Ex Parte Allen et alDownload PDFPatent Trial and Appeal BoardMay 17, 201613340776 (P.T.A.B. May. 17, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/340,776 12/30/2011 63638 7590 05/17/2016 STREETS & STEELE - IBM CORPORATION (ROC) 13100 WORTHAM CENTER DRIVE, SUITE 245 Suite 245 HOUSTON, TX 77065 Ira L. Allen 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 ATTORNEY DOCKET NO. CONFIRMATION NO. RPS9201l0099US 1 1318 EXAMINER MATHEW, FENN C ART UNIT PAPER NUMBER 3781 MAILDATE DELIVERY MODE 05/1712016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte IRA L. ALLEN, LAWRENCE A. CLEVENGER, KEVIN S. PETRARCA, and CARL J. RADENS Appeal2014-004954 Application 13/340,776 Technology Center 3700 Before JENNIFER D. BAHR, WILLIAM A. CAPP, and JAMES J. MAYBERRY, Administrative Patent Judges. MAYBERRY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Ira L. Allen, et al. (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner's rejections of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER The claims are directed to a self-locking container. Spec. i-f 1. Claims 1 and 12 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter: Appeal2014-004954 Application 13/340,776 1. An apparatus, comprising: a container having a top, an adjacent external thread and a channel intermediate the top and the thread; a lid having a top surface, an adjacent lip with an internal thread and a recess intermediate the top surface and the thread; a bolt movable within the channel of the container from a retracted position withdrawn from the recess to a locked position protruding into the recess; and a drive member to move the bolt from the retracted position to the locked position; wherein exposure to a predetermined threshold temperature with the lid threadably coupled to the container causes the drive member to engage and move the bolt from the retracted position to the locked position to prevent rotation and unthreading of the lid from the container. Appeal Br. 17, Claims App. REJECTIONS I. Claims 1-9 and 12-20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Morris (US 7;513;384 B2; issued Apr. 7; 2009) and Petrakis (US 7,455,668 B2, issued Nov. 25, 2008). II. Claims 10 and 11 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Morris, Petrakis, and Giordano (US 4,927,049, issued May 22, 1990). ANALYSIS Rejection I The Examiner finds that Morris discloses much of the subject matter of independent claims 1 and 12, except "a temperature actuated mechanism." Final Act. 2. The Examiner further finds that Petrakis discloses "a temperature actuated mechanism in order to provide indicia of 2 Appeal2014-004954 Application 13/340,776 spoilage, damage, or defect resulting from environmental exposure or the like." Id. The Examiner determines that "it would have been obvious to one of ordinary skill in the art at the time of the invention to modify Morris with a temperature sensitive actuator in order to provide indicia of spoiled, damaged, or defective products housed within the apparatus," thus arriving at the inventions of claims 1 and 12. Id. The Examiner further explains that "the suggested combination replaces Morris's spring-based actuation member with Petrakis's temperature-based actuation member." Answer 6. Appellants argue "that any combination of Morris and Petrakis ... would not result in the claimed invention." Appeal Br. 10. Appellants explain that a combination of the teachings of these references "would result in Morris' [ s] container including Morris' [ s] locking mechanism and Petrakis'[s] visual indication of spoilage." Id. Appellants argue that the Examiner does not provide any basis for modifying Morris's locking mechanism with Petrakis's actuator and that the only possible basis would be from "improper hindsight reconstruction of the claimed invention." Id. We agree. "Even under [the] 'expansive and flexible' obviousness analysis [of KSR], we must guard against 'hindsight bias' and 'ex post reasoning."' St. Jude Med., Inc. v. Access Closure, Inc., 729 F.3d 1369, 1381 (Fed. Cir. 2013) (citation omitted). The Examiner provides no reasoning for modifying Morris's locking mechanism with Petrakis' s actuator to lock Morris's container when a threshold temperature is reached. The Examiner's proffered reasoning-to provide indicia of spoilage, damage, or defect resulting from environmental exposure or the like-may support modifying Morris's container to include Petrakis' s visual indicator that a 3 Appeal2014-004954 Application 13/340,776 threshold temperature has been exceeded, thus providing an indicator that the container contents may have spoiled or are otherwise defective. See Appeal Br. 10. Going the step further and modifying Morris's locking mechanism by replacing its spring-based actuation member with Petrakis's temperature-based actuation member, however, could have only been gleaned from Appellants' Specification and, as such, constitutes improper hindsight reasoning. Appellants further argue that the Examiner's modification, even if proper, renders Morris unsatisfactory for its intended purpose. Appeal Br. 10. As Appellants explain, Morris's locking mechanism is intended to lock the lid to the container when the lid is screwed on. Id. at 11. Morris's mechanism is unlocked by disengaging slide 34 from stop 42 using actuator 60. Id. The Examiner's proposed modification would result in a container with a lid that is not locked when screwed onto the container but that permanently locks when a threshold temperature is exceeded. See id. A proposed modification that renders a device inoperable for its intended purpose teaches away from such a modification, further cutting against any rational reason to make the proposed modification. See In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). For the reasons above, we do not sustain the Examiner's rejection of independent claims 1 and 12 under 35 U.S.C. § 103(a) as being unpatentable over Morris and Petrakis. We also do not sustain the rejection of claims 2- 9, which depend, directly or indirectly, from claim 1, and claims 13-20, which depend, directly or indirectly, from claim 12, under 35 U.S.C. § 103(a) as being unpatentable over Morris and Petrakis. 4 Appeal2014-004954 Application 13/340,776 Rejection II In rejecting claims 10 and 11 under Rejection II, the Examiner relies on the same deficient reasoning to modify Morris with Petrakis discussed above in connection with our analysis of Rejection I. See Final Act. 3. Accordingly, we do not sustain the Examiner's rejection of claims 10 and 11 under 35 U.S.C. § 103(a) as being unpatentable over Morris, Petrakis, and Giordano. DECISION We reverse the Examiner's rejection of claims 1-9 and 12-20 under 35 U.S.C. § 103(a) as being unpatentable over Morris and Petrakis. We reverse the Examiner's rejection of claims 10 and 11 under 35 U.S.C. § 103(a) as being unpatentable over Morris, Petrakis, and Giordano. REVERSED 5 Copy with citationCopy as parenthetical citation