Ex Parte Andersen et al

Patent Trial and Appeal Board

Sep 29, 2017

13206455 (P.T.A.B. Sep. 29, 2017)

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.
13/206,455 08/09/2011 Daniel A. Andersen J-5246A 3875
28165 7590
S.C. JOHNSON & SON, INC.
1525 HOWE STREET
RACINE, WI53403-2236
EXAMINER
NICHOLS II, ROBERT K
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
10/03/2017 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):
F074168@scj.com
selechne @ scj. com
mjzolnow @ scj .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL A. ANDERSEN, LANCE D. CHADY,
JEFFREY J. CHRISTIANSON, and MARK E. JOHNSON
Appeal 2016-001898
Application 13/206,455
Technology Center 3700
Before GEORGE R. HOSKINS, BRANDON J. WARNER, and
ANTHONY KNIGHT, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Daniel A. Andersen et al. (“Appellants”)1 appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision rejecting claims 21—26. Appeal
Br. 2. Claims 1—6 and 16—20 have been withdrawn, and claims 7—15 and 27
have been canceled. Id. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is S. C. Johnson &
Son, Inc. Appeal Br. 2.
Appeal 2016-001898
Application 13/206,455
CLAIMED SUBJECT MATTER
Appellants’ disclosed invention “relates generally to a dispensing
system including an overcap with an actuator for placement on a container.”
Spec. 14. Claim 21, reproduced below with emphasis added, is the sole
independent claim appealed and is representative of the subject matter on
appeal.
21. An overcap, comprising:
a sidewall; and
an actuator, wherein the actuator is operably connected
to the sidewall by the inelastic deformation of a portion of the
sidewall.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Eini US 2013/0161351 A1 June 27,2013
REJECTION
The following rejection is before us for review: Claims 21—26 stand
rejected under 35 U.S.C. § 102(e) as anticipated by Eini. Final Act. 2—3.
ANALYSIS
Independent claim 21 recites, in relevant part, an overcap that includes
a sidewall and an actuator that are connected together, where “the actuator is
operably connected to the sidewall by the inelastic deformation of a portion
of the sidewall.” Appeal Br., Claims App. (emphasis added). Thus, the
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Appeal 2016-001898
Application 13/206,455
connection between the sidewall and the actuator requires some inelastic
deformation of a portion of the sidewall. See id.
Appellants argue that Eini, which admittedly discloses an overcap
with a sidewall and an actuator, is deficient in that the connection identified
and relied on in the rejection does not include any “inelastic deformation of
a portion of the sidewall,” as required by the claims. See Appeal Br. 4—7;
Reply Br. 2—5. For the reasons presented by Appellants regarding the
distinctions between the connection as claimed and the connection of Eini’s
elements, we agree with Appellants.
In particular, with respect to the connection limitation identified
above, the Examiner notes that Eini’s sidewall portions “are permanently or
inelastically deformed into the desired shape,” such as by molding, “for
operable connection between the actuator . . . and the sidewall.” Final
Act. 2 (emphasis added) (citing Eini, Figs. 2G, 4G, 1164). Appellants
persuasively assert, however, that such disclosure is not indicative of
structures that are operably connected to one another “by the inelastic
deformation” of a portion of one of the structures, as the claims require. See
Appeal Br. 4.
As Appellants correctly observe, Eini’s overcap and sidewall
elements, as relied on in the rejection—regardless of how such elements
may be initially formed (or even deformed, as the Examiner states)—are not
“connected to” one another “by the inelastic deformation” of either element,
as recited in the claims. See Appeal Br. 4—5; Reply Br. 2. Rather, Eini’s
elements are connected to one another by mounting pins being received into
slots of corresponding mounting arms. See Appeal Br. 4 (including
annotated reproductions of Eini’s Figures 2A and 2G, as relied on in the
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Appeal 2016-001898
Application 13/206,455
rejection). In short, the disclosed operable connection between Hini’s
overcap and sidewall elements is not achieved by any inelastic deformation
of either of the elements; the Examiner’s finding otherwise is not supported
by a preponderance of the evidence.
Further, the Examiner interprets claim 21 as a product-by-process
claim because it recites a “method of production,” including “the step of
connecting by ‘inelastic deformation.’” Ans. 3^4. Thus, in the Examiner’s
view, the operable connection of claim 21 recites a process of producing
the claimed overcap, such that “the claim is unpatentable even though
[Eini’s overcap] was made by a different process. Final Act. 4. We disagree
with this claim interpretation. Rather, we determine that the “operably
connected ... by the inelastic deformation” recitation of claim 21 is a
structural limitation on the claimed overcap, which must be disclosed in Eini
for a finding of anticipation. Claim 21 recites a structural interconnection
between two parts (the sidewall and the actuator), not a process of producing
those parts.
Accordingly, based on the record before us—because an anticipation
rejection requires a finding in a single reference of each and every limitation
as set forth in the claims—we do not sustain the rejection of independent
claim 21, and its associated dependent claims 22—26, as anticipated by Eini.2
2 We note that any consideration of what one of ordinary skill in the art
may deem obvious regarding possible incorporation of a conventional
method of securing a tab in a slot (including plastic bending of a material to
form a locking element) is immaterial to the anticipation rejection made here
and before us for review. We further note that the Patent Trial and Appeal
Board is a review body, rather than a place of initial examination, and we
therefore decline to make a determination of what one of ordinary skill in the
art may conclude; rather, we leave it to the Examiner to determine the
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Appeal 2016-001898
Application 13/206,455
DECISION
We REVERSE the Examiner’s rejection of claims 21—26 under
35 U.S.C. § 102(e) as anticipated by Eini.
REVERSED
appropriateness of any further course of action based on such a conclusion
should there be further prosecution of this application. See Ex Parte Frye,
94 USPQ2d 1072, 1075-77 (BPAI 2010) (precedential).
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