TC HEARTLAND LLC

Patent Trials and Appeals Board

Oct 30, 2020

2020001991 (P.T.A.B. Oct. 30, 2020)

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.
13/844,492 03/15/2013 Teodor Gelov 712287 4665
23460 7590 10/30/2020
LEYDIG VOIT & MAYER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON AVENUE
CHICAGO, IL 60601-6731
EXAMINER
BUECHNER, PATRICK M
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
10/30/2020 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):
Chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TEODOR GELOV, KAREN H. NICHOLS, and
DOUGLAS E. NORTON
Appeal 2020-001991
Application 13/844,492
Technology Center 3700
Before MICHAEL J. FITZPATRICK, MICHELLE R. OSINSKI, and
CARL M. DEFRANCO, Administrative Patent Judges.
DEFRANCO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 6–20, 24–27, 29, and 30, which
constitute all the claims pending in this application. Claims 4, 5, 21–23, 28,
and 31 are canceled. We have jurisdiction under 35 U.S.C. § 6(b). A

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as TC
Heartland LLC. Appeal Br. 1.

Appeal 2020-001991
Application 13/844,492

2
telephonic hearing was held October 8, 2020, the transcript of which was
entered into the record October 26, 2020.
We AFFIRM.
CLAIMED SUBJECT MATTER
Of the claims on appeal, claims 1, 15, and 24 are independent.
Claims 1 and 24 are directed to a “container for dispensing a product,”
whereas claim 15 is directed to a “method of making a container.” Appeal
Br. 9–11 (Claims App.). Independent claim 1 is reproduced below.
1. A container for dispensing a product comprising:
an upper end portion:
a body portion, the body portion extends away from the
upper end portion;
a cap portion, the cap portion is attached with a hinge to
one of the body portion and the upper end portion, the cap
portion has an open position and a closed position; and
a valve, the cap portion covers the valve when the cap
portion is in the closed position, the cap portion uncovers the
valve when the cap portion is in the open position, the container
includes an interior, the valve is located in the interior, the
valve has an upper surface, the valve has a lower surface,
the container includes a flange, the flange engages the
upper surface of the valve, the container includes a retention
feature to hold the valve, the retention feature is a protrusion,
the protrusion engages the lower surface of the valve.
Id. at 9 (emphases added).
Appeal 2020-001991
Application 13/844,492

3
EXAMINER REJECTIONS
Claims 1–3, 6–8, 10–20, and 27 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Morini,2 Statham,3 and Ramsey.4 Final
Act. 2–8.
Claims 9 and 29 stand rejected under § 103(a) as unpatentable over
Morini, Statham, Ramsey, and Hertz.5 Id. at 8–9.
Claims 24–26 and 30 stand rejected under § 103(a) as unpatentable
over Morini, Statham, and Hertz. Id. at 9–10.
ANALYSIS
A. Rejection of Claims 1–3, 6–8, 10–20, and 27
Appellant argues independent claims 1 and 15, and their respective
dependent claims 2, 3, 6–8, 10–14, 16–20, and 27, as a group. See Appeal
Br. 5–6. We select independent claim 1 for review, with the other claims
standing falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds, and Appellant does not challenge, that Morini
discloses the claim limitations of a container having (1) an upper end
portion, (2) a body portion, and (3) a cap portion attached with a hinge to the
to the upper end of the body portion. See Final Act. 2–3. The Examiner
concedes, however, that Morini’s container fails to include the claim
limitation of a valve located in the interior of the container. Id. at 3. For
that missing limitation, the Examiner points to Statham’s teaching of a

2 U.S. Patent Application Publication No. 2005/0242132 A1, published
Nov. 3, 2005 (“Morini”).
3 U.S. Patent 1,989,714, issued Feb. 5, 1935 (“Statham”).
4 U.S. Patent Application Publication No. 2006/0249545 A1, published
Nov. 9, 2006 (“Ramsey”).
5 U.S. Patent No. 3,063,601, issued Nov. 13, 1962 (“Hertz”).
Appeal 2020-001991
Application 13/844,492

4
structurally similar container (collapsible tube 1) that includes a self-sealing
valve (rubber diaphragm 2) held in place between a flange (shoulder 4) and a
retention member (washer 5) proximate the opening of the tube. See id.
(citing Statham, Fig. 1); see also Statham, 1:1–5, 2:3–15. According to the
Examiner, a skilled artisan would have deemed it obvious to provide
Statham’s self-sealing valve proximate the opening of Morini’s container “in
order to provide controlled dispensing” and “to prevent foreign contaminants
from entering the container when the cap is opened.” Final Act. 3.
The Examiner also acknowledges that Statham’s retention member
(washer 5) is arguably not a “protrusion” on the container itself, as recited
by claim 1. Id. As such, the Examiner looks to Ramsey’s teaching of using
an integral protrusion (annular bead 22) within the opening of a squeezable
container so as to hold in place the lower surface of a self-closing valve and
finds that a skilled artisan would have undertaken to combine that teaching
with the modified Morini/Statham tube so as “to more securely retain
[Statham’s] valve in place.” Id. (citing Ramsey ¶ 23, Fig. 3); see also
Ramsey ¶¶ 1–2 (stating that Ramsey’s self-closing valve “is designed to
prevent leakage from the valve during transport or storage of the
[squeezable] container”).
We do not perceive any error in the Examiner’s findings and
reasoning despite Appellant’s arguments to the contrary. More specifically,
in disputing the Examiner’s rejection, Appellant argues repeatedly that a
skilled artisan would not have combined Statham’s teaching of a self-sealing
valve, nor Ramsey’s teaching of a protrusion for retaining such a valve, with
Morini’s container because Morini “teaches away from adding separate
parts, such as a valve.” Appeal Br. 5–6; Reply Br. 4–5. In support,
Appeal 2020-001991
Application 13/844,492

5
Appellant points to Morini’s stated objective of “limiting the number of
separate parts needed to make the [tube],” thereby, “reducing to a minimum
production waste.” Appeal Br. 5 (citing Morini ¶ 5); see also Reply Br. 4
(same).
For several reasons, we do not find that argument persuasive. First,
the fact that Morini states a desire to simplify construction of its tube in an
effort to minimize cost would not, in our view, have steered a skilled artisan
away from realizing the benefit of incorporating a simple valve, such as
Statham’s, in the opening of Morini’s squeezable tube. This is true because,
despite its stated objective, Morini nonetheless acknowledges that “[i]t is,
however, possible to realise the upper part of the tube . . . as a separate part
which is then connected to the [main] tube, for example by means of a
known-type connection of a screw- or joint-type, between the upper part and
the tube itself.” Morini ¶ 26 (emphasis added). That express realization by
Morini that its squeezable tube is not limited to a single-piece runs counter
to Appellant’s argument that a skilled artisan would have avoided
incorporating a separate part, such as a valve, into Morini’s tube.
Moreover, Statham, which like Morini is directed to a squeezable or
collapsible tube for dispensing cream products, expressly provides a reason
to combine its self-sealing valve with Morini’s tube—“to provide means for
preventing extrusion of the material from the tube upon the accidental
application of pressure to the container.” Statham, 1:26–30. And also like
Morini, Statham espouses a desire that the tube be simple in construction—
“[a] further object is to provide a self-operating valve which may be
economically constructed and applied to a collapsible tube.” Id. at 1:24–26.
Those express teachings by Statham provide clear and indisputable support
Appeal 2020-001991
Application 13/844,492

6
for the Examiner’s reason to combine Statham’s self-sealing valve into the
opening of Morini’s squeezable tube.
We also reject Appellant’s argument that “Ramsey does not suggest a
combination with Morini or Statham.” Appeal Br. 6. That argument fails
for the simple reason that Ramsey states essentially the same reason as
Statham for adding a self-sealing valve to a squeezable tube such as
Morini’s —to prevent leakage from the squeezable container, while allowing
easy dispensing of a gel-like product. See Ramsey ¶¶ 1–6. Thus, given that
the references themselves provide more than adequate support for the
Examiner’s reason to combine their respective teachings, we are not
persuaded of error in the Examiner’s combination of Statham’s self-sealing
valve, as modified to include Ramsey’s integral protrusion, with Morini’s
squeezable tube.
We also find unpersuasive Appellant’s argument that the Examiner
“fails to explain why the retention feature of Ramsey should be added to
Statham when Statham has its own retention feature which is different than
Ramsey’s retention feature.” Reply Br. 5–6; see also Appeal Br. 6 (raising
similar argument). At the outset, we note that, contrary to Appellant’s
assertion, the Examiner explained succinctly that a skilled artisan would
have been led to add Ramsey’s bead protrusion to the modified
Morini/Statham tube “in order to more securely retain the valve in place.”
Final Act. 3 (citing Ramsey ¶ 23). As for Appellant’s argument that a
skilled artisan would not undertake the proposed modification because
Statham and Ramsey “use different techniques to hold the valve” (Appeal
Br. 6, Reply Br. 5), we disagree.
Appeal 2020-001991
Application 13/844,492

7
Both Statham’s washer and Ramsey’s bead are structures that form an
annular ring around the neck of a collapsible dispensing tube to retain a self-
sealing valve. Compare Statham 2:3–12, Figs. 2, 6, with Ramsey ¶ 23,
Fig. 3. The mere fact that Statham’s retention washer 5 is structurally
separate from the tube’s neck, whereas Ramsey’s retention bead 2 is formed
integrally with the tube’s neck, does not, without more, convey a difference
that would have dissuaded a skilled artisan from combining their respective
teachings. See In re Larson, 340 F.2d 965, 968 (CCPA 1965) (integrating
two elements into one involves only a routine engineering expedient). As
the Examiner correctly found, Statham’s washer and Ramsey’s bead serve
the identical function of retaining a self-sealing valve within the neck of a
collapsible dispensing tube. See Final Act. 3; Ans. 14–15. As such, we
agree with the Examiner that a skilled artisan would have viewed the
modification of Statham’s retention structure as nothing more than the
simple substitution of one known element (Ramsey’s integrated bead) for
another (Statham’s washer) to yield a predictable result (more securely
retaining Statham’s valve in place within the neck of a dispensing tube). See
Ans. 15; see also Final Act. 5 (further discussing the “obvious substitution”
of Ramsey for Statham). That Ramsey’s retention bead is readily substituted
for Statham’s retention washer provides sufficient reason for why a skilled
artisan would have combined their respective teachings. See KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007).
In sum, we see no error in the Examiner’s rejection of claim 1 as
unpatentable over the combined teachings of Morini, Statham, and Ramsey.
In our view, the Examiner articulates sufficient reasoning with rational
underpinnings for why a skilled artisan would have been led to incorporate
Appeal 2020-001991
Application 13/844,492

8
Statham’s self-sealing valve for a dispensing tube into the neck of Morini’s
similarly-structured dispensing tube, and also to replace Statham’s washer
for retaining the self-sealing valve with Ramsey’s similarly-functioning
integrated bead, in a manner demonstrating that the claimed invention would
have been obvious. See Final Act. 3, 5. Thus, we affirm the rejection of
claim 1, as well as that of claims 2, 3, 6–8, 10–20, and 27, which fall
therewith. See 37 C.F.R. § 41.37(c)(1)(iv).
B. Rejection of Claims 9, 24–26, 29, and 30
In arguing for patentability of claims 9, 24–26, 29, and 30, Appellant
merely repeats the same arguments it made with respect to claim 1. See
Appeal Br. 6–8. Thus, for the same reasons discussed above, we affirm the
rejection of dependent claims 9 and 29 as unpatentable over Morini,
Statham, Ramsey, and Hertz, as well as the rejection of independent
claim 24 and dependent claims 26 and 30 as unpatentable over Morini,
Statham, and Hertz.
CONCLUSION
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–3, 6–8,
10–20, 27
103(a) Morini, Statham,
Ramsey
1–3, 6–8,
10–20, 27

9, 29 103(a) Morini, Statham,
Ramsey, Hertz
9, 29
24–26, 30 103(a) Morini, Statham,
Hertz
24–26, 30
Overall
Outcome
1–3, 6–20,
24–27, 29,
30

Appeal 2020-001991
Application 13/844,492

9
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED