Hayes Soloway, P.C.

Case Results

Ex parte David Deans

March 2012

STATEMENT OF THE CASE

(reprinted from the Court's opinion)

Appeal 2012-001335
Application 12/256,393


Appellant appeals under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 1, 2, and 4-17. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.

Claim 1, reproduced below, is illustrative of the claimed subject matter.


1. A powder dispensing container comprising:
a separator isolating a powder storage chamber from a powder dispensing chamber;
a lid hingedly coupled to the powder dispensing chamber and configured to have an opened position and a closed position; and
a metering valve supported by the separator and coupled to the lid such that the valve opens when the lid is moved from an opened position to a closed position and closes when the lid is moved from a closed position to an opened position, wherein the metering valve is configured to allow a controlled amount of powder to pass from the powder storage chamber to the powder dispensing chamber when the lid is moved from the closed position to the opened position.


Rejections
I. Claims 1, 2, 4-11, and 13-17 are rejected under 35 U.S.C. § 103(a) as unpatentable over Allen and Glynn.
II. Claim 12 is rejected under § 103(a) as unpatentable over Allen, Glynn, and Majewski.
III. Claims 1, 2, 4-12, and 14-17 are provisionally rejected under the doctrine of nonstatutory obviousness-type double patenting in view of claims 1-12, 27-29, and 31 of copending application 12/419,237.


OPINION

The Examiner found that Allen teaches the powder-dispensing container of independent claim 1 except for the valve 23 coupled to the lid 12 such that the valve opens when the lid is closed and closes when the lid is opened. Ans. 6-7. The Examiner found that Glynn teaches a lid 71 coupled to a metering valve 77, such that the valve opens when the lid is closed, and vice versa. Ans. 7. The Examiner concluded that it would have been obvious to have coupled the lid and valve in Allen, “under the teachings of Glynn” to “repeatedly yield the same volume of material in the dispensing chamber with each actuation of the valve” and to “automatically output the metered volume of material with each opening of the lid.” Id. The Examiner's proposed combination appears to modify the device of Allen to include an extended portion of the lid to bear down on the lug 29 of the spring valve 23 when the lid is closed, holding the spring valve 23 open. See Ans. 7; see also Glynn, col. 4, ll. 62-68, col. 5, ll. 13-16, 22-26, fig. 3 (describing an extended portion 75 of the lid pushing down on valve stem 99 to push open the valve 77 when the lid is closed).


Appellant argues, in relevant part, that the suggested combination would not have been obvious because it would “result in a device that significantly diminishes the user control over the amount of powder
dispensed through the valve and thereby defeat one of the primary objectives of Allen.” Reply Br. 4-5 (emphasis original). We review the Examiner's rejection in light of this argument.

The Examiner's first reason to modify the device of Allen is to allow the device to “repeatedly yield the same volume of material in the dispensing chamber with each actuation of the valve.” Ans. 7. Yielding
same volume of material with each actuation of the valve has nothing to do with whether the valve itself is actuated by a person pressing on the valve (as in Allen) or by a protrusion on the lid pressing on the valve (as in the Examiner's proposed combination); the valve is the same and operates under the same principles either way. Accordingly, the Examiner's first reason lacks rational underpinnings because there is no link between the reason for modification and the proposed modification.


The Examiner's second reason to modify the device of Allen is to allow the device to “automatically output the metered volume of material with each opening of the lid.” Ans. 7. However, by holding the spring valve
open while the lid is closed, free communication between the powder compartment 17 and the upper compartment (between lid 12 and cap 16) will allow some powder to accumulate in the upper compartment while the lid is closed, rendering the total volume of material no longer automatically
metered but subject to the variables of time and motion as powder moves through the open spring valve while the lid is closed.1 The spring valve is intended to hold powder in a separate compartment (17) so that when the case is opened, powder does not spill (because there is no powder in the upper compartment). Allen, p. 2, ll. 3-6. The Examiner's proposed modification, therefore, would tend to allow a variable amount of powder to be present when the case is opened. This powder could then spill or, at the
very least, would be present in the upper compartment such as to render the amount of powder in the upper compartment after valve actuation variable. The Examiner does not explain why the proposed modification would be nevertheless obvious in view of these negative implications of the proposed
modification to Allen. Accordingly, the Examiner's second reason lacks rational underpinning because the proposed modification would instead frustrate the proposed reason for modification because it would allow the user less control over the metered amount of dispensed powder.

The Examiner's obviousness rejection of claims 1, 2, 4-11, and 13-17 is premised on these reasons lacking rational underpinning. See Ans. 6-11. The Examiner's obviousness rejection of claim 12 likewise relies on these reasons and the Examiner's proposed further modification in view of Majewski does not cure this underlying deficiency. See Ans. 11.


DECISION

We reverse the Examiner's decision regarding the obviousness rejections of claims 1, 2, and 4-17. We do not reach the Examiner's provisional obviousness-type double patenting rejection. See Ex parte
Moncla, 95 USPQ2d 1884, 1885 (BPAI 2010).

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Nick Soloway

Nick Soloway, an AV Peer Review Rated* attorney, is one of 200 practicing patent attorneys in the United States to be included in Woodward/White's Best Lawyers in America.
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