Ex Parte Groberg et alDownload PDFPatent Trial and Appeal BoardJun 24, 201311300969 (P.T.A.B. Jun. 24, 2013) Copy Citation 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. 11/300,969 12/14/2005 Jason Groberg T10483.A 3400 7590 06/24/2013 JASON GROBERG 75 WEST 250 NORTH #17 CLEARFIELD, UT 84015 EXAMINER REYNOLDS, STEVEN ALAN ART UNIT PAPER NUMBER 3788 MAIL DATE DELIVERY MODE 06/24/2013 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 JASON GROBERG and HOLLI GROBERG ____________ Appeal 2011-005574 Application 11/300,969 Technology Center 3700 ____________ Before PHILLIP J. KAUFFMAN, BRETT C. MARTIN, and BART A. GERSTENBLITH, Administrative Patent Judges. GERSTENBLITH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-005574 Application 11/300,969 2 STATEMENT OF THE CASE Jason Groberg and Holli Groberg (“Appellants”) appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-3, 10-14, and 20-42. We have jurisdiction under 35 U.S.C. § 6(b). The Claimed Subject Matter Claims 1, 11, 20, 29, and 41 are the independent claims on appeal. Claims 1 and 10 are illustrative of the claimed subject matter and are reproduced below. 1. A container for tableware, said container comprising: a housing defining a first compartment, a second compartment and a third compartment; wherein said first compartment, said second compartment and said third compartment are removably attachable together; wherein at least one of said first compartment, said second compartment and said third compartment comprises at least three chambers; wherein said second compartment comprises a napkin support configured for holding napkins; wherein said first compartment comprises an upper portion extending to a top of said first compartment, and a lower portion extending to a bottom of said first compartment, wherein when said second compartment is attached to said upper portion of said first compartment, said second compartment defines an upper chamber that extends above said top of said first compartment and above said napkin support, and when said third compartment is attached to said lower portion of said first compartment, said third compartment defines a lower chamber that extends below said bottom of said first compartment; and Appeal 2011-005574 Application 11/300,969 3 wherein said first compartment, said second compartment and said third compartment are each configured for receiving a different variety of said tableware. 10. The container of claim 1, further comprising a handle for carrying said container, wherein said handle is disposed on said first compartment, said handle being pivotally attached to opposite sides of said housing to allow said handle to rotate from a position against said housing to an upward position for carrying said container; wherein said first compartment comprises a knife chamber, a fork chamber, a spoon chamber and at least one cup chamber; wherein said at least one cup chamber comprises a cup support for holding a cup in place; wherein said napkin support extends across said upper chamber and defines an opening for passing napkins therethrough; wherein said third compartment is configured for receiving plates; wherein said first compartment comprises a height that is at least half of the height of the container; wherein said housing is cylindrical; wherein a plurality of spaced apart recesses are formed in said upper portion of said first compartment to facilitate grasping an underside of said second compartment to remove said second compartment from said first compartment; wherein said first compartment comprises a floor enclosing said at least three chambers at said lower portion of said first compartment, and said at least three chambers are open at said upper portion of said first compartment when said second compartment is removed, and wherein said at least three chambers extend a majority height of said first compartment from said bottom of said first compartment to said top of said first compartment; and Appeal 2011-005574 Application 11/300,969 4 wherein at least one of said second compartment and said third compartment is attachable to said first compartment with a threaded engagement. App. Br. 23-25 (Claims App’x, Claims 1, 10) (emphases added). Claim 20 is directed to a container for tableware, said container comprising, inter alia, “a housing defining a first compartment, a second compartment and a third compartment . . . said second compartment comprising means for receiving napkins. Id. at 26-27 (Claims App’x, Claim 20) (emphasis added). References The Examiner relies upon the following prior art references: Tupper US 2,780,385 Feb. 5, 1957 Kopp US 3,144,152 Aug. 11, 1964 Venegoni US 4,911,295 Mar. 27, 1990 Koorse US 5,564,597 Oct. 15, 1996 Atkinson US 5,705,212 Jan. 6, 1998 Rejections The Examiner makes the following rejections: I. Claims 1, 20, 22-24, 26-28, 34, 35, 37, 38, and 40-42 are rejected under 35 U.S.C. § 103(a) as unpatentable over Kopp and Atkinson; II. Claim 2 is rejected under 35 U.S.C. § 103(a) as unpatentable over Kopp, Atkinson, and Venegoni; III. Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable over Kopp, Atkinson, and Tupper; IV. Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable over Kopp, Atkinson, Venegoni, and Tupper; V. Claims 11-14 and 39 are rejected under 35 U.S.C. § 103(a) as unpatentable over Kopp, Atkinson, and Venegoni; Appeal 2011-005574 Application 11/300,969 5 VI. Claim 21 is rejected under 35 U.S.C. § 103(a) as unpatentable over Kopp, Atkinson, and Koorse; VII. Claim 25 is rejected under 35 U.S.C. § 103(a) as unpatentable over Kopp, Atkinson, and Tupper; VIII. Claims 29-33 are rejected under 35 U.S.C. § 103(a) as unpatentable over Kopp, Atkinson, and Venegoni; and IX. Claim 36 is rejected under 35 U.S.C. § 103(a) as unpatentable over Kopp, Atkinson, and Tupper. SUMMARY OF DECISION We AFFIRM-IN-PART. OPINION All Claims Appellants raise an argument directed to the Examiner’s combination of Kopp and Atkinson that applies to each of the claims on appeal because the Examiner relied upon at least Kopp and Atkinson for each rejection. App. Br. 10-12. In particular, Appellants contend that Kopp “teaches away from a combination with Atkinson.” Id. at 11. Appellants assert that Kopp discloses that a cap 42 presses against seal 36 to form a closure for each compartment even after one or more of the compartments has been opened. Id. (referring to Figure 4 of Kopp). Appellants contend that “[t]his is an express teaching away from having the cap extend away from the opening of the jar to form a chamber as is disclosed in Atkinson,” because Atkinson’s cap would “destroy[] the ability for the cap to press against the seal and form a closure for each compartment after the compartments have been opened one at a time.” Id. Appeal 2011-005574 Application 11/300,969 6 Appellants acknowledge that Kopp discloses the use of an adhesive to seal the compartments, but assert that once the compartments have been opened, “without the cap 42 pressing against the seal 36, there would not be a closure for each compartment defined by the partitions.” Id. at 12. In such circumstance, Appellants contend that “[t]he coffee would be permitted to enter the chamber in the cap and/or into the other compartments when the container is inverted.” Id. Additionally, Appellants assert that if the lid of Atkinson were used with the container of Kopp, once the seal 36 were removed to access the coffee, the cap could no longer close each compartment defined by the partitions and “the container [of Kopp] would not be suitable for its intended purpose.” Id. In relying upon Kopp and Atkinson for each rejection noted above, the Examiner found that Kopp discloses many of the elements of the claims, but did not disclose that lids 421 included holding chambers for holding articles. Ans. 4. The Examiner found that Atkinson discloses a container comprising an upper compartment with a chamber that extends above the top of the main compartment and an article support (elements 30, 32) for holding an article separate from the main compartment. Id. The Examiner determined that it would have been obvious to one of ordinary skill in the art “to have modified the second and third compartments of Kopp to have storage chambers with article supports therein as taught by Atkinson in order to hold articles outside the first compartment.” Id. at 4-5. In response to Appellants’ argument, the Examiner found that “[t]here is no specific disclosure by Kopp that the cap holds the seal in place, only 1 Kopp identifies the top and bottom caps as element 42. E.g., Kopp, col. 2, ll. 34-35. Appeal 2011-005574 Application 11/300,969 7 that the cap is secured to the body.” Ans. 17. The Examiner further found that Kopp does not require the cap for sealing the compartments because “the seal is held in place by adhesive 40 between the seats and the seal.” Id. (citing Kopp, col. 2, ll. 26-33). Kopp discloses a divisional jar for coffee and other food products. See Kopp, Title. Kopp’s jar is “divided into a plurality of compartments and each compartment is separately and individually sealed so that in order to preserve the aroma and freshness of the coffee one compartment at a time is opened and the remaining compartment kept hermetically sealed.” Id. at col. 1, ll. 18-23. The upper end of the container is “closed by a closure cap having a liner or seal on the inner surface thereof which closure cap forms a closure for the entire jar and also a closure for each compartment defined by the partitions.” Id. at col. 1, ll. 27-31. The top openings of the compartments are “closed by a closure disc seated on the top peripheral edge of the cylindrical jar and on the top edges of the partitions which with the jar body define the compartments. The disc is sealed to its seat.” Id. at col. 1, ll. 32-35. Kopp discloses the following with respect to the sealing disc: In accordance with the invention, a circular sealing disc 36 closes the end openings of the compartments 20, 22 and 24 and a similar disc 38 closes the end openings of the compartments 28, 30 and 32. The discs are flexible, being formed of wax paper or the like, and seat on the outer peripheral end edge of the wall 12 and on the outer end edges of the partitions 26 and 34, with adhesive 40 between the seats and discs, whereby the compartments are hermetically sealed individually and the entire jar is sealed at both ends so that the contents stay fresh. Id. at col. 2, ll. 23-33. Appeal 2011-005574 Application 11/300,969 8 As reflected above, Kopp discloses that the adhesive between the circular sealing disc and the seats on the outer peripheral end edge of the wall and outer end edges of the partitions forms a hermetic seal for each compartment individually. While a sheet metal closure cap closes each open end of the jar (see Kopp, col. 2, ll. 34-35), it is the sealing disc that is disclosed as performing the sealing function. The cap is not disclosed as having adhesive between it and the sealing disc. The most reasonable understanding of Kopp’s disclosure is that when one wishes to use the contents of a compartment, the cap is removed and the seal for that compartment is opened. The other compartments remain individually sealed. While Kopp discloses a desire to maintain the aroma and freshness of the food products inside the other compartments for which the seals have not yet been opened, it does not disclose a similar desire to do so for a compartment which has been opened. See, e.g., id. at col. 1, ll. 17-23. In light of Kopp’s use of an adhesively attached sealing disc apart from the closure cap for the purpose of sealing and maintaining the freshness and aroma of food products within the individual compartments, the cap, while functioning to close the ends of the jar, is not disclosed as integral for the sealing of each compartment. We acknowledge that if a cap with a holding chamber, such as Atkinson’s, were used, once a compartment was unsealed the food products from that compartment may be able to move inside the cap depending upon the size of the food products and openings in the cap. Kopp’s objective, however, is not disclosed as maintaining the food products in the jar as opposed to the cap; rather, it was simply to have a jar wherein one compartment could be opened at a time thereby maintaining the freshness and aroma of the unopened compartments. Accordingly, we do Appeal 2011-005574 Application 11/300,969 9 not agree with Appellants that Kopp would discourage or lead one of ordinary skill in the art away from the path taken by Appellants or render Kopp unsuitable for its intended purpose. See In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (“A reference may be said to teach away when a person of ordinary skill, upon reading the reference, . . . would be led in a direction divergent from the path that was taken by the applicant.”) (quoting Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999)). Claim 1 Appellants contend that neither Kopp nor Atkinson discloses any structure that could be considered a napkin support configured for holding napkins.2 App. Br. 13. The Examiner found that lugs 30, 32 of Atkinson disclose a napkin support configured for holding napkins because “[n]apkins can be forced into the space between the lugs and the lid thereby preventing them from moving.” Ans. 17-18. Claim 1 calls for the second compartment to comprise “a napkin support configured for holding napkins.” App. Br. 23 (Claims App’x, Claim 1). The claim does not require that the napkins be held in a particular position. Atkinson discloses that a utensil may be held securely inside the cover 14 by providing the cover 14 with utensil retaining slots 30a and 32a, respectively, just above a pair of diametrically opposed centrally projecting retaining 2 Appellants do not separately argue claims 34, 36, and 37, which depend from claim 1. See generally App. Br. 10-22. We select claim 1 as representative. Accordingly, claims 34, 36, and 37 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011); see also In re Lovin, 652 F.3d 1349, 1351 (Fed. Cir. 2011). Appeal 2011-005574 Application 11/300,969 10 lugs 30 and 32 that extend centrally from the side wall 14b of the cover 14. Atkinson, col. 3, ll. 6-10; see also id. at figs. 2, 4. Therefore, the Examiner’s finding that lugs 30, 32 are capable of holding napkins is supported by a preponderance of the evidence because napkins may be folded and forced into the slots between the lugs and lid of Atkinson’s container. Accordingly, we sustain Rejection I as applied to claim 1, and dependent claims 34, 36, and 37 for which Appellants have not offered separate argument. Claim 10 Appellants contend that Atkinson’s lugs 30 and 32, which the Examiner identified as disclosing the claimed napkin support, do not “extend across the chamber” as called for by claim 10. App. Br. 13. Appellants assert that the plain and ordinary meaning of “across” is “from one side to the other,” and thus, Atkinson’s lugs do not disclose a napkin support extending across the chamber. Id. at 17 (arguing the same limitation in the context of claim 113). The Examiner interpreted the claim as not requiring the napkin support to “extend completely across the chamber.” Ans. 18. Rather, the Examiner construed the claim such that “[t]he napkin support is only required to extend at least partially across the chamber.” Id. Claim 10, which depends from claim 1, further recites, inter alia, “wherein said napkin support extends across said upper chamber and defines an opening for passing napkins therethrough.” App. Br. 24 (Claims App’x, Claim 10). We agree with Appellants that the plain and ordinary meaning of the term “across” as used in the context of claim 10 is “from one side of to 3 Claim 11 also calls for “said napkin support extending across said second compartment.” App. Br. 25 (Claims App’x, Claim 11). Appeal 2011-005574 Application 11/300,969 11 the other.” THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (2007) available at http://www.credoreference.com/entry/hmdictenglang/across (last visited June 15, 2013).4 The Specification is consistent with this interpretation. See, e.g., fig. 11 (support 62). Accordingly, because the lugs of Atkinson do not extend from one side of Atkinson’s cover to the other, we do not sustain the rejection (Rejection IV) of claim 10 or the rejections of claims 11-14 and 39 (Rejection V), claims 28, 35, 41, and 42 (Rejection I) and claim 33 (Rejection VIII), which also contain this limitation. Claim 38 Appellants assert that Rejection I as applied to claim 38 is erroneous because “the chambers disclosed by Kopp only extend half the height of the compartment” and not “a majority height of said first compartment from said bottom of said first compartment to said top of said first compartment” as called for by claim 38. App. Br. 15. Appellants further contend that “there is no motivation or suggestion to make the combinations and modifications as concocted in the Office Action to arrive at the invention.” Id. at 16. The Examiner acknowledged that Kopp does not disclose each of the elements of claim 38, but found that, “to modify the floor (18) [of Kopp] to be at a lower position within the first compartment in order to allow for more storage space in the upper chambers (14) would entail a mere change in size of the components and yield only predictable results.” Ans. 7. The Examiner further noted that, “[a] change in size is generally recognized as 4 While the invention claims a priority date earlier than 2007 (see Spec. 2, ll. 3-11), we have no reason to suspect that the plain and ordinary meaning of “across” changed during the time period between the date of invention and the publication of the definitions recited above, i.e., 2007. Appeal 2011-005574 Application 11/300,969 12 being within the level of ordinary skill in the art.” Id. (citation omitted). The Examiner also found that “[t]he motivation to modify the floor to be at a lower portion within the container is for the purpose of allowing larger amounts of contents to be placed within the three chambers in the upper portion of the container if desired.” Id. at 18. Claim 38, which depends from claim 1, further recites, “wherein said first compartment comprises a floor enclosing said at least three chambers at said lower portion of said first compartment . . . and wherein said at least three chambers extend a majority height of said first compartment from said bottom of said first compartment to said top of said first compartment.” App. Br. 30-31 (Claims App’x, Claim 38). Figure 4 of the Specification shows an example of a container with floor 34 included in the lower portion 30 “for confining movement of the tableware.” Spec. 11, ll. 15-20; fig. 4. Kopp discloses a jar divided by transverse wall 18 into two halves. See, e.g., Kopp, col. 2, ll. 7-9; fig. 4. The Examiner found that one of ordinary skill in the art would have been motivated to move the transverse wall 18 into the lower portion of Kopp’s jar to allow larger amounts of contents to be placed in the three chambers in the upper portion of the container (i.e., above the transverse wall 18). Ans. 18. Were one of ordinary skill in the art to make this change and maintain Kopp’s partitions as disclosed therein, the three chambers above transverse wall 18 would by necessity extend a majority height of said first compartment because the chambers above the wall would be larger in height than the chambers below the wall and because, as explained above, the wall was originally placed to divide the jar into halves. Thus, the Examiner provided a rationale with a rational underpinning as to why one of ordinary skill in the art would have Appeal 2011-005574 Application 11/300,969 13 been prompted to lower the transverse wall. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Accordingly, we sustain Rejection I as applied to claim 38. Claim 29 Appellants contend that the Examiner erred in rejecting claim 29 for nearly the same reasons argued above with respect to claim 38.5 See App. Br. 19-21. One difference between their arguments, however, is that Appellants refer to an embodiment of Kopp’s jar, disclosed in Figure 10, in which the floor of the jar is in the lower portion of the jar and the chambers extend a majority of a height of the compartment. Id. at 20. Appellants assert the embodiment shown in Figure 10 lacks a lid on the bottom and thus there would be “no motivation or reason to combine the lid of Atkinson on the bottom of the container” to achieve “a third compartment removably attachable to said lower portion of said first compartment.” Id. The Examiner, however, did not rely upon Kopp’s embodiment disclosed in Figure 10. See Ans. 14-15. Kopp’s Figure 10 does not include a transverse wall 18 dividing the jar into halves. See Kopp, fig. 10. The Examiner’s rejection of claim 29, like the rejection of claim 38, relied upon the embodiments disclosed in Kopp’s figures which include transverse wall 18. Id. As we discussed above, the Examiner provided a rationale with a rational underpinning as to why one of ordinary skill in the art would have been prompted to lower the transverse wall 18. See id. at 15. Accordingly, 5 Appellants do not separately argue claims 30, 31, and 32, which depend directly or indirectly from claim 29. See generally App. Br. 10-22. We select claim 29 as representative. Accordingly, claims 30, 31, and 32 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii); see also In re Lovin, 652 F.3d at 1351. Appeal 2011-005574 Application 11/300,969 14 for the reasons discussed here and those discussed in the context of claim 38, we sustain Rejection VIII as applied to claim 29. Claim 20 Appellants contend that claim 20, which recites a “means for receiving napkins,” invokes 35 U.S.C. § 112, sixth paragraph. App. Br. 17. Appellants assert that the function recited is “to facilitate placement of new napkins and holding and removing the napkins and preventing the napkins from being blown away in windy conditions.” Id. at 18. Appellants explain that their Specification discloses that the structure for “receiving napkins” is the second compartment with support 62. Id. Appellants also contend that the structure relied upon by the Examiner in Atkinson—lugs 30, 32—are “not configured to perform in this manner.” Id. The Examiner’s analysis initially identified the “means for receiving napkins” as the “napkin support extending partially across the second compartment” disclosed in Atkinson. Ans. 5. Subsequently, the Examiner indicated that the lugs 30, 32 of Atkinson are “fully capable of performing the function of receiving/holding napkins and preventing the napkins from being blown in windy conditions.” Id. at 19. The claim phrase “means for receiving napkins” is presumed to be drafted in means-plus-function format because the “claim element contains the word ‘means’ and recites a function,” and the claim does not “recite[] sufficient structure to perform the claimed function.” Envirco Corp. v. Clestra Cleanroom, Inc., 209 F.3d 1360, 1364 (Fed. Cir. 2000) (citing Al- Site Corp. v. VSI Int’l, Inc., 174 F.3d 1308, 1318 (Fed. Cir. 1999)). The first step in construing a means-plus-function claim limitation “is to define the particular function of the claim limitation.” In re Aoyama, 656 F.3d 1293, Appeal 2011-005574 Application 11/300,969 15 1296 (Fed. Cir. 2011) (quoting Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1333 (Fed. Cir. 2004)). The next step in construing a means- plus-function claim limitation “is to look to the specification and identify the corresponding structure for that function.” Id. at 1297 (quoting Golight, 355 F.3d at 1334). As explained in In re Donaldson, “the PTO may not disregard the structure disclosed in the specification corresponding to such language when rendering a patentability determination.” In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994). Rather, the PTO must look to the Specification and construe the “means” language recited in the claim as limited to the corresponding structure disclosed in the Specification and equivalents thereof. Id. The Examiner has not made any analysis under In re Donaldson explicit in the record before us. See, e.g., MPEP § 2181. The Examiner appears to have accepted that the function of the phrase “means for receiving napkins” is “receiving napkins and preventing the napkins from being blown in windy conditions.”6 Ans. 19. The Examiner, however, did not identify the structure in Appellants’ Specification corresponding to the claimed function. Rather, after identifying the function, the Examiner pointed to Atkinson’s lugs 30, 32 as capable of performing the function. See Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1364 (Fed. Cir. 2000) (two structures may be “equivalent” for purposes of section 112, paragraph six, if 6 We note that even though we found, in the context of addressing claim 1, that Atkinson’s lugs 30, 32 were capable of holding napkins, we did not address whether they were also capable of “preventing the napkins from being blown in windy conditions.” Were we to accept the function of the claimed phrase as indicated by Appellants and the Examiner, we have some serious concern as to whether Atkinson’s lugs 30, 32 are capable of performing the identical function. Appeal 2011-005574 Application 11/300,969 16 they perform the identical function, in substantially the same way, with substantially the same result); see also MPEP § 2182. Because the Examiner has not undertaken the analysis required by In re Donaldson, the Examiner has failed to establish a prima facie case of obviousness for claim 20. Accordingly, we do not sustain Rejection I as applied to claim 20 and the rejections of dependent claims 21 (Rejection VI), 22-24, 26-28, and 40 (Rejection I), and 25 (Rejection VII). DECISION We AFFIRM the Examiner’s decision rejecting claims 1-3, 29-32, 34, and 36-38. We REVERSE the Examiner’s decision rejecting claims 20, 22-24, 26-28, 35, and 39-42 as reflected in Rejection I, rejecting claim 10 as reflected in Rejection IV, rejecting claims 11-14 as reflected in Rejection V, rejecting claim 21 as reflected in Rejection VI, rejecting claim 25 as reflected in Rejection VII, and rejecting claim 33 as reflected in Rejection VIII. 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-IN-PART mls Copy with citationCopy as parenthetical citation