Ex Parte Sassouni

Patent Trial and Appeal Board

Feb 21, 2013

11636671 (P.T.A.B. Feb. 21, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/636,671 12/11/2006 K. Jacques Sassouni 28,562-A 8606
7590 02/21/2013
Charles E. Temko, Esq.
22 Marion Road
Westport, CT 06880
EXAMINER
SHEARER, DANIEL R
ART UNIT PAPER NUMBER
3754
MAIL DATE DELIVERY MODE
02/21/2013 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 K. JACQUES SASSOUNI
____________

Appeal 2010-011680
Application 11/636,671
Technology Center 3700
____________

Before STEFAN STAICOVICI, HYUN J. JUNG and
WILLIAM A. CAPP, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-011680
Application 11/636,671
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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 10-15. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
Appellant’s invention relates to collapsible tubes for cream, lotion,
gel, toothpaste, etc. Spec. 1. Claim 10, reproduced below, is illustrative of
the subject matter on appeal.
Claim 10. In a dispensing tube construction including a
flexible tube element (11) (P.4, L.13) of generally cylindrical
configuration having a dispensing end, a shoulder element (12)
(P.4, L.8) having an end wall having a dispensing opening
therein, a lid element (13) (P. 5, L.11) having a cylindrical side
wall selectively engaging said shoulder element, and a flexible
tab (13) (P.5, L.12) including a hinge member interconnecting
said tube element and said lid element, the improvement
comprising: said cylindrical side wall of said lid element
forming an axially-disposed recess on an inner surface thereof
including a locking recess at a closed end thereof; said shoulder
element including said tab incorporating said hinge means
integrally molded to a peripheral edge thereof engageable
within said recess in said lid element to be retained thereby,
whereby said lid element may be formed from synthetic
resinous material more rigid than the material employed for
forming said tube and shoulder element.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:

Magerle
Shimizu
US 3,313,875
US 6,502,722 B1
Apr. 11, 1967
Jan. 7, 2003
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The following rejections are before us for review:
1. Claim 10 is rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
2. Claims 10 and 15 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failure to particularly point out and
distinctly claim the subject which applicant regards as his invention.
3. Claim 11 is rejected under 35 U.S.C. § 102(b) as being anticipated
by Shimizu. 1
4. Claims 10, 12 and 14 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Shimizu.
5. Claims 13 and 15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shimizu and Magerle.

OPINION
Claim 10 – Rejection Under Section 112, First Paragraph
The Examiner found that the limitation directed to a material for the
lid being more rigid than the material for the tube and shoulder was not
described in the original Specification or claims. Ans. 3.
Appellant traverses the Examiner’s rejection with a single sentence
explaining that the limitation at issue relates to a result of the claimed
structure and not the claimed structure itself. App. Br. 3. Otherwise,
Appellant directs us to no language in the Specification or any of the filed
Drawings that furnishes support for the limitation respecting rigidity of the
lid element.

1 Appellant misspelled Shimizu as “Simicu” throughout the Brief. We
will hereinafter refer to Shimizu in accordance with its correct spelling.
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The patentee’s original disclosure serves to limit the permissible
breadth of his later-drafted claims. Gentry Gallery, Inc. v. Berkline Corp.,
134 F.3d 1473, 1479 (Fed. Cir. 1998). Appellant has failed to apprise us of
error in the Examiner’s grounds of rejection. We sustain the Examiner’s
rejection of claim 10 under 35 U.S.C. § 112, first paragraph.
Claim 10 – Rejection Under Section 112, Second Paragraph
The Examiner rejected claim 10 under 35 U.S.C. § 112, second
paragraph, as indefinite based on Appellant’s inclusion of the phrase “may
be.” Ans. 4. The Examiner states that, “may be” is not a positive recitation
of claim scope such that it is unclear whether the limitation following the
phrase “may be” is part of the claimed invention. Ans. 4, 7.
Without more, Appellant responds by stating that the expression “may
be” relates to a result of the claimed structure and not the structure itself.
App. Br. 3. We agree with the Examiner that the use of the phrase “may be”
fails to make it clear what subject matter the claim encompasses. Thus,
because the boundaries of the claim scope cannot be precisely ascertained,
we agree with the Examiner that claim 10 is indefinite. We sustain the
Examiner’s rejection of claim 10 under Section 112, second paragraph.
Claim 15 – Rejection Under Section 112, Second Paragraph
The Examiner rejected claim 15 under 35 U.S.C. § 112, second
paragraph, as being indefinite because the limitation “the recesses” lacks
antecedent basis. Ans. 4, 7. Appellant responds by pointing out that claim
15 specifically refers to a recess in the lid element (156) and the recess
(140). App. Br. 3. Annotated feature 140 in the drawings (Figure 7) is
described in the Specification as “part of” recess 158. Spec. 5.
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Claim 15 is an apparatus claim that depends from claim 13, which is a
method claim that, in turn, depends from claim 11, which is also a method
claim. It is unclear how the recesses recited in claim 15 relate to the method
claimed in claims 11 and 13. Accordingly, we sustain the Examiner’s
rejection of claim 15 under Section 112, second paragraph.
Claim 11 – Rejection Under 35 U.S.C. § 102(b)
Appellant challenges the Examiner’s anticipation rejection of claim 11
stating only that Figure 26 of Shimizu shows the tab as part of the lid rather
than the shoulder. App. Br. 4. However, claim 11 specifically requires the
lid to have a tab. App. Br., Clms. App’x. Thus, Appellant effectively
admits that Shimizu satisfies the tab/lid limitation. We sustain the rejection
of claim 11.
Claims 10, 12 and 14
Rejection under 35 U.S.C. § 103(a) over Shimizu
Claims 10 and 12
The Examiner finds that Shimizu discloses all of the elements of
claims 10 and 12, except that it does not disclose a tab that is formed integral
with the shoulder and the recess formed in the lid. Ans. 5. The Examiner
concludes that it would have been obvious to a person of ordinary skill in the
art at the time of the invention to reverse the respective locations of the tab
and recess so that the lid had a recess instead of a tab and the shoulder had a
tab instead of a recess. Ans. 5-6.
Appellant traverses the Examiner’s rejection, stating that claims 10
and 12 claim a lid with a recess and a shoulder with a tab. App. Br. 4. The
Appellant observes that Figure 25 of Shimizu shows the tab molded to the
lid. Id.
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Appellant otherwise fails to address the Examiner’s conclusion that it
would have been obvious to reverse the location of the tab and recess in the
dispensing collapsible tube of Shimizu. Ans. 5-6. It is settled that when a
patent ‘simply arranges old elements with each performing the same
function it had been known to perform’ and yields no more than one would
expect from such an arrangement, the combination is obvious.” KSR Int’l
Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). This principle applies when
the old elements in the prior art perform the same function as the now
claimed structures. See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975). The
tab and recess of Shimizu would function in the same manner whether
located on the lid and shoulder, respectively, or vice versa. We thus agree
with the Examiner that merely reversing the essential working parts of a
device does not constitute invention. In re Einstein, 346 F.2d 373, 374
(CCPA 1931). See Ans. 6. As such, we agree with the Examiner that claims
10 and 12 are unpatentable and sustain the rejection of claims 10 and 12.
Claim 14
Appellant’s sole contention is that Shimizu shows a lid with a tab
where the hinge is apparently in the transverse wall of the lid and that
member 56 of Shimizu does not flex when the container is opened. App. Br.
4. As noted above, Appellant fails to address the Examiner’s conclusion that
it would have been obvious to reverse the location of the tab and recess in
the dispensing collapsible tube of Shimizu. Ans. 5-6. Furthermore, we
agree with the Examiner that “[t]he lid element has an axially extending
flexible tab (56, 57) extending therefrom that is adapted to be inserted into a
recess (52) and locking recess (60) in the shoulder element to achieve a
hinged (by 56) interconnection.” Appellant has not come forth with any
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persuasive evidence to show error in the Examiner’s interpretation. We thus
likewise sustain the Examiner’s rejection of claim 14.
Claims 13 and 15
Rejection under 35 U.S.C. § 103(a) over Shimizu and Magerle
The Examiner finds that Shimizu discloses all of the elements of
claims 13 and 15, except that it does not disclose that the end of the tube is
fused with the shoulder while still in relatively molten condition. Ans. 6.
The Examiner further finds that Magerle discloses a method for making a
collapsible tube with a shoulder element where “the end of the tube is fused
with the shoulder element.” Id. The Examiner concludes that it would have
been obvious to a person of ordinary skill in the art at the time of the
invention to fuse the tube and shoulder of Shimizu with the method taught
by Magerle “since Magerle discloses that the method allows for faster
production of products.” Id.
With respect to claim 13, Appellant raises no new argument other than
cross-referencing the argument with respect to claim 11, from which claim
13 depends. See App. Br. 5. Claim 13 falls with claim 11. See 37 C.F.R.
§ 41.37(c)(1)(vii).
With respect to claim 15, Appellant argues that tab 57 of Shimizu is
not flexible and that the structure of feature 56 appears to be part of a side
wall. App. Br. 5. Appellant also argues that flexible opening of the lid
appears to take place at a thin section of the end wall 13 of the lid element.
Id. Otherwise, Appellant does not challenge that Shimizu and Magerle are
combinable references.
In response, the Examiner determines that lid 11of Shimuzu pivots at
least about first pair of hinges 56a which are not part of a sidewall of a lid
11. Ans. 8. Appellant has not come forth with any persuasive evidence to
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show error in the Examiner’s interpretation . We agree with the Examiner
that there is no evidence of record to support Appellant’s position as to claim
15. Ans. 8; see also Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed.
Cir. 1989)(attorney argument is no substitute for evidence). We thus sustain
the Examiner’s rejection of claim 15.

DECISION
The decision of the Examiner to reject claim 10 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement is affirmed.
The decision of the Examiner to reject claim 10 under 35 U.S.C.
§ 112, second paragraph, as indefinite is affirmed.
The decision of the Examiner to reject claim 15 under 35 U.S.C.
§ 112, second paragraph, as indefinite is affirmed.
The decision of the Examiner to reject claim 11 as anticipated under
35 U.S.C. § 102(b) is affirmed.
The decision of the Examiner to reject claims 10 and 12-15 as
unpatentable under 35 U.S.C. § 103(a) 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

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