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.
12/819,628 06/21/2010 Matthew R. Cook 10773/605 1474
757 7590 02/26/2014
BGL
P.O. BOX 10395
CHICAGO, IL 60610
EXAMINER
PERREAULT, ANDREW D
ART UNIT PAPER NUMBER
3788
MAIL DATE DELIVERY MODE
02/26/2014 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 MATTHEW R. COOK, BARRY L. SILVERSTEIN,
KURT M. WOLF, and JAMES A. HUBBARD, JR.
____________________
Appeal 2012-001572
Application 12/819,628
Technology Center 3700
____________________
Before: JENNIFER D. BAHR, NEIL T. POWELL, and
BEVERLY M. BUNTING, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2012-001572
Application 12/819,628
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STATEMENT OF THE CASE
Matthew R. Cook et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1-20. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
The Claimed Subject Matter
The claimed subject matter relates generally to a carrier for carrying
several beverages which are often hot, food items and serving supplies.
Spec. [0003]. The carrier may be used alone or in combination with a
container, such as a bulk beverage container, or food and pet containers.
Spec. [0026]. Specifically, the carrier may fit over a handle of a container,
and hang on a side and/or back of the container, or may be used in
combination with other carriers to form other configurations of carriers. Id.
Claim 1 and claim 10, reproduced below, are illustrative of the
claimed subject matter.
1. A carrier comprising:
a bottom;
a plurality of side panels connected to the bottom; and
a handle panel connected to one of the side panels or the
bottom, the handle panel comprising:
a fold line;
a first aperture;
a second aperture;
a first perforated line in continuation of the first
aperture and the second aperture;
wherein pressure applied on the first perforated
line tears apart material to produce a third aperture in
continuation of the first aperture and the second aperture;
a second perforated line defining a finger opening
in the handle panel;
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Application 12/819,628
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wherein pressure applied inside the second
perforated line dislocates material to produce the finger
opening; and
wherein when the third aperture is open in
continuation of the first aperture and the second aperture, the
handle panel folds along the fold line over a container to
facilitate penetration of a handle of the container through the
first aperture, the second aperture, and the third aperture.
10. A carrier comprising:
a bottom;
a plurality of side panels connected to the bottom forming a
compartment; and
a handle panel connected to one of the side panels or the
bottom, the handle panel comprising:
a fold line;
a handle opening;
a finger opening; and
wherein the handle panel folds along the fold line over a
container to facilitate penetration of a handle of the container through
the handle opening wherein the compartment hangs against a side of
the container.
Evidence
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Eisman
Pakzad
Andrews
US 5,221,001
US 5,850,911
US 7,077,309 B2
Jun. 22, 1993
Dec. 22, 1998
Jul. 18, 2006
Cook US 7,740,139 B2 Jun. 22, 2010
Rejections
The following rejections are before us for review:
Appeal 2012-001572
Application 12/819,628
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I. Claims 10-20 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Eisman.
II. Claims 1-5, 7 and 9 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Eisman and Andrews.
III. Claims 6 and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Eisman, Andrews, and Pakzad.
IV. Claims 1-20 stand rejected on the ground of obviousness-type
double patenting as being unpatentable over claims 1-8 of
Cook.
OPINION
Rejection I
In addressing the rejection of claims 10-20, Appellants provide
arguments directed to claims 10-13, and separate arguments directed to
claims 14-20. App. Br. 5-8.
In order for a prior art reference to serve as an anticipatory reference,
it must disclose every limitation of the claimed invention, either explicitly or
inherently. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). To
anticipate, every element and limitation of the claimed invention must be
found in a single prior art reference, arranged as in the claim. Karsten Mfg.
Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001).
Turning first to independent claim 10 and dependent claims 11-13, the
Examiner finds – and Appellants do not dispute - that Eisman discloses a
carrier having a bottom 24, a plurality of side panels 18 connected to the
bottom 24 forming a compartment 12, and a handle panel 16 connected to
one of the side panels 18 or the bottom 24, and that the handle panel 16
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comprises a fold line, a handle opening 54, and a finger opening 42. Ans. 5.
Further, the Examiner finds that the Eisman carrier’s handle panel 16 folds
along a fold line 32, 33 over a container to facilitate penetration of a handle
of the container through the handle opening wherein the compartment 12
hangs against a side of the container. Id. With regard to the container and
its handle, the Examiner maintains they are part of the intended use of the
carrier and therefore not required structure within Eisman. Id. at 5 and 13.
According to the Examiner:
A recitation of the intended use of the claimed invention must
result in a structural difference between the claimed invention
and the prior art in order to patentably distinguish the claimed
invention from the prior art. If the prior art structure is capable
of performing the intended use, then it meets the claim.
Furthermore, while features of an apparatus may be recited
either structurally or functionally, claims directed to an
apparatus must be distinguished from the prior art in terms of
structure rather than function.
Ans. 12-13 (citation omitted).
Appellants, however, maintain that Eisman does not disclose (i) using
a carrier with a container or a carrier that folds over a container, or (ii) a
handle panel that folds along a fold line over a container. App. Br. 5.
Appellants explain that:
[T]he claimed feature “the handle panel folds along the fold line
over a container to facilitate penetration of a handle of the
container through the handle opening wherein the compartment
hangs against a side of the container” positively recites and
further describes a structural limitation of the handle panel
which is not optional. Language that limits a claim to a
particular structure is not an intended use. See MPEP § 2106;
2111.04. Accordingly, Appellants respectfully note that this
feature describes a structural limitation and is not, as the Final
Office Action argues, merely an intended use.
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Id. at 6-7.
We first address the disputed issue of whether the the claim language
directed to a container and its handle are structural limitations. Our
reviewing court has held that a statement of intended use in an apparatus
claim cannot distinguish over a prior art apparatus that discloses all the
recited structural limitations and is capable of performing the recited
function. See Schreiber, 128 F.3d at 1477. We also note that “[a]n intended
use or purpose usually will not limit the scope of the claim because such
statements usually do no more than define a context in which the invention
operates.” See Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough
Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003).
As is evident from the preamble, claim 10 is directed to a “carrier,”
not to a combination of a carrier and a container having a handle. Further,
the characteristics of the container are minimally described in Appellants’
Specification. See Spec. [0026] and figures 1, 3 and 4. We thus determine
that the claim limitation “the handle panel folds along the fold line over a
container to facilitate penetration of a handle of the container through the
handle opening wherein the compartment hangs against a side of the
container” does not constitute a positive recitation of a container having a
handle in combination with the claimed carrier, but, rather, defines what the
handle panel of the claimed carrier does. In other words, it is a functional
limitation.
A patent applicant is free to recite features of a product either
structurally or functionally (i.e., defining something by what it does rather
than what it is), but choosing to define an element functionally carries with it
a risk. Schreiber, 128 F.3d at 1478. More specifically,
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Application 12/819,628
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where the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.
Schreiber, 128 F.3d at 1478 (quoting In re Swinehart, 439 F.2d 210, 213
(CCPA 1971)). Once the Examiner establishes a reasonable basis that the
prior art is capable of performing the claimed function, the burden shifts to
the applicant to show that the prior art structure is not capable of performing
the claimed function. Id.
In this case, the Examiner has not set forth sufficient findings and/or
technical reasoning to establish a sound basis that Eisman’s carrier may be
used so that a handle panel will “fold[] along a fold line over a container to
facilitate penetration of a handle of the container through the handle opening
wherein the compartment hangs against a side of the container.” More
specifically, and for the reasons set forth below, the Examiner has not
established that the Eisman carrier, when used with a container with a
handle, (i) contains a panel that folds over the container; and (ii) is provided
with a handle opening through which the handle of the container will
penetrate with the panel folded over the container.
The Examiner refers to several fold lines (22, 32 and 33) of Eisman
which the Examiner maintains would be “folded over a container” when
“placed over a container.” Ans. 13. The Examiner’s finding is premised on
the Eisman carrier being capable “of attaching to a container of an
appropriate shape.” Id. The Examiner does not point to any disclosure in
Eisman of attaching the Eisman carrier to, or using the Eisman carrier with,
a container. The Examiner alludes to a hypothetical “container with a strap
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Application 12/819,628
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or string-type handle” with which the claimed carrier can be used (Ans. 13),
but has not introduced into the record disclosures of containers contemplated
by the Examiner which could be used with the Eisman carrier such that
conditions (i) and (ii) are satisfied.1 See Reply Br. 4-5. For these reasons,
we agree with Appellants that the Examiner has not established that the
Eisman carrier comprises a panel having the capability to fold over a
container to facilitate penetration of a handle of the container through any of
its openings.
In view of the foregoing, we do not sustain the rejection of claims 10-
13 as anticipated by Eisman.
We turn now to claim 14, the single independent claim in the group of
claims next argued by Appellants, namely, claims 14-20. This claim is
reproduced below:
14. A carrier comprising:
a bottom;
a plurality of side panels connected to the bottom and forming
an open compartment;
wherein the open compartment is divided by a central foldable
handle panel extending through the open compartment; and
a side handle panel connected to one of the side panels or the
bottom, the side handle panel comprising:
a fold line;
an aperture; and
wherein the side handle panel folds over the central foldable
handle panel to form a compartment cover.
The Examiner maintains that figures 1-5 of Eisman disclose a carrier
10 with an open compartment 12, wherein the open compartment 12 is
divided by a central foldable handle panel (side panel 29) and extends
1 At page 13 of the Answer, the Examiner states that “a container with a
strap or string-type handle” can be used.
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Application 12/819,628
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through the open compartment 12. Ans. 5-6. In addition, a side handle
panel (transverse panel 30) is connected to one of the side panels, and the
side handle panel 30 comprises a fold line (inner edge 32) and an aperture
42, and folds over the central foldable handle panel to form a compartment
cover. Id. According to the Examiner, figure 3 shows that handle panel 30
is folded and figure 2 shows that handle panel 30 covers compartment 12.
Id.
Appellants argue that the Examiner erred in rejecting claim 14
because (i) Eisman lacks a side handle panel that folds over the central
foldable handle panel to form a compartment cover, and (ii) Eisman’s
handle panel 29 does not divide the open compartment 12. App. Br. 7;
Reply Br. 6-7; Ans. 14-15.
With regard to the first issue, the Examiner states that “Merriam
Webster defines cover as something that is placed over or about another
thing.” Ans. 14. Because neither Appellants nor the Examiner entered a
definition of “cover” into the record, we note the following definition of
“cover”2 (as a noun) from Merriam-Webster Online Dictionary,
http://www.merriam-webster.com/dictionary/cover?show=0&t=1390392806
(last visited January 22, 2014):
2
: something that is placed over or about another thing:
a : LID, TOP
2 See Phillips v. AWH Corp., 415 F.3d 1303, 1322-23 (Fed. Cir. 2005) (en
banc) (“[J]udges are free to consult dictionaries and technical treatises at any
time in order to better understand the underlying technology and may also
rely on dictionary definitions when construing claim terms, so long as the
dictionary definition does not contradict any definition found in or
ascertained by a reading of the patent documents.”) (citation omitted).
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Application 12/819,628
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b : a binding or case for a book or the analogous part of a
magazine; also : the front or back of such a binding
c : an overlay or outer layer especially for protection
d : a tablecloth and the other table accessories
e : COVER CHARGE
f : ROOF
g : a cloth used on a bed for warmth or for decoration —usually used
in plural
h : something (as vegetation or snow) that covers the ground
i : the extent to which clouds obscure the sky
In the present application, the Examiner has construed the term
“cover” in a manner that is inconsistent with the ordinary meaning of the
term. In essence, the Examiner’s construction ostensibly fails to consider
the full context of the dictionary definition, as illuminated by the
explanatory examples of use set forth in items (a) – (i) in the Merriam-
Webster definition of “cover,” and especially, examples (a), (c), and (f).
Specifically, the Examiner states that “the side handle panel folds over the
central foldable handle panel to form a compartment cover ([transverse
panel] 30 is folded in fig 3 and covers compartment 12 in fig 2).” Ans. 5-6.
We cannot agree with the Examiner’s interpretation of “cover” as requiring
nothing more than placement of one item vertically over another item.
Transverse panel 30 does not form a “cover” for compartment 12 in the
sense of an overlay for protection or a roof. Indeed, transverse panel 30 is
positioned vertically with respect to compartment 12.
As for the second issue argued by Appellants and the Examiner in
connection with the rejection of claim 14, namely, whether the side panel 29
divides the open compartment 12, the Examiner states that “the open
compartment is divided by a central foldable handle panel (29) extending
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through the open compartment (as in figs 1, 2).” Ans. 5. Figure 1 depicts
side panel 29 at an end of a combination of two carriers –side panel 29 does
not divide a compartment. Even when two carriers are combined, as in
figure 2, side panel 29 remains at an end and does not divide a compartment.
At page 14 of the Answer, the Examiner offers an alternative
construction and points to side panel 28 and figure 2, stating, “in fig 2 …
handle panel at 28 divides the compartment of one carrier from the
compartment of the other carrier.” We do not accept the Examiner’s
alternate construction that element 28 divides two compartments. First, the
carrier of figure 2 is a combination of the two carriers depicted in figure 1,
and the carriers in figure 1 do not show side panel 28 as the divider for the
compartment 12. Further, as Appellants point out at page 7 of the Reply
Brief, if side panel 28 is the “central foldable handle panel extending
through the open compartment,” no other side panel satisfies the claimed
“side handle panel … [which] folds over the central foldable handle panel to
form a compartment cover.”
In view of the foregoing, we cannot sustain the rejection of claim 14,
and claims 15-20, which depend from claim 14.
Rejection II
Appellants argue claims 1-5 and claims 7 and 9 as separate groups but
present essentially the same arguments for each group. Cf., App. Br. 8-10
and App. Br. 10. We select claims 1 and 7 as representative claims of each
group. 37 C.F.R. § 41.37(c)(1)(vii) (2011).
In rejecting claims 1 and 7, the Examiner relies primarily on Eisman,
but finds that:
Appeal 2012-001572
Application 12/819,628
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[Eisman] does not disclose a second aperture; a first perforated line in
continuation of the first aperture and the second aperture; wherein
pressure applied on the first perforated line tears apart material to
produce a third aperture in continuation of the first aperture and the
second aperture.
Ans. 7, 9. The Examiner turns to Andrews and finds:
Andrews discloses a similar device (figs 1-10) comprising a
first and second aperture (46s between perforated line in figs 2,
8); a first line (line between 46s in figs 2, 8) in continuation of
the first aperture and the second aperture; wherein pressure
applied on the first line tears apart material to produce a third
aperture in continuation of the first aperture and the second
aperture (as shown by penetration of handle in figs 4 and 9).
Id. at 7-8, 9. The Examiner concludes:
It would have been obvious to one of ordinary skill in the art at
the time of the invention to modify Eisman in view of Andrews,
including a second aperture; a line in continuation of the first
aperture and the second aperture; wherein pressure applied on
the first line tears apart material to produce a third aperture in
continuation of the first aperture and the second aperture, to
provide adequate support for a handle in order to securely
transport the device (Andrews col. 1: 15-20, col. 2: 28-39).
With regards to the line being perforated, Eisman already
discloses perforated lines (48) for the purpose of assisting the
user in separating the material (Eisman figs 4, 5).
Id. at 8, 9.
We are persuaded by Appellants’ argument that Eisman in
combination with Andrews fails to render obvious a carrier as called for in
claim 1. As discussed in connection with Rejection I, there is no disclosure
in Eisman of attaching the Eisman carrier to, or using the Eisman carrier
with, a container; and the Examiner does not explain adequately how the
Eisman container could be modified such that a panel of Eisman’s carrier
folds along a fold line over a container to facilitate penetration of a handle of
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Application 12/819,628
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the container through any aperture of the panel. Further, the Examiner has
not sufficiently demonstrated that there is a reasonable basis for inserting a
strap or string-type handle in the handle of the Eisman carrier.
Consequently, the Examiner’s reason to modify Eisman using the additional
aperture and line of perforation of Andrews “to provide adequate support for
a handle in order to securely transport the device” is not supported by the
disclosure of Eisman. See Ans. 8, 9. Thus, the Examiner has failed to
articulate reasoning with a rational underpinning for combining the
teachings of Eisman and Andrews as proposed by the Examiner. We
therefore do not sustain the Examiner's rejection of claims 1 and 7, and of
their dependent claims 2-5 and 9.
Rejection III
Claims 6 and 8 depend from independent claims 1 and 7, respectively,
and further claim a compartment corner. Because we have not sustained the
rejection of claims 1 and 7, and because Pakzad fails to make up for the
deficiencies of the rejection of claims 1 and 7 discussed above, we do not
sustain the rejection of claims 6 and 8.
Rejection IV
Appellants do not contest the Examiner’s rejection of claims 1-20 on
the ground of nonstatutory obviousness-type double patenting in view of
claims 1-8 of Cook. App. Br. 11. Rather, Appellants request that “this
rejection be held in abeyance until allowable subject matter is indicated in
the present application.” Id.
By electing not to present any substantive arguments against the
obviousness-type double patenting rejection, Appellants have waived any
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argument of error. We thus summarily sustain the rejection. See In re
Berger, 279 F.3d 975, 984-85 (Fed. Cir. 2002) (holding that the Board did
not err in sustaining a rejection under 35 U.S.C. § 112, second paragraph,
when the applicant failed to contest the rejection on appeal).
DECISION
The Examiner’s rejection of claims 10-20 under 35 U.S.C. § 102(b) is
reversed.
The Examiner’s rejection of claims 1-9 under 35 U.S.C. § 103(a) is
reversed.
The Examiner’s decision rejecting claims 1-20 on the ground of
obviousness-type double patenting 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).
AFFIRMED
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