Ex Parte Winckels

Board of Patent Appeals and Interferences

Apr 20, 2009

10373016 (B.P.A.I. Apr. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MATHILDE WINCKELS
__________

Appeal1 2008-5656
Application 10/373,016
Technology Center 3700
__________

Decided: April 21, 2009
__________

Before DEMETRA J. MILLS, LORA M. GREEN, and
FRANCISCO C. PRATS, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-70. We have jurisdiction under 35
U.S.C. § 6(b).

1 Oral Hearing held March 19, 2009.
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STATEMENT OF THE CASE
The claims are directed to a container for packaging a product.
Claims 1, 3, 20, and 36 are representative of the claims on appeal, and read
as follows:
1. A container for packaging a product, comprising:
a rigid casing formed by at least one member extending over a
substantial portion of a height of the container, and terminating in a neck
having a free edge that delimits an opening for the container, said casing
being made of a first material; and
at least one deformable part in contact with the product inside the
container and made of a second material with a lesser rigidity than the first
material,
wherein a pressure exerted on said at least one deformable part causes
a deformation of said at least one deformable part and a displacement of the
product towards the opening, said at least one deformable part returning to
an undeformed shape by elastic return forces when said pressure is released,
wherein said casing is arranged inside said at least one deformable
part in contact with the product.

3. A container for packaging a product, comprising:
a rigid casing formed by at least one member extending over a
substantial portion of a height of a container, and terminating in a neck
having a free edge that delimits an opening for the container, said casing
being made of a first material; and
at least one deformable part in contact with the product inside the
container and made of a second material with a lesser rigidity than the first
material,
wherein a pressure exerted on said at least one deformable part causes
a deformation of said at least one deformable part and a displacement of the
product towards the opening, said at least one deformable part returning to
an underformed shape by elastic return forces when said pressure is released,
wherein said casing is formed of at least two members extending over
substantial portion of said height of said container, said at least two members
being secured to each other via ends positioned near said neck, said at least
two members having free ends positioned near a bottom of said container.

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20. A container for a product, comprising:
a shell having a side wall and a bottom;
an openworked casing inside said shell, said casing comprising a ring
and at least two members, each member extending from said ring toward
said bottom along a portion of said side wall, and
a neck coupled to said openworked casing; and
a lid configured to close said opening;
wherein said shell defines at least two deformable portions, each of
said at least two deformable portions being positioned between two of said
portions of said side wall along which said members extend,
wherein said neck delimits an opening of said container through
which said product is dispensed when pressure is applied to said at least two
deformable portions,
wherein a pressure exerted on said shell causes a deformation of said
shell, said shell returning to an undeformed shape by elastic return forces
when said pressure is released.

36. A container for a product, comprising:
a flexible shell including a circumferential side wall coupled to a
bottom so as to receive said product; and
a rigid openworked casing positioned inside said flexible shell,
wherein said side wall defines an opening for dispensing said product,
said side wall having a profile such that said opening has a diameter greater
than the diameter of said bottom,
wherein said casing has a profile which matches said profile of said
sidewall, and
wherein said flexible shell and said rigid openworked casing are
configured to fit between a thumb and an index finger of a user’s hand,
wherein a pressure exerted on said shell causes a deformation of said
shell, said shell returning to an undeformed shape by elastic return forces
when said pressure is released.

The Examiner relies on the following evidence:
Garcia 6,536,635 B1 Mar. 25, 2003
Mascitelli 5,348,194 Sept. 20, 1994
Rogers 2,591,296 Apr. 1, 1952
Ruppolt 553,765 Jan. 28, 1896
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The following grounds of rejection are before us for review:
I) Claims 1, 2, 5-10, 13, 48, and 49 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Mascitelli;
II) Claims 12, 14-20, 23-25, 36, 50-54, 59, 60, and 67-70 stand rejected
under 35 U.S.C. § 103(a) as being rendered obvious by Mascitelli; and
III) Claims 3, 4, 11, 21, 22, 26-35, 37-47, 55-58, and 61-66 stand rejected
under 35 U.S.C. § 103(a) as being rendered obvious by the combination of
Mascitelli and Garcia.
We reverse all the rejections of record.

PRINCIPLES OF LAW
To anticipate, every element and limitation of the claimed invention
must be found in a single prior art reference, arranged as in the claim.
Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
2001).
As to obviousness, the question of obviousness is resolved on the
basis of underlying factual determinations including: (1) the scope and
content of the prior art; (2) the level of ordinary skill in the art; (3) the
differences between the claimed invention and the prior art; and (4)
secondary considerations of nonobviousness, if any. Graham v. John Deere
Co., 383 U.S. 1, 17 (1966).
While the analysis under 35 U.S.C. § 103 allows flexibility in
determining whether a claimed invention would have been obvious, KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007), it still requires showing
that “there was an apparent reason to combine the known elements in the
fashion claimed by the patent at issue.” Id. at 418 “We must still be careful
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not to allow hindsight reconstruction of references to reach the claimed
invention without any explanation as to how or why the references would be
combined to produce the claimed invention.” Innogenetics, N.V. v. Abbott
Labs., 512 F.3d 1363, 1374 n.3 (Fed. Cir. 2008).

ISSUES
The Examiner finds that claims 1, 2, 5-10, 13, 48, and 49 are
anticipated by Mascitelli; and that claims 3, 4, 11, 26-35, 44-47, 55-58, and
61-66 are rendered obvious by the combination of Mascitelli and Garcia.
Appellant contends that Mascitelli fails to describe a rigid casing in
the claimed configuration that is made of a first material, and at least one
deformable part in contact with the product inside the container made of a
second material with a lesser rigidity than the first material; and also fails to
disclose a container that includes a rigid casing formed by at least one
member extending over a substantial portion of the height of the container.
Thus, the issue to be decided is: Has the Examiner established by a
preponderance of the evidence that Mascitelli describes a rigid casing in the
claimed configuration that is made of a first material, and at least one
deformable part in contact with the product inside the container made of a
second material with a lesser rigidity than the first material; as well as
discloses a container that includes a rigid casing formed by at least one
member extending over a substantial portion of the height of the container?

FINDINGS OF FACT
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FF1 “The present invention relates to containers, for example, used for
packaging cosmetic products, such as a gel or a cream.” (Spec. ¶2.)
FF2 The container includes “an openworked casing formed by at least one
extension member extending over a substantial portion of the height of the
container.” (Id. at ¶9.)
FF3 Figure 1 of the instant disclosure is reproduced below.

Figure 1 is a container according to a first embodiment of the invention (id.
at ¶23).
FF4 The container 1 includes an openworked casing or frame 2, wherein
the casing forms a ring 3, from which four regularly spaced members 4-7
extend (id. at ¶26). According to the Specification, the “height of these
extension members corresponds substantially to the height of the container.”
(Id.)
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FF5 The Examiner rejects claims 1, 2, 5-10, 13, 48, and 49 under 35
U.S.C. § 102(b) as being anticipated by Mascitelli (Ans. 4).
FF6 The Examiner finds that “Mascitelli discloses a container for
packaging a product comprising a rigid casing or frame (36, 136), and at
least one deformable part (bottle 10, 110 and deformable regions 64, 66,
164, 166), the rigid casing or frame has a neck (cylindrical atomizer capsule
22, 122) with an opening nozzle (nozzle 27, 127).” (Id.)
FF7 The Examiner finds further that the at least one member “includes all
parts of the pump 32 (pump includes parts 30, 32, 34, 50, 52, 54, 60, 62, 70,
72, 74), all parts of capsule 22, the nozzle 27 and all parts of the frame 36 of
Mascitelli.” (Id. at 8.) That is, the Examiner finds that the “‘at least one
member’ extends over a substantial portion of a height of the container”
reads on everything inside the outer shell or bottle 12 of Mascitelli (id.).
FF8 The Examiner finds further that “only a portion of the rigid casing
needs to be made of a different material.” (Id.)
FF9 Mascitelli “relates to atomizer bottles operable by squeezing the
bottle.” (Mascitelli, col. 1, ll. 6-7).
FF10 Figure 4 of Mascitelli is reproduced below:
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Figure 4 is a cross-section of one embodiment of the atomizer of Mascitelli
without the closure cap (Id. at col. 2, ll. 44-51).
FF11 Mascticelli teaches that:
The hollow body 34 of the pump 32 is fixed to a frame
36 of approximately trapezium form, constructed of elastically
deformable plastic material. This rhombic frame 36 behaves
largely as an articulated quadrilateral, comprising four arms 38,
40, 42, 44. The arm 38 is connected to the arm 40 by a
connection strip 46 of lesser thickness than the arms and
integral with them. . . . The upper end of the arms 40 and 42 is
integral with an annular connection element 50 comprising a
hole 52 for forcedly receiving the intermediate part of the body
34 of the pump 32.

(Id. at col. 3, ll. 22-34.)
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According to Mascitelli:
The side wall of the bottle 12 comprises two opposing
regions 64, 66 which are elastically deformable inboards by
pressing with the fingers of the hand which grips the atomizer
bottle 10. As is apparent, by simultaneously pressing against
the two deformable regions 64, 66, the trapezium frame 36 is
squeezed in a direction perpendicular to the axis of the pump
32, so that the two connection strips 46 and 48 approach each
other. Consequently the element 50 of the frame 36 is urged
upwards dragging with it the body 34 of the pump 32. As the
shaft 30 of the pump 32 remains fixed relative to the bottle 12,
the pump undergoes operation and if previously primed causes
a predetermined quantity of the liquid substance contained in
the bottle 12 to emerge from the nozzle 27 of the atomization
insert 26 in a conveniently atomized form.

(Id. at col. 3, ll. 47-61.)
FF12 Mascticelli also teaches that the bottle, the capsule with its insert, and
the frame, may be all made of the same material, such as polyethylene, an
atomizer bottle is obtained that “once empty can be totally and conveniently
salvaged, and which for this reason could be defined as ecological.” (Id. at
col. 4, ll. 38-40).
FF13 The Examiner also rejects claims 3, 4, 11, 26-35, 37, 38, 44-47, 55-58,
and 61-662 under 35 U.S.C. § 103(a) as being obvious over the combination
of Mascitelli and Garcia (Ans. 7).
FF14 According to the Examiner, “Mascitelli discloses the invention except
for the two members having free ends.” (Id.)

2 The Examiner also rejects claims 21, 22, and 37-43 with these claim, and
we discuss the rejection of those claims in conjunction with the next issue.
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FF15 The Examiner finds that “Garcia teaches a similar dispenser with a
movable rigid casing . . . with free ends.” (Id.)

ANALYSIS
Appellant argues further that “Mascitelli fails to describe a rigid
casing in the claimed configuration that is made of a first material, and at
least one deformable part in contact with the product inside the container
made of a second material with a lesser rigidity than the first material.”
(App. Br. 11.) According to Appellant, “only one portion of one part of the
multiple parts that the Final Action interprets as the rigid casing includes a
different material than the bottle.” (Id. at 12.)
Appellant argues further that Mascitelli fails to disclose “a container
that includes a rigid casing formed by at least one member extending over a
substantial portion of the height of the container, and terminating in a neck
having a free edge that delimits an opening for the container.” (Id. at 9.)
According to Appellant, even if one were to define the atomizer capsule (22)
as seen in Figure 4 of Mascitelli as a neck, “neither the pump (32) nor the
frame (36) can be reasonably interpreted as the claimed at least one member
that extends over a substantial portion of a height of the container and
terminates in the atomizer capsule (22).” (Id. at 10)
We have carefully considered the Examiner’s rejections and
Appellant’s arguments, and conclude that Appellant has the better position.
Claim 1 requires “a rigid casing formed by at least one member
extending over a substantial portion of a height of the container, and
terminating in a neck having a free edge that delimits an opening for the
container, said casing being made of a first material.” We interpret the
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limitation of “said casing being made of a first material” as requiring the
entire casing to be made of a first material.
The Examiner finds that the “at least one member extending over a
substantial portion of a height of the container” reads on everything inside
the outer shell or bottle 12 of Mascitelli (FF7). As noted by Appellant, and
as admitted by the Examiner (see FF8), only one portion of one part of those
multiple parts includes a different material than the bottle. Thus, based on
our interpretation of the claim, Mascitelli does not anticipate a container
wherein the rigid casing is made from a first material, which is different
from the material used to produce the deformable part, wherein the material
used to produce the deformable part is made from a second material with a
lesser rigidity than the first material.
In addition, we do not agree with the Examiner’s finding (FF7) that
the “at least one member extending over a substantial portion of a height of
the container” reads on everything inside the outer shell or bottle 12 of
Mascitelli. We interpret the limitation of “at least one member extending
over a substantial portion of a height of the container” as requiring a single,
integral, part, and not encompassing multiple parts as found by the
Examiner. Any other interpretation of “at least one member” used to form
the rigid casing would read the limitation of “member” out of the claim,
which we decline to do. See Bicon, Inc. v. The Straumann Co., 441 F.3d
945, 952 (Fed. Cir. 2006) (noting that claim language “should not be treated
as meaningless”).
Independent claim 13 also requires the same limitations, and thus
Mascitelli does not anticipate that claim for the reasons set forth above.
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The Examiner also rejects claims 3, 4, 11, 21, 22, 26-35, 37-47, 55-58,
and 61-66 as being obvious over the combination of Mascitelli and Garcia.
Independent claim 3 requires the limitations discussed above; independent
claim 26 requires a “side wall being formed of a first material,” and a “frame
being formed of a second material having a rigidity greater than a first
material;” and independent claim 44 requires a frame “including a plurality
of first portions . . . which extend substantially over a height of said frame.”
As Garcia does not remedy the deficiencies of Mascitelli, the combination
does not render obvious claims 3, 26, and 44, nor the claims dependent
thereon.

CONCLUSION(S) OF LAW
We find that the Examiner has not established by a preponderance of
the evidence that Mascitelli describes a rigid casing in the claimed
configuration that is made of a first material, and at least one deformable
part in contact with the product inside the container made of a second
material with a lesser rigidity than the first material; as well as discloses a
container that includes a rigid casing formed by at least one member
extending over a substantial portion of the height of the container.
We thus reverse the rejection of claims 1, 2, 5-10, 13, 48, and 49
under 35 U.S.C. § 102(b) as being anticipated by Mascitelli; as well as the
rejection of claims 3, 4, 11, 26-35, 37, 38, 44-47, 55-58, and 61-66 under 35
U.S.C. § 103(a) as being obvious over the combination of Mascitelli and
Garcia.

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ISSUE
The Examiner concludes that claims 12, 14-20, 23-25, 36, 50-54, 59,
60, and 67-70 are rendered obvious by Mascitelli; and that claims 21, 22,
and 39-43 are rendered obvious by the combination of Mascitelli and Garcia.
Appellant contends that Mascitelli fails to teach or suggest a
container: 1) having an openworked casing within the shell, wherein the at
least two members extend from a ring toward the bottom along a portion of
the side wall (claim 20); or 2) a container wherein the side wall has a profile
such that the opening has a diameter greater than the diameter of the bottom
(claim 36).
Thus, the issue on appeal is: Has the Examiner established by a
preponderance of the evidence that Mascitelli teaches or suggests a
container: 1) having an openworked casing within the shell, wherein the at
least two members extend from a ring toward the bottom along a portion of
the side wall (claim 20); or 2) a container wherein the side wall has a profile
such that the opening has a diameter greater than the diameter of the bottom
(claim 36).

FINDINGS OF FACT
FF16 The Examiner rejects claims 12, 14-20, 23-25, 36, 50-54, 59, 60, and
67-70 under 35 U.S.C. § 103(a) as being rendered obvious by Mascitelli
(Ans. 5).
FF17 Mascitelli is relied upon as above.
FF18 The Examiner finds that “Mascitelli discloses the invention except for
a lid and a screw thread on the outer surface of the neck.” (Id.)
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FF19 The Examiner notes that “a lid with internal screw threads and necks
with outer screw threads are well known in the product container art.” (Id.)
FF20 The Examiner concludes that it “would have been obvious to add the
lid to seal the product to prevent contamination or inadvertent discharge.”
(Id.)
FF21 As to claim 20, the Examiner finds that the “deformable portions are
defined as the parts of the side wall positioned between two of said portions
of the side wall along which the said (frame) members extend.” (Id. at 10.)
FF22 As to claim 36, the Examiner finds that “a sidewall or top opening
being larger than a base is well known in this art,” and that it “would have
been obvious to modify Mascitelli to have this desired shape.” (Id.)
FF23 The Examiner also rejects claims 21, 22, and 39-43 under 35 U.S.C.
§ 103(a) as being obvious over the combination of Mascitelli and Garcia
(Ans. 7).
FF24 According to the Examiner, “Mascitelli discloses the invention except
for the two members having free ends.” (Id.)
FF25 The Examiner finds that “Garcia teaches a similar dispenser with a
movable rigid casing . . . with free ends.” (Id.)

ANALYSIS
As to independent claim 20, Appellant argues that Mascitelli fails to
teach or suggest a container having an openworked casing within the shell,
wherein the “at least two members . . . each extend from a ring toward the
bottom along a portion of the side wall.” (App. Br. 15.)
Claim 20 requires, among other things: i) a shell having a side wall
and a bottom, ii) an openworked casing inside said shell, said casing
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comprising a ring and at least two members, each member extending from
said ring toward said bottom along a portion of said side wall; and iii)
wherein said shell defines at least two deformable portions, each of said at
least two deformable portions being positioned between two of said portions
of said side wall along which said members extend.
The Examiner defines the casing as everything inside the body of
Mascitelli (see FF6, FF7). The Examiner then would appear to be
interpreting the outside of the bottle of Mascitelli (see FF10) as the shell.
The Examiner also finds that the deformable portions are defined as the parts
of the side wall positioned between two of said portions of the side wall
along which the said (frame) members extend (FF21).
As can be seen of Figure 4 of Mascitelli (FF10), what the Examiner
interprets as the casing touches the inside of the shell at the middle of the
bottle, but the Examiner has not explained how at least two members extend
from the ring along a portion of the side wall of the shell—that is, how two
members of the casing extend from the ring adjacent to a portion of the shell.
In addition, the Examiner has not explained why it would be obvious to
modify the casing so that at least two members extend from the ring adjacent
to the side wall of the shell.
Moreover, Mascitelli teaches that the use of a frame having a
trapezoidal shape behaves as an articulated quadrilateral, allowing the pump
to operate (see FF11). The Examiner has not presented any evidence or
scientific argument that modifying the trapezoidal shape so that its members
extend from the ring adjacent to the side wall of the shell would still allow
the atomizer to operate.
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As to claim 36, Appellant argues that claim 36 requires that the “side
wall has a profile such that the opening has a diameter greater than the
diameter of the bottom,” and that if the nozzle of Mascitelli were to be made
larger than the bottom of the container, “it would no longer perform its
function as an atomizing nozzle.” (App. Br. 18.)
In response, the Examiner finds that a sidewall or top opening being
larger than a base is well known in this art (FF22). While that finding may
be true, it does not explain how the atomizer insert 26 (see FF11, FF10) of
Mascitelli would function if the opening had a diameter greater than the
diameter of the bottom.
Finally, as Garcia does not remedy the deficiencies of Mascitelli, the
combination does not render obvious dependent claims 21, 22, and 39-43.

CONCLUSIONS OF LAW
We conclude that the Examiner has not established by a
preponderance of the evidence that Mascitelli teaches or suggests a
container: 1) having an openworked casing within the shell, wherein the at
least two members extend from a ring toward the bottom along a portion of
the side wall (claim 20); or 2) a container wherein the side wall has a profile
such that the opening has a diameter greater than the diameter of the bottom
(claim 36).
We are thus compelled to reverse the rejection of claims 12, 14-20,
23-25, 36, 50-54, 59, 60, and 67-70 under 35 U.S.C. § 103(a) as being
rendered obvious by Mascitelli, as well as the rejection of claims 21, 22, and
39-43 under 35 U.S.C. § 103(a) as being obvious over the combination of
Mascitelli and Garcia.
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REVERSED
LP
OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, P.C.
1940 DUKE STREET
ALEXANDRIA VA 22314