Ex Parte Portman et al

Board of Patent Appeals and Interferences

Oct 19, 2011

10269490 (B.P.A.I. Oct. 19, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JILL PORTMAN, GARY SHINNER and MICHAEL BARRY
____________________

Appeal 2009-013561
Application 10/269,490
Technology Center 3700
____________________

Before JENNIFER D. BAHR, FRED A. SILVERBERG, and
WILLIAM V. SAINDON, Administrative Patent Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Jill Portman et al. (Appellants) seek our review under 35 U.S.C. § 134
of the final rejection of claim 1. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.

THE INVENTION
Appellants’ claimed invention is directed to a container lid that
facilitates the individual controlled preparation of a beverage from a
beverage bag within a container and the storage of the bag once the beverage
preparation has been completed (Pub. 1: para. [0002]1).
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A retainer for a container having a surrounding container
wall suitable to hold a liquid with which a beverage may be
prepared by immersion of a beverage bag within the liquid, said
surrounding container wall including an inner surface and outer
surface that meet to form a lip defining a mouth of the
container, the beverage bag having a bag sidewall enclosing
beverage preparation contents and to which a string is attached,
the string having a bag end at which the string is attached to the
beverage bag and a free end, said retainer comprising:
a generally flexible cover panel having an upper surface
covering the mouth of the container;
a drinking aperture through which the beverage may be
consumed;
a retention area defined by a rounded generally
continuous surrounding sidewall that rises above said upper
surface of said generally flexible cover panel and spaced

1 Appellants state that all citations to the application are made to U.S. Patent
Publication 2003/0057216 A1. We follow the same approach.
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generally opposite away from said drinking aperture and forms
an inner retainer surface sized and shaped in proportion to the
bag to provide a bag retention space;
said retention area including patterns of
weakenings formed in or perforations or incisions cut
through said rounded generally continuous surrounding
sidewall to form a patterned area and that is openable
outward by application of pressure at or around said
patterned area to form a securing aperture such that the
bag is securable to the container during immersion of the
bag within the liquid for preparation of the beverage and,
after the preparation of the beverage, drawn to an
elevated position relative to the beverage within the
container to prevent further immersion of the bag and to
facilitate consumption of the beverage by a consumer.

THE REJECTION
The following rejection by the Examiner is before us for review:
Claim 1 is are rejected under 35 U.S.C. § 103(a) as being unpatentable
over Sadlier (US Des. 417,845, issued Dec. 21, 1999) in view of Warden
(US 5,398,843, issued Mar. 21, 1995).

ISSUE
The issue before us is whether the Examiner erred in concluding that
the combined teachings of Sadlier and Warden would have led a person
having ordinary skill in the art to a retention area that is openable outward,
as called for in claim 1 (App. Br. 8, 10).

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ANALYSIS
Claim 1 calls for, inter alia, a retention area that is openable outward.
Appellants contend that Warden does not describe vent 34 as being
openable outward (App. Br. 8, 10).
The Examiner found that Sadlier describes a cover panel that is used
as a lid for a drinking cup, but does not describe “the retention area further
includes patterns of weakenings” (Ans. 3).
The Examiner, relying on Warden to cure the deficiency in Sadlier,
found that (1) Warden describes a cup lid with “a pattern of weakenings 34
opposite the drinking aperture [30]” (id.) (Bold added), and (2) “[t]he pattern
of weakenings [of Warden’s vent 34] is capable of functioning as claimed
since the flexible material of Warden allows the non-secured portion formed
by the pattern of weakenings to flex outward as pressure is applied thereto”
(Ans. 5) (Italics added).
In the analysis, the Examiner proffered that “a recitation of the
intended use of the claimed invention must result in a structural difference
between the claimed invention and the prior art in order to patentably
distinguish the claimed invention from the prior art” and that “[i]f the prior
art structure is capable of performing the intended use, then it meets the
claim” (id.).
The Examiner’s statement of the law regarding intended use is
correct. However, as noted in the Examiner’s statement of the law, the prior
art must be capable of performing the intended use to meet the limitations
called for in the claim. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir.
1997).
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Warden describes that “[a] vent 34 is formed in the lid 10 opposite the
drink-through aperture structure 30 to facilitate the flow of fluid from the
cup 12 to the consumer” (col. 3, ll. 35-37).
Warden shows in Figure 4 that the vent 34 is openable inward.
Warden is silent as to vent 34 being capable of flexing outward, as
found by the Examiner. As such, it becomes incumbent upon the Examiner
to provide an adequate basis in fact and/or technical reasoning that would
support a finding that Warden’s vent 34 is capable of flexing outward. The
Examiner, in proffering the finding, has not directed us to a particular
portion in Warden with reference to the relevant column or page number(s)
and line(s) or to other evidence (e.g., technical reasoning) which would
support the Examiner’s finding.2 Further, we do not find any support for the
Examiner’s finding. Thus, we find that the Examiner’s finding that
Warden’s vent 34 is capable of flexing outward is a conclusory statement
not supported by Warden’s actual disclosure, and is, thus, based upon
speculation. We conclude that a rationale based upon an unsupported fact
finding does not provide a sound basis for a conclusion of obviousness. KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.”); In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“The legal conclusion of
obviousness must be supported by facts. Where the legal conclusion is not
supported by facts it cannot stand.”)
We reverse the rejection of claim 1.

2 MPEP § 706.02(j) (8th ed., Rev. 8, Jul. 2010)
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CONCLUSION
The Examiner has erred in concluding that the combined teachings of
Sadlier and Warden would have led a person having ordinary skill in the art
to a retention area that is openable outward.

DECISION
The decision of the Examiner to reject claim 1 is reversed.

REVERSED

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