Ex Parte Lepage

Patent Trial and Appeal Board

May 15, 2017

13702970 (P.T.A.B. May. 15, 2017)

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.
13/702,970 02/27/2013 Francis Lepage P03310US21PS 1008
23378 7590 05/15/2017
BRADLEY ARANT BOULT CUMMINGS LLP
INTELLECTUAL PROPERTY DEPARTMENT
1819 FIFTH AVENUE NORTH
BIRMINGHAM, AL 35203-2104
EXAMINER
PERREAULT, ANDREW D
ART UNIT PAPER NUMBER
3788
MAIL DATE DELIVERY MODE
05/15/2017 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 FRANCIS LEPAGE
____________________

Appeal 2017-003943
Application 13/702,970
Technology Center 3700
____________________

Before MICHAEL L. HOELTER, JILL D. HILL, and
PAUL J. KORNICZKY, Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Francis Lepage (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s final decision rejecting claims 15–28 and 30–44. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

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BACKGROUND
Independent claims 15, 31, 34, and 44 are pending. Independent
claim 15, reproduced below, illustrates the claimed invention.
15. A container closure comprising a base and a lid,
said base and said lid being connected by a hinge, said base and
lid each having a footprint, the lid having a periphery, the
footprint of the lid being larger than the footprint of the base, in
which the periphery of the lid is substantially flush fitting with
a periphery of a container region onto which the lid closes, and
in which the base is engageable onto a container by snap-fit
engagement or by screw thread engagement.

REJECTIONS1
I. Claims 15–17, 20–28, and 30–44 stand rejected under 35
U.S.C. § 102(b) as anticipated by Norris (US 7,731,066 B2, iss. June 8,
2010). Final Act. 3.
II. Claims 15–17, 20–28, and 30–44 stand rejected under 35
U.S.C. § 102(b) as anticipated by Kreiseder (US 6,116,477, iss. Sept. 12,
2000). Final Act. 4.
III. Claim 18 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Kreiseder.2 Final Act. 5.

1 The Rejection under 35 U.S.C. § 112 has been withdrawn. Advisory
Action dated Jan. 5, 2016, p. 2. Further, the Examiner includes claims 19
and 29 in the statement of Rejections I and II, although claims 19 and 29
have been canceled. Appeal Br. 38 (Claims App.). We understand this is a
typographical error.
2 The rejection of claim 18 as unpatentable over Norris was withdrawn.
Ans. 3, 4; Reply Br. 4.
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OPINION
Rejection I – Anticipated by Norris
Independent Claims 15, 31, 34, and 44
The Examiner finds that Norris discloses, inter alia, “a base (at 52, 56,
54, 50, 51,” a “lid (at 47, 147)” having a footprint that is “larger than the
footprint of the base (as in fig 7, 1 with base within lid),” a periphery of the
lid 47 being “flush (as in figs 1, 7)” with a container region. Final Act 3.
According to the Examiner, Norris’ base “has an inner periphery (such as
inner periphery adjacent 56) spaced from an outer periphery of the lid (outer
surface of 47/147).” Id. at 4.
Regarding independent claims 15, 31, 34, and 44, an underlying and
decisive issue is whether the Examiner erred in determining that Norris’
surface 50, projection 51, skirt 52, and edge 56 meet the claimed “base,” and
whether Norris’ base unit 20 meets the claimed “container.” Appeal Br. 10–
12.
Appellant argues that “a container must contain something,” and that
Norris’ base unit 20 is not a container because it cannot contain anything,
being open at its top and bottom. Appeal Br. 25.
The Examiner responds that the claims do not positively recite a
container, but rather recite a container closure with a lid flush with a
periphery of a container region and a base engageable with a container. Ans.
4–5. Lacking positive recitation of a container, arguments that Norris lacks
a container are unpersuasive because they argue limitations that are not in
the scope of the claims. Id. We agree with the Examiner regarding claims
15–18, 20–28, and 44, but not regarding claims 30–43, which recite a
container in combination with a container closure.
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Regarding claims 30–43, the Examiner’s rejection considers Norris’
base unit 20 to be the claimed “container.” Norris’ closure is for a container,
and its base unit 20 forms or rests on a dispensing end of the container.
Norris Fig. 1; 1:3–8, 21–24. We are not persuaded that Norris’ base unit 20
cannot be considered a top portion of a container, and we, therefore, are not
persuaded that the Examiner’s finding is in error. In such an instance,
whether Norris’ base is part of the closure or the container appears to be a
matter of word choice. Further, Appellant’s claims do not recite any
necessary structure of the base, such that we cannot determine that Norris’
surface 50, projection 51, skirt 52, and edge 56 fail meet the claimed “base.”
Thus, with Norris’ surface 50, projection 51, skirt 52, and edge 56
forming the claimed “base,” Norris’ lid 47 forming the claimed “lid,” and
Norris’ base unit 20 forming a portion or region of the container, we agree
with the Examiner that Norris discloses a lid hingedly connected to a base,
the lid having a footprint that is larger than a footprint of the base, and a
periphery of the lid being flush fitting with a periphery of the container
region onto which the lid closes. Regarding snap fitting, Norris discloses
“guide ledges 28 and projection 32 to attach and lock the upper unit 40 onto
base unit 20.” Norris 3:38–40.
For the reasons set forth above, we sustain the rejection of
independent claims 15, 31, 34, and 44 as anticipated by Norris.
Dependent Claims 20, 22, 25–27, 30, 32, 33, 36, 39–41, and 43
Appellant does not separately argue the patentability of dependent
claims 20, 22, 25–27, 30, 32, 33, 36, 39–41, and 43, which fall with claims
15, 31, and 34, respectively. See 37 C.F.R. § 41.37(c)(1)(vii).
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Dependent Claims 16, 17, 21, 24, 28, 35, and 42
Appellant argues that Norris does not disclose the footprint of the lid
being larger than the footprint of the base by an amount of at least 10%
(claims 16, 35), the footprint of the lid being larger than the footprint of the
base in the range of 10% – 100% (claim 17), the lid being sized to match the
size of the container shoulder (claim 21), the shape of the base being
different than the shape of the lid (claim 24), or the base being circular and
the lid being ellipsoidal (claims 28 and 42). Appeal Br. 17–18.
Claims 16, and 17, and 35
Regarding claims 16, 17, and 35, the Examiner responds that Norris’
Figure 7 shows “that the footprint is 10% larger.” Ans. 7. This finding is
not supported by substantial evidence because, when a reference does not
disclose that the drawings are to scale and are silent as to dimensions,
findings based on measurement of the drawing features are of little value.
See Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222 F.3d 951, 956
(Fed. Cir. 2000) (The disclosure gave no indication that the drawings were
drawn to scale. “[I]t is well established that patent drawings do not define
the precise proportions of the elements and may not be relied on to show
particular sizes if the specification is completely silent on the issue.”).
The Examiner also responds that, based on Appellant’s own statement
that
The extent to which the footprint of the lid is larger than
the footprint of the base can be selected based on the particular
requirements of a container pack. For example, the lid may be
approximately 10% larger; larger by an amount in the range of
10% to 100%; larger by an amount in the range of 100% to
200%; larger an amount in the range 200% to 500%; or larger
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by an amount in the range 500% to 1,000%. The size
difference may fall outside of these ranges if appropriate.
(Spec. p. 1 ll. 24–29), the claimed features of claims 16 and 17 lack
criticality and would have been obvious. Ans. 7. Regardless of whether the
features of claims 16, 17, and 35 are obvious, the Examiner has rejected
claims 16, 17, and 35 under 35 U.S.C. § 102(b) as anticipated by Norris, and
“[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. v. Union Oil Co. of California, 814 F.2d 628,
631 (Fed. Cir. 1987).
We do not sustain the rejection of claims 16, 17, and 35 as anticipated
by Norris.
Claims 23, 24, 37, and 38
Claims 23 and 37 recite “the shape of the base [being] substantially
the same as the shape of the lid,” and claims 24 and 38 recite “the shape of
the base [being] different [than] the shape of the lid.” The Examiner finds
that Norris’ Figures 2 and 3 illustrates the shape of the corresponding “base”
50, 51, 52, 56 being substantially the same as the shape of its lid 47, yet the
shapes differing slightly because the lid 47 includes a cutout portion to the
right of hinge 58 in Figure 3. Appellant disagrees. Appeal Br. 17, Reply Br.
9–10. We see no error in the Examiner’s finding that the plan view of
Norris’ Figure 3 shows the lid 47 and base 50, 51, 52, 56 having
substantially the same, yet slightly different, shapes. We sustain the
rejection of claims 23, 24, 37, and 38 as anticipated by Norris.

Claims 21, 28, and 42
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Considering Norris’ base to include surface 50, projection 51, skirt 52,
and edge 56, and its container to include base unit 20, Norris’ lid 47 is sized
to match a shoulder of its container 20. See Norris Figs. 1, 7. Further,
because a circle is an ellipse, we agree with the Examiner that Norris’ base
50, 51, 52, 56 is circular and its lid 47 is ellipsoid. See Ans. 8; Norris Fig. 3
(showing both elements being substantially circular). We, therefore, sustain
the rejection of claims 21, 28, and 42 as anticipated by Norris.
Rejection II – Anticipated by Kreiseder
Independent claims 15, 31, 34, and 44
The Examiner finds that Kreiseder discloses a “base (at 30, 34),” a
“lid (at 20)” having a footprint that “is larger than the footprint of the base
(as in fig 3, 7),” the lid 20 having a periphery that is flush with a periphery
of a container region “(elements 12 with a body as well as with ‘container’
in col. 2; with top panel at top of 12, shoulder on 12 flush with lid as in fig 7,
1).” Final Act. 4. According to the Examiner, “the base of Kreiseder has an
inner periphery (such as inner periphery adjacent 30 in fig 7) spaced from an
outer periphery of the lid (outer surface of 20).” Id.
Regarding independent claims 15, 31, 34, and 44, an underlying and
decisive issue is whether the Examiner erred in determining that Kreiseder’s
circular projection ring 30 and edge 34 meet the claimed “base,” and
Kreiseder’s base 12 meets the claimed “container.”
Appellant again argues that “a container must contain something,” and
that Kreiseder’s base 12 cannot contain anything because it is open at its top
and bottom. Appeal Br. 25.
The Examiner again responds that the claims do not positively recite a
container, but rather recite a container closure with a lid flush with a
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periphery of a container region and a base engageable with a container. Ans.
10. Lacking positive recitation of a container, arguments that Kreiseder
lacks a container are unpersuasive because they argue limitations that are not
in the scope of the claims. Id. We agree with the Examiner regarding
claims 15–18, 20–28, and 44, but not regarding claims 30–43, which recite a
container in combination with a container closure.
Regarding claims 30–43, the Examiner’s rejection considers
Kreiseder’s base 12 to meet the claimed “container.” Kreiseder’s closure is
for a container, and its base 12 forms or rests on a dispensing end of the
container. Kreiseder 1:11–12. We are not persuaded that Kreiseder’s base
12 cannot be considered a top portion of a container, and we, therefore, are
not persuaded that the Examiner’s finding is in error. In such an instance,
whether Kreiseder’s base is part of the closure or the container appears to be
a matter of word choice.
Appellant argues that the ordinary meaning of the term “base”
includes “the bottom of something considered as its support” or
“foundation,” and that Kreiseder’s ring 30 is not a base because it is not a
bottom of the closure and does not support the closure. Appeal Br. 26.
Rather, Appellant argues, Kreiseder’s ring 30 is part of its cap and serves to
attach/assemble its cap 20 to its base 12. Id. We are not persuaded by this
argument because, if we consider Kreiseder’s base 12 to be a portion of its
container, then Appellant has failed to explain why Kreiseder’s ring 30 is not
a bottom of the cap 20 that supports the cap 20 on the container 12.
Thus, with ring 30 forming the claimed “base,” Kreiseder’s cap 20
forming the claimed “lid,” and Kreiseder’s base 12 forming a portion or
region of the container, we agree with the Examiner that Kreiseder discloses
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a lid hingedly connected to a base, the lid having a footprint that is larger
than a footprint of the base, and a periphery of the lid being flush fitting with
a periphery of the container region onto which the lid closes. Regarding
snap fitting, Kreiseder discloses its base (ring 30) being inserted into a
channel 10 of its container (base 12), with a barb 44 of the base (ring 30)
engaging a wall 46 of the channel 18. Kreiseder 2:45–52. The barb 44
provides a snap fit.
For the reasons set forth above, we sustain the rejection of
independent claims 15, 31, 34, and 44 as anticipated by Kreiseder.
Dependent Claims 20, 22, 25–27, 30, 32, 33, 36, 39–41, and 43
Appellant does not argue the separate patentability of dependent
claims 20, 22, 25–27, 30, 32, 33, 36, 39–41, and 43, which fall with claims
15, 31, and 34, respectively. See 37 C.F.R. § 41.37(c)(1)(vii).
Dependent Claims 16, 17, 20–28, 30, 32, 33, and 35–43
Appellant argues that Kreiseder does not disclose the footprint of the
lid being larger than the footprint of the base by an amount of at least 10%
(claims 16, 35), the footprint of the lid being larger than the footprint of the
base in the range of 10% – 100% (claim 17), the lid being sized to match the
size of the container shoulder (claim 21), the shape of the base being
different than the shape of the lid (claim 24), or the base being circular and
the lid being ellipsoidal (claims 28 and 42). Appeal Br. 16–17.
Claims 16, and 17, and 35
Regarding claims 16 and 17, the Examiner responds that, regarding
claim 16, Kreiseder’s Figure 7 shows “that the footprint is at least 10%
larger.” Ans. 12. This finding is not supported by substantial evidence
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because, when a reference does not disclose that the drawings are to scale
and are silent as to dimensions, findings based on measurement of the
drawing features are of little value. See Hockerson-Halberstadt, Inc. v. Avia
Group Int’l, 222 F.3d 951, 956 (Fed. Cir. 2000) (The disclosure gave no
indication that the drawings were drawn to scale. “[I]t is well established
that patent drawings do not define the precise proportions of the elements
and may not be relied on to show particular sizes if the specification is
completely silent on the issue.”).
As above regarding Norris, the Examiner also responds that, based on
Appellant’s own statement that
The extent to which the footprint of the lid is larger than
the footprint of the base can be selected based on the particular
requirements of a container pack. For example, the lid may be
approximately 10% larger; larger by an amount in the range of
10% to 100%; larger by an amount in the range of 100% to
200%; larger an amount in the range 200% to 500%; or larger
by an amount in the range 500% to 1,000%. The size
difference may fall outside of these ranges if appropriate.
(Spec. p. 1 ll. 24–29), the claimed features of claims 16 and 17 lack
criticality and would have been obvious. Ans. 11–12. Regardless of
whether the features of claims 16, 17, and 35 are obvious, the Examiner has
rejected claims 16, 17, and 35 under 35 U.S.C. § 102(b) as anticipated by
Kreiseder, and “[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., 814 F.2d at 631.
We do not sustain the rejection of claims 16, 17, and 35 as anticipated
by Kreiseder.
Claims 23, 24, 37, and 38
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Claims 23 and 37 recite “the shape of the base [being] substantially
the same as the shape of the lid,” and claims 24 and 38 recite “the shape of
the base [being] different [than] the shape of the lid.” The Examiner finds
that Kreiseder’s Figure 3 illustrates that the shape of its base 30 is
substantially the same as the shape of its lid 20, yet differs in that the lid 20
includes lip. Appellant disagrees. Appeal Br. 28, Reply Br. 9–10. We see
no error in the Examiner’s finding that a plan view of Kreiseder’s closure 10
would show the lid 20 and base 30 having substantially the same, yet
slightly different, shapes. We sustain the rejection of claims 23, 24, 37, and
38 as anticipated by Kreiseder.
Claims 21, 28, and 42
Kreiseder’s lid 20 is sized to match a shoulder of its container 12. See
Norris Figs. 1, 7. Further, because a circle is an ellipse, we agree with the
Examiner that Kreiseder’s base 30 is circular and its lid 20 is ellipsoid. See
Ans. 13; Kreiseder Fig. 3 (showing both elements being substantially
circular). We, therefore, sustain the rejection of claims 21, 28, and 42 as
anticipated by Kreiseder.
Rejection III – Unpatentable over Kreiseder
Claim 18 recites the footprint of the lid being “larger than the
footprint of the base by an amount in the range 100% to 200%.” Appeal Br.
37 (Claims App.). The Examiner concludes that, inter alia, it would have
been obvious “to modify the size/proportion because it has been held that a
change in size proportion on the basis of its suitability for the intended use
was an obvious extension of the prior teachings.” Id. (citing In re Rose, 220
F.2d 459, 463 (CCPA 1955)). The Examiner further concludes that, where
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the only difference between the prior art and the claims was a recitation of
relative dimensions that do not cause the device to “perform differently than
the prior art device, the claimed device [is] not patentably distinct from the
prior art device.” Id. (citing Gardner v. TEC Systems, Inc., 725 F.2d 1338
(Fed. Cir. 1984), cert. denied, 469 U.S. 830 (1984)).
Appellant again argues that Kreiseder fails to teach the subject matter
of claim 15, from which claim 18 depends. Appeal Br. 34. For the reasons
set forth above, we are not persuaded by this argument. Regarding the
Examiner’s reliance on In re Rose, Appellant argues that this case does not
support the Examiner’s contention that “relative proportions of individual
components of a claimed article of manufacture cannot patentably
distinguish what is claimed from the prior art. Id. at 35. Regarding the
Examiner’s reliance on Gardener, which held that dimensional limitations
that did not change the function of a device are not patentable, Appellant
argues that the Examiner failed to explain “why the claimed closure ‘would
not perform differently than the prior art.’” Id. Appellant contends that “use
of a large lid that greatly overlaps the base and fits flush on the container
instead of the case [performs differently] than the closures in the cited art,
such as in minimizing the material required to make the base while forming
a seal on the container with large surface area.” Id. at 35–36.
Based on Appellant’s own statement that “[t]he extent to which the
footprint of the lid is larger than the footprint of the base can be selected
based on the particular requirements of a container pack” (Spec. p. 1, ll. 24–
25), which implies that such considerations and the implementation thereof
were known to those skilled in the art, we agree that a rational basis exists
for the Examiner’s conclusion of obviousness. Further, lacking an
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explanation of why the claimed closure would perform differently than the
prior art, the results of changing relative sizes would be predictable and,
thus, obvious. Minimizing material does not change how the lid performs its
function.
Appellant next argues that the Examiner’s obviousness rejection fails
to establish the level of ordinary skill in the art. Appeal Br. 36. This
argument is not persuasive, because we are aware of no requirement that an
obviousness rejection make an explicit finding regarding the level of skill in
the art. Rather, the level of ordinary skill in the art may be established
implicitly in view of the prior art applied. See, e.g., PowerOasis, Inc. v. T-
Mobile USA, Inc., 522 F.3d 1299, 1304 (Fed. Cir. 2008) (stating that
examiners “are assumed to have some expertise in interpreting the
references and to be familiar from their work with the level of skill in the
art.”) (quoting Am. Hoist & Derrick Co. v. Sowa & Sons, 725 F.2d 1350,
1359 (Fed. Cir. 1984)).
We sustain the rejection of claim 18 as obvious over Kreiseder.

DECISION
We AFFIRM the rejection of claims 15, 20–28, 30–34, and 36–44
under 35 U.S.C. § 102(b) as anticipated by Norris.
We REVERSE the rejection of claims 16, 17, and 35 under 35 U.S.C.
§ 102(b) as anticipated by Norris.
We AFFIRM the rejection of claims 15, 20–28, 30–34, and 36–44
stand rejected under 35 U.S.C. § 102(b) as anticipated by Kreiseder.
We REVERSE the rejection of claims 16, 17, and 35 under 35 U.S.C.
§ 102(b) as anticipated by Kreiseder.
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We AFFIRM the rejection of claim 18 under 35 U.S.C. § 103(a) as
unpatentable over Kreiseder.
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).

AFFIRMED-IN-PART