Ex Parte Geberzahn et al

Board of Patent Appeals and Interferences

Jul 30, 2012

11451843 (B.P.A.I. Jul. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte RAINER GEBERZAHN and HANS GEORG MUHLHAUSEN
____________________

Appeal 2010-006200
Application 11/451,843
Technology Center 3700
____________________

Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
BENJAMIN D.M. WOOD, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-006200
Application 11/451,843

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1-15. We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The invention is directed to a supply container including at least two
compartments, each having a separate discharge opening, and a cap covering
the two discharge openings. (Spec. para. [0002]). Independent claim 1,
reproduced below, is representative of the appealed subject matter.
1. A supply container comprising
a receiving container having at least two
compartments and a dispensing opening for each
compartment, and a single sealing cap,
said single sealing cap being formed for
simultaneously sealing said two openings, each of
said openings being formed by a lip and,
said single sealing cap having a sealing state
in which it closes said openings, and means to
releasably engage the receiving container and
maintain the cap in sealing engagement with said
openings,
said single sealing cap having separate
dedicated sealing areas associated with separate
said openings, each said sealing area adapted in the
sealing state to abut its associated opening, and
positioning means on said receiving
container cooperating with said single sealing cap
to precisely determine a sealing position for the
cap in which the sealing areas bear on the lips with
a small axial pressing force.

Appeal 2010-006200
Application 11/451,843

3
THE REJECTIONS
The following rejections are before us for review:
1. The rejection of claims 1-9, 12, and 15 under 35 U.S.C.
§ 103(a) as unpatentable over Geisinger (US 6,685,041 B1, issued Feb. 3,
2004) and Leoncavallo (US 5,328,058, issued Jul. 12, 1994).
2. The rejection of claims 10, 11, 13, and 14 under 35 U.S.C.
§ 103(a) as unpatentable over Geisinger, Leoncavallo, and Hins (US
5,743,443, issued Apr. 28, 1998).
ANALYSIS
Claims 1-9, 12, and 15 - Geisinger and Leoncavallo
Appellants argue claims 1-9, 12, and 15 as a group. (App. Br. 3-5).
We select claim 1 as representative of the grouping. Claims 2-9, 12, and 15
stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Claim 1 is directed to a supply container comprising, inter alia,
"positioning means on said receiving container cooperating with said single
sealing cap to precisely determine a sealing position for the cap in which the
sealing areas bear on the lips with a small axial pressing force." This
recitation of the term "means" creates a rebuttable presumption that means-
plus-function construction in accordance with 35 U.S.C. 112, sixth
paragraph applies for the "positioning means." See TriMed, Inc. v. Stryker
Corp., 514 F.3d 1256, 1259 (Fed. Cir. 2008). "Means-plus-function
claiming applies only to purely functional limitations that do not provide the
structure that performs the recited function." See Phillips v. AWH Corp.,
415 F.3d 1303, 1311 (Fed. Cir. 2005). Here, claim 1 does not specify any
structure that performs the recited function of "cooperating with said single
Appeal 2010-006200
Application 11/451,843

4
sealing cap to precisely determine a sealing position for the cap in which the
sealing areas bear on the lips with a small axial pressing force."
Accordingly, we apply 35 U.S.C. § 112, sixth paragraph, construction.
The Examiner found Geisinger discloses a supply container
comprising a receiving container (12, 14) with two compartments (23, 24), a
dispensing opening (53, 54) for each compartment formed by a lip, and a
sealing cap (38). (Ans. 3, citing Figs. 1, 2). The Examiner found
Geisinger's sealing cap includes separate, dedicated sealing areas (plugs 56,
58) that are associated with the separate openings and simultaneously seal
the openings in a sealing state and releasably engage the receiving container.
(Id.). The Examiner found Geisinger does not disclose that each sealing area
is adapted to abut its associated opening, or positioning means on the
receiving container, as claimed. (Id.).
The Examiner relied on Leoncavallo for disclosure of a supply
container (32, 34) including a single sealing cap (36) having a sealing area
(184) adapted in the sealing state to abut its opening (citing Fig. 12),
positioning means (132) on the cap to releasably engage the receiving
container and maintain the cap in sealing engagement, and positioning
means (130) on the receiving container cooperating with the positioning
means (132) at (152) to precisely determine a sealing position for the cap in
which the sealing area bears on the lip of the opening with a small axial
pressing force. (Ans. 4; see also Leoncavallo Fig. 4). The Examiner
concluded that it would have been obvious to one of ordinary skill in the art
to replace each of Geisinger's sealing areas with Leoncavallo's seal structure
Appeal 2010-006200
Application 11/451,843

5
and to include its positioning means "to create a better seal that does not rely
solely on a friction fit." (Ans. 4).
We have considered Appellants' arguments in the Briefs, but do not
find them persuasive for the reasons discussed infra. Appellants contend
that Leoncavallo does not teach or suggest that "locking cap [sic. element]
130 [cooperates] with a single sealing cap to precisely determine a sealing
position for the cap in which the sealing areas bear on the lips with a small
axial pressing force." (App. Br. 4). Appellants contend that in Leoncavallo,
"there is no sealing of the cap with the container," but that there is a gap
between the cap 36 and closure 34. (Id., citing Figs. 2, 4, 8). This
contention that Leoncavallo lacks sealing because there is a "gap" is not
convincing because the claimed sealing areas are recited as being located
elsewhere, i.e., the sealing areas bear on the lips of the openings. Claim 1
recites "to precisely determine a sealing position for the cap in which the
sealing areas bear on the lips with a small axial pressing force" (emphasis
added), not that the positioning means provides the function of sealing the
cap with the container. Moreover, Figure 12 of Leoncavallo shows that the
sealing area (projection 184) on cap 36 bears on the lip (upper end of
opening 72) of the closure in the sealing position.
Appellants also contend that Leoncavallo's design allows the cap and
the sealing position to shift laterally, "thereby risking that the sealing areas
are not maintained in sealing engagement with the openings" (App. Br. 4-5),
but that "the positioning means of the present container avoids this lateral
shift, thereby ensuring a secure seal" (Id. at 5). To the extent that Appellants
may be arguing that claim 1 precludes such lateral shifting that they contend
Appeal 2010-006200
Application 11/451,843

6
occurs in Leoncavallo's structure, the Examiner correctly determined that the
claim does not recite that the positioning means prevents lateral movement
of the cap with respect to the container. (Ans. 8). Features that do not
appear in a claim cannot be relied on for patentability. In re Self, 671 F.2d
1344, 1348 (CCPA 1982).
Appellants further contend that "the present invention is with a
positioning means that cooperates with the cap to precisely determine a
sealing position (i.e., abutting edges coming to rest on each other, or no
gap." (Reply Br. 2, citing Spec. para. [0025]). Specification paragraph
[0025] states, "[i]n the exemplary embodiment that is represented and
preferred, achieving the sealing position is indicated or ensured by abutting
edges coming to rest on each other as indicated at 7." Claim 2 depends from
claim 1 and recites "the positioning means comprises abutting edges on the
cap and the receiving container." This claimed structure of the positioning
means in claim 2 appears to be described at Specification paragraph [0025].
To the extent that Appellants may be contending that the "positioning
means" in claim 1 should be construed as having the specific structure
recited in claim 2, we decline to construe claim 1 this narrowly. We do not
construe claim 1 this way because a means-plus-function clause is by
definition broader than a dependent claim that recites features of the
structure that perform the claimed function and which are described in the
Specification. The means-plus-function clause is construed to also cover
equivalents of the structure. See Pressure Products Medical Supplies, Inc.
Greatbatch Ltd., 599 F.3d 1308, 1317-18 (Fed. Cir. 2010). Appellants have
not provided any persuasive argument why the "positioning means" recited
Appeal 2010-006200
Application 11/451,843

7
in claim 1 should be construed to distinguish over the structure disclosed by
Leoncavallo that the Examiner determined corresponds to this "means." In
view of the above, we sustain the rejection of claim 1, and claims 2-9, 12,
and 15.
Claims 10, 11, 13, and 14 - Geisinger, Leoncavallo, and Hins
Claims 10, 11, 13, and 14 depend from claim 1. Appellants merely
state limitations of these dependent claims, and contend that Hins does not
teach or suggest the claimed "positioning means" and, accordingly, does not
cure the alleged deficiencies of Geisinger and Leoncavallo. However, for
reasons discussed supra, we find no deficiencies in the rejection of claim 1
based on Geisinger and Leoncavallo. Thus, we also sustain the rejection of
claims 10, 11, 13, and 14 for similar reasons.
DECISION
The rejection of claims 1-15 is 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)(1)(iv).
AFFIRMED

mls