Ex Parte Tiller

Board of Patent Appeals and Interferences

Jul 13, 2009

10933385 (B.P.A.I. Jul. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte RON TILLER
____________________

Appeal 2009-001966
Application 10/933,385
Technology Center 3600
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Decided:1 July 13, 2009
____________________

Before WILLIAM F. PATE, III, MICHAEL W. O’NEILL, and
KEN B. BARRETT, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Application 10/933,385

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STATEMENT OF THE CASE
Ron Tiller (Appellant) seeks our review under 35 U.S.C. § 134 of the
final rejection of claims 1-4. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.

THE INVENTION
Appellant’s claimed invention pertains to an absorbent insert for a
cup holder, such as that found in automobiles. (See Spec. 3.) Claim 1,
reproduced below, is representative of the subject matter on appeal.
1. A method for protecting cup holders,
comprising placing an absorbent insert at the
bottom of the cup holder,
retaining a container in said cup holder, and
replacing said absorbent insert when said
insert provides visual indication of being fully
saturated.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Fish, Jr. US 1,862,533 June 14, 1932
Perlman US 6,755,877 B2 June 29, 2004

The following Examiner’s rejections are before us for review:
1. Claims 1-3 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Fish; and
2. Claims 2 and 4 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fish and Perlman.
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ISSUES
Appellant argues that the Examiner erred in rejecting claim 1 as
anticipated by Fish because Fish does not mention any visual indication of
full saturation. (App. Br. 3.) The Examiner found that the recited visual
indication is inherent in Fish’s absorbent member. (Final Rej. 3; Ans. 6.)
Therefore, the first issue on appeal is:
Has Appellant shown that the Examiner erred in finding that Fish
inherently discloses an absorbent insert that provides a visual indication of
being fully saturated?
Appellant also argues that the Examiner erred in rejecting claim 2 as
anticipated by Fish because Fish does not disclose an increase of the insert
thickness upon saturation. (App. Br. 4.) The Examiner concluded that the
claim’s recitation of the visual indication as an increase in thickness of the
insert does not limit the claimed method and has no patentable significance.
(Ans. 4.) Therefore, the second issue on appeal is:
Does the recitation in claim 2 that the visual indication is an increase
in the thickness of the insert limit the claimed method?
As to the rejection of claims 2 and 4 under § 103, the Examiner
concluded that it would have been obvious to use Perlman’s cellulose
sponge as the absorbent material in Fish’s method because cellulose sponge
is a known absorbent material. (Ans. 5.) Appellant asserts that “[t]here is
no rationale set forward of why one of ordinary skill in the art, when
considering the disclosure of Fish, Jr., would consider any patent [such as
Perlman] disclosing the method of combusting lighter fluid.” (Reply Br. 1.)
Appellant also argues that Perlman does not provide a motivation to
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combine the teachings of the references. (Id. at 2.) Therefore, the third
issue is:
Has Appellant shown that the Examiner failed to articulate a
reasonable rationale for combining the references so as to arrive at
Appellant’s method in which the insert is formed from cellulose sponge?

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence.
1. Fish discloses a cup holder in the form of a saucer 13 having an
absorbent member comprising a disc, or base, 19 and an elevation 20.
(Fish 1, ll. 39-53.) The material of the absorbent member is “blotting paper
or other absorbent material.” (Fish 1, ll. 50-53.) Fish teaches that
“[s]ubstitution for a saturated or used absorbent member is effected by
removing the cup and manually grasping the elevation 20 and lifting the
base [of the member] from its recess.” (Fish 1, ll. 60-63.)
2. Perlman teaches that paper fiber and cellulose sponge are
absorbent materials. (Perlman, col. 15, ll. 44-45.)

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987) (citations omitted).
A claim is unpatentable for obviousness if “the differences between
the subject matter sought to be patented and the prior art are such that the
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subject matter as a whole would have been obvious at the time the invention
was made to a person having ordinary skill in the art to which said subject
matter pertains.” 35 U.S.C. § 103. 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 skill in the art, and (4) where in
evidence, so-called secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 407 (2007). The scope and content of the prior art includes the explicit
and inherent teachings of the prior art. In re Zurko, 258 F.3d 1379, 1383-84
(Fed. Cir. 2001) (citing In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995)).
In KSR, the Supreme Court noted 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 416 (citing United
States v. Adams, 383 U.S. 39, 50-51 (1966)).

ANALYSIS
The rejection of claims 1-3 under 35 U.S.C. § 102(b) as being anticipated by
Fish
Appellant argues claims 1 and 3 as a group. (App. Br. 3.) We select
claim 1 as the representative claim, and claim 3 stands or falls with claim 1.
37 C.F.R. § 41.37(c)(1)(vii) (2008).
Appellant only assigns error to the Examiner’s finding that Fish’s
insert provides a visual indication of being saturated. (App. Br. 3.) The
Examiner found that providing such a visual indication is a function
inherently performed by Fish’s insert because liquid would form outside of
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the insert when it stops absorbing liquid. (Ans. 6; see also Final Rej. 3.)
Where, as here, the Patent Office has reason to believe that a functional
limitation is an inherent characteristic of the prior art, Appellant has the
burden to show that the prior art does not possess that characteristic. See In
re Best, 562 F.2d 1252, 1254-55 (CCPA 1977) (quoting In re Swinehart, 439
F.2d 210, 212-13 (CCPA 1971); see also In re Spada, 911 F.2d 705,
708 (Fed. Cir. 1990) (“when the PTO shows sound basis for believing that
the products of the applicant and the prior art are the same, the applicant has
the burden of showing that they are not.”). Appellant asserts that, if the
insert material is a slow absorbing material, liquid would form outside of the
insert even though it is not fully saturated. (App. Br. 3.) Appellant’s
assertion is not commensurate with either the scope of claim 1 or Fish’s
disclosure. Claim 1 is not limited to fast absorbing materials, and Fish
discloses the use of blotting paper (Fact 1) rather than some hypothetical
slow absorbing material. The Examiner’s determination of inherency is
reasonable, and Appellant has not offered any persuasive argument or
evidence to rebut this determination.
Appellant has not shown that the Examiner erred in rejecting claim 1
as anticipated by Fish. Accordingly, we sustain the rejection of claim 1, as
well as the rejection of claim 3, which falls with claim 1.
Claim 2 depends from claim 1 and recites “said visual indication is an
increase in thickness of said insert.” The Examiner concluded that this
language does not limit the claimed method and has no patentable
significance. (Ans. 4.) We disagree with the Examiner’s conclusion, and
construe claim 2 (which incorporates the limitations of claim 1) as requiring
the replacement of the absorbent insert when there is an increase in thickness
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of the insert. The Examiner did not find that Fish discloses an increase in
thickness. (Ans. 4.) Accordingly, we cannot sustain the rejection of claim 2
as anticipated by Fish.

The rejection of claims 2 and 4 under 35 U.S.C. § 103(a) as being
unpatentable over Fish and Perlman
Claims 2 and 4 depend from independent claim 1. As mentioned
above, claim 2 recites that the visual indication is an increase in thickness of
the insert. Claim 4 recites the step of forming the insert from cellulose
sponge. Fish discloses an absorbent member made from blotting paper or
other absorbent material. (Fact 1.) Perlman teaches that cellulose sponge is
an absorbent material. (Fact 2.) As to claim 2, the Examiner found that
“cellulose sponge inherently increases in thickness when it absorbs.” (Ans.
5.) Appellant does not challenge this finding of inherency. (See Reply Br.
1-2; cf. Spec. 5 (Appellant stating that cellulose sponge is a material that
increases in thickness upon absorbing liquid).) The Examiner concluded
that:
It would have been obvious to one of ordinary skill in the art at
the time of the present invention to have provided cellulose
sponge as the absorbent material taught by Fish, Jr., as taught
by Perlman, because [cellulose sponge] is a known absorbent
material.
(Ans. 5.) The Examiner’s rationale underlying the conclusion of
obviousness is reasonable. See KSR Int’l Co., 550 U.S. at 416 (claimed
subject matter is likely obvious when it involves the mere substitution of one
known element for another to obtain predictable results).
Appellant suggests that one of ordinary skill in the art considering
Fish’s disclosure of an absorbent cup holder member would not consider
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Perlman because it discloses a method of combusting lighter fluid. (Reply
Br. 1.) We are not persuaded by this argument. It is erroneous to assume
“that a person of ordinary skill attempting to solve a problem will be led
only to those elements of prior art designed to solve the same problem.”
KSR Int’l Co., 550 U.S. at 420. Further, familiar objects may have obvious
uses beyond their primary purposes, id., and Perlman’s teaching of a
cellulose sponge as an absorbent material is clearly applicable to the
absorbent member of Fish.
Appellant also argues that Perlman does not provide a motivation to
combine the references’ teachings. (Reply Br. 2.) This argument is
foreclosed by KSR, in which the Court rejected the rigid requirement of a
teaching, suggestion or motivation to combine known elements in order to
show obviousness. KSR Int’l Co., 550 U.S. at 418-19.
Appellant has not shown that the Examiner erred in rejecting claims 2
and 4 as unpatentable over Fish and Perlman. Thus, we sustain the rejection
of those claims under § 103.

CONCLUSIONS
We conclude that the Appellant has failed to show that the Examiner
erred in finding that Fish inherently discloses an absorbent insert that
provides a visual indication of being fully saturated. Thus, Appellant has
not shown that the Examiner erred in rejecting claims 1 and 3 as anticipated
by Fish.
We also conclude that the Appellant has not shown that the Examiner
failed to articulate a reasonable rationale for combining the references so as
to arrive at Appellant’s method in which the insert is formed from cellulose
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sponge. Therefore, Appellant has not shown that the Examiner erred in
rejecting claims 2 and 4 as obvious over Fish and Perlman.
However, we conclude that the recitation in claim 2 that the visual
indication is an increase in the thickness of the insert does limit the claimed
method. Therefore, Appellant has shown that the Examiner erred in
rejecting claim 2 as anticipated by Fish.

DECISION
The decision of the Examiner to reject claims 1-4 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) (2007).

AFFIRMED

Klh

CHRISTOPHER J. MCDONALD
HOFFMAN, WASSON & GITLER, P.C.
SUITE 522
2461 SOUTH CLARK STREET
ARLINGTON, VA 22202