Ex Parte Bergman

Board of Patent Appeals and Interferences

Jun 30, 2010

11524132 (B.P.A.I. Jun. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MARK W. BERGMAN
____________________

Appeal 2009-004365
Application 11/524,132
Technology Center 3700
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Decided: June 30, 2010
____________________

Before JOHN C. KERINS, STEFAN STAICOVICI, and KEN B.
BARRETT, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Mark W. Bergman (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 11, 12, 16, and 17. We
have jurisdiction under 35 U.S.C. § 6(b).
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We AFFIRM.

THE INVENTION
Appellant’s claimed invention pertains to a hand-held container with a
supportive strap for engaging the user’s hand to the container. Spec. 1:14-
16. Claim 11, reproduced below, is representative of the subject matter on
appeal.
11. A hand-held vessel for holding coating fluids such as
paint, stain or varnish, the hand-held vessel comprising:
a bottom wall having an inner surface;
a sidewall extending upwardly from the bottom wall and
having an inner surface and an outer surface, the inner surfaces
of the bottom wall and the sidewall defining a fluid holding
cavity and the cavity having a top opening which extends over
and is larger than the bottom wall, wherein the sidewall has a
lower portion and an upper portion, and wherein the upper
portion includes a sidewall section that is, all the way around
the sidewall, inclined outwardly at an obtuse angle relative to
the lower portion;
a strap made of a thermoplastic elastomer and having a
top part and a bottom part, wherein the top part of the strap
engages the outer surface of the sidewall on the upper portion
of the sidewall adjacent the top opening of the cavity, wherein
the top part of the strap is integrally formed with the outer
surface of the sidewall, wherein the bottom part of the strap
engages the outer surface of the sidewall adjacent the bottom
wall, wherein the strap has a length and a width, and wherein
the strap has a widened segment along its length, the strap
being moveable between a first strap configuration defining a
passage between the strap and the outer surface of the sidewall
having a first shape and a second configuration defining the
passage as having a second shape different from the first shape.

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Perry US 2,143,027 Jan. 10, 1939
Effertz US 5,277,733 Jan. 11, 1994
Strech US 5,320,249 June 14, 1994
Lundy US 5,810,196 Sept. 22, 1998
Bergman (hereinafter
“Bergman ‘845”)
US D460,845 S July 23, 2002
Bergman (hereinafter “the
Bergman Application”)
US Patent Application
No. 11/085,457
filed Mar. 21, 2005

The following Examiner’s rejections are before us for review:
1. Claims 11, 12, 16, and 17 are rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
Bergman ‘845 and Effertz;
2. Claims 11, 12, 16, and 17 are provisionally rejected on the
ground of nonstatutory obviousness-type double patenting as being
unpatentable over claim 37 of the Bergman Application1 and Strech;
3. Claims 11, 12, 16, and 17 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Strech, Lundy, and Effertz; and
4. Claims 11, 12, 16, and 17 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Strech, Lundy, Effertz, and Perry.
Additionally, in the Conclusion sections of the Appellant’s briefs,
Appellant requests that the Board direct that supposed errors regarding
continuity information in the Patent Application Information Retrieval
System be fixed. App. Br. 11; Reply Br. 13. Appellant does not associate

1 US Patent No. 7,644,835 B2 issued on January 12, 2010, from the
Bergman Application.
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Application 11/524,132

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this request with any pending rejection, and it appears that this pertains to a
procedural matter rather than a matter within our jurisdiction. See In re
Mindick, 371 F.2d 892, 894 (CCPA 1967). Thus, we decline Appellant’s
request.
Further, Appellant states: “Any disclaimer that may have occurred
during the prosecution of the afore-mentioned applications is hereby
expressly rescinded. Without limitation, this rescission includes any
disclaimers made to avoid any prior art, and accordingly, such prior art may
need to be revisited.” App. Br. 10-11; see also Reply Br. 13. The Examiner
appears to understand Appellant to be seeking withdrawal of a terminal
disclaimer. Ans. 3. However, even if Appellant’s statements concerned a
matter within our jurisdiction, Appellant does not request relief from the
Board in this regard. Accordingly, we need not and do not address this
issue.
ANALYSIS
Claims 11, 12, 16, and 17 are rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over Bergman
‘845 and Effertz
The Examiner rejected the appealed utility patent application claims
as unpatentable over a design patent, Bergman ‘845, in view of a utility
patent, Effertz, on the ground of obviousness-type double patenting.
Appellant argues that the claim of Bergman ‘845 is limited to an ornamental
design that does not encompass functional limitations (App. Br. 4) and
contends that the proper test for obviousness-type double patenting between
a design patent and a utility patent is a two-way test (Reply Br. 4 (citing
Manual of Patent Examining Procedure (MPEP) § 1504.06 and In re
Dembiczak, 175 F.3d 994 (Fed. Cir. 1999)).
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We agree that the two-way test is the appropriate test. An
obviousness-type double patenting rejection between a utility patent
application and design patent is only appropriate if the claims of the two
cross-read, meaning that the test is whether the subject matter of the
application claims would have been obvious from the subject matter of the
design patent claim and vice versa. See In re Dembiczak, 175 F.3d at 1002
(abrogated on other grounds by In re Gartside, 203 F.3d 1305 (Fed. Cir.
2000)) (quoting Carman Indus., Inc. v. Wahl, 724 F.2d 932, 940 (Fed. Cir.
1983)); see also MPEP § 1504.06 (8th ed., Rev. 7, Jul. 2008) (“[I]n design-
utility situations, a two-way obviousness determination is necessary for the
rejection to be proper.”)
The Examiner’s statement of the rejection and response to Appellant’s
argument appear to only address whether the claims on appeal would have
been obvious in light of the disclosures of Bergman ‘845 and Effertz. See
Ans. 4-5, 8-9. Thus, it appears that the Examiner applied a one-way test.
The Examiner has not adequately explained why the design patent claim
would have been obvious over the vessel defined by the claims on appeal.
As such, we are constrained to reverse the obviousness-type double
patenting rejection.

Claims 11, 12, 16, and 17 are provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claim 37 of the Bergman Application and Strech
Appellant does not dispute the merits of this provisional rejection.
Reply Br. 6; see App. Br. 5. Accordingly, we sustain the rejection. We note
that the Bergman Application has resulted in an issued patent. See footnote
1, supra.
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Application 11/524,132

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Claims 11, 12, 16, and 17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Strech, Lundy, and Effertz
Claim 11 recites “the top part of the strap is integrally formed with the
outer surface of the sidewall.” The recited sidewall extends upwardly from
the bottom wall. Strech discloses an insulated jacket for a conical shaped
container (which the Examiner refers to as a cup, Ans. 6). Strech, Abstract,
fig. 4. Appellant contends that Strech does not disclose a strap integrally
formed with the outer surface of the fluid holding cavity. App. Br. 7-8. In
particular, Appellant asserts that Strech only discloses a handle that is
integral with the insulating jacket (which lacks a closed bottom and therefore
is incapable of holding fluid), not the cup (which Appellant relates to the
recited fluid holding cavity defined by the bottom wall and the sidewall). Id.
The Examiner found that Strech’s cup has inner surfaces forming the
bottom and sidewalls of a cavity capable of holding paint. Ans. 6. The
Examiner also found that “the outer surfaces of the insulating jacket 10
forms a flexible strap handle 110[.]” Ans. 6. The Examiner does not clearly
articulate which feature was found to be the recited outer surface of the
sidewall, as the Examiner associates the sidewalls with the cup but refers to
the outer surface of the jacket. See id. Additionally, the Examiner did not
explicitly find that the strap is integrally formed with any surface (id. at 6, 9-
10), and has neither made sufficient findings nor provided adequate
reasoning to explain why one having ordinary skill in the art would have
arrived at the recited strap integrally formed with the outer surface of the
sidewall. As such, we cannot sustain the rejection of claims 11, 12, 16, and
17 as obvious over Strech, Lundy, and Effertz.
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Claims 11, 12, 16, and 17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Strech, Lundy, Effertz, and Perry
The Examiner added the Perry reference to the previous rejection in
order to address an alternative claim construction concerning the “all around
the sidewall” phrase. See Ans. 7-8. The Examiner does not rely on Perry in
any manner that cures the deficiency of the previous rejection. Accordingly,
we also cannot sustain the obviousness rejection based on Strech, Lundy,
Effertz, and Perry.

CONCLUSIONS
Appellant has failed to show that the Examiner erred in provisionally
rejecting claims 11, 12, 16, and 17 on the ground of nonstatutory
obviousness-type double patenting over claim 37 of the Bergman
application, and we affirm that rejection.
We cannot sustain either the rejection of claims 11, 12, 16, and 17 on
the ground of nonstatutory obviousness-type double patenting as being
unpatentable over Bergman ‘845 and Effertz, or the § 103 obviousness
rejections.

DECISION
The decision of the Examiner to reject claims 11, 12, 16, and 17 is
affirmed.
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
Appeal 2009-004365
Application 11/524,132

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