Ex Parte Muir

Board of Patent Appeals and Interferences

Aug 13, 2008

10807411 (B.P.A.I. Aug. 13, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FRANK MUIR
____________

Appeal 2008-2961
Application 10/807,411
Technology Center 1700
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Decided: August 13, 2008
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Before CHUNG K. PAK, TERRY J. OWENS, and
ROMULO H. DELMENDO, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1 through 4, 7 through 11, 17, and 18,
all of the pending claims in the above-identified application. We have
jurisdiction pursuant to 35 U.S.C. § 6.
We AFFIRM-IN-PART.

Appeal 2008-2961
Application 10/807,411

STATEMENT OF THE CASE
The subject matter on appeal is directed to:
[A] magnification apparatus incorporated into a bottle
cap and more specifically to a magnification apparatus and lid
for a bottle molded concurrently into a singe unit wherein the
lens has a radius of curvature that varies in relation to the size
or diameter of the bottle cap. [Spec. 1, ll. 5-9.]

Details of the appealed subject matter are recited in representative
claim 1, 4, 11, 17, and 18 reproduced below1:

1. A method of making bottle caps, each having a built-in magnification
feature, comprising the steps of:
selecting a radius of curvature for at least one of an upper or
lower convex surface of a top portion of each bottle cap of a plurality of
bottle caps wherein different radiuses are selected for different diameter
bottle caps of said plurality of bottle caps; and
for each bottle cap to be made, pressing a single piece of plastic
that is in the shape of a bottle, or will be formed into the shape of a bottle
cap, having said top portion and an annular bottle engaging portion which
includes either thread engaging members or a lid wall with an inwardly
projecting hook region at its base for selectively affixing the bottle cap to a
top of a bottle, wherein said at least one of said upper or lower convex
surfaces of said top portion of each bottle cap of said plurality of bottle caps
to be made has said radius of curvature selected in said selecting step so as
to provide optical magnification of objects viewed through said top portion
of each bottle cap of said plurality of bottle caps to be made has said radius
of curvature selected in said selecting step so as to provide optical
magnification of objects viewed through said top portion.

1 Appellants have presented substantive arguments for patentability of only
claims 1, 4, 11, 17, and 18 (App. Br. 15-18). Therefore, for purposes of this
appeal, we select claim 1, 4, 11, 17, and 18 and decide the propriety of the
Examiner’s grounds of rejection based on these representative claims alone
consistent with 37 C.F.R. § 41.37(c)(1) (vii) (2005).

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4. The method of claim 1 wherein said annular bottle engaged portion
includes a lid wall with an inwardly projected hook region at its base.

11. The method of claim 1 wherein said single piece of plastic is
translucent.

17. The method of claim 1 wherein said at least one of said upper or lower
convex surfaces has a perimeter which extends to an edge of said annular
bottle engaging portion.

18. The method of claim 1 wherein said step of pressing simultaneously
forms the annular bottle engaging portion and said top portion having said at
least one upper or lower convex surface.

As evidence of unpatentability of the appealed subject matter, the
Examiner has proffered the following prior art references:
Owens US 2,635,289 Apr. 21, 1953
Towns US 2,669,369 Feb. 16, 1954
Harris US 4,401,434 Aug. 30, 1983

The Examiner has rejected the claims on appeal as follows:
1) Claims 1-3, 7 through 11, and 18 under 35 U.S.C. § 103(a) as
unpatentable over the disclosure of Owens;
2) Claim 4 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Owens and Towns; and
3) Claim 17 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Owens and Harris.
Appellants appeal from the Examiner’s decision rejecting the claims
on appeal under 35 U.S.C. § 103(a).

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Application 10/807,411

RELEVANT FACTUAL FINDINGS (FF)

1. Owens teaches an annular shape mounting means with a built-in
magnification feature (e.g., concave-convex, plano-convex, double convex
lens) and annular engaging members (e.g., threads) corresponding to the
claimed bottle cap (Figs. 20 through 30, col. 11, ll. 5-50, and col. 18, l. 65 to
col. 20, l. 45).
2. Owens teaches (col. 3, ll. 29-53) that:
All synthetic resins suitable for optical purposes are soft and
easily scratched or deformed. Consequently I preferably form
each lens with … integral protective and preferably mounting
and positioning extensions. I may form as one piece a lens, its
mount, and a member by which the mount is operated…
Such formations which extend from the light transmitting
or light reflecting body of the lens may be in the form of
flanges, stops, shoulders, handles, threads, racks or other gear
teeth, crank arms, slots, or the like, or a combination thereof.
Thus, by one operation I am able to create both an optical
element and the means for protecting, positioning, mounting
and operating it. In addition to the economy and speed of
production of this method it has similar and even greater
advantages in assembly. The mounting and accurate
positioning of an optical element within an instrument is a
tedious and costly process which my method makes largely
unnecessary.

3. Owens teaches (col. 4, ll.18-34) that:
[The] use [of] my novel punches and dies in a conventional
punch press…As explained at length hereinafter I apply a
punch to a moderately heated sheet of thermoplastic material
and retain the punch under pressure and against the blank and
the blank against the die until the blank has substantially cooled
either naturally or preferably with the assistance of a fan which
may be automatically or otherwise controlled. Thereupon I
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Application 10/807,411

raise the punch. While my invention may be applied to a
suitable thermo-setting material I much prefer to employ it to
individual thermoplastic blanks.

4. Owens teaches making “two substantially perfect optical surfaces, one for
the punch and one for the die, since these two elements furnish not one lens
but any number lenses which may be required…” and applying the lenses to
various optical instruments including, inter alia, telescopes, and both
binocular and monocular (col. 3, ll. 7-11 and 50-53 and col. 6, ll. 23-32).
5. Owens teaches pressing a moldable plastic material to desired sizes and
shapes wanted in a finished element, with the lenses illustrated at Figures 20
through 30 having various radiuses (radii) of curvatures (col. 13, ll. 7-26,
col. 18, l. 65 to col. col. 20, l. 65, and col. 32, ll. 39-55).
6. Owens exemplifies a unitary plastic structure having a light transmitting
body (lens), an annular shoulder and a backwardly projecting protecting and
mounting flange and teaches its light transmitting body being “not limited to
the curvature of the light transmitting body since any form appropriate to
any particular use may be employed, as for one example, a Fresnel
condensing lens for use in a locomotive headlight” (col. 25, ll. 29-44).
7. Towns teaches a soda bottle cap having a bottle-engaging portion that
includes a lid wall with an inwardly projecting hook region at its base to
provide leak proof seal (Figures 1-6 and col. 3, ll. 3-38).
8. Harris teaches a medical and equipment kit having a receptacle for an
antiseptic or similar fluid and a cap or mounting means having “a lens
having convex surfaces and a perimeter which extends to an edge of the
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annular bottle engaging portion” for removing sprinters (Ans. 5, and Harris,
col. 1, ll. 62-68, col. 3, ll. 16-60, and Fig. 5).

PRINCIPLES OF LAW
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations, if any. Graham
v. John Deere Co., 383 U.S. 1, 17-18 (1966). “[A]nalysis [of whether the
subject matter of a claim would have been obvious] need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co., v. Teleflex,
Inc., 127 S. Ct. 1727, 1740-41 (2007).
ANALYSES AND ISSUES
CLAIMS 1, 7-11, and 18:
The Examiner has correctly found that Owens teaches forming an
annular shape mounting means with a built-in magnification feature and
annular engaging members (e.g., threads) corresponding to the structure of
the claimed bottle cap via pressing a single plastic sheet (FF 1-3).
Appellants have not explained, much less demonstrated, how or why the
claimed “bottle cap” is structurally distinguishable from the annular shape
mounting device having a built-in magnification feature taught by Owens
(Compare Ans. 3, with Br. 15-17). In fact, Appellants acknowledge (Tr. 3-
4) that:
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For today, I want to focus only on claim 1 because everything
else is in the record in the case.
I did want to start out with kind of identifying
what's not new. Okay? The examiner cited this reference to
Harris, and you will see that Harris is a tube, and it's got a
magnifying glass in the top. So the idea of having a magnifying
glass and a cap on some device, that's not new. That's not what
we are claiming.
This reference to Owens, Owens teaches using a
compound press device for taking blanks of material, pressing
them into a lens shape. He teaches making a variety of
different type of lens devices, some for cameras, some for
microscopes, a variety of other things. The idea of pressing
plastic material into a lens shape, that's not new.
We even go so far as to say that pressing a material
into a lens for a variety of different applications, that's also not
new. That's what's in the Owens reference.
What we're focusing our attention on in claim 1 is
for making bottle caps. It has a couple of steps. One step is
selecting the radius of curvature step. Here it requires you to
select the radius of curvature of the magnifying lens that you
want.
You will see that in Figures 4 and 5 of the
application. For example, you may have different-size pill
bottles. Some are thin. Some are wide. Okay.
And what you're selecting is the top, the radius of
curvature of the lens itself. For example, a larger bottle might
have a lower radius of curvature, and a smaller bottle, a smaller
diameter bottle might have a larger radius of curvature. [See
also FF 1-6 and 8.]

Thus, the dispositive question is whether one of ordinary skill in the
art would have been led to employ lenses having different radiuses (radii) of
curvature for different optical instruments having different openings (e.g.
telescopes, microscopes, and binoculars) to obtain desired magnification
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within the meaning of 35 U.S.C. § 103(a). On this record, we answer this
question in the affirmative.
As is apparent from Figures 20 through 30, Owens illustrates annular
shape mounting devices comprising lenses having various radii of curvature
and teaches making, inter alia, lenses having various shapes and sizes
depending on the desired optical instruments involved (FF 4-6). It follows
that one of ordinary skill in the art would have been led to employ
appropriately sized and shaped mounting devices containing appropriate
lenses, i.e., lenses having different radii of curvature, for given optical
instruments (having different openings) for their optimum performances.
This is especially true in this case since the radius of curvature of a lens is
known to be a function of desired magnification.
As to separately argued claim 11, Owens teaches that the lens
employed can be a light transmitting or light reflecting body and can be in
“any form appropriate to any particular use…, as for one example, a Fresnel
condensing lens for use in a locomotive headlight” ( FF 2 and 6). It follows
that one of ordinary skill in the art would have been led to employ either a
transparent or translucent lens depending on the use involved.
As to separately argued claim 18, Owen teaches simultaneously
forming an annular bottle engaging portion and a top portion having at least
one upper or lower convex surface (FF 2-4 and 6).
CLAIM 4:
The Examiner states (Ans. 5) that:
Owens teaches compression molding, but is silent to a
bottle-engaging portion that includes a lid wall with an
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inwardly projecting hook region at its base. However, this
aspect is taught by Towns (Figs. 1-6).

The dispositive question is, therefore, whether one of ordinary skill in
the art would have looked to the disclosure of Towns to improve the
mounting device for optical instruments taught by Owens. On this record,
we answer this question in the negative.
Although Towns teaches a vacuum sealing feature (a lid wall with an
inwardly projecting hook region at its base) necessary for a soda bottle cap,
it does not teach or suggest that such feature is desirable or useful in an
optical mounting device used in optical instruments, such as telescopes,
microscopes, binoculars, etc. On this record, the Examiner has not
demonstrated that one of ordinary skill in the art would have looked to soda
bottle cap features to improve mounting devices for optical instruments,
such as those taught by Owens. Accordingly, we concur with Appellants
that the Examiner has not established a prima facie case of obviousness
regarding the subject matter recited in claim 4.
CLAIM 17:
Appellants do not dispute the Examiner’s finding that Harris employs
a lens having at least one of upper and lower convex surfaces extending to
an edge of an annular medical and equipment bottle engaging portion, which
is being used with a capping or mounting structure for the opening of the
medicine and equipment bottle. (Compare Ans. 5 with Br. 18; see also FF
8). Appellants argue that the lens taught by Harris is not part of a single
piece mounting or capping structure (Br. 18).
The dispositive question is, therefore, whether one of ordinary skill in
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the art would have been led to employ the lens of Harris as part of a single
piece mounting or capping structure within the meaning of 35 U.S.C. § 103
(a). On this record, we answer this question in the affirmative.
As indicated supra, Appellants acknowledge (Tr. 3-4) that:
I did want to start out with kind of identifying what's not new.
Okay? The examiner cited this reference to Harris, and you
will see that Harris is a tube, and it's got a magnifying glass in
the top. So the idea of having a magnifying glass and a cap on
some device, that's not new. That's not what we are claiming.
This reference to Owens, Owens teaches using a
compound press device for taking blanks of material, pressing
them into a lens shape. He teaches making a variety of
different type of lens devices, some for cameras, some for
microscopes, a variety of other things. The idea of pressing
plastic material into a lens shape, that's not new.
We even go so far as to say that pressing a material into a
lens for a variety of different applications, that's also not new.
That's what's in the Owens reference. [Emphasis added.]

As also indicated supra, Owens teaches forming a unitary (single piece)
mounting or capping structure having a magnification feature (lens) for
optical instruments inclusive of the device of Harris.
Given the above teachings, we concur with the Examiner that one of
ordinary skill in the art would have been led to a single piece capping or
mounting structure having Harris’ extended lens, motivated by a reasonable
expectation of successfully obtaining the advantages taught by Owens.

ORDER
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In view of the foregoing, we affirm the Examiner’s decision rejecting
claims 1, 7 through 11, 17, and 18 under 35 U.S.C. § 103(a), but reverse the
Examiner’s decision rejecting claim 4 under 35 U.S.C. § 103(a).
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART

WHITHAM, CURTIS, CHRISTOFFERSON & COOK
11491 SUNSET HILLS ROAD, SUITE 340
RESTON, VA 20190

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