Ex parte ROSENHAIN

Board of Patent Appeals and Interferences

May 19, 1999

08329086 (B.P.A.I. May. 19, 1999)

Application for patent filed October 25, 1994. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was
not written for publication in a law journal and (2) is not binding
precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte NORMA F. ROSENHAIN
____________
Appeal No. 97-0672
Application No. 08/329,0861
____________
ON BRIEF
____________
Before CALVERT, Administrative Patent Judge, McCANDLISH, Senior
Administrative Patent Judge and ABRAMS, Administrative Patent
Judge.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 1 through 11, which constitute all of
the claims of record in the application.
Appeal No. 97-0672 Page 2
Application No. 08/329,086
The appellant's invention is directed to a two piece
utensil holding container. The subject matter before us on
appeal is illustrated by reference to claim 1, which reads as
follows:
1. A two-piece utensil holding container comprising:
a rigid inner member having a body portion with an
interior and exterior surface, an open top and a closed bottom;
a supple, sleeve member mounted about the exterior surface
of the body portion of the inner member, said sleeve member
having an inner and outer surface, said outer surface of said
sleeve member having a three-dimensional decorative image
molded thereon, said decorative image including a portion
defining at least one gripping member, which is configured to
engage and removably hold a utensil.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Zent et al. (Zent) 2,484,776 Oct. 11,
1949
Engvall 5,178,354 Jan. 12,
1993
United Kingdom Design Patent 2,023,013 Feb.
22, 1993
(Chan)
THE REJECTION
Appeal No. 97-0672 Page 3
Application No. 08/329,086
Claims 1-11 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Chan in view of Engvall and Zent.
The rejection is explained in the Examiner's Answer.
The opposing viewpoints of the appellant are set forth in
the Brief.
OPINION
The test for obviousness is what the combined teachings of
the prior art would have suggested to one of ordinary skill in
the art. See In re Keller, 642 F.2d 413, 425, 208 USPQ 871,
881 (CCPA 1981). In establishing a prima facie case of
obviousness under 35 U.S.C. § 103, it is incumbent upon the
examiner to provide a reason why one of ordinary skill in the
art would have been led to modify a prior art reference or to
combine reference teachings to arrive at the claimed invention.
See Ex parte Clapp, 227 USPQ 972, 973 (BPAI 1985). To this
end, the requisite motivation must stem from some teaching,
suggestion or inference in the prior art as a whole or from the
Appeal No. 97-0672 Page 4
Application No. 08/329,086
knowledge generally available to one of ordinary skill in the
art and not from the appellant's disclosure. See, for example,
Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1052, 5
USPQ2d 1434, 1052 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988).
The appellant’s invention is directed to a cup that is
configured to retain a utensil, such as a toothbrush, upon its
decorative exterior surface. As defined in independent claim
1, it comprises a two-piece container having a rigid inner
member and a supple sleeve mounted about the exterior surface
of the inner member. A three-dimensional decorative image is
molded on the outer surface of the sleeve, and this decorative
image includes “a portion defining at least one gripping
member, which is configured to engage and removably hold a
utensil.”
It is the examiner’s position that Chan shows the claimed
structure except for the gripping member, but that it would
have been obvious to one of ordinary skill in the art to add
such a feature in view of the teachings of Engvall and Zent.
Appeal No. 97-0672 Page 5
Application No. 08/329,086
Chan discloses a design which is described as “a mug with
a detachable outer coating.” There is no clue as to whether
the outer coating is “a supple, sleeve member” as is required
by the claim. Although the drawings are barely discernible, it
is clear that Chan has no structure which could function as a
“gripping member . . . configured to engage and removably hold
a utensil.” Engvall discloses an aerosol dispenser that has a
gripping member attached to its side to removably hold a tube
through which the aerosol material can be dispensed. Zent
discloses a decorative cover for a bottle which comprises a
three-dimensional decorative figure. The decorative figure has
bendable arms, to one of which is attached a candy cane. There
is no explicit teaching that the arms be used to removably hold
a receptacle, nor is it apparent that they are capable of doing
so.
It is axiomatic that the mere fact that the prior art
structure could be modified does not make such a modification
obvious unless the prior art suggests the desirability of doing
so. See In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127
(Fed. Cir. 1984). We fail to perceive any teaching, suggestion
or incentive in either of the secondary references which would
Appeal No. 97-0672 Page 6
Application No. 08/329,086
have suggested to one of ordinary skill in the art the
desirability of modifying the Chan device so that it can
removably hold a utensil, much less doing so by means of a
gripping member defined in the decorative image. While it
could be concluded that Engvall would have suggested to one of
ordinary skill in the art that a utensil holder be installed on
the outside surface of the Chan device, it would not have
motivated the artisan to define the holder by a portion of the
decorative image, as is required by the claims. As for Zent,
we are at a loss to appreciate what this reference adds to the
rejection.
It therefore is our conclusion that the combined teachings
of the three applied references fail to establish a prima facie
case of obviousness with regard to the subject matter of claim
1. This
being the case, we will not sustain the rejection of claim 1
or, it follows, of dependent claims 2-11.
Appeal No. 97-0672 Page 7
Application No. 08/329,086
The decision of the examiner is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
HARRISON E. McCANDLISH ) APPEALS
Senior Administrative Patent Judge
) AND
) INTERFERENCES
)
)
)
NEAL E. ABRAMS )
Administrative Patent Judge )
NEA/jlb
Appeal No. 97-0672 Page 8
Application No. 08/329,086
RONALD W. CITKOWSKI
GIFFORD KRASS GROH SPRINKLE PATMORE
ANDERSON & CITKOWSKI
280 NORTH WOODWARD AVE SUITE 400
BIRMINGHAM, MI 48009-5394
JoAnne
Appeal No. 97-0672
Application No. 08/329,086
APJ ABRAMS
APJ CALVERT
APJ McCANDLISH
REVERSED
Prepared: July 18, 2000