Ex Parte Van Handel et al

Board of Patent Appeals and Interferences

Jan 30, 2009

10170675 (B.P.A.I. Jan. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte GERALD J. VAN HANDEL and REBECCA E. WHITMORE
__________

Appeal 2008-0040
Application 10/170,675
Technology Center 3700
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Decided: January 30, 2009
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Before TONI R. SCHEINER, DONALD E. ADAMS, and ERIC GRIMES,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants have requested rehearing of the decision entered April 23,
2008 (“Decision”). The Decision affirmed rejections of claims 1-21, 25-47,
and 51-53 for obviousness in view of the Luker reference. We decline to
change the disposition of the claims in the Decision. The request for
rehearing is denied.
DISCUSSION
Appellants argue that the previous decision erred in affirming the
rejection of claims 5-13, 28-39, 40-47, and 51-53 as obvious in view of the
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Luker patent because the Decision relied on the principle, citing In re
Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997), that it is not inventive to
discover optimum or workable values of variables. Appellants argue that the
applicable precedent is In re Antoine, 559 F.2d 618 (CCPA 1977), which
Appellants argue provides that “a particular parameter must first be
recognized as a result effective variable before optimization can be
characterized as routine experimentation” (Req. Reh’g. 7). Appellants assert
that there “is no suggestion in the prior art that number of flutes per inch of
engagement perimeter, cylindrical flute diameter or flute extension … have
any functionality” and that “even though it may be supposed that the shape
influences strength, there is no recognition whatsoever that flute frequency is
more important as opposed to other geometric factors” (id. at 7-8).
This argument is not persuasive. As set forth in the Decision,
Luker teaches that a preferred embodiment of the disclosed lid
has thirty-six flutes in its perimeter. Those of skill in the art
would have recognized that the number of flutes per inch in
Luker’s lid would vary depending on the length of the
perimeter, and therefore the diameter, of the lid.
(Decision at 8.)
Thus, the Decision did not rely on recognition of flutes-per-inch as a
result effective variable, but rather on the knowledge of one of skill in the art
that container size varies depending on the intended use of the container; i.e.,
that container size would be a result effective variable.
Further, Luker discloses that “the projecting rounded ends of the
flutes of the respective pan and body members are radially displaced …,
with the flute ends 23 of the body [i.e., lid] projecting into the annular pan
recess 44” (i.e., of another container; Luker at Fig. 15). Luker discloses that
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this arrangement “protects the fragile structure while at the same time
interlocking the adjacent assemblies to prevent tipping or lateral
displacement” (Luker, col. 3, ll. 64-67).
Thus, one of skill in the art would have recognized that the Luker
flutes have a function, and that varying the diameter and inward extension
length of the flutes could affect their function as well as their aesthetics. As
recognized in KSR Int'l. v. Teleflex, Inc., 550 U.S. 398, 127 S. Ct. 1727
(2007), obviousness must be determined in light of “the inferences and
creative steps a person of ordinary skill in the art would employ” (id. at __,
127 S. Ct. at 1741). Appellants have provided no evidence that the
dimensions recited in the claims reflect anything more than “the predictable
use of prior art elements according to their established functions.” Id. at __,
127 S. Ct. at 1740.
Appellants also argue that claims 2 and 3 should be considered
separately, rather than grouped with claim 1 as previously argued (App. Br.
6), because the Decision “sets forth new and specific reasoning as to how
Luker should be interpreted and applied” (Req. Reh’g. 9). Appellants argue
that the suggested flute frequency of Luker “of 1.15 flutes per inch of
engagement perimeter is not suggestive of the 1.5-1.85 and 1.6-1.75
preferred ranges appearing in Claims 2 and 3” (id.).
We do not agree with Appellants’ position that the Decision “sets
forth substantially new grounds of rejection” (Req. Reh’g. 9), in the sense of
changing the basic thrust of the rejection. See In re Kronig, 539 F.2d 1300,
1302-03 (CCPA 1976). Nevertheless, for the sake of completeness, we have
considered Appellants’ arguments with regard to claims 2 and 3.
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Appellants argue that Luker does not suggest the crush-resistant
disposable lids of claims 2 and 3 having “from about 1.5 to about 1.85 flutes
per inch of engagement perimeter” (claim 2) or “from about 1.6 to about
1.75 flutes per inch of engagement perimeter” (claim 3). This argument is
not persuasive. As discussed in the Decision, Luker discloses a disposable
lid having thirty-six flutes but does not disclose the perimeter size of the
disposable lid. The size of the flutes (or number of flutes per inch) will
therefore vary depending on the size of the plate. For example, a plate with
a diameter of seven inches would have a perimeter of about 22 inches (7
inches x π), or 36/22 = 1.64 flutes per inch. Appellants have provided no
basis for concluding that a skilled artisan would not have considered it
obvious to make Luker’s disclosed container with a seven-inch diameter.
Thus one of skill in the art would understand Luker to suggest disposable
lids having a number of flutes per inch that is within the ranges specified in
claims 2 and 3.
Appellants also argue that “the comparative data supplied with the
August, 2004 Declaration of record [establishes] that the range of 1.5-1.85
flutes per inch of engagement perimeter (as embodied by an Example with
1.67 flutes per inch of engagement perimeter) is clearly superior to a
geometry with slightly more than 2 flutes per inch” (Req. Reh’g. 9).
Appellants argue that “[r]eversal of all of the Luker obviousness rejections is
… warranted in view of the evidence of superior results submitted” in the
Declarations of Gerald Van Handel submitted March 2004 and August 2004
(Req. Reh’g. 11).
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Appellants’ argument is not persuasive. “Mere improvement in
properties does not always suffice to show unexpected results.” In re Soni,
54 F.3d 746, 751 (Fed. Cir. 1995). “[W]hen unexpected results are used as
evidence of nonobviousness, the results must be shown to be unexpected
compared with the closest prior art.” In re Baxter-Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991).
Here, the March 2004 Declaration provides evidence that lids having
outwardly convex flutes have superior crush resistance compared to lids
having outwardly concave flutes, when tested with a bar across the center of
the lid (March 2004 Decl., ¶4 and Fig. 1). The August 2004 Declaration
provides evidence that lids having 1.67 outwardly convex flutes per inch
have superior crush resistance compared to lids having slightly more than 2
outwardly convex flutes per inch, when tested with a center probe (August
2004 Decl., ¶¶6-8).
However, there is no evidence of record, either the declarations or the
Specification, to establish that these results are unexpected. Further, the
declarations do not provide a comparison of the claimed lid to the lid taught
by Luker, the closest prior art, which has 36 outwardly convex flutes.
Therefore, the record as currently constituted does not establish that the
claimed lids are unexpectedly superior to the lids taught by the closest prior
art. Appellants’ argument that “Luker discloses no particular diameter, nor
any particular size; accordingly, there is no more specific prior art geometry
to compare” (Req. Reh’g. 11) is not persuasive. The March 2004
Declaration includes testing results using a “Conventional 9" Lid” and a
“conventional 10" Lid” (Fig. 1); Appellants have provided no reasonable
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basis for concluding that such “conventional” lid sizes could not also have
been tested with the 36-flute design of Luker.
Finally, Appellants argue that “it is error to rely on drawings for
specific disclosure not supported by text” (Req. Reh’g. 13). Appellants
argue that the Decision erred in stating that Luker’s Fig. 1 shows flat
sections between flutes because Luker’s text at col. 2 and Luker’s Figure 3
show that these cited flat portions are actually inwardly convex (or
outwardly concave) surfaces (id.).
This argument is not persuasive. As set forth in the Decision (page 9),
the text of Luker provides that the surfaces of the Luker lid that are cited by
Appellants as being concave flutes are actually surfaces that all lie in a
circular envelope, i.e. flat surfaces. The reference to Fig. 1 in the Opinion
was merely for further illustration.
SUMMARY
Appellants’ rehearing request correctly points out that an argument
made in the Appeal Brief with regard to the Van Handel Declaration of
August 2004 was overlooked. The oversight has been corrected and the
argument has been addressed. We have considered Appellants’ arguments
with respect to claims 2 and 3, but decline to change the disposition of those
claims. We do not consider any other change in the previous opinion to be
needed.

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REHEARING DENIED

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