Ex Parte Schlatter

Board of Patent Appeals and Interferences

Oct 31, 2011

10623588 (B.P.A.I. Oct. 31, 2011)

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.
10/623,588 07/22/2003 Gary Schlatter ORA-005 5846
21884 7590 10/31/2011
WELSH FLAXMAN & GITLER LLC
2000 DUKE STREET, SUITE 100
ALEXANDRIA, VA 22314
EXAMINER
SMALLEY, JAMES N
ART UNIT PAPER NUMBER
3781
MAIL DATE DELIVERY MODE
10/31/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte GARY SCHLATTER
____________________

Appeal 2009-014749
Application 10/623,588
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, JOHN C. KERINS, and KEN B.
BARRETT, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-014749
Application 10/623,588
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STATEMENT OF THE CASE
Gary Schlatter (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s rejection under 35 U.S.C. § 103(a) of claims 1-3, 5, 6, 8-11, 13,
and 15-20 as unpatentable over Goldberg (US 2004/0250386 A1, pub. Dec.
16, 2004) and Christler (US 5,996,191, iss. Dec. 7, 1999), and of claims 4, 7,
12, and 14 as unpatentable over Goldberg, Christler, and Maillocheau (US
3,748,703, iss. Jul. 31, 1973). We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We REVERSE.

THE INVENTION
The claims are directed to a cap provided with a clasp, and to a
dispensing container including such a cap. Spec., p. 1, ll. 3-4. Claim 1,
reproduced below, is illustrative of the claimed subject matter.
1. A dispensing container including a selectively removable
cap to which a variety of articles may be securely and
selectively attached, comprising:
a dispensing body in which material for dispensing is
stored, the dispensing body including a closed end, at least
one side wall and an open end through which the material is
dispensed;
a cap shaped and dimensioned for selectively covering
the open end of the dispensing body, the cap including a first
end shaped and dimensioned for engaging the open end of
the dispensing body for secure and selective attachment
thereto and a closed second end including a clasp extending
therefrom;

the clasp including a first arm and a second arm, the first
arm includes a first arcuate member and a first upwardly
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Application 10/623,588
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extending connecting member integrally formed with the
cap, and the second arm includes a second arcuate member
and a second upwardly extending connecting member
integrally formed with the cap; the first arm and the second
arm extending from the cap in a spaced relationship and
being oriented upon the cap so as to overlap in a mating
configuration with the first arm lying over the second arm,
the first arcuate member and the second arcuate member
overlapping through a substantial portion of their respective
arcs.

OPINION
The Examiner found, and Appellant does not dispute, that Goldberg
describes a cap satisfying all of the limitations of claims 1, 8, and 16, with
the exception of the first and second arcuate members overlapping through a
substantial portion of their respective arcs, as required in claims 1 and 16,
and the overlap being at least 60 degrees, as called for in claim 8. Ans. 3, 4.
The Examiner further found that Christler teaches that it was known at the
time of Appellant’s invention to adjust the relative length of overlap of the
resilient arms of a connecting ring to obtain the desired bias against
separation of the arms, and concluded that it would have been obvious to
modify the length of the overlap of the arms of Goldberg, such that the arms
overlap along a substantial portion of their arc lengths, “motivated by the
benefit of providing stability such that the arms will only separate in either a
radial direction or an axial direction but not both, and, by the benefit of
preventing radial detachment.” Ans. 3-4. With respect to claim 8, the
Examiner reasoned that it would have been obvious to modify the length of
the overlap so as to extend through at least a 60 degree arc, or to any suitable
arc length, “motivated by the benefit of providing increased resistance to
radial forcing which would open the arms and break the connection between
Appeal 2009-014749
Application 10/623,588
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the container carabiner, and the associated article with which it is attached.”
Ans. 4.
An issue raised in the appeal is whether the reasons articulated by the
Examiner for the proposed modification have rational underpinning. See
App. Br. 9-14. In particular, Appellant argues that because Goldberg’s
carabiner attachment device is designed to operate by deflecting one arm
radially inward away from the other arm, while Christler’s connecting ring is
designed to operate by deflecting the arms away from one another either in
the circumferential direction or in the axial direction, Appellant’s claimed
invention would not be the logical result of combining the teachings of
Goldberg and Christler. App. Br. 12.
We find, and both the Examiner and Appellant appear to appreciate,
that Goldberg’s device is designed to be opened by applying radially inward
pressure on gate member 38 to deform it radially inwardly away from first
end 34 sufficiently that the object to which the device is to be attached may
pass through the opening therebetween. Goldberg, para. 32. We also find
that, as emphasized by Appellant, Christler’s connecting ring is designed to
be opened by displacement of the overlapping portions of the ring in either
the axial direction or the circumferential direction away from one another to
permit an article to which a connection is desired to pass therebetween.
Christler, col. 2, ll. 20-60.
The teaching of Christler, upon which the Examiner relies, to adjust
the relative amount of circumferential overlap is directed to enhancing or
overcoming a preferential direction of opening in one of the axial direction
and the circumferential direction by adjusting the relative amounts of
overlap along each direction. Christler, col. 3, ll. 55-59. For example,
Christler suggests adjusting the amount of the circumferential overlap
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Application 10/623,588
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relative to the width of the material (i.e., the axial overlap). Col. 3, ll. 59-66;
col. 4, ll. 1-13.
The Examiner’s first articulated reason for modifying Goldberg by
increasing the overlap (i.e. “providing stability such that the arms will only
separate in either a radial direction or an axial direction but not both”)
simply does not logically flow from the teachings of Christler. The
teachings of Christler suggest that the extent of circumferential overlap will
affect the preference for opening in the circumferential direction relative to
another direction, not that it will impact the preferences for opening in the
axial and radial directions relative to one another.
The Examiner provides further explanation of the second articulated
reason for the proposed modification (i.e., “preventing radial detachment” or
“providing increased resistance to radial forcing which would open the arms
and break the connection”) by stating that
the length of the overlap, when compared to the
overlap shown in figure 1A of Goldberg would
make it much harder for radial detachment of the
arms relative to each other (because the upper arm
simply is in the way of the lower arm), thus
making the connection less likely to come apart
under radial stresses.
Ans. 3-4. This reason also lacks rational underpinning. Goldberg’s gate
member 38 is deflected radially inwardly, away from the arm terminating in
end 34, to open the device. Thus, the extent of the circumferential overlap
will have no effect on the ability of the gate member to deflect in the radial
direction.
For the above reasons, we agree with Appellant that the reasons
articulated by the Examiner for the proposed modification lack rational
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underpinning. We reverse the rejection of claims 1, 8, and 16, and
dependent claims 2, 3, 5, 6, 9-11, 13, 15, and 17-20, as unpatentable over
Goldberg and Christler.
In rejecting claims 4, 7, 12, and 14, the Examiner does not rely on
Maillocheau for any teaching that would overcome the deficiency in the
combination of Goldberg and Christler discussed above. Thus, for the same
reason, we reverse the rejection of these claims.

DECISION
For the above reasons, the Examiner’s decision is reversed.
REVERSED

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