Ex Parte Mazur

Patent Trial and Appeal Board

Jun 13, 2013

11769810 (P.T.A.B. Jun. 13, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/769,810 06/28/2007 Robert Mazur 14106-3 5447
80711 7590 06/14/2013
Brinks Hofer Gilson & Lione/Ann Arbor
524 South Main Street
Suite 200
Ann Arbor, MI 48104
EXAMINER
SHAKERI, HADI
ART UNIT PAPER NUMBER
3727
MAIL DATE DELIVERY MODE
06/14/2013 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 ROBERT MAZUR
____________________

Appeal 2011-005354
Application 11/769,810
Technology Center 3700
____________________

Before: WILLIAM V. SAINDON, SCOTT A. DANIELS, and
BEVERLY M. BUNTING, Administrative Patent Judges.

BUNTING, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-005354
Application 11/769,810

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
21. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
The claims are directed to a multi-purpose container opener. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
Claim 1: A multi-purpose closure opening device for opening
the closures of a variety of containers which comprises:
a flexible body that includes a top surface and a bottom
surface;
at least two non-concentric recesses formed in the bottom
surface of the flexible body, each of said at least two recesses
having a separate closed bottom, said separate closed bottoms
being non-coextensive;
peripheral walls extending about and surrounding the
entire periphery of each of the at least two recesses formed in a
bottom surface of the flexible body, said peripheral walls
having bases that are located at and in contact with the closed
bottoms of the at least two recesses which peripheral walls
extend downward from the closed bottoms of the at least two
recesses with a common portion of the peripheral walls
extending downward between and separating adjacent recesses;
gripping structures extending inward from each of the
peripheral walls; and
a rigid reinforcing structure embedded in the flexible
body which reinforces one of the at least two recesses formed in
a bottom surface of the flexible body.

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Matsumoto
Jacobs
Trick
US 3,730,026
US 4,633,740
US 4,760,763
May 1, 1973
Jan. 6, 1987
Aug. 2, 1988
Mazur US 2008/0011127 A1 Jan. 17, 2008

REJECTIONS1,2
Appellant seeks our review of the following rejections:
Claims 1, 3, 6 and 10-12 stand rejected under 35 U.S.C. §103(a) as
unpatentable over Trick and Jacobs. Ans. 3.
Claims 2, 4, 5, 7, 8, 10, 12-16, 18, 19 and 21 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Trick, Jacobs and Matsumoto. Ans. 5.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Trick, Jacobs and Mazur. Ans. 5.
Claims 1-8 and 10-21 stand rejected under 35 U.S.C. §103(a) as
unpatentable over Jacobs and Matsumoto. Ans. 6.

1 The rejection of claims 14-21 with regards to “frangible structure” and
claims 16-21 with regards to “non-coextensive closed bottoms” under 35
US.C. §112, first paragraph and second paragraph were withdrawn by the
Examiner in the Answer dated 10/13/2010 and are not subject to this appeal.
2 We note that Appellant presents arguments relating to the Objection to the
Drawings under 37 CFR §1.83(a). We decline to address these arguments
since this issue relates to petitionable subject matter under 37 C.F.R. § 1.181
and not to appealable subject matter. See In re Mindick, 371 F.2d 892, 894
(CCPA 1967).

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Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Jacobs, Matsumoto and Mazur. Ans. 7.

ANALYSIS
Obviousness Rejections
Claims 1, 3, 6 and 10-12: Trick and Jacobs
Appellant argues claims 1, 3, 6 and 10-12 as a group. App. Br. 7-11.
We select claim 1 as representative, treating claims 3, 6 and 10-12 as
standing or falling with representative claim 1. See 37 C.F.R. §
41.37(c)(1)(vii) (2011).
Claim 1 describes a multi-purpose closure opening device having a
flexible body, two concentric recesses, peripheral wall surrounding the entire
periphery of each of the recesses, gripping surfaces and a rigid reinforcing
structure embedded in the flexible body that reinforces one of the recesses.
The Examiner found that Trick teaches a multi-purpose closure
opening device having a flexible body with at least two recesses and a
separate closed bottom 24, 30, peripheral walls surrounding the periphery of
each of the at least two recesses, gripping structures 48 extending inward
from each of the peripheral walls and a rigid reinforcing structure 16
embedded in flexible body. The Examiner further found that Trick discloses
the “recesses to be non-concentric and non-coextensive with a common
portion of the peripheral walls extending downward between and separating
adjacent recesses” as shown in the third embodiment. Ans. 3-4 citing Trick,
col. 3, ll. 51 – col. 4, ll. 15, figs. 9-11. The Examiner relied on Jacobs to
teach openers having differently sized offset recesses and a common portion
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163 of the peripheral wall separating the adjacent recesses. Ans. 4 citing
Jacobs, figs. 9, 10. The Examiner reasoned that it would be obvious to
modify Trick using the recesses taught by Jacobs since rearranging parts of
an invention only involves routine skill in the art. Id.
Appellant first argues that it would not be obvious to combine Trick
with Jacob since the self-gripping cap remover of Trick is “configured and
shaped as shown to be ‘comfortably received in the palm or one's hand.’”
App. Br. 10 citing Trick, figs. 4-6. However, the Examiner’s rejection is not
predicated on a finding that the opener be configured to be received in the
palm of one’s hand and Appellant does not point to a structural limitation in
claim 1 directed to such a feature. We note that it is not necessary for the
prior art to serve the same purpose as that disclosed in Appellants’
Specification in order to support the conclusion that the claimed subject
matter would have been obvious.3
Secondly, Appellant argues that even if Trick and Jacobs were
combinable, the recesses would be off-center and the device would not
function as taught by Trick and shown in Figs 4-6. Appellants’ argument
does not persuade us of error in the Examiner’s finding that the recesses of
Jacob are non-concentric since Trick contemplates the off- center or non-
concentric positioning of the recesses. See Trick, col. 4. ll. 3-14. Claims

3 See In re Linter, 458 F.2d 1013, 1016 (CCPA 1972); see also KSR Int’l
Co., 550 U.S. at 419 (“[N]either the particular motivation nor the avowed
purpose of the [Appellants] controls” in an obviousness analysis.)

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directed to an apparatus must be distinguished from the prior art in terms of
structure rather than function.4

Appellant further argues that the Examiner’s finding that Trick
discloses a reinforcing structure embedded in the flexible body is erroneous.
App. Br. 11; Reply Br. 2-3. Since the Examiner did not provide a response
to this argument, the rejection stands on its own. Appellant’s argument does
not apprise us of error in the Examiner’s finding that Trick discloses a rigid
reinforcing structure. The Examiner reasonably found, and Appellant does
not challenge, that the annular ribs 16 are a reinforcing structure. Even
assuming, as Appellant alleges, that that Examiner intended to point to the
insert 66 of Trick as a reinforcing structure, Appellant’s allegation is
unpersuasive since the insert 66 also meets the structural limitation of claim
1 of a rigid reinforcing structure embedded in the flexible body. We note
that the insert 66 provides support to the recess to provide a “high friction
cap engaging surface.” See Trick, col. 4. ll. 9.
Appellant has not apprised us of error in the Examiner’s rejection of
claim 1. As such, the rejection of claims 1, 3, 6 and 10-12 is sustained.

Claims 2, 4, 5, 7, 8, 10, 12-16, 18, 19 and 21: Trick, Jacobs,
Matsumoto

4 See In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). See also In
re Gardiner, 171 F.2d 313, 315-16 (CCPA 1948) (“the patentability of
apparatus claims must be shown in the structure claimed and not merely
upon a use, function, or result thereof”).

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Appellant argues claims 2, 4, 5, 7, 8, 10, 12-16, 18, 19 and 21 as a
group. App. Br. 7-11. We select claim 2 as representative, treating claims
4, 5, 7, 8, 10, 12-16, 18, 19 and 21 as standing or falling with representative
claim 2.
Claim 2 depends from claim 1 and includes the additional limitation
that the rigid reinforcing structure includes an annular structure. The
Examiner found that Trick and Jacobs disclose the limitations of claim 1 as
set forth supra, and acknowledges that Trick and Jacobs do not disclose
annular reinforcing material to reinforce the peripheral wall and tab or tang.
Ans. 5. The Examiner relied on Matsumoto to disclose that the reinforcing
structure has an annular structure. Id.5
Appellant argues Matsumoto is distinguishable from Trick since
Matsumoto teaches a rigid structure for prying crown caps from bottles and
Trick teaches an opener for removing a twist style cap from a medicine
container. App. Br. 12. This argument does not persuade us that the
Examiner does not have a sound basis for finding that Trick, Jacobs and
Matsumoto are all in the same field of endeavor, i.e. openers. Ans. 8.
According to the Appellant, there is no motivation to provide Trick with the
rigid structure of Matsumoto, as such a modification provides no benefit to
Trick and could adversely affect the function Trick to grip sides and/or top
of container. App. Br. 13; Reply Br. 4-5. Appellant’s contention that the
opener of Trick as modified by Matsumoto could adversely affect the ability
of the modified device to grip sides or the top of a container is unsupported

5 However, we note that the structures in Trick that the Examiner relies upon
for the rigid reinforcing structure, ribs 16, are explicitly described as
annular. Trick, col. 2, ll. 64 (“annular ribs 16”).
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and unexplained attorney argument and does not apprise us how the
Examiner’s finding is erroneous. The Examiner reasonably concluded that
“diversifying the tool for other applications depending on the need,” as
taught by Matsumoto is within the knowledge of one of ordinary skill in the
art. Ans. 9.
The Examiner bears the initial burden of factually supporting any
prima facie conclusion of obviousness. The key to supporting any prima
facie conclusion of obviousness under 35 U.S.C. § 103 is the clear
articulation of the reason(s) why the claimed invention would have been
obvious. The Supreme Court in KSR International Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007) noted that the analysis supporting a rejection under 35
U.S.C. § 103 should be made explicit. The Federal Circuit has stated that
“rejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (citation omitted), cited with
approval in KSR, 550 U.S. at 418. In the present appeal, Appellant has not
provided any argument apprising us of error in the Examiner’s stated
findings or conclusion of obviousness. As such, the rejection of claims 2, 4,
5, 7, 8, 10, 12-16, 18, 19 and 21 is sustained.

Claim 9: Trick, Jacobs and Mazur
Appellant does not provide a separate argument in addressing the
rejection of claim 9, and relies on the arguments provided with respect to
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claim 1 over Trick and Jacobs. Ans. 13. For the reasons discussed supra
with respect to claim 1, we likewise sustain the rejection of claim 9.

Claims 1-8 and 10-21: Jacobs and Matsumoto
Appellant argues claims 1-8 and 10-21 as a group. App. Br. 13-18;
Reply Br. 1-4. We select claim 1 as representative, treating claims 2-8 and
10-21 as standing or falling with representative claim 1.
The Examiner repeated the finding that Jacobs teaches all the
limitations of claim 1, and acknowledged that Jacobs does not disclose
peripheral walls. Ans. 6. The Examiner noted that Jacobs teaches that the
body is molded out of a suitable, durable synthetic material and that it would
be obvious “to use . . . soft rubber [due to] its durability and ease of
operation . . . as a matter of . . . design choice.” Id. Further, the Examiner
found that Matsumoto teaches an opener having recesses separated by
peripheral walls and reasoned it would have been obvious “to form the
recesses by extending walls as taught by Matsumoto for an alternative means
of achieving the same results, which would only require routine
experimentations with predictable results.” Id. at 7.
Appellant contends that Jacobs and Matsumoto are not combinable
and Examiner provides no motivation or benefit for providing the receptacle
opener of Jacobs with walls of Matsumoto. App. Br. 14. Appellant’s
contention does not apprise us of error in the Examiner’s articulated reason
to combine Jacobs and Matsumoto, which is to adapt the tool for other
applications. Ans. 9-10
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Appellant presents several arguments that the overall configuration of
Jacobs and Matsumoto are “distinguishable from one another on a number of
points.” App. Br. 14-17. These arguments are mere allegations and
improperly focus on the teachings of Jacobs and Matsumoto individually,
rather than addressing the proposed modification to the wall surrounding the
recess of the Jacobs opener as a result of the combination of the teachings of
Jacobs and Matsumoto. Based on this record, the Examiner reasonably
determined that the primary reference of Jacobs would be modified for a
flexible body as taught by Matsumoto for durability and ease of operation;
and for recesses in the bottom surface of the body that are separated by
peripheral walls, which would also enable the removal of crown caps and
retention of removed caps. Ans. 9.
Finally, Appellant challenges the Examiner’s finding that Jacob
teaches recesses “formed in the bottom surface of [a] flexible body” as
required by claim 1. App. Br. 17-18. This argument is not persuasive, since
Jacob discloses recesses 131, 132 in the bottom surface of the opener body
and the Examiner relied on Matsumoto to teach a flexible body and recesses
separated by peripheral walls formed in the bottom surface of the body.
Ans. 9, 10. See Jacobs fig. 5-6; Matsumoto fig. 3-5. A reference does not
have to satisfy an ipsissimis verbis test to disclose a claimed feature.
Appellant’s arguments do not apprise us of error in the Examiner’s
explanation or conclusion. The rejection of claims 1-8 and 10-21 is
sustained.

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Claim 9: Jacobs, Matsumoto and Mazur
Appellant does not provide a separate argument in addressing the
rejection of claim 9, and relies on the argument provided with respect to the
rejection of claim 1 over Jacobs and Matsumoto. Ans. 18. For the reasons
discussed supra with respect to claim 1, we likewise sustain the rejection of
claim 9.

DECISION
The rejection of claims 1-21 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011).

AFFIRMED

rvb