Ex Parte Balzeau

Board of Patent Appeals and Interferences

Aug 20, 2009

10653636 (B.P.A.I. Aug. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PASCAL BALZEAU
____________

Appeal 2009-002686
Application 10/653,636
Technology Center 3700
____________

Decided: August 20, 2009
____________

Before WILLIAM F. PATE, III, STEFAN STAICOVICI, and
KEN B. BARRETT, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Pascal Balzeau (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1-7, 9, 10, 14-19, 21-26, 28, 29, 34-38,
48, 52, 55, and 57. Claims 8, 11-13, 20, 27, 30-33, 39-47, 49-51, 53, 54, 56,
and 59-71 have been withdrawn. Claims 58 and 72 have been canceled.
Appellant’s representative presented oral argument on August 13, 2009. We
have jurisdiction over this appeal under 35 U.S.C. § 6 (2002).

THE INVENTION
Appellant’s invention is drawn toward a receptacle 10 including a
body 11 having a setback 17 and an opening 14, an insert 20 that is fixed in
the opening 14, and a closure member 50. Spec. 9, ¶¶ [0060], [0061] and
fig. 10. The body 11 can be made from a plastic, glass, or ceramic material.
Spec. 1, ¶ [0007].
Claims 1 and 38 are representative of the claimed invention and read
as follows:
1. A receptacle, comprising:
a receptacle body defining an enclosed chamber
having a single opening, said receptacle body
including a setback, said opening being disposed in
said setback;
an insert disposed in said opening and
extending in a length direction below said opening
into said enclosed chamber, said insert having an
outer periphery projecting above said opening and
a passage for extracting a substance from said
enclosed chamber; and
a closure member mounted on said insert
outward of said outer periphery so that said closure
member overlies at least a portion of said insert in
said length direction.
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38. A receptacle, comprising:
a receptacle body formed from a
material selected from the group consisting
of glass and ceramic, said receptacle body
defining an enclosed chamber having a
single opening, said receptacle body
including a setback, said opening being
disposed in said setback; and
an insert disposed in said opening and
having a passage for extracting a substance
from said receptacle body.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Flak US 5,918,777 Jul. 6, 1999
Garcia US 6,659,314 B2 Dec. 9, 2003

The following rejections are before us for review:
The Examiner rejected claims 1, 2, 6, 7, 9, 10, 14, 15, 18, 19, 21, 24-
26, 28, 29, 34, 37, 52, and 55 under 35 U.S.C. § 102(b) as anticipated by
Flak.
The Examiner rejected claims 3-5, 16, 17, 22, 23, 35, 36, 38, 48, and
57 under 35 U.S.C. § 103(a) as unpatentable over Flak and Garcia.

THE ISSUES
1. Has Appellant demonstrated that the Examiner erred in determining
that Flak teaches a receptacle (dispenser package) having a closure/dispenser
member (valve member 24e) mounted on an insert (fitment 36e) outward of
an outer periphery of the insert (fitment 36e) that projects above an opening
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in the body of the receptacle (opening 33e), as required by independent
claims 1, 19, 52, and 55?
2. Has Appellant demonstrated that the Examiner erred in determining
that it would have been obvious for a person of ordinary skill in the art to
replace the plastic container of Flak with the glass reservoir and the pump
dispenser of Garcia?
3. Has Appellant demonstrated that the Examiner erred in determining
that the recess of Flak’s container is in the shape of a cup?

SUMMARY OF DECISION
We AFFIRM-IN-PART.
FINDINGS OF FACT
The following enumerated findings of facts (FF) are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Flak teaches a dispensing package 20 for dispensing a viscous
liquid product, including a hollow container 22 having an
inwardly extending recess 28 (setback), a valve assembly 24
having a plastic fitment 36 (insert), and a plastic valve member
38 (closure/dispenser member). Flak, col. 1, ll. 1-2, col. 2, l. 66
through col. 3, l. 15, and figs. 1 and 2.
2. In the embodiment presented in Figure 14, Flak teaches a
container, including a fitment 36e (insert) disposed within an
opening 33e, in a recess 28e (setback) of the container and
extending both above and below the opening 33e. Further, Flak
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teaches a valve assembly 24e (closure/dispenser member) that
is mounted on the fitment 36e (insert). Flak col. 4, ll. 28-34 and
fig. 14.
3. An ordinary and customary meaning of the term “outer” is
“situated or belonging on the outside.” MERRIAM WEBSTER’S
COLLEGIATE DICTIONARY 825 (Tenth Ed. 1997).
4. An ordinary and customary meaning of the term “periphery” is
“the external boundary or surface of a body.” Id. at 865.
5. Flak discloses that the container 22, the fitment 36, and the
closure member 38 are made from plastic materials. Flak, col.
3, ll. 25-27 and fig. 2.
6. Flak further discloses that the plastic container 22 has flexible
walls 26 which are squeezed in order to dispense the viscous
liquid product from the plastic container. Flak, col. 2, l. 1 and
col. 3, ll. 1-2.
7. Garcia discloses a fluid dispenser including a glass reservoir 1,
(body) having a recess 15 (setback), an opening 18 in the
reservoir, and a pump 2 that is fitted through the opening 18.
Garcia, col. 1, ll. 12-13 and col. 2, l. 8-10, 24-25, and 35-36 and
fig. 1.
8. The recess 28 of Flak and the recess 15 of Garcia has a convex
shape. Flak, fig. 2 and Garcia, fig. 2.
9. The width of Flak’s recess 28 and Garcia’s recess 15 is the
same as the width of the container 22 and reservoir 1,
respectively. Id.
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10. An ordinary and customary meaning of the term “cup” is “an
open usu. bowl-shaped drinking vessel.” MERRIAM WEBSTER'S
COLLEGIATE DICTIONARY 283 (Tenth Ed. 1997).

PRINCIPLES OF LAW
Claim Construction
When construing claim terminology in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004).
Anticipation
"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference." Verdegaal Bros, Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
Obviousness
"Section 103 forbids issuance of a patent when 'the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.'" KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
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the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 ("While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.")

OPINION
Issue (1)
Each of independent claims 1, 19, 52, and 55 requires that the insert
positioned within the opening in the setback include an “outer periphery
projecting above said opening.” Independent claims 1 and 52 further require
a “closure member” that is “mounted on said insert outward of said outer
periphery.” Similarly, independent claims 19 and 55 require a “dispenser
member” that is “mounted on said insert outward of said outer periphery.”
Appellant argues that:
. . . Flak does not teach or suggest both "an insert
disposed in said opening and extending in a length
direction below said opening into said
enclosed chamber," and "a closure member
mounted on said insert outward of said outer
periphery so that said closure member overlies at
least a portion of said insert in said length
direction," as recited in claims 1 and 52, or the
similarly recited dispenser member of claims 19
and 55.
Br. 6-7.
In response, the Examiner takes the position that:
The device of Flak shows, in Fig. 14, an insert 36e
disposed in the opening 33e in the setback 28e
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where the insert extends in a length direction
below the opening into the chamber, see column 4,
lines 28-33, Flak also shows a closure member 24e
mounted on the insert overlying a portion of the
insert 62 in the length direction.
Ans. 4.
As noted in our findings of fact above, Flak shows in Figure 14 a
hollow container 22 having an inwardly extending recess 28e (setback), a
fitment 36e (insert) disposed within an opening 33e and extending both
above and below the opening 33e, and a valve assembly 24e
(closure/dispenser member) mounted on the fitment 36e (insert). FF 1 and
2.
However, neither the Examiner nor the Appellant has specifically
identified which part of the portion of the fitment 36e (insert) of Flak that
extends above the opening 33e constitutes the claimed “outer periphery.”
Moreover, Appellant’s Specification does not expressly define the phrase
“outer periphery” or otherwise indicate that this phrase is used in a manner
other than its ordinary and customary meaning. Accordingly, we construe
the phrase “outer periphery” in accordance with its ordinary and customary
meaning. As noted above, an ordinary and customary meaning of the term
“outer” is “situated or located on the outside.” FF 3. An ordinary and
customary meaning of the term “periphery” is “the external boundary or
surface of a body.” FF 4. Therefore, we construe the phrase “outer
periphery” to mean an external boundary or surface that is located on the
outside. In this case, we find that the “outer periphery” of the portion of the
fitment 36e (insert) of Flak that extends above the opening 33e is
represented by the surface 62e. See Flak, fig. 14.
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Hence, in contrast to the Examiner’s position, we find that the valve
assembly 24e (closure/dispenser member) is not mounted on the fitment 36e
(insert) “outward” of the outer periphery 62e of the fitment 36e (insert), as
required by claims 1, 19, 52, and 55. Rather, we find that the valve
assembly 24e (closure/dispenser member) is mounted on the fitment 36e
(insert) “inward” of the outer periphery 62e of the fitment 36e.
In conclusion, Flak does not teach all the elements of independent
claims 1, 19, 52, and 55. As such, the rejection of claims 1, 19, 52, and 55
and dependent claims 2, 6, 7, 9, 10, 14, 15, 18, 21, 24-26, 28, 29, 34, 37
under 35 U.S.C. § 102(b) as anticipated by Flak cannot be sustained.
With respect to claims 3-5, 16, 17, 22, 23, 35, and 36, we find that the
application of Garcia does not remedy the deficiency in the disclosure of
Flak as discussed above. Hence, the rejection under 35 U.S.C. § 103(a) of
claims 3-5, 16, 17, 22, 23, 35, and 36 as unpatentable over Flak and Garcia
is likewise reversed.

Issue (2)
Appellant does not argue independent claims 38 and 57 separately.
Accordingly, claims 38 and 57 stand or fall together.
Independent claims 38 and 57 are drawn to a receptacle having a body
made from a glass or a ceramic material. Appellant argues that because the
container 22 of Flak must be squeezed in order to dispense its contents, the
container can only be made of “flexible” materials, such as plastic, which
would exclude the use of a glass, a ceramic, or an inflexible plastic material.
Br. 15-16. As such, according to Appellant, one of ordinary skill in the art
would have been discouraged from using the glass material of Garcia to
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make the container of Flak. Br. 16. In other words, Appellant is arguing
that Flak teaches away from using the glass material of Garcia because a
glass container would not dispense fluid by squeezing. In response, the
Examiner takes the position that:
substituting the fitment of Flak by a pump and
making the container of glass eliminates the need
to squeeze the container in order to dispense
and a[t] the same time maintaining the pump in a
recess to prevent accidental actuation would be
well within the knowledge of a person with
ordinary skill in the art.
Ans. 5.
We disagree with Appellant’s position for the following reasons.
First, we note that simply that there are differences between two
references is insufficient to establish that such references "teach away" from
any combination thereof. See In re Beattie, 974 F.2d 1309, 1312-13 (Fed.
Cir. 1992). In this case, Flak discloses a dispensing package including a
container 22, a fitment 36, and a closure member 38 that are made from
plastic materials. FF 1 and 5. Garcia discloses a fluid dispenser including a
glass reservoir 1 (body) having a recess 15 (setback), an opening 18 in the
reservoir, and a pump 2 (insert) that is fitted through the opening 18. FF 7.
Flak further discloses that the plastic container 22 has flexible walls 26
which can be squeezed in order to dispense the viscous liquid product from
the plastic container. FF 6. Hence, squeezing does not represent a
mandatory dispensing manner, as Appellant suggests, but merely a preferred
manner in which the liquid therein is dispensed faster. A person of ordinary
skill in the art would have immediately appreciated that the viscous liquid
product of Flak can also be dispensed by pouring due to the action of
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gravitational forces. As such, in contrast to Appellant’s argument, we find
that the glass container of Flak and Garcia would dispense the liquid
contained therein by pouring, and hence would function as intended.
Second, we note that substituting the fitment (insert) of Flak with the
pump of Garcia would not have been uniquely challenging to a person of
ordinary skill in the art because it is no more than “the simple substitution of
one known element for another or the mere application of a known
technique to a piece of prior art ready for the improvement.” KSR Int'l. Co.
v. Teleflex lnc., 550 U.S. 398, 417 (2007). After all, “[a] person of ordinary
skill is also a person of ordinary creativity, not an automaton.” Id. at 421.
Therefore, the modification appears to be the product not of innovation but
of ordinary skill and common sense. Moreover, Appellant has not alleged,
much less shown, that the modification of Flak to include the pump of
Garcia would have been beyond the ability of a person of ordinary skill in
the art. In conclusion, we agree with the Examiner that
[i]t would have been obvious to a person with
ordinary skill in the art at the time the invention
was made to make the container of Flak of any
suitable material including glass to store products
that may chemically react with plastic . . .
Ans. 4.
We find no disclosure in Flak, and Appellant has not pointed to any
such disclosure, which would discourage a person of ordinary skill in the art
from making the container of Flak from glass and from substituting the
fitment (insert) of Flak with the pump of Garcia. Therefore, we find that the
disclosure of Flak does not teach away from Appellant’s claimed invention.
Accordingly, the rejection of claims 38 and 57 is sustained.

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Issue (3)
Appellant argues that neither the recess 28 (setback) of Flak nor the
recess 15 of Garcia is in the shape of a cup. App. Br. 19. In response, the
Examiner takes the position that:
A cup shape is a convex shape and the shape of the
device of Flak is convex, therefore, it is shaped as
a cup.
Ans. 5.
Appellant counters that the dictionary definition of a cup is “a cylindrical
shell closed at one end.” App. Br. 19.
As noted above, the recess of both Flak and Garcia is merely a convex
recess. FF 8. Furthermore, the width of Flak’s recess 28 and Garcia’s recess
15 is the same as the width of the container 22 and reservoir 1, respectively.
FF 9. We give claims their broadest reasonable interpretation consistent
with the Specification. Similar to Appellant’s proffered definition we find
that an ordinary and customary meaning of the term “cup” is “an open usu.
bowl-shaped drinking vessel.” FF 10. In this case, the recess of both Flak
and Garcia is merely convex and does not form a “bowl-shaped vessel” (a
container) because of the open sidewalls. See Flak, fig. 2. As such, we
agree with the Appellant that neither the recess 28 of Flak nor the recess 15
of Garcia is in the shape of a cup. Accordingly, the rejection of claim 48
under 35 U.S.C. § 103(a) as unpatentable over Flak and Garcia is reversed.

CONCLUSION
1. Appellant has shown that the Examiner erred in determining that the
valve member 24e (closure/dispenser member) of Flak is mounted on the
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fitment (insert) 36e outward of an outer periphery of the fitment (insert) 36e
that projects above the opening 33e.
2. Appellant has not shown that the Examiner erred in concluding that it
would have been obvious for a person of ordinary skill in the art to have
used glass, as taught by Garcia, to make the container of the dispensing
package of Flak.
3. Appellant has shown that the Examiner erred in determining that the
recess of Flak’s container is in the shape of a cup.

DECISION
The Examiner’s rejection of claims 1, 2, 6, 7, 9, 10, 14, 15, 18, 19, 21,
24-26, 28, 29, 34, 37, 52, and 55 under 35 U.S.C. § 102(b) as anticipated by
Flak is reversed.
The Examiner’s rejection under 35 U.S.C. § 103(a) as unpatentable
over Flak and Garcia is affirmed as to claims 38 and 57 and reversed as to
claims 3-5, 16, 17, 22, 23, 35, 36, and 48.
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) (2007).

AFFIRMED-IN-PART

Klh

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