Ex Parte Romeo et al

Board of Patent Appeals and Interferences

Jul 30, 2009

10138851 (B.P.A.I. Jul. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte DEREK J. ROMEO
and EDMUND A. WEAVER
______________

Appeal 2008-004444
Application 10/138,851
Technology Center 1700
_______________

Decided:1 July 30, 2009
_______________

Before EDWARD C. KIMLIN, CHUNG K. PAK, and
CHARLES F. WARREN, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 1 through 4, 6 through 19, and 21 in the

1 The two month time period for filing an appeal or commencing a civil
action specified in 37 C.F.R. § 1.304, begins to run from the Decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-004444
Application 10/138,851
Office Action mailed October 13, 2006. 35 U.S.C. §§ 6 and 134(a) (2002);
37 C.F.R. § 41.31(a) (2006).
We affirm the decision of the Primary Examiner.
Claim 1 illustrates Appellants’ invention of a food product container
for spoonable food, and is representative of the claims on appeal:
1. A hermetically sealed, packaged spoonable product comprising a
container having a removable lid and a quality of product therein, the
container comprising:
a molded body defining an interior for containing the product, the
body having an upper end, a lower end, a bottom wall, and an opening in the
upper end of the body having a size effective to permit insertion of a utensil
into the interior for removing the product, the upper end of the body having
a gradually decreasing cross-section toward the opening to provide a
shoulderless surface to facilitate removal of the product from the upper
interior with a utensil, and a neck in the upper end of the body adjacent the
opening having threads for engagement with the lid to permit repeated
covering and uncovering of the opening with the lid;
an integrally molded handle having one end attached to the upper end
of the body and having another end attached to the lower end of the body;
a lower region of the container beginning at the intersection of the
lower end of the body and the end of the handle attached thereto and
extending to and ending at the bottom wall, the entire lower region being
linearly accessible via the opening when the lid is removed.
The Examiner relies upon the evidence in these references (Ans. 2-3):
Schlesselman Des. 318,228 Jul. 16, 1991
Satterfield Des. 323,981 Feb. 18, 1992
Leigner 5,092,474 Mar. 3, 1992
Weaver 5,261,544 Nov. 16, 1993
Ring 5,346,106 Sep. 13, 1994
Foss 5,392.950 Feb. 28, 1995
Robinson 5,725,309 Mar. 10, 1998
Olson 6,059,153 May 9, 2000
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Application 10/138,851
Appellants request review of the following grounds of rejection
advanced on appeal by the Examiner (App. Br. 4):
claim 21 under 35 U.S.C. § 112, first paragraph, as failing to comply with
the written description requirement (Ans. 3).;
claims 1, 3, 4, 6 through 15, 18, 19, and 21 under 35 U.S.C. § 103(a) as
unpatentable over Olson in view of Robinson, further in view of Weaver and
Leigner, and further in view of Satterfield and Schlesselman (Ans. 4); and
claims 2, 16 and 17 under 35 U.S.C. § 103(a) as unpatentable over Olson in
view of Robinson, further in view of Weaver and Leigner, and further in
view of Satterfield and Schlesselman, as applied to claim 1 and further in
view of Foss and Ring (Ans. 9).
Appellants argue claims 1 3, 4, 6 through 15, and 18 as a group and
separately argue each of claims 19 and 21 in the second ground of rejection;
and argue the claims in the third ground of rejection as a group. Br. 4, 9, 11,
and 12. Thus, we decide this appeal based on claims 1, 2, 19, and 21. 37
C.F.R. § 41.37(c)(1)(vii) (2006).
Issues
The issues in this appeal are whether Appellants have shown that the
Examiner erred in rejecting claim 21 under 35 U.S.C. § 112, first paragraph,
written requirement; and whether Appellants have shown that the evidence
in the combined teachings of Olson, Robinson, Weaver, Leigner, Satterfield,
and Schlesselman alone and as further combined with Foss and Ring does
not support the Examiner’s conclusions of prima facie obviousness with
respect to the claimed food product container encompassed by claims 1, 2,
19, and 21.

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Application 10/138,851
Claim Interpretation
The plain language of representative independent claim 1 is drawn to
any spoonable food product comprising at least a container having a lid and
containing food product. There is no disclosure of a particular food product
specifically associated with the further defined container, and thus, the
container can contain any food product which is cable of being spooned out
of any container. See generally Spec. Claim 1 further specifies the
container comprises at least, in pertinent part as illustrated in Specification
Figure 7, a molded body with opening 56 of any size which at least permits
the insertion of any manner of utensil for removing the product; neck 50
with threads 54 for a lid; handle 60 with upper and lower ends 62 and 64
attached to upper and lower ends 42 and 44 of sidewall 40; and a lower
region beginning at lower end 64 of handle 60 at lower end 44 of sidewall 10
and extending to bottom wall 30. Claim 1 specifies “the entire lower region
being linearly accessible via the opening when the lid is removed.” Spec.,
e.g., 6-10; see also Figs. 1 and 2. Independent claim 10 is drawn specifically
to a food product container with similar language. Independent claim 21
also is drawn using similar language and further requires, as illustrated in
Specification Figure 7, inwardly extending recess 82 in sidewall 40 between
upper and lower ends 62 and 64 of handle 60, defining a handle opening,
wherein a portion of recess 82 extends directly beneath opening 56. Spec.,
e.g., 9:21-29 and Fig. 7. See, e.g., In re ICON Health and Fitness, Inc., 496
F.3d 1374, 1378-79 (Fed. Cir. 2007); In re Am. Acad. of Sci. Tech Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004), and cases cited therein; In re Morris, 127
F.3d 1048, 1054-55 (Fed. Cir. 1997).
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Appeal 2008-004444
Application 10/138,851
Claim 21: § 112, First Paragraph, Written Description Requirement
The Examiner must establish a prima facie case that claim 21 does not
comply with 35 U.S.C. § 112, first paragraph, written description
requirement, by setting forth evidence or reasons why, as a matter of fact,
the written description in the Specification, claims, and drawings as filed as
a whole would not reasonably convey to persons skilled in this art that
Appellants were in possession of the invention defined by the appealed
claims, including all of the limitations thereof, at the time the Application
was filed. See, e.g., In re Alton, 76 F.3d 1168, 1172, 1175-76 (Fed. Cir.
1996) (citing In re Wertheim, 541 F.2d 257, 262-64 (CCPA 1976)). The
written description in the original disclosure as a whole does not have to
describe the invention later claimed in haec verba, but such written
description “must . . . convey with reasonable clarity to those skilled in the
art that . . . [appellant] was in possession of the invention . . . now claimed.”
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991); see
also, e.g., Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1571-72
(Fed. Cir. 1997) (the disclosed invention can be described using “such
descriptive means as words, structures, figures, diagrams, formulas, etc., that
fully set forth the claimed invention”); Wertheim, 541 F.2d at 262 (“The
function of the description requirement is to ensure that the inventor had
possession, as of the filing date of the application relied on, of the specific
subject matter later claimed by him; how the specification accomplishes this
is not material.” (citations omitted)). Compliance with § 112, first
paragraph, written description requirement, is a question of fact and is
determined on a case-by-case basis. Vas-Cath, 935 F.2d at 1563.
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We are of the opinion Appellants have shown the Examiner erred in
rejecting claim 21 under this statutory provision. Br. 8-9. We agree with
Appellants’ finding that Specification Figure 7 illustrates recess 82 as
extending directly beneath opening 56. See above p. 4. Indeed, the
Examiner has not established that Specification Figure 7 does not in fact do
so. Ans. 3 and 11-12. We point out that specification drawings are
considered for the information they convey to one skilled in this art, with
respect to which there is no requirement a figure must be drawn to scale or
literally described in the specification in order to do so, as the Examiner
contends. Ans. 3 and 11-12. Thus, the Specification and the drawings
thereof as filed would have reasonably conveyed to one skilled in this art
that Appellants were in possession of the invention encompassed by claim
21.
Accordingly, in the absence of a prima facie case of failure to comply
with 35 U.S.C. § 112, first paragraph, written description requirement, we
reverse this ground of rejection of appealed claim 21.
Rejections Based on Prior Art
Findings of Fact
We find Olson would have disclosed to one of ordinary skill in this
art, as illustrated by embodiments depicted in Figures 1 and 3, container 10
with molded body having neck 14 which has opening 16 and treads 48 for a
lid; handle 22 that projects from recessed section 46; and a lower region
extending from the lower end of handle 22 at recessed section 46 to bottom
wall 24. Olson, e.g., col. 2, l. 34 to col. 3, l. 2, and col. 4, l. 22. We find one
of ordinary skill in this art would reasonably observe from Figure 1 that a
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portion of recessed section 46 extends directly beneath opening 16. We
agree with Appellants’ finding that the lower region of Olson’s container
illustrated in Figure 1 is not linearly accessible via opening 16, identifying
an inaccessible area we find under base wall 68. Br. 5; Olson col. 4, ll. 9-18
and Fig. 6.
We find Robinson would have disclosed to one of ordinary skill in
this art, as illustrated by embodiments depicted in Figure 1, a container with
flexible molded body having neck 13 which can be trimmed, compressed
together, and sealed along line 20; and handle 16 which extends from a
recessed area of body portion 12. Robinson, e.g., abstract, col. 1, l. 55 to
col. 2, l. 67, and col. 3, ll. 19-25. In an embodiment, resealable construction
22 below seal area 20 permits resealing of the container. Robinson col. 3, ll.
33-41, and Figs. 11-13.
We find each of Weaver and Leigner would have disclosed to one of
ordinary skill in this art, molded containers with wide openings in the neck
and sidewalls to facilitate dispensing of food product, none of which have a
handle. Weaver, e.g., abstract, col. 1, l. 60 to col. 3, l. 66, and Fig. 1;
Leigner, e.g., abstract, col. 1, l. 42 to col. 3, l. 53 and Fig. 1.
We find each of Satterfield and Schlesselman would have disclosed to
one of ordinary skill in this art, containers which have an opening and a
handle. Satterfield, e.g., Figs. 1 and 6; Schlesselman, e.g., Fig. 1. We agree
with Appellants’ finding that the lower region of Satterfield’s and
Schlesselman’s containers is not linearly accessible via the opening. Br. 5.
A discussion of Foss and Ring is not necessary to our decision.
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We find Appellants acknowledge in the Specification that prior art
containers with handles “frequently present obstacles to” removing food
product, including “concave interior regions formed adjacent exterior
indentations associated with gripping portions or handles.” Spec. 2:16-23.
We find Olson, Weaver, and Leigner would have evinced it was
known in the art that a consideration in packaging food products is, as
described by Olson, “the degree of difficulty that will be encountered by the
consumer in dispensing food product from the container.” Olson col. 1,
ll. 13-15; Weaver col. 1, ll. 14-16; Leigner col. 1, ll. 10-13. Olson further
evinces it was known to “be desirable to have the ability to either pour the
food product from the container or to spoon, or otherwise manually remove
the food product from the container” with a large, annular neck defining an
opening for a large spoon. Olson col. 1, ll. 29-34.
Discussion
We considered the totality of the record in light of Appellants’
arguments with respect to claim 48 and the ground of rejection advanced on
Appeal. See, e.g., In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (“‘On
appeal to the Board, an applicant can overcome a rejection by showing
insufficient evidence of prima facie obviousness or by rebutting the prima
facie case with evidence of secondary indicia of nonobviousness.”) (quoting
In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998); In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992) (“After evidence or argument is submitted by
the applicant in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration to
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Application 10/138,851
persuasiveness of argument.”) (citing, inter alia, In re Spada, 911 F.2d 705,
707 n.3 (Fed. Cir. 1990)).
We are of the opinion Appellants have not established that the
evidence in the combined teachings of Olson, Robinson, Weaver, Leigner,
Satterfield, and Schlesselman alone and as further combined with Foss and
Ring, does not support the Examiner’s conclusions of prima facie
obviousness with respect to the claimed food product container encompassed
by claims 1, 2, 19, and 21.
We disagree with Appellants’ position that Robinson is not
combinable with Olson and the other references because the neck of
Robinson’s container does not have threads for a lid and is sealed by either
compressing sidewalls together or with a resealable construction. Br.
10-11; see above p. 7. We find no disclosure in Robinson which teaches
away from sealing a container with a threaded neck and a lid as Appellants
argue. Indeed, Robinson discloses the sealing arrangements therein without
referring to thread and lid arrangements. See above p. 7. See, e.g., In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (a prior art disclosure does not
teach away if the “disclosure does not criticize, discredit, or otherwise
discourage the solution claimed.”).
Furthermore, Robinson’s container has a handle as does Olson’s and
the designs of the containers with respect to the handle would be of interest
to one of ordinary skill in this art without regard to the closure arrangements,
who would thus have combined these references. See, e.g., In re Keller, 642
F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
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structure of the primary reference . . . .Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.”).
Appellants submit the “claimed linearly accessible regions are not
present in Olson, Satterfield, Schlesselman, Weaver, or Leigner,” pointing
out that “regions between the intersection of the handle and the container
body of these references are linearly inaccessible via the opening thereof,
and thus present an obstacle to removal of certain food products.” Br. 10.
In this respect, Appellants point to their acknowledgment in the
Specification that prior art container with handles can present obstacles to
removal of certain food products. Br. 5; see above p. 8. In these respects,
Appellants describe the areas of the containers of Olson, Satterfield, and
Schlesselman which are not “linearly accessible” as claimed, and further
point out that the containers of Weaver and Leigner do not have handles.
Br. 5 and 6; see above pp. 6-7.
Appellants’ position does not account for the teachings of container
design in Robinson. We determine that one of ordinary skill in this art
would have found from Robinson’s Figures that the lower region extending
from where lower end of the handle joined the sidewall to the bottom wall of
the container did not prevent linear accessibility via the opening of the
container. See above p. 7. Appellants do not contend otherwise. Br. 7.
Consequently, Appellants have not addressed the Examiner’s position
that one of ordinary skill in this art, recognizing the marketing and design
pressures to ease the consumer’s removal of product from a container with a
utensil, as acknowledged by Olson, Weaver, and Leigner, would have been
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Application 10/138,851
led by the combined teachings of Olson, Robinson, Weaver, Leigner,
Satterfield, and Schlesselman to arrive at a container design in which
product in the lower region is linearly accessible as claimed even with
respect to the region under the handle in view of Robinson’s design. Ans.,
e.g., 4-6, 10-11, and 12-13; see above p. 8. Indeed, Appellants also
acknowledge the consumer’s desire to extract all of the purchased product
from a container. See above p. 8.
We further disagree with Appellants’ contention that the cited
references do not teach “a ratio between the height of the lower region and
the container height is between 1:10 and 1:4” specified in claim 19. Br.
11-12. As the Examiner points out, one of ordinary skill in this art would
have observed from the container illustrated in the Figures of Olson and
Robinson that the ratio between the height of the container and the height of
the “lower region” as claimed (see above p. 4), is at least 1:10, thus falling
within the claimed range. Ans. 13-14; see above pp. 6-7.
We also disagree with Appellants’ contention that the cited references
do not teach “an inwardly extending recess . . . a portion . . . being directly
beneath the opening of the container” as specified in claim 21. Br. 12-13.
As the Examiner points out, one of ordinary skill in this art would have
observed this structure in the Figures of Olson. Ans. 14; see above pp. 6-7.
Accordingly, on this record, Appellants have not shown insufficient
evidence of prima facie obviousness, and thus we affirm the ground of
rejection based the combined teachings of Olson, Robinson, Weaver,
Leigner, Satterfield, and Schlesselman. See, e.g., KSR Int'l Co. v. Teleflex
Inc., 550 U.S. 398, 421 (2007) (“When there is a design need or market
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pressure to solve a problem and there are a finite number of identified,
predictable solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this leads to the
anticipated success, it is likely the product not of innovation but of ordinary
skill and common sense.”); Kahn, 441 F.3d at 985-88; In re Sovish, 769 F.2d
738, 742-43 (Fed. Cir. 1985) (skill is presumed on the part of one of
ordinary skill in the art); Keller, 642 F.2d at 425.
Appellants rely on the same contentions with respect to the ground of
rejection applied to claim 2. Br. 11. Accordingly, we affirm this ground of
rejection based the combined teachings of Olson, Robinson, Weaver,
Leigner, Satterfield, Schlesselman, Foss and Ring.
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Olson, Robinson, Weaver, Leigner, Satterfield, and
Schlesselman alone and as further combined with Foss and Ring with
Appellants’ countervailing evidence of and argument for nonobviousness
and conclude, by a preponderance of the evidence and weight of argument,
that the claimed invention encompassed by appealed claims 1 through 4,
6 through 19, and 21 would have been obvious as a matter of law under
35 U.S.C. § 103(a).
The Primary Examiner’s decision is affirmed.

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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)(v).
AFFIRMED

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