Ex Parte Porcelli

Board of Patent Appeals and Interferences

Jul 14, 2012

09356771 (B.P.A.I. Jul. 14, 2012)

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.
09/356,771 07/16/1999 JOSEPH E. PORCELLI 1310-2 8276
81099 7590 07/14/2012
Thomas M. Galgano
20 W. Park Avenue
Suite 204
Long Beach, NY 11561
EXAMINER
DUCKWORTH, BRADLEY
ART UNIT PAPER NUMBER
3632
MAIL DATE DELIVERY MODE
07/14/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JOSEPH E. PORCELLI
____________________

Appeal 2010-010359
Application 09/356,771
Technology Center 3600
____________________

Before JOHN C. KERINS, CHARLES N. GREENHUT, and
PATRICK R. SCANLON, Administrative Patent Judges.

SCANLON, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Joseph E. Porcelli (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s final rejection of claims 18 and 20-22. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

THE INVENTION
Appellant’s invention is directed to beverage container holders having
resilient, V-shaped fingers for accommodating a variety of beverage
containers. Spec. p. 4, l. 14-p. 5, l. 2. Claims 18 and 21, reproduced below,
are illustrative of the subject matter on appeal.
18. A beverage container holder for round and
square beverage containers, comprising:
a rectangular basket having four side walls,
each having a top edge border which collectively
define an open top end and which, in turn, defines
a rectangular opening, at least two of said side
walls disposed opposite one another each having at
least one opening therethrough disposed beneath
said top edge border thereof; and
at least four resilient, V-shaped, flat fingers,
each having an upper fixed end which is coupled
to said top edge border of said rectangular basket
and a lower free end extending generally
downward into one of said side wall openings of
said rectangular basket, said fingers each defining
a point of a V between said ends thereof and
having a V-shaped profile when viewed in a
vertical plane with the point of the V extending
radially inwardly generally towards the center of
the rectangular opening, said fingers forming a
biasing structure for releasably supporting a
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beverage container when inserted into said
rectangular basket and cooperating to resiliently
and releasably grasp both round and square
beverage containers; and
a generally V-shaped hook attached to and
extending above said basket, wherein
said rectangular basket, said at least four
resilient fingers and said generally V-shaped hook
are formed as a single unitary member.
21. A beverage container holder for round and
square beverage containers, comprising:
a rectangular tray having a top wall having a
pair of spaced-apart rectangular openings; and
at least two sets of four resilient, V-shaped,
flat fingers, each having an upper fixed end which
is coupled to said top wall of said rectangular tray
and a lower free end extending inwardly toward a
different one of said rectangular openings, said
fingers each defining a point of a V between said
ends thereof and having a V-shaped profile when
viewed in a vertical plane with the point of the V
extending radially inwardly generally towards the
center of the respective rectangular opening, said
fingers of each set forming a biasing structure for
releasably supporting a beverage container when
inserted into said rectangular basket and
cooperating to resiliently and releasably grasp both
round and square beverage containers; and
a supporting member rotatably coupled to
said rectangular tray and being pivotable into a
position located below said pair of rectangular
openings.
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THE REJECTIONS
Appellant seeks review of the following rejections:
1. Claims 18 and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hartmann (US 5,938,160, issued Aug. 17, 1999) in
view of Jackson (US D228,335, issued Sept. 11, 1973) and further in view of
Bieck (US 5,839,711, issued Nov. 24, 1998).
2. Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Miller (US 5,297,767, issued Mar. 29, 1994) in view of
Jackson and further in view of Bieck.
3. Claim 22 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Miller in view of Jackson and Bieck and further in view of
Pratt (US 4,530,480, issued July 23, 1985).
ISSUES
Did the Examiner err in concluding that it would have been obvious to
one skilled in the art at the time the invention was made to modify the
container holder of Hartmann in view of the teachings of Jackson and
Bieck?
Did the Examiner err in concluding that it would have been obvious to
one skilled in the art at the time the invention was made to modify the
container holder of Miller in view of the teachings of Jackson and Bieck?
ANALYSIS
1. Rejection of claims 18 and 20 based on Hartmann, Jackson and Bieck
With respect to independent claim 18, the Examiner finds that
Hartmann discloses all of the claimed limitations except for the basket being
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rectangular and the fingers being V-shaped. Ans. 4. The Examiner
maintains that Jackson teaches a rectangular holder that can hold either
rectangular or cylindrical beverage containers and concludes that it would
have been obvious to one of ordinary skill in the art at the time of invention
to make the holder of Hartmann rectangular. Id. The Examiner further
maintains that Bieck teaches a cup holder with resilient, V-shaped fingers
and concludes that it would have been obvious to one of ordinary skill in the
art at the time of the invention to make the flat, resilient fingers of Hartmann
V-shaped as taught by Bieck. Id.
Appellant argues that there is no reason provided in Hartmann to
make either of these modifications. App. Br. 13. However, a reason to
modify a reference does not have to originate from the reference being
modified. The rationale for combining references can be gleaned from a
variety of sources. See DyStar Textilfarben GmbH & Co. Deutschland KG
v. C.H. Patrick Co., 464 F.3d 1356, 1361 (Fed. Cir. 2006) (“The motivation
need not be found in the references sought to be combined, but may be
found in any number of sources, including common knowledge, the prior art
as a whole, or the nature of the problem itself.”). The Examiner reasons that
changing the holder’s shape to rectangular would allow the holder to hold
circular and rectangular containers, and that the proposed modification was
an obvious design choice as holders of different shapes perform substantially
the same function in substantially the same manner. Ans. 7. We find no
error in this conclusion. We agree that one of ordinary skill in the art would
recognize that a rectangular beverage holder could hold both rectangular and
circular beverage containers. We further agree that making the round
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beverage holder rectangular would have been a predictable variation of
Hartmann’s beverage holder to perform substantially the same function in
substantially the same manner. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
398, 417 (2007) (“If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability.”).
Appellant also argues that there is no reason to modify Hartmann in
view of Jackson because “Jackson solves the problem of accommodating
round and square beverage containers by providing rounded sides of the
rectangular frame.” App. Br. 14. We are not persuaded by this contention.
While Jackson does show rounded sides, there is no indication that this is
done to solve the problem of accommodating round and square beverage
containers. Moreover, whether Jackson provides rounded sides to
accommodate both round and square beverage containers or for some other
reason does not detract from the fact that the reference discloses a
rectangular beverage container.1 Jackson’s teaching of a rectangular
beverage holder is applicable regardless of the reason for making the holder
rectangular. “One of ordinary skill in the art need not see the identical
problem addressed in a prior art reference to be motivated to apply its
teachings.” Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424
F.3d 1293, 1323 (Fed. Cir. 2005).
Appellant asserts that the fingers of Bieck i) are not are V-shaped, ii)
do not define a point of a V between the ends thereof, iii) are not flat, and iv)

1 We note that Appellant does not assert that Jackson’s holder is non-
rectangular because of the slightly rounded side portions. Indeed, Appellant
refers to the frame of Jackson’s holder as “the rectangular frame.” App. Br.
14.
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do not have an upper fixed end and a lower free end. App. Br. 15. The
Examiner does not rely on Bieck for a teaching of fingers that are flat or
have a fixed upper end and a free lower end. The Examiner finds the fingers
of Hartmann have these features. Ans. 4. We agree with the Examiner that
the fingers of Hartmann are flat2 and have a fixed upper end and a free lower
end.
The Examiner takes the position that the holding jaws 20 of Bieck are
V-shaped fingers, stating “inclined surface (28) and surface (30, lower 30)
[form] the legs of the V.” Ans. 7. In response, Appellant argues that “V-
shaped” means “two inclined faces meeting at a single point,”3 which the
holding jaws 20 of Bieck do not have. Reply Br. 5. We disagree that the
holding jaws 20 of Bieck do not meet Appellant’s definition. As described
in column 2 of Bieck, each holding jaw 20 has an inclined surface 28 that
faces upward and two supporting surfaces 30 located in approximate secant
planes of the container receptacle 12. Figure 2 clearly shows the inclined
surface 28 and the lower supporting surface 30 meet at a point.
Moreover, we find nothing to support Appellant’s narrow definition of
“V-shaped.” During patent examination, claims are given their broadest

2 Given that the fingers of the present invention have a V-shaped front side
defined by two planar surfaces intersecting at an obtuse angle and a concave
back side, and given that the Specification does not even use the term “flat”
in describing the fingers, it is not entirely clear in what sense these fingers
are flat. Nevertheless, we consider the fingers of Hartmann to be at least as
flat as the fingers of the present invention.
3 Although Appellant refers to the intersection of the inclined faces as a
“point,” we note that this intersection actually defines a line as shown in
Figures 2 and 3. Because we believe Appellant is using “point” in this
context in a broad general sense, we follow this usage herein.
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reasonable construction in light of the specification. Phillips v. AWH Corp.,
415 F.3d 1303, 1316 (Fed. Cir. 2005). The only discussion in Appellant’s
Specification regarding the shape of the fingers is that they assume “a
generally V-shaped configuration.” Spec. 8. This description does not
support the particular meaning of “V-shaped” now being asserted by
Appellant. We determine that the broadest reasonable interpretation of “V-
shaped” means having a shape resembling the letter V. The holding jaws 20
of Bieck have a shape that resembles a V. We accordingly agree with the
Examiner that the holding jaws 20 of Bieck are V-shaped fingers.
Appellant further argues that the holding jaws 20 of Bieck cannot be
V-shaped because each has two of the supporting surfaces 30. Reply Br. 5.
We are not persuaded by this argument because the claim language does not
require the entire body of the finger to define a V-shape. The lower portion
of each holding jaw 20 is V-shaped as discussed above.
Regarding the point-of-a-V limitation, the Examiner contends that “a
point of a V” could be any point on the V-shaped portion of Bieck’s holding
jaw. Ans. 7. Appellant counters that there are no points on Bieck’s holding
jaw that point inward because the inner supporting surfaces are flat. Reply
Br. 6. The phrase “a point of a V” does not appear in Appellant’s
Specification and there is nothing to ascribe any particular meaning to the
phrase other than its plain meaning. Applying the broadest reasonable
interpretation, we find that “a point of a V” does not necessarily mean the
vertex of the V and agree with the Examiner that any point on the V-shaped
portion could be “a point of a V.” Moreover, given Appellant’s comment
that a “point” is a geometric element having zero dimensions, it is difficult
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to envision how a point can extend in any direction. Nevertheless, each
holding jaw 20 of Bieck has an inclined surface 28 that meets the lower
supporting surface 30 at a point which is disposed inside the container
receptacle 12. We thus conclude that Bieck discloses a point on the V-
shaped portion of each holding jaw 20 that extends radially inward toward
the center of the container receptacle 12 in the same sense that the points of
Appellant’s fingers extend radially inward. Clearly, the V-shaped portions
of the holding jaws extend radially inward in the same manner as
Appellant’s V-shaped fingers.
Appellant also argues that it is improper to combine Hartmann with
Jackson and Bieck because there is nothing suggesting the desirability of
such a combination, citing In re Fritch, 972 F.2d 1260 (Fed. Cir. 1992).
App. Br. 14, 15, 17-18. The Fritch case states:
The mere fact that the prior art may be modified in the
manner suggested by the Examiner does not make the
modification obvious unless the prior art suggested the
desirability of the modification. Wilson and Hendrix fail
to suggest any motivation for, or desirability of, the
changes espoused by the Examiner.
Fritch, 972 F. 2d at 1266 (footnote omitted) (emphasis added). The court
further stated “there is no teaching, suggestion, or incentive in the prior art to
modify or to combine the teachings of the prior art in the manner suggested
by the Examiner.” Id. At 1265. Accordingly, Fritch uses desirability
interchangeably with teaching, suggestion, or motivation. Since the Fritch
decision, the Supreme Court has made clear that there is no requirement for
an actual teaching, suggestion, or motivation in the references themselves to
combine. KSR, 550 U.S. at 419 (“Helpful insights, however, need not
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become rigid and mandatory formulas; and when it is so applied, the
[teaching-suggestion-motivation] test is incompatible with our precedents.”).
Even if we were to agree with Appellant that the prior art does not suggest
the desirability of combining the references in the manner set forth by the
Examiner, we would still conclude that there is a rational underpinning
supporting the Examiner’s conclusion of obviousness. We agree with the
Examiner that that it would have been obvious to one of ordinary skill in the
art at the time of invention to make the holder of Hartmann rectangular in
view of the teaching of Jackson and to make the flat, resilient fingers of
Hartmann V-shaped as taught by Bieck. See Id. at 416 (combining elements
found in the prior art “according to known methods is likely to be obvious
when it does no more than yield predictable results”).
Appellant notes the relative complexity of Bieck’s holding jaws and
asserts that it would not have been obvious to combine Hartmann with Bieck
because the biasing structures in these references operate in completely
different manners. Reply Br. 6-7. While the resilient fingers 16 of
Hartmann and the holding jaws 20 of Bieck are not identical, we disagree
that these elements “operate in completely different manners.” There is
sufficient similarity in the purpose and manner of operation of these
elements to suggest the combination to a person of ordinary skill in the art.
See Id. at 420 (“Common sense teaches, however, that familiar items may
have obvious uses beyond their primary purposes, and in many cases a
person of ordinary skill will be able to fit the teachings of multiple patents
together like pieces of a puzzle.”). We are also not swayed by the alleged
complexity of Bieck’s holding jaws. The basis of the Examiner’s rejection
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is that it would have been obvious to modify the resilient fingers of
Hartmann (which have a fixed upper end and a free lower end) by making
them V-shaped per the teaching of Bieck. The Examiner is not proposing to
replace the fixed upper end fingers of Hartmann with the sliding holding
jaws of Bieck. Therefore, the relative complexity of the Bieck arrangement
does not detract from the fact that Bieck suggests V-shaped fingers.
Lastly, Appellant argues that the Examiner relies on improper
hindsight in combining the references. App. Br. 17, Reply Br. 7. For the
reasons discussed above, we determine that the Examiner’s conclusion of
obviousness is based on the knowledge of persons of ordinary skill in the art
at the time of the invention and is not improperly derived from Appellant’s
Specification. Accordingly, we disagree that the rejection relies on improper
hindsight.
For the reasons discussed above, we sustain the rejection of claim 18
as being obvious over the combination of Hartmann, Jackson and Bieck.
We also sustain the rejection of claim 20, which depends from claim 18 and
for which Appellant does not advance any separate arguments.

2. Rejection of claim 21 based on Miller, Jackson and Bieck
The Examiner contends that the first embodiment of Miller (shown in
Figures 1-6) discloses a beverage container comprising a rectangular tray
having a pair of spaced apart openings, with each opening having a set of
four inwardly extending, flat resilient members, and a support comprising
rotatable support members that can be positioned below the openings. Ans.
5. We disagree that the first embodiment includes a supporting member that
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meets the recitation of claim 21. Specifically, claim 21 recites a supporting
member that can be pivoted into a position below both of the tray openings.
The Examiner argues “the claims do not limit the number of support
members,” and “the number of support members in the reference is
irrelevant as long as it at least has the one claimed support member.” Ans.
8. While these statements may be technically true, Miller does not show one
supporting member that can be positioned below both openings, as required
by claim 21, and thus lacks the “one claimed support member.” Miller
shows a first supporting member 38 that can be pivoted into a position below
a first opening 31 and a second supporting member 48 that can be pivoted
into a position below a second opening 41. Neither supporting member can
be positioned below both openings 31 and 41. Thus, the first embodiment of
Miller, even when modified by Jackson and Bieck in the manner set forth by
the Examiner, does not include all of the elements of claim 21.
Although not relied on by the Examiner, we note that the second
embodiment of Miller (shown in Figures 7-10) includes a beverage container
having two spaced apart openings and a single support member 100 that
pivots to a position below both openings. Miller, col. 3, ll. 54-63. The
second embodiment of Miller also includes inwardly extending, flat resilient
members or fingers 65, 66, 67, which are very similar to the resilient fingers
of the first embodiment. We disagree that it would have been obvious to
make the fingers of either embodiment V-shaped in light of the teaching of
Bieck. The fingers of Miller are oriented differently than Bieck’s holding
jaws (unlike the fingers of Hartmann, which are oriented in the same manner
as Bieck’s holding jaws). It is unclear how the flat, normally horizontal
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fingers of Miller would be modified so as to have a V-shaped profile when
viewed in a vertical plane. We conclude that Bieck would not suggest to a
person of ordinary skill in the art modifying the normally horizontally
oriented Miller fingers to have a V-shaped profile when viewed in a vertical
plane.
We thus reverse the rejection of claim 21 as being obvious over the
combination of Miller, Jackson and Bieck.
3. Rejection of claim 22 based on Miller, Jackson, Bieck and Pratt
The Examiner relies on Pratt to disclose a container holder having a
spring means for biasing a support member. Ans. 6. The Examiner does not
rely on Pratt to disclose a single supporting member that can be positioned
below two openings or fingers having a V-shaped profile when viewed in a
vertical plane. As such, the Examiner does not rely on Pratt to cure the
above-noted deficiencies in the combination of Miller, Jackson and Bieck
with regard to independent claim 21. Accordingly, we cannot sustain the
Examiner’s rejection of dependent claim 22 under 35 U.S.C. § 103(a).
CONCLUSIONS
The Examiner did not err in concluding that it would have been
obvious to one skilled in the art at the time the invention was made to
modify the container holder of Hartmann in view of the teachings of Jackson
and Bieck.
The Examiner erred in concluding that it would have been obvious to
one skilled in the art at the time the invention was made to modify the
container holder of Miller in view of the teachings of Jackson and Bieck.

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DECISION
The Examiner’s rejection of claims 18 and 20 under 35 U.S.C.
§ 103(a) as being unpatentable over Hartmann in view of Jackson and
further in view of Bieck is affirmed.
The Examiner’s rejection of claim 21 under 35 U.S.C. § 103(a) as
being unpatentable over Miller in view of Jackson and further in view of
Bieck is reversed.
The Examiner’s rejection of claim 22 under 35 U.S.C. § 103(a) as
being unpatentable over Miller in view of Jackson and Bieck and further in
view of Pratt is reversed.
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) (2009).

AFFIRMED-IN-PART

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