Ex Parte Accardo

Board of Patent Appeals and Interferences

May 29, 2003

09635634 (B.P.A.I. May. 29, 2003)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte CARL A. ACCARDO
____________
Appeal No. 2002-0957
Application No. 09/635,634
____________
ON BRIEF
____________
Before COHEN, NASE and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1 and
20-23. Claims 8, 15 and 20-25 were subsequently allowed in response to the
amendment after final filed October 23, 2001 (Paper No. 10). Consequently, this
appeal involves only claim 1. Claims 2-7, 9-14 and 16-19 are withdrawn from
consideration as being directed to a non-elected species. No other claims are pending
in this application.
We AFFIRM.
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Application No. 09/635,634
Page 2
BACKGROUND
The appellant's invention relates to containers useful for holding joint compound
and similar material that can be mixed within the container and scooped therefrom for
application with an applicator such as a taping knife or trowel and, more particularly, to
double bay containers suitable for retaining in a second bay material spilled over the
edge of a first bay as it is scooped therefrom (specification, page 1). Claim 1, the sole
claim before us on appeal, reads as follows:
1. An open topped container comprising a first receptacle
and a second receptacle joined at a common upper edge
each receptacle having a rectangular open top and each
receptacle enclosing a volume on all sides except the open
top wherein panels extending from the common edge
provide a sufficient length of space therebetween to rest on
at least a portion of a forearm extended by a user
therebetween and to accommodate at least a portion of a
thumb of a hand of the user extended beneath and around
one of the receptacles and wherein the first receptacle, the
receptacle that is on the inside of the forearm as the
container rests on the forearm, provides a curved path for
raking material onto an applicator.
The examiner relied upon the following prior art references of record in rejecting
claim 1:
Pratt 1,757,475 May 6, 1930
De Murguiondo 2,162,162 Jun. 13, 1939
Budd 4,800,845 Jan. 31, 1989
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Application No. 09/635,634
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The following rejections are before us for review.
(1) Claim 1 stands rejected under 35 U.S.C. § 102(b) as being anticipated by Budd.
(2) Claim 1 stands rejected under 35 U.S.C. § 102(b) as being anticipated by De
Murguiondo.
(3) Claim 1 stands rejected under 35 U.S.C. § 102(b) as being anticipated by Pratt.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the answer
(Paper No. 17) for the examiner's complete reasoning in support of the rejections and to
the brief and reply brief (Paper Nos. 16 and 18) for the appellant's arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claim, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
At the outset, we note that the limitation in claim 1 “panels extending from the
common edge provide a sufficient length of space therebetween to rest on at least a
portion of a forearm extended by a user therebetween and to accommodate at least a
portion of a thumb of a hand of the user,” the only claim limitation argued by appellant
not to be met by the applied prior art, does not require a space wide or long enough to
accommodate any portion of a forearm within the space. Rather, the claim language
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Application No. 09/635,634
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1 Note that the top wall 12 and one sidewall portion depending therefrom may be considered to be
one of the panels called for in claim 1, with the other sidewall portion depending from the top wall 12 being
considered to be the other panel called for in claim 1.
simply requires the capability of the space to rest on a portion of the user’s forearm and
to accommodate a portion of a thumb (for example, a thumbnail or pinch of skin) of the
user’s hand. We also note that the claimed container has not been limited so as to
require any particular type or size of user. Accordingly, claim 1 does not preclude the
referenced user being a child with a small forearm and thumb, for example.
Budd discloses a disposable pet food dish comprising two receptacles (cavities
22, 32) separated by panels or sidewalls extending upwardly toward a common edge1
so as to define a space therebetween (see Figure 2). The only arguments made by
appellant as to why claim 1 is not anticipated by Budd are that (1) considering the
obvious dimensions of the pet food dish there is not enough room to clasp the bottom
of one of the compartments with a portion of a thumb in the space between the
compartments let alone support the dish by inserting a portion of that hand’s forearm in
the remaining space and (2) the surrounding skirt of Budd’s dish provides an
unsurmountable impediment to actually supporting the pet dish with a forearm between
the compartments (brief, page 5). Appellant has not asserted that any other limitation
of claim 1 is not met by Budd.
As for the first argument, as discussed above, claim 1 simply calls for the space
between the receptacles defined by the panels to be of sufficient length to
accommodate “at least a portion of a thumb of a hand of the user” (emphasis ours), not
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Application No. 09/635,634
Page 5
the entirety of a thumb. We find no error in the examiner’s determination that the space
defined between the recesses 22, 32 of Budd’s dish is of sufficient length to meet this
broad limitation. We also note that appellant’s first argument is not commensurate in
scope with the language of claim 1, which merely requires sufficient length of space
between the panels to rest on at least a portion of a forearm; the claim does not require
sufficient length of space to permit insertion of a forearm therebetween. In any event,
we agree with the examiner that the space between the recesses 22, 32 of Budd’s dish
is of sufficient length to rest on at least a portion, which could be as small as a single
point, of a forearm of a user. As for appellant’s second argument, while the
surrounding skirt might provide an impediment to the entire length of space defined
between the recesses 22, 32 resting on the forearm of a user, claim 1 is not so limiting.
From our perspective, the skirt would not prevent the space between the recesses 22,
32 from resting on a portion, which could be as small as a single point, of a user’s
forearm. For example, the dish is capable of being supported by a user such that the
skirt rests on one portion of the user’s forearm while a portion of the space between the
recesses rests on another portion of the user’s forearm.
In that we have found neither of appellant’s arguments persuasive of any error
on the part of the examiner in determining the subject matter of claim 1 to be
anticipated by Budd, we shall sustain this rejection.
We reach a similar conclusion with regard to the examiner’s rejection of claim 1
as being anticipated by Pratt. While Figure 3 of Pratt illustrates the lateral spacing at
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Application No. 09/635,634
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the bottom of the walls 3 forming the partition of Pratt’s tray to be on the order of the
diameter of the finger and thumb illustrated therein, this in no way indicates that the
spacing is incapable of accommodating a portion of a thumb of that user. Further, while
this spacing may not be sufficient to accommodate the entirety of a user’s forearm, it
certainly appears capable of resting on a portion of a user’s forearm, for the same
reasons discussed above with regard to the Budd reference, notwithstanding the
presence of the skirt of the tray. Accordingly, appellant’s arguments on pages 6 and 7
of the brief do not persuade us of any error on the part of the examiner in rejecting
claim 1 as being anticipated by Pratt. It follows that we shall sustain this rejection as
well.
Turning now to the rejection based on De Murguiondo, we note that De
Murguiondo’s ice cube tray comprises a plurality of cells 3 separated by inclined walls 6
so as to define spaces between the cells. Appellant’s sole argument as to why the
subject matter of claim 1 is not anticipated by De Murguiondo is that “[o]ne skilled in the
art would not find enough space between a pair of rows of compartments on a ice tray
to accommodate a portion of a thumb and a portion of that thumb’s forearm even using
hindsight from Appellant’s invention” (brief, page 6).
In the first place, we observe that appellant’s claim 1 is directed to a container
and not to a method of supporting a container on a user’s forearm. It is well settled that
the recitation of an intended use for an old product does not make a claim to that old
product patentable. In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431
Appeal No. 2002-0957
Application No. 09/635,634
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(Fed. Cir. 1997). In this case, appellant’s claim 1 calls for a container comprising first
and second receptacles joined at a common upper edge “wherein panels extending
from the common edge provide a sufficient length of space therebetween to rest on at
least a portion of a forearm extended by a user therebetween and to accommodate at
least a portion of a thumb of a hand of the user.” We find no requirement in claim 1
that the panels define a length of space sufficient to accommodate a portion of the
user’s forearm as appellant’s argument implies. Rather, the claim simply requires that
the length of space be sufficient to rest on a portion of the user’s forearm. In any event,
as explained above, a portion of a thumb can be as small as a thumb nail or a pinch of
skin and a portion of a forearm can simply be a point on that forearm. With this in mind,
we share the examiner’s view that the spacing between the cells in De Murguiondo’s ice
tray is sufficient to rest on at least a portion of the forearm and to accommodate at least
a portion of a thumb, as called for in claim 1. Therefore, as this is the only limitation
argued by appellant not to be met by De Murguiondo, we shall sustain the examiner’s
rejection of claim 1 as being anticipated by De Murguiondo.
CONCLUSION
To summarize, the decision of the examiner to reject claim 1 under 35 U.S.C.
§ 102(b) is affirmed.
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Application No. 09/635,634
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No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 2002-0957
Application No. 09/635,634
Page 9
Archie W. Umphlett
6301 Golf Course Square
Alexandria, VA 22307