James Elliott

Patent Trials and Appeals Board

Oct 28, 2020

14881893 - (D) (P.T.A.B. Oct. 28, 2020)

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.
14/881,893 10/13/2015 James Elliott NYLS-1 9375
135800 7590 10/28/2020
New York Law School PTO Clinic
c/o Fay Kaplun & Marcin, LLP
150 Broadway, Suite 702
New York, NY 10038
EXAMINER
NEWAY, BLAINE GIRMA
ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
10/28/2020 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):
USPTOcorrespondence@nyls.edu
mmarcin@fkmiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES ELLIOTT
____________

Appeal 2020-001971
Application 14/881,8931
Technology Center 3700
____________

Before PHILIP J. HOFFMANN, BRUCE T. WIEDER, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1 and 3–11. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

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 James
Elliott. (Appeal Br. 2.)
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Application 14/881,893

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CLAIMED SUBJECT MATTER
Appellant’s invention relates to “an apparatus for pivotally connecting
containers using engagement members.” (Spec. ¶ 2.)
Claim 1 is the sole independent claim on appeal. It recites (emphasis
added):
1. An apparatus comprising:
a first container comprising a first bottom surface and a
first side surface rising from the first bottom surface; and
a second container comprising a second bottom surface
and a second side surface rising from the second bottom surface;
wherein the first container and the second container are
configured to be pivotally coupled to rotate around a first axis
that is parallel to a second axis that runs through the first bottom
surface and the second bottom surface when the first and second
containers are oriented in a same upright position and wherein,
when one of the first and second containers is rotated around the
first axis, the other one of the first and second containers remains
in the upright position with the first axis remaining parallel to
the second axis by force of gravity.

REJECTIONS2
Claims 1, 3–5, 7, 8, and 11 are rejected under 35 U.S.C. § 102(a)(1) as
anticipated by Elferink (WO 2011/157851 A1, pub. Dec. 22, 2011).
Claim 6 is rejected under 35 U.S.C. § 103 in view of Elferink and
Stimmel (US 4,886,239, iss. Dec. 12, 1989).
Claims 9 and 10 are rejected under 35 U.S.C. § 103 in view of
Elferink and Conner (US 4,984,684, iss. Jan 15, 1991).

2 The rejection of claims 5–11 under 35 U.S.C. § 112(b) was withdrawn.
(Answer 3.)
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ANALYSIS
“[A]n invention is anticipated if the same device, including all the
claim limitations, is shown in a single prior art reference. Every element of
the claimed invention must be literally present, arranged as in the claim.”
Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989).
“Anticipation can occur when a claimed limitation is ‘inherent’ or otherwise
implicit in the relevant reference.” Standard Havens Prods., Inc. v. Gencor
Indus., Inc., 953 F.2d 1360, 1369 (Fed. Cir. 1991). “[T]he mere recitation of
a newly discovered function or property, inherently possessed by things in
the prior art, does not cause a claim drawn to those things to distinguish over
the prior art.” In re Swinehart, 439 F.2d 210, 212–13 (CCPA 1971). A
prior art device need only be capable of a recited intended use. In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
The Examiner finds that claim 1 is anticipated by Elferink. (Final
Action 3; see also Answer 3–5.)
Appellant argues:
Elferlink [sic] does not teach or suggest coupling
the containers in a manner to allow when one of the first
and second containers is rotated around the first axis, the
other one of the first and second containers remains in the
upright position with the first axis remaining parallel to the
second axis by force of gravity. There is no indication that
one container of Elferink will remain in the upright
position when the other container rotates, simply that the
containers rotate with respect to each other.

(Appeal Br. 6.)
The Examiner answers
that the device of Elferink is clearly capable of being pivotally
coupled wherein when one of the first and second containers is
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Application 14/881,893

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rotated around the first axis, the other one of the first and second
containers remains in the upright positon with the first axis
remaining parallel to the second axis by force of gravity.

(Answer 4.) The Examiner adds
that a recitation of the intended use of the claimed invention must
result in a structural difference between the claimed invention
and the prior art in order to patentably distinguish the claimed
invention from the prior art. If the prior art structure is capable
of performing the intended use, then it meets the claim.

(Id.)
Elferink discloses couplable containers, and more specifically,
“couplable beverage containers.” (Elferink, pg. 1, ll. 2–4.) Figures 9–11 of
Elferink are instructive and are reproduced below.

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“Fig. 9 is a plan side view of an[] embodiment of couplable containers
forming part of a container system” and “Figs 10-11 are different views of
details showing coupling means of the containers of Fig. 9.” (Id., pg. 8,
ll. 3–6.) Elferink teaches that an
embodiment is shown in Fig. 9 (front view) with details in
Fig. 10 (perspective view) and Fig. 11 (top view). The first
container 1A comprises first coupling means 5A in the form of a
button comprising a relatively wide discoid portion 19A
connected with a relatively narrow waist 21A to a container side
wall portion 6A, here . . . arranged on a container collar
portion 4A. The second container 1B comprises a second
coupling means 7B in the form of a groove in a container side
wall portion having, when viewed along the container axis AB a
general C-shape (Fig. 11) and in front view a general J-shape or
field hockey stick shape (Figs 9, 10) with a stem portion 45 and
a tip portion 47.
For coupling the first and second containers 1A, 1B, the
button-shaped first coupling portion 5A is introduced into the
stem portion 45 of the groove-shaped second coupling means 7B
and arranged into the tip portion 47 thereof, or in the bend portion
between the stem and tip portions 45, 47 so that upon lifting the
first container 1A the first coupling means 5A slides into the tip
portion 47. Thus coupled, the first and second coupling means
5A, 7B interengage and both containers 1A, 1B may be lifted
together by holding either one of them.

(Id., pg. 14, ll. 3–23.) Thus, when Elferink’s containers 1A and 1B are
interengaged, the containers can pivot around the axis formed by waist 21A
of the button.
Appellant argues that “because the cups of Elferink are designed to
enable carrying multiple containers having simply [sic] by holding one
container, the connections of Elferink must be structurally different because
they perform a different function.” (Reply Br. 3.) We do not agree.
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Appellant has chosen to claim the invention in functional terms. And
while “there is nothing intrinsically wrong with the use of such a technique
in drafting patent claims,” In re Swinehart, 439 F.2d at 212, if a prior art
device is capable of performing that function, then the claim is not
patentable. Id. at 212–213; see also In re Schreiber, 128 F.3d at 1477.
Although not specifically recited in Elferink, if, e.g., both of
Elferink’s containers (1A and 1B) are in an upright position holding a food
or drink, and container 1A is rotated about the axis formed by waist 21A,
absent some additional force acting on container 1B, gravity (and inertia)
will keep container 1B in its upright position. Particularly in view of this,
Appellant does not persuasively argue why the Examiner erred in finding
that Elferink is “capable of being pivotally coupled wherein when one of the
first and second containers is rotated around the first axis, the other one of
the first and second containers remains in the upright positon with the first
axis remaining parallel to the second axis by force of gravity.” (See
Answer 4.)
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1 as anticipated by Elferink. Claims 3–5, 7, 8, and 11 are not
separately argued and fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).3
Appellant’s arguments with regard to the obviousness rejections of
claims 6, 9, and 10 are that the additionally cited prior art does not cure the
asserted deficiency of Elferink. (Appeal Br. 8.) However, for the reasons

3 In light of the above, we need not address the Examiner’s findings or
Appellant’s arguments regarding the additional embodiment disclosed in
Elferink’s Figures 12–16.
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discussed, we are not persuaded of such a deficiency. Therefore, we are also
not persuaded that the Examiner erred in rejecting claims 6, 9, and 10.

CONCLUSION
The Examiner’s rejection of claims 1, 3–5, 7, 8, and 11 under
35 U.S.C. § 102(a)(1) is affirmed.
The Examiner’s rejections of claims 6, 9, and 10 under 35 U.S.C.
§ 103 are affirmed.
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3–5, 7,
8, 11
102(a)(1) Elferink 1, 3–5, 7,
8, 11

6 103 Elferink, Stimmel 6
9, 10 103 Elferink, Conner 9, 10
Overall
Outcome
1, 3–11

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