Ex Parte Monmany

Patent Trial and Appeal Board

Dec 4, 2014

11670865 (P.T.A.B. Dec. 4, 2014)

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.
11/670,865 02/02/2007 Carlos M. Monmany 68164.000002 7916
21967 7590 12/04/2014
HUNTON & WILLIAMS LLP
INTELLECTUAL PROPERTY DEPARTMENT
2200 Pennsylvania Avenue, N.W.
WASHINGTON, DC 20037
EXAMINER
MATHEW, FENN C
ART UNIT PAPER NUMBER
3781
MAIL DATE DELIVERY MODE
12/04/2014 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 CARLOS M. MONMANY
________________

Appeal 2012-008178
Application 11/670,865
Technology Center 3700
________________

Before: MICHAEL L. HOELTER, LYNNE H. BROWNE, and
JAMES J. MAYBERRY, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1, 3, 5‒11, and 13‒16. App. Br. 1. We have jurisdiction
under 35 U.S.C. § 6(b). Appellant’s counsel presented oral argument on
October 30, 2014. We AFFIRM.

THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to a paint container adapter to be
temporarily mounted to the top surface of a paint container.” Spec. para. 1.
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Independent apparatus claim 1 is illustrative of the claims on appeal and is
reproduced below:
1. A paint container adapter comprising:
a hollow cylindrical adapter body substantially open at
both ends,
the body having: (1) a continuous sidewall defined by an
inner body surface and an outer body surface, wherein the
length of the continuous sidewall between both ends is
constant, and wherein the inner and outer body surfaces are
substantially vertical and parallel, and (2) at least two handle
openings cut-out from the continuous sidewall;
the outer body surface of the sidewall having two or
more clips having an open end capable of aligning with an open
end of the adapter body to engage a five gallon paint container,
each of the two or more clips having a substantially
horizontally aligned ridge on an inner wall of the clip to reduce
slippage, wherein the open end of the adapter body is capable of
being inserted into an open cylindrical five gallon paint
container to a sufficient depth so that the two or more clips
engage an outer arcuate flange of the five gallon paint
container, such engagement being accomplished by: (1) the
substantially horizontally aligned ridge of the clip being
positioned beneath the outer arcuate flange of the five gallon
paint container to secure the paint container adapter to the five
gallon paint container, and (2) the outer body surface of adapter
body being compressed against an inner rim surface of the paint
container so as to prevent leakage between the adapter and the
five gallon paint container, and wherein the clip has a flared
lever for disengaging the adapter from the five gallon paint
container,
the outer body surface further having at least three
continuous annular ridges for catching excess drip, wherein the
at least three continuous annular ridge[s] are disposed towards a
top portion of the outer body surface, and wherein the at least
three continuous annular ridges are of the same length relative
to the outer body surface.

Appeal 2012-008178
Application 11/670,865

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REFERENCES RELIED ON BY THE EXAMINER
Tretwold US 2,988,767 June 20, 1961
Brown US 4,020,523 May 3, 1977
Blanchette US 5,577,632 Nov. 26, 1996
Geeham US 6,164,481 Dec. 26, 2000
Zhou US 6,296,158 B1 Oct. 2, 2001
Mann US 2005/0039294 A1 Feb. 24, 2005
Boehm US 2006/0260086 A1 Nov. 23, 2006

THE REJECTIONS ON APPEAL
Claims 1, 7, and 16 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Ans. 4.
Claims 1, 3, 5‒11, and 13‒16 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellant regards as the invention.
Ans. 5.
Claims 1, 3, 5, and 13‒15 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Brown, Boehm, Zhou, and Blanchette. Ans. 5.
Claim 6 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Brown, Boehm, Blanchette, Zhou, and Tretwold. Ans. 12.
Claims 7‒11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brown, Boehm, Blanchette, Zhou, and Mann. Ans. 13.
Claim 16 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Brown, Boehm, Blanchette, and Geeham. Ans. 19.

ANALYSIS
The rejection of claims 1, 7, and 16 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement
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Each independent claim (i.e., claims 1, 7, and 16) contains the
limitation of three annular ridges that “are of the same length relative to the
outer body surface.”1 The Examiner finds that, with respect to each claim,
“[t]here is nothing in the written disclosure or in the Figures as originally
filed to support” this limitation. Ans. 5. Appellant relies on the figures as
“clearly show[ing] three annular ridges that are of the same length relative to
the outer body surface.” 2 App. Br. 8; see also Reply Br. 2. Appellant also
states that one of ordinary skill in the art “could further confirm the point by
measuring the lengths of the three annular ridges relative to the outer
surface.” App. Br. 8. The Examiner notes Appellant’s reliance on the
drawings and states that whether their lengths are “the same” or not cannot
be found by measuring “as the drawings are not to scale.” Ans. 24.
Here, the matter to be resolved is whether Appellant’s Specification,
including the drawings, provides support for the claim limitation that the
three ridges “are of the same length” as claimed. As indicated, Appellant
relies on the drawings as disclosing this limitation. App. Br. 8; Reply Br. 2‒
3. We are instructed by our reviewing court that “patent drawings do not
define the precise proportions of the elements and may not be relied on to
show particular sizes if the specification is completely silent on the issue.”

1 Claim 1 and 7 specify that the ridges are “continuous” while claim 16
specifies that the ridges are “partially continuous.” Each ridge in each
respective claim, nevertheless, has the “same length.”
2 The three ridges 120 illustrated in Appellant’s Figure 1 can reasonably be
understood to be substantially identical to each other. However, the claims
on appeal do not address such general similarity, instead, the claims focus
upon a specific single measurement of each ridge, i.e., its “length.” It is this
claimed “length” of each ridge, and their being “the same,” that the
Examiner addresses. Ans. 5.
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Hockerson-Halberstadt, Inc. v. Avia Group Int’l Inc., 222 F.3d 951, 956
(Fed. Cir. 2000) (emphasis added). In the matter at hand, Appellant
provides no indication that the drawings are to scale3 nor does Appellant
indicate where the specification otherwise supports the specific limitation
that the three ridges “are of the same length” (i.e., a precise proportion
and/or a particular size) as claimed. Accordingly, we affirm the Examiner’s
rejection under 35 U.S.C. § 112, first paragraph, as failing to comply with
the written description requirement.
The rejection of claims 1, 3, 5‒11, and 13‒16 (i.e., all the claims)
as being indefinite
In this rejection, the Examiner addresses the same limitation as above,
but focuses more closely on the claim term “length.” Ans. 5, 24. The
Examiner initially relies on the circumferential length of the three ridges but
is informed by Appellant that “Appellant is not claiming the ‘circumference’
of the annular ridges -- as the Examiner seems to imply -- but rather their
respective ‘lengths relative to the outer body surface.’” Ans. 24; Reply Br.
2. In clarifying the manner by which “length” is to be determined, we are
informed that the direction of measurement meant by the recitation “relative
to the outer body surface” is a radially outwardly direction (i.e.,
horizontally) when viewing Appellant’s Figures. Tr. 3‒7. The limitation in
question requires that the three ridges are of the same length “relative to the
outer body surface.” Since the measurement to be taken is “relative to the

3 Appellant contends that there is no indication that “the drawings are not
drawn to scale.” Reply Br. 3. However, the lack of a disclosure that the
drawings are not to scale is not the same as a disclosure that the drawings
are to scale. Because Appellant’s Specification is silent on the matter (see
Hockerson-Halberstadt), Appellant’s contention is not persuasive.
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outer body surface,” we are not appraised how the Examiner’s
circumferential measurement (i.e., measured where the ridge and the outer
body surface abut) would not equally conform to this limitation. Likewise, a
vertical direction (vertical when viewing Appellant’s Figures) could also be
employed so long as the measurement is taken “relative to the outer body
surface” and not elsewhere at some location spaced from this outer body
surface such as at a location closer to the apex of the ridge. Accordingly,
because the “length” of the ridges are to be ascertained “relative to the outer
body surface,” and because such “length” can be ascertained in different
manners as discussed supra in conformance with this limitation, we agree
with the Examiner that the limitation in question is indefinite because one
skilled in the art is uncertain as to which measurement is claimed (i.e.,
circumferential, radial/horizontal, or vertical). Accordingly, we sustain the
Examiner’s rejection of claims 1, 3, 5‒11, and 13‒16 (i.e., all the claims)
under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which Appellant
regards as the invention.
The obviousness rejections of claims 1, 3, 5‒11, and 13‒16
We are instructed that before a decision based on 35 U.S.C. § 103(a)
can be made, “it is essential to know what the claims do in fact cover.” In re
Steele, 305 F.2d 859, 862–63 (CCPA 1962). In Steele, our reviewing court
determined that there was confusion regarding “the proper interpretation to
be given to the appealed claims” and as such, “the claims do not particularly
point out and distinctly claim the invention as required by 35 U.S.C. § 112.”
Steele, 305 F.2d at 863. Accordingly, since we affirm the Examiner’s
rejection of all the claims on appeal as being indefinite (supra), we pro
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forma reverse the Examiner’s rejections of these same claims under 35
U.S.C. § 103(a) because it is uncertain what the claims do in fact cover.
However, we cannot help but notice issues regarding certain claim
limitations that do not require any such speculation. For example, regarding
the recitation of “at least three” annular ridges (App. Br. 12), the Examiner
finds that “Applicant has not provided any criticality to the number of
ridges” and therefore it would have been obvious to provide “at least three”
such ridges “since it has been held that mere duplication of the essential
working parts of a device involves only routine skill in the art. St. Regis
Paper Co. v. Bemis Co., 193 USPQ 8.” Ans. 9‒10. The Examiner identifies
where Zhou discloses that annular ridges 126' and 128' are employed to “trap
residual paint.” Ans. 9 (referencing Zhou 2:66 to 3:5). Appellant does not
address the criticality of adding a third such paint-trapping annular ridge nor
does Appellant elaborate on how doing so “would change the principle of
operation of the prior art invention being modified.” App. Br. 12‒13; Reply
Br. 4‒5.
Appellant also addresses the Examiner’s reliance on Brown’s “paint
container adapter (15)” which is described in Brown as having clips 17 used
to detachably secure adapter 15 atop floating gauge 5. App. Br. 10; Ans. 6;
Brown 2:19‒34. Appellant contends that after connection, adapter 15
“merely floats in the paint and is not connected in any way to a paint
container.” App. Br. 10, n.1. The Examiner subsequently clarifies that
Brown’s “clips (17) [are] capable of engaging an arcuate flange of a paint
container.” Ans. 24. While we are informed by the Examiner that Brown’s
adapter 15 with clips 17 may be capable of engaging a paint container, there
is no explanation as to why a person skilled in the art would do so. In other
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words, it is not explained why it would have been obvious to take adapter
15, which is designed to float upon the paint in a container, and attach same
to the container itself thereby making it non-floating. At one point,
Appellant contends that any proposed modification of Brown by the
Examiner “amounts to impermissible hindsight reconstruction.” App. Br.
12. Further, at oral hearing, Appellant contended that attaching Brown’s
adapter to the container itself would “deviat[e] from the intended purpose”
of Brown. Tr. 10.
DECISION
The Examiner’s rejection of independent claims 1, 7, and 16 under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement is affirmed.
The Examiner’s rejection of claims 1, 3, 5‒11, and 13‒16 under 35
U.S.C. § 112, second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which Appellant regards as
the invention is affirmed.
Because we affirm the rejection of all the claims on appeal as being
indefinite, we do not reach and, instead, pro forma reverse, their rejections
as being obvious over the references to Brown, Boehm, Zhou, Blanchette,
Tretwold, Mann, and Geeham.
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).

AFFIRMED

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