Ex Parte Smallwood

Patent Trial and Appeal Board

Aug 26, 2016

11714656 (P.T.A.B. Aug. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111714,656 0310612007
82357 7590 08/30/2016
James Ray & Associates Intellectual Property, LLC
4268 Northern Pike Rd
Monroeville, PA 15146
Dale 0. Smallwood
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.
DS 07006 4054
EXAMINER
SMALLEY, JAMES N
ART UNIT PAPER NUMBER
3781
NOTIFICATION DATE DELIVERY MODE
08/30/2016 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):
jray@jrayassoc.com
apogeegroup@comcast.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DALE 0. SMALL WOOD
Appeal2014-007393
Application 11/714,656
Technology Center 3700
Before MICHAEL L. HOELTER, THOMAS F. SMEGAL, and
GORDON D. KINDER, Administrative Patent Judges.
KINDER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1,
3---6, 8-10, and 13-17. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal2014-007393
Application 11/714,656
CLAIMED SUBJECT MATTER
The claims are directed to a self air evacuating system. Claim 1,
reproduced below, illustrates the claimed subject matter:
1. In combination with a container having a predetermined
shape and a predetermined number of rib members formed on
an inner surface of said container the improvement comprising
an apparatus for evacuating air from said container and for
sealing said container so as to prevent air from returning in
order to better preserve contents of said container, said
apparatus including:
(a) a lid member configured for insertion into said container,
said lid member including a body having each of a pair of
spaced apart surfaces defining a generally uniform thickness of
said body, said lid member further including a predetermined
shape and a predetermined size and being formed of a
predetermined material; and
(b) at least one flexible rim member integrally formed on and
defining an outer edge of said lid member, said at least one
flexible rim member tapering between planes defined by said
pair of spaced apart surfaces to substantially a point on an outer
edge of said lid member, said at least one flexible rim member
sized for contacting at least one of an inside wall of said
container, a bottom surface of a first one of said rib members,
an upper surface of a second one of said rib members disposed
below said bottom surface of said first one of said rib members
and an inner most surface of said rib members, said at least one
rim member being sufficiently thin so as conform to said at least
one of said inside walls of said container, said bottom surface of
said first one of said rib members, said upper surface of said
second one of said rib members disposed below said bottom
surface of said first one of said rib members, said inner most
surface of said rib members and a combination of said bottom
surface of said first one of said rib members, said upper surface
of said second one of said rib members disposed below said
2
Appeal2014-007393
Application 11/714,656
bottom surface of said first one of said rib members and said
inner most surface of said rib members.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Rovinski
Donnelly
Hudak
Torelli
us 3,779,371
us 3,924,774
US 2003/0201239 Al
US 7,159,736 Bl
REJECTIONS
The Examiner made the following rejections:
Dec. 18, 1973
Dec. 9, 1975
Oct. 30, 2003
Jan.9,2007
Claims 1, 3, 4, 6, 8, and 9 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Donnelly and Hudak.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Donnelly, Hudak, and Rovinski.
Claims 10 and 13-17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Donnelly, Hudak, and Torelli. 1
OPINION
All of the rejections in the Final Action rely on a combination of
Donnelly as modified in light of Hudak. Final Act. 2-5. Because we find
1 In the final action, claim 5 was rejected under 35 U.S.C. § 112, first para.
Final Act. 2. This rejection has been withdrawn. Ans. 5.
3
Appeal2014-007393
Application 11/714,656
that the Examiner erred in his determination that this combination is
obvious, we reverse.
The Examiner finds that it is obvious to provide the container closure
10 of Donnelly with the peripheral lip 22 of Hudak "to promote sealing of
the openings 18" in Donnelly, and that "[p ]roviding the radial compression
[of Hudak] would result in additional sealing of these openings." Final Act.
3; Ans. 2.
Appellant argues that the Examiner's conclusions lack a rational
underpinning as required by KSR Int'! v. Teleflex Inc., 127 S. Ct. 1727, 1741
(2007). Appeal Br. 12-13. "Finally, Appellant finds that the Examiner's
reasoning that the combination would be 'motivated by the benefit of an
additional radial compression force to seal the openings ( 18) therein' [Final
Act. 3] has no relevance to the claimed invention absent any such openings
(18)." Appeal Br. 14.
We agree with Appellant that the Examiner has not shown a
motivation to provide additional sealing of the openings 18 in Donnelly. In
fact, Donnelly requires that the openings 18 remain open, sealed only by a
displaceable plate 22. The openings 18 of Donnelly are provided as
"valving means for admission of air to the container to facilitate removal of
the closure." Donnelly 1 :45--46. They are "openings in the diaphragm
normally covered by the support means [e.g., plate 22] and opened upon
application of upward motion of the support means to remove the closure."
Id. 1 :48-51. If additional sealing by radial compression were provided as
suggested by the Examiner, the lid of Donnelly would not operate, becoming
difficult to remove because the sealed openings would not allow release of
the vacuum within the container. It would not have been obvious to
4
Appeal2014-007393
Application 11/714,656
combine the teachings of Donnelly and Hudak as suggested by the Examiner
because to do so would render Donnelly unsatisfactory for its intended
purpose. See In re Gordon, 733 F.2d 900 (Fed. Cir. 1984). Accordingly, we
find that a skilled worker would not have been motivated to combine
Donnelly with Hudak for the reason found by the Examiner.
In view of our disposition of claims 1 and 6, we also cannot sustain
the Examiner's position in connection with the dependent claims. Claims 3-
5, 8, 9, and 17 depend from claims 1 and 6, and the rejection of these claims
is reversed for the same reasons expressed above.
The rejection of claim 10 relies on the same combination of Donnelly
and Hudak. Ans. 3--4. This rejection is reversed for the same reasons as
claims 1 and 6, as is the rejection of claims 13-16, which depend from claim
10.
DECISION
For the above reasons, the Examiner's rejections of claims 1, 3---6, 8-
10, and 13-17 are reversed.
REVERSED
5