Ex Parte Zimmer

Patent Trial and Appeal Board

Jun 29, 2018

13474376 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/474,376
757 7590
BGL
P.O. BOX 10395
CHICAGO, IL 60610
05/17/2012
06/29/2018
FIRST NAMED INVENTOR
Matt Zimmer
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
14724/4 1129
EXAMINER
PERREAULT, ANDREW D
ART UNIT PAPER NUMBER
3788
MAILDATE DELIVERY MODE
06/29/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATT ZIMMER
Appeal2017-004246
Application 13/474,376
Technology Center 3700
Before STEFAN STAICOVICI, LEE L. STEPINA, and
ANTHONY KNIGHT, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE-
Matt Zimmer ("Appellant") 1 appeals under 35 U.S.C. § 134(a) from the
Examiner's decision in the Final Office Action (dated Feb. 4, 2016, hereinafter
"Final Act.") rejecting claims 7-15, 20-29, and 31--42. 2 We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
1 Stacked Wines, LLC., is identified as the real party in interest in Appellant's
Appeal Brief (filed Aug. 19, 2016, hereinafter "Appeal Br."). Appeal Br. 2.
2 Claim 1-6, 16-19, and 30 are canceled. See Appellant's Supplemental
Amendment 2, 4, 6 (filed Jan. 25, 2016).
Appeal2017-004246
Application 13/474,376
SUMMARY OF DECISION
We AFFIRM-IN-PART.
INVENTION
Appellant's invention relates to "assemblies of multiple beverage containers
in a direct connected, attached configuration." Spec. para. 2.
Claims 14 and 31 are independent. Claim 14 is illustrative of the claimed
invention and reads as follows:
14. An assembly comprising:
a first beverage container comprising:
a first vessel body comprising:
a first base having a first perimeter;
a first side wall connected to said first base; and
a first rim defined on said first side wall distal to
said first base,
a first lid having a first seal region, said first seal region
removably attached to an upper surface of said first rim,
wherein said first seal region contacts and releasably engages
an adhesive located between said first lid and said upper surface
of said first rim; and
a second beverage container comprising:
a second vessel body comprising:
a second base having a second perimeter;
a second side wall connected to said second base;
and
a second rim defined on said second side wall
distal to said second base, wherein said first beverage
container is releasably engaged by said second base of
said second beverage container such that said first lid of
said first container is interposed between said first rim of
said first container and said second base of said second
container; and
a second lid having a second seal region, said second seal
region removably attached to said second rim; and
2
Appeal2017-004246
Application 13/474,376
a cover that encloses said first beverage container and said
second beverage container, said cover comprising an opening device
that when manually operated provides access to at least one of said
first beverage container and said second beverage container.
REJECTIONS
I. The Examiner rejects claims 15-29 and 32--42 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
II. The Examiner rejects claims 15-29 and 32--42 under 35 U.S.C. § 112,
second paragraph, as being indefinite.
III. The Examiner rejects claims 7-9, 11, 12, 14, 15, 20-29, and 31--42 under 35
U.S.C. § 103(a) as being unpatentable over Chen (CN 201317492 Y, pub.
Sept. 30, 2009) 3, Sheehan, Jr. (US 6,513,657 B2, iss. Feb. 4, 2003,
hereinafter "Sheehan"), and Barnes et al. (US 4,848,579, iss. July 18, 1989,
hereinafter "Barnes").
IV. The Examiner rejects claim 10 under 35 U.S.C. § 103(a) as being
unpatentable over Chen, Sheehan, Barnes, and Mangano (US 7 ,806,284 B2,
iss. Oct. 5, 2010).
V. The Examiner rejects claim 13 under 35 U.S.C. § 103(a) as being
unpatentable over Chen, Sheehan, Barnes, and Saunders et al. (US
2010/0314274 Al, pub. Dec. 16, 2010, hereinafter "Saunders").
VI. The Examiner rejects claims 14, 15, 20-29, and 31--42 under 35 U.S.C.
§ 103(a) as being unpatentable over Barnes and Sheehan.
3 We derive our understanding of the Hisayoshi and Masanobu references from the
translations contained in the image file wrapper of this application. All references
to the text of these documents are to portions of the translations.
3
Appeal2017-004246
Application 13/474,376
VII. The Examiner rejects claim 7 under 35 U.S.C. § 103(a) as being
unpatentable over Barnes, Sheehan, and Moore (US 4,624,383, iss. Nov. 25,
1986).
VIII. The Examiner rejects claims 8, 9, 11, and 12 under 35 U.S.C. § 103(a) as
being unpatentable over Barnes, Sheehan, and Park (US 5,573,133, iss. Nov.
12, 1996).
IX. The Examiner rejects claim 10 under 35 U.S.C. § 103(a) as being
unpatentable over Barnes, Sheehan, Park, and Mangano.
X. The Examiner rejects claim 13 under 35 U.S.C. § 103(a) as being
unpatentable over Barnes, Sheehan, and Saunders.
XI. The Examiner rejects claims 8, 9, 11, 12, 14, 15, 20-29, and 31--42 under 35
U.S.C. § 103(a) as being unpatentable over Fasci et al. (US 6,276,549 Bl,
iss. Aug. 21, 2001, hereinafter "Fasci"), Sheehan, and Barnes.
XII. The Examiner rejects claim 7 under 35 U.S.C. § 103(a) as being
unpatentable over Fasci, Sheehan, Barnes, and Moore.
XIII. The Examiner rejects claim 10 under 35 U.S.C. § 103(a) as being
unpatentable over Fasci, Sheehan, Barnes, and Mangano.
XIV. The Examiner rejects claim 13 under 35 U.S.C. § 103(a) as being
unpatentable over Fasci, Sheehan, Barnes, and Saunders.
XV. The Examiner rejects claims 14, 15, 20-29, and 31--42 under 35 U.S.C.
§ 103(a) as being unpatentable over Huston (US 3,243,068, iss. Mar. 29,
1966), Sheehan, and Barnes.
XVI. The Examiner rejects claim 7 under 35 U.S.C. § 103(a) as being
unpatentable over Huston, Sheehan, Barnes, and Moore.
4
Appeal2017-004246
Application 13/474,376
XVII. The Examiner rejects claims 8, 9, 11, and 12 under 35 U.S.C. § 103(a) as
being unpatentable over Huston, Sheehan, Barnes, and Park.
XVIII. The Examiner rejects claim 10 under 35 U.S.C. § 103(a) as being
unpatentable over Huston, Sheehan, Barnes, and Mangano.
XIX. The Examiner rejects claim 13 under 35 U.S.C. § 103(a) as being
unpatentable over Huston, Sheehan, Barnes, and Saunders.
XX. The Examiner rejects claims 7-15, 20-29, and 31--42 under the ground of
non-statutory, obviousness- type double patenting over claims 1-15 of
Zimmer (US 8,807,340 B2, iss. Aug. 19, 2014)4 and Sheehan.
ANALYSIS
Rejection I
The Examiner finds that the limitation of "a circular free edge" in claims 15
and 32 is not supported by Appellant's original disclosure. Final Act. 2.
According to the Examiner, "Appellant has failed to identify as to where the edge
is located and/or as to what edge is [the] free end of a circular shape." Examiner's
Answer 16 (dated Nov. 10, 2016, hereinafter "Ans.").
The Examiner further finds that the limitation of "greater than nine holes"
in claims 25 and 3 8 is likewise not supported by Appellant's original disclosure.
Final Act. 3. The Examiner explains that "the limitation can provide 11, 12, 13,
14, 15, infinity, etc. holes of which Appellant's original [S]pecification has failed
to provide [support]." Ans. 17.
4 Although the Examiner refers to claims 1-19 of Zimmer, as Zimmer has
only 15 claims, we view this to be a mere typographical error on the part of
the Examiner. See Zimmer, col. 7, 1. 2---col. 8, 1. 40.
5
Appeal2017-004246
Application 13/474,376
"[D]rawings alone may be sufficient to provide the 'written description of
the invention' required by§ 112, first paragraph." Vas-Cath, Inc. v. Mahurkar,
935 F.2d 1555, 1563-64 (Fed. Cir. 1991). Here, with respect to the rejection of
claims 15 and 32, Appellant is correct in that Figure 17 shows two parallel lines of
50 circular holes each. Appeal Br. 12. As an artisan must be presumed to know
something about the art apart from what the references disclose 5, we further agree
with Appellant that the circumferential surface of each hole constitutes a "free
edge." Reply Brief 2 (dated Jan. 10, 2017, hereinafter "Reply Br.").
Furthermore, we appreciate that although Figure 17 provides support for 50
holes, nonetheless, the limitation "greater than nine holes" encompasses a number
of holes more or less than 50. However, Appellant's Specification describes the
number of holes 312 as a range between one hole and a maximum value depending
on the number of beverage containers 10, 10', 10", 10'" stacked in an end-to-end
relationship. See Spec., para. 62 ("there are about 7 holes per every centimeter
along the length of' assembly 302), Fig. 13. Therefore, as the claimed range of
"greater than nine holes" is within the described range, Appellant's disclosure
provides adequate support for the disputed limitation of claims 25 and 38.
In conclusion, for the foregoing reasons, we do not sustain the written
description rejection of claims 15-29 and 32--42.
Rejection II
The Examiner finds that the limitation of "a circular free edge" in claims 15
and 32 is indefinite. Final Act. 3.
5 See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962).
6
Appeal2017-004246
Application 13/474,376
A drawing teaches all that it reasonably discloses and suggests to a
person of ordinary skill in the art. In re Aslanian, 590 F.2d 911, 914 (CCPA
1979). In this case, as noted above, Figure 17 shows two parallel rows of 50
circular holes each, wherein the circumferential surface of each hole
constitutes a "free edge." As such, "those skilled in the art would
understand what is claimed when the claim is read in light of the
specification." See Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806
F.2d 1565, 1576 (Fed. Cir. 1986).
Therefore, we likewise do not sustain the indefiniteness rejection of
claims 15-29 and 32--42.
Rejections III-V
The Examiner finds that Chen discloses most of the limitations of
independent claims 14 and 31, but fails to disclose the claimed cover. Final
Act. 4; see also Chen Fig. 2. Nonetheless, the Examiner finds that Sheehan
discloses a cover 14 for packaging a plurality of containers 12. Final Act. 4;
see also Sheehan, Fig. 1. The Examiner concludes that it would have been
obvious for a person of ordinary skill in the art "to modify Chen in view of
Sheehan (by providing a cover with the cover elements) to provide a
protection element to the contents while providing an opening mechanism to
the protection element." Id. at 4--5 (citing Sheehan, Abstract, col. 1, 1. 6-
col. 3, 1. 50).
Appellant argues that "there is a teaching away from using a cover that
encloses the first and second beverage containers" because "Chen discloses that it
does not want to use any cover for its bottle." Appeal Br. 18.
7
Appeal2017-004246
Application 13/474,376
In response, the Examiner states that as "Chen fails to actually state that a
cover could not be used," Chen "does not specifically teach away from modifying
the device" by providing Sheehan's cover. Ans. 18.
Although we appreciate the Examiner's position that Chen does not
explicitly state that a cover, such as Sheehan' s, cannot be employed, nonetheless,
"[a] reference may be said to teach away when a person of ordinary skill, upon
reading the reference would be led in a direction divergent from the path that was
taken by the applicant." In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001)
(emphasis added). In this case, Appellant is correct in that Chen specifically
discloses that its "'beverage bottles ... form a whole body after being mutually
combined without being wrapped by films."' Appeal Br. 18 (citing Chen,
Abstract); see also Chen, "Advantage" Section ("The bottle is manufactured
without wrapping a film after being mutually combined."). Accordingly, in light
of Chen's explicit disclosure, a person of ordinary skill in the art would have been
discouraged from providing a cover, as taught by Sheehan, to the bottle assembly
of Chen.
The Examiner's use of the Barnes, Mangano, and Saunders disclosures does
not remedy the Examiner's combination of Chen and Sheehan. See Final Act. 5-7.
Therefore, for the foregoing reasons, we do not sustain the rejections under
35 U.S.C. § 103(a) of claims 7-9, 11, 12, 14, 15, 20-29, and 31--42 as unpatentable
over Chen, Sheehan, and Barnes; of claim 10 as unpatentable over Chen, Sheehan,
Barnes, and Mangano; and of claim 13 as unpatentable over Chen, Sheehan,
Barnes, and Saunders.
8
Appeal2017-004246
Application 13/474,376
Rejection VI
Claims 14, 15, and 20--29
Independent claim 14 requires, inter alia, a "first beverage container
[that] is releasably engaged by ... [a] second beverage container." Appeal
Br. 75 (Claims App.) (emphasis added).
The Examiner finds that Barnes disclose such first and second
containers. See Final Act. 7; see also Barnes, Fig. 1.
Appellant argues that because "Barnes ... is silent as to any positive
engagement between the two containers that allows for a 'release' of one container
from the other," Barnes fails to disclose "any bowl portion 10 of a container 9 that
releasably engages a top portion of a lid of another container 9." Appeal Br. 34
(emphasis added).
In response, the Examiner states "Figure 1 of Barnes reveals that Barnes
discloses releasable engagement between the two containers via surfaces ... that
make contact between the containers." Ans. 21-22.
During examination of a patent application, pending claims are given their
broadest reasonable construction consistent with the Specification. In re Am.
Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Here, an ordinary
and customary meaning of the term "engage" is "to come together and interlock."
See https://www.merriam-webster.com/dictionary/engages (last visited June 25,
2018). Such an interpretation is consistent with Appellant's Specification, which
describes screwed or locked containers 10, 10'. See Spec. paras. 56-59. As such,
because nested containers, as disclosed by Barnes, do not "interlock," that is,
engage, we agree with Appellant that Barnes fails to disclose a "releasable
9
Appeal2017-004246
Application 13/474,376
engagement between the containers," as called for by independent claim 14. Reply
Br. 8, 9.
In conclusion, because the Examiner's use of the Sheehan disclosure does
not remedy the deficiency of Barnes discussed supra (see Final Act. 7-8), we do
not sustain the rejection under 35 U.S.C. § 103(a) of claims 14, 15, and 20-29 as
unpatentable over Barnes and Sheehan.
Claim 31
In contrast to independent claim 14, independent claim 31 does not require a
releasable engagement between first and second containers. See Appeal Br. 75, 78
(Claims App.). Rather, claim 31 requires, inter alia, a "first beverage container
[that] is contacted by ... second beverage container such that said first lid of said
first container is interposed between said first rim of said first container and said
second base of said second container." Id. at 78 (emphasis added).
Appellant argues that Barnes fails to disclose the above noted limitation of
claim 31. Appeal Br. 40-41. According to Appellant, because "the lid of a lower
stacked container is recessed so that bowl bottom 13 of an upper stacked container
is positioned below the upper ledge 12 of the bowl portion 10 of the lower stacked
container," "the lid of the lower stacked container is not positioned between the
upper ledge 12 of the lower stacked container and the bowl portion 10 of the upper
stacked container." Id. at 34. Appellant provides a schematic drawing of how two
containers 9a, 9b, with respective lids, are nested within each other according to
the disclosure of Barnes. Id. at 35.
10
Appeal2017-004246
Application 13/474,376
In response, the Examiner states that "interposing does not require direct
contact" and Appellant's drawing "clearly discloses ... a lid interposed between a
... [rim] 6 and a second base above the lid." Ans. 22.
Appellant's drawing, as annotated by us, is shown below:
Appellant's drawing, as annotated by us, shows rim (a) and lid (b) of 1st container
9b and base ( c) of 2nd container 9a.
We appreciate that the entire lid (b) of first container is not positioned
between rim (a) of first container and base ( c) of second container.
However, as stated by our reviewing court in In re Hiniker Co., 150 F .3 d
1362, 1369 (Fed. Cir. 1998), "the name of the game is the claim." It is well
established that limitations not appearing in the claims cannot be relied upon
for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Here, as
shown above in the area enclosed by a rectangle, the Examiner is correct in
that a portion of lid (b) of first container is interposed between rim (a) of
first container and base ( c) of second container. Claim 31 does not preclude
6 We regard the Examiner's use of the term "lid" instead of "rim" to be a
typographical error.
11
Appeal2017-004246
Application 13/474,376
a construction where a portion of the claimed lid of the first (lower)
container is located between the rim of the first (lower) container and the
base of the second (upper) container.
Accordingly, we sustain the rejection under 35 U.S.C. § 103(a) of
claim 31 as unpatentable over Barnes and Sheehan.
Claims 32, 35-37, 39, and 42
Appellant has not presented arguments for the patentability of claims 35-37,
39, and 42 apart from claim 32. See Appeal Br. 41. Therefore, in accordance with
37 C.F.R. § 41.37(c)(l)(iv), we select claim 32 as the representative claim to
decide the appeal of the rejection of these claims, with claims 35-37, 39, and 42
standing or falling with claim 32.
In addition to the arguments presented supra with respect to the rejection of
claim 31, which we have not found persuasive, Appellant further argues that
Sheehan does not disclose "an opening device that includes two lines of holes
formed in a cover." Appeal Br. 41. According to Appellant, Sheehan's two nicks
50 do not constitute "two lines, wherein each line has a plurality of holes." Id. at
22; see also Sheehan, Figs. 1, 3A, 3B. Furthermore, Appellant contends that
Sheehan's nicks 50 are not "defined by a circular free edge." Appeal Br. 22.
We are not persuaded by Appellant's arguments because the Examiner is
correct in that Sheehan discloses an embodiment where a plurality of nicks 50 are
provided. Ans. 20; see also Sheehan, col. 6, 11. 1-21. In light of Sheehan's
disclosure, the Examiner correctly concludes that "[i]t would have been obvious to
one of ordinary skill in the art at the time of the invention to provide
nicks/perforations in a line to enhance the opening and tearing action by providing
12
Appeal2017-004246
Application 13/474,376
a guide that assists the user in opening the device along a path." Ans. 20.
Appellant does not persuasively argue that the Examiner's findings and reasoning
Ism error.
Furthermore, although we appreciate the Examiner's position that an
ordinary and customary meaning of the term "circular" is "having the shape of part
of a circle," nonetheless, we do not agree with the Examiner that Sheehan' s nicks
50 are "circular," that is, "hav[ e] the form of a circle. "7 Id. at 6 (Sheehan' s "cover
with opening devices (14 with holes a[s] nicks [50]."). However, even though we
agree with Appellant that Sheehan's nicks 50 are not circular, nonetheless, we
agree with the Examiner's conclusion that
It would have been obvious to one of ordinary skill in the art at
the time of the invention to modify the shape because it has
been held that a change in form or shape on the basis of its
suitability for the intended use was an obvious extension of the
prior teachings. In re Dailey et al., 149 USPQ 47.
Id. at 7. Appellant does not persuasively argue that the Examiner's
reasonmg Is m error.
We note that in appropriate circumstances, a modification of prior art
teachings may be a matter of design choice, as the Examiner correctly
asserts. Appellant's Specification does not indicate the significance of the
"circular" shape of the claimed holes, when desiring to form the claimed
"opening device." In other words, the function or purpose of the holes,
regardless of their shape, is ultimately the same, namely, to form an
"opening device" for providing access to the claimed first and second
7 See https://www.merriam-webster.com/dictionary/circular (last visited June
21, 2018).
13
Appeal2017-004246
Application 13/474,376
beverage containers. See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (use
of claimed feature solves no stated problem and presents no unexpected
result and "would be an obvious matter of design choice within the skill of
the art" (citing Graham v. John Deere Co., 383 U.S. 1 (1966) andin re
Gazda, 219 F. 2d 449 (1955)). Lastly, we note that the assembly of Barnes,
as modified by Sheehan, and further modified to have circular holes, will
necessarily include a "free edge" at the circumferential surface of each hole.
Appellant does not persuasively show otherwise.
In conclusion, for the foregoing reasons, we sustain the rejection under 35
U.S.C. § 103(a) of claim 32 as unpatentable over Barnes and Sheehan. Claims 35-
37, 39, and 42 fall with claim 32.
Claims 33 and 34
Claims 33 and 34, which depend directly from claim 32, add the limitations
that the claimed cover includes an opening that receives "said second rim
therethrough," as per claim 33, or "said first base therethrough," as per claim 34.
Appeal Br. 79 (Claims App.).
In addition to the arguments presented supra in regards to the rejection of
claim 32, which we did not find persuasive, Appellant further argues that Sheehan
does not disclose "having a rim of the container 9" or "a base of the lowermost
container 9," as shown in Figures 1--4 of Barnes, "that is received through an
opening of the packaging material 14 of Sheehan." Id. at 41--42.
Sheehan discloses the use of packaging material 14 for shrink wrapping
article 12 (that contains six beverage containers 20) such that "packaging material
14 substantially conforms to a shape of the article 12." Sheehan, col. 8, 11. 53-55,
14
Appeal2017-004246
Application 13/474,376
Figs. 1, 5 (emphasis omitted). Hence, as Sheehan's packaging material 14 is
wrapped around article 12, it is also wrapped around each of containers 20. See
Sheehan, Fig. 1. Thus, we do not agree with the Examiner's position that when
combining the teachings of Barnes and Sheehan, "the cover around the device
would provide an opening where the containers and their parts such as a second
rim, first base would be received." Ans. 20-22.
Accordingly, we agree with Appellant that because "no tops or bottoms of
the article 12 [in Sheehan] extend through an opening of the packaging material,"
Sheehan does not disclose the above noted limitations of claims 33 and 34. Appeal
Br. 42. Therefore, we do not sustain the rejection of claims 33 and 34 over the
combined teachings of Barnes and Sheehan.
Claims 38, 40, and 41
Dependent claims 38, 40, and 41 add the limitations that "each of said two
lines comprises greater than nine holes" (as per claim 38), for each line "there are
about seven holes per every centimeter" (as per claim 40), and each hole has a
diameter of"approximately I mm" (as per claim 41). Appeal Br. 80 (Claims
App.).
The Examiner takes the position that it would have been obvious to a person
of ordinary skill in the art to provide the above noted features to the assembly of
Barnes, as modified by Sheehan, "because it has been held that discovering an
optimum value of a result effective variable involves was an obvious extension of
the prior teachings." Final Act. 8 (citing In re Boesch, 617 F.2d 272 (CCPA
1980)); see also Ans. 20.
15
Appeal2017-004246
Application 13/474,376
Appellant argues that because there are numerous parameters that affect the
number of holes, such as, hole size, hole density, hole shape, and material strength,
"using more than nine holes per line would not have been obvious to one of
ordinary skill in the art." Appeal Br. 24--25 (citing KSR Int'! Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007)). Likewise, Appellant contends that because of the same
parameters, "using seven holes per centimeter would not have been obvious to one
of ordinary skill in the art." Id. at 26.
We note that the Examiner's position with respect to optimization is
premised on the general conditions of a claim being disclosed in the prior
art. See In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("where the general
conditions of a claim are disclosed in the prior art, it is not inventive to
discover the optimum or workable ranges by routine experimentation"
(citations omitted)). However, the Examiner has not established that the
prior art relies on a particular number of holes, hole density, or hole
diameter. In other words, the Examiner has not shown by a preponderance
of the evidence that the claimed number of holes, hole density, and hole
diameter parameters are result-effective variables. See In re Antonie, 559
F.2d 618, 619 (CCPA 1977).
Accordingly, for the foregoing reasons, we do not sustain the rejection
under 35 U.S.C. § 103(a) of claims 38, 40, and 41 as unpatentable over
Barnes and Sheehan.
Rejection VII
The Examiner finds that the combined teachings of Barnes and Sheehan fail
to disclose a thread engagement. Final Act. 9. Nonetheless, the Examiner finds
16
Appeal2017-004246
Application 13/474,376
that Moore discloses a thread engagement between containers 1, 1 ', and, concludes
that it would have been obvious to a person of ordinary skill in the art to provide
Moore's thread engagements to the assembly of Barnes, as modified by Sheehan,
"to provide an enhanced attachment between two containers." Id. (citing Moore,
col. 2, 11. 50-55, Figs. 10, 11) (emphasis added).
Appellant argues that Moore does not provide a "clear reason" to alter
Barnes such that "1) a lower container 9 is releasably engaged by a base of an
upper container 9 and 2) a lid of the lower container 9 is interposed between the
upper ledge 12 of the lower container 9 and bottom 13 of the upper container 9."
Appeal Br. 44.
Such an argument is holding the Examiner to the old TSM standard; such a
standard is not required. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 415
(2007). As discussed supra, "the mere stacking of [Barnes'] containers 9 upon
each other" does not amount to a "releasable engagement between the containers,"
as called for by independent claim 14, from which claim 7 depends. See also
Reply Br. 8. However, as Moore discloses the use of a threaded connection to
interlock containers 1, 1 ',we find that the Examiner has articulated a reasoning
with rational underpinnings to support the conclusion that modifying the containers
of Barnes to include Moore's thread engagements would provide "enhanced
attachment," that is, a "releasable engagement," between the containers.
Appellant's conclusory argument does not set forth adequate reasoning or
established contrary factual findings undermining the Examiner's position.
Accordingly, we sustain the rejection under 35 U.S.C. § 103(a) of claim 7
as unpatentable over Barnes, Sheehan, and Moore.
17
Appeal2017-004246
Application 13/474,376
Rejection VIII
Appellant has not presented arguments for the patentability of claims 9, 11,
and 12 apart from claim 8. See Appeal Br. 44. Therefore, we select claim 8 as the
representative claim to decide the appeal of the rejection of these claims, with
claims 9, 11, and 12 standing or falling with claim 8.
The Examiner finds that the combined teachings of Barnes and Sheehan fail
to disclose "a channel that slidingly receives a male element." Final Act. 9.
Nonetheless, the Examiner finds that Park discloses "channel (at 8, 8a, 8b, 8c) and
male elements (4, 4a)." Id. (citing Park, col. 2, 1. 50-col. 3, 1. 54); see also Park,
Fig. 5. The Examiner concludes that it would have been obvious to a person of
ordinary skill in the art to provide Park's channel and male elements to the
assembly of Barnes, as modified by Sheehan, "to provide detachable coupling in
an easy, simple, and cost effective manner whereby the device can be reused."
Final Act. 9.
Appellant argues that Park does not provide a "clear reason" to alter Barnes
such that "1) a lower container 9 is releasably engaged by a base of an upper
container 9 and 2) a lid of the lower container 9 is interposed between the upper
ledge 12 of the lower container 9 and bottom 13 of the upper container 9." Appeal
Br. 45.
As discussed supra, "the mere stacking of [Barnes'] containers 9 upon each
other" does not amount to a "releasable engagement between the containers," as
called for by independent claim 14, from which claim 8 depends. See also Reply
Br. 8. However, as Park discloses the use of channel and male elements to
detachably couple cans 1, we find that the Examiner has articulated a reasoning
with rational underpinnings to support the conclusion that modifying the containers
18
Appeal2017-004246
Application 13/474,376
of Barnes to include Park's channel and male elements would provide "detachable
coupling," that is, a "releasable engagement," between the containers. Appellant's
conclusory argument does not set forth adequate reasoning or established contrary
factual findings undermining the Examiner's position.
Accordingly, we sustain the rejection under 35 U.S.C. § 103(a) of claim 8 as
unpatentable over Barnes, Sheehan, and Park. Claims 9, 11, and 12 fall with claim
8.
Re} ection IX
The Examiner finds that the combined teachings of Barnes, Sheehan, and
Park fail to disclose a channel protrusion. Final Act. 10. Nonetheless, the
Examiner finds that Mangano discloses a channel protrusion 46a, and, concludes
that it would have been obvious to a person of ordinary skill in the art to provide
Mangano's channel protrusion to the assembly of Barnes, as modified by Sheehan
and Park, "to further secure the device together." Id. (citing Mangano, col. 4, 11.
25-35, Figs. 5, 8).
Appellant argues that Mangano does not provide a "clear reason" to alter
Barnes such that "1) a lower container 9 is releasably engaged by a base of an
upper container 9 and 2) a lid of the lower container 9 is interposed between the
upper ledge 12 of the lower container 9 and bottom 13 of the upper container 9."
Appeal Br. 45.
As discussed supra, "the mere stacking of [Barnes'] containers 9 upon each
other" does not amount to a "releasable engagement between the containers," as
called for by independent claim 14, from which claim 10 depends. See also Reply
Br. 8. However, as Mangano discloses the use of a channel protrusion 46a and
19
Appeal2017-004246
Application 13/474,376
protrusion 49a to interlock stacking units 20, 40, we find that the Examiner has
articulated a reason with rational underpinnings to support the conclusion that
modifying the containers of Barnes to include Mangano' s channel protrusion
would "further secure" Barnes' containers 9, as modified by Sheehan and Park.
Appellant's conclusory argument does not set forth adequate reasoning or
established contrary factual findings undermining the Examiner's position.
Accordingly, we sustain the rejection under 35 U.S.C. § 103(a) of claim 10
as unpatentable over Barnes, Sheehan, Park, and Moore.
RejectionX
The Examiner use of the Saunders disclosure does not remedy the deficiency
of the Examiner's combination of Barnes and Sheehan, as discussed supra. 8 See
Final Act. 10. Therefore, for the reasons discussed above, we do not sustain the
rejection of claim 13 over the combined teachings of Barnes, Sheehan, and
Saunders.
Rejection XI
Independent claim 14 requires, inter alia, "a first rim defined on said first
side wall distal to said first base" and "a first lid having a first seal region, said first
seal region removably attached to an upper surface of said first rim." Appeal Br.
75 (Claims App.). Similarly, independent claim 31 recites "a first rim defined on
said first side wall distal to said first base" and "a first lid having a first
seal region contacting an upper surface of said first rim." Id. at 78.
8 The Examiner employs Sanders to disclose "a serving of wine."
20
Appeal2017-004246
Application 13/474,376
The Examiner finds that Fasci discloses, inter alia, a "first container (a
lower container in figs. 25-26), first body (surface of container), base (lower base
of container), side wall (side of container), rim (rim that attaches lid and continues
to 7), first lid with seal region (5 with region that is sealed to rim)" and a "second
container (container above lower container in figs. 25, 27)" having similar features.
Final Act. 11.
Appellant argues that because "the Examiner does not specifically identify
what he considers a lid," Appellant "assume[ s] . . . that the Examiner is relying on
Fasci['s] cover 6 as ... the recited lid." Appeal Br. 46. Appellant further asserts
that as cover 6 engages threads on a vertical wall of Fasci's neck 5 to form a seal,
Fasci fails to disclose a "removable attachment between a seal region of Fasci['s]
cover 6 and an upper surface of a rim of the neck 5." Id. at 47.
Fasci discloses interconnected containers, wherein a top wall 4 of a lower
container is coupled to a recess 4' in the bottom 3 of an upper container along neck
5 and cover 6. Fasci, col. 6, 11. 39--47, Fig. 25. Fasci further discloses that top
wall 4 of the lower container finishes in a neck 5 "that can be threaded or with
projections to allow the fit ofa cover (6)." Id., col. 6, 11. 34--39, Figs. 25-27.
We interpret the Examiner's finding of Fasci's "rim (rim that attaches lid
and continues to 7)" as Fasci's neck 5. See Final Act. 11. We further interpret the
Examiner finding ofFasci's "seal region (5 with region that is sealed to rim)" as
the region formed by cover 6 engaging neck 5. See id. As such, Appellant is
correct in that because Fasci's cover 6 engages threads or projections on Fasci's
vertical neck 5 to form a seal region, Fasci does not disclose a "seal region
removably attached to an upper surface of ... rim," as required by claim 14, or "a
seal region contacting an upper surface of ... rim," as required by claim 31. See
21
Appeal2017-004246
Application 13/474,376
Appeal Br. 47 (emphasis added). The Examiner fails to adequately explain how
Fasci's seal region formed by cover 6 and neck 5 is "attached" or "contacts" an
"upper surface" of neck 5. Rather, as Appellant correctly asserts, "cover 6 engages
the threads [of neck 5] and form[ s] a seal along the vertical walls and not on an
upper surface of a rim," i.e., neck 5. Id. We further agree with Appellant, that
"[t]he Examiner has provided no clear reason ... to alter Fasci ... to have the
cover 6 removably attached to an upper surface of a rim of the neck 5." Id. The
Examiner's use of the Sheehan and Barnes disclosures does not remedy the
deficiencies discussed supra. See Final Act. 11-12.
In conclusion, for the foregoing reasons, we do not sustain the rejection
under 35 U.S.C. § 103(a) of claims 8, 9, 11, 12, 14, 15, 20-29, and 31--42 as
unpatentable over Fasci, Sheehan, and Barnes.
Re} ections XII-XIV
Claims 7, 10, and 13 depend directly or indirectly from independent claim
14. See Appeal Br. 74 (Claims App.). As the Examiner's use of the Moore,
Mangano, and Saunders disclosures does not remedy the deficiency of the
Examiner's Fasci, Sheehan, and Barnes combination discussed above, we also do
not sustain Rejections XII-XIV. See Final Act. 12-13.
Re} ection XV
Each of independent claims 14 and 31 requires, inter alia, that "said
first lid of said first container is interposed between said first rim of said first
container and said second base of said second container." Appeal Br. 75, 78
(emphasis added), (Claims App.).
22
Appeal2017-004246
Application 13/474,376
The Examiner finds that Huston discloses a set of stacked containers,
wherein each container includes a base 11, a rim, and a protective cover 18. Final
Act. 14 (citing Huston, Fig. 5).
Appellant argues that because "the protective cover 18 is located below the
edge 20 of the container 10 ... the protective cover 18 is not interposed between
edge 20 of one container and the base 11 of another container." Appeal Br. 62, 67.
According to Appellant, "the Examiner is relying on edge 20 as being a rim." Id.
at 62.
Huston's Figure 5, as annotated by us, is shown below:
F~~;;~~~~r~~;~~l
L~~~2~~~~22:~~2~J
2i
Huston's Figure 5, as annotated by us, shows the rim and the lid of 1st container
1 Oa and the base of 2nd container 1 Ob.
We interpret the Examiner's finding that the "rim ... attaches to 18 and
another 11" as neck 12 of Huston's container 10. See Final Act. 14. A review of
Huston's Figure 5 shows that protective cover 18 (lid) of the lower container (first
container) is not located between (interposed) base 11 of the upper container
(second container) and the neck 12 (rim) of the lower container (first container), as
required by each of claims 14 and 31. Moreover, we note that the Examiner fails
23
Appeal2017-004246
Application 13/474,376
to directly respond to Appellant's arguments that Huston does not disclose the
above noted limitations. See Ans. 24.
The Examiner's use of the Sheehan and Barnes disclosures does not remedy
the deficiency of Huston as discussed supra. See Final Act. 14--15. Accordingly,
for the foregoing reasons, we do not sustain the rejection of independent claims 14
and 31, and their respective dependent claims 15, 20-29, and 32--42, over the
combined teachings of Huston, Sheehan, and Barnes.
Rejections XVI-XIX
Claims 7-13 depend from independent claim 14. See Appeal Br. 74 (Claims
App.). As the Examiner's use of the Moore, Park, Mangano, and Saunders
disclosures does not remedy the deficiency of the Examiner's Huston, Sheehan,
and Barnes combination discussed above, we also do not sustain Rejections XVI-
XIX. See Final Act. 15-17.
Rejection XX
The Examiner finds that Zimmer discloses "an assembly, container, bodies,
bases, side walls, rims, lids, cover, adhesive material that adheres." Final Act. 18.
Appellant argues that "the Examiner has not made a detailed comparison of
each of the claims being rejected and the claims of the '340 patent." Appeal Br.
72. Moreover, Appellant contends that the Examiner's position "appears to be
based on the disclosure in the '340 patent, which is improper since the analysis
should concentrate on the claims, not the disclosure of the '340 patent." Id. at 72-
73 (citing MPEP § 804).
24
Appeal2017-004246
Application 13/474,376
The issue to consider when determining whether a nonstatutory basis
exists for a double patenting rejection is whether any claim in the application
defines an invention that is merely an obvious variation of an invention
claimed in another patent. The analysis employed in an obviousness-type
double patenting determination parallels the guidelines for an obviousness
determination under 35 U.S.C. § 103(a). See In re Braat, 937 F.2d 589, 593-
94 (Fed. Cir. 1991 ). Furthermore, Appellant is correct in that "the
determining factor in deciding whether or not there is double patenting is the
existence vel non of patentable difference between two sets of claims."
General Foods Corp. v. Studiengesellschaft Kahle mbH, 972 F.2d 1272,
1278-79 (Fed. Cir. 1992) (emphasis added).
In this case, we do not agree with Appellant's position that the
Examiner's analysis is based on the disclosure of Zimmer. See Appeal Br.
72-73. Rather, we find that the Examiner's findings are based on claims 1-
15 of Zimmer. For example, Zimmer's claim 1 discloses first and second
beverage containers (containers), 9 first and second vessel bodies (bodies),
first and second bases (bases), first and second side walls (side walls), first
and second rims (rims), first and second lids (lids), and first and second
adhesive materials (adhesive/material that adheres). See Zimmer, col. 7, 11.
2-33. However, although the Examiner's findings are accurate with respect
to the elements disclosed by claims 1-15, the Examiner fails to make any
findings regarding the claimed relationships between these elements. For
example, the Examiner does not explain adequately whether Zimmer's
claims 1-15 disclose a "first seal region removably attached to an upper
9 Parethetical refers to the Examiner's nomenclature.
25
Appeal2017-004246
Application 13/474,376
surface of said first rim" and "said first beverage container is releasably
engaged by said second base of said second beverage container," as required
by claim 14. See Final Act. 18-20; see also Appeal Br. 75 (emphasis
added). Similarly, the Examiner does not explain whether Zimmer's claims
1-15 disclose "a first seal region contacting an upper surface of said first
rim" and "said first beverage container is contacted by said second base of
said second beverage container," as required by claim 31. See Final Act.
18-20; see also Appeal Br. 78 (emphasis added).
In other words, the Examiner's analysis is insufficient to support an
obviousness-type double patenting rejection as the Examiner has not
provided a rigorous comparison of the claims and findings and conclusions
as to any alleged obviousness of limitations not found in the claims of
Zimmer. See In re Langi, 759 F.2d 887, 893 (Fed. Cir. 1985) (observing
that the inquiry is whether claimed invention in one application would have
been obvious in view of claims from second).
The Examiner's reliance on Sheehan does not remedy the deficiency
of the Examiner's findings as to Zimmer's claims 1-15. Therefore, for the
foregoing reasons, we do not sustain the rejection of claims 7-15, 20-29,
and 31--42 under the ground of non-statutory, obviousness-type double
patenting over claims 1-15 of Zimmer.
SUMMARY
The Examiner's decision to reject claims 15-29 and 32--42 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement is reversed.
26
Appeal2017-004246
Application 13/474,376
The Examiner's decision to reject claims 15-29 and 32--42 under 35 U.S.C.
§ 112, second paragraph, as being indefinite, is reversed.
The Examiner's decision to reject claims 7-9, 11, 12, 14, 15, 20-29, and 31-
42 under 35 U.S.C. § 103(a) as being unpatentable over Chen, Sheehan, and
Barnes is reversed.
The Examiner's decision to reject claim 10 under 35 U.S.C. § 103(a) as
being unpatentable over Chen, Sheehan, Barnes, and Mangano is reversed.
The Examiner's decision to reject claim 13 under 35 U.S.C. § 103(a) as
being unpatentable over Chen, Sheehan, Barnes, and Saunders is reversed.
The Examiner's decision to reject claims 14, 15, 20-29, and 31--42 under 35
U.S.C. § 103(a) as being unpatentable over Barnes and Sheehan is affirmed as to
claims 31, 32, 35-37, 39, and 42, and reversed as to claims 14, 15, 20-29, 33, 34,
38, 40, and 41.
The Examiner's decision to reject claim 7 under 35 U.S.C. § 103(a) as being
unpatentable over Barnes, Sheehan, and Moore (US 4,624,383, iss. Nov. 25, 1986)
is affirmed.
The Examiner's decision to reject claims 8, 9, 11, and 12 under 35 U.S.C.
§ 103(a) as being unpatentable over Barnes, Sheehan, and Park (US 5,573,133, iss.
Nov. 12, 1996) is affirmed.
The Examiner's decision to reject claim 10 under 35 U.S.C. § 103(a) as
being unpatentable over Barnes, Sheehan, and Mangano is affirmed.
The Examiner's decision to reject claim 13 under 35 U.S.C. § 103(a) as
being unpatentable over Barnes, Sheehan, and Saunders is reversed.
27
Appeal2017-004246
Application 13/474,376
The Examiner's decision to reject claims 8, 9, 11, 12, 14, 15, 20-29, and 31-
42 under 35 U.S.C. § 103(a) as being unpatentable over Fasci, Sheehan, and
Barnes is reversed.
The Examiner's decision to reject claim 7 under 35 U.S.C. § 103(a) as being
unpatentable over Fasci, Sheehan, Barnes, and Moore is reversed.
The Examiner's decision to reject claim 10 under 35 U.S.C. § 103(a) as
being unpatentable over Fasci, Sheehan, Barnes, and Mangano is reversed.
The Examiner's decision to reject claim 13 under 35 U.S.C. § 103(a) as
being unpatentable over Fasci, Sheehan, Barnes, and Saunders is reversed.
The Examiner's decision to reject claims 14, 15, 20-29, and 31--42 under
35 U.S.C. § 103(a) as being unpatentable over Huston, Sheehan, and Barnes is
reversed.
The Examiner's decision to reject claim 7 under 35 U.S.C. § 103(a) as being
unpatentable over Huston, Sheehan, Barnes, and Moore is reversed.
The Examiner's decision to reject claims 8, 9, 11, and 12 under 35 U.S.C.
§ 103(a) as being unpatentable over Huston, Sheehan, Barnes, and Park is
reversed.
The Examiner's decision to reject claim 10 under 35 U.S.C. § 103(a) as
being unpatentable over Huston, Sheehan, Barnes, and Mangano is reversed.
The Examiner's decision to reject claim 13 under 35 U.S.C. § 103(a) as
being unpatentable over Huston, Sheehan, Barnes, and Saunders is reversed.
The Examiner's decision to reject claims 7-15, 20-29, and 31--42 under the
ground of non-statutory, obviousness- type double patenting over claims 1-15 of
Zimmer and Sheehan is reversed.
28
Appeal2017-004246
Application 13/474,376
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
29