Ex Parte Rader

Board of Patent Appeals and Interferences

Sep 30, 2009

10284474 (B.P.A.I. Sep. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HENNING RADER
____________

Appeal 2009-009660
Application 10/284,474
Technology Center 3700
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Decided: October 1, 2009
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Before PETER F. KRATZ, CATHERINE Q. TIMM, and
JEFFREY T. SMITH, Administrative Patent Judges.

KRATZ, 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 1-7 and 12. We have jurisdiction
pursuant to 35 U.S.C. § 6.
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Appellant’s claimed invention is directed to a hinge assembly for
securing a lid to a container, a plastic lid comprising a portion of a hinge line
for securing the lid to a container and a container including a container body,
lid and hinge assembly.
Claims 1-3 are illustrative and reproduced below:
1. A plastic lid securable to a container using a substantially
straight hinge pin, the plastic lid comprising a portion of
a hinge line shaped to receive the substantially straight
hinge pin and secure the lid to the container, wherein the
hinge line portion is initially closed via a plastic wall at
at least one end, and wherein the hinge pin is held in the
hinge line portion via contraction of an entry hole formed
by passing the hinge pin through the plastic wall.

2. A plastic lid according to claim 1, wherein the plastic
wall is formed of a polyolefin material.

3. A plastic lid according to claim 2, wherein the polyolefin
material has elastomeric and creep properties such that a
predetermined period of time after a 0.100 inch diameter
pin is passed through the plastic wall, the entry hole
therein is about 0.06 inch diameter.

The Examiner relies on the following prior art reference as evidence
in rejecting the appealed claims:
Schurman 3,886,645 Jun. 3, 1975

Claims 1-7 and 12 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Schurman. We affirm the Examiner’s rejection as to
claims 1, 2, 4, 5, 6, and 12. We reverse as to claims 3 and 7.
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Appellant does not present reasonably specific separate arguments for
rejected claims 1, 2, 4, 5, 6, and 12 (see generally App. Br.). However,
Appellant does argue dependent claims 3 and 7 separately. Accordingly, we
select claims 1 and 3 as representative claims for the aforementioned claim
groupings, on which representative claims we shall primarily focus in
deciding this appeal.
Appellant argues that Schurman does not disclose securing or holding
a hinge pin in a hinge line portion as required by claim 1 by “contraction of
an entry hole formed by passing the hinge pin through the plastic wall”
(App. Br. 11). In this regard, Appellant asserts that “the nature of [the]
hinge pin and the material through which the entry hole is made is
‘structure’ that enables the hinge pin to be held in the hinge line” (id.).
Also, Appellant disputes the Examiner’s determination that “the hinge pin of
Schurman would be held in the same manner [as Appellant’s hinge pin is
held] as the container and lid of Schurman are made of polyolefin, the same
material as [A]pplicant’s invention” (App. Br. 12).
Concerning dependent claims 3 and 7, Appellant argues that
Schurman does not disclose specific polyolefin material and/or
characteristics, that would “meet the elastomeric and creep properties
specifically defined in the noted claims” (id.).

PRINCIPAL ISSUES
Has Appellant identified reversible error in the Examiner’s
anticipation rejection of representative claim 1 by the aforementioned
asserted differences, including a hinge pin being held in a hinge line portion
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via contraction of an entry hole, of the claimed subject matter over
Schurman?
Has Appellant identified reversible error in the Examiner’s
anticipation rejection of representative claim 3 based on the argument that
the claimed elastomeric and creep properties are not described by
Schurman?

PRINCIPLES OF LAW
On appeal to this Board, Appellants must show that the Examiner
erred in finally rejecting the claims. Cf. In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006); see also 37 C.F.R. § 41.37(c)(1)(vii).
“During examination, ‘claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987).
As stated by the predecessor to our reviewing court in In re Best,
562 F.2d 1252, 1255 (CCPA 1977):
Where . . . the claimed and prior art products are identical or
substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an
applicant to prove that the prior products do not necessarily
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or inherently possess the characteristics of his claimed
product . . . [w]hether the rejection is based on “inherency”
under 35 U.S.C. § 102, on “prima facie obviousness” under
35 U.S.C. § 103, jointly or alternatively, the burden of proof is
the same, and its fairness is evidenced by the PTO’s inability
to manufacture products or to obtain and compare prior art
products.

FINDINGS OF FACT (FF)
FF 1. Schurman discloses a hinged plastic container including a
container body (1) and a lid (2), each having hinge portions (28, 31, 37, 16,
20) for accepting a substantially straight hinge pin (40) (col. 2, l. 65-col. 3,
l. 9; col. 3, l. 40; col. 4, l. 39; Figs 5-7).
FF 2. Schurman discloses that “[f]or [receiving] smaller boxes, the
hinge pin receiving holes are formed by driving the hinge pins through the
various wall portions” (col. 4, ll. 19-21).
FF 3. Schurman discloses that “[i]n use, hinge pins 40 and openings
38 become slightly misaligned, whereby hinge pins 40 are effectively
trapped within the container body” (col. 4, ll. 22-24).
FF 4. Schurman discloses that:
[t]he container parts . . . can be made of any suitable
thermoplastic material, such as high density polyethylene,
polypropylene, polyvinyl and elastomeric polyolefin, which
are given by way of example only. The hinge pins normally
will be of metal, although other suitable materials could be
used.

(col. 8, ll. 58-64).

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FF 5. The subject Specification provides that:
[0016] FIGS. 3A-3C show a hinge assembly according to
the present invention. The hinge line 14 is generally shown
schematically in FIGS. 3A-3C having at least one end initially
closed via a plastic wall 22. With reference to FIGS. 3B and
3C, the container is assembled and the lid is secured by forcing
a substantially straight hinge pin 16' according to the present
invention through the plastic wall 22.
[0017] In operation, very little or no plastic is removed via
the insertion of the hinge pin 16', but is forced aside leaving
residual axial and radial stresses. As soon as the hinge pin 16'
clears the wall (FIG. 3C), the hole contracts, and the pin 16' is
retained.
[0018] Preferably, the material of the plastic wall is a
polyolefin material having particular elastomeric and creep
properties. For example, the elastomeric and creep properties of
the polyolefin material according to the present invention may
be configured such that a predetermined time (e.g., three days)
after a 0.100 inch diameter pin has been inserted through the
closed wall 22, the entry hole is approximately 0.060 inches in
diameter. Careful selection of hinge pin 16' diameter, wall
thickness and pin end configuration allow the substantially
straight pin 16' to be securely retained.
[0019] Pin diameters of .100 inch are preferred because
this is the nominal diameter for the application. Significantly
smaller pin diameters may require modification of lid and
container hinge dimensions, would reduce ruggedness of the lid
to container attachment, would reduce weight-bearing
capability of the assembly, and may buckle when penetrating
the barrier. Significantly larger pin diameters will require
modification of the lid and container since the opening retaining
the pin is typically .150 inch or less. Larger pins also have the
disadvantage of using more material and hence being more
expensive without providing any advantage to the assembly.
[0020] Wall thicknesses of .025-.035 inch were found to
be optimum with the components tested. This thickness is
specific to a particular polymer (i.e., HDPE) and specification.
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Harder polymers might require a thinner wall for optimum
penetration while softer polymers might tolerate thicker walls.
Walls that are too thin may tear upon penetration and fail to
capture the pin while thicker walls require larger components to
provide penetrating force.

Spec. ¶¶ 0016-0020.

ANALYSIS
Claims 1, 2, 4, 5, 6, and 12
Representative claim 1 is drawn to a product. This product is a plastic
lid including a portion of a hinge line comprising a hole or opening capable
of accepting/holding a substantially straight hinge pin. In this regard, claim 1
is not drawn to a method of making the hole in the lid and/or a completed
container assembly including a container and hinge pin, which latter
components are not constituent parts of the claimed lid. Thus, claim 1 does
not require a hinge pin, much less a hinge pin that remains aligned with the
hinge line hole in the lid.
In light of the aforementioned claim construction and our factual
findings respecting the disclosure of Schurman, as well as for reasons set
forth in the Examiner’s Answer, Appellant’s argument that Schurman does
not disclose securing or holding a hinge pin in a hinge line portion as
required by claim 1 is not persuasive of reversible error in the Examiner’s
anticipation rejection as Schurman describes a plastic lid having a hole that
is capable of holding a hinge pin (Ans. 4-6; FF 1, 2, and 4).
Moreover and to the extent that representative claim 1 may be
considered to require that a portion of an end wall of the lid remains with a
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hole in it and which end wall is formed of plastic that can contract, which we
do not believe is required by the claim language, we note that representative
claim 1 does not specify a particular amount or degree of contraction for the
plastic or specify how the hole contraction occurs, such as by a memory
property of the plastic, a change of temperature, or by application of some
physical force. In this regard, Schurman discloses that a hole in a plastic lid
end wall can be formed by forcing a hinge pin there through and that the
plastic can be a polyolefin, such as a high density polyethylene (HDPE),
which is the only chemical class of thermoplastic specifically identified by
Appellant for the claimed wall (FF 3 -5; see generally Spec.).
Consequently and to the extent representative claim 1 requires such a
plastic end wall portion for the claimed lid, it is reasonable to presume that
the thermoplastic material (HDPE) of Schurman would possess a contraction
characteristic to the extent required by representative claim 1 given the
similarity of the class of thermoplastic disclosed by Appellant and Schurman
and the breadth of representative claim 1 with respect to a contraction
property for the plastic. In this regard, Appellant has not substantiated that a
hole formed in an end wall of Schurman that is made of any HDPE, as
disclosed therein, would not contract to some extent under appropriate
conditions (FF 1, 2, 4, and 5; see generally App. Br. and Reply Br.). See In
re Best, 562 F.2d at 1255.
Further regarding this matter, we note that Appellant’s argument
respecting the misalignment disclosure of Schurman, even if, assuming
arguendo, the lid were considered as part of a final assembly including a
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container and hinge pin,1 is off the mark in that such an assembled lid of
claim 1 does not preclude a misalignment of such a hinge pin with the lid
hole from being present, particularly after repeated use of the lid (App. Br.
12; Reply Br. 2; FF 1-5).
It follows that, on this record, we shall sustain the Examiner’s
anticipation rejection of representative claim 1 and claims 2, 4-6, and 12 that
are argued together therewith.
Claims 3 and 7
Representative claim 3 depends from claim 2, which in turn depends
from claim 1 and requires a plastic end wall as part of the lid, which plastic
material is required to be a polyolefin having specific elastomeric and creep
properties as specified in claim 3.
Here, we agree with Appellant that the Examiner’s assertion of
inherency with respect to the plastic material required for the lid structure of
claim 3 by the recited elastomeric and creep property is not persuasive of an
anticipatory disclosure in Schurman (App Br. 12; FF. 4 and 5).
The Examiner acknowledges that Appellant is correct that different
polyolefin materials have different properties; but, mistakenly takes the
position that Schurman anticipates because a polyolefin that meets the
specified characteristics of representative claim 3 exists and Schurman
discloses a polyolefin (Ans. 6). However, as argued by Appellant, the
generic disclosure of a polyolefin material in Schurman does not establish
that a polyolefin having the particularly claimed characteristics of claim 3 is

1 As if appealed claim 12 were argued separately with particularity with
respect to these features, which it is not.
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being described by Schurman because it is reasonable to expect that a
polyolefin, including HDPE, can be formed to have a variety of particular
elastomeric and creep properties and it would require selection to arrive at
the subject matter of representative claim 3 (App. Br. 12; FF 5; Spec. ¶¶
0018-20).
Accordingly, we shall not sustain the Examiner’s anticipation
rejection of claims 3 and 7.

CONCLUSION
Appellant has not identified reversible error in the Examiner’s
anticipation rejection of representative claim 1 by the alleged and argued
differences over Schurman because representative claim 1 does not specify
any structural difference over the lid structure of Schurman.
Appellant has identified reversible error in the Examiner’s
anticipation rejection of representative claim 3 based on the argument that
the claimed elastomeric and creep properties are not described by Schurman.
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ORDER
The Examiner’s decision to reject claims 1, 2, 4-6, and 12 under
35 U.S.C. § 102(b) as being anticipated by Schurman is affirmed. The
Examiner’s decision to reject claims 3 and 7 under 35 U.S.C. § 102(b) as
being anticipated by Schurman is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a)(1)(v).

AFFIRMED-IN-PART

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