Ex Parte SINA

Patent Trial and Appeal Board

Jun 8, 2016

13240437 (P.T.A.B. Jun. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/240,437 09/22/2011 CHRISTOPHER L. SINA
23552 7590 06/10/2016
MERCHANT & GOULD P.C.
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
15197.207US01 4670
EXAMINER
GEHMAN, BRYON P
ART UNIT PAPER NUMBER
3728
NOTIFICATION DATE DELIVERY MODE
06/10/2016 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):
USPT023552@merchantgould.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER L. SINA
Appeal2014-004562
Application 13/240,437 1
Technology Center 3700
Before STEFAN STAICOVICI, JAMES P. CALVE, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Christopher L. Sina (Appellant) appeals under 35 U.S.C. § 134(a)
from the Examiner's final decision rejecting under 35 U.S.C. § 103(a)
claims 1-20 as being unpatentable over Murphy (US 2003/0041489 Al,
pub. Mar. 6, 2003) and Tetreault (US 2011/0155607 Al, pub. June 30,
2011). We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
According to Appellant, the real party in interest is Reynolds Presto
Products Inc. Appeal Br. 3 (filed July 25, 2013).
Appeal2014-004562
Application 13/240,437
SUMMARY OF DECISION
We AFFIRM.
INVENTION
Appellant's invention relates to "disposable containers and lids."
Spec. 1, 1. 6.
Claims 1, 16, and 19 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A disposable container and lid arrangement comprising:
(a) a container having a bottom and a
surrounding wall extending from the bottom;
(i) the bottom and wall defining a
container volume;
(ii) the wall having an end remote from the
bottom; the end defining a lid-receiving rim;
(iii) the wall having at least a first wall
section and a second opposing wall section;
(i\) a first graphic arbitraP; symbol
defined on the first wall section; the first
graphic arbitrary symbol having a purpose
exclusively for use in a matching system and
being otherwise uninformative;
(B) a second graphic arbitrary
symbol defined on the second wall section;
the second graphic symbol being the same
as the first graphic symbol; the second
graphic arbitrary symbol having a purpose
exclusively for use in a matching system and
being otherwise uninformative; and
(b) a lid sized to releasably fit on the rim and
provide a cover to the container volume;
(i) a third graphic arbitrary symbol
defined on the lid; the third graphic symbol being
the same as the first and second graphic symbols;
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Application 13/240,437
the third graphic arbitrary symbol having a
purpose exclusively for use in a matching system
and being otherwise uninformative.
ANALYSIS
Claim 1
The Examiner finds that Murphy discloses most of the limitations of
independent claim 1, including, a container 61, 71 having a first arbitrary
graphic symbol 64, 74, a lid 62, 72 having a second arbitrary symbol 65, 75,
where the first and second arbitrary graphic symbols are used exclusively for
matching container 61, 71 to lid 62, 72. See Final Act. 2 (mailed Jan. 3,
2013); see also Murphy, Figs. 6, 7. However, the Examiner finds that
Murphy fails to disclose, "employing graphic symbols on opposite sides of a
container and lid arrangement." Final Act. 2. Nonetheless, the Examiner
fhrther finds that Tetreault discloses, "that it \Vas kno\vn to provide duplicate
symbols on multiple sides of a container and lid arrangement." Id. at 2
(citing Tetreault i-f 58). The Examiner thus concludes that it would have
been obvious for a person of ordinary skill in the art "to provide the
container and lid arrangement with a second graphic arbitrary symbol as
claimed, as such a modification would predictably provide an additional
viewable source for matching the lid with the container." Id. at 2-3.
According to the Examiner, such a modification represents a "mere
duplication of the essential working parts" and "does no more than yield
predictable results." Id. at 3.
In response, Appellant argues that Murphy does not disclose graphic
arbitrary symbols. See Appeal Br. 21-23. According to Appellant, "each of
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Application 13/240,437
the graphic arbitrary symbols of the claims 'are not provided to impart any
information;"' that is, "have no informative purpose other than for use in the
matching system." Id. at 21 (citing Spec. 4, 11. 11-18). Thus, Appellant
contends that because the symbols in Murphy's embodiments shown in
Figures 1--4, 6, and 7 convey a sequential order, they "have additional
meaning beyond their use in the matching system," and thus, Murphy fails to
disclose graphic arbitrary symbols, as called for by claim 1. See id. at 22-23
(citing Murphy i-f 58); see also Reply Br. 2-3. More specifically, Appellant
notes that Murphy's containers are sequentially numbered or labeled with
the days of the week, as per Figures 1 and 2; uses letters than can spell a
word, as per Figure 3; a combination of numbers or shapes, as per Figure 4;
or uses symbol for matching purposes, but that also convey information for
sequential use, as per Figures 6 and 7. See id.
We are not persuaded by Appellant's arguments, as the Examiner
does not rely on the embodiments shown in Figures 1--4 of Murphy, but
rather on the embodiments of Figures 6 and 7. See Final Act. 2. With
respect to the embodiments of Figures 6 and 7, we agree with the Examiner
that because "the lid [is] provided with a heart symbol [in Murphy] ... so
the lid can be matched with the container with a heart symbol", the two heart
symbols constitute "arbitrary graphic symbols," as called for by claim 1.
Ans. 5---6. In other words, the function of symbols 64, 65 and 74, 75 of
Murphy's Figures 6, 7 is to identify drinking cups 61, 71 that match with
lids 62, 72. See Murphy i-f 37 and Figs. 6, 7. Furthermore, although we
appreciate that claim 1 limits the term "arbitrary graphic symbol" to a
symbol having only a matching purpose, to the exclusion of other
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Application 13/240,437
informative purposes, such exclusion cannot impart patentability because the
substance of the printed matter cannot impart patentability as it is "useful
and intelligible only to the human mind." See In re Lowry, 32 F.3d 1579,
1583 (Fed. Cir. 1994) (quoting In re Bernhart, 417 F.2d 1395, 1399 (CCPA
1969).
Appellant further argues that neither Murphy nor Tetreault discloses
first and second graphic arbitrary symbols on opposed sides of a container.
See Appeal Br. 23. According to Appellant, paragraph 50 of Tetreault
"indicates that the lid indicia could be at any location on the lid (e.g., on a
top or bottom side) and that the vessel indicia could be in any location on the
side," whereas paragraph 58 "discloses multiple symbols positioned on a top
and bottom of a lid." Appeal Br. 23. Thus, Appellant contends that
"placement of first and second graphic arbitrary symbols on opposite side
wall sections is more than a mere design choice" because "the claimed
placement ... solves the stated problem of ensuring that the matching
symbol is visible to a consumer regardless of the particular orientation of the
container relative to the consumer." Reply Br. 4.
We are not persuaded by Appellant's arguments because it is well
established that minor changes in placement of elements may be an obvious
matter of design choice, which may apply when alternative elements or
configurations in the prior art perform the same function as the claimed
structures with no unexpected results. See, e.g., In re Kuhle, 526 F.2d 553,
5 5 5 ( CCP A 197 5). Here, the Examiner is correct in that adding more than
one symbol, as taught by Tetrault, to Murphy's container, is merely a
duplication of parts that involves only routine skill in the art. See Ans. 6.
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Application 13/240,437
Simply selecting one of a plurality of a finite number of identified
predictable solutions might not be the product of innovation but something
that occurs in the ordinary course of using a known device. See, e.g., In re
Kubin, 561F.3d1351, 1358---61 (Fed. Cir. 2009). In this case, whether the
symbols are located on opposite sides of Tetreault's lid (see Tetreault, Figs.
4, 5) or on opposite sides of Murphy's container, as modified by Tetreault,
the symbols perform the same function of matching the lid to the container
and thus do not provide unexpected results. We appreciate Appellant's
position that locating symbols on opposite sides of a container provides the
advantage of "'mak[ing] it more likely that at least one of the symbols ...
will be visible to the consumer for any given orientation of the container"'.
See Reply Br. 6. Nonetheless, we agree with the Examiner that adding
symbols may be beneficial, it is "not in any[ way] new or unobvious ... to
one of ordinary skill" in the art. See Ans. 6. As Appellant has not provided
evidence of unexpected results or a difference in function based on the
limitation at issue, we are not apprised of error.
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103(a) of independent claim 1 as being unpatentable over
Murphy and Tetreault.
Claims 2-15
With respect to the rejection of claims 2-15, Appellant argues that the
Examiner employed impermissible hindsight as neither Murphy nor
Tetreault discloses first and second graphic arbitrary symbols located on
opposed sides of a container in an offset pattern. See Appeal Br. 24.
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Application 13/240,437
We are not persuaded by Appellant's arguments because as we have
noted above, whether the symbols are located on opposing sides of
Tetreault's lid (see Tetreault, Figs. 4, 5) or on opposite sides of Murphy's
container, as modified by Tetreault, and further modified to be offset from
each other, the symbols perform the same function of matching the lid to the
container and thus do not provide unexpected results. We agree with the
Examiner that, "the precision in location [recited in claims 2-15] does not
appear to render any new or unexpected function of the graphic symbols
relative to their structure or to a user of the structure." Ans. 7; see also In re
Cree, 818, F.3d 694, 704, fn.3 (Fed. Cir. 2016).
As such, for the foregoing reasons, we also sustain the rejection under
35 U.S.C. § 103(a) of claims 2-15 as being unpatentable over Murphy and
Tetreault.
Claims 16-20
In regards to the rejection of independent claims 16 and 19, and
claims 17, 18, and 20 that depend therefrom, Appellant relies on the
arguments presented supra in the rejection of claims 1-15. See Appeal Br.
24--27. We are not persuaded by Appellant's arguments for the same
reasons, as discussed above, namely, that the symbols located in an offset
location2 on opposite sides of Murphy's container, or on opposite sides of
lid, as modified by Tetreault, perform the same function of matching the lid
2 Claim 19 recites, inter alia, "a straight line through the container
volume between the first and second graphic symbol is non-perpendicular
tot eh first wall section and the second wall section." See Appeal Br. 34
(Claims App.).
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to the container and thus do not provide unexpected results. We therefore
also sustain the rejection of claims 16-20 over the combined teachings of
Murphy and Tetreault.
SUMMARY
The Examiner's decision to reject claims 1-20 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)(l )(iv).
AFFIRMED
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