Ex Parte Valley et al

Patent Trial and Appeal Board

Sep 28, 2017

13571621 (P.T.A.B. Sep. 28, 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.
13/571,621 08/10/2012 Joseph P. Valley III 508725 1067
53609 7590 10/02/2017
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
EXAMINER
MATHEW, FENN C
ART UNIT PAPER NUMBER
3781
NOTIFICATION DATE DELIVERY MODE
10/02/2017 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):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH P. VALLEY, III and EDWARD P. CRONIN
Appeal 2016-0007161
Application 13/571,6212
Technology Center 3700
Before NINA L. MEDLOCK, CYNTHIA L. MURPHY, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—14. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Our Decision references Appellants’ Appeal Brief (“App. Br.,” filed
Sept. 22, 2014) and Reply Brief (“Reply Br.,” filed Jan. 28, 2015), and the
Examiner’s Answer (“Ans.,” mailed Nov. 26, 2014) and Final Office Action
(“Final Act.,” mailed Apr. 23, 2014).
2 Appellants identify J. L. Clark, Incorporated as the real party in interest.
App. Br. 2.
Appeal 2016-000716
Application 13/571,621
CLAIMED INVENTION
Appellants’ claimed invention relates to “hand-held containers that
have metal shelves that slide relative to one another.” See Spec. 12.
Claim 1, reproduced below, is the sole independent claim on appeal,
and is representative of the claimed subject matter:
1. A container comprising:
a metal lid;
a metal bottom;
a plastic lid insert attached to the metal lid; [and]
a plastic bottom insert attached to the metal bottom, the
plastic lid insert slidably engaging the plastic bottom insert to
allow the metal lid to slide relative to the metal bottom between
open and closed states along a sliding axis.
REJECTIONS
Claims 1, 4, 9, 12, and 14 are rejected under 35 U.S.C. § 102(b) as
anticipated by Breton (US 6,457,223 Bl, iss. Oct. 1, 2002).
Claims 2 and 3 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Breton and McClean (US 6,622,895 B2, iss. Sept. 23, 2003).
Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Breton and Hunot (US 2005/0061161 Al, pub. Mar. 24, 2005).
Claims 6 and 7 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Breton, Hunot, and Baker (US 2,289,747, iss. July 14, 1942).
Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Breton, Hunot, Baker, and Costin (US 7,278,545 B2, iss. Oct. 9, 2007).
Claims 10 and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Breton.
Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Breton and Baker.
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Appeal 2016-000716
Application 13/571,621
ANALYSIS
Anticipation
Independent Claim 1, and Dependent Claims 4, 9, 12, and 14
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 102(b) because Breton does
not disclose “a plastic bottom insert attached to the metal bottom, the plastic
lid insert slidably engaging the plastic bottom insert to allow the metal lid to
slide relative to the metal bottom between open and closed states along a
sliding axis,” as recited in claim 1. See App. Br. 5—6. The Examiner relies
on Figure 1 and column 4, lines 47—56 as disclosing the argued limitation.
Final Act. 2
Breton describes a lipstick case 1 having a base 2 and a cover 3.
Breton col. 4,11. 13—14, Fig. 1. Base 2 comprises a lipstick holder 4, an
aluminum sleeve 21, and a plastics end 22. Id. at col. 4,11. 14—19. Cover 3
includes an aluminum sleeve 31 and a plastics top 32. Id. at col. 4,11. 27—28.
A plastics connector 24 is provided between the free ends of base 2 and
cover 3 to ensure smooth removable engagement between base 2 and
cover 3 of lipstick case 1. Id. at col. 4,11. 37—38, 44-46. For example,
plastics connector 24 may be adapted to fit inside metal sleeves 21 and 31
such that one end is joined to base 2, and the other end removably engages
with cover 3. Id. at col. 4,11. 37-43. In one embodiment, base 2 and cover 3
are provided with plastic connector inserts having mutual engagement means
such as snap beads to releasably hold base 2 and cover 3 together. Id. at
col. 3,11. 52-56.
In rejecting independent claim 1 under 35 U.S.C. § 102(b), the
Examiner finds that Breton’s aluminum sleeve 31 constitutes the claimed
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Appeal 2016-000716
Application 13/571,621
metal lid, that aluminum sleeve 21 constitutes the claimed metal bottom, that
plastics top 32 constitutes the claimed plastic lid insert, and plastics
connector 24 constitutes the claimed plastic bottom insert. Final Act. 2.
However, as pointed out by Appellants (see App. Br. 6), Breton’s plastics
top 32 does not come into contact with plastics connector 24, let alone
slidably engage plastics connector 24 to allow aluminum sleeve 31 to slide
relative to aluminum sleeve 21, as required by claim 1. Instead, one end of
plastics connector 24 joins one of aluminum sleeves 21,31, and the other
end of plastics connector 24 engages with the other of aluminum sleeves 21,
31. See Breton, Fig. 1, col. 4,11. 38-43. Plastics top 32, on the other hand,
overlaps aluminum sleeve 31, and is joined to aluminum sleeve 31 using
conventional joining techniques. Id. at col. 4,11. 27—36.
In the Answer, the Examiner takes the position that Breton’s
disclosure of providing plastics connector 24 with snap beads at column 4,
lines 53—56 “clearly teaches two plastic inserts engaging together.” Ans. 5.
But Breton’s plastics connector 24 is adapted to fit inside metal sleeves 21
and 31, whether plastics connector 24 is provided with snap beads or not.
See Breton, col. 4,11. 38-41, Fig. 1. And plastics top 32 would remain
joined to aluminum sleeve 31 regardless of the presence of plastics
connector 24 having snap beads. The record does not adequately support the
Examiner’s finding that plastics top 32 slidably engages with plastics
connector 24, as required by claim 1.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 1 under 35 U.S.C. § 102(b). We also do not sustain the
Examiner’s rejection under 35 U.S.C. § 102(b) of claims 4, 9, 12, and 14, at
least in view of their dependence from claim 1.
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Appeal 2016-000716
Application 13/571,621
Obviousness
Dependent Claims 2, 3, 5 8, 10, 11, and 13
Claims 2, 3, 5—8, 10, 11, and 13 each depend from claim 1. The
Examiner’s rejections of these claims do not cure the deficiencies in the
rejection of independent claim 1. Therefore, we do not sustain the
Examiner’s rejections under 35 U.S.C. § 103(a) of dependent claims 2, 3, 5—
8, 10, 11, and 13 for the same reasons discussed above with respect to
independent claim 1.
DECISION
The Examiner’s rejection of claims 1, 4, 9, 12, and 14 under 35 U.S.C.
§ 102(b) is reversed.
The Examiner’s rejections of claims 2, 3, 5—8, 10, 11, and 13 under
35 U.S.C. § 103(a) are reversed.
REVERSED
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