Ex Parte Bergman

Board of Patent Appeals and Interferences

Jul 22, 2009

11085457 (B.P.A.I. Jul. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MARK W. BERGMAN
__________

Appeal 2009-004899
Application 11/085,457
Technology Center 3700
__________

Decided:1 July 22, 2009
__________

Before TONI R. SCHEINER, RICHARD M. LEBOVITZ, and STEPHEN
WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a hand-
held vessel. The Patent Examiner rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-004899
Application 11/085,457

STATEMENT OF THE CASE
The invention relates to a hand-held container with a strap. (Spec.
1:11-13.) The only claim, claim 37, is on appeal and reads as follows:
37. A hand-held vessel comprising:

a container adapted to hold a fluid, the container having a plastic
bottom wall and a plastic sidewall extending upwardly from the
bottom wall, the bottom wall and sidewall having an inner surface that
defines a cavity and having an outer surface, the cavity having a top
opening which is opposite and larger than the bottom wall, and the
sidewall having a first side on one side of the cavity and a second side
on an opposite side of the cavity;

a thermoplastic elastomer strap connected to the outer surface at a first
connection on the second side of the sidewall and below the top
opening of the cavity, wherein at the first connection, the strap is
integrally formed with an upper rim section of the container, and the
strap connected to the outer surface at a second connection below the
first connection, wherein the strap has a length, a first width at the
first connection, a second width at the second connection, and a third
width at an intermediate segment of the strap between the first
connection and the second connection, wherein the strap is free of
openings therethrough in its intermediate section, and wherein the
third width of the strap is greater than the first and second widths of
the strap; and

a magnet affixed on the container, with the magnet disposed as a
retainer along the inner surface and second side of the sidewall
generally opposite the first connection and below the top opening of
the cavity[.]

The Examiner rejected the claim as follows:
• under 35 U.S.C. §112, second paragraph, for being indefinite;
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Appeal 2009-004899
Application 11/085,457

• under 35 U.S.C. § 103(a) over the combined teachings of Fredette,2
Vaughn,3 Biggio,4 and Effertz;5 and
• under 35 U.S.C. § 103(a) over the combined teachings of Fredette,
Vaughn, Biggio, Effertz, and Kerr.6

CLAIM DEFINITENESS
The Issue
The Examiner’s position is that the claim “is not in single sentence
form because a period has not been provided to designate the end of the
sentence.” (Final Rej. at 2.)
Appellant responds that the claim was both objected7 to and rejected.
If the appeal on substantive matters is successful, Appellant plans to
“request[s] permission to add a period at the end of claim 37 to render it into
single sentence form.” (Reply Br. 6.)
The issue with respect to this rejection is whether the Examiner
established that the claim failed to meet the statutory requirement to
particularly point out and distinctly claim the subject matter which applicant
regards as the invention.

2 U.S. Patent No. 1,590,572, issued to Alphonse Fredette, June 29, 1926.
3 U.S. Patent No. 3,536,285, issued to James Preston Vaughn, Oct. 27,
1970.
4 U.S. Patent No. 4,860,891, issued to Raymond Biggio, Aug. 29, 1989.
5 U.S. Patent No. 5,277,733, issued to Charles E. Effertz, Jan. 11, 1994.
6 U.S. Patent No. 5,033,704, issued to Edward E. Kerr, Jul. 23, 1991.
7 The formality objection is not before us.
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Application 11/085,457

Finding of Fact
1. Claim 37 does not end with a period.

Principles of Law Relating to Indefiniteness
“A claim is indefinite if its legal scope is not clear enough that a
person of ordinary skill in the art could determine whether a particular
composition infringes or not.” Geneva Pharms., Inc. v. GlaxoSmithKline
PLC, 349 F.3d 1373, 1384 (Fed. Cir. 2003).

Analysis of the Indefiniteness Issue
The Examiner did not provide an explanation showing that a person of
ordinary skill in the art could not determine whether a particular vessel
would infringe claim 37. We conclude that a prima facie case of
indefiniteness was not shown.

OBVIOUSNESS
The Obviousness Issues
The Examiner found that (i) Fredette disclosed a hand-held vessel
with a container and strap handle, (ii) Vaughn taught using a magnet on the
inside of a container to hold a paint brush, (iii) Biggio taught a plastic
container and pins to hold a paint brush, and (iv) Effertz taught an
elastomeric strap. (Ans. 4-5.) The Examiner concluded “[i]t would have
been obvious to modify the strap handle to be the thermoplastic elastomer of
Effertz and the shape of Effertz in order to provide a comfortable grip
allowing the strap to be gripped tighter with less fatigue.” (Id. at 5.) The
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Application 11/085,457

Examiner added a second rejection over the same references but including
Kerr, which taught fixing a magnet to a container. (Id. at 5-6.)
Appellant contends that Biggio did not teach plastic material, that “the
handle of Effertz would not be considered a strap,” and that “the claimed
strap is not a handle.” (App. Br. 6-7.) Rather, “the claimed strap is not
meant to be gripped” but instead to press the hand to the side of the vessel.
(Id. at 7.) Furthermore, the suggested “modification . . . would not result in
the claimed invention because the claimed strap has a completely different
shape” than Effertz’ shape. (Id. at 8.)
The issues with respect to this rejection are:
did Biggio teach a plastic container;
did Effertz teach an elastomeric strap;
is the claimed strap a handle, i.e., can the claimed strap be gripped;
and
did the Examiner show that the proposed modification would result in
the claimed invention?

Findings of Fact
2. Fredette disclosed a hand-held vessel comprising a container 1 and a
handle 2. (Col. 1, ll. 39-42.)
3. Fredette described the vessel as useful with a brush and varnish. (Col.
1, ll. 6-12.)
4. Vaughn disclosed an apparatus for clamping a magnet onto a paint
container to hold a paint brush. (Col. 1, ll. 12-17.)
5. Biggio disclosed a paint and brush holder. (Abstract.)
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Application 11/085,457

6. The Examiner found that Biggio taught plastic material in container
sidewalls and bottom. (Ans. 5.)
7. Biggio’s holder had a handle 36. (Fig. 1.)
8. Effertz taught a generally rectangular, flat strip of flexible expanded
thermal insulating material for use as an insulator and holder for
beverage containers. (Col. 1, l. 66 – col. 2, l. 11.)

Principles of Law Relating to Obviousness
“The entirety of the evidence must be reviewed in order to determine
whether the claimed invention as a whole would have been obvious to a
person of ordinary skill in the field.” In re Kumar, 418 F.3d 1361, 1369
(Fed. Cir. 2005).

Analysis of the Obviousness Issues
We agree that Biggio taught or suggested plastic for the container.
We are not persuaded by Appellant’s semantic arguments about purported
differences between a strap and Effertz’ strip.
The remaining dispositive issue in this appeal is whether a person of
ordinary skill in the art of making hand-held vessels would have seen a
benefit to attaching Effertz’ strip to Fredette’s or Biggio’s container with the
arrangement recited in claim 37. The Examiner found that the person of
ordinary skill would have made the change “in order to provide a
comfortable grip allowing the strap to be gripped tighter with less fatigue.”
(Ans. 5.) Appellant first contends that “the claimed strap is not a handle,”
and “the claimed strap is not gripped.” (Reply Br. 9-10, emphasis removed.)
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Application 11/085,457

We agree with the Examiner that this contention focuses on an intended use
not recited in the claim. (Ans. 7.)
Appellant further argues that the suggested modification “would not
result in the claimed invention because the claimed strap has a completely
different shape than ‘the shape of Effertz.’” (App. Br. 8.) To reach a
conclusion of obviousness, the invention “as a whole,” i.e., including every
limitation, must have been obvious. See Kumar, 418 F.3d at 1369.
Claim 37 recites the relative widths of the strap with reference to the
points of connection to the sidewall of the container. In Effertz, the strip is
not attached to a container. The Examiner analyzed Effertz’ shape in
isolation, with reference to the strip’s finger holes, but without reference to
attachment points to a container. (Ans. 7-8.) When used as Effertz
instructed, the strip is simply wrapped around a beverage container, not
attached to the container, and the user inserts fingers through an opening
formed where the ends of the strip meet. The Examiner did not explain how
the Effertz strip, if attached to Fredette’s container, or Biggio’s container,
would have the widths recited at and between the connection points recited
in claim 37. Put another way, different parts of the Effertz strip have
different widths as the Examiner found, but claim 37 recites the different
widths with reference to particular attachment points located on the
container. The rejection does not explain how a person of ordinary skill
would have oriented the strip for attachment, and it is not self evident why
the claimed orientation would have been an obvious one or the only possible
one. Neither of the two obviousness rejections establishes that the claimed
arrangement of widths would have been an obvious one.
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We conclude that a prima facie case of obviousness for the invention
as a whole was not established.

CONCLUSIONS OF LAW
The Examiner did not establish that the claim failed to meet the
statutory requirement to particularly point out and distinctly claim the
subject matter which applicant regards as the invention.
We find that (i) Biggio taught or suggested a plastic container;
(ii) Effertz taught an elastomeric strap; (iii) the claimed strap could be
gripped. The Examiner did not explain how, if the Effertz strap were
attached to the Fredette or Biggio container, it would have the width
orientations recited in claim 37. We conclude that a prima facie case of
obviousness was not established.

SUMMARY
We reverse the rejection of claim 37 under 35 U.S.C. § 112, second
paragraph;
We reverse the rejection of claim 37 under 35 U.S.C. § 103(a) over
the combined teachings of Fredette, Vaughn, Biggio and Effertz; and
We reverse the rejection of claim 37 under 35 U.S.C. § 103(a) over
the combined teachings of Fredette, Vaughn, Biggio, Effertz and Kerr.

REVERSED

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Appeal 2009-004899
Application 11/085,457

cdc

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