Ex Parte Hall et al

Board of Patent Appeals and Interferences

Mar 27, 2012

12504298 (B.P.A.I. Mar. 27, 2012)

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.
12/504,298 07/16/2009 Charles E. Hall 54024-84081 9843
16464 7590 03/28/2012
Evans & Dixon, LLC
Metropolitan Square
211 N. Broadway, Suite 2500
St. Louis, MO 63102
EXAMINER
SMALLEY, JAMES N
ART UNIT PAPER NUMBER
3781
MAIL DATE DELIVERY MODE
03/28/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte CHARLES E. HALL, WILLIAM A. HALL,
STEVEN C. HALL, and MICHAEL J. REDDY
__________

Appeal 2011-012631
Application 12/504,298
Technology Center 3700
__________

Before DEMETRA J. MILLS, ERIC GRIMES, and
FRANCISCO C. PRATS, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to a lid that is
removably attachable to a plurality of containers of different sizes. The
Examiner entered rejections for anticipation and obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.

STATEMENT OF THE CASE
This application is a continuation of serial number 10/418,925, which
was twice before this Board, claiming similar subject matter (see App. Br.
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Application 12/504,298

2
2).
1
In this case, claims 11, 13, 19, 20, 22-28, 30, 31, 34, and 35 stand
rejected and appealed (id. at 3). Claim 11 illustrates the appealed subject
matter:
11) A lid that is removeably attachable to a plurality of
different containers of different sizes to cover over rectangular top
openings of the plurality of different containers where the top
openings have different length dimensions, the lid comprising:
a rectangular top surface and an opposite rectangular
bottom surface, the bottom surface having a bottom surface area that
is dimensioned to cover over the openings of the plurality of different
containers when the lid is removeably attached to each of the plurality
of different containers;
a first protrusion on the lid bottom surface;
a plurality of second protrusions on the lid bottom
surface, the plurality of second protrusions being spaced at different
distance dimensions from the first protrusion and at least one second
protrusion of the plurality of second protrusions having a distance
dimension from the first protrusion that corresponds to the length
dimension of a top opening of at least one container of the plurality of
different containers whereby the lid is attachable to the at least one
container by inserting the first protrusion and the at least one second
protrusion into the at least one container top opening, and at least one
other second protrusion of the plurality of second protrusions having a
distance dimension from the first protrusion that corresponds to the
length dimension of a top opening of at least one other container of
the plurality of different containers whereby the lid is attachable to the
at least one other container by inserting the first protrusion and the at
least one other second protrusion into the at least one other container
top opening; and,
an opening through the lid top surface and bottom
surface, the opening being positioned between the first protrusion and
the plurality of second protrusions.

The following rejections are before us for review:

1
Appeal Brief entered April 4, 2011.
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Application 12/504,298

3
(1) Claims 11, 13, 19, 20, 22, 23, 25-28, 30, 31, 34, and 35, under 35
U.S.C. § 102(b) as anticipated by Milligan
2
(Ans. 4-6);
3
and
(2) Claim 24, under 35 U.S.C. § 103(a) as obvious over Milligan
(Ans. 6-7).
ANTICIPATION
Appellants argue that the Examiner erred in finding that Milligan
anticipates claim 11 because, rather than describing a lid as recited in claim
11, Milligan “discloses a device for holding soap” (App. Br. 14). Thus,
Appellants argue, Milligan‟s description of its soap holder as “allow[ing]
water to drain away from the soap and enable the soap to dry does not
identically show the soap holder as being capable of being used as a lid of a
container and actually teaches away from the soap holder as being used as a
lid for a container” (id. at 15; see also Reply Br. 2-3).
4

Similarly, Appellants urge, Milligan does not disclose that its soap
holder is “removably attachable to anything” as claim 11 also requires, but
instead “actually teaches away from the soap holder being removably
attachable to a container” (App. Br. 16). Further, Appellants urge, the
Examiner has not shown that Milligan‟s soap dish has openings between the
first and second protrusions, as claims 11, 28, and 35 further require (id. at
16-17; see also Reply Br. 4-5).

2
U.S. Patent No. 539,698 (issued May 21, 1895).
3
While the Examiner‟s initial list of claims subject to the anticipation
rejection does not include claims 26 and 27 (Ans. 4), the Examiner
ultimately includes claims 26 and 27 among the rejected claims (id. at 5; see
also App. Br. 12, 13 (claims 26 and 27 among appealed claims rejected
under § 102(b))).
4
The Reply Brief does not have page numbers. We therefore cite to it as if
the first page was page 1, and the remaining pages numbered consecutively.
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Application 12/504,298

4
Appellants‟ arguments do not persuade us, however, that the
Examiner erred in finding that Milligan anticipates claims 11, 28, and 35.
It is well settled that “[t]o anticipate a claim, a prior art reference must
disclose every limitation of the claimed invention, either explicitly or
inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). It is
also “well settled that the recitation of a new intended use for an old product
does not make a claim to that old product patentable.” Id.
Thus, functional limitations directed to intended uses of a claimed
product do not serve to distinguish the product from prior art products
inherently capable of performing the claimed function. See id. at 1478-79
(holding that a prior art apparatus meeting all claimed structural limitations
was anticipatory because it was inherently capable of performing the
claimed function). Finally, “the patentability of apparatus or composition
claims depends on the claimed structure, not on the use or purpose of that
structure.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d
801, 809 (Fed. Cir. 2002).
Moreover, as stated in In re Best, 562 F.2d 1252, 1254-1255 (CCPA
1977) (quoting In re Swinehart, 439 F.2d 210, 212-13 (CCPA 1971)):
[W]here the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.

Attached to the Non-Final Rejection from which this appeal was
taken, the Examiner supplied an annotated version of Milligan‟s Figures 6
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and 8 reproduced below (see “Non Patent Literature” (entered February 17,
2011)):

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The Examiner‟s annotation of Milligan‟s Figure 6 shows a plan view
of the rectangular soap holder with protrusions B´, as well as apertures a´
between the protrusions, and also shows a dashed line entered by the
Examiner to designate how the regularly spaced protrusions B´ would align
and fit with differently-sized rectangular container openings. Thus, the
Examiner has not only advanced evidence that Milligan‟s device has the
protrusions and openings required by claims 11, 28, and 35, but has also
advanced evidence that Milligan‟s device has a structure that would allow it
to be attached to a plurality of differently-sized rectangular container
openings, as those claims also require.
While we acknowledge that Milligan‟s device is described as a soap
holder rather than a lid, Appellants have nonetheless failed to advance any
specific evidence suggesting that the Examiner erred in finding that
Milligan‟s soap would be capable of attaching to, and covering, more than
one differently-sized rectangular container opening. Thus, because the
Examiner has advanced a reasonable evidentiary basis for finding that
Milligan‟s device has all the structural features required of claims 11, 28,
and 35, and because Appellants have advanced no specific evidence
undermining the reasonableness of that finding, we affirm the Examiner‟s
anticipation rejection as to claims 11, 28, and 35.
As they recite no features which were argued separately, claims 13,
22, 23, 27, and 34 fall with claims 11, 28, and 35. See 37 C.F.R. §
41.37(c)(1)(vii).
5

5
While Appellants argue that claim 22 recites the wall feature discussed
below (App. Br. 19), neither claim 22 nor its independent claim 23 recites
the wall feature (see id. at 25-26).
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Appellants separately argue that the Examiner erred in finding that
Milligan‟s protrusions are encompassed by the claimed features requiring
the first and/or second protrusions to be elongate walls (App. Br. 17-19). In
particular, Appellants urge, the Examiner‟s finding in this regard is
unreasonable, given the common understanding of the term “wall” (see id. at
18-19).
The Examiner responds that each of Milligan‟s protrusions can be
considered a wall “in the sense it has an exterior surface. Examiner again
asserts this is a very broad but not unreasonable interpretation, because the
type of definition for wall which Appellant wants is equally too narrow,
without the structure being explicitly claimed” (Ans. 8). Specifically, the
Examiner argues, “[e]ven according to Appellant‟s definition of a wall being
„an upright construction having a length much greater than the thickness,‟
Examiner asserts that the prong taught by Milligan has an axial length
greater than its thickness/diameter, and thus meets Appellant‟s own
definition” (id.).
We conclude that Appellants have the better position here.
It is well settled that, during examination, the PTO must interpret
terms in a claim using “the broadest reasonable meaning of the words in
their ordinary usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of definitions or
otherwise that may be afforded by the written description contained in the
applicant‟s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997).
Each of claims 19 and 25 requires the first protrusion to be “an
elongate first wall” (App. Br. 25, 27). Each of claims 20 and 26 requires the
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second protrusions to be “a plurality of elongate [second] walls” (id. at 25,
28).
As seen in Appellants‟ Figures 3 and 4, in the context of Appellants‟
invention, the protruding walls are substantially planar structures shown as
elements 82 and 112, among other walls. In contrast, Milligan‟s protruding
studs B are shown as being substantially cylindrical or frustoconical in
shape, with a substantially circular cross section (see Milligan, Figures 1, 2,
4, and 6).
We are not persuaded that an ordinary artisan viewing Appellants‟
claims in light of the Specification would have considered it reasonable to
interpret the claim term “elongate wall” as encompassing frustoconical or
cylindrical structures having a substantially circular cross section.
Accordingly, as we are not persuaded that the Examiner‟s anticipation
finding as to claims 19, 20, 25, and 26 is based on a claim interpretation that
an ordinary artisan would consider reasonable in light of the Specification,
we reverse the Examiner‟s rejection of those claims over Milligan.
Appellants also argue that the Examiner erred in finding that Milligan
has a channel formed in the lid bottom surface as required by claim 30 (App.
Br. 20). The Examiner responds:
Regarding a channel, Examiner asserts that a channel is
formed by the inner surface of the innermost wall (a), the
bottom surface of the lid, and one [sic] the asserted first
protrusion. While the surface of the first protrusion does not
match the contour of the wall (a), any point on the bottom
surface (if, for purposes of showing the core structure, the
remaining prongs/projections are removed except for the
asserted first protrusion) is bound on one side by the wall
surface, and on the other side by the surface of the first
protrusion. A channel is formed by a radially-outer wall
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surface, a bottom surface, and a radially-inner surface, and
asserts that the inner surface of wall (a), the bottom surface of
the holder main body portion, and the exterior surface of the
first projection combine to form the structure which defines a
channel. Examiner notes in the upper portion of the
annotated diagram provided herewith, two widths of the
channel are shown - - a very narrow one on the left, formed
between (a) and first protrusion (B), and then a larger
second width (which holds the plurality of walls) between B
and the far wall (a). Appellant‟s own channel is constructed
in this same manner of radially outer, bottom, and radially inner
surfaces at any given channel cross-section.

(Ans. 9.)
Claim 30 recites “[t]he lid of Claim 23, further comprising: a channel
formed in the lid bottom surface, the channel being formed in a loop around
the lid bottom surface.”
As Appellants point out, and the Examiner does not dispute, a channel
can be defined as a “long gutter, groove, or furrow” (App. Br. 20). As is
evident from viewing Figure 6 of Milligan, there appears to be a groove
outside the planar surface the Examiner finds as corresponding to the lid
bottom surface, between elements 7 and 8. We are not persuaded, however,
that an ordinary artisan would reasonably interpret the gap between the
protrusions B´ and the outer rim “a” of Milligan‟s the soap holder as being a
channel, gutter, groove, or furrow formed in a loop around the lid bottom
surface, as the Examiner posits.
It may be true, as the Examiner suggests, that Appellants‟ channel 102
is bound on one side by a plurality of the edges of protruding walls (see, e.g.
Appellants‟ Figure 4). Nonetheless, because of the relatively close spacing
between the protruding walls, a visible furrow 102 is formed between the
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outer wall and the protrusions. Moreover, given the relatively spread apart
spacing between Milligan‟s protrusions and outer wall (Milligan, Figure 6),
we do not agree with the Examiner that an ordinary artisan would have
considered it reasonable to interpret Milligan‟s soap holder as having a
channel formed in a loop around the lid bottom surface, in the manner
required by claim 30. We therefore reverse the Examiner‟s rejection of
claim 30, and its dependent claim 31, as anticipated by Milligan.
OBVIOUSNESS
In rejecting claim 24 as obvious over Milligan, the Examiner found
that the protrusions in the device shown in Figure 6 of Milligan were not
centered relative to the lid width (Ans. 6). The Examiner noted, however,
that in the embodiments shown in Figures 2 and 4, the protrusions were in a
centered position, and reasoned that an ordinary artisan would therefore have
considered it obvious to place them so as to be centered relative to the width
dimension (id.).
Appellants again argue that Milligan “discloses a device for holding
soap and does not disclose a lid for a container. The soap holder of the
Milligan reference is not analogous to the lid of the invention recited in the
application claims” (App. Br. 22; see also Reply Br. 6). Thus, Appellants
urge, “[i]nterpreting the soap holder of the Milligan reference as disclosing a
lid, and then rearranging features of the soap holder in contending that the
Mil[l]igan reference makes obvious features of the lid recited in the
application‟s claims is based on a hindsight reconstruction of the lid of the
invention” (App. Br. 22).
Further, Appellants argue, the claimed lid is “designed to be
removably attachable to a plurality of different containers of different sizes
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Application 12/504,298

11
to cover over the rectangular top openings of the plurality of different
containers. There is no relation between the soap holder of the Milligan
reference and the lid of the invention either in structure or function” (id. at
23).
Appellants‟ arguments do not persuade us that the Examiner erred in
concluding that an ordinary artisan would have considered claim 24 obvious
in view Milligan. Claim 24 recites “[t]he lid of Claim 23, further
comprising: the first protrusion and the plurality of second protrusions are
positioned in centered positions relative to the lid width dimension.”
It might be true that the embodiment shown in Milligan‟s Figure 6
does not have the protrusions centered relative to the width dimension.
However, as the Examiner finds, and Appellants do not dispute, the
protrusions B´ in the embodiment shown in Milligan‟s Figure 2 are centered
with respect to the width dimension. Given this teaching, that the device
functions suitably when the protrusions are placed in centered positions, we
agree with the Examiner that an ordinary artisan would have been prompted
to place the protrusions in the rectangular embodiment shown in Figure 6 in
centered positions, as required by claim 24.
Because this conclusion is based only on the teachings of Milligan, we
are not persuaded that the Examiner‟s prima facie case is based on improper
hindsight. Moreover, while it is true that Milligan is ultimately directed to a
soap holder rather than a container lid, Milligan nonetheless suggests a
device having all of the structural and functional features required by claim
24. Cf., KSR Int’l v. Teleflex Inc., 550 U.S. 398, 419 (2007) (“In
determining whether the subject matter of a patent claim is obvious, neither
the particular motivation nor the avowed purpose of the patentee controls.
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What matters is the objective reach of the claim. If the claim extends to
what is obvious, it is invalid under § 103.”).
In sum, as Appellants‟ arguments do not persuade us that the
Examiner erred in concluding that an ordinary artisan viewing Milligan
would have considered a device having all of the features recited in claim 24
obvious, we affirm the Examiner‟s rejection of that claim over that
reference.

SUMMARY
We affirm the Examiner‟s rejection of claims 11, 13, 22, 23, 27, 28,
34, and 35 as anticipated by Milligan.
However, we reverse the Examiner‟s rejection of claims 19, 20, 25,
26, 30, and 31 as anticipated by Milligan.
We also affirm the Examiner‟s obviousness rejection of claim 24 over
Milligan.

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

cdc