Ex Parte Wong

Board of Patent Appeals and Interferences

Aug 15, 2008

10741189 (B.P.A.I. Aug. 15, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MICHAEL P. WONG
__________

Appeal 2008-3888
Application 10/741,189
Technology Center 3700
__________

Decided: August 15, 2008
__________

Before ERIC GRIMES, LORA M. GREEN, and FRANCISCO C. PRATS,
Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a bottle
carrier. The Examiner has rejected the claims as anticipated. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.
STATEMENT OF THE CASE
Claims 1-10, 12-19, 21-27, and 29-36 are pending and on appeal
(App. Br. 2). Claims 1 and 12 are illustrative and read as follows:
Appeal 2008-3888
Application 10/741,189

1. A bottle carrier comprising:
a base having at least one handle extending upwardly
therefrom; and
a plurality of arms extending downward from the base,
each of the plurality of arms including an inwardly-facing
surface for contacting a neck of a bottle.

12. A bottle carrier for carrying a bottle having a neck
having an axis and a lip near an upper end of the neck, the
bottle carrier comprising:
a base; and
at least one arm extending from the base, the at least one
arm at least partially defining a bottle neck receiving area below
the base, the at least one arm including a free lower end having
a lower surface angled away from the axis of the neck of the
bottle as it extends away from the base, such that upon insertion
of the lip on the neck of the bottle into the bottle neck receiving
area, the lip deflects the lower end of the at least one arm from
a first position away from the axis to a second position, and
wherein after the lip passes the lower surface of the arm the at
least one arm returns toward the axis and the first position to
contact the neck of the bottle below the lip to retain the neck of
the bottle.

Claims 1-10, 12-19, 21-27, and 29-36 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Poupitch1 (Ans. 3-4).
ANTICIPATION
ISSUE
The Examiner states:
Poupitch ‘908 discloses a container carrier comprising: a base
(web 51) having at least one handle extending upwardly
therefrom (see column 5, lines 17-29); and a plurality of arms
extending downward from the base (bead-engaging means 45
having a plurality of spaced teeth 52), the plurality of arms

1 O.J. Poupitch, US 3,199,908, issued Aug. 10, 1965.
2
Appeal 2008-3888
Application 10/741,189

defining a container neck receiving area below the base, the
plurality of arms including a free lower end having a lower
surface angled away from the axis of the neck of the container
(note the lower surface arm 52 that is angled away from the axis
of the neck of the container as shown in Figure 6a embodiment)
into the container neck receiving area, each of the plurality of
arms including an inwardly facing surface for contacting a neck
of a container, each of the plurality of arms including inwardly-
extending tabs (see Figures 4 and 6 embodiments and tab 46)
having an upper surface for supporting a lip on the neck of the
container, the plurality of arms arranged about the axis of the
neck of the container and contacting the neck of the container
when the container is in the container neck receiving area to
retain the container in the container carrier. See Figures 1-7
embodiments and column 5, lines 74-75 and column 6 lines 1-
2.

(Ans. 3.)

Appellant contends, as a general matter, that Poupitch’s carrier is
“adapted to fit cans, not bottles” (App. Br. 6). Appellant also specifically
contends that Poupitch’s carrier does not meet the limitation requiring the
claimed carrier to have “arms” as recited in claims 1, 12, 21 (id. at 7-8), nor
does it meet the functional limitations in claims 7, 12, and 22 (id. at 8), nor
does it contain bottles as required by claim 29 (id. at 8-9).
The issue, then, is whether the Examiner erred in finding that
Poupitch meets all of the limitations in the rejected claims.
FINDINGS OF FACT (“FF”)
1. Claim 1 recites a bottle carrier having a base with “a plurality of arms
extending downward from the base, each of the plurality of arms including
an inwardly-facing surface for contacting a neck of a bottle.”
3
Appeal 2008-3888
Application 10/741,189

2. Claim 7 ultimately depends from claim 1, and recites the limitation
that, “wherein upon insertion of a lip on the neck of the bottle into the
plurality of arms, the lip deflects the at least one arm away from the axis,
and wherein the arm returns toward the axis after the lip passes the lower
surface of the arm to retain the neck of the bottle.”
3. Independent claim 22 recites a bottle carrier having a planar base and
a plurality of bottle receiving areas below the base. Claim 22 limits the
bottle carrier such that “wherein movement of the base substantially parallel
to the axes of the necks of the plurality of bottles causes the neck of each of
the bottles to be received and retained in one of the plurality of bottle
receiving areas by the at least one retaining member.”
4. Claim 29 recites “[t]he bottle carrier of claim 22 further including the
plurality of bottles, each having its neck received with one of the bottle
receiving areas, with the at least one retaining member of the bottle
receiving area positioned below a lip on the neck of the bottle to retain the
bottle to the bottle carrier.”
5. Poupitch discloses “a device for holding a plurality of cans or other
containers together as a unit in a manner which affords protection to a
portion of the peripheral beads of the individual containers and
simultaneously spaces the next adjacent unit of containers from contact
therewith” (Poupitch, col. 2, ll. 1-6).
6. Figure 3 of Poupitch, reproduced below, is a top view of Poupitch’s
device:
4
Appeal 2008-3888
Application 10/741,189

The figure shows the carrier 44 consisting of two rows of three
circular rings “resiliently interconnected at the tops thereof by integral web
portions 51 to unitize the plurality of containers” (Poupitch, col. 5, ll. 5-7).
7. Figure 1 of Poupitch, reproduced below, “is an isometric perspective
view of one embodiment” of Poupitch’s device (Poupitch, col. 3, ll. 11-12):

The figure shows a plurality of cans 35 held together by Poupitch’s
device with handle 56 extending upward from the device, and “individual
5
Appeal 2008-3888
Application 10/741,189

bead-engaging teeth 52 . . . inserted over the beads 38 [of the cans]”
extending downward from the device (Poupitch, col. 5, ll. 59-60).
8. Figure 6a of Poupitch, reproduced below, is “an enlarged fragmentary
sectional view of the bead engaging means utilized in FIGS. 1 and 3”
(Poupitch, col. 3, ll. 25-26):

The figure shows that “portions 46, 47, 48 and 49 of the bead
engaging means 45 on the individual teeth 52 overlie and respectively
intimately engage the complementary surfaces . . . of the bead” (Poupitch,
col. 5, ll. 71-74). The figure thus shows that teeth 52 have an inwardly
facing surface that contacts the bead of the beverage can.
9. Poupitch describes the method of engaging a can with the carrier as
follows:
When the individual bead-engaging teeth 52 are inserted
over the beads 38, the inherent elasticity of the material allows
outward deformation of the lower cammed rim 50 and portion
46 so that it may be conveniently forced over the bead 38.
When surface portion 46 snaps into engagement with the
underside portion 39 of the bead, the top portion 48 of the bead-
engaging means will snugly engage the top 41 of the bead, and
6
Appeal 2008-3888
Application 10/741,189

the carrier means will resist unauthorized separation of the
individual container means from the carrier means 44.

(Poupitch, col. 5, ll. 59-69.)
10. Poupitch discloses that “[w]hile the inventive concepts have been
depicted with a generally cylindrical container means 35, it is to be expressly
noted that thet [sic] inventive concepts apply with equal facility to containers
of other and different configurations” (Poupitch, col. 4, ll. 24-28).
11. Poupitch does not explicitly disclose bottles in any of its containers.
PRINCIPLES OF LAW
It is well settled that “[t]o anticipate a claim, a prior art reference must
disclose every limitation of the claimed invention, either explicitly or
inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). It is
also well settled that “[a] patent applicant is free to recite features of an
apparatus either structurally or functionally.” Id. at 1478.
However, “‘[f]unctional’ terminology may render a claim quite broad
. . .[;] a claim employing such language covers any and all embodiments
which perform the recited function.” In re Swinehart, 439 F.2d 210, 213
(CCPA 1971)(emphasis added); see also Schreiber, 128 F.3d at 1478-79
(holding that a prior art apparatus meeting all claimed structural limitations
was anticipatory because it was inherently capable of performing the
claimed function).
During examination, the PTO must interpret terms in a claim using
“the broadest reasonable meaning of the words in their ordinary usage as
they would be understood by one of ordinary skill in the art, taking into
account whatever enlightenment by way of definitions or otherwise that may
be afforded by the written description contained in the applicant’s
7
Appeal 2008-3888
Application 10/741,189

specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). This
broad claim interpretation is applied during examination because, “during
patent prosecution when claims can be amended, ambiguities should be
recognized, scope and breadth of language explored, and clarification
imposed.” In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
ANALYSIS
Appellant’s argument does not persuade us that the Examiner erred in
finding that Poupitch’s device meets all of the limitations of claim 1.
Specifically, Poupitch’s device has the claimed base and handle (see FF 6,
7). As to the disputed limitation, as pointed out by the Examiner, Poupitch’s
device has a bead-engaging “teeth” 52 that extend downwardly from the
base, as required by claim 1 (FF 7). Moreover, as also required by claim 1,
the bead-engaging teeth have an inwardly facing surface that contacts the
bead of the beverage can (FF 8).
Appellant argues that the bead-engaging means 45, which include
bead-engaging teeth 52, cannot be considered “arms” because “‘[a]rms’ in
any context must be elongated and relatively narrow, but the engaging
means 45 of Poupitch are wide and minimally shallow. Therefore, claims 1,
12 and 21 are not anticipated by Poupitch” (App. Br. 7-8). Appellant further
argues that Poupitch’s bead-engaging teeth cannot be considered arms
because they are in no way “armlike” (Reply Br. 3).
We are not persuaded by this argument. We note that the longer
horizontal portion of Poupitch’s bead-engaging teeth 52 are attached the
device’s base. However, claim 1 does not exclude such an arrangement.
Moreover, Poupitch’s bead-engaging means 52 can be considered to
be arm-like because, as seen in Poupitch’s Figure 1, they are relatively
8
Appeal 2008-3888
Application 10/741,189

narrow in the vertical axis, and relatively elongated in horizontal axis. Thus,
even applying the definition urged by Appellant, we do not agree that the
Examiner erred in finding that Poupitch meets the limitation requiring the
device to have “arms.”
We therefore affirm the Examiner’s rejection of claim 1 as anticipated
by Poupitch. Because they were not argued separately, claims 2-6, 8-10, 21,
and 36 fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellant argues that Poupitch fails to meet the limitation in claim 7
that “‘wherein upon insertion of a lip on the neck of the bottle into the
plurality of arms, the lip deflects the at least one arm away from the axis,
and wherein the arm returns toward the axis after the lip passes the lower
surface of the arm to retain the neck of the bottle’” (App. Br. 8).
Specifically, Appellant urges that “[i]nsertion of the neck of any bottle into
Poupitch would not deflect an arm (even if Poupitch had an arm) or cause
the arm to return after the lip of the bottle passes the lower surface of the
arm to retain the neck of the bottle.[] Therefore, claim 7 is not anticipated by
Poupitch” (id.; see also Reply Br. 4).
The Examiner responds:
[I]t is only necessary that the reference include structure
capable of performing the recited function in order to meet the
functional limitations of a claim. See In re Mott, 557 F.2d 266 .
. . (CCPA 1977). Since the reference device has all of the same
structural elements, as noted above, it would clearly seem to be
inherently capable of performing the functions as claimed.

(Ans. 5.)
Appellant’s argument does not persuade us that the Examiner erred in
finding that Poupitch’s device meets the disputed limitation in claim 7. In
9
Appeal 2008-3888
Application 10/741,189

support of his argument, Appellant points to no structural aspect of
Poupitch’s device that would render its bead-engaging teeth 52 incapable of
being deflected away from an appropriately shaped and sized bottle when
inserted into the device.
Conversely, Poupitch discloses that when being engaged with a can,
the inherent elasticity of its device “allows outward deformation of the lower
cammed rim 50 and portion 46 [of bead-engaging teeth 52] so that it may be
conveniently forced over the bead 38” (Poupitch col. 5, ll. 61-63 (FF 9)).
Moreover, once it is forced over the bead of a can, “surface portion 46 snaps
into engagement with the underside portion 39 of the bead” (Poupitch, col.
5, ll. 63-65 (FF 9)).
Given the disclosed elasticity of its device, and the capacity of the
bead-engaging means to deflect and snap back into place beneath the lipped
surface of a bead of a beverage can, we agree with the Examiner that it was
reasonable to find that Poupitch’s device would be capable of engaging a
bottle in the manner recited in claim 7. We therefore affirm the Examiner’s
rejection of claim 7 as anticipated by Poupitch.
For the reasons discussed with respect to claim 7, we also agree with
the Examiner that it was reasonable to find that Poupitch’s device would be
capable of engaging a bottle in the manner recited in claim 12. As discussed
above, we further agree with the Examiner that Poupitch’s device meets the
limitation in claim 12 requiring the device to have “arms” extending from
the carrier’s base.
We therefore also affirm the Examiner’s anticipation rejection of
claim 12. Claims 13-19 all ultimately depend from claim 12 and were not
10
Appeal 2008-3888
Application 10/741,189

argued separately from claim 12. We therefore also affirm the Examiner’s
rejection of those claims. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellant argues:
Claim 22 recites, “wherein movement of the base
substantially parallel to the axes of the necks of the plurality of
bottles causes the neck of each of the bottles to be received and
retained in one of the plurality of bottle receiving areas by the at
least one retaining member.” The carrier in Poupitch could not
meet this limitation of claim 22.

(App. Br. 8; see also Reply Br. 4-5.)
We are not persuaded by this argument. Appellant points to no
structural aspect of Poupitch’s device that would render its bead-engaging
teeth 52 incapable of engaging and retaining an appropriately shaped and
sized bottle when the device is moved in the manner recited in claim 22.
Conversely, as discussed above, Poupitch discloses that its device is
sufficiently elastic such that it can deflect and snap back into place when
forced over the lipped surface of a bead of a beverage can, and once so
deployed, can retain the can within the device (see FF 9). We therefore
agree with the Examiner that it was reasonable to find that Poupitch’s device
would be capable of engaging a bottle in the manner recited in claim 22, and
affirm the Examiner’s rejection of claim 22 as anticipated by Poupitch.
Claims 23-27 and 30-35 all depend ultimately from claim 22 and were
not argued separately from claim 22. We therefore also affirm the
Examiner’s rejection of those claims. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellant argues:
Claim 29 recites, “the plurality of bottles, each having its
neck received with one of the bottle receiving areas, with the at
least one retaining member of the bottle receiving area
11
Appeal 2008-3888
Application 10/741,189

positioned below a lip on the neck of the bottle to retain the
bottle to the bottle carrier.” Poupitch does not disclose bottles.

(App. Br. 8.)
We agree with Appellant. We note that Poupitch states that its
disclosures can “apply with equal facility to containers of other and different
configurations” (Poupitch, col. 4, ll. 27-28 (FF 10)). However, we do not
see, and the Examiner does not point to, any disclosure in Poupitch
positively describing the device as containing bottles. We therefore reverse
the Examiner’s anticipation rejection of claim 29.
SUMMARY
We affirm the Examiner’s rejection of claims 1-10, 12-19, 21-27, and
30-36 under 35 U.S.C. § 102(b) as anticipated by Poupitch.
We reverse the Examiner’s rejection of claim 29 as anticipated by
Poupitch.

AFFIRMED-IN-PART

cdc

Konstantine J. Diamond
4010 E. 26th Street
Los Angeles CA 90023
12