Ex Parte Hermans

Patent Trial and Appeal Board

Sep 27, 2018

13502343 (P.T.A.B. Sep. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/502,343 08/15/2012
22885 7590 10/01/2018
MCKEE, VOORHEES & SEASE, P.L.C.
801 GRAND A VENUE
SUITE 3200
DES MOINES, IA 50309-2721
FIRST NAMED INVENTOR
Lucas Hermans
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.
Pll650USOO 7296
EXAMINER
PERREAULT, ANDREW D
ART UNIT PAPER NUMBER
3788
NOTIFICATION DATE DELIVERY MODE
10/01/2018 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):
patatty@ipmvs.com
michelle. woods@ipmvs.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LUCAS HERMANS
Appeal2017---001129
Application 13/502,343 1
Technology Center 3700
Before CHARLES N. GREENHUT, ANNETTE R. REIMERS, and
NATHAN A. ENGELS, Administrative Patent Judges.
ENGELS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1-18. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellant identifies Fiedler & Lundgren AB as the real party in interest.
Appeal Br. 1.
Appeal2017---001129
Application 13/502,343
ILLUSTRATIVE CLAIM
Appellant's invention "relates to a container for storing tobacco
products, in particular smokeless tobacco products, such as snus." Spec. 1.
Claims 1, 14, and 15 are independent claims. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A snus container, comprising:
a base and a lid, said base and lid overlapping to define a
first compartment for storing fresh snus, a second compartment
formed in one of the lid and the base for storing used snus, the
second compartment including a bottom wall, two long side
walls and a short side wall, the side walls each having a lower
side wall portion extending from an edge of the bottom wall, a
step extending outwardly therefrom, and an upper side wall
portion parallel to the lower side wall portion; and
a cover received in the second compartment and
configured to slide between an open position and a closed
position and allow access to the second compartment when the
cover is in the open position, the cover including opposing
cover side walls depending therefrom, each cover side wall
dimensioned to substantially conform with a depth of a
corresponding upper side wall portion, the container configured
such that a top wall of the cover lies planar with or below an
upper wall of the lid, the cover being slidable to overlap the
side wall steps and abut the upper side wall portions when the
cover is in the closed position.
THE REJECTIONS
Claims 1-7, 11-13, and 16-18 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable in view of the combined teachings of
Bjorkholm (WO 2005016036 Al; publ. Feb. 24, 2005), Cuetara (EP
0911274 Al; publ. Apr. 28, 1999), and Muller (US 3,362,564; iss. Jan. 9,
1968).
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Appeal2017---001129
Application 13/502,343
Claims 1-13 and 16-18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable in view of the combined teachings of Bjorkholm,
Cuetara, and Duell (US 2,378,003; iss. June 12, 1945).
Claims 14 and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of the combined teachings of Bjorkholm and Cuetara.
ANALYSIS
Among other limitations, claim 1 requires a second compartment
"including a bottom wall, two long side walls ... having a lower side wall
portion extended from an edge of the bottom wall, a step extending
outwardly therefrom, and an upper side wall portion parallel to the lower
side wall portion." The Examiner finds Bjorkholm teaches a container
having most of the limitations of claim 1, but the Examiner cites Cuetara as
disclosing the claimed "two long side walls" and illustrates the relevant
structures on the annotated version of Cuetara's Figure 4 copied below.
2-
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6 3 8
1
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FIG.-4
A·B
Figure 4 of Cuetara (with Examiner's Annotations)
Cuetara's Figure 4 is a cross-sectional view of a container lid having a
slideable cover. According to the Examiner, Cuetara's Figure 4 depicts one
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Appeal2017---001129
Application 13/502,343
of the claimed two upper side wall portions, with the Examiner's annotations
identifying the upper side wall portion, step, and lower side wall portion.
The Examiner proposes modifying Bjorkholm in view of Cuetara' s
"slideable closure with the above elements [ of Cuetara] and other above
cooperating elements in conjunction with the lower side wall of Bjorkholm."
Final Act. 5. According to the Examiner, such a modification would permit
additional access into the device without requiring the user to remove the lid
from the base and keeping the locked condition acceptable for particular use
with items that are accessed during various successive phases." Id. ( citing
Cuetara ,r 1 ). The Examiner's Answer additionally clarifies that Bjorkholm
also discloses lower side wall portions and that combining the lower side
wall portions of Bjorkholm and Cuetara would result in lower side wall
portions that extend from a bottom wall, as claimed. Ans. 11-12.
Appellant argues Cuetara does not disclose a lower side wall portion,
as the structure cited by the Examiner is merely part of the rim of the
opening in Cuetara. App. Br. 18. Appellant argues the rim "defines a void
in the base of the container cover, and does not extend from any structure,
much less from 'an edge of the bottom wall,' as recited in independent claim
I." Id.
Having considered the Examiner's rejection in light of Appellant's
arguments and the evidence of record, we agree with Appellant that the
Examiner has not established that claim 1 would have been unpatentable in
view of Bjorkholm and Cuetara. Specifically, we disagree with the
Examiner's findings that the cited structures of Cuetara constitute upper and
lower side wall portions that form part of a "second compartment" in the lid
or base, as claimed. As argued by Appellant, the structures cited as "lower
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Appeal2017---001129
Application 13/502,343
side wall portion[ s ]" in Cuetara are simply parts of a rim that define the
opening and over which the lid slides; the structures do not teach or
reasonably suggest a wall or wall portion forming part of any "second
compartment" in the lid or base. Likewise, the structures cited as the "upper
side wall portion[ s ]" cooperate with lugs 7 to receive shutter 8 and also do
not form any compartment. Even if the portions of Cuetara identified above,
when considered in isolation, could be considered wall portions, it is unclear
why, without the benefit of hindsight, a person of ordinary skill would have
modified B j orkho lm' s compartment in view of those structures.
Accordingly, we agree with Appellant that the Examiner has not
established that it would have been obvious to modify the structures of
Bjorkholm in view of Cuetara to arrive at claim 1, and we do not sustain the
Examiner's rejection of independent claim 1. Independent claim 14 recites
equivalent structures, and we do not sustain the Examiner's rejection of
independent claim 14 for the same reasons. Likewise, each of dependent
claims 2-13 and 16-18 depends from claim 1, and we do not sustain the
Examiner's rejection of those claims for the same reasons.
In the rejection of claim 15, the Examiner finds that Cuetara discloses
a first arcuate short side wall and a second arcuate short side wall that is
parallel to the first arcuate side wall. Ans. 12-13. Specifically, the
Examiner finds that Cuetara discloses two sets of parallel arcuate short side
walls, as indicated with arrows in the annotated version of Cuetara's Figure
2, copied below.
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Appeal2017---001129
Application 13/502,343
1"' 1 ~}$
. ~
!
Figure 2 of Cuetara (with Examiner's Annotations)
Similar to the discussion above, Cuetara does not disclose a
compartment comprising the structures cited as the parallel arcuate short
side walls, as required by claim 15. Cuetara depicts the edge of shutter 8 as
a thin structure defined only by the thickness of the shutter itself, not a wall
or wall portion that forms part of a compartment, as claimed. See Appeal
Br. 8 (citing item 18 in Appellant's Figure 4 and item 19 in Appellant's
Figure 5 as the first and second arcuate short side surfaces, respectively), 22.
Further, the Examiner's reliance on In re Dailey, 357 F.2d 669 (CCPA 1966)
for the proposition that it has been held that modifications of shape would
have been obvious based on suitability for a device's intended use (Ans. 13)
misapplies the law and would sidestep the required obviousness analysis.
See In re Ochiai, 71 F. 3d 1565, 1571 (Fed. Cir. 1995) (replacing the
analysis required under § 103 with the analysis applied in other decisions,
without further factual analysis and explanation, "is founded on legal error
because it substitutes supposed per se rules for the particularized inquiry
required by section 103"). Accordingly, we do not sustain the Examiner's
rejection of independent claim 15.
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Appeal2017---001129
Application 13/502,343
DECISION
We reverse the Examiner's rejection of claims 1-18.
REVERSED
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