Ex Parte Glade

Board of Patent Appeals and Interferences

Apr 28, 2009

11162101 (B.P.A.I. Apr. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DWIGHT GLADE
__________

Appeal 2009-3623
Application 11/162,101
Technology Center 3700
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Decided:1 April 28, 2009
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Before TONI R. SCHEINER, MELANIE L. McCOLLUM, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

SCHEINER, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-3623
Application 11/162,101

This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1 and 2, all the claims pending. We have jurisdiction under 35
U.S.C. § 6(b).
STATEMENT OF THE CASE
“[T]his invention relates to a cover that is placed on the tab of a soda
can to cover the opening of the can” (Spec. ¶ 2).
Claim 1 is representative of the subject matter on appeal:
1. A cover for a can having a top with a rotatably mounted tab and an
opening disposed in said top, said cover comprising:
a member having a top, bottom and sidewall that form a cavity,
wherein the bottom of said member has a semicircular notch for center
pivoting about said rotatably mounted tab and an elastic ridge on the bottom
to matingly engage the tab;
said cavity of size and shape to receive the tab of the can;
and
wherein the cover is of size and shape to cover the opening of the can.

The Examiner relies on the following evidence:
Lang US 5,799,815 Sep. 1, 1998
Nordhoff US 5,911,794 Jun. 15, 1999

The Examiner rejected claims 1 and 2 under 35 U.S.C. § 112, first
paragraph, as indefinite, and under 35 U.S.C. § 103(a) as unpatentable over
Nordhoff and Lang.
We reverse.
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Appeal 2009-3623
Application 11/162,101

INDEFINITENESS
Issue
The can tab cover of claim 1 has “an elastic ridge on the bottom to
matingly engage the tab.”
The Examiner’s position is that claim 1 is indefinite because it “fails
to clearly point out the location of where the elastic ridge is located in terms
of the surface on the bottom of the cover member” (Ans. 3).
Appellant contends that the “arrangement is clear and definite from
the figures, description and claim” (Reply Br. 2-3).
The issue raised by this rejection is whether one skilled in the art
would understand which surface of the can tab cover the elastic ridge is
located on when claim 1 is read in light of the Specification.
Findings of Fact
FF1 Claim 1 specifies that the bottom of the cover has “an elastic
ridge . . . to matingly engage the tab” of the can.
FF2 The word “ridge” has several ordinary meanings, including:2
1 : an elevated body part or structure
2 a : a range of hills or mountains b : an elongate elevation on an
ocean bottom
3 : an elongate crest or a linear series of crests
4 : a raised strip (as of plowed ground)

FF3 Figure 2 of the Specification, reproduced below, “is a plan
bottom view” (Spec. ¶ 10) of an embodiment of the can tab cover 24,
showing bottom 28, cavity 32, and ridge 36:

2 From Merriam-Webster’s Online Dictionary, at http://www.merriam-
webster.com/dictionary/ridge
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Appeal 2009-3623
Application 11/162,101

Figure 2 shows an embodiment of the can tab cover, in which “the inner
surface of the bottom 28 of cover 24 . . . has a rubber or elastic ridge 36
around its perimeter that matingly engages the tab” (Spec. ¶ 14).
Principles of Law
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted).
Analysis
According to claim 1, the tab of the can is received by the cavity
formed by the top, bottom, and sidewall of the cover, and the tab is engaged
by an elastic ridge (i.e., an elevated part or raised strip (FF2)) on the bottom
of the cover (FF1). Figure 2 depicts ridge 36 as it appears on the outer
surface of bottom 28 of the cover. In describing Figure 2, the Specification
indicates that ridge 36 is on the inner surface of bottom 28, and engages the
tab (FF3). One of skill in the art would understand from the relationship
between the tab and the ridge required by claim 1, as well as the depiction of
the cover in Figure 2 and its description in the Specification, that the ridge
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Appeal 2009-3623
Application 11/162,101

projects into the cavity from the inner surface of the bottom of the cover in
order to engage the tab. Figure 2 merely shows the reverse side of the ridge
as it would appear from the outside of the cover.
Conclusions of Law
One skilled in the art would understand which surface of the can tab
cover the elastic ridge is located on when claim 1 is read in light of the
Specification.
OBVIOUSNESS
Issue
The Examiner rejected claims 1 and 2 as unpatentable over the
combined teachings of Nordhoff and Lang. As discussed above, claim 1
requires “an elastic ridge on the bottom [of the cover] to matingly engage the
tab.”
The Examiner’s position is that both Nordhoff and Lang appear to
disclose covers with ridges on the bottom capable of engaging a can tab
(Ans. 5, 7), while Appellant contends that “[n]either Nordhoff or Lang
teach[es] a ridge” on a can tab cover at all (App. Br. at 4).
The issue raised by this rejection is whether the Examiner has
established that a can tab cover with a ridge on the bottom of the cover
capable of matingly engaging the tab is taught or suggested by the combined
disclosures of Nordhoff and Lang.

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Appeal 2009-3623
Application 11/162,101

Findings of Fact
FF4 The word “engage” is a verb with several ordinary meanings,
including:3
transitive verb
1 : to offer (as one’s word) as security for a debt or cause
2 a obsolete : to entangle or entrap in or as if in a snare or bog b : to
attract and hold by influence or power c : to interlock with : MESH ;
also : to cause (mechanical parts) to mesh
* * *
intransitive verb
* * *
4 : to come together and interlock (as of machinery parts) : be or
become in gear

FF5 Nordhoff describes a tool “for manipulating an opening tab
mounted on a beverage container” (Nordhoff, col. 2, ll. 20-21), which holds
the tab within an internal channel and “substantially covers the tab” (id. at
col. 2, ll. 29-32).
FF6 The lower face of Nordhoff’s tool is illustrated in Figure 1,
reproduced immediately below:

3 From Merriam-Webster’s Online Dictionary, at http://www.merriam-
webster.com/dictionary/engage
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Appeal 2009-3623
Application 11/162,101

Figure 1 is a perspective view of the lower face of Nordhoff’s tool, with an
internal channel (shown as a dashed line) sized at least as high, at least as
wide, and at least as long as the tab on a beverage container (Nordhoff, col.
3, ll. 37-39).
Internal channel 25 is cut into recessed portion 35 of elongate
member 11 so that cut-away section 32 is narrower and shorter
than internal channel 25. At least two opposing tabs 27 and 29,
formed from lower face 14, extend from the sides of elongate
member 11 along the sides of cut-away section 32.

(Id. at col. 3, ll. 39-44.)
The front end of Nordhoff’s tool is illustrated in Figure 3A,
reproduced immediately below:

Figure 3A is a perspective front-end view of Nordhoff’s tool, showing
opposing tabs 27 and 29 in cross-section. “Cut-away 32 allows tool 10 to be
slid around tab 60 [not shown] so that tab 60 enters recessed area 35 . . .
Opposing tabs 27 and 29 are below tab 60 and keep tab 60 from slipping out
of tool 10” (id. at col. 4, ll. 9-13).
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Appeal 2009-3623
Application 11/162,101

FF7 Nordhoff’s tool is “preferably made of one-piece injection
molded plastic” but could also be metal, wood, or ceramic (Nordhoff, col. 3,
ll. 60-62).
FF8 Lang discloses a hollow sleeve, preferably closed at one end,
“constructed of elastomeric, flexible, resilient material such as plastic or
rubber and dimensioned to slide over but to fit closely around the free end of
the pull tab” of a pop-top can (Lang, col. 1, ll. 48-57). Figure 3, reproduced
below, shows the sleeve seated on the free end of a tab:

Figure 3 depicts Lang’s elastomeric “sleeve 34 which has been slipped over
the free end 26 of tab 24 and seated thereon” (id. at col. 2, ll. 64-65). Figure
7, reproduced immediately below, is a schematic front elevation of the
sleeve of Figure 3:

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Appeal 2009-3623
Application 11/162,101

Figure 7 is a schematic front elevation of sleeve 34 shown in Figure 3, and
shows “a top 36 separated from a bottom 38 by a closed end wall 40 and
opposite sides 42 to form a flattened tube defining a longitudinal tab-
receiving passageway 44 extending from open end 46 of sleeve 34 opposite
closed end wall 40” (id. at 3, ll. 5-9).
Principles of Law
“In proceedings before the Patent and Trademark Office, the
Examiner bears the burden of establishing a prima facie case of obviousness
based upon the prior art.” In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir.
1992). Obviousness requires a suggestion of all the elements in a claim
(CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003))
and “a reason that would have prompted a person of ordinary skill in the
relevant field to combine the elements in the way the claimed new invention
does.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Analysis
Claim 1 requires a cover with a top, bottom, and sidewall that form a
cavity, and “an elastic ridge on the bottom [of the cover] to matingly engage
the tab[.]”
The Examiner’s position is that “[t]he tabs (Nordhoff, 27, 29) appear
to be ridges on the bottom of the tab cover” (Ans. 5). In addition, the
Examiner “interprets the area near the open end (Lang, 46) of the sleeve [as]
appearing to be a ridge area, which appears to be elastic, due to the sleeve
being of elastic material” (id. at 7). The Examiner concludes that “[i]t would
have been obvious . . . to make the ridges . . . of the Nordhoff beverage can
tab cover of an elastic material, as suggested by Lang” (id. at 6).

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Appeal 2009-3623
Application 11/162,101

Nevertheless, tabs 27 and 29 of Nordhoff are simply the margins of
lower face 14 (a planar surface), and they merely define the contours of cut-
away section 32 (FF6). The Examiner has not explained how the edges of a
planar surface can be ridges. Ridges are elevated structures (FF2), but tabs
27 and 29 are co-planar with the lower face of Nordhoff’s tool. Similarly,
“the area near the open end” 46 of Lang’s sleeve is simply the edge of the
sleeve (FF8), and therefore co-planar with the sleeve. Therefore, we agree
with Appellant that the Examiner has not established that either of these
references teaches or suggests this required element (App. Br. 4).
Conclusions of Law
The Examiner has not established that a can tab cover with a ridge on
the bottom of the cover capable of matingly engaging the tab is taught or
suggested by the combined disclosures of Nordhoff and Lang.
SUMMARY
The rejection of claims 1 and 2 under 35 U.S.C. § 112, first paragraph,
as indefinite, is reversed.
The rejection of claims 1 and 2 under 35 U.S.C. § 103(a) as
unpatentable over Nordhoff and Lang is reversed.

REVERSED

cdc

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