Ex Parte Fields

Board of Patent Appeals and Interferences

Sep 8, 2011

11124337 (B.P.A.I. Sep. 8, 2011)

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.
11/124,337 05/06/2005 Janet C. Fields Z9996.1136 9123
32172 7590 09/08/2011
DICKSTEIN SHAPIRO LLP
1633 Broadway
NEW YORK, NY 10019
EXAMINER
CHAPMAN, GINGER T
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
09/08/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JANET C. FIELDS
____________

Appeal 2009-012876
Application 11/124,337
Technology Center 3700
____________

Before JOHN C. KERINS, STEVEN D.A. McCARTHY, and
GAY ANN SPAHN, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-012876
Application 11/124,337

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STATEMENT OF THE CASE
Janet C. Fields (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision finally rejecting claims 1-15, as follows:
claims 1, 3-6, and 8 under 35 U.S.C. § 103(a) as
unpatentable over Seeger (U.S. Patent No. 2,943,660, issued
Jul. 5, 1960) and Friesen1 (U.S. Patent No. 3,475,767, issued
Nov. 4, 1969) (Ans. 3-5);

claims 2 and 9-15 under 35 U.S.C. § 103(a) as
unpatentable over Seeger, Friesen, and Ziglar (U.S. Patent No.
5,964,533, issued Oct. 12, 1999) (Ans. 5-7); and

claim 7 under 35 U.S.C. § 103(a) as unpatentable over
Seeger, Friesen, and Kellogg (U.S. Patent No. 6,948,632 B2,
issued Sep. 27, 2005) (Ans. 7).

Claims 16-20 stand withdrawn from consideration by the Examiner pursuant
to a restriction requirement. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The Invention
The claims on appeal relate to a disposable collapsible receptacle for
liquids. Claim 1, reproduced below, is representative of the subject matter
on appeal.
1. A disposable collapsible receptacle for
liquids, the receptacle comprising:
a wire frame having a collapsed state,
wherein the wire frame stores potential energy, and
an uncollapsed state, wherein the wire frame
releases the stored potential energy; and

1 The Examiner’s Answer repeatedly mistakenly refers to “Freisen.”
However, this appears to be a typographical error and we assume that the
Examiner meant to refer to the correct reference name of “Friesen.”
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Application 11/124,337

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a biodegradable material attached to the wire
frame and capable of retaining liquid.

OPINION
The Examiner finds that Seeger teaches the subject matter of claim 1
substantially as claimed, except that Seeger fails to explicitly teach that the
wire frame stores potential energy in the collapsed state and releases the
potential energy in the uncollapsed state and that the material attached to the
wire frame is biodegradable. Ans. 3. More particularly, the Examiner finds
that Seeger teaches exactly the opposite, i.e., “the stored potential energy
restores a frame to a collapsed state thereby closing a receptacle while the
instant frame's stored potential energy restores a frame to an uncollapsed
state thereby opening a receptacle.” Id. However, the Examiner reasons
that, in both the claimed subject matter and in Seeger, the restoring force of
a spring provides substantially the same function of restoring a frame to its
original state. The Examiner concludes that “[i]n view of the known use of
springs in the mechanical art to open and close receptacles, selecting a
collapsed or an uncollapsed state for a particular receptacle would have been
within the ordinary skill of a routine worker in the art at the time the
invention was made and therefore obvious.” Id. The Examiner also finds
that Friesen teaches a receptacle 20 comprised of a biodegradable material.
Ans. 4. The Examiner concludes that it would have been obvious to a
person of ordinary skill in the art to form the receptacle of Seeger of a
biodegradable material as taught by Friesen in order to improve the disposal
of the receptacle. Id.
Appellant contends that Seeger discloses the exact opposite of what is
recited in claim 1, i.e., Seeger’s wire frame (spring lock 11) stores potential
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Application 11/124,337

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energy in the uncollapsed or open state and releases potential energy in the
collapsed or closed state. Br. 6. As evidence of this, Appellant cites to
Seeger’s column 2, lines 17-19, which states that “[w]hen vomiting is
imminent, spring lock 11 is opened and after heaving of stomach contents
into bag 15, lock 11 is allowed to reclose.” Id. Appellant also contends that
a person of ordinary skill in the art would not modify Seeger to provide the
completely opposite functioning of the opening and closing of the
receptacle. Id. Appellant argues that modifying Seeger’s mode of operation
to the completely opposite functioning of storing potential energy in the
collapsed state and releasing it in the uncollapsed state would fundamentally
alter Seeger’s principle of operation and would make Seeger’s receptacle
unsatisfactory for its intended purpose of containing noxious odors. Br. 6-7.
Appellant also argues that there is no reason why a person of ordinary skill
in the art would modify Seeger to work in a completely opposite manner.
Br. 7.
We agree with Appellant that a person of ordinary skill in the art
would not modify Seeger’s wire frame (spring lock 11) to have “a collapsed
state, wherein the wire frame stores potential energy, and an uncollapsed
state, wherein the wire frame releases the stored potential energy.” See Br.,
Claims Appd’x. It is uncontested that Seeger’s wire frame (spring lock 11)
functions in a completely opposite manner, i.e., stores potential energy in the
uncollapsed or open state and releases potential energy in the collapsed or
closed state, than the receptacle of claim 1. Seeger’s outer container 10 is
normally flat, as shown in Figure 3, due to a normally closed elongated self-
closing spring embracing its openable neck. Col. 2, ll. 54-60 and Fig. 3.
However, upon use, the spring lock 11 is readily opened by pressing its ends
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Application 11/124,337

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toward each other and maintained in the open position by hand pressure as
shown in Figure 1. Col. 2, ll. 5-6 and Fig. 1. Once used, the spring lock 11
is allowed to reclose to contain malodorous articles/substances. Col. 2,
ll.17-21 and 54-64. The Examiner has not shown by a preponderance of the
evidence that Seeger’s receptacle could be modified to work in a completely
opposite manner. Nor has the Examiner articulated a reason with some
rational underpinning as to why a person of ordinary skill in the art would
want to modify the receptacle to remain open once the malodorous
article/substance is deposited therewithin. See KSR Int’l. Co. v. Teleflex,
Inc., 550 U.S. 398, 418 (2007) (“[T]here must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.”).
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 1, 3-6, and 8 under 35 U.S.C. § 103(a) as unpatentable over Seeger
and Friesen. Since neither Ziglar nor Kellogg cure the deficiencies of the
combination of Seeger and Friesen and since the rejections of claims 2, 7,
and 9-15 are based upon the same combination of Seeger and Friesen, we
also do not sustain the Examiner’s rejection of claims 2 and 9-15 under 35
U.S.C. § 103(a) as unpatentable over Seeger, Friesen, and Ziglar, and claim
7 under 35 U.S.C. § 103(a) as unpatentable over Seeger, Friesen, and
Kellogg.

DECISION
We reverse the Examiner’s rejection of: claims 1, 3-6, and 8 under 35
U.S.C. § 103(a) as unpatentable over Seeger and Friesen; claims 2 and 9-15
under 35 U.S.C. § 103(a) as unpatentable over Seeger, Friesen, and Ziglar;
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Application 11/124,337

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and claim 7 under 35 U.S.C. § 103(a) as unpatentable over Seeger, Friesen,
and Kellogg.

REVERSED

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