COOL GEAR INTERNATIONAL, LLC

Patent Trials and Appeals Board

Mar 31, 2022

2022001627 (P.T.A.B. Mar. 31, 2022)

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. 14/768,950 08/19/2015 Donna Roth 29468.105019 US 5010 59081 7590 03/31/2022 King & Spalding, LLP (Houston) Attn: IP Docketing Department 1100 Louisiana Street, Suite 4100 Houston, TX 77002-5213 EXAMINER NEWAY, BLAINE GIRMA ART UNIT PAPER NUMBER 3735 NOTIFICATION DATE DELIVERY MODE 03/31/2022 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): houpatentdocket@kslaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DONNA ROTH and TROY KYLE Appeal 2022-001627 Application 14/768,950 Technology Center 3700 Before BENJAMIN D. M. WOOD, MICHELLE R. OSINSKI, and BRANDON J. WARNER, Administrative Patent Judges. WOOD, 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 1-11. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Cool Gear International LLC. Appeal Br. 2. Appeal 2022-001627 Application 14/768,950 2 CLAIMED SUBJECT MATTER The claims are directed to a container with a cap that comprises a plane defining an opening and a slidable closure adapted to seal the opening. Spec. 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A cap comprising: a straight, horizontal plane defining an opening; and a slidable closure adapted and configured to seal the opening, the slidable closure comprising: a projection extending above an external surface of the plane; and a flexible seal coupled to the projection and located on an internal surface of the plane opposite the projection, the flexible seal configured to slide between an open position and a closed position of the opening, the flexible seal comprising: a connection portion coupled to the projection; a sealing portion having a profile that substantially corresponds to a shape of the opening, the sealing portion including a peripheral ring defining an uppermost portion of the sealing portion; and a flexible hinge directly connected to the sealing portion and arranged in an arcuate manner between the connection portion and the sealing portion without being fixed to a remainder of the cap, the flexible hinge having an arcuate structure that biases the peripheral ring of the sealing portion against the internal surface and around the opening such that the sealing portion is prevented from entering the opening when the slidable closure is in the closed position, the sealing portion being displaced horizontally along the horizontal plane from the opening when the slidable closure is in the open position, wherein the flexible seal prevents the passage of a beverage therethrough when in the closed position and allows the passage of the beverage when in the open position. Appeal 2022-001627 Application 14/768,950 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Husted US 2,475,896 July 12, 1949 Payne US 4,138,033 Feb. 6, 1979 Kim US 2005/0051552 A1 Mar. 10, 2005 Karam US 2009/0001090 A1 Jan. 1, 2009 REJECTIONS Claims Rejected 35 U.S.C. § References 1-10 103(a) Payne, Husted, Kim 11 103(a) Payne, Husted, Kim, Karam OPINION Claims 1-10-§ 103-Payne, Husted, and Kim Appellant only argues the patentability of claim 1. Appeal Br. 4-15. We select claim 1 as representative of the appealed claims, and decide the appeal of claims 1-10 on the basis of claim 1 alone. 37 C.F.R. § 41.37(c)(1)(iv) (2022). The Examiner finds that Payne teaches a cap comprising: (1) a straight, horizontal plane defining an opening; and (2) a closure comprising a seal that prevents the passage of a beverage therethrough when the closure is in the closed position and allows the passage of the beverage when the closure is in the open position. Final Act. 3 (citing Payne Fig. 1). The Examiner acknowledges that Payne’s closure is not slidable, and that its seal is not flexible and lacks a projection as well as other claim elements. Id. Appeal 2022-001627 Application 14/768,950 4 The Examiner finds that Husted teaches a slidable closure comprising a projection extending above an external surface of a plane, and a seal coupled to the projection and located on an internal surface of the plane opposite the projection, the seal configured to slide between an open position and a closed position of the opening, the seal comprising a connection portion coupled to the projection, the slidable closure not being fixed to a remainder of the cap, and the seal displaceable horizontally along the horizontal plane from the opening when the slidable closure is in the open position. Id. at 3-4 (citing Husted 1:52-55, Figs. 1-5). The Examiner determines that it would have been obvious to one of ordinary skill in the art to substitute Husted’s slidable closure for Payne’s closure to “provid[e] a sliding closure that prevents contamination of the content resulting from touching the closure with dirty hands.” Id. at 4. The Examiner also characterizes the modification as “the substitution of one element for another known in the field,” yielding “predictable results.” Id. The Examiner acknowledges that Payne, as modified by Husted, fails to disclose that the seal is flexible and comprises a sealing portion that substantially corresponds to the shape of the opening and a peripheral ring defining an uppermost portion of the sealing portion, as well as the claimed flexible hinge. The Examiner finds, however, that Kim teaches an opening being closed by a flexible seal having a peripheral ring or gasket defining an uppermost portion of the sealing portion, as well as a flexible hinge having the claimed shape and angle, and “the sealing portion being prevented from entering the opening because it is in sealing engagement with the underside of the top wall and the top of the gasket is substantially horizontal.” Id. at 5 (citing Kim ¶ 31, Fig. 9). The Examiner determines that it would have been Appeal 2022-001627 Application 14/768,950 5 obvious to one of ordinary skill in the art to modify Payne’s seal to have a flexible hinge and a sealing portion with a peripheral ring or gasket, as taught by Kim, “for the predictable result of easing the camming of the raised portion and providing a better seal when the lid is closed.” Id. We have considered Appellant’s arguments in support of the patentability of claim 1, but find them unpersuasive. Accordingly, we sustain the Examiner’s rejection of claim 1 under § 103 for essentially those reasons expressed in the Final Action and Answer, and add the following primarily for emphasis. Appellant argues that: Payne does not appear to show or suggest “a slidable closure” or “a flexible seal,” let alone “a slidable closure adapted and configured to seal the opening, the slidable closure comprising: . . . a flexible seal . . . configured to slide between an open position and a closed position of the opening,” as recited in claim 1. Appeal Br. 6; see also id. (“[t]he ‘second portion 12’ . . . of Payne is not the same as a ‘slidable closure’ . . . as recited in claim 1”); id. at 7 (“‘[A] sealing engagement’ . . . or ‘a seal’ . . . of Payne is not the same as ‘a slidable closure adapted and configured to seal the opening, the slidable closure comprising: . . . a flexible seal . . . .’”); id. at 8 (“Payne appears silent as to ‘a slidable closure adapted and configured to seal the opening, the slidable closure comprising . . . a flexible seal”); id. at 11 (asserting that the “sealing engagement” of second section 12 “is not the same as a ‘slidable closure,’ as recited in claim 1). These arguments are unavailing because, as the Examiner notes (Ans. 3-4), the rejection relies on the combination of Payne, Husted, and Kim to teach the claimed slidable closure and flexible seal, not on Payne alone. See In re Merck & Co., Inc., 800 F.2d 1091, 1097-98 (Fed. Appeal 2022-001627 Application 14/768,950 6 Cir. 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.” (citations omitted)). Similarly, Appellant argues that “Husted appears silent as to a ‘flexible hinge’” of claim 1 (Appeal Br. 11), and Kim “fails to show or suggest a combination including a ‘slidable closure’ [and] a ‘flexible seal’ . . . as recited in claim 1” (Appeal Br. 12); see also id. at 13 (arguing that Kim’s structure “is not the same as ‘the flexible seal configured to slide between an open position and a closed position.’”). These arguments are unpersuasive for the same reason: They are not responsive to the rejection as articulated by the Examiner, which relies on: (1) Kim (not Husted) to teach the flexible hinge; (2) the combination of Payne and Husted to teach the claimed slidable closure; and (3) the combination of Payne, Husted, and Kim to teach the claimed flexible seal. Final Act. 3-5. Appellant also challenges the Examiner’s findings regarding Kim. See, e.g., Appeal Br. 12 (“Kim fails to show . . . a ‘flexible seal’ . . . [and] ‘a flexible hinge.’”).2 Appellant does not, however, support these challenges with evidence or persuasive technical reasoning. For example, Appellant 2 See also Appeal Br. 12-13 (Kim’s describing “‘the gasket in sealing engagement with the under side of the top wall’ in terms of ‘[w]ith the valve member separated from the top wall, spring arm 52 urg[ing] the valve member and gasket 53 in an upward direction’ . . . is not the same as ‘the flexible seal configured to slide between an open position and a closed position of the opening’ and ‘[a] flexible hinge having an arcuate structure that biases the peripheral ring of the sealing portion against the internal surface and around the opening such that the sealing portion is prevented from entering the opening when the slidable closure is in the closed position,’ as recited in claim 1.”). Appeal 2022-001627 Application 14/768,950 7 does not explain why the Examiner erred in finding that Kim’s gasket 53 and arcuate resilient spring arm 52, depicted in Figure 9 of Kim, correspond to the claimed flexible seal and flexible hinge, respectively. Appellant next argues that Husted does not qualify as analogous art. Appeal Br. 14. Appellant asserts that Husted “is not from the same field of endeavor as the present disclosure,” because “Husted is directed towards ‘a cigarette case adapted to contain and protect an open pack of cigarettes, and give access to such pack only when desired,” whereas “the pending application involves ‘a cap’ that can be ‘coupled to [a] container.” Id. (citing Husted 1:5-8; Spec. ¶ 25). Appellant also argues that Husted “is not reasonably pertinent to the particular problem faced by” Appellant, because it “solves a different problem from the one addressed by the pending application - improvement of ‘a cigarette case.’” Id. “Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citing In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986)). Appellant’s arguments are based on Husted’s container being used to contain cigarettes. While true, Appellant has not persuaded us that we should consider the relevant field of endeavor to be limited to containers for cigarettes, or that Husted’s disclosure is only reasonably pertinent to problems associated with cigarette containers, particularly when we have been directed to “construe the scope of analogous art broadly.” Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (citing KSR Appeal 2022-001627 Application 14/768,950 8 Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 402 (2007)). Here, for example, Appellant’s Specification broadly describes the purpose of the invention as satisfying a “need for reusable containers.” Spec. 1. The field of endeavor can therefore reasonably be considered the field of reusable containers. Husted’s cigarette package is reusable. See, e.g., Husted 1:9-14 (stating that its case is adaptable to hold different sizes of cigarettes). Moreover, we find nothing in Husted’s description of the structure of its container that would suggest to one of ordinary skill in the art that its use would be limited to containing cigarettes. On the contrary, Husted describes its container as providing “an almost hermetic seal” that “completely block[s],” e.g., “particles of dirt.” Id. at 2:24-28. Husted also describes its container as “not only entirely sift and dust proof, but, for all practical purposes, impervious to the penetration, in either direction, of moisture vapor, or even of gases.” Id. at 3:24-29. One of ordinary skill in the art would likely have considered such attributes as beneficial for containers for many different items. Thus, Husted’s container would at least be in the same field of endeavor as that of the invention. See Unwired Planet, LLC v. Google, Inc., 841 F.3d 995, 1001 (Fed. Cir. 2016) (“The field of endeavor of a patent is not limited to the specific point of novelty, the narrowest possible conception of the field, or the particular focus within a given field.”). For the above reasons, we sustain the Examiner’s rejection of claims 1-10 as unpatentable over Payne, Husted, and Kim. Claim 11-§ 103-Payne, Husted, Kim, and Karam Appellant does not separately argue the patentability of claim 11, but relies on arguments made in support of the patentability of claim 1, from which claim 11 ultimately depends. Appeal Br. 15. Because, as discussed Appeal 2022-001627 Application 14/768,950 9 above, we found these arguments unpersuasive, we sustain the Examiner’s rejection of claim 11 as unpatentable over Payne, Husted, Kim, and Karam. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-10 103(a) Payne, Husted, Kim 1-10 11 103(a) Payne, Husted, Kim, Karam 11 Overall Outcome 1-11 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) (2022). AFFIRMED