Ex Parte Moss

Board of Patent Appeals and Interferences

Mar 28, 2012

11135898 (B.P.A.I. Mar. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte CHRISTINE K. MOSS
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Appeal 2010-003303
Application 11/135,898
Technology Center 3700
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Before JOHN C. KERINS, CHARLES N. GREENHUT and
MICHAEL L. HOELTER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-003303
Application 11/135,898

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STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

The Claimed Subject Matter
The claimed subject matter pertains to an open-top container having a
detachable lid. The lid includes a flexible portion constructed of a material
having a certain durometer and tear strength that is slit to form a flap
permitting access to the interior of the container. Independent claim 1 is
illustrative of the claims on appeal and is reproduced below:
1. An anti-spill container assembly comprising:
a container having an open top and defining an interior
chamber adapted to contain food or small items;
a lid detachably connected to the container, the lid
including a flexible portion extending across and covering the
open top of the container, the flexible portion being constructed
of a material with a durometer of 65-95 and a tear strength of
greater than 200 lb/in; and
the flexible portion of the lid including at least one slit
that forms at least one flap in the flexible portion to permit
access to the interior chamber in the container.
Claim 17 is similar to claim 1 but specifies that the flexible portion of
the lid be constructed of “one of thermoplastic polyurethane (TPU),
thermoplastic polyesters (TPE), and polyolefin Elastomers (POE)” and that
the flexible portion be “sufficiently soft to allow insertion and withdrawal of
a hand into the interior chamber without injury or obstruction.”

References Relied on by the Examiner
Scott US 3,315,402 Apr. 25, 1967
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Application 11/135,898

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Bussard US 4,884,717 Dec. 5, 1989
Begley US 5,111,854 May 12, 1992
Stull US 2002/0162839 A1 Nov. 7, 2002

The Rejections on Appeal
1. Claims 1-5, 7, 8, 10-12, 14, 15, 17, 18 and 20 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Bussard and Stull (Ans. 2).
2. Claims 6 and 13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bussard, Stull and Begley (Ans. 3).
3. Claims 9, 16 and 19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bussard, Stull and Scott (Ans. 4).

ISSUE
Has the Examiner provided sufficient rationale and technical
reasoning, based on the preponderance of evidence and argument of record,
for concluding that Bussard and Stull render obvious a flexible slotted lid
having the material characteristics, or constructed of the specific material,
set forth in claims 1, 10 and 17?

ANALYSIS
The rejection of claims 1-5, 7, 8, 10-12, 14, 15, 17, 18 and 20
over Bussard and Stull
Each independent claim on appeal, i.e. claims 1, 10 and 17, require
that the flexible portion of the lid be constructed “of a material with a
durometer of 65-95 and a tear strength of greater than 200 lb/in.” The
Examiner relies on Bussard for disclosing all the features of these claims,
including that Bussard’s lid is made of rubber or plastic, however, the
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Examiner acknowledges that Bussard “does not disclose the specific
material or strength of the material” claimed (Ans. 2-3). The Examiner
relies on In re Aller for the proposition that “where the general conditions of
a claim are disclosed in the prior art, it is not inventive to discover the
optimum or workable ranges by routine experimentation” (Ans. 3 citing In
re Aller, 220 F.2d 454,456 (CCPA 1955)). The Examiner relies on Stull for
teaching “that it is known to provide a flexible closure element made of
TPE” which is a specific material recited in some dependent claims, as well
as independent claim 17 discussed infra, but not claims 1 and 10.
Appellant contends that the Examiner has failed to establish a prima
facie case of obviousness because in Bussard, “the inventors obviously
believed they had solved the problem of the tips feeling scratchy” and thus
“there is no suggestion or motivation in Bussard et al.to modify the
structure” to further address this problem (Br. 7-8). Appellant also disputes
the Examiner’s application of the teachings of Aller because “[t]his rule does
not apply if the parameter being optimized was not recognized to be a result-
effective variable” (Br. 8 citing In re Antonie, 559 F.2d 618, 620 (CCPA
1977)). Appellant contends that “[i]n the present case, neither Bussard et al,
nor Stull et al. considered the specific parameters claimed, and certainly do
not teach that this optimization can be used, or suggest that this variable be
considered, let alone optimized” (Br. 8).
The Examiner clarifies that while Bussard discusses “the problem of
scratching the user’s hand, and offers some solutions, such as eliminating
pointy tips of the flaps….it is the Examiner’s position that to find an
appropriate material which would function adequately is within the level of
ordinary skill in the art” and one that could be “determined through routine
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experimentation” (Ans. 4-5). The Examiner identifies Albright (US
2005/0145636) as an example that it is known to employ slitted flexible
plastic having a “durometer between 60 and 90” which must also “have
good tear strength” (Ans. 5-6). The Examiner states that Albright renders
the claimed materials as being “well know (sic.) in the closure art” and that
“it is obvious to use a well known closure material when forming the closure
of Bussard et al.,” (Ans. 5-6).
The Examiner also expressed a reliance on Albright in the Final
Office Action mailed November 4, 2008 but has not positively included
Albright in the statement of the rejection (Ans. 2). Appellant does not
dispute the Examiner’s reliance on Albright and normally, arguments not
raised are waived. However, in In re Hoch, the CCPA affirmed the decision
by the Board which approved the use of non-referenced art but stated that “if
we did not find the rejections based solely on [the referenced art] to be
sound, we might well feel constrained to reverse the decision of the board.
Where a reference is relied on to support a rejection, whether or not in a
‘minor capacity,’ there would appear to be no excuse for not positively
including the reference in the statement of the rejection” (In re Hoch, 428
F.2d 1341, 1342, n3 (CCPA 1970)). This omission suggests Appellant was
not afforded a fair opportunity to react to the thrust of the Examiner’s
rejection. See In re Jung, 637 F. 3d 1356, 1365 (“It is well-established that
the Board is free to affirm an examiner's rejection so long as ‘appellants
have had a fair opportunity to react to the thrust of the rejection.’”) (citing In
re Kronig, 539 F.2d 1300, 1302-03 (CCPA 1976)). Furthermore, we fail to
see how the cited prior art, by exhibiting “good tear strength,” would render
obvious a container having a lid with a tear strength within the specific range
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recited even in view of Albright’s teachings. All words in a claim must be
considered in judging the obviousness of the claimed subject matter. In re
Wilson, 424 F.2d 1382, 1385. The Examiner’s reliance on In re Leshin, 227
F.2d 197 and Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327 is
misplaced. See Ans. 5. These cases neither establish nor condone the use of
per se rules of obviousness in place of fact-specific analysis. See In re
Ochiai, 71 F. 3d 1565, 1369-70. Additionally, regarding claim 17, it was
not reasonable for the Examiner to interpret “TPE” to mean thermoplastic
elastomer since Appellant’s Specification has consistently used “TPE” to
mean thermoplastic polyester. See Spec. 5. The broadest reasonable
construction cannot be divorced from the specification. In re NTP, Inc., 654
F. 3d 1279, 1288. The Examiner’s rejection of claims 1, 10 and 17 is not
sound.
The rejection of dependent claims 6 and 13
over Bussard, Stull and Begley
The Examiner’s additional reliance on Begley does not cure the
deficiency noted above with respect to claim 1 and specifically the
Examiner’s non-referenced reliance on Albright for disclosing the claimed
durometer and tear strength ranges. Accordingly, we reverse the rejection of
claims 6 and 13.
The rejection of dependent claims 9, 16 and 19
over Bussard, Stull and Scott
The Examiner’s additional reliance on Scott does not cure the
deficiency noted above with respect to claim 1 and specifically the
Examiner’s non-referenced reliance on Albright for disclosing the claimed
durometer and tear strength ranges. Accordingly, we reverse the rejection of
claims 9, 16 and 19.
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Application 11/135,898

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CONCLUSION
The Examiner has not provided sufficient rationale and technical
reasoning, based on the preponderance of evidence and argument of record,
for concluding that Bussard and Stull render obvious a flexible slotted lid
having the material characteristics, or constructed of the specific material,
set forth in claims 1, 10 and 17.

DECISION
The rejection of claims 1-20 is reversed.

REVERSED

MP