Ex Parte Albers et al

Patent Trial and Appeal Board

Jun 16, 2016

11951749 (P.T.A.B. Jun. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111951,749 12/06/2007
29344 7590 06/20/2016
ONELLO & MELLO LLP
Three Burlington Woods Drive
Suite 203
Burlington, MA 01803-4532
FIRST NAMED INVENTOR
Oliver Albers
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.
LFT-003 8958
EXAMINER
STASHICK, ANTHONYD
ART UNIT PAPER NUMBER
3788
NOTIFICATION DATE DELIVERY MODE
06/20/2016 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):
mail@omiplaw.com
docketing@omiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OLIVER ALBERS
and KUN SHU LIN
Appeal2014-001559
Application 11/951, 7 49
Technology Center 3700
Before JAMESON LEE, JONI Y. CHANG, and JUSTIN T. ARBES,
Administrative Patent Judges.
LEE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1, 4--7, 12, 15-17 and 22-27. Claims 2, 3, 11, 13, 14 and 21 were
cancelled previously, and claims 8-10 and 18-20 were withdrawn
previously. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b ). 1
We reverse.
1 This Decision refers to Appellants' Appeal Brief ("App. Br.," filed May
15, 2013), Examiner's Answer ("Ans.," mailed Sept. 18, 2013), Appellants'
Reply Brief ("Reply Br.," filed Nov. 18, 2013), and Final Office Action
("Final Act.," mailed June 12, 2012).
Appeal2014-001559
Application 11/951, 7 49
The Application is directed generally to a container having a re-
sealable lid. Spec. i-f 2. In the Summary of the Invention section, the
Specification states:
[P]rovided is a lid for use with a vessel defining a volume and an
opening having a rim. The lid comprises a flexible bulb and a
conformal outer edge configured to create an airtight seal with
the rim to close the opening, wherein the flexible bulb is
configured to release pressure from the vessel and break the
airtight seal in response to compression of the bulb.
Spec. i-f 18. Of all claims on appeal, claims 1 and 12 are independent and
reproduced below (emphasis added):
1. A canister, comprising:
a vessel defining a volume and an opening having a rim
with a flared inner surface, the rim including a rim top distal from
the volume that has a greater diameter than a rim bottom
proximate to the volume; and
a flexible lid having a flexible hollow bulb centrally
disposed in a substantially planar and pliable top member and a
planar flared conformal outer edge extending upwardly from a
perimeter of the pliable top member, wherein the flared
conformal outer edge is configured to mate with the flared inner
surface of the rim to close the opening so there is no overhang
with the rim top, the pliable top member extending between the
flexible hollow bulb and the flared conformal outer edge,
wherein the pliable top member, flexible hollow bulb, and
conformal outer edge are configured such that:
pressing the lid into the opening evacuates air
from the vessel away from the flexible hollow bulb
and around and between the flared inner surface of
the rim and the flared conformal outer edge of the
lid to create a vacuum that pulls the lid to close the
opening with a vacuum airtight seal, and
compressing the flexible bulb forces air
into the vessel that is then directed out of the
vessel via the flared inner surface of the rim and
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Appeal2014-001559
Application 11/951, 7 49
the flared conformal outer edge of the lid to
break the vacuum airtight seal.
12. A flexible lid for use with a vessel defining a volume and an
opening having a rim with a flared inner surface, the rim
including a rim top distal from the volume that has a greater
diameter than a rim bottom proximate to the volume, the lid
compnsmg:
a substantially planar and pliable top member;
a flexible hollow bulb centrally disposed in the pliable top
member; and
a planar flared conformal outer edge extending upwardly
from a perimeter of the pliable top member, wherein the flared
conformal outer edge is configured to mate with the flared inner
surface of the rim to close the opening so there is no overhang
with the rim top, the pliable top member extending between the
flexible hollow bulb and the flared conformal outer edge,
wherein the pliable top member, flexible hollow bulb, and
conformal outer edge are configured such that:
pressing the lid into the opening evacuates air
from the vessel around and between the flared inner
surface of the rim and the flared conformal outer
edge of the lid to create a vacuum that pulls the lid
to close the opening with a vacuum airtight seal, and
compressing the flexible bulb forces air
into the vessel that is then directed out of the
vessel via the flared inner surface of the rim and
the flared conformal outer edge of the lid to
break the vacuum airtight seal.
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Appeal2014-001559
Application 11/951, 7 49
Figure 2C is reproduced below.
//
100
4/
top member 126, and conforming edge 122. "The flexible bulb 124 is
substantially hollow in this embodiment to enable compression to force air
into the vessel to facilitate breaking of the airtight seal in response to such
compression." Spec. i-f 45. By reference to Figure 2C, we note the
above-bolded limitations of claims 1 and 12: "compressing the flexible bulb
forces air into the vessel that is then directed out of the vessel via the flared
inner surface of the rim and the flared conformal outer edge of the lid to
break the vacuum airtight seal."
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is listed as follows:
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Appeal2014-001559
Application 11/951, 7 49
Legrand
Donnelly
Stolk
us 606,822
us 3,924,774
us 3, 163,311
REJECTIONS
July 5, 1898
Dec. 9, 1975
Dec. 29, 1964
Claims 12, 15, 17, 25 and 27 were finally rejected under 35 U.S.C.
§ 102(b) as anticipated by Donnelly. Final Act. 11-14. This rejection has
been withdrawn by the Examiner. Ans. 3.
Claims 1, 4--7, 12, 15-17 and 22-27 were finally rejected under
35 U.S.C. § 103(a) as unpatentable over Donnelly, Stolk, and Legrand.
Final Act. 14--18.
ISSUE
Did the Examiner articulate sufficient reasoning to combine the
teachings of Donnelly, Stolk and Legrand to arrive at the subject matter of
the rejected claims?
ANALYSIS
il~. Rejection of Claims 1, 4--7, 12, 15-17 and 22-27 under
35 U.S.C. § 103(a) as Obvious over Donnelly, Stolk and Legrand
1. Claims 1 and 12
The Examiner bears the initial burden of establishing prima facie
obviousness. In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). Aprima
facie case means the evidence of prior art would reasonably allow the
conclusion the Examiner seeks and compels such a conclusion if the
Applicant produces no evidence or argument to rebut it. In re Spada,
911 F.2d 705, 707 n.3 (Fed. Cir. 1990).
According to the Examiner, the combined teachings of Donnelly,
Stolk and Legrand would satisfy all limitations of claims 1 and 12,
including:
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Appeal2014-001559
Application 11/951, 7 49
compressing the flexible bulb forces air into the vessel that is
then directed out of the vessel via the flared inner surface of
the rim and the flared conformal outer edge of the lid to
break the vacuum airtight seal.
The Examiner acknowledged that Donnelly does not disclose a
flexible lid having a flexible hollow bulb centrally disposed in a pliable top
member as is required by claims 1 and 12. Ans. 6. The Examiner
determined, however, that it would have been obvious to one with ordinary
skill in the art to substitute Stolk's hollow bulb for the tubular handle on
Donnelly's lid, while retaining everything else in Donnelly's lid. Id. at 10.
The Examiner confirmed that he was relying on Stolk only for its disclosure
of a hollow bulb. Id. at 17.
The Examiner acknowledged that Donnelly does not disclose a vessel
rim with a flared inner surface that mates with a flared conformal outer edge
of the lid as is required by claims 1 and 12. Id. at 6-7. The Examiner
determined, however, that it would have been obvious to one with ordinary
skill in the art to incorporate the flared vessel rim of Legrand in the
container structure of Donnelly. Id. at 12.
Applicants ask that we construe "bulb" as "[a]n upwardly protecting
and compressible portion of a single-piece lid configured to hold a volume
of air, and having a permanently open bottom as the only opening through
which air in the volume is admitted and expelled." Reply Br. 2. We decline
to do so because the proposed construction is too restrictive. "[T]he PTO
gives a disputed claim term its broadest reasonable interpretation during
patent prosecution." In re Bigio, 381 F.3d 1320, 1324. Absent claim
language carrying a narrow meaning, the Patent and Trademark Office
should only limit the claim based on the specification and prosecution
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Appeal2014-001559
Application 11/9 51, 7 49
history when those sources expressly disclaim the broader definition. Id. at
132; see also In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
Nevertheless, based on the requirement in each of claims 1 and 12 that
compressing the flexible bulb forces air into the vessel that is then directed
out of the vessel via the flared inner surface of the rim and the flared
conformal outer edge of the lid to break the vacuum airtight seal, the flexible
hollow bulb of these claims must include a passageway connecting the
interior of the hollow bulb to the interior of the vessel for air transfer.
Moreover, such passageway must be sufficient to pass enough air from
inside the bulb to break an airtight seal between the lid and the vessel rim.
Donnelly's lid is shown in its Figure 1, reproduced below.
Figure 1 is an elevational sectional view of a lid according to Donnelly.
Figure 9 of Donnelly is reproduced below.
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Appeal2014-001559
Application 11/9 51, 7 49
Figure 9 illustrates the container of Donnelly with the lid disposed on a
vessel. As is evident from the figures above, Donnelly does not disclose a
flexible hollow bulb on a lid that is capable, when compressed, to force air
into the vessel, or a rim with a flared inner surface that mates with a flared
conformal outer edge of the lid. Donnelly discloses various valves that are
opened upon application of upward motion to remove the lid. Donnelly
1:45-51. Donnelly's lid is placed entirely within the outer walls of the
container.
The Examiner's stated rationale for substituting Stolk's flexible bulb
for Donnelly's handle 17 is "to allow a user to easily manipulate the lid to
break any peripheral seal as to remove the lid from the vessel with minimal
effort." Ans. 10. It is unexplained, however, why a hollow bulb would
facilitate manipulation of Donnelly's lid.
Figure 3 of Stolk is reproduce below.
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Appeal2014-001559
Application 11/9 51, 7 49
~.59
#-~""''>
Figure 3 illustrates a sectional view of an embodiment of the container of
Stolk after a top cap member has been removed. With regard to removal of
sealing member 44, which constitutes a lid, Stolk describes:
After the cap member 28 has been removed from the
container body 12, the sealing member 44 remains in
hermetically sealing relationship with the container body 12
owing to the tight sealing engagement of the countersink wall 48
of the sealing element 44 with the inner surface 52 of the
container body 12. To remove the sealing element 44 from the
container body 12, the flange portion 58 of the of the gripping
button 52 is squeezed or pressed inwardly as shown in FIG. 3,
thereby pulling the flat central portion 46 inwardly and moving
the countersink wall 48 substantially out of engagement with the
inner surface 52 of the container body 12. The sealing element
44 then may be easily lifted from the container body 12 by
pulling upwardly on the gripping button 54 to remove the
outwardly extending flange 50 from the flat upper bead face 16.
Stolk 3:35-50. There is no description of any air that is injected into the
vessel from within the gripping button 54 when it is squeezed, much less
sufficient air to break any peripheral airtight seal. Rather, the airtight seal is
broken by a user's actually pulling flat central portion 46 of the lid inwardly
and then lifting the entire lid upwardly to disengage from the vessel. Also,
Figure 3 shows a solid line beneath button 54 seemingly suggesting that the
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Appeal2014-001559
Application 11/951, 7 49
interior of button 54 is physically divided from the interior of the vessel
beneath the button.
Thus, even assuming that Stolk's hollow bulb is substituted in to
replace Donnelly's handle 17, the resulting structure has not been shown to
include a flexible bulb compressible to force air into the vessel that is then
directed out of the vessel via a contact area between the lid and the vessel's
rim, sufficiently forceful to break a vacuum airtight seal as required by the
claims. The Examiner characterizes this limitation as a statement of
intended use. Ans. 16. We disagree with that characterization. Although
the limitation at issue essentially is a functional limitation, there is nothing
intrinsically wrong with a functional limitation that further limits a claimed
structure. See In re Swinehart, 439 F.2d 210, 212 (CCPA 1971). Here, the
functional limitation further defines the cooperation and interrelationships
between physical parts. Although an Examiner may require an applicant to
prove that certain functional characteristics are not present in the prior art
reference, id. at 213, before an applicant can be put to that burden, the
Examiner must provide a sound basis to establish the reasonableness of the
Examiner's belief that the functional limitation is an inherent characteristic
of the prior art. See In re Spada, 911 F.2d at 708.
Here, the Examiner articulated no reasonable belief that compression
of Stolk's bulb forces air into the container vessel, sufficient to break a
peripheral vacuum seal between the lid and the vessel. For example, it is
uncertain why the Examiner believes that the bottom of Stolk's bulb facing
the interior of the vessel contains an air passageway to pass air between the
interior of the bulb and the interior of the vessel. It is also uncertain why
any air injected into the vessel would be of sufficient strength to break a
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Appeal2014-001559
Application 11/9 51, 7 49
vacuum seal without the sides of the lid being drawn inward at the same
time. In that regard, we note that the Examiner has not sought to incorporate
into Donnelly's container that aspect of Stolk relating to drawing in the
peripheral sides of the lid from abutment against the sidewall of the vessel.
Additionally, the Examiner's proposed modification of Donnelly's
vessel to include a rim having a flared inner surface like the vessel in
Legrand is not reasonably grounded. As shown above, Donnelly's lid is
placed entirely within the container. That design is a particular feature of
Donnelly which describes that its lid, referred to in Donnelly as a "closure,"
"can be positioned at any point within the container so that minimum air
space will remain above the contents of the container." Donnelly 2:35-39.
Figure 1 of Legrand is reproduced below.
Figure 1 of Legrand shows a vertical sectional view of the jar and cover of
Legrand. The jar has an outwardly extending rim with a flared internal
surface to mate with a flared conforming outer edge of the cover. Such a
rim is manifestly incompatible with Donnelly's lid. If such a rim is
incorporated into Donnelly's container, to match the flared conforming outer
edge of Donnelly's lid, the rim would preclude variable positioning of
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Appeal2014-001559
Application 11/951, 7 49
Donnelly's lid up and down the height of the container as is described in
Donnelly and noted above. The Examiner's stated reasoning for adopting
Legrand' s rim simply is that it would match what appears to be a flared
outer surface on Donnelly's lid, visible in Donnelly's Figure 1 reproduced
above. Ans. 12. That does not constitute adequate reasoning in light of
Donnelly's stated intent and desire to place its lid at variable heights.
To combine teachings in an obviousness analysis, the Examiner must
articulate reasoning with rational underpinnings. See In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006). For the foregoing reasons, we determine that the
Examiner has not articulated sufficient reasoning with rational
underpinnings to combine the teachings of Donnelly, Stolk, and Legrand in
the manner proposed by the Examiner. Furthermore, as discussed above, the
Examiner has not shown that the resulting combination satisfies this
limitation in each of claims 1 and 12: "compressing the flexible bulb forces
air into the vessel that is then directed out of the vessel via the flared inner
surface of the rim and the flared conformal outer edge of the lid to break the
vacuum airtight seal."
2. Claims 4--7, 15-17 and 22-27
Each of claims 4--7, 12, 15-17 and 22-27 depends, directly or
indirectly, from claim 1 or claim 12. The deficiencies in the rejection of
claims 1 and 12, as discussed above, carry through to the rejection of these
dependent claims and need not be reiterated here.
CONCLUSION
The Examiner failed to articulate sufficient reasoning to combine the
teachings of Donnelly, Stolk and Legrand to arrive at the subject matter of
the rejected claims.
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Appeal2014-001559
Application 11/951, 7 49
DECISION
The rejection of claims 1, 4--7, 12, 15-17 and 22-27 under 35 U.S.C.
§ 103(a) as obvious over Donnelly, Stolk and Legrand is reversed.
REVERSED
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