Ex Parte Brozell

Patent Trial and Appeal BoardJun 20, 2014

12330163 (P.T.A.B. Jun. 20, 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. 12/330,163 12/08/2008 Leonora M. Brozell 25029 1285 76254 7590 06/23/2014 REISING, ETHINGTON, BARNES, KISSELLE, P.C. P.O. BOX 4390 TROY, MI 48099-4390 EXAMINER ALLEN, JEFFREY R ART UNIT PAPER NUMBER 3781 MAIL DATE DELIVERY MODE 06/23/2014 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 LEONORA M. BROZELL ____________ Appeal 2012-006016 Application 12/330,163 Technology Center 3700 ____________________ Before: LYNNE H. BROWNE, JILL D. HILL, and TIMOTHY J. GOODSON, Administrative Patent Judges GOODSON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Leonora M. Brozell (Appellant) appeals under 35 U.S.C. § 134(a) from the rejection of claims 1–15 and 19. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The claims are directed to a child-resistant container. Spec. p. 1, ll. 2-3. Claim 1 illustrates the subject matter on appeal and is reproduced below: Appeal 2012-006016 Application 12/330,163 2 1. A package for storing and dispensing products, which includes: a container of one-piece integrally molded plastic construction having a generally rectangular body including an open bottom and a top wall extending across said body opposite said open bottom with a dispensing opening in said top wall, and also having a lid pivotably coupled by a hinge to said body at one edge of said top wall, a plug on said lid for sealing receipt within said dispensing opening in a closed position of said lid over said top wall, and cooperating child-resistant latch elements at a front of said lid opposite said hinge and at a front of said body opposite said hinge for selectively latching said lid in said closed position overlying said top wall, and a bottom plug selectively receivable by press fit into said open bottom of said body after introducing products into said body through said open end. PRIOR ART The Examiner relies on the following evidence: Petrick Toren Boots Vahrmeyer US 6,343,695 B1 US 5,971,154 US 2006/0000833 A1 US 2003/0097790 A1 Feb. 5, 2002 Oct. 26, 1999 Jan. 5, 2006 May 29, 2003 GROUNDS OF REJECTION 1. Claims 1, 2, 9-13 and 19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Boots in view of Toren. 2. Claims 3-6 and 15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Boots in view of Toren and further in view of Vahrmeyer. 3. Claims 7, 8, and 14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Boots in view of Toren and further in view of Petrick. Appeal 2012-006016 Application 12/330,163 3 OPINION Claims 1 and 11 are the only independent claims in this appeal, and these claims are subject to the same ground of rejection. Ans. 4. Appellant argues these independent claims together, and does not separately argue any of the dependent claims. App. Br. 6-7, 15. We select Claim 1 as representative of the issues Appellant presents in this appeal. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). The Examiner finds that Boots discloses, in a first embodiment shown in Figures 1-7, a package as recited in claim 1, except for the “top wall extending across said body opposite said open bottom with a dispensing opening in said top wall,” the “plug on said lid for sealing receipt within said dispensing opening in a closed position of said lid over said top wall,” and the “bottom plug selectively receivable by press fit into said open bottom of said body after introducing products into said body through said open end.” The Examiner finds that the top wall and plug limitations are disclosed in a second embodiment of Boots shown in Figures 8-11, and that modifying the first embodiment of Boots to include these elements of the second embodiment would have been obvious as a simple substitution of one known element for another to obtain a predictable result. Ans. 4-5. Further, the Examiner finds that Toren teaches the bottom plug limitation and that it would have been obvious to manufacture the Boots package with an open bottom and plug, as taught by Toren, so that the package could be filled after the latch elements are secured. Ans. 5. Appellant argues that the Examiner has not made out a prima facie case of obviousness because the cited combination would not result in a Appeal 2012-006016 Application 12/330,163 4 container that includes all of the limitations of claim 1. App. Br. 7-10. Specifically, Appellant argues that, contrary to the Examiner’s findings, the second embodiment of Boots does not disclose a container with a top wall because the portion to which the Examiner points for this limitation is a closure for a container, not a container. App. Br. 9. Thus, Appellant argues that the combination the Examiner proposes would only yield a closure having a top wall, not a container having a top wall. App. Br. 9-10. The Answer clarifies that the Examiner finds the rim 22 of the first embodiment in Boots to be a “top wall,” albeit one that does not extend over the interior of the container. Ans. 8; see also Boots ¶ 31, Fig. 1. We note that Boots discloses that the container can be injection molded to form a monolithic, one-piece structure. Boots ¶¶ 43, 50. The upper portion 122 of the second embodiment extends over the interior of the container. Boots, Figs. 8, 11. Thus, the Examiner’s modification of the first embodiment of Boots is to “combine the teaching of the top wall of the second embodiment with the top wall of the first embodiment.” Ans. 9. We understand this combination of the first and second embodiments of Boots to yield a container having a top wall extending across the body. Citing a dictionary defining “wall” as “a material layer enclosing space,” Appellant argues that the rim 22 of Boots’ first embodiment is not a “top wall” because the rim only defines an opening and does not enclose it. Reply Br. 4. However, Appellant’s proffered dictionary definition is inconsistent with Appellant’s own Specification, in which the top wall 22 includes a dispensing opening 24 and therefore does not enclose the space beneath it. Spec., p. 3, ll. 17-20, Fig. 2. Accordingly, this argument is unpersuasive. Appeal 2012-006016 Application 12/330,163 5 Appellant argues that a skilled artisan would not seek to combine the two embodiments of Boots because a skilled artisan would understand that the rotatable, cylindrical closure of the second embodiment is not compatible with a rectangular, flip-lid closure. App. Br. 12. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). The Examiner’s rejection is not based on a bodily incorporation of the closure in the second embodiment onto the container of the first embodiment. As the Answer explains, “[t]he entire upper portion of the second embodiment would not be applied to the first embodiment but rather the teaching of the opening structure of the second embodiment would be applied to the first embodiment.” Ans. 9. In particular, the Examiner’s proposed modification to the first embodiment of Boots is to include the top wall extending across the body with the “dispensing opening and plug” of the second embodiment. Ans. 5. Because the Examiner’s rejection does not rely on combining the entire circular/cylindrical top of the second embodiment with the container of the first embodiment, Appellant’s incompatibility argument is not relevant to the rejection that the Examiner made. Appellant asserts that the Examiner’s incorporation into Boots’ first embodiment of only certain features of the second embodiment constitutes impermissible hindsight unsupported by any explanation of why these features would be chosen. Reply Br. 5-6. However, the Examiner did provide a reason for this proposed modification—to prevent too much Appeal 2012-006016 Application 12/330,163 6 material from exiting through the opening during use. Ans. 9. Appellant has not refuted this reasoning. Therefore, Appellant’s arguments are not persuasive. Appellant argues that a skilled artisan would not seek to combine the two embodiments of Boots because the focus of Boots is an improved lid lock, and there is no reason why a skilled artisan would combine aspects of the embodiments that are unrelated to the lid lock. App. Br. 12-13. Appellant’s argument is not persuasive, because the teachings of Boots cannot be narrowed to only the portion that Appellant argues is the focus of its disclosures. “Patents are part of the literature of the art and are relevant for all they contain.” In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991). Appellant argues that combining Boots’ two embodiments would render Boots inoperable because the smaller opening of the second embodiment would result in jamming of the pills that Boots’ first embodiment is intended to store. App. Br. 13-14. The Examiner responds that this argument is based on “allegation without supporting evidence” insofar as there is no indication in Boots that capsules would not fit through the opening of the second embodiment, and that Boots’ container could be used for storing materials other than capsules. Ans. 10. We agree that the pill jamming problem is speculative, and would simply depend on the size of the opening and the size of the pills. Even assuming that a skilled artisan was only considering using Boots for storing pills, we see no reason why the skilled artisan would be unable to make the opening large enough to accommodate the pills. We therefore are not persuaded by Appellant’s argument that the proposed modification of Boots would render it inoperable. Appeal 2012-006016 Application 12/330,163 7 Appellant argues that modifying Boots to include a pluggable bottom would add expense and complexity, which a skilled artisan would want to avoid. App. Br. 13; Reply Br. 7. However, “[t]hat a given combination would not be made by businessmen for economic reasons does not mean that persons skilled in the art would not make the combination because of some technological incompatability. Only the latter fact would be relevant.” In re Farrenkopf, 713 F.2d 714, 718 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983)). Appellant argues that the product the Examiner proposes could not be produced because it could not be removed from the mold. Reply Br. 7. This argument, which was presented for the first time in the Reply, is not adequately supported. Appellant does not explain why the product as proposed by the Examiner would necessarily give rise to a mold lock condition. Accordingly, Appellant has not provided any persuasive evidence or arguments in rebuttal to the obviousness rejection. We therefore sustain the Examiner’s rejection of claim 1-15 and 19. DECISION We AFFIRM the Examiner’s rejections of claims 1-15 and 19. 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 pgc