Ex Parte Romeo et alDownload PDFPatent Trial and Appeal BoardDec 30, 201410138851 (P.T.A.B. Dec. 30, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/138,851 05/03/2002 Derek J. Romeo 1410-67530-US 3812 48940 7590 12/30/2014 FITCH EVEN TABIN & FLANNERY, LLP 120 SOUTH LASALLE STREET SUITE 1600 CHICAGO, IL 60603-3406 EXAMINER SMITH, CHAIM A ART UNIT PAPER NUMBER 1792 MAIL DATE DELIVERY MODE 12/30/2014 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 PATENT TRIAL AND APPEAL BOARD _______________ Ex parte DEREK J. ROMEO and EDMUND A. WEAVER ______________ Appeal 2012-011614 Application 10/138,851 Technology Center 1700 _______________ Before CHUNG K. PAK, CHARLES F. WARREN, and MARK NAGUMO, Administrative Patent Judges. WARREN, Administrative Patent Judge. DECISION ON APPEAL Applicants appeal to the Board under 35 U.S.C. § 134(a) from the decision of the Primary Examiner finally rejecting claims 1–4, 7–11, 13–19, and 21–23 under 35 U.S.C. § 103(a) over Olson (US 6,059,153), Robinson (US 5,725,309), Weaver (US 5,261,544), Leigner (US 5,092,474), Hagerty (US 4,881,648), Appellants’ prior art admissions (APPA), Satterfield (US Des. 323,981), Schlesselman (US Des. 318,228), Foss (US 5,392,950), Ring (US 5,346,106), and Manderfield (US D451,398 S). App. Br. 19;1 FOA 2.2 We have jurisdiction. 35 U.S.C. § 6(b). We affirm the decision of the Primary Examiner. Claim 1, as illustrated by Specification Figure 7, illustrates Appellants’ invention of a food product container for a spoonable food 1 Appeal Brief filed April 12, 2012. 2 Final Office Action mailed October 13, 2011. Appeal 2012-011614 Application 10/138,851 2 product, 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 (10) comprising: a self supporting molded body (20) defining an interior for containing the product, the body (20) having an upper end (42), a lower end (44), a bottom wall (30), and an opening (56) in the upper end (42) of the body (20) having a size effective to permit insertion of a utensil into the interior for removing the product, the upper end of the body (42) having a gradually decreasing cross-section (84) toward the opening (56) to provide an interior shoulderless surface free from substantial ridges or obstructions to facilitate removal of the product from the upper interior with a utensil, and a neck (50) in the upper end (42) of the body (20) adjacent the opening (56) having threads (54) for engagement with the lid to permit repeated covering and uncovering of the opening (56) with the lid, the self supporting molded body (20) having a side wall (40) allowing a spoon to scrape the entirety of the interior of the container and without substantial protuberances to impeding the scraping; an integrally molded handle (60) having one end (62) attached to the upper end (42) of the body (20) and having another end (64) attached to the lower end (44) of the body (20) , the handle (60) having a connection (68) to the molded body (20) which prevents product from entering into the handle (60); and a lower region (86) of the container beginning at the intersection of the lower end (44) of the body (20) and the end of the handle (64) attached thereto and extending to and ending at the bottom wall (30), the entire interior of the container (10) being linearly accessible via the opening (56) to permit the spoon to scrape the entire interior of the container (10) when the lid is removed and wherein an imaginary line (89) tangent to the body (20) immediately below the handle (88) and in the lower region (44) of the container(10) extends through the opening (56), the lower region (44) having the same configuration irrespective of the amount of product remaining in the container after opening. App. Br. 37 (VIII(a). Claims App’x A)3 (numerals added). Spec. 6–11. 3 See Ans. 3 (“The claims listed in Claims Appendix A are the claims on appeal.”). Appeal 2012-011614 Application 10/138,851 3 Appellants principally argue the ground of rejection on claim 1. Thus, we decide this appeal based on claim 1 and on other claims to the extent separately argued in the Appeal Brief. 37 C.F.R. § 41.37(c)(1)(vii). App. Br. 26, 29, 35, 36. OPINION We previously considered the patentability of claims drawn to a hermetically sealed, packaged spoonable product comprising a container in our Decision in Appeal 2008-00444 entered in this Application on July 30, 2009. The record now contains claims in which the container limitations are different as well as the Declaration Under 37 C.F.R. § 1.132 of Appellant Edwards, who is listed as a coinventor of reference Olson.4 The Examiner has considered the patentability of the now claimed hermetically sealed, packaged spoonable product comprising a container based on the totality of the record including the new container limitations and the Edwards Declaration, and we do likewise. See In re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976) (“The Board erred in adopting the earlier opinion. The basis for evaluation and for decision had changed. The present board had before it not only the application and the prior art but all of the unrebutted facts established in Rinehart’s affidavit. At that stage no question of prima facie obviousness remains. The appealed claims must be reconsidered in the light of all of the evidence, and the resultant finding, that the claimed invention would or would not have been obvious, is to be made in such light.”). We are of the opinion Appellants’ arguments do not establish that the evidence in the totality of the record weighs in favor of the nonobviousness of the hermetically sealed, packaged spoonable product comprising a 4 Edwards Declaration executed June 15, 2011 and filed on July 26, 2011 (Edwards Decl.). Appeal 2012-011614 Application 10/138,851 4 container encompassed by claim 1. In this respect, we are in agreement with the Examiner’s analysis of the evidence in Olson, Robinson, Weaver, Leigner, Hagerty, APPA,5 Satterfield, Schlesselman, Foss, Ring, Manderfield, and the Edwards Declaration, findings of fact and conclusions of law, and response to Appellant’s arguments stated in the FOA and Answer, to which we add the following for emphasis with respect to Appellants’ arguments. FOA 2–9, 12–15; Ans. 3–6; App. Br. 19–36; Reply 1–6. The dispositive issue in this appeal raised by the Examiner and Appellants is whether Appellants have established that the Examiner erred in determining that the combination of Olson, Robinson, Weaver, Leigner, Hagerty, APPA, Satterfield, and Schlesselman would have led one of ordinary skill in the art to modify Olson’s self-supporting container, which can be used for spoonable food products, by adjusting the container wall between first and second ends of the handle and the size of the opening in the upper end of the body of the container as suggested by Robinson, Weaver, Leigner, Hagerty, APPA, Satterfield, and Schlesselman, such that “the entire interior of the container being linearly accessible via the opening to permit the spoon to scrape the entire interior of the container when the lid is removed and wherein an imaginary line tangent to the body immediately below the handle and in the lower region of the container extends through the opening, the lower region having the same configuration irrespective of the amount of product remaining in the container after opening” as specified in claim 1. Olson col.1 ll.42–56, col. 2 l. 34–col.3 l. 2, col. 4 ll.22–41, Figs. 1, 3. FOA 2–9; Ans. 3–6; App. Br. 19–34; Reply 1–6. 5 Spec. 2:11–30; see FOA 5. Appeal 2012-011614 Application 10/138,851 5 We find Olson would have disclosed to one of ordinary skill in the art a large container which has an “enlarged annular opening to allow food products to be dispensed . . . by pouring . . . or to be manually removed using a spoon or other utensil,” including “a large spoon or other utensil,” that is, “without pouring.” Olson col.1 ll.29–34, col.1 ll.42–56, col.2 ll.60–66, col.5 ll.59–63. Olson discloses that the annular neck defines the annular opening, and “[a]t least one side wall slopes at a first angle to intersect the annular neck,” “[a] portion of the side wall extends up to the neck at a second angle different from the first angle to form a spout to facilitate pouring,” and “[t]he annular neck is offset in the direction of the spout . . . to facilitate pouring” while “allow[ing] food product to be manually removed from the container without pouring.” Olson col.1 ll.56–67, col.5 ll.59–63. Olson discloses that “[t]he spout preferably comprises two spout walls which form essentially a V-shaped spout that extends up to the neck,” and “[a] shelf spans between the top edge of each of the spout walls and the neck,” with “[t]he combination of the offset neck and the spout contribut[ing] to easier, more accurate pouring.” Olson col.2 ll.1–10. We find Olsen would have disclosed a preferred embodiment, illustrated in Figures 1–7, in which container 10 has body 12 that has annular neck 14, opening 16, two side shoulders 18, handle 22, bottom wall 24, side walls 28, lower portion 42, and upper portion 44. Offset “annular neck 14 has mouth opening 16 . . . to allow a large spoon or other utensil or possibly a person’s hand holding a utensil to pass into the interior of the contain 10 to manually remove food product through opening 16 without pouring.” Olson col.2 l.35–col.3 l.11. “To facilitate dispensing of product and improve . . . pouring, a spout 20 is integrally molded on the front side Appeal 2012-011614 Application 10/138,851 6 walls 28 between the two side shoulders 18 at the upper portion 44 of the container 10,” which provides a “funneling effect.” Olson col.3 ll.12–39, Figs. 1, 2. Olson discloses that narrow shelf 62 extends from ring 50 of neck 14 to each of spout walls 52, the width of which should be minimized to minimize impedance by shelves 62 of the flow of food product while maintaining the V-shape of spout 20, the point of which corresponds to edge 54. Olson col.3 l.40–col.4 l.8, Figs. 1–5. We find Olsen would have further disclosed with respect to the illustrated preferred embodiment that container 10 has recessed section 46 at back side 32 formed by upstanding back wall 66 and sloping base wall 68, wherein back wall 66 can be substantially planar or outwardly convex as desired and base wall 68 slopes away from back wall 66 to facilitate flow of food product along base wall 68 toward opening 16 when pouring. Olson col.4 ll.9–21, Figs. 1–3. Olson discloses that handle 22 projects from recessed section 46, and has lower part 72 at base wall 68, upper part 74 at back wall 66, and a hollow interior. Olson col.4 ll.22–32, Figs. 1, 3. Olson discloses that the slope of side shoulders 18 prevents food product “hang up” in the side shoulders when pouring. Olson col.5 ll.14–22, Figs. 1–5. We find one of ordinary skill in the art would have inferred from Olson’s illustrated preferred container embodiment that an imaginary line tangent to body 12 where back wall 66 joins base wall 68 and extending from lower region 42 under base wall 68 and below handle 22 through opening 16, shows that a small portion of lower region 42 is above the imaginary line such that the entire interior of container 10 is not linearly accessible via opening 16. We find Olson would have disclosed that “the invention provides a container for pourable food product having an enlarged, offset neck and a Appeal 2012-011614 Application 10/138,851 7 novel spout,” and “[t]he enlarged neck allows food product to be manually removed from the container without pouring.” Olson col.5 ll.59–63. “Although a preferred embodiment has been described above and illustrated in the accompanying drawings, there is no intent to limit the scope of the invention to this or any other particular embodiment.” Olson col.5 ll.63–67. We find Olson permits “[n]umerous alternatives, modifications and variations,” including, “[f]or example,” a “generally cylindrical side wall,” “various handle configurations other than that shown,” and “made of various food grade plastic materials.” Olson col.5 l.67–col.6 l.8. Considering now Appellant Edwards’ Declaration, we find, as does the Examiner, that Appellant Edwards does not attest to different facts than one of ordinary skill in the art would have found in Olson. Edwards Decl. ¶¶ 3–5. FOA 12; Ans. 3–4; App. Br. 20–21; Reply Br. 1–2. Indeed, we found above that, as Appellant Edwards attests, Olson’s objective is a spout in the opening in the neck which facilitates dispensing food by pouring and the insertion of a large spoon, and that Olson’s preferred embodiment is illustrated in the Figures. Edwards Decl. ¶¶ 3, 5. We find Appellant Edwards’ attestations that the preferred embodiment as illustrated shows “[s]harp shoulders formed by spout 20 and spout walls 52 . . . on each side of the opening . . . block complete access to the interior of the container, such as by a linear utensil like a spoon,” does not account for Olson’s disclosure that configurations of the preferred embodiment, such as shelves 62 and the slope of side shoulders 18, are minimized to minimize impeding the flow of poured food product. Edwards Decl. ¶¶ 3, 5. See above p. 6. We further find that Appellant Edwards’ attestations do not account for Olson’s disclosure that the spout shape can be formed in one side wall, and that the preferred embodiment using two spout walls and illustrated in the Appeal 2012-011614 Application 10/138,851 8 Figures is non-limiting, and that the spout concept can be embodied in containers that can include generally cylindrical sidewalls and different handle configurations. Decl. ¶¶ 3–5. See above pages 5–7. We find Robinson would have disclosed to one of ordinary skill in the art in Figure 1 a blow molded plastic container package with an integral solid handle and a flexible upper end through which food product can be inserted, and the upper end can be sealed and reopened. Robinson col.1 ll.9–22, col.1 ll.55–60. Robinson discloses that the container includes a base having sufficient rigidity to maintain its molded shape; a body having an integral solid handle which extends along the side wall from the shoulder portion; and a neck formed during blow molding which can be cut off to form an opening, wherein the container wall is flexible with insufficient rigidity to support the contents unless the container is filed with product and the neck is sealed. Robinson col.1 l.61–col.2 l.14. Robinson discloses a plastic bottle embodiment, illustrated in Figures 1 and 11–13, in which container 10 has base 11; body 12; transversely offset neck 13; “opening 14 through which contents of the bottle may be dispersed;” compression molded handle 16 “integrally formed with and extends from the upper body portion 12d (i.e., the shoulder) in an area adjacent the neck 13,” and readily gripped; and end walls 12a, 12c and side walls 12b. Robinson col.2 ll.46– 67, col.3 ll.33–37. We, like the Examiner, find one of ordinary skill in the art would have inferred from Robinson’s illustrated plastic bottle embodiment that an imaginary line tangent to body 12 immediately below handle 16 and in the lower region of end wall 12a of container 10 extends through opening 14, shows that the entire interior of container 12 is linearly accessible via Appeal 2012-011614 Application 10/138,851 9 opening 14 such that a spoon of suitable shape can scrape the entire interior of container 12. The Examiner finds Robinson discloses it was conventional in packaging structure/design to provide a handled container wherein the body of the container adjacent the handle has a smooth concave curvature extending down into a smooth convex curvature to the bottom wall (fig. 1 and 8). The design of Robinson inherently allows the entire lower region to be linearly accessible via the opening. FOA 3 (emphasis deleted). We find each of Weaver, Leigner, and Hagerty would have disclosed to one of ordinary skill in this art, a molded container that has an enlarged annular opening in the neck and suitable sidewalls which facilitate dispensing of product, but does not have a handle. Weaver, col.3, ll.42–66, col.5 ll.17–25, Fig. 1; Leigner col.2 ll.6–16, col.3 ll.1–53, Fig. 1; Hagerty abstract, col.2 l.54–col.3 l.14, 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 Figs. 1, 6; Schlesselman Fig. 1. We find one of ordinary skill in the art would have inferred from the Figures of each of Satterfield and Schlesselman that an imaginary line tangent to body immediately below the handle and in the lower region of the container and extending through the opening, shows that a very small portion of the lower region of each container is above the imaginary line such that the entire interior of each container is not linearly accessible via the opening. We find Appellants acknowledge in the Specification (APPA) that the configuration of many prior art containers present obstacles to dispensing product including “openings are not sufficiently wide, and/or . . . include shoulder regions from which product may be difficult to remove;” and, the Appeal 2012-011614 Application 10/138,851 10 handles or other gripping portions of some containers have associated concave interior regions that are formed adjacent exterior indentations as well as interior ridges and grooves which make it difficult to remove product. Spec. 2:11–30. Indeed, Appellants acknowledge the consumer’s desire to extract all of the purchased product from a container. In this respect, we find Olson, Weaver, and Leigner would have disclosed that 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. We found above that Olson further would have disclosed that 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” through a large, annular neck, which, with respect to manual removal, can define an opening for a large spoon. Olson col.1 ll.29–34, col.1 ll.42–56, col.2 ll.60–66. See above pages 4–5. A discussion of Foss, Ring, and Manderfield is not necessary to our decision. On this record, we are of the opinion that Appellants have not carried the burden of establishing that the Examiner erred in determining that one of ordinary skill in the art would have modified Olson’s self-supporting container for spoonable food products by adjusting the container wall between first and second ends of the handle and the size of the opening in the upper end of the body of the container as suggested by Robinson, Weaver, Leigner, Hagerty, APPA, Satterfield, and Schlesselman, resulting in “the entire interior of the container being linearly accessible via the opening Appeal 2012-011614 Application 10/138,851 11 to permit the spoon to scrape the entire interior of the container when the lid is removed and wherein an imaginary line tangent to the body immediately below the handle and in the lower region of the container extends through the opening, the lower region having the same configuration irrespective of the amount of product remaining in the container after opening” as specified in claim 1. We are not persuaded by Appellants’ contentions that, as shown by Appellant Edwards’ attestations, Olson would have taught away from a “shoulderless surface or sidewall without substantial protuberances” because of the disclosure of “sharp shoulders for facilitating pouring, at the expense of spoon access.” App. Br. 21–22 (citing Edwards Decl. ¶¶ 3–5); Reply Br. 1–2 (citing Edwards Decl. ¶ 3). We found above that not only does Olson disclose minimizing features in the interior of the preferred two-wall spout embodiment container which impede the flow of poured food product that is spoonable from the container, but alternatively discloses that the container can have a one wall spout, different handle configurations, and generally cylindrical sidewall configurations which can include shoulderless configurations. Thus, as the Examiner points out, Olson does not teach away from the claimed container because Olson does not criticize, discredit, or otherwise discourage disclosed alternative containers having the claimed configuration. See above page 7. FOA 12; Ans. 3-4. See, e.g., In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (explaining that “[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed”); see also. e.g., In re Lamberti, 545 F.2d 747, 750 (CCPA 1976) (“[T]he fact that a specific [embodiment] is taught to be preferred is not controlling, since all Appeal 2012-011614 Application 10/138,851 12 disclosures of the prior art, including unpreferred embodiments, must be considered.”). We are also unconvinced by Appellants’ contentions that Robinson would not have disclosed to one of ordinary skill in the art a shoulderless container the entire interior region of which is linearly accessible via the opening because Robinson’s container is not self-supporting, and thus, one of ordinary skill in the art would not have combined Olson and Robinson, along with Weaver, Leigner, Hagerty, APPA, Satterfield, and Schlesselman, to arrive at a self-supporting container encompassed by claim 1. App. Br. 22–23, 26–31; Reply Br. 1–5. We found above that, as the Examiner points out in the statement of the ground of rejection, the entire interior of Robinson’s container as illustrated in Robinson’s figure 1 is linearly accessible such that a spoon of suitable shape can scrape the entire interior of the container. See above pages 8–9. We are of the opinion that one of ordinary skill in the art, armed with the knowledge in the art evidenced by Olson, Robinson, Weaver, Leigner, Hagerty, APPA, Satterfield, and Schlesselman, including the consumer’s desire to dispense all of the purchased product, would have recognized that Robinson’s container configuration illustrated in Figure 1, which has a rigid base and a solid handle that does not hold spoonable product, can be implemented as a blow molded self-supporting container, and can be combined with containers disclosed by Olson which have an enlarged annular opening having a spout configuration of a size which permits removal of all of the purchased product. We are not convinced otherwise by Appellants’ contentions that one of ordinary skill in the art would have recognized that Robinson’s flexible, non-rigid container would collapse as product is removed. Indeed, we determine one of ordinary skill in the art would have recognized that the Appeal 2012-011614 Application 10/138,851 13 configuration of Robinson’s container does not include shoulders, ridges and protuberances, and hollow handle which would impede dispensing the product as the container collapses, and that the container can be formed such that it is self-supporting. Accordingly, we are of the opinion that one of ordinary skill in the art routinely following the combined teachings of Olson, Robinson, Weaver, Leigner, Hagerty, APPA, Satterfield, Schlesselman, Foss, Ring, and Manderfield would have reasonably arrived at a hermetically sealed, packaged spoonable product comprising a container falling within claim 1 without recourse to Appellants’ Specification. See, e.g., KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 402 (2007) (“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill in the art 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.”); Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (“hold[ing] that while an analysis of obviousness always depends on evidence that supports the required Graham factual findings, it also may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.”); In re Kahn, 441 F.3d 977, 985-88 (Fed. Cir. 2006); In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (skill is presumed on the part of one of ordinary skill in the art); In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is . . . what the combined teachings of the references would have suggested to those of ordinary skill in the art.”); see also, e.g., In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988) (“For obviousness under Appeal 2012-011614 Application 10/138,851 14 § 103, all that is required is a reasonable expectation of success.” (citations omitted)). Appellants rely on the same arguments, including the argument that the claimed “container is uncollapsible with side walls which will not deform during scraping,” with respect to independent claims 10, 21, and 23 and claims dependent thereon. App. Br. 34–36. Accordingly, we affirm the ground of rejection of claims 1–4, 7–11, 13–19, and 21–23 under 35 U.S.C. § 103(a) over Olson, Robinson, Weaver, Leigner, Hagerty, APPA, Satterfield, Schlesselman, Foss, Ring, and Manderfield. The Primary Examiner’s decision is 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)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation