Ex Parte Matty

Board of Patent Appeals and Interferences

Nov 4, 2010

11290526 (B.P.A.I. Nov. 4, 2010)

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.
11/290,526 12/01/2005 Audrey I. Matty 1066.01-UPA-S1 9370
41471 7590 11/04/2010
WOOD AND EISENBERG, PLLC
3975 University Drive
SUITE 330
Fairfax, VA 22030
EXAMINER
ELKINS, GARY E
ART UNIT PAPER NUMBER
3782
MAIL DATE DELIVERY MODE
11/04/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte AUDREY I. MATTY
____________

Appeal 2009-008456
Application 11/290,526
Technology Center 3700
____________

Before: LINDA E. HORNER, STEFAN STAICOVICI, and
FRED A. SILVERBERG, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-008456
Application 11/290,526
2
STATEMENT OF THE CASE
Audrey I. Matty (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s decision rejecting claims 1-7, which are all of the pending
claims. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
INVENTION
Appellant’s claimed invention is a dual purpose cup usable as an
ordinary cup, and adapted to conversion to a dysphagia2 cup. Spec. 2:11-14.
Claim 1, reproduced below, is representative of the subject matter on appeal.
1. A dual-purpose cup, said dual-purpose cup is adaptable for
use as an ordinary cup or can be rapidly converted to a
dysphagia cup, said dual-purpose cup comprising
a peripheral sidewall having upper and lower ends, said
peripheral sidewall being open at its upper end and closed at its
lower end by a bottom floor, said peripheral sidewall having a
perforated line therein proximate to said upper end,
wherein said perforated line defines a cutout shape and
removal of said cutout shape along said perforated line converts
said dual-purpose cup into a dysphagia cup.
REJECTIONS
Appellant seeks review of the following Examiner’s rejections:
1. Rejection of claims 1-3 and 5 under 35 U.S.C. § 103(a) as unpatentable
over Seki (US 4,609,113, issued Sep. 2, 1986) and either Baroud
(US 5,476,215, issued Dec. 19, 1995), or Packard (US 4,215,793, issued
Aug. 5, 1980) and Lombardi (US 3,977,559, issued Aug. 31, 1976).
2. Rejection of claims 4 and 6 under 35 U.S.C. § 103(a) as unpatentable
over Seki; either Baroud, or Packard and Lombardi; and Solland
(US 6,164,488, issued Dec. 26, 2000).

2 Dysphagia is a condition that causes people to have difficulty swallowing.
Spec. 2:16-17.
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3. Rejection of claim 7 under 35 U.S.C. § 103(a) as unpatentable over Seki;
either Baroud, or Packard and Lombardi; and Kolterjohn (US 6,681,934
B2, issued Jan. 27, 2004).
ISSUES
The issues presented by this appeal are:
1. Would the proposed combination of Seki, Packard, and Lombardi have
led a person of ordinary skill in the art to the subject matter of
independent claim 1?
2. Does Seki teach away from the proposed combination of Seki, Packard,
Lombardi, and Solland as used for the rejection of claims 4 and 6?
3. Is the rejection of claim 1 under 35 U.S.C. § 103(a) over Seki and Baroud
based upon a sufficient reason with a rational underpinning to explain
why a person of ordinary skill in the art would have been led to modify
Seki’s cup with the teachings of Baroud in the manner claimed?
ANALYSIS
Rejection of claims 1-3 and 5 under 35 U.S.C. § 103(a) as unpatentable over
Seki, Packard, and Lombardi
Appellant argues claims 1-3 and 5 as a group. Br. 12-16. We select
claim 1 as the representative claim, and claims 2, 3, and 5 stand or fall with
claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
Independent claim 1 is directed to a dual-purpose cup having a
perforated line proximate the upper end of the peripheral sidewall. Removal
of the cutout shape along the perforated line converts the dual-purpose cup
into a dysphagia cup.
The Examiner found that Seki discloses a cup having bellows-like
corrugations 3 in the front portion of the cylindrical sidewall 1 of a cup that
collapses upon contact with the user’s nose ridge 5 to create an opening for
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the nose that permits use as a dysphagia cup (drinking with the user’s head
not tilted back). Ans. 3. The Examiner found that Seki does not disclose
creating the opening through removal of a perforated removable section of
the sidewall. Id. The Examiner found that Packard and Lombardi disclose
using perforations to remove a section of a cup that is no longer needed.
Ans. 3-4. The Examiner concluded that use of Lombardi and Packard’s
removable section to replace the collapsible bellows-like corrugations 3 of
Seki’s cup would be the mere substitution of one known way of forming an
opening in a container for another with predictable results. Ans. 6 (citing
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)). The Examiner
also reasoned that a person of ordinary skill in the art, armed with the
teachings of Lombardi and Packard, would have recognized that complete
removal of the material (bellows-like corrugations 3) would prevent the
material from interfering with the opening being formed. Id.
Appellant argues that removing a section of a lid, as taught by
Lombardi and Packard, would not create a dual-purpose cup as claimed.
Br. 15. We find this argument unconvincing for two primary reasons. First,
Appellant’s argument mischaracterizes the rejection. The rejection does not
propose modifying the lid of Seki’s cup. Ans. 3-4. The rejection proposes
replacing Seki’s method of forming an opening in a container (bellows-like
corrugations 3) with the method disclosed by Lombardi and Packard
(removal of a perforated section).
Second, Appellant’s argument attempts to limit the teachings of
Lombardi and Package to what is explicitly disclosed in the references (i.e.,
removal of a portion of a cup lid); however, prior art references are available
for all they would teach a person of ordinary skill in the art. Syntex (U.S.A.)
LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) (“[w]hat a
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reference teaches or suggests must be examined in the context of the
knowledge, skill, and reasoning ability of a skilled artisan,” and “is not . . .
limited to what a reference specifically ‘talks about’ or what is specifically
‘mentioned’ or ‘written’ in the reference”).
The Examiner concluded, and we agree, that a person of ordinary skill
in the art, armed with the disclosure of Lombardi and Packard that a
perforated section of a cup may be removed when no longer needed, would
recognize that such technique could be used to improve Seki’s device in a
similar manner. Ans. 6. While the section of the cup to be removed, as
disclosed by Lombardi and Packard3, is within the lid of the cup, we see no
reason, and Appellant has failed to articulate a sufficient reason, why that
teaching could not be applied to other portions of the cup, such as the
sidewall. See KSR, 550 U.S. at 417 (“if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill”).
Appellant also argues that Seki teaches away from the proposed
combination because Seki’s bellows-like corrugations 3 collapse when the
upper edge of the cup is brought into contact with the nose ridge of a user.
Br. 15-16. We agree that Seki teaches the bellows-like corrugations 3
collapse when brought into contact with the nose ridge 5 of the user (Seki,
col. 2, ll. 37-39, 50-57; fig. 4); however, such a disclosure does not teach
away from the proposed combination. Seki makes no disclosures related to

3 Packard creates an opening (drinking section 10) by removing tab 14 along
perforations 12. Packard, col. 3, ll. 52-58; figs. 1, 2. Lombardi creates an
opening 34 by lifting tab 24 of flip open-section 16, and tearing along
perforations at sides 18 and 20. Lombardi, col. 2, ll. 33-42, 58-62; figs. 1, 3.
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alternative methods for forming an opening to accommodate the user’s nose,
such as a removable perforated section (Seki, passim), and the absence of
such information cannot be said to lead a person of ordinary skill in a
direction divergent from that chosen by Appellant. 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.” (citation
omitted)).
Appellant argues that Seki’s complex solution of permitting a user to
drink without tilting their head is in stark contrast to the simple solution
chosen by Appellant, thus demonstrating the proposed combination is the
result of improper hindsight. Br. 16. We assume, arguendo, that
Appellant’s characterization of each solution is accurate. We are puzzled
and unconvinced by Appellant’s argument that a person of ordinary skill in
the art would be prevented from making the proposed combination because
it provides a simpler solution. Br. 9, 15-16. See KSR, 550 U.S. at 421 (“A
person of ordinary skill is also a person of ordinary creativity, not an
automaton.”). Nor does simplicity of the claimed device, without more,
demonstrate the rejection is the result of improper hindsight.
Appellant makes several other arguments worthy of brief mention.
Appellant argues that the Examiner has not given weight to intended uses in
claim 1 (Br. 7), yet fails to identify an intended use that has not been given
appropriate weight. Appellant argues that limitations of the claim must be
read in view of the drawings (Br. 8), but fails to identify a limitation that was
improperly interpreted. Appellant contends that the proposed combination
does not result in the invention as claimed (id.) but fails to identify a
limitation that is not met by the combination. These conclusory assertions
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are unpersuasive because they are not applied to the facts of the case in a
manner that sheds light on the issues at hand.4
Further, Appellant contends that Seki does not provide a “teaching or
suggestion of the desirability of removing the specific section of the cup.”
Br. 12. This contention is unpersuasive because the rejection does not rely
upon Seki for the rationale for the proposed combination. See Ans. 3.
Rejection of claims 4 and 6 under 35 U.S.C. § 103(a) as unpatentable over
Seki, Packard, Lombardi, and Solland
Claims 4 and 6 depend from independent claim 1, and the rejection of
claims 4 and 6 is based upon the same combination of Seki, Packard, and
Lombardi used for the rejection of independent claim 1 with a modification
to use either cardboard or Styrofoam to make the cup as taught by Solland.
Ans. 4. Appellant repeats the arguments used against claim 1, and for the
reasons explained in the analysis of claim 1, supra, those arguments are also
unconvincing here.
Appellant argues that Seki’s disclosure of a plurality of bellows-like
corrugations in the cylindrical sidewall of a cup expressly teaches away from
modifying the cup to be manufactured of cardboard or Styrofoam as
disclosed in Solland. Br. 17. Appellant’s argument would be relevant if the
modification proposed to form Seki’s bellows-like corrugations 3 of

4 Appellant also contends that claim 1 is not obvious because the field of
drinking cups is a crowded art. Br. 9. While small changes in a crowded art
have been held to constitute invention, see, e.g., In re Baum, 123 F.2d 662,
664 (CCPA 1941), on the contrary, the fact that a claimed invention is in a
crowded art has been held to be suggestive of obviousness. In re Oggero,
215 F.3d 1347 (Fed. Cir. 1999). We conclude that the Appellant’s
characterization of the field of art in this case as “crowded”, without more,
sheds little light on the obviousness of the claimed invention. We analyze
the case using the “functional approach” articulated by the Supreme Court in
KSR. KSR, 550 at 415 (citation omitted).
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Styrofoam or cardboard because such materials may be incompatible with
collapsible corrugations. However, Appellant’s argument is unconvincing in
that it fails to address the proposed combination as articulated by the
Examiner, which replaces Seki’s bellows-like corrugations 3 with a
removable perforated section.
Rejection of claim 7 under 35 U.S.C. § 103(a) as unpatentable over Seki,
Packard, Lombardi, and Kolterjohn
Claim 7 depends from claim 1, and the rejection of claim 7 is based
upon the same combination of Seki, Packard, and Lombardi used for the
rejection of independent claim 1, with a modification to add a visual
indicator as taught by Kolterjohn. Ans. 4. Appellant repeats the arguments
used against claim 1 (Br. 18), and for the reasons explained in the analysis of
claim 1, supra, those arguments are also unconvincing here.
Rejection of claims 1-3 and 5 under 35 U.S.C. § 103(a) as unpatentable over
Seki and Baroud
The Examiner found that Baroud teaches forming the sidewall of a
container with a perforated line (e.g., perforated score line 20, 24) to allow
removal of a portion of the sidewall (extension panel 18, 22) of the container
when the section is not needed.5 Ans. 3. The Examiner concluded that
replacement of Seki’s bellow’s-like corrugations 3 with Baroud’s removable
sidewall portions (extension panels 18, 22 created by perforated score lines
20, 24) was a mere substitution of one known method of creating an opening
in a container for another. Id.
Appellant argues that the rejection fails to adequately explain how a
person of ordinary skill in the art, knowing Baroud’s disclosure to use rip-

5 The Examiner did not identify the removable portion of Baroud’s sidewall
by element number. These portions are extension panels 18 and 22.
Baroud, col. 3, ll. 50-55; fig. 1.
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away extension panels for adjusting the size of a food holder, would be led
to replace Seki’s bellows-like corrugations 3 with a perforated section.
Br. 14.
We fail to see, and the Examiner has failed to adequately articulate,
how a person of ordinary skill in the art, with the knowledge of Baroud’s
disclosure that rip-away panels can be used to adjust the size of the food
holder (Baroud, col. 1, ll. 5-8; col. 2, ll. 63-65; fig. 1) would have been led to
use such rip-away panels to replace Seki’s collapsible bellows-like
corrugations 3 in the front portion of the cylindrical sidewall 1 of a cup.
Seki, col. 2, ll. 37-39, 55-57; fig. 4. We thus cannot sustain this rejection of
claim 1. The rejection of claims 2, 3, and 5, which depend from independent
claim 1, suffers from the same shortcoming.
Rejection of claims 4 and 6 under 35 U.S.C. § 103(a) as unpatentable over
Seki, Baroud, and Solland and rejection of claim 7 under 35 U.S.C. § 103(a)
as unpatentable over Seki, Baroud, and Kolterjohn
Claims 4, 6, and 7 depend from claim 1. The Examiner’s rejection of
claims 4 and 6 does not use Solland to correct the deficiency of the proposed
combination of Seki and Baroud analyzed in the rejection of claim 1, supra.
The Examiner’s rejection of claim 7 does not use Kolterjohn to correct the
deficiency of the proposed combination of Seki and Baroud analyzed in the
rejection of claim 1, supra. Thus, the rejections of claims 4, 6, and 7 are
also in error.
CONCLUSIONS
The proposed combination of Seki, Packard, and Lombardi would
have led a person of ordinary skill in the art to the subject matter of
independent claim 1.
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Seki does not teach away from the proposed combination of Seki,
Packard, Lombardi, and Solland as used for the rejection of claims 4 and 6.
The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable
over Seki and Baroud is not based upon a sufficient reason with a rational
underpinning to explain why a person of ordinary skill in the art would have
been led to modify Seki’s cup with the teachings of Baroud in the manner
claimed.
DECISION
We AFFIRM the Examiner’s decision to reject claims 1-3 and 5 under
35 U.S.C. § 103(a) as unpatentable over Seki, Packard, and Lombardi.
We AFFIRM the Examiner’s decision to reject claims 4 and 6 under
35 U.S.C. § 103(a) as unpatentable over Seki, Packard, Lombardi, and
Solland.
We AFFIRM the Examiner’s decision to reject claim 7 under
35 U.S.C. § 103(a) as unpatentable over Seki, Packard, Lombardi, and
Kolterjohn.
We REVERSE the Examiner’s decision to reject claims 1-3 and 5
under 35 U.S.C. § 103(a) as unpatentable over Seki and Baroud.
We REVERSE the Examiner’s decision to reject claims 4 and 6 under
35 U.S.C. § 103(a) as unpatentable over Seki, Baroud, and Solland.
We REVERSE the Examiner’s decision to reject claim 7 under
35 U.S.C. § 103(a) as unpatentable over Seki, Baroud, and Kolterjohn.

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
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Application 11/290,526
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