Ex Parte Breunig

Patent Trial and Appeal Board

Apr 29, 2014

12118772 (P.T.A.B. Apr. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRIAN BREUNIG
____________

Appeal 2012-003594
Application 12/118,772
Technology Center 3700
____________

Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
BRANDON J. WARNER, Administrative Patent Judges.

WARNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Brian Breunig (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1, 5, 6, 10-12, and 14, which are all the
pending claims. App. Br. 1. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2012-003594
Application 12/118,772

2
CLAIMED SUBJECT MATTER
Appellant’s claimed invention relates to a container lid with a
rotatable pull tab. See, e.g., Spec., p. 3, ll. 2-30. Claims 1, 10, and 14 are
independent. Claim 1, reproduced below, is illustrative of the subject matter
on appeal.
1. A container lid comprising:
a lid having a perimeter and a center, and further
comprising a pre-scored line that defines a rupturable tear
panel;
a pull tab rotatably and pivotally attached to the lid at an
offset distance from the center of the lid, wherein the pull tab
comprises a length, a handle portion, and a lid-piercing portion;
wherein the pull tab is rotatable between:
a closed position in which the length, handle
portion, and lid-piercing portion of the pull tab are
contained within the perimeter of the lid, and
an opening position in which the handle portion of
the pull tab extends beyond the perimeter of the lid and
the lid-piercing portion of the pull tab is juxtaposed with
the pre-scored panel and configured to pierce the
rupturable tear panel when the handle portion of the pull
tab is lifted;
wherein the lid and the pull tab comprise aluminum; and
further wherein the pull tab comprises a shoulder that offsets
the handle portion of the pull tab so that the handle portion of
the pull tab does not contact the lid when the pull tab is in the
closed position.

Appeal 2012-003594
Application 12/118,772

3
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Hanafusa US 4,872,597 Oct. 10, 1989
Chang US 2008/0099480 A1 May 1, 2008
Wichelhaus US 7,500,577 B2 Mar. 10, 2009

REJECTION
The following rejection is before us for review: Claims 1, 5, 6, 10-12,
and 14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Chang and Hanafusa.

ANALYSIS
Appellant argues the rejection of claims 1, 5, 6, 10-12, and 14 as a
group. See App. Br. 4-8. Therefore, in accordance with 37 C.F.R.
§ 41.37(c)(1)(vii) (2011), we select claim 1 as the representative claim to
decide the appeal of the rejection of these claims, with claims 1, 5, 6, 10-12,
and 14 standing or falling as a group.
The Examiner found that Chang discloses all of the limitations of
independent claim 1, with the exception of the pull tab comprising a
shoulder. Ans. 5-6 (citing Chang, figs. 5a, 5b, 5c, 6; paras. [0061], [0062]).
Next, the Examiner found that “Hanafusa teaches [that] it is known to
provide a can lid with a pull tab having a shoulder for the purpose of
allowing one to easily grasp the lifting end . . . of the pull tab.” Ans. 6. The
Examiner then concluded that “[i]t would have been obvious to one of
ordinary skill in the art at the time the invention was made to provide the
Appeal 2012-003594
Application 12/118,772

4
[rotatable] pull tab of the container lid of Chang with a shoulder as taught by
Hanafusa,” reasoning that “[d]oing so would allow for a user to more easily
grasp the handle portion for rotation of the pull tab to an opening position
[on] the can lid.” Id.
Appellant first argues that the combination of Chang and Hanafusa
goes against the explicit teachings of Chang. App. Br. 4. We are not
persuaded by Appellant’s argument. Appellant does not identify where
Chang includes such an asserted explicit teaching against including a
shoulder, and attorney argument cannot take the place of evidence in the
record. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“An
assertion of what seems to follow from common experience is just attorney
argument and not the kind of factual evidence that is required to rebut a
prima facie case of obviousness.”).
Appellant alleges that the recesses of Chang “obviate any . . . need for
including a shoulder [on] the pull tab” as taught by Hanafusa, and stresses
that Chang seeks to avoid issues with overly high pull tabs interfering with
parts of automated machinery. App. Br. 4. However, the provision of
recesses in Chang does not foreclose the possibility of including a shoulder
on the pull tab, and the combination used in the rejection takes into account
the concerns raised by Chang.
In particular, we agree with the Examiner that the combination of
Chang and Hanafusa used in the rejection “would provide a tab having a
lifting end, or handle, that is raised above the surface of the can end” where
the distance raised above the surface provided by the shoulder would be “not
so great as to have the handle extend above the upper edge perimeter of the
can.” Ans. 7. Moreover, we agree that “[o]ne of ordinary skill in the art
Appeal 2012-003594
Application 12/118,772

5
would make the modification so as to be of assistance in grasping the handle
without the handle extending above the can lid rim in a first storage
position.” Id. As explained by the Examiner, doing so would avoid can lids
with overly high pull tabs, as cautioned against in Chang.
Thus, based on the reasons explained supra, we are not persuaded that
the Examiner’s combination of Chang and Hanafusa used in the rejection
would go against the explicit teachings of Chang.
Next, Appellant argues that there is no motivation derived from the
teachings of Hanafusa for the combination of Chang and Hanafusa used in
the rejection. App. Br. 5. In support, Appellant relies on assertions that
“Hanafusa does not teach a shoulder to facilitate grasping and rotation of a
pull tab,” and that “Hanafusa teaches a pull tab shoulder as part of a dual
pull tab configuration in which the pull tabs are ‘interleaved or nested.’”
App. Br. 5; Reply Br. 1.
We are not persuaded by Appellant’s argument because Hanafusa is
not relied upon for teaching a rotating pull tab; this feature is taught in
Chang. In other words, Appellant’s argument does not address the rejection
of record. Rather, as correctly explained by the Examiner, “the rejection did
not suggest that the pull tabs of Hanafusa were to be grasped and rotated.
The rejection states [that] ‘Hanafusa teaches it is known to provide a can lid
with a pull tab having a shoulder for the purpose of allowing one to easily
grasp the lifting end.’” Ans. 8 (citing the rejection of record reproduced at
Ans. 6).
Regarding the legal standard for the obviousness rejection as
presented, Appellant’s argument directed to an asserted lack of motivation
derived from Hanafusa is misplaced. Rather, the proper inquiry is whether
Appeal 2012-003594
Application 12/118,772

6
the Examiner has articulated adequate reasoning based on a rational
underpinning to explain why a person of ordinary skill in the art would have
been led to combine the teachings of Chang and Hanafusa. See KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (stating that “rejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness” (citing In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006))).
Here, the Examiner has provided an articulated reason with rational
underpinning for the combination used in the rejection, namely providing the
rotatable pull tab of the container lid of Chang with a shoulder as taught by
Hanafusa to allow for a user to more easily grasp the handle portion for
rotation of the pull tab to an opening position on the can lid, as discussed
supra. We note that the reason to modify a reference may often prompt a
person of ordinary skill in the art to do what the inventor has done, but for a
different purpose or to solve a different problem. It is not necessary that the
prior art suggest the combination to achieve the same advantage or result
discovered by an applicant. See, e.g., In re Kahn, 441 F.3d at 987.
Thus, based on the reasons explained supra, we are not persuaded of
error in the Examiner’s provision of an articulated reason with rational
underpinnings for the combination of Chang and Hanafusa used in the
rejection.
Appellant finally argues that the combination of Chang and Hanafusa
does not fulfill some elements of the claims. App. Br. 6. We are not
persuaded by Appellant’s argument. Appellant highlights portions of the
claim recitation regarding the “opening position,” and asserts that the pull
Appeal 2012-003594
Application 12/118,772

7
tab of Chang would not “puncture[] the tear panel only when the handle
portion is extended over the lid and subsequently lifted.” App. Br. 6.
This argument is premised on Appellant’s suggestion that the pull tab
of Chang would instead puncture the tear panel “prior to” lifting the pull tab
because the pull tab of Chang cannot be “rotated into opening position
without piercing the can lid.” App. Br. 6; Reply Br. 1. The alleged
operation of Chang advanced by Appellant mischaracterizes the teachings of
Chang, which describes the operation of the pull tab (with reference to figure
5b) as having been swung to the second position, where it is only after
rotation when a user is enabled to “readily grasp the pull tab . . . and pry
upwards” that the pull tab “breaks through the closure lid” along a score line
thereon. Chang, para. [0063]. Thus, we agree with the Examiner that
“[A]ppellant is incorrect in stating the pull tab [of Chang] will first rupture
the pre-score line prior to rotation.” Ans. 9.
Appellant also points to alleged shortcomings of each reference
individually (e.g., “Chang’s pull tab lacks a shoulder” and “Hanafusa’s pull
tab . . . is not rotatable) rather than addressing the combination of Chang and
Hanafusa used in the rejection. App. Br. 7-8. However, nonobviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, the rejection is
based on the combined teachings of Chang and Hanafusa, as discussed in
detail supra. Therefore, we are not persuaded of Examiner error in the
rejection as presented.
Appeal 2012-003594
Application 12/118,772

8
In conclusion, for the foregoing reasons, we sustain the rejection of
claim 1, and claims 5, 6, 10-12, and 14 falling with claim 1, under 35 U.S.C.
§ 103(a) as being unpatentable over Chang and Hanafusa.

DECISION
We AFFIRM the Examiner’s decision rejecting claims 1, 5, 6, 10-12,
and 14 under 35 U.S.C. § 103(a) as being unpatentable over Chang and
Hanafusa.
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).

AFFIRMED

tkl