Ex Parte Deans

Board of Patent Appeals and Interferences

Mar 16, 2012

12256393 (B.P.A.I. Mar. 16, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DAVID DEANS
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Appeal 2012-001335
Application 12/256,393
Technology Center 3700
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Before: JENNIFER D. BAHR, WILLIAM V. SAINDON, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2012-001335
Application 12/256,393
2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1, 2, and 4-17. We have jurisdiction under 35
U.S.C. § 6(b). We REVERSE.
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A powder dispensing container comprising
a separator isolating a powder storage chamber from a
powder dispensing chamber;
a lid hingedly coupled to the powder dispensing chamber
and configured to have an opened position and a closed
position; and
a metering valve supported by the separator and coupled to
the lid such that the valve opens when the lid is moved from an
opened position to a closed position and closes when the lid is
moved from a closed position to an opened position,
wherein the metering valve is configured to allow a
controlled amount of powder to pass from the powder storage
chamber to the powder dispensing chamber when the lid is
moved from the closed position to the opened position.

References
The Examiner relies upon the following prior art references:
Allen
Majewski
Glynn
US 1,694,727
US 2,581,267
US 5,078,305
Dec. 11, 1928
Jan. 1, 1952
Jan. 7, 1992

Rejections
I. Claims 1, 2, 4-11, and 13-17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Allen and Glynn.
II. Claim 12 is rejected under § 103(a) as unpatentable over Allen,
Glynn, and Majewski.
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III. Claims 1, 2, 4-12, and 14-17 are provisionally rejected under the
doctrine of nonstatutory obviousness-type double patenting in view of
claims 1-12, 27-29, and 31 of copending application 12/419,237.

OPINION
The Examiner found that Allen teaches the powder-dispensing
container of independent claim 1 except for the valve 23 coupled to the lid
12 such that the valve opens when the lid is closed and closes when the lid is
opened. Ans. 6-7. The Examiner found that Glynn teaches a lid 71 coupled
to a metering valve 77, such that the valve opens when the lid is closed, and
vice versa. Ans. 7. The Examiner concluded that it would have been
obvious to have coupled the lid and valve in Allen, “under the teachings of
Glynn” to “repeatedly yield the same volume of material in the dispensing
chamber with each actuation of the valve” and to “automatically output the
metered volume of material with each opening of the lid.” Id. The
Examiner’s proposed combination appears to modify the device of Allen to
include an extended portion of the lid to bear down on the lug 29 of the
spring valve 23 when the lid is closed, holding the spring valve 23 open. See
Ans. 7; see also Glynn, col. 4, ll. 62-68, col. 5, ll. 13-16, 22-26, fig. 3
(describing an extended portion 75 of the lid pushing down on valve stem 99
to push open the valve 77 when the lid is closed).
Appellant argues, in relevant part, that the suggested combination
would not have been obvious because it would “result in a device that
significantly diminishes the user control over the amount of powder
dispensed through the valve and thereby defeat one of the primary objectives
of Allen.” Reply Br. 4-5 (emphasis original). We review the Examiner’s
rejection in light of this argument.
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The Examiner’s first reason to modify the device of Allen is to allow
the device to “repeatedly yield the same volume of material in the
dispensing chamber with each actuation of the valve.” Ans. 7. Yielding
same volume of material with each actuation of the valve has nothing to do
with whether the valve itself is actuated by a person pressing on the valve
(as in Allen) or by a protrusion on the lid pressing on the valve (as in the
Examiner’s proposed combination); the valve is the same and operates under
the same principles either way. Accordingly, the Examiner’s first reason
lacks rational underpinnings because there is no link between the reason for
modification and the proposed modification.
The Examiner’s second reason to modify the device of Allen is to
allow the device to “automatically output the metered volume of material
with each opening of the lid.” Ans. 7. However, by holding the spring valve
open while the lid is closed, free communication between the powder
compartment 17 and the upper compartment (between lid 12 and cap 16)
will allow some powder to accumulate in the upper compartment while the
lid is closed, rendering the total volume of material no longer automatically
metered but subject to the variables of time and motion as powder moves
through the open spring valve while the lid is closed.1 The spring valve is
intended to hold powder in a separate compartment (17) so that when the
case is opened, powder does not spill (because there is no powder in the
upper compartment). Allen, p. 2, ll. 3-6. The Examiner’s proposed
modification, therefore, would tend to allow a variable amount of powder to

1 The device in Allen is meant to be carried in a purse or pocket. Allen, p. 2,
ll. 7-10. The motions encountered by the device would, in our view, tend to
encourage powder transfer between the chambers, resulting in powder
migrating from the powder compartment 17 through the open spring valve
23 while the lid is closed.
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Application 12/256,393
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be present when the case is opened. This powder could then spill or, at the
very least, would be present in the upper compartment such as to render the
amount of powder in the upper compartment after valve actuation variable.
The Examiner does not explain why the proposed modification would be
nevertheless obvious in view of these negative implications of the proposed
modification to Allen.2 Accordingly, the Examiner’s second reason lacks
rational underpinning because the proposed modification would instead
frustrate the proposed reason for modification because it would allow the
user less control over the metered amount of dispensed powder.
The Examiner’s obviousness rejection of claims 1, 2, 4-11, and 13-17
is premised on these reasons lacking rational underpinning. See Ans. 6-11.
The Examiner’s obviousness rejection of claim 12 likewise relies on these
reasons and the Examiner’s proposed further modification in view of
Majewski does not cure this underlying deficiency. See Ans. 11.

DECISION
We reverse the Examiner’s decision regarding the obviousness
rejections of claims 1, 2, and 4-17. We do not reach the Examiner’s
provisional obviousness-type double patenting rejection. See Ex parte
Moncla, 95 USPQ2d 1884, 1885 (BPAI 2010).

2 We acknowledge that a proposed combination may introduce some
negative aspects but still render the claimed subject matter obvious. See,
e.g., Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir.
2000). However, in this case, the Examiner has not expressed how the
benefits of the proposed combination (automatic valve actuation upon lid
opening) would overcome the negatives (uncontrolled powder transfer)
suggested by Appellant such as to still be an obvious modification.
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REVERSED

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