Ex Parte KayserDownload PDFPatent Trial and Appeal BoardDec 22, 201411653153 (P.T.A.B. Dec. 22, 2014) 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. 11/653,153 01/12/2007 Steven L. Kayser 506.203C2 6479 90187 7590 12/23/2014 Lewis Kohn & Walker LLP 15030 Avenue of Science Suite 201 San Diego, CA 92128 EXAMINER NEWAY, BLAINE GIRMA ART UNIT PAPER NUMBER 3788 MAIL DATE DELIVERY MODE 12/23/2014 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 STEVEN L. KAYSER ________________ Appeal 2012-009234 Application 11/653,153 Technology Center 3700 ________________ Before JOHN C. KERINS, ANNETTE R. REIMERS, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant Steven L. Kayser appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1–24 and 28. Claims 25–27 are withdrawn. Appeal Br. 5. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2012-009234 Application 11/653,153 2 THE CLAIMED SUBJECT MATTER Claim 1, reproduced below, is representative of the subject matter of this Appeal. 1. A toothbrush container for confining a toothbrush, comprising: an elongated flexible pliable resilient hollow tubular body composed of a pliable material and having an access opening at one end thereof, the body sized to receive snugly the toothbrush; a flexible pliable resilient lid for closing the access opening to secure the toothbrush within the body, the lid being composed of pliable material; and an annular flange on the lid for engaging the body portion frictionally to secure removably the lid to the body. THE REJECTIONS ON APPEAL Claims 1, 13–16, 19, 22, and 23 are rejected under 35 U.S.C. § 103(a) as unpatentable over Shaw (US 5,076,428; iss. Dec. 31, 1991) and Tsaur (US 2005/0011789 A1; pub. Jan. 20, 2005). Claims 2–12, 17, and 18 are rejected under 35 U.S.C. § 103(a) as unpatentable over Shaw, Tsaur, and Bree (US 5,375,711; iss. Dec. 27, 1994). Claims 20, 21, and 24 are rejected under 35 U.S.C. § 103(a) as unpatentable over Shaw, Tsaur, and Yamada (US 5,996,790; iss. Dec. 7, 1999). Claim 28 is rejected under 35 U.S.C. § 103(a) as unpatentable over Shaw, Tsaur, and Phillips (US 6,295,686 B1; iss. Oct. 2, 2001). Appeal 2012-009234 Application 11/653,153 3 ANALYSIS Claims 1, 13–16, 19, 22, and 23 — Unpatentable over Shaw and Tsaur Regarding claim 1, the Examiner finds, inter alia, that “figures 1-5 of Shaw disclose a toothbrush container . . . comprising an elongated flexible resilient hollow tubular body 16 composed of a pliable material (PVC).” Ans. 5. The Examiner “asserts that a resilient non-brittle plastic material[,]” as disclosed in Shaw, “is a pliable material,” whereby “the term ‘resilient’ is defined as ‘returning to the original form or position after being bent, compressed, or stretched’” and that the term “‘pliable’ is defined as ‘easily bent; flexible’.” Id. at 14 (see Shaw 2:29–45). Thus, applying what the Examiner regards as the broadest reasonable interpretation of the claim language, the Examiner finds that “the ‘resilient non-brittle plastic material’ of Shaw reads on the term ‘pliable’ as claimed.” Id.1 Appellant argues that “while it is possible to make PVC flexible by adding plasticizers, no reference teaches or suggests that a toothbrush container could or should comprise flexible material.” Appeal Br. 16. Appellant continues, “Moreover, one of ordinary skill in the art would not take a toothbrush container made of ‘resilient plastic’ as described in Shaw and find it obvious to have a pliable material.” Id. Indeed, Shaw discloses that the toothbrush case material “is a resilient non-brittle plastic” whereby “the resilient plastic provides a long lasting case that withstands significant external force without breaking or denting.” Shaw 2:29–45. Notably, Shaw continues that “this structure is ideally suited 1 The Examiner relies on Tsaur for teaching that “it was well known to package elongated members in a hallow [sic] cylinder with a circular or polygonal cross-section.” See Ans. 6. Appeal 2012-009234 Application 11/653,153 4 as a permanent travel case for a toothbrush that may be stored in a crowded travel kit and resists deformation by crushing.” Shaw 2:62–65 (emphasis added). In contrast, the Specification discloses that the pliable material enables repeated flexing or bending of the toothbrush container without substantial damage to the toothbrush container.” Spec. ¶ 20 (emphasis added). Thus, we are persuaded by Appellant’s argument that the Examiner erred in finding that Shaw’s disclosure of a resilient container necessarily discloses a pliable container body as recited in claim 1. See In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999) (“Although the PTO must give claims their broadest reasonable interpretation, this interpretation must be consistent with the one that those skilled in the art would reach.”). Therefore, we do not sustain the Examiner’s rejection of independent claim 1 and claims 13– 16, 19, 22, and 23 depending therefrom. Claims 2–12, 17, and 18 — Unpatentable over Shaw, Tsaur, and Bree The Examiner’s proposed modifications of Shaw, as applied to claim 1, do not remedy the deficiencies of Shaw discussed above. Accordingly, for similar reasons, we do not sustain the Examiner’s rejection of claims 2– 12, 17, and 18 as unpatentable over Shaw, Tsaur, and Bree. Claims 20, 21, and 24 — Unpatentable over Shaw, Tsaur, and Yamada The Examiner’s proposed modifications of Shaw, as applied to claim 1, do not remedy the deficiencies of Shaw discussed above. Accordingly, for similar reasons, we do not sustain the Examiner’s rejection of claims 20, 21, and 24 as unpatentable over Shaw, Tsaur, and Yamada. Appeal 2012-009234 Application 11/653,153 5 Claim 28 — Unpatentable over Shaw, Tsaur, and Phillips Similar to claim 1, independent claim 28 calls for a toothbrush container including “an elongated flexible pliable resilient hollow tubular body.” Appeal Br. 35, Claims App. The Examiner relies on similar findings and conclusions regarding the Shaw reference for claim 28 as discussed above for claim 1. See Ans. 5, 12. The Examiner’s proposed modifications of Shaw, as applied to claim 1, similarly do not apply to claim 28 and do not remedy the deficiencies of Shaw discussed above. Accordingly, for similar reasons, we do not sustain the Examiner’s rejection of claim 28 as unpatentable over Shaw, Tsaur, and Phillips. DECISION We REVERSE the Examiner’s rejection of claims 1, 13–16, 19, 22, and 23 under 35 U.S.C. § 103(a). We REVERSE the Examiner’s rejection of claims 2–12, 17, and 18 under 35 U.S.C. § 103(a). We REVERSE the Examiner’s rejection of claims 20, 21, and 24 under 35 U.S.C. § 103(a). We REVERSE the Examiner’s rejection of claim 28 under 35 U.S.C. § 103(a). REVERSED tkl Copy with citationCopy as parenthetical citation