10738636 (B.P.A.I. Jun. 11, 2009)

Ex Parte Landis et al

Board of Patent Appeals and InterferencesJun 11, 2009

10738636 (B.P.A.I. Jun. 11, 2009)

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. 10/738,636 12/17/2003 Russel J. Landis 1410/78499 7586 48940 7590 06/12/2009 FITCH EVEN TABIN & FLANNERY 120 SOUTH LASALLE STREET SUITE 1600 CHICAGO, IL 60603-3406 EXAMINER SMALLEY, JAMES N ART UNIT PAPER NUMBER 3781 MAIL DATE DELIVERY MODE 06/12/2009 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 RUSSEL J. LANDIS, ALEXANDER D. JONES, SURENDRA H AGARWAL, JEFFREY R. SUSALLA, ARTURO MARTINEZ and KENNETH C. POKUSA ____________ Appeal 2009-2921 Application 10/738,636 Technology Center 3781 ____________ Decided1: June 12, 2009 ____________ Before DONALD E. ADAMS, LORA M. GREEN, and MELANIE L. McCOLLUM, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL This appeal under 35 U.S.C. § 134 involves claims 1-23, the only claims pending in this application. We have jurisdiction under 35 U.S.C. 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2009-2921 Application 10/738,636 2 § 6(b). STATEMENT OF THE CASE The claims are directed to a tamper-evident lid (claims 1-13) and a container and tamper-evident lid (claims 14-23). Claims 1, 4, and 5 are illustrative: 1. A tamper-evident lid for attachment to a rim of a container, the lid comprising: a lid body made of plastic; a central separable lid portion on the plastic, lid body; a skirt on the plastic lid body for permanent attachment to the container; a weldable portion on the skirt for being welded to the container; a detachable, replaceable lid portion on the lid body for detachment from the skirt of the lid and for replacement on the container to cover container after the initial removal of the lid portion from the container; and a groove on the lid body spanning between the weldable portion and the detachable lid portion for fracturing to leave the weldable portion welded to the container and to allow removal of the detachable, replaceable lid portion from the container. 4. A tamper-evident lid in accordance with Claim 1 wherein the weldable portion comprises: an energy director in the form of a depending bead on the underside of the skirt. 5. A tamper-evident lid in accordance with Claim 1 comprising: a pry slot for initiating removal of the detachable, replaceable lid portion. Appeal 2009-2921 Application 10/738,636 3 The Examiner relies on the following prior art references to show unpatentability: Ingemann US 4,529,100 Jul. 16, 1985 Roth et al. US 5,085,339 Feb. 4, 1992 Reil et al. US 5,114,068 May 19, 1992 The rejections as presented by the Examiner are as follows: 1. Claims 1-3, 6-9, 13-15, 17, 18, 20, and 21 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Reil. 2. Claims 4, 10-12, 16, 22, and 23 stand rejected under 35 U.S.C § 103(a) as unpatentable over the combination of Reil and Ingemann. 3. Claims 5 and 19 stand rejected under 35 U.S.C § 103(a) as unpatentable over the combination of Reil and Roth. We reverse. Anticipation by Reil: ISSUE Does Reil teach a lid comprising, inter alia, a groove spanning between a weldable lid portion and a detachable lid portion as required by all independent claims on appeal? Appeal 2009-2921 Application 10/738,636 4 FINDINGS OF FACT FF 1. For clarity we reproduce Reil’s figures 12 and 13 below: FIG. 11 is an illustration of the “tear-open strip [or tear-off strip 6] in the pulled up position” (Reil, col. 5, ll. 66-68; col. 6, ll. 32-33). FIG. 12 is a sectional view through marginal portion of the bottom part of a rectangular package for flowable media indicating the welded seams and tear lines (Reil, col. 6, ll. 1-3). “FIG 13 is a view which is the same as that in FIG. 12 but in which the tear-off strip is pulled up” (Riel, col. 6, ll. 4-5). FF 2. Reil teaches a plastic container comprising a lid 1’ and a bottom 2’, wherein the lid and bottom “are connected to each other by a first welded seam 3” (Reil, col. 6, ll. 20-23; Ans. 3). FF 3. Reil teaches a first tear line 5 at the edge of the first welded seam 3 and a second tear line 4 formed by a separate line of weakness 7 (Reil, col. 6, ll. 30-40). The Examiner refers to line of weakness 7 as a groove (Ans. 3 and 5). Appeal 2009-2921 Application 10/738,636 5 FF 4. Reil teaches a “tear-off strip 6 disposed between the two tear lines 4 and 5” (Reil, col. 6, ll. 32-33). FF 5. The Examiner finds that the term “span” means, inter alia, “to extend over or across (a section of land, a river, etc)” and “to provide with something that extends over: to span a river with a bridge” (Ans. 5). PRINCIPLES OF LAW Because the hallmark of anticipation is prior invention, the prior art reference – in order to anticipate under 35 U.S.C. § 102 – must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements “arranged as in the claim.” Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed.Cir.1983). Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). See also, Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987) (“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.”). ANALYSIS The lid of Appellants’ claims comprises, inter alia, a groove on the lid body spanning between a weldable lid portion and a detachable lid portion. As the Examiner recognizes the term span means to cover a distance, e.g., to reach from a point on one side of a river to a point on another side of a river (FF 5). Accordingly, in the context of Appellants’ claimed invention, we interpret the claim to require that the lid contain a groove to cover the distance (e.g., reach) from a weldable lid portion to a detachable lid portion. Appeal 2009-2921 Application 10/738,636 6 However, Reil’s groove 7 fails to span the entire distance from the weldable lid portion 3 to the detachable lid portion 1’ (App. Br. 13). Instead, Reil’s groove 7 spans the distance from the detachable lid portion 1’ to the tear off strip 6 (FF 1 and 4). Tear-off strip 6 then spans from groove 7 to weldable lid portion 3 (FF 1-3). We recognize the Examiner’s intimation that the transitional term “comprising” would somehow permit the groove to comprise tear-off strip 6 (see, e.g., Ans. 5). We are not persuaded. The transitional term “comprising” as used in Appellants’ claims refer to the lid or container and lid. Accordingly, the lid or container and lid may contain a variety of elements in addition to “a groove spanning a weldable lid portion and a detachable lid portion”. CONCLUSION OF LAW Reil fails to teach a lid comprising, inter alia, a groove spanning between a weldable lid portion and a detachable lid portion as required by all independent claims on appeal. The rejection of claims 1-3, 6-9, 13-15, 17, 18, 20, and 21 under 35 U.S.C. § 102(b) as being anticipated by Reil is reversed. Appeal 2009-2921 Application 10/738,636 7 Obviousness: ISSUE Did Appellants establish error in the Examiner’s prima facie case of obviousness? PRINCIPLES OF LAW On appeal to this Board, Appellants must show that the Examiner has not sustained the required burden. See (1) Ex parte Yamaguchi, http://www.uspto.gov/web/offices/dcom/bpai/ prec/fd074412.pdf, slip op. at 5 and 23 (BPAI Aug. 29, 2008) (precedential); (2) Ex parte Fu, http://www.uspto.gov/web/offices/ dcom/bpai/prec/fd080601.pdf, slip op. at 5 and 20 (BPAI Mar. 31, 2008) (precedential); (3) Ex parte Catan, http://www.uspto.gov/web/ offices/dcom/bpai/prec/fd070820.pdf, slip op. at 3 and 21 (BPAI Jul. 3, 2007) (precedential), and (4) Ex parte Smith, http://www.uspto.gov/web/offices/dcom/bpai/prec/fd071925.pdf, slip op. at 4, 9 and 23 (BPAI Jun. 25, 2007). ANALYSIS Appellants assert that Ingemann and Roth fail to make up for the deficiency in Reil discussed above (App. Br. 15). The Examiner failed to rebut Appellants’ argument. CONCLUSION OF LAW Appellants established error in the Examiner’s prima facie case of obviousness. Appeal 2009-2921 Application 10/738,636 8 The rejection of claims 4, 10-12, 16, 22, and 23 under 35 U.S.C § 103(a) as unpatentable over the combination of Reil and Ingemann is reversed. The rejection of claims 5 and 19 under 35 U.S.C § 103(a) as unpatentable over the combination of Reil and Roth is reversed. REVERSED lp FITCH EVEN TABIN & FLANNERY 120 SOUTH LASALLE STREET SUITE 1600 CHICAGO IL 60603-3406