Burgess, James E. et al.

Patent Trials and Appeals Board

Sep 11, 2020

2019002698 (P.T.A.B. Sep. 11, 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.
12/769,900 04/29/2010 James E. Burgess BPMDL0009JB (10072U) 8618
27939 7590 09/11/2020
Philip H. Burrus, IV
Burrus Intellectual Property Law Group LLC
222 12th Street NE
Suite 1803
Atlanta, GA 30309
EXAMINER
ANDERSON, DON M
ART UNIT PAPER NUMBER
3733
NOTIFICATION DATE DELIVERY MODE
09/11/2020 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):
kberry@burrusiplaw.com
pburrus@burrusiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES E. BURGESS and JOHN KUTSCH
Appeal 2019-002698
Application 12/769,900
Technology Center 3700
Before MICHELLE R. OSINSKI, SUSAN L. C. MITCHELL, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 14–16 and 21–23. See Final Act. 1.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 In this Decision, we refer to (1) the Examiner’s Final Office Action dated
June 7, 2018 (“Final Act.”) and Answer dated January 9, 2019 (“Ans.”), and
(2) Appellant’s Appeal Brief dated September 6, 2018 (“Appeal Br.”) and
Reply dated February 20, 2019 (“Reply”).
2 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Medline
Industries, Inc. Appeal Br. 2.
Appeal 2019-002698
Application 12/769,900

2
CLAIMED SUBJECT MATTER
The claims are directed to a stackable suction canister and lid
assembly. Claim 14, the only independent claim on appeal, is reproduced
below:
14. A canister assembly, comprising:
a canister base having a bottom and a tapered sidewall
extending from the canister base to a lid-engaging rim; and
a lid comprising:
an interior portion surrounded by a perimeter portion
defining a canister connector, the interior portion defining a first
partial interior portion occupying seventy percent or less of the
interior portion and a second partial interior portion occupying
thirty percent or more of the interior portion, wherein:
the lid comprises a plurality of ports extending from the
interior portion;
all ports of the plurality of ports are disposed along the first
partial interior portion;
the lid comprises a pour spout disposed along the second
partial interior portion; and
axes of each of the ports are aligned orthogonally with a
pour spout axis of the pour spout and parallel with a plane
defined by the perimeter portion; and
a stacking recess to receive a filter of an adjacent lid when
the adjacent lid is rotated out of phase from, and stacked together
with, the lid.

REFERENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Deaton US 4,228,798 Oct. 21, 1980

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Application 12/769,900

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REJECTIONS
The Examiner made the following rejections:
1. Claims 14–16 and 21–23 stand rejected under pre–AIA 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement. Final Act. 2.
2. Claims 14–16 and 21–23 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Deaton. Final Act. 3.
Appellant seeks our review of these rejections.
OPINION
Rejection 1: Claims 14–16 and 21–23 as Lacking Written Description
The Examiner finds that independent claim 14 (and claims 15–16 and
21–23 which depend from claim 14) fails to comply with the written
description requirement because there is no support for “axes of each of the
ports are aligned orthogonally with a pour spout axis of the pour spout” as
recited in claim 14. Final Act. 2–3. The Examiner finds that there is support
for a pour spout oriented “substantially orthogonally” relative to the axis of
the ports but not for pour spouts that are “orthogonally” aligned as recited in
claim 14. Id. at 2–3 (citing Spec. ¶ 37, Figs. 1–2). The Examiner states that
“Paragraph 037 specifically states that figures 1 and 2 show a ‘substantially
orthogonally’ alignment and is silent with respect to the other figures.” Id.
at 3.
Appellant argues that the Examiner’s rejection is erroneous. Appeal
Br. 8–13; Reply 6–8. We agree.
Paragraph 31 of the Specification states:
To further increase stackability, each of the plurality of ports
107, 108, 109 in this illustrative embodiment has been turned
Appeal 2019-002698
Application 12/769,900

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sideways, such that a reference axis 110, 111, 112 running
through each of the plurality of ports 107, 108, 109 is aligned
substantially parallel with a plane 113 defined by the perimeter
portion 103. Said differently, each of the plurality of ports 107,
108, 109 is turned sideways so as to be parallel with a major
surface of the interior portion 102 of the lid member 101.
(Emphasis added). From this disclosure, a person of ordinary skill in the art
would understand that the Specification uses the term “substantially” parallel
alignment to include a parallel alignment, and that “substantially” includes a
perfect relationship in addition to those that are merely close. See Andrew
Corp. v. Gabriel Electronics, Inc., 847 F.2d 819, 821 (Fed. Cir. 1988)
(stating “‘substantially equal’ is a term of degree, and that its acceptability
depends on ‘whether one of ordinary skill in the art would understand what
is claimed . . . in light of the specification’, even if experimentation may be
needed”). In context of claim 14, a person of ordinary skill in the art would
understand that “substantially orthogonal” relationships disclosed in the
Specification and claims include “orthogonal” relationships.
We find that the Specification contains written description support for
the phrase “axes of each of the ports are aligned orthogonally with a pour
spout axis of the pour spout” as recited in claim 14. Thus, the rejection of
claims 14–16 and 21–23 under 35 U.S.C. § 112 is not sustained.

Rejection 2: Claims 14–16 and 21–23 as Unpatentable over Deaton
The Examiner finds that claims 14–16 and 21–23 are unpatentable
over Deaton. Final Act. 3–6. Appellant argues claims 14–16 and 21–23 as a
group. Appeal Br. 14–16. We select independent claim 14 as the
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Application 12/769,900

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representative claim, and claims 15, 16, and 21–23 stand or fall with claim
14. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Deaton discloses all of the limitations of
claim 14 except for the limitation reciting “axes of each the ports aligned
orthogonally with a pour spout axis of the pour spout and parallel with a
plane defined by the perimeter portion.” Final Act. 4–5. For this limitation,
the Examiner finds that “selecting the particular angle of the ports is a matter
of routine optimization.” Id. at 5. The Examiner explains that “port 30
disclosed by Deaton is designed to receive a fluid inlet line” (citing Deaton,
5:10–23), and “port 34 of Deaton is also intended to receive a vacuum line”
(citing id. at 5:24–35). The Examiner further finds that the “particular angle
of the ports is a result-effective variable as evidenced by Reiner (US
2008/0015526) which teaches that the angle of a port 5 will [affect] the
kinking of an attached hose” (id. at ¶ 23), and Appellant “has disclosed no
criticality to the claimed angles or alignment.” Final Act. 5. The Examiner
reasons that it would have been obvious to one of ordinary skill in the art “to
have modified the ports of Deaton such that the axes of each the ports are
aligned orthogonally with a pour spout axis of the pour spout and are parallel
with a plane defined by the perimeter portion” because “finding the claimed
arrangement would be a simple matter of routine optimization of a result-
effective variable.” Id. (citing MPEP 2144.05 II); see Ans. 7 (“Per MPEP
2144.05 II, the presence of a known result-effective variable would be a
motivation for a person of ordinary skill in the art to experiment to reach
another workable product or process.”).
Appellant argues that the Examiner’s rejection is erroneous because
Deaton “discloses orthogonal relationships between all of its ports and the
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Application 12/769,900

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plane defined by its perimeter when Appellant claims the opposite, namely,
parallel relationships between all of its ports and the plane defined by its
perimeter.” Appeal Br. 15–16. Appellant also argues that the “Examiner’s
response to Ground 2 confirms that Deaton fails to teach each and every
limitation of claim 14” because “the Examiner states that the teachings of
Reiner are required to alter the teachings of Deaton. Reply 9. Appellant
argues that “the rejection is not a rejection under 35 USC § 103 in view of
Deaton and Reiner. It is instead a rejection under 35 USC § 103 in view of
Deaton only.” Id.
Appellant’s arguments are not persuasive. Appellant does not
address, much less rebut, the Examiner’s findings that “selecting the
particular angle of the ports is a matter of routine optimization” and the
“particular angle of the ports is a result-effective variable as evidenced by
Reiner (US 2008/0015526) which teaches that the angle of a port 5 will
[affect] the kinking of an attached hose (see ¶ 0023).” Final Act. 5; see
Ans. 7. Contrary to Appellant’s argument that the Examiner seeks to
combine the teachings of Deaton and Reiner, the Examiner merely relies on
Reiner to support the finding that the “particular angle of the ports is a
result-effective variable.” Final Act. 5; see Ans. 7. Similarly, Appellant has
not disclosed any criticality to the claimed angles or alignment. Finally,
Appellant does not address the Examiner’s reasoning that it would have been
obvious to one of ordinary skill in the art “to have modified the ports of
Deaton such that the axes of each the ports are aligned orthogonally with a
pour spout axis of the pour spout and are parallel with a plane defined by the
perimeter portion” because “finding the claimed arrangement would be a
simple matter of routine optimization of a result-effective variable.” Final
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Application 12/769,900

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Act. 5; Ans. 7. Because Appellant does not address the Examiner’s findings
and reasoning, Appellant does not show error by the Examiner.
For the reasons above, the rejection of claim 14 and claims 15, 16, and
21–23 falling therewith is sustained.
CONCLUSION
The Examiner’s decision to reject claims 14–16 and 21–23 under pre–
AIA 35 U.S.C. § 112, first paragraph, is REVERSED.
The Examiner’s decision to reject claims 14–16 and 21–23 under pre-
AIA 35 U.S.C. § 103(a) as being unpatentable over Deaton is AFFIRMED.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
14–16, 21–
23
112, first
paragraph
Written
Description
14–16, 21–
23
14–16, 21–
23
103(a) Deaton 14–16, 21–
23

Overall
Outcome
14–16, 21–
23

TIME PERIOD FOR RESPONSE
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