Ex Parte Geibel et al

Board of Patent Appeals and Interferences

Jul 22, 2011

11041860 (B.P.A.I. Jul. 22, 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.
11/041,860 01/24/2005 Dean E. Geibel Teasdale-0501 2591
36787 7590 07/25/2011
BLYNN L. SHIDELER
THE BLK LAW GROUP
3500 BROKKTREE ROAD
SUITE 200
WEXFORD, PA 15090
EXAMINER
ANDERSON, CATHARINE L
ART UNIT PAPER NUMBER
3764
MAIL DATE DELIVERY MODE
07/25/2011 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 DEAN E. GEIBEL and JAMIE TEASDALE
____________________

Appeal 2010-001957
Application 11/041,860
Technology Center 3700
____________________

Before: MICHAEL W. O’NEILL, PHILLIP J. KAUFFMAN, and
EDWARD A. BROWN, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-001957
Application 11/041,860

2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the rejection of claims
1 and 5-8. The Examiner rejected claims 1, 5, 6, and 8 under 35 U.S.C.
§ 103(a) as being unpatentable over Yagi (US Des. 329,355; issued
September 15, 1992) and Rocheleau (US 5,487,482; issued January 30,
1996); and claim 7 under 35 U.S.C. § 103(a) as being unpatentable over
Yagi, Rocheleau, and Jones (US 5,558,840; issued September 24, 1996).
Claims 2-4 are cancelled, and claims 9-12 have been withdrawn from
consideration. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

THE INVENTION
Appellants’ claimed invention relates to “a removable handle for a
fluid specimen container.” Spec. 1, para. [0003]. Independent claim 1,
reproduced below, is representative of the claimed subject matter:
1. A urine collection device comprising:
a specimen container body that defines an inner wall, an
outer wall, a rim, and a fluid collection and retrieval opening
defined by the inner wall of the specimen container body
adjacent to the rim;
external container threads defined by the outer wall
adjacent to the rim; and
a handle that defines a band,
the band comprising external handle threads that
mate with the external container threads to removably
attach the band to the specimen container body,
wherein the band does not extend above the rim.

Appeal 2010-001957
Application 11/041,860

3
ISSUE
Would the combined disclosures of Yagi and Rocheleau have led a
person of ordinary skill in the art to the subject matter of independent claim
1?

ANALYSIS
Rejection of claims 1, 5, 6, and 8 under 35 U.S.C. § 103(a) as unpatentable
over Yagi and Rocheleau
Appellants argue claims 1, 5, 6, and 8 as a group. App. Br. 8. We
select claim 1 as the representative claim, and claims 5, 6, and 8 stand or fall
with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner found that Yagi discloses the aspects of independent
claim 1, except that Yagi’s handle does not have threads that mate with the
external threads of the container to removably attach the band to the
container body. Ans. 3. The Examiner found that Rocheleau discloses the
use of threads on the band of a handle that mate to the threads of a container
for removably attaching the band. Id. The Examiner concluded that it
would have been obvious “to provide the handle of Yagi with threads to
mate with the external threads on the container body, as taught by
Rocheleau, to provide a secure but releasable attachment between the handle
and the container body.” Id.
Appellants argue Rocheleau discloses a band that extends above the
rim of the container, thereby teaching away from the subject matter of
independent claim 1, which calls for the band not to extend above the rim of
the container. App. Br. 10-12; Reply Br. 2. Although a portion of
Rocheleau’s band that is not internally threaded extends above the rim of the
Appeal 2010-001957
Application 11/041,860

4
container, the Examiner relied upon the band of Yagi, which Appellants
admit does not extend above the rim of the container. Rocheleau, fig. 5;
Ans. 3; App. Br. 10; Yagi, figs 2, 20.
Given this, Appellants’ argument is unconvincing both because it is
an individual attack on the references, and because it fails to address the
rejection as articulated by the Examiner, which is based on the combination
of Yagi and Rocheleau. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) citing In re Keller, 642 F.2d 413, 425 (CCPA 1981) (one cannot
show nonobviousness by attacking references individually where the
rejections are based on combinations of references).
Appellants argue that if Yagi’s band were modified to be threaded and
were then mated to the existing threads on the outer wall of Yagi’s container,
such modification would displace the lid upwards so that the lid would no
longer seal the container, rendering Yagi unsatisfactory for its intended
purpose. App. Br. 12. In response, the Examiner clarifies that the proposed
modification would not use the existing threads on the outer wall of Yagi’s
container that correspond to the lid, but rather, the proposed modification
would add threads to the outer wall of Yagi’s container in a position
corresponding to the unmodified location of Yagi’s band. Ans. 5.
Appellants then revise to argue that in the proposed combination, nothing
would prevent the band from inadvertently being rotationally loosened and
thus displaced upwards, so that when the lid is reattached to the container
the upwardly displaced band would prevent the lid from properly sealing,
rendering Yagi unsatisfactory for its intended purpose. Reply Br. 3. We are
unpersuaded by this argument.
Appeal 2010-001957
Application 11/041,860

5
First, Appellants have not asserted or shown that the Examiner’s
proposed modification of Yagi’s container is beyond the skill of a person
having ordinary skill in the art, that is, that one skilled in the art could not
have combined the claimed elements by known methods. See, e.g.,
Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161-62 (Fed.
Cir. 2007) (finding that the combination of familiar elements according to
known methods was obvious when it did no more than yield predictable
results and when the patentee presented no evidence that the combination
was “uniquely challenging or difficult for one of ordinary skill in the art” or
“represented an unobvious step over the prior art.” (citing KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007)). See also KSR, 550 U.S. at 418 (it
is proper to “take account of the inferences and creative steps that a person
of ordinary skill in the art would employ”); id. at 421 (“[a] person of
ordinary skill is also a person of ordinary creativity, not an automaton.”).
The alleged shortcoming identified by Appellants is, at most,
described as a detail of construction that would be overcome by the ordinary
skilled artisan by known methods. For example, the handle could be
attached with left-handed threads and the lid with right-handed threads, thus
preventing inadvertent loosening of the band when removing the lid. See
Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir.
2009) (“while an analysis of obviousness always depends on evidence … it
also may include recourse to logic, judgment, and common sense available
to the person of ordinary skill that do not necessarily require explication in
any reference”).
Second, Appellants’ contention ignores the fact that a person of
ordinary skill in the art would recognize that the lid must be properly
Appeal 2010-001957
Application 11/041,860

6
tightened to create a seal. Rocheleau provided evidence of such knowledge
by disclosing that closure cap 14 threadably engages closure body 12 so that
disk-shaped seal gasket 42 sealably closes the open top 12E of the closure
body 12. Rocheleau, col. 5, ll. 22-31. Accordingly, should a user encounter
the band of the proposed combination positioned so that the lid could not
seal, that user would simply adjust the position of the band in order to permit
the lid to properly seal.
Appellants also argue that there is no teaching, suggestion, or
motivation, other than impermissible hindsight, to modify Yagi’s handle
band as taught by Rocheleau because, “the Yagi drawings purposely exclude
a threaded handle band that engages external threads on the container.”
App. Br. 13-14. We find this argument unpersuasive.
First, we cannot agree with Appellants’ characterization that Yagi’s
drawings “purposely exclude” a threaded handle band. See App. Br. 14.
Yagi discloses threadably attaching the lid to the container, and the band of
Yagi’s handle is not depicted as threaded to the container. Yagi, fig 10.
Thus, Yagi discloses threadably attaching the lid to the container and
attaching the band by other, undisclosed means. As Appellants have
acknowledged, we do not know why Yagi does not threadably attach the
band to the container. App. Br. 14. We fail to see how such disclosure can
be said to teach away from the approach taken by Appellants of threadably
attaching the band. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)
(“The prior art’s mere disclosure of more than one alternative does not
constitute a teaching away from any of these alternatives because such
disclosure does not criticize, discredit, or otherwise discourage the solution
claimed in the [present] application.”).
Appeal 2010-001957
Application 11/041,860

7
Second, Appellants do not apply the correct legal standard. Though
Appellants acknowledge the Supreme Court’s decision in KSR, Appellants
ignore the holding there and rather apply a strict teaching, suggestion or
motivation type argument by arguing that because the motivation is not
found in Yagi, there is no motivation. See KSR, 550 U.S. at 418 (rejecting
the rigid requirement of a teaching, suggestion, or motivation to combine
known elements in order to show obviousness). The correct standard is
whether the Examiner articulated reasoning with a rational underpinning to
support the legal conclusion of obviousness. In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418).
Here, the Examiner’s rationale is that the proposed modification of
Yagi would provide a secure but releasable attachment between the handle
and the container body. This rationale is reasonable given that Rocheleau
discloses a handled closure device for use with standard size plastic bottles
that is capable of easy installation and removal and provides pouring
capability for the device, and given that Yagi does not teach away from such
a combination. Rocheleau, col. 1, ll. 5-8, 50-51; col. 2, ll. 7-10; fig. 1. One
skilled in the art would recognize the desirability of providing these same
features in Yagi.
As such, we sustain the rejection of independent claim 1, and claims
5, 6, and 8 fall with claim 1.

Rejection of claim 7 under 35 U.S.C. § 103(a) as unpatentable over Yagi,
Rocheleau, and Jones
Claim 7 depends from independent claim 1. The rejection of claim 7
relies upon the same combination of Yagi and Rocheleau used for the
Appeal 2010-001957
Application 11/041,860

8
rejection of claim 1 with a further modification to form the band as an
elastomeric strap as taught by Jones. Ans. 4. Appellants contend that claim
7 stands or falls with claim 1, and we take this as an assertion that the
arguments used against the rejection of claim 1 apply to the rejection of
claim 7. See App. Br. 8. Our analysis of the arguments used against the
rejection of claim 1, supra, applies equally well here, and we thus sustain the
rejection of claim 7.

CONCLUSION
The combined disclosures of Yagi and Rocheleau would have led a
person of ordinary skill in the art to the subject matter of independent claim
1.

DECISION
We affirm the Examiner’s decision to reject claims 1 and 5-8.

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

nlk