Ex Parte Carter

Board of Patent Appeals and Interferences

Apr 18, 2003

09659792 (B.P.A.I. Apr. 18, 2003)

1 The rejections of claim 14 raised in the final rejection were withdrawn by the examiner on page 2
of the answer.
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JAMES EDWARD CARTER
____________
Appeal No. 2003-0104
Application No. 09/659,792
____________
ON BRIEF
____________
Before FRANKFORT, STAAB, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1 to 13
and 15. Claim 14, the only other claim pending in this application, is not rejected.1
We REVERSE and REMAND.
Appeal No. 2003-0104
Application No. 09/659,792
Page 2
BACKGROUND
The appellant's invention relates to an insulated container for a beer keg
(specification, p. 1). A copy of the dependent claims under appeal is set forth in the
appendix to the appellant's brief. Claims 1, 7 and 11, the independent claims on
appeal, read as follows:
1. An insulated container for keg beer, wherein the improvement comprises
a securement on the container for a spigot of a keg tap, the securement
comprising a band (15) into which a spigot-handle (25) may be maintained
hooked by twist on the spigot resulting from weight of a spigot tube (21) and any
beer in the tube acting from a combined center of gravity outwards from the
container, with a spigot spout (27) pointing downwards.
7. An insulated container for keg beer, wherein the improvement comprises
a pocket on the container for beer cups, the pocket having a closed bottom.
11. An insulated container for keg beer, wherein the improvement comprises
the container sized for a tight fit with a keg and an airflow passageway to allow
air flow into the container when the keg is removed.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Leslie 4,759,077 July 19, 1988
Pulli 6,082,896 July 4, 2000
Hussain GB 2 221 292 A Jan. 31, 1990
Appeal No. 2003-0104
Application No. 09/659,792
Page 3
Claims 1 and 5 stand rejected under 35 U.S.C. § 102(b) as being anticipated by
Leslie.
Claims 1, 2, 5, 7, 9 and 15 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Pulli.
Claims 3, 4, 6, 8 and 10 to 13 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Pulli in view of Hussain.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the final
rejection (Paper No. 5, mailed August 14, 2001) and the answer (Paper No. 11, mailed
May 9, 2002) for the examiner's complete reasoning in support of the rejections, and to
the brief (Paper No. 10, filed March 19, 2002) and reply brief (Paper No. 12, filed July 5,
2002) for the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
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Application No. 09/659,792
Page 4
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
The anticipation rejection based on Leslie
We will not sustain the rejection of claims 1 and 5 under 35 U.S.C. § 102(b) as
being anticipated by Leslie.
To support a rejection of a claim under 35 U.S.C. § 102(b), it must be shown that
each element of the claim is found, either expressly described or under principles of
inherency, in a single prior art reference. See Kalman v. Kimberly-Clark Corp., 713
F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026
(1984).
The appellant's argue (brief, pp. 4-5; reply brief, pp. 1-2) that there is no basis to
conclude that a spigot-handle could interact with the handles 14 of Leslie in the manner
claimed. We agree. In that regard, the claimed band into which a spigot-handle may
be maintained hooked by twist on the spigot resulting from weight of a spigot tube and
any beer in the tube acting from a combined center of gravity outwards from the
Appeal No. 2003-0104
Application No. 09/659,792
Page 5
2 The inquiry as to whether a reference anticipates a claim must focus on what subject matter is
encompassed by the claim and what subject matter is described by the reference. As set forth by the
court in Kalman v. Kimberly-Clark Corp., 713 F.2d at 772, 218 USPQ at 789, it is only necessary for the
claims to "'read on' something disclosed in the reference, i.e., all limitations of the claim are found in the
reference, or 'fully met' by it."
container, with a spigot spout pointing downwards is not readable on2 the handles 14 of
Leslie. While the handles 14 of Leslie's insulated carrier may be a band which in a
general sense would be inherently capable of securing the spigot of a keg tap as
alleged by the examiner (final rejection, p. 3), there is no basis to conclude, and the
examiner has not even alleged, that the handles 14 of Leslie's insulated carrier are
inherently capable of maintaining a spigot-handle therein hooked by twist on the spigot
resulting from weight of a spigot tube and any beer in the tube acting from a combined
center of gravity outwards from the container, with a spigot spout pointing downwards.
Thus, the claimed band is structurally and functionally different than the handles 14 of
Leslie's insulated carrier.
Since all the limitations of independent claim 1 and claim 5 dependent thereon
are not met by Leslie for the reasons set forth above, the decision of the examiner to
reject claims 1 and 5 under 35 U.S.C. § 102(b) is reversed.
The anticipation rejection based on Pulli
We will not sustain the rejection of claims 1, 2, 5, 7, 9 and 15 under 35 U.S.C.
§ 102(e) as being anticipated by Pulli.
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Application No. 09/659,792
Page 6
Claims 1, 2 and 5
The appellant argues (brief, p. 5; reply brief, pp. 1-2) that there is no basis to
conclude that a spigot-handle could interact with the handles 38 of Pulli in the manner
claimed. We agree. In that regard, the claimed band into which a spigot-handle may
be maintained hooked by twist on the spigot resulting from weight of a spigot tube and
any beer in the tube acting from a combined center of gravity outwards from the
container, with a spigot spout pointing downwards is not readable on the handles 38 of
Pulli. While the handles 38 of Pulli's insulated container may be a band which in a
general sense would be inherently capable of securing the spigot of a keg tap as
alleged by the examiner (final rejection, p. 3), there is no basis to conclude, and the
examiner has not even alleged, that the handles 38 of Pulli's insulated container are
inherently capable of maintaining a spigot-handle therein hooked by twist on the spigot
resulting from weight of a spigot tube and any beer in the tube acting from a combined
center of gravity outwards from the container, with a spigot spout pointing downwards.
Thus, the claimed band is structurally and functionally different than the handles 38 of
Pulli's insulated container.
Since all the limitations of independent claim 1 and claims 2 and 5 dependent
thereon are not met by Pulli for the reasons set forth above, the decision of the
examiner to reject claims 1, 2 and 5 under 35 U.S.C. § 102(e) is reversed.
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Application No. 09/659,792
Page 7
Claims 7, 9 and 15
The appellant's argue (brief, p. 5; reply brief, p. 2) that there is no basis to
conclude that Pulli's sleeve 34 for supporting cups has a closed bottom. We agree.
The examiner's position (answer, p. 4) that Pulli's sleeve 34 inherently has a closed
bottom is without support. The examiner correctly points out that claim 1 of Pulli recites
"a cup sleeve attached to said outer layer, said cup sleeve being a pocket completely
external to said body section." However, we disagree with the examiner that Pulli's use
of the term "pocket" in describing the cup sleeve implicitly requires a closed bottom.
Thus, the claimed pocket having a closed bottom is structurally different than the sleeve
34 on Pulli's insulated container.
Since all the limitations of independent claim 7 and claims 9 and 15 dependent
thereon are not met by Pulli for the reasons set forth above, the decision of the
examiner to reject claims 7, 9 and 15 under 35 U.S.C. § 102(e) is reversed.
The obviousness rejection
We will not sustain the rejection of claims 3, 4, 6, 8 and 10 to 13 under 35 U.S.C.
§ 103 as being unpatentable over Pulli in view of Hussain.
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Application No. 09/659,792
Page 8
Claims 3, 4, 6, 8 and 10
The decision of the examiner to reject dependent claims 3, 4, 6, 8 and 10 under
35 U.S.C. § 103 is reversed for the reasons provided above with respect to independent
claims 1 and 7. We have reviewed the reference to Hussain applied in this rejection
under 35 U.S.C. § 103 but find nothing therein which makes up for the deficiencies of
Pulli discussed above with respect to claims 1 and 7.
Claims 11 to 13
When it is necessary to select elements of various teachings in order to form the
claimed invention, we ascertain whether there is any suggestion or motivation in the
prior art to make the selection made by the appellant. Obviousness cannot be
established by combining the teachings of the prior art to produce the claimed
invention, absent some teaching, suggestion or incentive supporting the combination.
The extent to which such suggestion must be explicit in, or may be fairly inferred from,
the references, is decided on the facts of each case, in light of the prior art and its
relationship to the appellant's invention. It is impermissible, however, simply to engage
in a hindsight reconstruction of the claimed invention, using the appellant's structure as
a template and selecting elements from references to fill the gaps. The references
themselves must provide some teaching whereby the appellant's combination would
have been obvious. In re Gorman, 933 F.2d 982, 986, 18 USPQ2d 1885, 1888 (Fed.
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Application No. 09/659,792
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Cir. 1991) (citations omitted). That is, something in the prior art as a whole must
suggest the desirability, and thus the obviousness, of making the combination. See In
re Beattie, 974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992); Lindemann
Maschinenfabrik GmbH v. American Hoist and Derrick Co., 730 F.2d 1452, 1462, 221
USPQ 481, 488 (Fed. Cir. 1984).
In the rejection under 35 U.S.C. § 103, the examiner determined (final rejection,
p. 4) that based on Hussain's teaching of hole 7 in the bottom of an insulated can
holder it would have been obvious to one having ordinary skill in the art at the time the
invention was made to provide the bottom of Pulli's insulated container with an airflow
passageway in order to facilitate removal of the keg from the insulated container.
The appellant's argue (brief, pp. 5-6; reply brief, p. 2) that there is no motivation
for modifying Pulli's insulated container by the teachings of Hussain since Pulli's
insulated container does not provide a tight fit to the keg since the container is designed
to retain ice and water. We agree. Without a tight fit between a keg and Pulli's
insulated container there is no need for a hole to be provided in the bottom of Pulli's
insulated container in order to facilitate removal of a keg from the insulated container.
In our view, the only suggestion for modifying Pulli in the manner proposed by the
examiner stems from hindsight knowledge derived from the appellant's own disclosure.
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Application No. 09/659,792
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The use of such hindsight knowledge to support an obviousness rejection under
35 U.S.C. § 103 is, of course, impermissible. See, for example, W. L. Gore and
Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir.
1983), cert. denied, 469 U.S. 851 (1984).
For the reasons set forth above, the decision of the examiner to reject claims 11
to 13 under 35 U.S.C. § 103 is reversed.
REMAND
We remand the application to the examiner for the following further
considerations:
(1) Determine if Leslie's teaching (column 4, lines 24-27) that "the keg may be smaller
than the dimensions of cavity 18, thereby allowing space for ice cubes to surround the
keg" teaches or suggests to a person of ordinary skill in the art that the cavity 18 can be
sized to provide a tight fit with a keg;
(2) Determine if the airflow passageway recited in claim 11 is readable on a top opening
of an insulated carrier/container wherein when a keg is removed from the
carrier/container air is allowed to flow into the carrier/container via the top opening;
(3) Based upon the above-noted determinations, determine whether or not claims 11
and 12 are anticipated by Leslie;
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Application No. 09/659,792
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(4) Based upon the above-noted first determination, determine whether or not claims
11 to 13 would have been obvious at the time the invention was made to a person of
ordinary skill in the art from the combined teachings of Leslie and Hussain;
(5) Determine if the pocket of claim 7 is readable on storage pouch 36 of Pulli which
appears to have a closed bottom as shown in Figures 1, 2 and 7-9;
(6) Based upon determination (5), determine whether or not claims 7, 9 and 15 are
anticipated by Pulli; and
(7) If claim 7 is anticipated by Pulli, determine whether or not claims 8 and 10 would
have been obvious at the time the invention was made to a person of ordinary skill in
the art from the combined teachings of Leslie, Hussain and Pulli.
CONCLUSION
To summarize, the decision of the examiner to reject claims 1 and 5 under
35 U.S.C. § 102(b) is reversed; the decision of the examiner to reject claims 1, 2, 5, 7, 9
and 15 under 35 U.S.C. § 102(e) is reversed; and the decision of the examiner to reject
claims 3, 4, 6, 8 and 10 to 13 under 35 U.S.C. § 103 is reversed. In addition, we have
remanded the application to the examiner for further considerations.
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Application No. 09/659,792
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This application, by virtue of its "special" status, requires immediate action, see
MPEP § 708.01 (Eighth Edition, Aug. 2001).
REVERSED; REMANDED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2003-0104
Application No. 09/659,792
Page 13
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