Fontem Holdings 1 B.V.

Patent Trials and Appeals Board

Feb 1, 2022

2021003912 (P.T.A.B. Feb. 1, 2022)

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. 16/074,749 08/01/2018 Sebastian Senftleben FON0116US.01/065887001074 8952 103376 7590 02/01/2022 Dykema Gossett PLLC 4000 Wells Fargo Center 90 South Seventh Street Minneapolis, MN 55402 EXAMINER REYNOLDS, STEVEN ALAN ART UNIT PAPER NUMBER 3735 NOTIFICATION DATE DELIVERY MODE 02/01/2022 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): Dykema-Patents@dykema.com MN-IPmail@dykema.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte SEBASTIAN SENFTLEBEN and THORBEN REHDERS __________ Appeal 2021-003912 Application 16/074,749 Technology Center 3700 __________ Before STEFAN STAICOVICI, EDWARD A. BROWN, and MICHAEL L. HOELTER, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s Final decision to reject claims 1, 2, and 4-9. See Final Act. 1 (Office Action Summary). We have jurisdiction under 35 U.S.C. § 6(b). For the reasons explained below, we REVERSE the Examiner’s rejections. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies “Fontem Holdings 1 B.V.” as the real party in interest. Appeal Br. 1. Appeal 2021-003912 Application 16/074,749 2 CLAIMED SUBJECT MATTER The disclosed subject matter “relates generally to a child-resistant smoking article package.” Spec. 1:4. Apparatus claim 1 is the sole independent claim, is illustrative of the claims on appeal, and is reproduced below. 1. A child-resistant smoking article package comprising: a case with an opening, a child-resistant closure for closing the opening of the case, a smoking article holder provided inside the case, wherein the smoking article holder is coupled to the closure, and wherein the smoking article holder comprises at least one storage compartment configured to receive a smoking article therein; wherein the smoking article holder is provided such that it is spaced apart from and not in contact with the case when the closure is coupled to the case; and wherein the closure is releasable from the case by a simultaneous press and rotation action. REFERENCES Name Reference Date Romney US 3,860,136 Jan. 14, 1975 Kemmel US 4,350,171 Sept. 21, 1982 Seitzinger US 6,213,777 B1 Apr. 10, 2001 THE REJECTIONS ON APPEAL Claims 1, 2, 4, 5, 8, and 9 are rejected under 35 U.S.C. § 103 as unpatentable over Seitzinger and Romney. Claims 6 and 7 are rejected under 35 U.S.C. § 103 as unpatentable over Seitzinger, Romney, and Kemmel. Appeal 2021-003912 Application 16/074,749 3 ANALYSIS The rejection of claims 1, 2, 4, 5, 8, and 9 as unpatentable over Seitzinger and Romney Sole independent claim 1 is directed to a “child-resistant smoking article package.” The Examiner relies on the teachings of Seitzinger as being “capable of” meeting many of the limitations recited, but acknowledges that Seitzinger does not teach “the child-resistant closure.” Final Act. 3. The Examiner relies on the teachings of Romney for such a closure, and concludes that it would have been obvious to a skilled artisan to combine these teachings “in order to prevent children from gaining access to the package.” Final Act. 3; see also Ans. 3-4. Appellant contends, “there is no such ‘articulated reasoning’ or rational underpinning’” to justify the rejection and hence “there would have been no motivation” to combine these references. Appeal Br. 7, 8 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The primary reference to Seitzinger is entitled “Apparatus for Cleaning and Storing Dental Appliances.” Seitzinger Title. Seitzinger teaches, “Dental appliances such as dentures, retainers and mouth guards are a necessity for many people.” Seitzinger 1:11-12; see also Seitzinger 2:29-30. Seitzinger also teaches that by use of the described apparatus, “[t]he dental appliance can easily be stored in and removed from the apparatus without undue mess or inconvenience to the user.” Seitzinger Abstract; see also Seitzinger 2:30-33 (“[t]his apparatus allows the user to easily clean and store his or her appliance Appeal 2021-003912 Application 16/074,749 4 in a liquid dentifrice or other cleaning/storage solution”).2 To be clear, Seitzinger states, “[u]se of the present invention is quite uncomplicated.” Seitzinger 2:49. The Examiner, on the other hand, apparently desires to complicate matters by modifying Seitzinger’s closure “to be child-resistant as taught by Romney” so as “to prevent children from gaining access to the package.” Final Act. 3. The Examiner explains such action is warranted because “the liquid dentifrice (or small dental appliances) contained within the case of Seitzinger is potentially hazardous to children (e.g. infants or toddlers) if swallowed.” Ans. 4; see also Ans. 5-6. “Appellant cannot find any support whatsoever for” such statement by the Examiner. Reply Br. 3. “To the contrary, there is no indication or suggestion that the items to be cleaned and stored in Seitzinger’s apparatus would present any danger to a child or are not meant to be used by children (conversely, retainers and mouth guards are often specifically designed for children, as are toothbrushes).” Reply Br. 4; see also Appeal Br. 10. Appellant further states that “in fact, children often use dental appliances such as retainers and mouth guards; thus, Seitzinger’s container was likely designed to be used by children, as opposed to being child-resistant.” Appeal Br. 10. We agree with Appellant on this point. The Examiner’s explanation above regarding the dentifrice or the dental appliances themselves being hazardous in the event of swallowing appears speculative in nature since dentifrice is actually intended to be used in association with oral devices. 2 Seitzinger describes such “liquid dentifrice” “as, but not limited to, mouthwash and/or other specially formulated dental cleaners such as EfferdentTM. Seitzinger 2:50-52. Appeal 2021-003912 Application 16/074,749 5 Further, baby pacifiers (conceivably also a dental appliance) have, for a considerable period of time, been commonly used by “infants or toddlers” with limited (if any) concern of their actually being swallowed. We also note that the child-proof cap disclosed in Romney is “[f]or poisonous or otherwise hazardous materials.” Romney Abstract; see also Romney 1:8-10 (stating “[d]rugs, medicines, cleaning compounds, and various toxic compositions have contributed” to injuries). The Examiner does not explain how Seitzinger’s dentifrice or appliances are so toxic, poisonous, or hazardous as to warrant the enhanced protection provided by Romney’s cap; or that there exists a need to restrict children’s access to devices that they themselves are likely to insert and wear on a regular basis. In short, Appellant’s contention that “there is absolutely no evidence that Seitzinger’s cleaning/storage container would benefit from being child-resistant” appears sound. Reply Br. 5; see also Appeal Br. 9. Appellant also alleges that “Seitzinger is non-analogous art” and explains why under both the ‘field of endeavor’ and the ‘pertinent problem’ prongs of the non-analogous art test. Appeal Br. 8, 9. The Examiner, on the other hand, only addresses the ‘field of endeavor’ prong (see below), and remains silent as to the ‘pertinent problem’ prong raised by Appellant. See Ans. 4-5; Appeal Br. 8-9. As such, we do not fault Appellant’s statement that “Seitzinger addresses the problem of how to easily clean and store dental appliances,” whereas “[t]he present application addresses the problem of how to inhibit a child from opening a smoking article package.” Appeal Br. 8; see also Reply Br. 4 (“the ‘items’ held by the two containers are vastly different (e.g., one requires a child-resistant container and the other does not)”). Regarding the ‘field of endeavor’ prong of the analogous art test, the Appeal 2021-003912 Application 16/074,749 6 Examiner contends that “Seitzinger is in the field of Applicant’s endeavor (i.e.[,] containers for holding and conveniently removing items).” Ans. 5. However, we are more persuaded by Appellant’s statement that, “as a dental cleaning and storage apparatus,” Seitzinger “has nothing to do with-and would not contribute in any way to-a child-resistant smoking article package” as presently claimed. Appeal Br. 9; see also Reply Br. 4. In view of the above, we do not fault Appellant’s assertion that “Seitzinger is non-analogous art.” Appeal Br. 8; see also Reply Br. 4. Additionally, Appellant “submits that the Examiner is using improper hindsight in combining Seitzinger with Romney.” Appeal Br. 9. Appellant contends that “Seitzinger’s container was likely designed to be used by children, as opposed to being child-resistant” which is the purpose of Appellant’s recited “child-resistant closure.” Appeal Br. 10. In other words, because the material contained in Seitzinger’s container cannot be said to rise to the level of “hazardous” so as to warrant Romney’s level of protection, the Examiner does not proffer any other source (apart from Appellant’s disclosure) that might suggest a need to impose a “child-resistant closure” onto Seitzinger’s easy-to-use container. We thus are also of the opinion that the Examiner has not provided a non-hindsight reason to combine the references in the manner stated. “Finally, the Appellant respectfully submits that the mere fact that a reference could be modified is inadequate to show[] that a person of ordinary skill in the art would modify the reference as suggested.” Appeal Br. 10 (referencing In re Gianelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014). The aforesaid discussions support Appellant’s contention. In other words, although Appellant does not dispute the possibility that Seitzinger’s apparatus could be Appeal 2021-003912 Application 16/074,749 7 modified as suggested with Romney’s child-proof cap, the Examiner has not provided an adequate reason why a skilled person would desire to preclude access to Seitzinger’s dentifrice (which cannot be said to be a “poisonous or otherwise hazardous material” as expressed in Romney’s Abstract) by children when it is understood that children are just as likely to wear such appliances as are adults. The Examiner does not contend otherwise. Hence, based on the record presented, we do not sustain the Examiner’s rejection of claim 1. Accordingly, we reverse the Examiner’s rejection of claims 1, 2, 4, 5, 8, and 9 as being unpatentable over Seitzinger and Romney. The rejection of claims 6 and 7 as unpatentable over Seitzinger, Romney, and Kemmel The Examiner relies on the additional reference to Kemmel for teaching the further limitations of claims 6 and 7. See Final Act. 4. The Examiner does not employ Kemmel in a manner that might cure the defect of the combination of Seitzinger and Romney discussed above. Accordingly, for similar reasons, we likewise reverse the rejection of claims 6 and 7 as being unpatentable over Seitzinger, Romney, and Kemmel. CONCLUSION The Examiner’s decision to reject claims 1, 2, and 4-9 is reversed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4, 5, 8, 9 103 Seitzinger, Romney 1, 2, 4, 5, 8, 9 6, 7 103 Seitzinger, Romney, Kemmel 6, 7 Appeal 2021-003912 Application 16/074,749 8 Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed Overall Outcome 1, 2, 4-9 REVERSED