Ex Parte Carter et al

Patent Trial and Appeal Board

Apr 21, 2017

12938152 (P.T.A.B. Apr. 21, 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.
12/938,152 11/02/2010 Glen A. Carter 707197 2868
23460 7590 04/25/2017
LEYDIG VOIT & MAYER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON AVENUE
CHICAGO, IL 60601-6731
EXAMINER
ALLEN, JEFFREY R
ART UNIT PAPER NUMBER
3781
NOTIFICATION DATE DELIVERY MODE
04/25/2017 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):
Chgpatent @ ley dig. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GLEN A. CARTER, GARY A. MARCUS, JOHN NORMAN,
MARK A. GILBERTSON, CHRISTINA MILLER, and
ANDREW TERRILL
Appeal 2015-006241
Application 12/938,152
Technology Center 3700
Before LINDA E. HORNER, MICHAEL L. HOELTER, and
GORDON D. KINDER, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
decision, as set forth in the Final Office Action dated June 7, 2013 (“Final
Act.”), rejecting claims 1—11 and 15—18. Br. 2. Claims 12—14 have been
canceled. Br. 14 (Claims App.). We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
Appeal 2015-006241
Application 12/938,152
THE CLAIMED SUBJECT MATTER
The claimed subject matter “relates generally to a receptacle for spent
smoking material and, more particularly, to a modular receptacle for spent
smoking material.” Spec. 12. Claim 1 is the sole independent claim, is
illustrative of the subject matter on appeal, and is reproduced below.
1. A modular receptacle for spent smoking material
comprising:
a base;
a lid adapted for removable connection to the base, the
base and the lid defining a chamber for containing smoking
material when the base and the lid are connected together;
a neck adapted for one-way connection with the lid;
and a head adapted for one-way connection with the neck;
wherein the base includes a lug and the lid includes a
corresponding lug, the lug of the base adapted to be disposed in
engaging relationship with the lug of the lid;
wherein at least one of (i) the neck and the lid and (ii) the
head and the neck are adapted to be connected together via a
snap-fit connection.
REFERENCES RELIED ON BY THE EXAMINER
Intardonato US 4,708,256 Nov. 24, 1987
Luedecke US 6,454,122 B1 Sept. 24, 2002
Barr US 6,908,004 B2 June 21, 2005
Perelli US 7,055,714 B2 June 6, 2006
Leeds US 7,748,605 B1 July 6, 2010
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Appeal 2015-006241
Application 12/938,152
THE REJECTIONS ON APPEAL
Claims 1—3, 5—8, 10, and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Leeds and Luedecke.
Claims 4 and 18 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Leeds, Luedecke, and lntardonato.
Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Leeds, Luedecke, and Perelli.
Claims 15—17 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Leeds, Luedecke, and Barr.
ANALYSIS
The rejection of claims 1—3, 5—8, 10, and 11 as
unpatentable over Leeds and Luedecke
Appellants argue all the claims (i.e., claims 1—3, 5—8, 10, and 11)
together. Br. 5—10. We select claim 1 for review with the remaining claims
(i.e., claims 2, 3, 5—8, 10, and 11) standing or falling with claim 1. See 37
C.F.R. §41.37(c)(l)(iv).
The Examiner primarily relies on Leeds for disclosing the claimed
base, lid, neck, and head, and further, the neck being “adapted for one-way
connection with the lid” and also with the head. Final Act. 3. However, the
Examiner acknowledges (a) that “Leeds fails to teach wherein the base
includes a lug and the lid includes a corresponding lug” and (b) that Leeds
fails to teach that the neck connections with the head and lid “are adapted to
be connected together via a snap-fit connection” as claimed. Final Act. 3.
The Examiner relies on Luedecke for disclosing mating lugs stating
that it would have been obvious “to have manufactured the receptacle of
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Application 12/938,152
Leeds with lugs, as taught by Luedecke, in order to create an air tight seal
between the base and the lid.”1 Final Act. 3; see also Luedecke 7:38-40.
The Examiner also relies on Luedecke for further teaching “that it is
known in the art to manufacture a receptacle for spent smoking material
wherein components of the receptacle can be connected [] by threads or snap
fitting.” Final Act. 4 {referencing Luedecke 7:40-45). The Examiner
explains, “such a modification would be the use of a known technique on a
known device to obtain a predictable result.” Final Act. 4.
Appellants initially contend that the cited combination fails to teach or
disclose “a neck adapted for one-way connection with the lid” and also with
the head. Br. 6. Appellants’ Specification does not expressly define the
claim term “one-way connection,” but Appellants’ Specification provides
guidance as to its meaning. For example, Appellants’ Specification states,
“the domed lid, the neck, and the head can include one-way connecting
members such that the connecting members resist disconnection once
connected together.”2 Spec. 110 (emphasis added); see also Ans. 8.
In view of the above, we agree with the Examiner’s understanding
“that the recitation of a one-way connection does not preclude that
connection from being releasable,” “[i]t only means that the components are
1 The Examiner explains, “such a modification would be a simple
substitution of one known element for another to obtain a predictable result.”
Final Act. 3.
2 Elsewhere Appellants’ Specification describes a one-way connection as (1)
“members that are adapted to resist disengagement once the mating
connecting members are engaged;” (2) a “connection that resists removal of
the pieces once they are connected;” (3) “such that the head and neck cannot
be easily disassembled;” and, (4) “the modular components are not readily
disassembled once assembled.” Spec. Tflf 9, 88, 97, 104.
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Appeal 2015-006241
Application 12/938,152
connected together with some resistance to their disconnection.” Ans. 8. In
other words, “‘[o]ne-way’ does not mean that a connection is permanent.”
Ans. 9.
As noted above, the Examiner relies on Leeds for disclosing a “one­
way connection” between the neck and each of the lid and the head. Final
Act. 3. Leeds’ disclosed method of securement is via threads (see Leeds
6:8—15), and Appellants are not persuasive that such a manner of securement
(i.e., threaded) falls outside the scope of the claim term “one-way
connection” as this term is understood. See Br. 7—8; see also Ans. 8.
However, claim 1 also recites that such connection be “a snap-fit
connection” and the Examiner acknowledges that Leeds fails to disclose that
particular type of “one-way connection.” Final Act. 3. As expressed by the
Examiner, Luedecke is relied on for teaching a like smoking receptacle
“wherein components of the receptacle can be connected” “by threads or
snap-fitting.” Final Act. 4; see also Ans. 9.
Luedecke, indeed, teaches that the interconnection of components of a
smoking receptacle can be made “with a snap fitting, or threaded, or
frictional engagement-type fitting to lock” the components “together in a
secure, substantially airtight arrangement.” Luedecke 7:42-46. Luedecke
further teaches that when disassembly is desired, such can be accomplished
by unscrewing or “by simply applying enough force to dislodge” the
components from their “frictional engagement.” Luedecke 8:19—23; see
also Br. 9 (replicating this cited portion of Luedecke). Accordingly, despite
Appellants’ contentions to the contrary,3 we are not persuaded the Examiner
3 Appellants contend that Luedecke fails to disclose a one-way connection
between a neck and a lid and a head. Br. 9. However, the Examiner relies
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Application 12/938,152
erred in stating that it would have been obvious “to have manufactured the
modified receptacle of Leeds with snap-fit connections ... as taught by
Luedecke, since such a modification would be the use of a known technique
on a known device to obtain a predictable result.” Final Act. 4; see also
Ans. 10 (“Luedecke teaches that the different types of connection structures
are interchangeable”).
Appellants also contend that the Examiner failed to provide “a
credible reason” for the stated modification. Br. 9. However, Appellants do
not explain why the reasons relied upon (i.e., “to create an air tight seal,”
“simple substitution,” and using “a known technique on a known device to
obtain a predictable result”) are faulty or were misapplied by the Examiner.
Final Act. 3^4; see also Ans. 10 (“the different types of connection
structures . . . can be used to create air tight seals”).
Accordingly, based on the record presented, we are not persuaded the
Examiner erred in rejecting claims 1—3, 5—8, 10, and 11 as being obvious
over Leeds and Luedecke.
on Leeds for disclosing a “one-way connection” between these various
components. Final Act. 3. Luedecke is relied on for teaching that it is
known that smoking receptacle components can be connected by “snap­
fitting.” Final Act. 4. Appellants also allege that Luedecke employs “a
releasable connection, and not a one-way connection” (Br. 9), but this
contention is not persuasive for the reasons previously indicated.
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Appeal 2015-006241
Application 12/938,152
The rejection of (a) claims 4 and 18 as unpatentable over Leeds, Luedecke,
and Intardonato; (b) claim 9 as unpatentable over Leeds, Luedecke, and
Perelli; and, (c) claims 15—17 as unpatentable over Leeds, Luedecke, and
Barr
For each of these rejections, Appellants do not present separate
arguments regarding these dependent claims, but instead contend that the
additionally cited art (i.e., Intardonato, Perelli, and Barr) “fails to overcome
the deficiencies in the other applied references” (i.e., Leeds and Luedecke).
Br. 10—11. Appellants’ contentions are not persuasive of Examiner error.
We sustain the Examiner’s rejections of claims 4, 9, and 15—18.
DECISION
The Examiner’s rejections of claims 1—11 and 15—18 are AFFIRMED.
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)(l)(iv).
AFFIRMED
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