Ex Parte Biederman et al

Patent Trial and Appeal BoardSep 12, 2014

12401700 (P.T.A.B. Sep. 12, 2014)

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. 12/401,700 03/11/2009 Markku Biederman BI 528.003 6327 53437 7590 09/15/2014 ROBERT M. SCHWARTZ, P.A. P.O. BOX 221470 HOLLYWOOD, FL 33022 EXAMINER ELKINS, GARY E ART UNIT PAPER NUMBER 3782 MAIL DATE DELIVERY MODE 09/15/2014 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 PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MARKKU BIEDERMAN, ANDRES KOZHAYA, XAVIER VELEZ, KRYSTLE KIMMONS, THOMAS KUHN, and JAIME BUITRAGO ____________________ Appeal 2012-008529 Application 12/401,700 Technology Center 3700 ____________________ Before CHARLES N. GREENHUT, LYNNE H. BROWNE, and MICHAEL L. WOODS, Administrative Patent Judges. WOODS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Markku Biederman et al. (“Appellants”) seek our review under 35 U.S.C. § 134 of the final rejection of claims 1–5. Appeal Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2012-008529 Application 12/401,700 2 CLAIMED SUBJECT MATTER The Appellants’ invention is directed to a food container having a holder for a condiment cup. Independent claim 1 is illustrative and is reproduced below with emphasis on a relevant claim limitation. 1. A food container in combination with a condiment container having a lip, a lower lip edge, an outside diameter below said lip and a top edge, the food container comprising: at least one wall; a bottom connected to said wall for defining a containment space; a slit formation formed in said wall, said slit formation having a lower slit and an upper slit substantially parallel to said lower slit, said slits defining a loop being displaceable into said containment space for supporting the condiment container by urging the condiment container against said wall, said slits having a length defining a loop distance, said loop distance being the largest distance between said wall and said loop, said loop distance being less than the outside diameter of the condiment container; and a slot formed in said wall above said slit formation, said slot configured to receive and hold the lip of the condiment container. THE REJECTIONS The Examiner has rejected (see Answer 5–11): (i) claim 1 on the ground of nonstatutory obviousness-type double patenting over claim 4 of ’417 (US 7,520,417 B2, issued Apr. 21, 2009) in view of Daviss (US 4,491,220, issued Jan. 1, 1985); (ii) claims 2–4 on the ground of nonstatutory obviousness-type double patenting over claim 4 of ’417 in view of Daviss and Cote (US 5,213,255, issued May 25, 1993); (iii) claim 5 on the ground of nonstatutory obviousness-type double patenting over claim 8 of ’417 in view of Daviss; Appeal 2012-008529 Application 12/401,700 3 (iv) claims 1 and 5 under 35 U.S.C. § 103(a) as being unpatentable over McLean (US 2003/0141355 A1, pub. July 31, 2003) in view of Daviss; and (v) claims 2–4 under 35 U.S.C. § 103(a) as being unpatentable over McLean, Daviss, and Cote. ANALYSIS Claims 1–5 on Double Patenting Grounds The Appellants do not contest this rejection. See Reply Br. 2; see also Appeal Br. 6–7. Instead, the Appellants represent that a terminal disclaimer has been filed and the rejection is therefore moot. Reply Br. 2. We note that the terminal disclaimer was initially disapproved as it was signed by a person lacking the necessary power of attorney (“POA”). See Answer 9. Although the Appellants subsequently filed a POA to apparently correct this oversight, the POA was filed after the Examiner’s Answer and our records do not indicate whether the terminal disclaimer was ever approved. See Communication from Appellants dated May 2, 2012. Therefore, it would be premature for us to address the Examiner’s non- statutory double patenting rejections and we do not reach them. Cf. Ex parte Moncla, 95 USPQ2d 1884 (BPAI 2010) (precedential, where the Board declined to reach provisional non-statutory double patenting rejections when the circumstances behind those rejections had changed since the filling of the Appeal). Claims 1–5 as Unpatentable We select independent claim 1 for review with dependent claims 2–5 standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). The Examiner finds that McLean discloses, inter alia, a food container with a loop for supporting a condiment container 25. Answer 8. App App supp dista given diam The Id. a eal 2012-0 lication 12 Figures Figures orting “co The Exa nce as bei position[ eter of the Examiner t 11. The Exa 08529 /401,700 6–8 of Mc 6–8 depict ndiment co miner find ng smaller ,] McLean condimen also provi miner’s an Lean are r McLean’s ntainer” 2 s that “[be than the d evidences t containe des an ann notated dr 4 eproduced food con 5. cause] cla iameter of a loop di r.” See An otated dra awing is r below: tainer with im 1 does the condi stance whi swer 10 ( wing to ill eproduced a loop for not define ment cont ch is less t emphasis ustrate his below: the loop ainer at a han the added). finding. Appeal 2012-008529 Application 12/401,700 5 The annotated drawing depicts McLean’s “diameter” and “loop distance,” as found by the Examiner. The Appellants argue that because “McLean does not disclose a container having a diameter . . . . McLean does not disclose that the narrow dimension of the container is greater than the loop distance.” Appeal Br. 12 (emphasis added). As determined by the Examiner, “the claims do not define the shape of the [condiment] container.” Answer 10. We agree with the Examiner that “[t]he [Appellants’] argument appears to imply that the term ‘diameter’ must limit the claim to [condiment containers with] a round shape.” Id. Because claims are to be given their broadest reasonable interpretation consistent with the specification, we read claims in light of the specification as they would be interpreted by one of ordinary skill in the art. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Furthermore, while the specification should be used to interpret the meaning of a claim, it is improper to confine the claims to the embodiments found in the specification. In re Trans Texas Holdings Corp., 498 F.3d 1290, 1299 (Fed. Cir. 2007). In addition to the specification, dictionary definitions are also pertinent in this analysis. Id. Here, the claimed term “diameter” is not defined in the Specification and, as found by the Examiner, the dictionary definition of “diameter” is “a straight line passing from side to side through the center of a body or figure.” See Answer 10 (citing The Oxford Dictionary); see also id. (citing the definition of “diameter” from the M[e]rriam-Webster Dictionary and Webster’s Dictionary). Based on this, a person of ordinary skill in the art would not interpret the term “diameter” to limit the claimed “container” to only having round shapes. Accordingly, we are not persuaded by the App App App cont dista alleg loop also illus App cons F.3d cons Spec 14 an eal 2012-0 lication 12 ellants’ arg ainer havin The App nce” does ed “loop d and theref Appeal Br trate their The App The ann ellants’ (da When gi truction ca 1279, 128 truction of ification a d Fig. 9. 08529 /401,700 ument tha g a diame ellants als not meet t istance” is ore canno . 9. The A point. Rep ellants’ an otated figu shed line) ving claim nnot be di 8 (Fed. Ci the claim nd, in part For this re t “McLean ter.” App o contend he require “not the l t be consid ppellants ly Br. 4. notated fi re depicts proposed terms the vorced fro r. 2011). ed “loop d icular, Fig ason, we a 6 does not eal Br. 12. that the Ex ments of c argest dist ered the lo provide an gure is rep the Exami “loop dist ir broades m the spec In this case istance” is ure 9. See re not per disclose a aminer’s laim 1, as ance betw op distan annotated roduced b ner’s (soli ance.” Re t reasonab ification. , we find divorced Appeal B suaded by [condime relied-upo the Exami een the wa ce.” Reply drawing elow: d line) and ply Br. 4. le construc See In re that the Ap from the r. 4; see a the Appel nt] n “loop ner’s ll and the Br. 3; see to tion, the NTP, 654 pellants’ lso Spec. lants’ Appeal 2012-008529 Application 12/401,700 7 argument and instead agree with the Examiner’s finding that McLean “evidences a loop distance which is less than a diameter of the condiment container.” Answer 10. The Appellants also argue that “McLean teaches away from a loop distance as recited in claim 1 . . . [because McLean’s] condiment sleeve (25) has a flat bottom . . . [and] due to the length of the condiment sleeve . . . a loop with the dimensions as recited in claim 1 . . . would be very susceptible to tearing during insertion.” Appeal Br. 10–11 (emphasis added). A prior-art reference that discloses alternatives does not, simply by preferring some alternatives, “teach away” from the non-preferred alternatives. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Furthermore, “[a] reference does not teach away . . . if it . . . does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed.” Depuy Spine Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (citing In re Fulton, 391 F.3d at 1201). The mere fact that McLean preferably teaches a flat bottom condiment container “so it can stand upright if the user desires to not employ the loop” and a shape that may be “relatively tall or long and narrow so as to substantially cover a french fry,” does not constitute teaching away, as this does not “criticize, discredit, or otherwise discourage” the Appellants’ claimed “loop distance.” See McLean, paras. 17 and 18 (emphasis added). For this reason, we are not persuaded that McLean teaches away from the Appellants’ claimed invention. Appellants argue that “[c]ontrary to the present invention as claimed, McLean does not disclose that the construction of the loop is to provide support for the condiment sleeve . . . against the force of gravity.” Appeal Br. 9 In response to this argument, the Examiner correctly determines that App App “[n]o App thus McL have by D by th is no App eal 2012-0 lication 12 thing with ellants’ arg is not pers With res ean does n been obvi aviss to fa Figure 2 Figure 2 The App e Examin prima fac ellants arg Th configur containe and the food con the loop condime containe 08529 /401,700 in the clai ument is n uasive. Se pect to the ot disclos ous to ma cilitate be of Daviss depicts D ellants arg er does no ie case of ue that e present ed to be d rs are carr loop. The tainer hav is displ nt contai r. McLea m defines ot comme e Appeal claimed t e this limit ke the con tter retenti is reprodu aviss’s slo ue that “[t t result in obviousne invention isplaced in ied by the condimen ing the slo aced into ner is d n does n 8 support re nsurate w Br., Claim erm “slot,” ation, but tainer of M on of the h ced below t 18. ]he combi all the clai ss.” Appe as claime to the con food con t containe t. Similarl the fry isposed w ot disclo lative to g ith the sco s App. the Exam determine cLean, II eld contai : nation of m limitati al Br. 13. d recites t tainment tainer whi r is dispo y, McLean container ithin th se that t ravity.” A pe of the c iner finds s that “[i]t I with a slo ner.” Ans [McLean a ons. Ther In particu hat the lo space. The ch has the sed within discloses and that e French he condi ns. 10. laims and that would t as taugh wer 8. nd Daviss efore, ther lar, the op is two slot the that the fry ment t ] e Appeal 2012-008529 Application 12/401,700 9 container serves to carry the fry container and as noted above, McLean does not disclose that the loop supports the sleeve against longitudinal displacement due to gravity. Accordingly, a person of ordinary skill in the art is not provided any motivation to provide the fry container with a slot, as alleged by the Examiner. Id. at 13–14. The test for obviousness is not whether the claimed invention is expressly suggested in any one or all of the references, but whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). We agree with the Examiner’s determination that “[t]he fact that the loop is formed differently . . . when holding the containers, is not seen to lead one skilled in this art away from the suggestion of Daviss.” Answer 12. Therefore, we are not persuaded by the Appellants’ argument that no prima facie case of obviousness was made. See Appeal Br. 13. The Appellants also argue that “‘[t]he references themselves must provide some teaching whereby the applicant's combination would have been obvious.’ . . . Here, no such teaching is present in the cited references.” Appeal Br. 14 (citing In re Gorman, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991) (italicized emphasis added). The Appellants’ argument is foreclosed by KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), 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 415. The Court noted that an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for Appeal 2012-008529 Application 12/401,700 10 a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. We also agree with the Examiner’s reasoning that “[i]t would have been obvious to make the container of McLean, III with a slot as taught by Daviss to facilitate better retention of the held container.” Answer 8 (emphasis added).1 For these reasons, we are not apprised of error in the rejection of claim 1 and we sustain the rejection of claim 1, including claims 2–5, which stand or fall with claim 1, under 35 U.S.C. § 103(a) as being unpatentable over McLean in view of Daviss. SUMMARY We do not reach the Examiner's decision rejecting claims 1–5 on the ground of nonstatutory double patenting. The Examiner’s decision to reject claims 1 and 5 under 35 U.S.C. § 103(a) as being unpatentable over McLean in view of Daviss is affirmed. The Examiner’s decision to reject claims 2–4 under 35 U.S.C. § 103(a) as being unpatentable over McLean, Daviss, and Cote 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)(1)(iv). AFFIRMED mls 1 We further note that the Examiner’s rationale for combining McLean with Daviss appears to be explicitly supported by Daviss. See Daviss, col. 3, ll. 15–16.