Ex Parte Ehrlich et al

Patent Trial and Appeal Board

Feb 22, 2018

13839945 (P.T.A.B. Feb. 22, 2018)

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.
13/839,945 03/15/2013 Nathan D. Ehrlich HOMR.P0392US/11214875 4040
34018 7590
Greenberg Traurig, LLP
77 W. Wacker Drive
Suite 3100
CHICAGO, IL 60601-1732
02/26/2018 EXAMINER
SMITH, CHAIM A
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
02/26/2018 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):
chiipmail @ gtlaw .com
escobedot@gtlaw.com
j arosikg @ gtlaw .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NATHAN D. EHRLICH and SARAH MOFFAT
Appeal 2017-006222
Application 13/839,945
Technology Center 1700
Before MICHAEL P. COLAIANNI, JEFFREY W. ABRAHAM,
and MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1—7, 13—16, 20, and 23—27 of
Application 13/839,945 under 35 U.S.C. § 103(a) as obvious. Final Act.
(March 25, 2016) 2—8. Appellant1 seeks reversal of these rejections
pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we REVERSE. Additionally, we
enter a NEW GROUND OF REJECTION as to claims 1—4 pursuant to 37
C.F.R. § 41.50(b).
1 The Applicant, Home Depot Product Authority, LLC, is the Appellant.
Home Depot Product Authority, LLC, and The Home Depot, Inc. are
identified as the real parties in interest. Appeal Br. 3.
Appeal 2017-006222
Application 13/839,945
BACKGROUND
The present application generally relates to container assemblies for
holding edible products like cookies, designs for containers, cookies, and
cookie designs. Spec. 11. Such edible products may be shaped to resemble
tools such as hammers, saws, and tape measures. Id. 1 5. Additionally, the
container assembly may include “a sleeve coupled to the handle and
configured to hold a financial transaction card.” Id. 1 6.
Claim 1 is representative of the pending claims and is reproduced
below:
1. A container assembly comprising:
a cylindrical container comprising:
a plastic wall comprising a window and a
remaining wall portion other than the window, the window
being transparent and the remaining wall portion being opaque,
the window being completely bounded by the remaining wall
portion;
a top coupled to the wall, the top comprising a
removable lid; and
a bottom coupled to the wall;
where the window is wider than the window is tall;
where the window has an area, and a majority of
the area of the window is closer to the bottom than to the
removable lid;
where the wall has a diameter, and the window has
a width that is less than the diameter such that a portion of the
remaining wall portion is visible to the left of the window and
another portion of the remaining wall portion is visible to the
right of the window when the container is viewed from a front
position in which the window is centered;
2
Appeal 2017-006222
Application 13/839,945
two sockets coupled to the wall;
a handle coupled to the two sockets such that the
handle may move in the sockets;
a sleeve coupled to the container and configured to
hold a financial transaction card, the sleeve comprising an
open-ended translucent polymer material; and
a card that is not a financial transaction card in the
sleeve.
Appeal Br. 12 (Claims App.).
CITED REFERENCES
The prior art relied upon by the Examiner in rejecting the
claims on appeal:
Kelly et al. US 183,175 Oct. 10, 1876
Whiting US 232,095 Sept. 7, 1880
Schnabel US 803,858 Nov. 7, 1905
Hutchinson et al. US 1,046,790 Dec. 10, 1912
Dister US 1,309,615 July 15, 1919
Phillips US 1,573,445 Feb. 16, 1926
Sparks US 2,744,622 May 8, 1956
Seufert US 5,031,826 July 16, 1991
Stone US 5,458,235 Oct. 17, 1995
3
Appeal 2017-006222
Application 13/839,945
Annetts US 2005/0167313 A1 Aug. 4, 2005
Tool Cookies 2008 https://www.flickr.com/photos/t-
woods/2721850039/in/photostream/
Aug. 1, 2008
LilyBean http://lilybeanpaperie.typepad.co
m/lilybeans_paperie/2008/10/ind
ex.html
Oct. 17, 2008
Crumbs & Morsels http://crumbsmorsels.blogspot.
com/2008/12/here-are-lots-of-
ideas-to-fill-paint.html
Dec. 29, 2008
Tool Cookies 2009 https://www.flickr.com/photos/
2291063 6@N02/3 618806243/in/
photostream/
Jun. 12, 2009
NPeak http://www.northpeak.com.tw 20102
Cary https://web.archive.org/web/201003
26043920/http ://www. thecarycompa
ny.com/containers/plasticpaintcans.
html
Mar. 26, 2010
Father’s Day DIY http://www.bargainhoot.com/2010
/06/03/ fathers-day-diy-do wnload/
June 3, 2010
BIB https://beeinourbonnet.com
/? s=basics+of+sugar
Mar. 23,2011
Painttalk http ://www.painttalk. com/ f2/sher
win-williams-duration-cookie-jar-
paint-can-16413/
Nov. 13,2011
2 This date is disputed by Appellant.
4
Appeal 2017-006222
Application 13/839,945
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1—4 are rejected under 35 U.S.C. § 103(a) as obvious over
Painttalk in view of Annetts as evidenced by Seufert, Kelly,
Whiting, Schnabel, Hutchinson, Dister, Phillips, Sparks, Stone, and
BIB in view of Father’s Day DIY in view of LilyBean as
evidenced by NPeak and Crumbs & Morsels. Final Act. 2—5.
2. Claims 5—7, 14, 15, 20, 23, and 27 are rejected under 35 U.S.C. §
103(a) as obvious over Painttalk in view of Annetts as evidenced
by Seufert, Kelly, Whiting, Schnabel, Hutchinson, Dister, Phillips,
Sparks, Stone, and BIB in view of Father’s Day DIY in view of
LilyBean as evidenced by NPeak and Crumbs & Morsels as further
evidenced by Tool Cookies 2008 and Tool Cookies 2009. Id. at 5—
7.
3. Claims 13, 16, and 24—26 are rejected under 35 U.S.C. § 103(a) as
obvious over Painttalk in view of Annetts as evidenced by Seufert,
Kelly, Whiting, Schnabel, Hutchinson, Dister, Phillips, Sparks,
Stone, and BIB in view of Father’s Day DIY in view of LilyBean
as evidenced by NPeak and Crumbs & Morsels in view of Cary.
Id. at 7—8.
5
Appeal 2017-006222
Application 13/839,945
DISCUSSION
Rejection 1. The Examiner rejected claims 1—4 over multiple
references including NPeak. Id. at 4—5. Appellant argues that NPeak has
not been shown to be prior art. Appeal Br. 8. The NPeak reference includes
the language “Copyright 2008-2010.” NPeak 2. Appellant argues that such
copyright notice is generic to the entire website www.northpeak.com.tw.
Appeal Br. 8. Appellant points out that NPeak includes accessories for the
iPhone 6, which Appellant indicates was not sold until “late 2014.” Reply 2.
The NPeak page describing the iPhone 6 accessory bears the same copyright
notice as the plastic sleeve description relied upon by the Examiner.
Compare Appeal Br. Ex. A at 2 with NPeak at 2.
The Examiner determines that use of copyright notices to establish
prior art dates is a well-established practice. Answer 2. Accordingly, the
Examiner does not find Appellant’s argument persuasive. Id.
The pre-AIA version of section 103 provides, in part, that a patent will
not be granted “if the differences between the subject matter sought to be
patented and the prior art are such that the subject matter as a whole would
have been obvious at the time the invention was made.” 35 U.S.C. § 103(a)
(2004). The Examiner has the burden of establishing that the cited
references are prior art to the subject matter sought to be patented. See In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Here, Appellant has persuasively argued that the copyright notice
displayed by the NPeak website is generic to the website as a whole.
Appellant has further persuasively argued that certain products, perhaps
including the plastic sleeves cited by the Examiner, described by the NPeak
6
Appeal 2017-006222
Application 13/839,945
website were added subsequent to 2010. Accordingly, Appellant has shown
error in regard to the Examiner’s reliance on NPeak.
As a second basis of appeal, Appellant argues that NPeak is not
analogous art to the instant claims. Appeal Br. 8—9. As we have found
Appellant’s argument regarding the prior art status of the NPeak reference
persuasive, we need not determine whether it is analogous art to the present
claims.
Rejection 2. The Examiner rejected claims 5—7, 14, 15, 20, 23, and
27 as obvious over the same references cited in Rejection 1 and,
additionally, Tool Cookies 2008 and Tool Cookies 2009. Final Act. 5—7.
Certain cited references pertain to containers while others pertain to
the shape of cookies found within the containers. Appeal Br. 9—10.
Appellant argues that the Final Rejection provides no reason for the tool­
shaped cookie references to be combined with the container references. Id.
at 10.
Painttalk and Lilybean teach to provide cookies in a paint can style
container. Painttalk at 2; Lilybean at 2. Painttalk further teaches to provide
“chocolate paint brushes in a paint can” {id. at 7). It was additionally known
to make cookies in the shape of common tools. See Tool Cookies 2008
(depicting cookies shaped as a hammer, wrench, screwdriver, and pliers).
“The combination of familiar elements according to known methods is likely
to be obvious when it does no more than yield predictable results.” KSR Int'l
Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Here, both tool-shaped
cookies and paint can-style containers for food items (including cookies)
were familiar elements. The combination of such familiar elements would
have been obvious to a person of ordinary skill in the art.
7
Appeal 2017-006222
Application 13/839,945
Accordingly, Appellant has failed to show error in regard to the
Examiner’s proposed hypothetical combination of the container references
and the tool-shaped cookie references.
Appellant additionally relies upon the arguments it put forward
regarding the NPeak reference. Appeal Br. 8 (“Because the Office Action
does not adequately demonstrate that NPeak is prior art, all rejections that
include NPeak — that is, all rejections in the Office Action — should be
reversed.”). As we have found such arguments to be persuasive, and the
additional references do not cure the stated deficiencies, we reverse the
rejection of claims 5—7, 14, 15, 20, 23, and 27.
Rejection 3. The Examiner rejected claims 13, 16, and 24—26 as
obvious over the same references cited in Rejection 1 and, additionally,
Cary. Final Act. 7—8. In seeking review of the rejection of claims 13, 16,
and 24—26, Appellant relies upon the same arguments set forth with regard
to claims 1—4 regarding NPeak. Appeal Br. 8. As we have found such
arguments to be persuasive, and the additional references do not cure the
stated deficiencies, we reverse the rejection of claims 13, 16, and 24—26.
New Ground of Rejection Under 37 C.F.R. § 41.50(b)
Claims 1—4
As discussed above, we have determined the rejection of claims 1—4
to be erroneous as to the prior art status of NPeak. The Examiner relied
upon NPeak as teaching that it was conventional in the art to make sleeves
comprising an open ended translucent material capable of holding a financial
transaction (or other) card and attaching the sleeve to a container by a tie
through a hole in the sleeve. Final Act. 4—5. These same attributes are
8
Appeal 2017-006222
Application 13/839,945
taught by Rossing (US 8,172,270 B2, published Jul. 7, 2011). Rossing
teaches a “see-through envelope.” Rossing 2:12—13. Rossing further
teaches “[a] first pocket 16 has an opening adapted to slidably receive an
identification card .... The pocket 16 includes an open top portion.” Id. at
3:19-22. Rossing additionally teaches “a through hole surrounded by a
circular edge 14 and a linking means, such as a tether, lanyard, rope, chain
or other similar and well understood mechanism.” Id. at 3:44-46. Rossing
is prior art to the present application.
The new ground of rejection applies Rossing in the same manner that
the Examiner applied NPeak. We adopt the remainder of the Examiner’s
rejection with respect to the other cited references. Thus, we determine that
claims 1—4 would have been obvious to one of ordinary skill in the art in
view of the cited references (other than NPeak) in view of Rossing.
CONCLUSION
We reverse the Examiner’s rejections of claims 1—7, 13—16, 20, and
23—27. We enter a new ground of rejection for claims 1—4. Although we
have not entered a new ground of rejection for every claim under our
discretionary authority, we emphasize that our decision does not mean the
remaining claims are patentable. Rather, we merely leave the patentability
determination of these claims to the Examiner. See MPEP § 1213.02.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).
9
Appeal 2017-006222
Application 13/839,945
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) which provides that "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.”
Rule 37 C.F.R. § 41.50(b) also provides that the Appellant, WITF1IN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
REVERSED: 37 C.F.R, $ 41.50(b)
10