Ex Parte Theile

Board of Patent Appeals and Interferences

Sep 14, 2007

10299661 (B.P.A.I. Sep. 14, 2007)

The opinion in support of the decision being entered today is not binding precedent
of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FREDERICK C. THEILE
____________

Appeal 2007-1913
Application 10/299,661
Technology Center 3700
____________

Decided: September 14, 2007
____________

Before MURRIEL E. CRAWFORD, LINDA E. HORNER, and DAVID B.
WALKER, Administrative Patent Judges.

WALKER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 1-119 and 149-156. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002). We affirm.
Appeal 2007-1913
Application 10/299,661

2
THE INVENTION
Appellant claims a container having an outer surface with recessed portions
for receiving fingers of an individual (Specification 2:[001]). Claim 1, reproduced
below, is representative of the subject matter on appeal.
1. A device comprising:
a container defining a longitudinal axis and
configured to be placed between a pair of adjacent
fingers of a user, wherein the container comprises
a portion defining an opening on an upper
part of the container, and
an outer surface comprising
a first recess portion for receiving one
of the user's fingers, the first recess portion
facing in a first direction and comprising a
first recess upper part, a first recess lower
part, and a first intermediate part between
the first recess upper part and the first recess
lower part, the first intermediate part being
closer than the first recess upper part and the
first recess lower part to the longitudinal
axis, and
a second recess portion for receiving
another of the user's fingers, the second
recess portion facing in a second direction
substantially opposite to the first direction
and comprising a second recess upper part, a
second recess lower part, and a second
intermediate part between the second recess
upper part and the second recess lower part,
the second intermediate part being closer
than the second recess upper part and the
Appeal 2007-1913
Application 10/299,661

3
second recess lower part to the longitudinal
axis,
wherein at least one of the first recess upper part
and the second recess upper part is configured to at least
partially overlie a user's finger,
wherein at least one of the first recess lower part
and the second recess lower part is configured to at least
partially underlie a user's finger,
wherein the container defines an interior
configured to contain a product,
wherein the interior comprises a portion positioned
between the first recess lower part and the second recess
lower part, the portion extending toward a bottom of the
container at least as far as the first recess lower part and
the second recess lower part,
wherein at least one of the first recess upper part,
the first recess lower part, the second recess upper part,
and the second recess lower part comprises a concave
surface, and
wherein at least one of the first recess portion and
the second recess portion is positioned closer to the
opening of the container than a bottom of the container.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Ammarell US 2,656,842 Oct. 27, 1953
Montgomery US 3,921,650 Nov. 25, 1975
Perl GB 2 061 868A May 20, 1981
Gueret US 6,076,985 Jun. 20, 2000
Gueret US 6,390,708 B1 May 21, 2002
Cantone US D474,341 S May 13, 2003
Appeal 2007-1913
Application 10/299,661

4
The following rejections` are before us for review.
1. Claims 1-5, 8-11, 13-15, 23-26, 29-36, 39-42, 44-46, 54-57, 60-67, 70-73,
75, 81-84, 87-94, 97-100, 102-104, 112-114, 117-119, and 149-156 are
rejected under 35 U.S.C. § 103(a) as unpatentable over Perl in view of
Ammarell.
2. Claims 6, 7, 12, 37, 38, 43, 68, 69, 74, 95, 96, and 101 are rejected under 35
U.S.C. § 103(a) as unpatentable over Perl in view of Ammarell and further
in view of Cantone.
3. Claims 16, 17, 27, 47, 48, 58, 85, 105, 106, and 115 are rejected under 35
U.S.C. § 103(a) as unpatentable over Perl in view of Ammarell and further
in view of Gueret ’708.
4. Claims 28, 59, 86, and 116 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Perl in view of Ammarell and further in view of
Montgomery.
5. Claims 18-22, 49-53, 76-80, and 107-111 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Perl in view of Ammarell and further in view
of Gueret ’985.

ISSUE
The issue before us is whether Appellant has shown that the Examiner erred
in rejecting the following claims under 35 U.S.C. § 103(a): (1) claims 1-5, 8-11,
13-15, 23-26, 29-36, 39-42, 44-46, 54-57, 60-67, 70-73, 75, 81-84, 87-94, 97-100,
102-104, 112-114, 117-119, and 149-156 as unpatentable over Perl in view of
Appeal 2007-1913
Application 10/299,661

5
Ammarell; (2) claims 6, 7, 12, 37, 38, 43, 68, 69, 74, 95, 96, and 101 as
unpatentable over Perl in view of Ammarell and further in view of Cantone; (3)
claims 16, 17, 27, 47, 48, 58, 85, 105, 106, and 115 as unpatentable over Perl in
view of Ammarell and further in view of Gueret ’708; (4) claims 28, 59, 86, and
116 as unpatentable over Perl in view of Ammarell and further in view of
Montgomery; and (5) claims 18-22, 49-53, 76-80, and 107-111 as unpatentable
over Perl in view of Ammarell and further in view of Gueret ’985. The correctness
of the above rejections turns on whether any of the cited references disclose “a
second recess portion” and “wherein at least one of the first recess portion and the
second recess portion is positioned closer to the opening of the container than a
bottom of the container” as required by claim 1.
Rather than repeat the arguments of Appellant and the Examiner, we make
reference to the Briefs and the Answer for their respective details. Only those
arguments actually made by Appellant have been considered in this decision.
Arguments which Appellant could have made but chose not to make in the Briefs
have not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2004).

FINDINGS OF FACT
We find the following enumerated findings to be supported by at least a
preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427, 7
USPQ2d 1152, 1156 (Fed. Cir. 1988) (explaining the general evidentiary standard
for proceedings before the Office).
Appeal 2007-1913
Application 10/299,661

6

1. Perl teaches a bottle with at least one recess in which a finger can be
fitted so that the surface of the recess fits partially around the finger, and
preferably around a majority of the circumference of the finger (Perl, p.
1, ll. 46-50).
2. “The or each recess may face in any direction, for example outwardly or
downwardly. The or each recess may be formed in the main body of the
bottle or in a portion which is fixed to but outstanding from the main
body” (Perl, p. 1, ll. 52-57).
3. Ammarell teaches a bottle with concave-shaped shoulders formed in the
bottle on either side of the neck (Ammarell, col. 1, ll. 20-23).
The end walls extend inwardly and upwardly to form a
pair of concave finger rests on either side of the arched
portions of the side walls with the upper edges of the
concave finger rests terminating in the arched top
portions of the side walls.
(Ammarell, col. 1, ll. 39-44).
4. The finger rests of Ammarell are shown positioned closer to the opening
of the container than a bottom of the container (Ammarell, Figs. 1-5).

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences between the
subject matter sought to be patented and the prior art are such that the subject
matter as a whole would have been obvious at the time the invention was made to a
Appeal 2007-1913
Application 10/299,661

7
person having ordinary skill in the art to which said subject matter pertains.’” KSR
Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1734, 82 USPQ2d 1385, 1391 (2007).
The question of obviousness is resolved on the basis of underlying factual
determinations including (1) the scope and content of the prior art, (2) any
differences between the claimed subject matter and the prior art, (3) the level of
ordinary skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459,
467 (1966). See also KSR, 127 S.Ct. at 1734, 82 USPQ2d at 1391 (“While the
sequence of these questions might be reordered in any particular case, the
[Graham] factors continue to define the inquiry that controls.”)
In KSR, the Supreme Court emphasized “the need for caution in granting a
patent based on the combination of elements found in the prior art,” id. at 1739, 82
USPQ2d at 1395, and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that “the
principles laid down in Graham reaffirmed the ‘functional approach’ of Hotchkiss,
11 How. 248.” KSR, 127 S.Ct. at 1739, 82 USPQ2d at 1395 (citing Graham, 383
U.S. at 12, 148 USPQ at 464 (emphasis added)), and reaffirmed principles based
on its precedent that “[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” Id. The Court explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations
of it, either in the same field or a different one. If a
person of ordinary skill can implement a predictable
variation, §103 likely bars its patentability. For the same
Appeal 2007-1913
Application 10/299,661

8
reason, if a technique has been used to improve one
device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the
same way, using the technique is obvious unless its
actual application is beyond his or her skill.
Id. at 1740, 82 USPQ2d at 1396. The operative question in this “functional
approach” is thus “whether the improvement is more than the predictable use of
prior art elements according to their established functions.” Id.
The Supreme Court stated that there are “[t]hree cases decided after Graham
[that] illustrate the application of this doctrine.” Id. at 1739, 82 USPQ2d at 1395.
“In United States v. Adams, … [t]he Court recognized that when a patent claims a
structure already known in the prior art that is altered by the mere substitution of
one element for another known in the field, the combination must do more than
yield a predictable result.” Id. at 1739-40, 82 USPQ2d at 1395. “Sakraida and
Anderson’s-Black Rock are illustrative – a court must ask whether the
improvement is more that the predictable use of prior art elements according to
their established function.” Id. at 1740, 82 USPQ2d at 1395.
The Supreme Court stated that “[f]ollowing these principles may be more
difficult in other cases than it is here because the claimed subject matter may
involve more than the simple substitution of one known element for another or the
mere application of a known technique to a piece of prior art ready for the
improvement.” Id. The Court explained, “[o]ften, it will be necessary for a court
to look to interrelated teachings of multiple patents; the effects of demands known
to the design community or present in the marketplace; and the background
knowledge possessed by a person having ordinary skill in the art, all in order to
Appeal 2007-1913
Application 10/299,661

9
determine whether there was an apparent reason to combine the known elements in
the fashion claimed by the patent at issue.” Id. at 1740-41, 82 USPQ2d at 1396.
The Court noted that “[t]o facilitate review, this analysis should be made explicit.”
Id. (citing In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)
(“[R]ejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness”). However, “the
analysis need not seek out precise teachings directed to the specific subject matter
of the challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” Id.
ANALYSIS
The Appellant does not argue any of the claims separately. The Appeal
Brief argues that claims 6, 7, 12, 16, 22, 27, 28, 37, 38, 43, 47-53, 58, 59, 68, 69,
74, 76-80, 85, 86, 95, 96, 101, 105-111, 115, and 116 (rejections 2-5 above) are
patentable, but only by virtue of their respective dependence from independent
claims 1, 32, 63, and 90. For that reason, we treat claim 1 as representative of all
appealed claims, and claims 1-119 and 149-156 stand or fall together. See 37
C.F.R. § 41.37(c)(1)(vii). See also In re Young, 927 F.2d 588, 590, 18 USPQ2d
1089, 1091 (Fed. Cir. 1991).
Appellant argues that “Perl does not explicitly disclose, among other things,
the recited ‘second recess portion’ associated with its bottles” (Br. 20). In
addition, Appellant asserts that there is no suggestion or motivation in either Perl
or Ammarell to combine or modify the alleged teachings of the references in the
Appeal 2007-1913
Application 10/299,661

10
manner proposed by the Examiner (Br. 20). Finally the Appellant argues that even
if Perl and Ammarell could be combined, “the combination would not have one or
more recess portions ‘positioned closer to the opening of the container than a
bottom of the container’ as recited in claim 1.” (Br. 22).
The Examiner correctly found that Perl teaches that the bottle may have at
least one recess and the or each recess may be formed anywhere in the main body
of the bottle (Answer 9, Findings of Fact 1-2). The Examiner also correctly found
that Ammarell discloses the bottle having two recesses on the main body near the
neck (Answer 9, Findings of Fact 3-4). The Examiner concluded that providing
more than one recess on the bottle would have been obvious to one of ordinary
skill in the art.
To the extent the Appellant argues in his pre-KSR Brief that there is no
explicit teaching, suggestion, or motivation to combine Perl and Ammarell, that
argument is foreclosed by KSR. KSR, 127 S.Ct. at 1740-41, 82 USPQ2d at 1396.
In addition, Perl does teach that at least one recess in which a finger can be fitted
can be formed in the body of the bottle and that the recess can face in any direction
(Findings of Fact 1-2). Perl thus suggests the addition of a second recess and the
outward orientation of the recesses as required by claim 1. In addition, Ammarell
teaches two finger rests positioned closer to the opening of the container than the
bottom of the container. On that record, we find that Perl provides explicit
motivation to modify its teachings by adding a second recess portion. Under those
circumstances, the Examiner did not err in holding that it would have been obvious
to one having ordinary skill in the art at the time the invention was made to
Appeal 2007-1913
Application 10/299,661

11
combine the teachings of Perl and Ammarell “for further facilitating holding the
bottle between a user’s fingers” (Answer 4).

CONCLUSIONS
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1-119 and 149-156 under 35 U.S.C. § 103(a).

DECISION
The decision of the Examiner to reject claims 1-119 and 149-156 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2006).

AFFIRMED

hh

FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413