Ex Parte Rhoades

Board of Patent Appeals and Interferences

Oct 24, 2007

10401079 (B.P.A.I. Oct. 24, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte Dean L. Rhoades
____________

Appeal 2007-0924
Application 10/401,079
Technology Center 3700
____________

Decided: October 24, 2007
____________

Before TERRY J. OWENS, MURRIEL E. CRAWFORD, and JENNIFER
D. BAHR, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Dean L. Rhoades (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1, 2, 5, 8, 9, 10 and 16-18. Claims 3,
4, 6, 7 and 11-15 stand withdrawn from consideration. We have jurisdiction
over this appeal under 35 U.S.C. § 6 (2002).

THE INVENTION
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Appellant’s claimed invention is directed to containers and caps for
pharmaceutical or nutritional products, such as tablets, capsules and
medicinal syrups (Specification ¶ 2), as well as food, beauty products,
chemicals and other items (Specification ¶ 26). Independent claims 1 and 16
are illustrative of the claimed invention and read as follows:
1. An apparatus comprising:
a housing defining a first internal space to
store at least one item and a first aperture;
an occluding structure removably coupled to
the housing to occlude the first aperture wherein
one of the housing and the occluded[1] structure
defines a second internal space separate from the
first internal space;
an expandable structure configured to have a
retracted state and an expanded state, the
expandable structure capable of being manipulated
between the retracted state and the expandable
state and having a dimension suitable to reside
within the second internal space in the retracted
state, the expandable structure having a first
surface with symbols printed thereon such that at
least a portion of the symbols are visible when the
expandable structure is in an expanded state.
16. An apparatus comprising:
means for storing objects;
means for enclosing the means for storing
objects; and
means for providing an expandable structure
including a first surface with symbols printed
thereon,

1 The term "occluded" should be "occluding" for consistency.
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wherein one of the storing objects means
and the enclosing means defines an internal space
in which the expandable structure can be
manipulated from a retracted state that confines the
expandable structure within the one of the storing
object means and the enclosing means and an
expanded state external to the one of the storing
object means and the enclosing means.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Yannuzzi US 3,402,808 Sep. 24, 1968
Wolfe US 4,679,822 Jul. 14, 1987
The following rejections are before us for review.2,3
Claims 2, 5 and 17 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
Claims 16-18 stand rejected under 35 U.S.C. § 102(b) as anticipated
by Wolfe.
Claims 1, 2, 5, 8 and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wolfe in view of Yannuzzi.

2 The rejection of claims 2, 5 and 17 under 35 U.S.C. § 112, first paragraph,
set forth on pages 2 and 3 of the Final Rejection (mailed April 28, 2005) has
been "removed for purpose of appeal" (Ans. 2).
3 Appellant requests that we review the propriety of the withdrawal of claims
3, 6, 7, 11 and 14 (App. Br. 8-11) and the objection to the drawings under 37
C.F.R. § 1.83(a) (App. Br. 13-14). These issues relate to petitionable
matters and not to appealable matters. See Manual of Patent Examining
Procedure (MPEP) §§ 1002 and 1201 and are not within the jurisdiction of
the Board. See In re Mindick, 371 F.2d 892, 894, 152 USPQ 566, 568
(CCPA 1967).
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Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Wolfe in view of Official Notice.
The Examiner provides reasoning in support of the rejection in the
Answer (mailed September 19, 2006). Appellant presents opposing
arguments in the Appeal Brief (filed November 16, 2005) and Reply Brief
(filed November 13, 2006).

OPINION
The indefiniteness rejection
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576, 1 USPQ2d 1081, 1088 (Fed. Cir.
1986) (citations omitted). A claim may be invalid for indefiniteness if it is
“insolubly ambiguous” and not “amenable to construction.” Exxon Research
& Eng'g Co. v. United States, 265 F.3d 1371, 1375, 60 USPQ2d 1272, 1276
(Fed. Cir. 2001).
Appellant discloses a container (10 or 1100, for example) provided
with a cap (20 or 1105, for example) and housing an expandable or
extendable ribbon (30 or 1107, for example). The ribbon 30 can be biased
into the retracted position within the container by a spring 36, for example
(Specification ¶ 42). Other retraction mechanisms, disclosed for biasing the
ribbon 1107 into a storage position within the container, include a biased
rotating pin, spring mechanisms, elastic materials in the ribbon 1107, and
similar mechanisms (Specification ¶ 46).
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Claim 2 recites "a retraction mechanism for biasing the expandable
structure to the retracted state" and claim 5, which depends from claim 2,
further recites "wherein a retraction mechanism includes a spring." Claim
17 recites "means for biasing the expandable structure to a retracted
position."
The Examiner's basis for the rejection, as articulated on page 3 of the
Answer, is that "[i]t is not clear how an elastic material can be construed as a
retraction mechanism when the ribbon is in an expanded form." The
Examiner contends that an elastic material does not meet the definition of
"mechanism" as "… a process, physical or mental, by which something is
done, or comes into being" offered by Appellant (App. Br. 12) because an
elastic material is not considered a process (Ans. 6) and further that an
elastic material does not meet the more appropriate definition of
"mechanism" as "a system of parts that operate or interact like those of a
machine" or "[t]he arrangement of connected parts in a machine" (Ans. 7).
First, we note that neither claim 2 nor claim 5 is limited to an "elastic
material" and the Examiner appears to concede that spring mechanisms and
biased rotating pins, two of the other retraction mechanisms disclosed in
Appellant's Specification, are "mechanisms" (Ans. 7). Claim 17 does not
even recite a "retraction mechanism" but, rather, recites a "means for
biasing" and thus does not appear to suffer from the deficiency alleged by
the Examiner in any event. Moreover, while a single component, such as an
elastic material, may not be a system of parts so as to technically meet the
definition of "mechanism" applied by the Examiner, a person of ordinary
skill in the art would understand what is meant by claims 2, 5 and 17 when
these claims are read in light of the Specification. Specifically, a person of
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ordinary skill in the art would understand a "retracting mechanism" as used
in the claims to be a means or device for retracting the expandable structure.
Moreover, Appellant's use of the term "mechanism" to include an elastic
material is not inconsistent with the ordinary and customary usage of the
term "mechanism," which includes "any system or means for doing
something" (Webster's New World Dictionary 880 (David B. Guralnik ed.,
2nd Coll. Ed., Simon & Schuster, Inc. 1984)).
In light of the above, we conclude that claims 2, 5 and 17 are not
"insolubly ambiguous" and are "amenable to construction." It follows that
they are not invalid for indefiniteness. The rejection cannot be sustained.
The Anticipation Rejection
The issue presented to us is whether Wolfe teaches "a means for
storing objects and a means for enclosing the storing objects means wherein
one of the storing objects means and the enclosing means defines an internal
space in which the expandable structure can be manipulated" as required by
claim 16 (App. Br. 14). This issue turns on whether claim 16, by using
means-plus-function language, requires that the "internal space" defined by
one of the storing objects means and the enclosing means is separate from
the compartment where the objects are stored (App. Br. 14).
In essence, Appellant's position appears to be that, as seen in
Appellant's Figures 2, 8 and 11, each of the spaces (annular chamber 17,
ribbon housing 25 and compartment 1109) in which Appellant's ribbon is
stored is separate from the portion of the container or cap in which the
contents of the container are retained (Reply Br. 7). Accordingly, Wolfe's
hollow cover member 22b, which defines only a single internal compartment
for storing label 20b that is not separate from a compartment for storing
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objects, functions in a substantially different manner to produce a
substantially different result from Appellant's container. Thus, according to
Appellant, Wolfe's cover member 22b is neither the structure described by
Appellant for storing objects nor an equivalent thereof. (Reply Br. 7-9.)
In order to meet a "means plus function" limitation, the prior art must
(1) perform the identical function recited in the means limitation and (2)
perform that function using the structure disclosed in the specification or an
equivalent structure. See Carroll Touch Inc. v. Electro Mechanical Sys. Inc.,
15 F.3d 1573, 1578, 27 USPQ2d 1836, 1840 (Fed. Cir. 1994); Valmont
Indus. Inc. v. Reinke Mfg. Co., 983 F.2d 1039, 1042, 25 USPQ2d 1451, 1454
(Fed. Cir. 1993); Johnston v. IVAC Corp., 885 F.2d 1574, 1580, 12 USPQ2d
1382, 1386 (Fed. Cir. 1989).
Initially, we note that claim 16 does not recite a compartment for
storing objects. Rather, claim 16 recites a means for storing objects and
further recites that either the means for storing objects or the means for
enclosing the means for storing objects defines an internal space in which
the expandable structure can be manipulated. The functional language of
defining an internal space in which the expandable structure can be
manipulated is not part of the means plus function recitation of "means for
storing objects." Moreover, claim 16 does not even define the "objects" as
being different or distinct from the "means for providing an expandable
structure" recited in the claim.
The Examiner and Appellant appear to be in agreement that the
container 124, 900, 1100 or 1200 is the structure described in Appellant's

4 While both the Examiner (Ans. 8) and Appellant (Reply Br. 7) refer to
container 12, the reference numeral 10 refers to the container while
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Specification for performing the function of storing objects (Ans. 8 and
Reply Br. 7). While the embodiments illustrated in Appellant's Figures 2, 8
and 11 may show compartments or annular chambers for confining the
ribbon in either the container or the cap that are separate from the
compartments for storing the objects, such as pills, Appellant does not
specifically define the compartment for storing the objects, such as pills, as
being separate from the compartment for confining the ribbon. For example,
Appellant's Specification describes that, "[i]n embodiments, as illustrated in
Figure 2," the container 10 includes an inner cylindrical wall 16
encompassed by the outer cylindrical wall 12 (Specification ¶ 27), but does
not expressly require such an inner cylindrical wall in all embodiments
within the scope of the invention. Likewise, the Specification indicates that
"[i]n an embodiment," ribbon 30 is housed in annular chamber 17
(Specification ¶ 29), but does not require such an annular chamber in all
embodiments. Similarly, in discussing Figure 11, Appellant's Specification
states that, "[i]n one embodiment," ribbon 1107 is packed into compartment
1109 (Specification ¶ 46), but does not specify that a separate compartment
is a requirement of all embodiments. The cap for the container is the
structure corresponding to the "means for enclosing the means for storing
objects" recited in claim 16.
We determine the scope of the claims in patent applications "not
solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction 'in light of the specification as it would be
interpreted by one of ordinary skill in the art.'" Phillips v. AWH Corp., 415

reference numeral 12 in fact refers to the outer cylindrical wall of the
container.
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F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005) (en banc)
(quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364, 70
USPQ2d 1827, 1830 (Fed. Cir. 2004)). We must be careful not to read a
particular embodiment appearing in the written description into the claim if
the claim language is broader than the embodiment. See Superguide Corp.
v. DirecTV Enterprises, Inc., 358 F.3d 870, 875, 69 USPQ2d 1865, 1868-69
(Fed. Cir. 2004) ("Though understanding the claim language may be aided
by the explanations contained in the written description, it is important not to
import into a claim limitations that are not a part of the claim. For example,
a particular embodiment appearing in the written description may not be
read into a claim when the claim language is broader than the embodiment.")
The challenge is to interpret claims in view of the specification without
unnecessarily importing limitations from the specification into the claims.
See E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369, 67 USPQ2d
1947, 1950 (Fed. Cir. 2003).
In light of the above, we conclude that the structure in Appellant's
Specification corresponding to the means for storing objects is a container.
We further conclude that, while, in some embodiments, such container may
define a compartment for storing objects, such as pills, that is separate from
a compartment, which may be in either the container or the cap for the
container, for confining the ribbon, Appellant's Specification does not limit
the container to a structure which defines a separate compartment for storing
objects that is distinct from a compartment for confining the ribbon.
Wolfe's cover member 22b is a container that defines an internal space
in which an expandable structure (label 20b) having information typed or
written thereon (Wolfe, col. 5, ll. 41-42) is stored and can be manipulated,
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such as by removing the label (Wolfe, col. 4, l. 66) or placing it back within
the cover member 22b (Wolfe, col. 5, ll. 5-7). Wolfe's cap member 24b is,
of course, a means for enclosing the cover member 22b. We therefore
conclude that, contrary to Appellant's argument, Wolfe teaches "a means for
storing objects and a means for enclosing the storing objects means wherein
one of the storing objects means and the enclosing means defines an internal
space in which the expandable structure can be manipulated" as required by
claim 16.
For the reasons explained above, Appellant fails to demonstrate the
Examiner erred in rejecting claim 16 as anticipated by Wolfe. The rejection
is sustained as to claim 16, as well as claims 17 and 18, which Appellant has
not argued separately from claim 16.

The obviousness rejections
Claims 1, 2, 5 and 8:
Claim 1, and claims 2, 5 and 8 depending therefrom, recite a housing
defining a first internal space to store at least one item, an expandable
structure, and an occluding structure removably coupled to the housing,
wherein one of the housing and the occluding structure defines a second
internal space separate from the first internal space. The Examiner concedes
that the device of Figures 10 and 11 of Wolfe, relied upon by the Examiner
in rejecting the claims, does not have structure defining first and second
internal spaces, the second internal space being separate from the first
internal space. To address this deficiency, the Examiner relies upon the
teaching of Yannuzzi of providing a separate compartment within an
emergency medical information container for emergency pills or other
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medicinal agents used in emergency treatments (Yannuzzi, col. 1, ll. 62-64).
According to the Examiner, in view of the combined teachings of Wolfe and
Yannuzzi, one of ordinary skill in the art would provide different internal
compartments within Wolfe to store other articles (Ans. 6).
The issue presented to us is whether it would have been obvious to
one of ordinary skill in the art to provide a separate compartment within
Wolfe's cover member 22b for storing other objects, such as emergency
pills. Appellant argues that one of ordinary skill in the art would not
understand Wolfe to teach a container for storing objects and would not find
motivation to modify Wolfe in the manner relied upon by the Examiner
(App. Br. 15). Appellant also argues that, if such compartments were
incorporated into Wolfe, the spindle5 and label would not fit within the
cover, thereby rendering Wolfe unsatisfactory for its intended purpose (App.
Br. 16).
"Section 103 forbids issuance of a patent when 'the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.'" KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734, 82 USPQ2d 1385, 1391 (2007). The question of obviousness is
resolved on the basis of underlying factual determinations including (1) the
scope and content of the prior art, (2) any differences between the claimed
subject matter and the prior art, (3) the level of ordinary skill in the art, and
(4) where in evidence, so-called secondary considerations. Graham v. John

5 The embodiment of Figures 10 and 11 of Wolfe does not include a
"spindle."
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Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). See also KSR,
127 S.Ct. at 1734, 82 USPQ2d at 1391 ("While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.")
"A person of ordinary skill is also a person of ordinary creativity, not
an automaton." KSR, 127 S.Ct. at 1742, 82 USPQ2d at 1397.
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely
bars its patentability. For the same reason, if a
technique has been used to improve one device,
and a person of ordinary skill in the art would
recognize that it would improve similar devices in
the same way, using the technique is obvious
unless its actual application is beyond his or her
skill.
Id. at 1740, 82 USPQ2d at 1396. We must ask whether the improvement is
more than the predictable use of prior art elements according to their
established functions. Id.
We find ample reason why one of ordinary skill in the art would have
been prompted to make the modification proposed by the Examiner. Both
Wolfe and Yannuzzi are directed to emergency medical alert information
devices worn by persons with medical conditions of concern (Wolfe, col. 1,
ll. 4-6, col. 2, ll. 7-31; Yannuzzi, col. 1, ll. 29-65). Both devices are
provided with a label (label 20b of Wolfe) or sheet (sheet 26 of Yannuzzi)
containing medical information. Wolfe's device comprises a container or
cover member 22b defining a compartment in which the label 20b is stored
and from which the label can be extended for reading but does not
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incorporate a separate compartment for containing emergency pills or other
medicinal agents. Yannuzzi's container 10 is provided with intermediate
partition walls 20, 21 to define a pill containing compartment 22 separate
from the compartment 24 in which medical information sheet 26 is
contained (Yannuzzi, col. 2, ll. 26-38; Fig. 3). The suggestion to provide a
separate compartment within the cover member 22b of Wolfe for containing
other objects, such as emergency pills, is provided by Yannuzzi's teaching of
providing "still another compartment for containing emergency pills or other
medicinal agents used in emergency treatment" (Yannuzzi, col. 1, ll. 62-64).
Specifically, a person of ordinary skill in the art would have been prompted
by the teaching of Yannuzzi to provide structure defining a second
compartment within the cover member 22b of Wolfe, separate from the
compartment in which label 20b is stored, for containing emergency pills or
other medicinal agents that may be indicated by the medical condition to
which the medical information label is directed.
Moreover, the structural modifications necessary to provide such a
second compartment within cover member 22b of Wolfe would not have
been beyond the technical grasp of a person of ordinary skill in the art. To
assume, as Appellant's argument implies, that one of ordinary skill in the art
would not be able to re-design the device of Wolfe so as to accommodate the
additional compartment within cover member 22b inappropriately presumes
lack of skill and ordinary creativity on the part of the person of ordinary skill
in the art.
For the above reasons, we conclude that modification of Wolfe's
device to provide structure defining a second compartment therein for
containing emergency pills or other medicinal agents used in emergency
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treatment would have been a predictable variation and obvious to one of
ordinary skill in the art. Appellant's arguments do not demonstrate error in
the Examiner's rejection. The rejection is sustained as to claims 1, 2, 5 and
8.
Claim 10:
Claim 10 depends from claim 1 and further recites the expandable
structure includes "at least one of paper, fabric, and plastic." Thus, the
additional issue presented with respect to claim 10 is whether it would have
been obvious to make the expandable structure (label 20b) of Wolfe of at
least one of paper, fabric and plastic, on the basis of its suitability for the
intended use, as a matter of obvious design choice, as contended by the
Examiner (Ans. 6).
Appellant argues that neither Wolfe nor Yannuzzi discloses the
material of the label, much less provides that it may be of paper, fabric or
plastic and that, unlike the situation in In re Leshin, 277 F.2d 197, 199, 125
USPQ 416, 418 (CCPA 1960) relied on by the Examiner, Appellant is not
merely selecting from materials disclosed in the applied prior art (App. Br.
17). Appellant additionally argues the selection of a material as fragile as a
piece of paper as the label material seems inconsistent with the Examiner's
proposed modification of Wolfe to provide a second compartment, thereby
increasing the size, and in turn the weight, of the Wolfe device (Reply Br.
12). Neither of these arguments is persuasive.
While there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness, “the analysis
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
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creative steps that a person of ordinary skill in the art would employ.” KSR,
127 S.Ct. at 1741, 82 USPQ2d at 1396. While Wolfe does not specify any
material for label 20b, Wolfe does teach that the label "is easily replaceable,
exchanged or substitutable by another label 20 in order to update any
information" (Wolfe, col. 5, ll. 31-34) and contemplates that information can
be easily typed or written onto the label (Wolfe, col. 5, ll. 41-42). Any
notion that one of ordinary skill in the art would not have immediately
envisaged one of paper, fabric or plastic as a suitable material for a label
onto which information is typed or written is simply untenable and
disingenuous. Further, Wolfe's teaching that the cover member provides a
device in which the label is protected from wear and tear (Wolfe, col. 1, ll.
35-36) dispels any concern about a material such as paper, fabric or plastic
being too fragile for the disclosed application, especially when viewed in
light of Wolfe's contemplation of an easily replaceable label.
Appellant's arguments fail to demonstrate the Examiner erred in
rejecting claim 10 as unpatentable over Wolfe in view of Yannuzzi. The
rejection is sustained.
Claim 9:
Claim 9 depends from claim 1 and further recites the housing includes
an engagement mechanism to secure the occluding structure to the housing.
Appellant challenges the propriety of the Examiner's reliance on official
notice of the conventional application of locking means for locking a base to
the lid (Ans. 6) to address this claimed feature (App. Br. 18). Both the
Examiner's reliance on official notice and Appellant's challenge thereto are
immaterial to the patentability of claim 9 over Wolfe, as Wolfe discloses
connecting the cap members and cover members, albeit of the devices of
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Figures 1-7 and not specifically the device of Figures 10 and 11 relied upon
by the Examiner, together "either by means of friction, engaging screw
threads or by a snap-fit" (Wolfe, col. 5, ll. 11-15). A person of ordinary
skill in the art would have immediately appreciated that, while engaging
screw threads may not be a feasible securement mechanism for the cap
member 24b and cover member 22b of Wolfe's embodiment of Figures 10
and 11, a friction or snap-fit of the cap member 24b to cover member 22b
would improve the device of Figures 10 and 11 in much the same way that
such a securing arrangement improves the device of Figures 1-7. Further,
Appellants have not alleged, much less shown, that such a modification
would yield unpredictable results or present a unique challenge to one of
ordinary skill in the art. We thus conclude Appellant has failed to
demonstrate the Examiner erred in determining the subject matter of claim 9
would have been obvious. The rejection of claim 9 is sustained.

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SUMMARY
The indefiniteness rejection of claims 2, 5 and 17 is reversed and the
rejections under 35 U.S.C. §§ 102 and 103 of claims 1, 2, 5, 8, 9, 10 and 16-
18 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).
AFFIRMED

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