Ex Parte Hall

Patent Trial and Appeal Board

Jun 29, 2016

13422265 (P.T.A.B. Jun. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/422,265 03/16/2012
16464 7590 06/30/2016
Evans & Dixon, LLC
Metropolitan Square
211 N. Broadway, Suite 2500
St. Louis, MO 63102
FIRST NAMED INVENTOR
Charles E. Hall
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
10484-36 5941
EXAMINER
STEVENS, ALLAN D
ART UNIT PAPER NUMBER
3728
MAILDATE DELIVERY MODE
06/30/2016 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 CHARLES E. HALL
Appeal2014-003649
Application 13/422,265 1
Technology Center 3700
Before KENNETH G. SCHOPPER, BRADLEY B. BAY AT and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-21. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 According to the Appellant, Buddeez, Inc. is the real party in interest.
Appeal Br. 2.
Appeal2014-003649
Application 13/422,265
ILLUSTRATIVE CLAIM
1. A pourable product container comprising:
a top surface having a substantially flat surface area;
a bottom surface having a substantially flat surface area
that is opposite and substantially parallel with the top surface
flat surface area;
a plurality of side surfaces that extend between the top
surface and the bottom surface and merge into the top surface
and the bottom surface, at least a first of the side surfaces
having a plurality of concave groove surface sections having
lengths that extend substantially straight and parallel between
the top surface and the bottom surface and having widths that
are arranged side by side across the first side surface, and at
least a second of the side surfaces having a plurality of convex
rib surface sections having lengths that extends [sic]
substantially straight and parallel between the top surface and
the bottom surface and having widths that are arranged side by
side across the second side surface.
REJECTION
Claims 1-21 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Panchal et al. (US 2009/0090647 Al, pub. Apr. 9, 2009, "Panchal").
FINDINGS OF FACT
We rely upon and adopt the Examiner's findings stated in the Final
Action at pages 2-8 and the Answer at pages 2-10, except as stated
otherwise in the Analysis below. Additional findings of fact may appear in
the Analysis below.
ANALYSIS
The Appellant argues independent claims 1, 11, and 19 as a group and
does not argue separately in regard to any dependent claim. Appeal Br. 5-
10. Claim 1 is selected for analysis and all the other claims stand or fall with
claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
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Application 13/422,265
The issue on Appeal is whether Panchal teaches the following
limitations of claim 1:
"a first of the side surfaces having a plurality of concave groove
surface sections . . . having widths that are arranged side by
side across the first side surface";
and
"a second of the side surfaces having a plurality of convex rib
surface sections . . . having widths that are arranged side by
side across the second side surface."
The Examiner finds that Panchal discloses these limitations (see Final
Action 3--4; see also Answer 8-9), but also states that "[i]f the [Appellant]
does not agree with the [E]xaminer that the reference discloses a plurality of
convex groove and convex rib surface sections further support will be given
below" (Final Action 4; see also Answer 8-9). Accordingly, the Final
Action provides an alternative position for the rejection, whereby the
Examiner takes Official Notice of "concave groove surface sections" and
"convex rib surface sections" (Final Action 4; see also Answer 8-9) and
provides that a "plurality" of such features would have been obvious (Final
Action 4).
The Appellant contends that "[ t ]he Panchal reference does not
disclose or suggest the plurality of concave groove surface sections having
widths arranged side-by-side across the first side surface of the container or
the plurality of convex rib surface sections having widths arranged side-by-
side across the second side surface of the container." Appeal Br. 6.
First, the Appellant mistakenly alleges that the Examiner
"acknowledged" such deficiencies in Panchal. Id. The Appellant goes on to
dispute the propriety of the Examiner's alternative position that "concave
groove surface sections" and "convex rib surface sections" are well known
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Application 13/422,265
in the art. Id. at 6-8. The Appellant also argues that Panchal does not teach
these features because Panchal employs a dovetail mortise and tenon
interlocking arrangement, whereas the claimed "concave groove surface
sections" and "convex rib surface sections" do not interlock with each other,
but can be separated from each other merely by pulling respective containers
apart. Id. at 8-10. Further, the Appellant argues that Panchal's interlocking
feature teaches away from the claimed invention. Id. at 9-10.
We are not persuaded by Appellant's arguments because the
Examiner's finding that Panchal teaches "concave groove surface sections"
and "convex rib surface sections" is supported by a preponderance of the
evidence. As stated in the Final Action, Panchal' s interlocking portions 16
and 16a meet the limitation of "concave groove surface sections," and
Panchal' s interlocking portions 14 and 14a meet the limitation of "convex
rib surface sections." Final Action 3, 4 (citing Panchal i-fi-136-38, Fig. 1).
Therefore, the Examiner's alternative position (id. at 4), and the Appellant's
response thereto (Appeal Br. 6-8; see also Reply Br. 2) need not be
addressed herein.
There is no merit to the Appellant's argument (see Appeal Br. 8-10)
that Panchal lacks, or teaches away from, the "concave groove surface
sections" and "convex rib surface sections" because of the interlocking
capability of Panchal's embodiment. As the Examiner states (Answer 9), the
claim language does not require a non-interlocking feature.
Under the Examiner's interpretation of Panchal, we agree with the
Appellant that each of Panchal's side surfaces has only one "concave groove
surface section" (elements 16 and 16a of Panchal' s Figure 1) or one "convex
rib surface section" (elements 14 and 14a of Panchal' s Figure 1 ), such that
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Appeal2014-003649
Application 13/422,265
Panchal lacks claim 1 's side surfaces having "a plurality of concave groove
surface sections" "having widths that are arranged side by side" or "a
plurality of convex rib surface sections" "having widths that are arranged
side by side." Appeal Br. 10.
Yet, the Examiner correctly concludes that it would be obvious to
have a "plurality" of the "concave groove surface sections" or the "convex
rib surface sections" on a respective "side surface," as a mere duplication of
such parts for a multiplied effect. (Final Action 4 (citing St. Regis Paper Co.
v. Bemis Co., Inc., 549 F.2d 833 (7th Cir. 1977)). "It is well settled that the
mere duplication of parts has no patentable significance unless a new and
unexpected result is produced." In re Harza, 274 F.2d 669, 671 (CCPA
1960). No evidence has been provided as to any unexpected results flowing
from the recited "plurality" of these features in claim 1.
The conclusion of obviousness is not rebutted by the Appellant's
argument that modifying Panchal might have negative consequences.
Specifically, the Appellant argues that it would not be obvious to modify
Panchal, so that it would have a "plurality" of "side by side" "concave
groove surface sections" or "convex rib surface sections," because such a
modification would "eliminate desirable features of the Panchal container,"
namely, the ability of the container cap to interlock with a side surface, or
the ability to connect two of Panchal' s containers with a third. Appeal Br.
10 (citing Panchal Figs. 3, 10, and 16). In response, the Examiner states that
the modification of Panchal would not eliminate such features. Answer 10.
The Appellant, in the Reply Brief, criticizes the Examiner for not explaining
why it would be obvious to alter Panchal' s embodiment, so as to preserve
the identified abilities. Reply Br. 3.
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Application 13/422,265
It appears the Appellant is arguing that there might be no reason to
modify Panchal, if disadvantages arise from doing so. But, even if
modifying Panchal results in disadvantages, as the Appellant contends, such
alleged disadvantages are not sufficient to overcome a prima facie case of
obviousness. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165
(Fed. Cir. 2006) ("[A] given course of action often has simultaneous
advantages and disadvantages, and this does not necessarily obviate
motivation to combine."); see also Winner Int 'l Royalty Corp. v. Wang, 202
F.3d 1340, 1349 n.8 (Fed. Cir. 2000) ("The fact that the motivating benefit
comes at the expense of another benefit, however, should not nullify its use
as a basis to modify the disclosure of one reference with the teachings of
another. Instead, the benefits, both lost and gained, should be weighed
against one another.")
For the foregoing reasons, the Appellant's arguments are not
persuasive, such that the rejection of claim 1 is sustained. Because claims
2-21 fall with claim 1, the rejection of claims 2-21 is also sustained.
DECISION
We affirm the Examiner's decision rejecting claims 1-21 under 3 5
U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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