Ex Parte Lingamfelter

Patent Trial and Appeal Board

Sep 25, 2017

10997712 (P.T.A.B. Sep. 25, 2017)

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.
10/997,712 11/24/2004 C. Brown Lingamfelter P-6515.01 (CONT4) 7337
30544 7590 09/27/2017
Taeksinn Walker T T P
EXAMINER
112E. Pecan BUI, LUAN KIM
Suite 2400
San Antonio, TX 78205 ART UNIT PAPER NUMBER
3728
NOTIFICATION DATE DELIVERY MODE
09/27/2017 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):
emyers @j w.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte C. BROWN LINGAMFELTER
Appeal 2015-006874
Application 10/997,712
Technology Center 3700
Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
FREDERICK C. LANEY, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
C. Brown Lingamfelter (Appellant) appeals under 35 U.S.C. § 134(a)
from the Examiner’s final decision rejecting claims 1—6, 8—10, and 13—34
under 35 U.S.C. § 103(a) as unpatentable over Schuster (US 4,785,991 iss.
Nov. 22, 1988), Ringler (US 2,842,304 iss. July 8, 1958), and Ellis (US
3,178,242 is Apr. 13, 1965).1 Appellant’s representative presented
arguments in an oral hearing on September 6, 2017. We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
1 Claims 7 and 11 have been canceled. Appeal Br. 3. Claim 12 has been
withdrawn. Id.
Appeal 2015-006874
Application 10/997,712
We AFFIRM IN PART, and enter a NEW GROUND OF
REJECTION of claims 1-6, 8-10, and 15-34.
INVENTION
Appellant’s invention relates to “a beverage can container for
providing easy access to the beverage cans contained therein.” Spec. 12.
Claims 1, 2, 4—6, 8—10, 13—17, 21, 25, and 33 are independent. Claim
1 is illustrative of the claimed subject matter and is reproduced below with
emphasis on the claim language at the center of this dispute:
1. A container comprising:
a plurality of walls including a front wall, a rear wall, a top
wall, a bottom wall and two side walls, the walls containing a
multiplicity of stacked cylindrical cans in substantially
perpendicular can columns and can rows, the can columns
located between the front wall and the rear wall, there being at
least a top can row and a next to the top can row, the top can row
including a forward most can adjacent the front wall such that
the forward most can is in contact with the front wall, and a
rearward most can adjacent the rear wall such that the rearward
most can is in contact with the rear wall, each can having a can
top, a can bottom, a can height, a can diameter, and a longitudinal
axis substantially parallel to the front wall, wherein the top wall
and the bottom wall are spaced apart by a whole multiple of the
can diameters, and the two side walls are spaced apart by the can
height, the front wall and rear wall spaced apart by a whole
multiple of the can diameters; and
a removable access portion, the removable access portion
comprised of a portion of each of the top wall, the front wall and
the two side walls, such that removal of the removable access
portion leaves a pair of side wall edges, which side wall edges
expose a substantial part of the can top and the can bottom of the
forward most can, for ease of removal of the forward most can,
and removal of the removable access portion further provides
access to the cans remaining after removal of the forward most
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Application 10/997,712
can, the top wall portion of the removable access potion having
a length of about one can diameter,
wherein the front wall retains cans in the next to the top
can row from rolling out of the container when the bottom wall
is resting flat on a support surface.
Corrected Claims App. 1—2 (filed June 27, 2017).
ANALYSIS
Whether the combination of prior art references disclose a top wall
opening length of “about one can diameter” (claims 1, 2, 4—6, 8—10, 15—17,
21, 25, and 33) or “one can diameter” (claim 14) is the sole focus of
Appellant’s challenge to the Examiner’s rejection of the claims at issue in
this appeal. Appeal Br. 8—18. We address claim 14 separately because it
does not use the term of degree “about.” For the following reasons, we
cannot uphold the Examiner’s rejection of independent claims 1,2, 4—6, 8—
10, 15—17, 21, 25, and 33, or their dependent claims 3, 18—20, 22—24, 26—32,
and 34, because the term “about” used in the independent claims creates
ambiguities; thus, rendering all of these claims indefinite. Regarding claim
14, we are further persuaded that the Examiner’s rejection is deficient for the
reasons discussed separately below.
New Ground of Rejection —
Claims 1—6, 8—10, and 15—34 Are Indefinite
The Examiner finds,
With respect to the top wall portion of the removable access
portion having a length of about one can diameter, the container
of Schuster as modified comprises the top wall portion of the
removable access portion having a length of about one can
diameter as taught by Ellis [which] shows the top wall portion of
the removable access portion having a length of about one can
diameter (see Figure 3).
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Application 10/997,712
Final Act. 3^4. Appellant contends the Examiner misplaces reliance on Ellis
to show a top wall portion of the removable access portion having a length
of about one can diameter. Appeal Br. 8. Relying on the use of the term
“about” to modify the length of the removable top portion, the Examiner
responds, “Ellis shows the tear line in the top wall is a little bit less than one
can diameter (about three-fourths of a diameter) which is considered
equivalent to about one can diameter as claimed.” Ans. 3. Countering this
finding, Appellant argues the scope of the term “about” is limited and that
the Examiner’s interpretation gives the term an unreasonable breadth.
Reply. Br. 3. Therefore, a central issue before us is the boundary afforded to
the term “about.”
We begin by noting that “about” is a term of degree. If a claim
employs a term of degree, then “the intrinsic record must provide those
skilled in the art with ‘objective boundaries’ with which to assess the term’s
scope. If it does not, the claim is indefinite.” In re Walter, 2017 WL
3587778, at * 4 (Fed. Cir. Aug. 21, 2017) (citing Interval Licensing LLC v.
AOL, Inc., 766 F.3d 1664, 1371 (Fed. Cir. 2014) (unpublished). Although
absolute or mathematical precision is not required, it is not enough, as some
of the language in [the Federal Circuit’s] prior cases may have suggested, to
identify ‘some standard for measuring the scope of the phrase.’” Interval
Licensing LLC, 76 F.3d at 1371 (quoting Datamize, LLC v. Plumtree
Software, Inc., 417 F.3d 1342, 1351 (Fed.Cir.2005)).
After careful consideration of the Specification, we are unable to
locate any description that would provide those skilled in the art with
“objective boundaries” with which to assess the intended scope of the term
“about.” The Specification simply states that the “preferred length of the top
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Application 10/997,712
wall defined after the cut is between 1 and 3 diameters, preferably between 1
and 2 diameters.” Spec. 122. There is no teaching regarding the criticality
of this length dimension beyond the fact that it assists with providing access
to a can within the package. See id. 123. Neither the Examiner nor the
Appellant directs us to any information within the intrinsic record to suggest
a skilled artisan would have recognized an objective boundary afforded the
term “about.” While “about” may allow for some deviation from the
claimed “one can diameter,” it is not clear from this record how much
deviation is afforded. Moreover, given that the Specification only identifies
a top wall portion with a length of one can diameter or greater (i.e., 2 or 3
can diameters), it is unclear whether a skilled artisan would recognize any
amount of deviation for the length that is less than the one can diameter.
Given these ambiguities, we conclude that the use of the term “about” in this
case renders the claims indefinite. Therefore, we reject claims 1, 2, 4—6, 8—
10, 15—17, 21, 25, and 33, and the claims depending therefrom, under 35
U.S.C. § 112, second paragraph, as a NEW GROUND OF REJECTION
pursuant to 37 C.F.R. § 41.50(b).
As a result, we find the Examiner’s determination that claims 1, 2, 4—
6, 8—10, 15—17, 21, 25, and 33 would have been obvious in view of the prior
art was error because the Examiner’s findings regarding whether the prior art
properly discloses the subject matter claimed was necessarily based on
speculation and assumptions about the scope and meaning of the term
“about,” which is improper. See In re Steele, 305 F.2d 859, 862 (CCPA
1962) (explaining that rejections should not be based on speculations and
assumptions as to the scope and meaning of claims). Therefore, we do not
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Application 10/997,712
sustain the Examiner’s rejection of claims 1, 2, 4—6, 8—10, 15—17, 21, 25,
and 33, or their dependent claims 3, 18—20, 22—24, 26—32, and 34.
Claim 14 — Obviousness
As noted above, claim 14 is separated from claims 1, 2, 4—6, 8—10,
15—17, 21, 25, and 33 because it recites “a top wall length less than the
bottom wall length by one can diameter” without the use of the modifier
“about.” Corrected Claims App. 7. The Examiner finds “the container of
Schuster as modified [by Ellis and Ringler] further fails to show the top wall
having the top wall length less than the bottom wall length by one whole
item diameter or one can diameter.” Final Act. 5. Nevertheless, the
Examiner determines,
It would have been obvious to one having ordinary skill in the art
at the time the invention was made to further modify the
container of Schuster as modified so the top wall length less than
the bottom wall length by one whole item diameter or one can
diameter to provide the opening of substantial area as taught by
Ringler to facilitate removing the cans from the container and
because the selection of the specific size for the opening such as
the top wall having the top wall length less than the bottom wall
length by about one can diameter as taught by Ellis ’242 or by
one can diameter would appear to have been an obvious matter
of design choice based upon conventional design considerations,
such as to facilitate removing the cans from the container.
Id.
Appellant relies on the C. W. Zumbiel Co. v. Kappos, 702 F.3d 1371
(Fed. Cir. 2012), decision, which addresses the same Ellis reference, to show
it would not have been obvious to have a dispenser-opening in the top wall
with a one can diameter length. Appeal Br. 8—11. In particular, Appellant
directs us to the Federal Circuit’s holding that “Ellis teaches away from
having the tear line between the first and second containers.” Id. at 1383.
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As support, the Court cited column 2, lines 31—33, of Ellis, which
“specifically states that the tear line is ‘a distance more than one-half
diameter and less than one diameter of one can, preferably about three-
fourths of a diameter.” Id.
Although we may not agree Ellis teaches away, Appellant correctly
argues that we are not free to disregard the Zumbiel decision and its holding
that Ellis teaches away from placing a tear line at a location that creates a
dispenser opening in the top panel that is one whole can diameter from the
end. As a result, the Examiner erred by relying on Ellis to evidence a skilled
artisan would have known to (or would have sought to) select a one-can
diameter opening in the top wall of the container. Therefore, we cannot
sustain the Examiner’s rejection of claim 14 because it is not supported by a
preponderance of the evidence.
Claim 13 — Obviousness
Appellant represents that all pending claims rejected in the Final
Office Action (entered April 25, 2014) are being appealed, except claim 13.
There is no record, however, of the Examiner entering any paper either
withdrawing or canceling claim 13. Asa result, claim 13 remains a pending
claim in this appeal. See 37 CFR § 41.31(c) (2016). We note claim 13 does
not include a limitation similar to the one that is the focus of Appellant’s
patentability arguments for the other pending claims (i.e., top wall opening
length of “about one can diameter” (claims 1, 2, 4—6, 8—10, 15—17, 21, 25,
and 33) or “one can diameter” (claim 14)). See Response to Non-Final
Office Action, 8—9 (entered Jan. 2, 2014). Instead, claim 13 recites, “atop
wall having a top wall length less than the bottom wall length.” Id.
Appellant has not made any separate patentability arguments for claim 13,
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nor has Appellant apprised us of any error with the Examiner’s rejection of
claim 13. Therefore, we sustain the Examiner’s rejection of claim 13.
DECISION
We reverse the Examiner’s rejection of claims 1—6, 8—10, and 14—34
under 35 U.S.C. § 103(a) as unpatentable over Schuster, Ringler, and Ellis.
We affirm the Examiner’s rejection of claim 13.
We enter a NEW GROUND OF REJECTION of claims 1-6, 8-10,
and 15—34 under 35 U.S.C. § 103(a) as being indefinite pursuant to
37 C.F.R. §41.50(b).
37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds 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. . . .
Further guidance on responding to a new ground of rejection can be
found in MPEP § 1214.01.
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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)(l)(iv).
AFFIRMED IN PART; 37 C.F.R, $ 41.50(b)
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