Ex Parte Oakes

Patent Trials and Appeals Board

May 3, 2019

14242475 - (D) (P.T.A.B. May. 3, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/242,475 04/01/2014
31743 7590
Georgia-Pacific LLC
133 Peachtree Street NE
GA030-39
ATLANTA, GA 30303
05/06/2019
FIRST NAMED INVENTOR
Shawn A. Oakes
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
20655-USA 2294
EXAMINER
STEVENS, ALLAN D
ART UNIT PAPER NUMBER
3736
MAIL DATE DELIVERY MODE
05/06/2019 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 SHAWN A. OAKES 1
Appeal2017-007949
Application 14/242,475
Technology Center 3700
Before JAMES P. CAL VE, WILLIAM A. CAPP, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Final Office
Action rejecting claims 1-3, 5-7, and 9-22. Appeal Br. 1. We have
jurisdiction under 35 U.S.C. § 6(b ). Appellant presented argument at an oral
hearing held on April 25, 2019.
We REVERSE.
1 Dixie Consumer Products LLC is identified as the real party in interest and
also is the applicant pursuant to 37 C.F.R. § 1.46. Appeal Br. 3.
Appeal2017-007949
Application 14/242,475
CLAIMED SUBJECT MATTER
Claims 1, 11, and 19 are independent. Claim 1 is reproduced below.
1. A reclosable cup lid, comprising:
an upper surface having at least one recess formed
therein, the at least one recess having curved ends and an
arcuate shape;
a tab configured to fit within the recess, the tab having
curved ends and an arcuate shape corresponding to the arcuate
shape and curved ends of the recess; and
an opening disposed within the recess to allow fluid flow
therethrough, wherein the tab is able to move within the recess
from a first position to a second position so that the opening is
at least partially blocked when the tab is located in the first
position, and the opening is at least partially unobstructed when
the tab is located in the second position, and wherein the tab
comprises a protrusion formed on an outer surface thereof, the
protrusion provides a friction fit with the recess to maintain the
tab within the recess during use.
Appeal Br. 16 (Claims App.).
REJECTI0NS2
Claims 1-3, 6, 7, and 9-21 are rejected under 35 U.S.C. § 103 as
unpatentable over Cole (WO 2007/052014 Al, pub. May 10, 2007), Wong
(US 2007/0278228 Al, pub. Dec. 6, 2007), and Frankenberg (US 1,153,379,
iss. Sept. 14, 1915).
Claims 1, 5, and 22 are rejected under 35 U.S.C. § 103 as
unpatentable over Cole, Wong, and Frankenberg.
2 The Examiner withdrew the rejection of clams 21 and 22 under 35 U.S.C.
§ l 12(a) for lack of enablement and claims 21 and 22 under 35 U.S.C.
§ l l 2(b) for indefiniteness in response to Appellant's amendment to claims
21 and 22. See Adv. Action (mailed Nov. 30, 2016); Second Amendment
and Response Under 3 7 CPR § 1.116, filed Oct. 24, 2016.
2
Appeal2017-007949
Application 14/242,475
ANALYSIS
Claims 1-3, 6, 7, and 9-21
As Unpatentable Over Cole, Wong, and Frankenberg
Appellant's reclosable cup lid has opening 144 through which a
person can drink fluid from a cup. Spec. ,i,i 1, 2. To prevent fluid from
passing through the opening at other times, closure tab 200 is provided as
illustrated in Appellant's Figures 3 and 4, reproduced below. Id. ,i 5.
120
FIG. 3 FIG. 4
Figure 3 illustrates tab 200 in recess 120 in an open position. Id. ,i 46.
Figure 4 illustrates tab 200 in recess 120 in a closed position. Id. ,i 47.
The Examiner relies on Cole to teach reclosable lid 20 wherein cap
318 moves along an arcuate surface to close an opening (port 28) in the lid.
Final Act. 6. Cap 318 has skirts 319, 3 20 extending downwardly on either
side of mouthpiece 23 to engage respective recesses 313, 315. Id. Figures
13 and 14 are reproduced below to illustrate Cole's lid. Id.; Cole, 8:16-24.
F(g. 13 Fig. 14
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Appeal2017-007949
Application 14/242,475
Figure 13 of Cole is a top view of reclosable lid 20 with cap 318 over
drinking port 28 in a closed position. Cole, 8:16-19. Figure 14 provides a
perspective view of lid 20 with no cap 318, and port 28 is exposed. Cap 318
includes downward depending skirts 319, 320 that engage grooves 313, 315
of lid 20 to retain cap 318 on surface 24 of mouthpiece 23. Id. at 7: 18-8: 19.
Finding that Cole's tab ( cap 318) does not fit or move in a recess of
Cole's lid 20 as recited in independent claims 1, 11, and 19, the Examiner
cites Wong's tab (sliding member 300), which moves in recessed trench 220.
Final Act. 6. Figures IA and 4A, reproduced below, illustrate Wong's lid.
300
\
1 U-11 .. ~- ~-·
FIG. 1A FIG. 4A
Figure IA illustrates sliding member 300 in a recess of disposable lid
100 with drink opening 210 exposed. Wong ,-J 25. Figure 4A is a side view
of similar sliding member 300 disposed in a recess (unnumbered). Id. ,-i 34.
The Examiner determines it would have been obvious to substitute the
sliding arrangement of Wong's sliding member 3 00 for skirted cap 318 of
Cole such that Cole's cap 318 would have protrusions formed on its outer
surface fitting in the recess "to maintain it within the recess during use."
Final Act. 6-7. The Examiner determines that this modification is a simple
substitution of one known element for another for predictable results. Ans.
13. The Examiner finds Cole's cap 318 and Wong's sliding member 300 to
be art-recognized equivalent sliding arrangements. Final Act. 6; Ans. 13.
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Appeal2017-007949
Application 14/242,475
Appellant argues that the Examiner's modification of Cole is not a
mere substitution or rearrangement of various parts because it would require
significant modifications and a complete redesign of Cole that would change
Cole's principle of operation. Appeal Br. 9-11. Appellant argues that the
prior art does not recognize the sliding tabs of Cole and Wong as equivalents
and there is no objective reason that would have prompted a skilled artisan
to combine the arcuate elements of Cole with the linear recessed elements of
Wong. Reply Br. 2-4. Therefore, a principal issue on appeal is whether a
person of ordinary skill in the art would have been motivated to substitute
Wong's sliding member 300 for Cole's arcuate-shaped cap 318.
We are not persuaded that a skilled artisan would have been motivated
to substitute Wong's sliding member 300 for Cole's arcuate-shaped cap 318
as a simple substitution of known art-recognized equivalents for predictable
results. We agree that Cole, Wong, and Frankenberg all teach sliding tabs
that slide over or away from a drink opening in a disposable lid. However,
this fact does not necessarily support a finding that these different tabs are
recognized in the art as equivalent structures such that one can be substituted
for the other as a simple substitution as the Examiner proposes. To rely on
equivalence as a rationale supporting an obviousness rejection, the prior art
must recognize the equivalency. The mere fact that the components at issue
are functional or mechanical equivalents is not enough. MPEP § 2144.06 II.
Here, all three prior art tabs slide to cover or uncover a drink opening.
However, Cole's skirted tab 318 moves in an arcuate manner atop arcuate
top surface 24 of the lid as discussed above. Wong and Frankenberg teach
tabs (sliding member 300 in Wong, sifting member 13 in Frankenberg) that
move in a linear recess. Wong, Figs. IA, 4A; Frankenberg, Figs. 1, 2.
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Appeal2017-007949
Application 14/242,475
Therefore, we are not persuaded that a skilled artisan would have been
motivated to substitute Wong's linear sliding member 300 for Cole's arcuate
sliding skirted cap 318 as a simple substitution or as equivalent structures.
In addition, Wong teaches sliding member 300 having guide 320 protruding
from its bottom surface. Wong, Figs. 3B-3E, 4A-4C. Lower guide 320 fits
into an additional guide slot formed through the bottom of Wong's recess
where sliding member 300 moves. Wong ,-J,-J 35-37, Figs. 2C-2F, 4A-4C.
The prior art of record teaches that recessed closure tabs move within
linear slots whereas arcuate closure tabs move atop a raised surface of a lid.
U.S. Patent No. 7,731,047 B2 (Ishimitsu), which is cited by the Examiner as
evidence of the art-recognized equivalence of the closure of Cole that moves
outside a recess and a closure of Wong that moves within a recess (Ans. 15),
is not persuasive evidence of such equivalence. Ishimitsu illustrates a linear
sliding tab (moveable element l 850e) that slides along track l 842e and slot
1830e much like Wong. Ishimitsu, 48:48-49:6, Figs. 93, 94. Ishimitsu also
teaches that the recessed sides (retaining lips l 894e, l 895e) can be omitted if
the slot l 830e is modified to secure moveable element l 850e to cover l 812e
via the bottom protruding mount 1851 d. Ishimitsu teaches that a recess like
Wong's recess is not necessary to retain a linearly-sliding tab if a bottom
mount of the sliding tab is secured to the lid via a slot. Ishimitsu describes
this embodiment as "yet another variation of the lid." Ishimitsu, 48:48.
Ishimitsu describes "[y Jet an additional embodiment of a lid assembly
1910" as top cover 1950. Ishimitsu, 49:7-48, Figs. 96-99. Top cover 1950
slides across annular rail 1922 to cover or uncover opening 1924, like Cole's
skirted tab 318. It is not clear that Ishimitsu recognizes the embodiment of
Figures 93 and 94 as equivalent to the embodiment of Figures 96-99.
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Appeal2017-007949
Application 14/242,475
Thus, we are not persuaded that a skilled artisan would consider the
proposed modification of Cole to be a simple substitution of art-recognized
equivalents or a mere rearrangement of parts. Nor is it clear how Cole has a
recess to receive Wong's sliding member as a simple substitution. See Final
Act. 7; Ans. 13-14. Nor are we persuaded that a skilled artisan would have
been motivated to form an arcuate recess in Cole's lid and substitute Wong's
linear sliding member 3 00 into the arcuate recess when Wong teaches that
sliding member 300 moves linearly from the center of the lid outwardly and
radially to the perimeter of the lid. Wong lacks a sliding member moving
along a recessed arcuate path around a perimeter of the lid.
A simple substitution might replace Cole's arcuate-moving cap 318
with Wong's linear-sliding, recessed member 300 moving radially from a
center of Cole's lid to opening 28 at the edge of Cole's lid as Wong teaches.
We are not persuaded that a skilled artisan would have been motivated to
form an arcuate recess in Cole's lid to receive Wong's linear and radially-
sliding member 300 as the Examiner proposes to do as a simple substitution
or as art-recognized equivalent structures. This is particularly true because
Cole teaches to move skirted cap 318 across drinking port 28 from either
side and to secure cap 318 to port 28 via depression 323 that is formed in tab
38. Cole, 8:21-24. Wong's sliding member lacks a depression to secure to
port 28 of Cole. Nor could it slide on both sides of Cole's drinking port 28
without obliterating port 28 with the guide slot that Wong teaches to use to
guide sliding member 300 even if Wong's sliding member was reshaped to
slide in an arcuate recess formed in Cole's lid as the Examiner proposes to
do. Such modifications do not involve a simple substitution of one part for
another equivalent part. Instead, they involve hindsight reconstruction.
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Appeal2017-007949
Application 14/242,475
Even ifwe agreed with the Examiner that Cole's sliding closure and
Wong's sliding closure are simple substitutes or art-recognized equivalents,
this reason does not explain why a skilled artisan would pick and combine
select parts of each closure as the Examiner proposes. The Examiner is not
modifying Cole to substitute the entire closure, i.e., cap 318 with skirts 319,
320 seated in grooves 313, 315, respectively, with Wong's entire closure,
i.e., sliding member 300 with protrusions on outer surfaces received in
trench 220 and a bottom protrusion received in a guide slot.
Rather, the Examiner proposes to modify Cole's skirted cap 318 to
have protrusions on its outer surface, as taught by Wong. Final Act. 6-7
(proposing "to substitute the exterior and interior skirts (319 & 320) of the
cap (318) (tab) respectively seated in grooves (313 & 315) of Cole for the
sliding arrangement of Wong, such that the cap (318) (tab) would have
protrusions formed on its outer surface fitting in the recess"). The sliding
closures of Cole and Wong being art-recognized substitutes does not explain
why a skilled artisan would have replaced only one part of Cole's cap 318
(the skirts) with only one part of Wong's closure (the exterior protrusions) or
considered the modification to be a simple substitution of equivalent parts.
Cole also lacks a recess to receive Wong's protrusions. Thus, there is
no recess for Wong's added protrusions to fit into as the Examiner proposes.
As a result, any art-recognized equivalence of Cole's entire skirted cap 318
and Wong's entire linear sliding member 300, and respective cooperating
recesses 313, 315/220, is not utilized in the rejection as a simple substitution.
For all of the foregoing reasons, we do not sustain the rejection of
independent claims 1, 11, and 19 or claims 2, 3, 6, 7, 9, 10, 12-18, 20, and
21, which depend therefrom.
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Appeal2017-007949
Application 14/242,475
Claims 1, 5, and 22
As Unpatentable over Cole, Wong, and Frankenberg
The Examiner relies on the same teachings of Cole and Wong to reject
claims 1, 5, and 22 in this rejection. Final Act. 14-16. Thus, we do not
sustain this rejection for the reasons discussed above for the previous
rejection.
DECISION
We reverse the rejections of claims 1-3, 5-7, and 9-22.
REVERSED
9