Ex Parte Gallop et al

Patent Trial and Appeal Board

Jul 11, 2017

13102569 (P.T.A.B. Jul. 11, 2017)

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.
13/102,569 05/06/2011 William A. Gallop WNA038-US 7391
13174 7590 07/1
Newell Brands
6655 Peachtree Dunwoody Road
Legal Dept. - Patents
Atlanta, GA 30328
EXAMINER
CASTELLANO, STEPHEN J
ART UNIT PAPER NUMBER
3781
NOTIFICATION DATE DELIVERY MODE
07/13/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patents @ newellco.com
s ara. medina @ newellco. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM A. GALLOP and ASHISH K. MITHAL
Appeal 2016-000430
Application 13/102,569
Technology Center 3700
Before MICHAEL L. HOELTER, LYNNE H. BROWNE, and
GORDON D. KINDER, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the rejection of claims
1—5, 7—11, and 17.1 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Claims 6, 12—16, 18—32, 49, and 59 are canceled and claims 33—48, 50-58,
and 60 are withdrawn from consideration by the Examiner. Appeal Br. 23—
28 (Claims App.).
Appeal 2016-000430
Application 13/102,569
CLAIMED SUBJECT MATTER
Independent claim 1, reproduced below, is illustrative of the claimed
1. A tightly nestable, injection molded container with enhanced
resistance to sidewall compression, the container comprising:
a base defining a bottom closed end of said container and
having four peripheral edges, said base being approximately
square in shape;
four sidewalls, each sidewall comprising a top edge, a
bottom edge and a pair of side edges,
said four sidewalls rising upwardly from said base with
the bottom edges of the four sidewalls being respectively joined
to said four peripheral edges of said base,
said four sidewalls being joined to each other at their side
edges and defining an interior closed space for containing a
substance therein,
the top edges of the four sidewalls being joined together
to form a top inner periphery and defining a top open end of
said container; and
an upper rim circumscribing said top inner periphery and
attached thereto at said top open end of said container, said
upper rim having a top outer periphery, said upper rim being
adapted to resist deformation thereof,
said four sidewalls having a thickness in in the range of
about 0.2 mm to about 0.25 mm, said container having a fluid
capacity of less than about 3 oz and greater than about 1 oz,
said four sidewalls being strong enough to resist
substantial deformation or collapse when grasped and held by a
user’s hand.
The prior art relied upon by the Examiner in rejecting the claims on
subject matter:
REFERENCES
appeal is:
Fletcher
Harod
Stephens
US 4,831,840 May 23, 1989
US 6,358,516 B1 Mar. 19, 2002
US 2003/0141218 A1 July 31, 2003
2
Appeal 2016-000430
Application 13/102,569
Morgan US 2004/0182257 A1 Sept. 23, 2004
Van Handel US 2005/0011898 A1 Jan. 20, 2005
REJECTIONS
I. Claims 1—5, 7—11, and 17 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Van Handel and Stephens.2
II. Claims 1—5, 7—11, and 17 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Van Handel, Stephens, Fletcher,
Morgan, and Harod.3
DISCUSSION
Rejection I
Appellants’ arguments are directed to claim 1. See Appeal Br. 10-18.
Appellants do not mention claims 2—5, 7—11, and 17, which are subject to
this ground of rejection.4 See generally id. Accordingly, claims 2—5, 7—11,
and 17 to stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
2 Bay is listed in the statement of this rejection and is cited for a feature that
is not recited in any of the pending claims. Non-Final Act. 3, 5; see Appeal
Br. 23—28 (Claims App.). As noted by Appellants, “[sjince claim 1 does not
recite that the sidewalls are bowed inward, it would appear that Bay is cited
with regard to currently withdrawn claims 40 and 53.” Appeal Br. 17.
Accordingly, we understand the inclusion of Bay in the statement of this
rejection to be a typographical error and the inclusion of Bay in the rejection
to be an artifact left over from when claims 40 and 53 were not withdrawn
from consideration. Accordingly, we do not address Appellants’ arguments
pertaining to Bay.
3 See note 3.
4 Appellants do mention claims 40 and 53; however, as noted by Appellants,
these claims are withdrawn from consideration. Appeal Br. 10, 17.
Accordingly, we do not consider Appellants’ arguments pertaining to claims
40 and 53.
3
Appeal 2016-000430
Application 13/102,569
The Examiner finds that Van Handel discloses all of the limitations of
claim 1 except for the claimed sidewall thickness. See Non-Final Act. 4.
The Examiner further finds that “Stephens teaches a tray 10 having a
nominal thickness of about 0.2 to about 3.0 mm.” Id. (citing Stephens 122).
The Examiner determines that “the claimed range of about 0.2 mm to about
0.25 mm lies inside the range specified by Stephens.” Id. Based on these
findings and the determination that Stephens’ range overlaps/encompasses
the claimed range, the Examiner reasons that it would have been obvious “to
modify the wall thickness of the container of Van Handel to be from .2 mm -
.25 mm thick to conserve on material yet provide a strong enough sidewall
to prevent damage or crushing.” Id.
Appellants contend that “[t]he clear implication by the Examiner is
that virtually any container volume can be combined with virtually any wall
thickness to produce a satisfactory food service container.” Appeal Br. 11.
In support of this contention, Appellants note that “Van Handel is silent
regarding the thickness of the side walls” and assert that “[i]t would appear,
therefore, that Van Handel is cited as prior art only because it teaches the
claimed container capacity for a container that is handled by its sidewalls,
despite the lack of any teaching or suggestion as to wall thickness.”5 Id.
5 Appellants state that it is their position that “any assertion of obviousness
of claim 1 under 35 USC § 103(a) must include a showing that the cited
combination of prior art is relevant to the problem addressed by the present
invention.” Appeal Br. 8. However, it is not necessary for the prior art to
serve the same purpose as that disclosed in Appellants’ Specification in
order to support the conclusion that the claimed subject matter would have
been obvious. See In reLinter, 458 F.2d 1013, 1016 (CCPA 1972); see also
KSRInt’l Co. v. Teleflex, Inc., 550 U.S. 398, 419 (2007) (“[N]either the
particular motivation nor the avowed purpose of the [Appellants] controls”
in an obviousness analysis.).
4
Appeal 2016-000430
Application 13/102,569
Although we agree with Appellants that Van Handel does not address
sidewall thickness6 and that Van Handel was cited for its disclosures
pertaining to container capacity and capability of being handled by its
sidewalls, we find Appellants’ characterization of the rejection untenable.
Appellants provide no evidence that the implication of the rejection is that
any container volume can be combined with virtually any wall thickness to
produce a satisfactory food service container. Rather, the implication of the
rejection is that it would have been obvious to modify Van Handel’s
container to have a wall thickness in the range 0.2—0.25 mm in view of
Stephen’s teachings of an overlapping range. See Non-Final Act. 4—5.
Furthermore, Appellants’ contentions separately attack Van Handel.
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).
Thus, Appellants do not apprise us of error.
Appellants further contend that a “passing reference to a nominal
thickness range in Stephens cannot be cited as anticipating any aspect of
claim 1 because it is much too vague to allow for any reasonable
interpretation that does not rely on the application of hindsight.” Appeal Br.
12; see also id. at 15 (“the claimed subject matter must be disclosed in the
reference with ‘sufficient specificity to constitute an anticipation under the
statute.’” (emphasis omitted)); see also Reply Br. 8.7
6 We note that this fact is not in dispute. Non-Final Act. 4.
7 Appellants’ arguments in this section of the Appeal Brief rely on Clear
Value Inc. v. Pearl River Polymers Inc., 668 F.3d 1340 (Fed. Cir. 2012).
However, ClearValue pertains to anticipation of ranges, not obviousness of
ranges and therefrom is inapposite.
5
Appeal 2016-000430
Application 13/102,569
Appellants’ arguments attack Stephens separately, and thus, as
discussed supra, cannot apprise us of error. Further, we note that the
rejection at issue is based on obviousness not anticipation.8 Moreover, when
claimed ranges overlap or lie inside ranges disclosed by the prior art for
every component in a claim, a prima facie case of obviousness is
established. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); In re
Geisler, 116 F.3d 1465, 1469—70 (Fed. Cir. 1997). Such overlap itself
provides sufficient motivation to optimize the ranges. See Peterson, 315
F.3d at 1330 (“The normal desire of scientists or artisans to improve upon
what is already generally known provides the motivation to determine where
in a disclosed set of. . . ranges is the optimum combination . . . .”). In the
present case, because the prior art disclosed values overlapping the claimed
ranges, the “general conditions” of the claim are disclosed. See In re Aller,
220 F.2d 454, 456 (CCPA 1955); see also In re Boesch, 617 F.2d 272, 276
(CCPA 1980). Thus, Appellants do not apprise us of error.
In addition, Appellants argue that “Stephens does not teach a
container that is handled by its sidewalls.” Appeal Br. 14 (emphasis
omitted); see also Reply Br. 9. Appellants’ argument is not indicative of
error because claim 1 does not require a container that is handled by its
sidewalls. Rather, claim 1 requires “four sidewalls being strong enough to
resist substantial deformation or collapse when grasped and held by a user’s
hand.” Appeal Br. 23 (Claims App.). Appellants do not explain why
Van Handel’s container as modified to have the claimed wall thickness
8 As the rejection does not rely on a theory of inherency, we do not address
Appellants’ further arguments pertaining to anticipation and inherency. See
Appeal Br. 13.
6
Appeal 2016-000430
Application 13/102,569
would not “resist substantial deformation or collapse when grasped and held
by a user’s hand” as required by claim 1. Moreover, the rejection relies on
the combined teachings of Van Handel and Stephens to meet this limitation.
As discussed supra, Appellants’ separate attack on Stephens cannot establish
nonobviousness. Thus, Appellants do not apprise us of error.
For these reasons, we sustain the Examiner’s decision rejecting claim
1, and claims 2—5, 7—11, and 17, which fall therewith.
Rejection II
Having sustained the Examiner’ decision rejecting claims 1—5, 7—11,
and 17 based on the combined teachings of Van Handel and Stephens, we
need not reach the Examiner’s alternative rejection of these claims based on
the combined teachings of Van Handel, Stephens, Fletcher, Morgan, and
Harod.
DECISION
The Examiner’s rejection of claims 1—5, 7—11, and 17 as unpatentable
over Van Handel and Stephens 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)(l)(iv).
AFFIRMED
7