Ex parte Wilkinson et al.

Board of Patent Appeals and Interferences

Oct 2, 1998

08359673 (B.P.A.I. Oct. 2, 1998)

Application for patent filed December 20, 1994. 1
According to appellants, the application is a continuation of
Application 07/943,949, filed September 11, 1992, now Patent
No. 5,383,558.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ROGER D. WILKINSON and
DEAN R. LINDSAY
__________
Appeal No. 96-2715
Application 08/359,6731
__________
ON BRIEF
__________
Before KRASS, JERRY SMITH, and BARRETT, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
Appeal No. 96-2715
Application 08/359,673
2
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 2, 3, 6-10, 24 and 25,
which constitute all the claims remaining in the application.
An amendment after final rejection was filed on July 18, 1995
and was entered by the examiner. This amendment resulted in
the removal of a rejection under 35 U.S.C. § 112.
The disclosed invention pertains to a sealed container
comprising a base, wide-mouth jar and a removable lid which
seals the wide-mouth opening with the lid.
Representative claim 24 is reproduced as follows:
24. A sealed container which is easily opened and
resealed comprising:
(a) a base, wide-mouth jar for containing a substance,
said jar including:
(1) a bottom wall;
(2) a side enclosure extending upwardly from said
bottom wall and including an upper portion disposed radially
about a central axis with a screw thread about said upper
portion; and
(3) a curved upper wall extending inwardly and
upwardly from said upper portion of said side enclosure and
radially about the central axis, said curved upper wall
forming a truncated dome, and said upper wall including a
Appeal No. 96-2715
Application 08/359,673
3
circular brim which defines a wide-mouth opening for said jar;
and
(b) a removable lid for said jar which seals said wide-
mouth opening, said lid including:
(1) a top wall disposed about a central axis;
(2) an encircling member extending downwardly from
said top wall and radially about the central axis, said
encircling member including a screw thread which matingly
engages with the screw threads located at the upper portion of
said side enclosure; and
(3) a circular flexible flange extending downwardly
from said lid and radially about said central axis, said
flexible flange having a tip which is radially flexed relative
to a remainder of said flange upon engagement with said curved
upper wall of said base jar to seal therewith as the screw
threads on the upper portion of the side enclosure of the base
jar matingly engage with the screw threads on the encircling
member of the removable lid.
The examiner relies on the following references:
Novitch 3,811,591 May 21, 1974
Abe et al. (Abe) 4,907,709 Mar. 13, 1990
Bourdier et al. (Bourdier) 2,431,432 Feb. 15, 1980
(French Patent Publication)
Claims 2, 3, 6-10, 24 and 25 stand rejected under 35
U.S.C. § 103. As evidence of obviousness the examiner offers
Abe in view of Bourdier with respect to claims 2, 3, 6-9, 24
and 25, and adds Novitch with respect to claim 10. The final
Appeal No. 96-2715
Application 08/359,673
4
rejection also contained a rejection of all the claims on the
ground of obviousness-type double patenting. This rejection
was not repeated in the answer because appellants indicated a
willingness to file a terminal disclaimer rather than contest
this rejection. Rather than repeat the arguments of
appellants or the examiner, we make reference to the brief and
the answer for the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the
evidence of obviousness relied upon by the examiner as support
for the rejections. We have, likewise, reviewed and taken
into consideration, in reaching our decision, the appellant’s
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejections and arguments in
rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record
before us, that the evidence relied upon and the level of
skill in the particular art would not have suggested to one of
ordinary skill in the art the obviousness of the invention as
Appeal No. 96-2715
Application 08/359,673
Although the rejection of claim 10 relies on an2
additional reference than the other claims, appellants make no
arguments with respect to the separate rejection of claim 10.
Therefore, our discussion of claim 24 will dispose of claim 10
as well.
5
set forth in claims 2, 3, 6-10, 24 and 25. Accordingly, we
reverse.
Appellants have indicated that for purposes of this
appeal the claims will stand or fall together in the following
two groups: Group I has claims 24, 25, 2, 3 and 8-10 , and2
Group II has claims 6 and 7 [brief, page 3]. Consistent with
this indication appellants have made no separate arguments
with respect to any of the claims within each group.
Accordingly, all the claims within each group will stand or
fall together. Note In re King, 801 F.2d 1324, 1325, 231 USPQ
136, 137 (Fed. Cir. 1986); In re Sernaker, 702 F.2d 989, 991,
217 USPQ 1, 3 (Fed. Cir. 1983). Accordingly, we will only
consider the rejection against claims 24 and 6 as
representative of all the claims on appeal.
We consider first the rejection of independent claim
24 as unpatentable over the teachings of Abe and Bourdier. In
Appeal No. 96-2715
Application 08/359,673
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rejecting claims under 35 U.S.C. § 103, it is incumbent upon
the examiner to establish a factual basis to support the legal
conclusion of obviousness. See In re Fine, 837 F.2d 1071,
1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the
examiner is expected to make the factual determinations set
forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ
459, 467 (1966), and to provide a reason why one having
ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to
arrive at the claimed invention. Such reason must stem from
some teaching, suggestion or implication in the prior art as a
whole or knowledge generally available to one having ordinary
skill in the art. Uniroyal Inc. v. Rudkin-Wiley Corp., 837
F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert.
denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v. Delta Resins
& Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657, 664
(Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986); ACS
Hospital Systems, Inc. v. Montefiore Hospital, 732 F.2d 1572,
1577, 221 USPQ 929, 933 (Fed. Cir. 1984). These showings by
the examiner are an essential part of complying with the
Appeal No. 96-2715
Application 08/359,673
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burden of presenting a prima facie case of obviousness. Note
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992).
The examiner’s rejection of claim 24 indicates that
Abe essentially teaches all the features recited in claim 24
except for the ratio of the container mouth width to the width
of the container wall upper portion. The examiner cites
Bourdier as teaching this relationship, and the examiner
concludes that it would have been obvious to the artisan to
provide the container of Abe with the large-mouth opening of
Bourdier [answer, pages 3-4].
Appellants argue that the upper wall of Abe is not
curved, does not extend inwardly and upwardly from the upper
portion, and does not form a truncated dome as recited in
independent claim 24 [brief, page 3]. Appellants also argue
that Bourdier does not provide these missing teachings, and
that there would be no motivation to combine the Abe bottle
teachings with the Bourdier wide-mouth teachings [Id. at pages
3-4].
Appeal No. 96-2715
Application 08/359,673
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We agree with all of appellants’ arguments. The
enlarged view of upper wall 12 in Abe’s Figure 2B shows that
the upper wall does not extend inwardly as claimed, but
instead, the upper wall remains at the same diameter about the
central axis through its entire length. Thus, upper wall 12
does not form a truncated dome as claimed but is nothing more
than a truncated cylinder. Appellants are also correct that
flange 10b of Abe does not flex as recited in claim 24 because
the diameter of upper portion 12 is constant. Finally,
appellants are correct that there is absolutely no motivation
to apply the Bourdier wide-mouth teachings to the narrow-mouth
bottle of Abe. The Abe seal is specifically designed for a
narrow-mouth container as shown therein.
Thus, the examiner has erroneously identified
recitations of independent claim 24 as being present in Abe
when they are not taught therein. Since the examiner has not
addressed the obviousness of these differences between Abe and
the claimed invention, the examiner has failed to establish a
prima facie case of obviousness. Accordingly, we do not
sustain the rejection of claims 24, 25, 2, 3 and 8-10. Since
Appeal No. 96-2715
Application 08/359,673
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claims 6 and 7 depend from claim 24, we also do not sustain
the rejection of these claims.
In summary, we have not sustained the examiner’s
rejection of the claims under 35 U.S.C. § 103. Accordingly,
the decision of the examiner rejecting claims 2, 3, 6-10, 24
and 25 is reversed.
REVERSED
)
ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH )
Administrative Patent Judge ) APPEALS AND
Appeal No. 96-2715
Application 08/359,673
10
)
) INTERFERENCES
)
LEE E. BARRETT )
Administrative Patent Judge )
sd
Thomas R. Savoie
Patent Law Department (RA-6N)
Kraft General Foods Inc.
250 North Street
White Plains, NY 10625