Ex Parte Hoffman

Patent Trial and Appeal Board

Dec 14, 2016

12476405 (P.T.A.B. Dec. 14, 2016)

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.
12/476,405 06/02/2009 Gregg Hoffman 506921 5384
53609 7590 12/16/2016
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
EXAMINER
MATHEW, FENN C
ART UNIT PAPER NUMBER
3781
NOTIFICATION DATE DELIVERY MODE
12/16/2016 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):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGG HOFFMAN
Appeal 2015-002547
Application 12/476,405
Technology Center 3700
Before JAMES P. CALVE, WILLIAM A. CAPP, and
AMANDA F. WIEKER, Administrative Patent Judges.
CALVE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35U.S.C. § 134 from the final rejection of
claims 48—58. Appeal Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2015-002547
Application 12/476,405
CLAIMED SUBJECT MATTER
Claim 48, the sole independent claim, is reproduced below.
48. A tobacco container comprising:
a body having a bottom and a sidewall depending
upwardly from the bottom and terminating at a distal end,
wherein a radially projecting bead is formed adjacent the distal
end;
a lid for the tobacco container, said lid comprising:
an upper wall;
an outer annular sidewall depending downward
from a shoulder of the upper wall;
a fold formed at a bottom edge of the outer
annular sidewall;
an inner annular sidewall depending upwardly
from the fold, the inner annular sidewall, the inner annular
sidewall parallel to the outer annular sidewall and overlapping a
portion of the outer annular sidewall, the inner annular sidewall
terminating in a distal end;
a curl beginning at the distal end of the inner
annular sidewall, the curl turning radially inward to a radially
inner-most point, and turning radially outward from the radially
inner-most point; and
wherein the curl is axially below the bead in a
fully closed position of the lid relative to the body, wherein the
radially inner-most point of the curl contacts the sidewall of the
body in the fully closed position, and wherein the inner annular
sidewall does not contact the sidewall of the body in the fully
closed position.
REJECTIONS
Claims 48—51 and 55—58 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Podesta (US 3,463,349, iss. Aug. 26, 1969), Boothby (US
2,181,545, iss. Nov. 28, 1939), and Varano (US 5,385,255, iss. Jan. 31,
1995).
2
Appeal 2015-002547
Application 12/476,405
Claim 52 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Podesta, Boothby, Varano, and Henson (US 7,014,039 B2, iss. Mar. 21,
2006).
Claim 53 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Podesta, Boothby, Varano, and McCrossen (US 6,105,807, iss. Aug. 22,
2000).
Claim 54 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Podesta, Boothby, Varano, and Derr (US 6,162,516, iss. Dec. 19, 2000).
ANALYSIS
Claims 48—51 and 55—58 as unpatentable over Podesta, Boothby, Varano
Appellant argues 48—51 and 55—58 as a group. Appeal Br. 4—7. We
select claim 48 as representative. 37 C.F.R. § 41.37(c)(l)(iv). Claims 49-
51 and 55—58 stand or fall with claim 48.
The Examiner found that Podesta discloses a tobacco container, as
recited in claim 48, with lid 2, having outer annular wall 23, fold 241 and a
curl turning radially inwardly, but lacks an inner annular sidewall extending
parallel to and overlapping outer annular wall 23 and not contacting the
container in the fully closed position. Final Act. 2—3. The Examiner found
that Boothby teaches a lid with an inner annular side wall parallel to an outer
annular sidewall and determined that it would have been obvious to modify
Podesta in this manner to create a substantially tight seal. Id. at 5—4.
The Examiner relied on Varano to teach an inner annular wall of a lid
that does not contact the container sidewall and determined that it would
have been obvious to modify Podesta and Boothby to include this feature “to
ensure engagement between the curl and a bead of the container.” Id. at 4.
3
Appeal 2015-002547
Application 12/476,405
Appellant argues that the Examiner’s reason for modifying Podesta
and Boothby with teachings of Varano lacks a rational underpinning because
Varano does not teach that an inner annular wall of the lid is spaced from the
container body to ensure engagement between the curl and a container bead,
as the Examiner found. Appeal Br. 4—5. Appellant argues that Podesta and
Boothby do not teach that their curl and bead engagements are inadequate,
so there is no need to turn to Varano to solve a nonexistent problem so that
the Examiner has engaged in impermissible hindsight. Id. at 5, 6—7. Finally,
Appellant argues that Boothby teaches that its inner annular wall (bead 7)
snugly engages the exterior of container body 1 to ensure adequate closure
and teaches away from the proposed modification. Id. at 7.
The Examiner’s reason for modifying Podesta and Boothby with the
teachings of Varano to space the inner annular sidewall away from the side
of a container, as recited in claim 48, is supported by rational underpinning.
The Examiner’s reason for doing so—to ensure that the lip of the lid (the
curl) fully engages the bead of the container (see Final Act. 4)—is supported
by a rational underpinning of general engineering principles and common
sense. See Ans. 8. Spacing the inner annular wall away from the container
sidewall ensures that the lip (curl) of the lid fully snaps over the bead on the
container without contacting the container side in a way that would prevent
the curl from snapping completely over the bead. This spacing also allows a
user to insert fmger(s) to remove the lid, as the Examiner found. Ans. 9; see
also Varano, 3:5—9 (“The lid 10 . . . may be removed from the cup 12 by
pulling upwardly on the lower edge of the skirt 18 relative to the cup so that
the combined resilience of the lid and the cup rim 14 allows the locking ring
28 to snap upwardly over the cuffed rim 14.”).
4
Appeal 2015-002547
Application 12/476,405
Boothby’s teaching that a snug fit or contact between an inner annular
side wall of bead 7 and the container body 1 is desirable to seal lid 5 onto the
container (Boothby, 1:2:52—2:1:2) does not teach away from a modification
of Podesta to space the lid’s inner annular side wall apart from the container
body, as claimed. First, Boothby does not criticize, disparage, or otherwise
discourage a skilled artisan from spacing the inner annular sidewall of a lid
away from a container body. Indeed, Boothby teaches that the inner annular
sidewall (bead 7) can be placed above bead 3 on container 1 so that it does
not contact container body at all. See id. at 2:1:5—17. Therefore, the contact
of Boothby’s inner annular sidewall 7 and container body in the embodiment
of Fig. 2 does not teach away from spacing the lid’s inner annular sidewall
apart from the container, particularly where Boothby also teaches that such
contact may be omitted in other embodiments or uses of the lid.
The Examiner has provided reasons for such spacing, e.g., to ensure a
complete engagement of the lid lip and container bead, and to allow removal
of the lid by inserting fingers into the space. These reasons are supported by
rational underpinnings, as discussed above. A skilled artisan aware of these
teachings of Boothby and Varano could weigh advantages and disadvantages
of spacing the inner annular sidewall of the lid away from the container body
and provide such spacing for the reasons provided by the Examiner. Varano
teaches a lid with an inner side wall (inner ply 26) extending upwardly from
a fold, parallel to an outer side wall (third part of skirt 24), and spaced from
a container sidewall, as claimed. Varano thus teaches parallel lid sidewalls
with an inner sidewall spaced from a container body as an effective way to
seal a lid to a container and facilitate removal of the lid from the container.
Thus, we sustain the rejection of claims 48—51 and 55—58.
5
Appeal 2015-002547
Application 12/476,405
Obviousness rejections of dependent claims 52—54
The Examiner relied on Henson, McCrossen, and Derr to teach the
dimensions recited for the lid thickness, outer annular sidewall, and outer
diameter, respectively, in dependent claims 52—54. Final Act. 6—8.
Appellant argues that the Examiner’s reliance on Henson, McCrossen,
or Derr to teach the features of dependent claims 52—54 does not overcome
the deficiencies of Podesta, Boothby, and Varano as to claim 48 from which
claims 52—54 depend. Appeal Br. 7—8. Because we sustain the rejection of
claim 48 as unpatentable over Podesta, Boothby, and Varano, there are no
deficiencies for Henson, McCrossen,1 and Derr to cure. Thus, we sustain the
rejection of claims 52—54.
DECISION
We affirm the rejections of claims 48—58.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
1 The Examiner and Appellant refer to McCrossen as “McGrossen.” Final
Act. 6—7; Appeal Br. 8.
6