” into the base
(3:65 and 3:68, see also Fig. 1).
In contrast, all claims in the instant
application require the sidewall to be free of
mechanical engagement. This arrangement
provides the benefit, set forth in the specification
(5:18-19; 9: 15-22; 9:30-33), of a better interface
between the base cup/container when the two
components are joined together.
Since, the Office Action of Dec. 14, 2009
(para. 2) takes the position that the close fit of the
Saito flange 26, 28 and projection 20 is a
mechanical engagement, it follows a fortiori that
the Saito body fitted into the base is also a
mechanical engagement. This mechanical
engagement occurs directly on the sidewall.
(App. Br. 4, see also Reply Br. at 2). We disagree with Appellants’
arguments that because Saito states the body is fitted with the base, the body
and base of Saito provide a mechanical connection on the side walls of the
container. We agree with the Examiner’s finding that
Appellants make the argument that the mechanical
engagement of Saito also occurs directly on the
sidewall. However there is no evidence that such
is the case[,] as Saito et al[.] describe the fitting at
the bottom projection 20 and flange 26, 28 as a
snug fitting but makes no such description at the
sidewall. Absent any such snug fitting, the
container is considered to merely rest on the base
at the top of the bottom much as applicants’ does
at 46.
(Ans. 5). Thus, we sustain the rejection of independent claim 1 under 35
U.S.C. § 103(a) as unpatentable over Saito.
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Appellants do not submit separate arguments regarding independent
claim 8, or claims 2, 3, 5-7, and 9-13 that depend from independent claims 1
and 8. Thus, we sustain the rejection of claims 2, 3, and 5-13 under 35
U.S.C. § 103(a) as unpatentable over Saito for the same reasons we sustain
the rejection of claim 1.
The Obviousness Rejection Based on Saito and Grebowiec
As stated above, we find that claim 1 requires the mechanical
engagement disposed on the bottom of the container not be on the side walls
of the container, but that the limitations of claim 1 do not preclude another
mechanical engagement from being on the side walls of the container. We
agree with the Examiner’s findings with respect to Grebowiec that a portion
of flange 27 provides the claimed mechanical engagement that is disposed
on the bottom of the container but not on the side walls of the container
(Ans. 5). In KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727 (2007), the
Supreme Court emphasized “the need for caution in granting a patent based
on the combination of elements found in the prior art,” id., at 1739, and
discussed circumstances in which a patent might be determined to be
obvious without an explicit application of the teaching, suggestion, or
motivation test. In particular, the Supreme Court reaffirmed that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. See also
Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S.
147, 151 (1950) (citing the negative rule accrued from many litigations that
“[t]he mere aggregation of a number of old parts or elements which, in the
aggregation, perform or produce no new or different function or operation
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than that theretofore performed or produced by them, is not patentable
invention.”) (internal quotations omitted); Sakraida v. Ag Pro, Inc., 425 U.S.
273, 282, 96 S. Ct. 1532, 1537 (1976) (concluding that when a patent
“simply arranges old elements with each performing the same function it had
been known to perform”, the combination is obvious). In this case, the
combination substitutes the snap fit taught by Grebowiec for the snug fit of
Saito, to more securely retain the base on the body, thus substituting old
elements with well-known uses for one another to thereby yield a predictable
result. We are not persuaded by Appellants’ arguments that combining Saito
and Grebowiec would change the principle of operation of Saito, or be
contrary to the explicit teachings of Saito (App. Br. 7-11). Saito relates to “a
round-bottomed synthetic resin bottle having such structure as to stand the
bottle and facilitate pouring [of] liquid contained therein” (col. 1, ll. 9-12).
We are unclear as to how substituting Grebowiec’s snap fit would eviscerate
this purpose of Saito. The use of patents as references is not limited to what
the patentees describe as their own inventions or to the problems with which
they are concerned, as they are a part of the literature and are relevant for all
they contain. In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983). In
connection with the argument that incorporating Grebowiec’s snap fit into
Saito’s snug fit would eviscerate Saito, we note further that a prior art
reference must be considered for everything it teaches by way of technology
and is not limited to the particular invention it is describing and attempting
to protect. EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed.
Cir. 1985). In an obviousness analysis, it is not the case that everything
disclosed in Saito must be preserved or unchanged when relying on Saito’s
disclosure.
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Therefore, we sustain the rejection of independent claim 1 under 35
U.S.C. § 103(a) as unpatentable over Saito in view of Grebowiec.
Appellants do not submit separate arguments regarding independent
claim 8, or claims 2, 3, 5-7, and 9-13 that depend from independent claims 1
and 8. Thus, we sustain the rejection of claims 2, 3, and 5-13 under 35
U.S.C. § 103(a) as unpatentable over Saito in view of Grebowiec for the
same reasons we sustain the rejection of claim 1.

DECISION
The Examiner’s rejection of claims 1-3 and 5-13 under 35 U.S.C. §
103(a) as unpatentable over Saito is AFFIRMED; and
The Examiner’s rejection of claims 1-3 and 5-13 under 35 U.S.C. §
103(a) as unpatentable over Saito in view of Grebowiec is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

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