Ex Parte Brozell

Patent Trial and Appeal Board

Jun 20, 2014

12330163 (P.T.A.B. Jun. 20, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/330,163 12/08/2008 Leonora M. Brozell 25029 1285
76254 7590 06/23/2014
REISING, ETHINGTON, BARNES, KISSELLE, P.C.
P.O. BOX 4390
TROY, MI 48099-4390
EXAMINER
ALLEN, JEFFREY R
ART UNIT PAPER NUMBER
3781
MAIL DATE DELIVERY MODE
06/23/2014 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 LEONORA M. BROZELL
____________

Appeal 2012-006016
Application 12/330,163
Technology Center 3700
____________________

Before: LYNNE H. BROWNE, JILL D. HILL, and
TIMOTHY J. GOODSON, Administrative Patent Judges

GOODSON, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Leonora M. Brozell (Appellant) appeals under 35 U.S.C. § 134(a)
from the rejection of claims 1–15 and 19. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
The claims are directed to a child-resistant container. Spec. p. 1, ll.
2-3. Claim 1 illustrates the subject matter on appeal and is reproduced
below:
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Application 12/330,163

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1. A package for storing and dispensing products, which
includes:
a container of one-piece integrally molded plastic
construction having a generally rectangular body including an
open bottom and a top wall extending across said body opposite
said open bottom with a dispensing opening in said top wall,
and also having a lid pivotably coupled by a hinge to said body
at one edge of said top wall, a plug on said lid for sealing
receipt within said dispensing opening in a closed position of
said lid over said top wall, and cooperating child-resistant latch
elements at a front of said lid opposite said hinge and at a front
of said body opposite said hinge for selectively latching said lid
in said closed position overlying said top wall, and
a bottom plug selectively receivable by press fit into said
open bottom of said body after introducing products into said
body through said open end.

PRIOR ART
The Examiner relies on the following evidence:
Petrick
Toren
Boots
Vahrmeyer

US 6,343,695 B1
US 5,971,154
US 2006/0000833 A1
US 2003/0097790 A1

Feb. 5, 2002
Oct. 26, 1999
Jan. 5, 2006
May 29, 2003

GROUNDS OF REJECTION
1. Claims 1, 2, 9-13 and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Boots in view of Toren.
2. Claims 3-6 and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Boots in view of Toren and further in view of
Vahrmeyer.
3. Claims 7, 8, and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Boots in view of Toren and further in view of
Petrick.
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OPINION
Claims 1 and 11 are the only independent claims in this appeal, and
these claims are subject to the same ground of rejection. Ans. 4. Appellant
argues these independent claims together, and does not separately argue any
of the dependent claims. App. Br. 6-7, 15. We select Claim 1 as
representative of the issues Appellant presents in this appeal. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
The Examiner finds that Boots discloses, in a first embodiment shown
in Figures 1-7, a package as recited in claim 1, except for the “top wall
extending across said body opposite said open bottom with a dispensing
opening in said top wall,” the “plug on said lid for sealing receipt within said
dispensing opening in a closed position of said lid over said top wall,” and
the “bottom plug selectively receivable by press fit into said open bottom of
said body after introducing products into said body through said open end.”
The Examiner finds that the top wall and plug limitations are disclosed in a
second embodiment of Boots shown in Figures 8-11, and that modifying the
first embodiment of Boots to include these elements of the second
embodiment would have been obvious as a simple substitution of one known
element for another to obtain a predictable result. Ans. 4-5. Further, the
Examiner finds that Toren teaches the bottom plug limitation and that it
would have been obvious to manufacture the Boots package with an open
bottom and plug, as taught by Toren, so that the package could be filled after
the latch elements are secured. Ans. 5.
Appellant argues that the Examiner has not made out a prima facie
case of obviousness because the cited combination would not result in a
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container that includes all of the limitations of claim 1. App. Br. 7-10.
Specifically, Appellant argues that, contrary to the Examiner’s findings, the
second embodiment of Boots does not disclose a container with a top wall
because the portion to which the Examiner points for this limitation is a
closure for a container, not a container. App. Br. 9. Thus, Appellant argues
that the combination the Examiner proposes would only yield a closure
having a top wall, not a container having a top wall. App. Br. 9-10.
The Answer clarifies that the Examiner finds the rim 22 of the first
embodiment in Boots to be a “top wall,” albeit one that does not extend over
the interior of the container. Ans. 8; see also Boots ¶ 31, Fig. 1. We note
that Boots discloses that the container can be injection molded to form a
monolithic, one-piece structure. Boots ¶¶ 43, 50. The upper portion 122 of
the second embodiment extends over the interior of the container. Boots,
Figs. 8, 11. Thus, the Examiner’s modification of the first embodiment of
Boots is to “combine the teaching of the top wall of the second embodiment
with the top wall of the first embodiment.” Ans. 9. We understand this
combination of the first and second embodiments of Boots to yield a
container having a top wall extending across the body.
Citing a dictionary defining “wall” as “a material layer enclosing
space,” Appellant argues that the rim 22 of Boots’ first embodiment is not a
“top wall” because the rim only defines an opening and does not enclose it.
Reply Br. 4. However, Appellant’s proffered dictionary definition is
inconsistent with Appellant’s own Specification, in which the top wall 22
includes a dispensing opening 24 and therefore does not enclose the space
beneath it. Spec., p. 3, ll. 17-20, Fig. 2. Accordingly, this argument is
unpersuasive.
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Appellant argues that a skilled artisan would not seek to combine the
two embodiments of Boots because a skilled artisan would understand that
the rotatable, cylindrical closure of the second embodiment is not compatible
with a rectangular, flip-lid closure. App. Br. 12. “The test for obviousness
is not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference. . . . Rather, the test
is what the combined teachings of those references would have suggested to
those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA
1981). The Examiner’s rejection is not based on a bodily incorporation of
the closure in the second embodiment onto the container of the first
embodiment. As the Answer explains, “[t]he entire upper portion of the
second embodiment would not be applied to the first embodiment but rather
the teaching of the opening structure of the second embodiment would be
applied to the first embodiment.” Ans. 9. In particular, the Examiner’s
proposed modification to the first embodiment of Boots is to include the top
wall extending across the body with the “dispensing opening and plug” of
the second embodiment. Ans. 5. Because the Examiner’s rejection does not
rely on combining the entire circular/cylindrical top of the second
embodiment with the container of the first embodiment, Appellant’s
incompatibility argument is not relevant to the rejection that the Examiner
made.
Appellant asserts that the Examiner’s incorporation into Boots’ first
embodiment of only certain features of the second embodiment constitutes
impermissible hindsight unsupported by any explanation of why these
features would be chosen. Reply Br. 5-6. However, the Examiner did
provide a reason for this proposed modification—to prevent too much
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material from exiting through the opening during use. Ans. 9. Appellant
has not refuted this reasoning. Therefore, Appellant’s arguments are not
persuasive.
Appellant argues that a skilled artisan would not seek to combine the
two embodiments of Boots because the focus of Boots is an improved lid
lock, and there is no reason why a skilled artisan would combine aspects of
the embodiments that are unrelated to the lid lock. App. Br. 12-13.
Appellant’s argument is not persuasive, because the teachings of Boots
cannot be narrowed to only the portion that Appellant argues is the focus of
its disclosures. “Patents are part of the literature of the art and are relevant
for all they contain.” In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991).
Appellant argues that combining Boots’ two embodiments would
render Boots inoperable because the smaller opening of the second
embodiment would result in jamming of the pills that Boots’ first
embodiment is intended to store. App. Br. 13-14. The Examiner responds
that this argument is based on “allegation without supporting evidence”
insofar as there is no indication in Boots that capsules would not fit through
the opening of the second embodiment, and that Boots’ container could be
used for storing materials other than capsules. Ans. 10. We agree that the
pill jamming problem is speculative, and would simply depend on the size of
the opening and the size of the pills. Even assuming that a skilled artisan
was only considering using Boots for storing pills, we see no reason why the
skilled artisan would be unable to make the opening large enough to
accommodate the pills. We therefore are not persuaded by Appellant’s
argument that the proposed modification of Boots would render it
inoperable.
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Appellant argues that modifying Boots to include a pluggable bottom
would add expense and complexity, which a skilled artisan would want to
avoid. App. Br. 13; Reply Br. 7. However, “[t]hat a given combination
would not be made by businessmen for economic reasons does not mean that
persons skilled in the art would not make the combination because of some
technological incompatability. Only the latter fact would be relevant.” In re
Farrenkopf, 713 F.2d 714, 718 (Fed. Cir. 1983) (citing Orthopedic Equip.
Co. v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983)).
Appellant argues that the product the Examiner proposes could not be
produced because it could not be removed from the mold. Reply Br. 7. This
argument, which was presented for the first time in the Reply, is not
adequately supported. Appellant does not explain why the product as
proposed by the Examiner would necessarily give rise to a mold lock
condition. Accordingly, Appellant has not provided any persuasive evidence
or arguments in rebuttal to the obviousness rejection.
We therefore sustain the Examiner’s rejection of claim 1-15 and 19.

DECISION
We AFFIRM the Examiner’s rejections of claims 1-15 and 19.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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