Ex parte Dart

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,, Board of Patent Appeals
4 and Interferences

2 Informative

Sr” Opinion
The opinion in support of the decision being entered today is not binding
precedent of the Board

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte ROBERT C. DART,
RYAN P. GINGRAS and TOOD ATKINS

Appeal 2007-1325
Application 10/065,722
Technology Center 3781

Decided: August 22, 2007

Before: MICHAEL R. FLEMING, Chief Administrative Patent Judge,
| FRED E. McKELVEY, Senior Administrative Patent Judge, and
JOSEPH A. FISCHETTI, Administrative Patent Judge.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

A. Statement of the case

Appellants Robert C. Dart, Ryan P. Gingras and Todd Atkins
(hereafter "Dart") seek review under 35 U.S.C. § 134(a) of a rejection of
claims 3, 9-11, 27-29, 36-39, 44-50, 55-59, 63, 68-71, 75-77, 80-83, and
88-95. There are other claims in the application. Some claims are objected

to as depending from rejected claims. Other claims have been allowed. The

Appeal 2007- 1325
Application 101065,722
status of all pending claims as of the date of the Examiner's Answer is
identified in Appendix 1.
We have jurisdiction under 35 U.S.C. 5 6(b). While the rejection on
appeal is not a final rejection, Dart's claims have been twice rejected within
the meaning of 35 U.S.C. 5 134.
The application on appeal was filed on 13 November 2002 and was
published as Published Application 200310089714 A 1 on 15 May 2003.
The four-digit paragraph numbers of the Specification as filed do not
coincide with the four-digit paragraph number of the application as
published. Since the Appeal Brief refers to the four-digit paragraph numbers
of the specification, as filed, we will do likewise.
Dart claims benefit of an earlier filing date based on (1) Provisional
Application 601350,706, filed 13 November 200 1, (2) Provisional
Application 601350,875, filed 22 January 2002 and (3) Provisional
Application 601410,380, filed 13 September 2002.
The real party in interest is Dart Container Corporation. Appeal
Brief 1.
The Examiner rejected claims 3, 9-1 1,27-29,36-40,44-50,55-59,63,
68-71, 75-77, 80-83, and 88-95 under 35 U.S.C. 5 103(a) as being
unpatentable over Freek and Waterbury. (The reader should know that no
references to et al. are made in this opinion.)
The Examiner has also rejected claims 49-59 under 35 U.S.C. $ 112,
second paragraph, as being indefinite.

Appeal 2007- 1325
Application 101065,722
The following prior art was relied upon by the Examiner.
Name 	Patent Number 	Issue Date
Waterbury 	US 4,232,797 	Nov. 11, 1980
Freek 	US 5,996,837 	Dec. 07, 1999
In addition to the prior art cited by the Examiner, we also refer to the
following additional prior art.
Name 	Patent Number 	Issue Date
DeMars 	US 4,899,902 	Feb. 13, 1990
Mueller 	US 5,415,312 	May 16, 1995
Lane 	US 5,490,609 	Feb. 13, 1996
Aichert 	FR 2 736 620 	Jan. 17, 1997
All prior art cited above is prior art under 35 U.S.C. 5 102(b).
B. Record on appeal
In deciding this appeal, we have considered only the following
documents:
1. 	Specification, including original claims.
2. 	Drawings.
3. 	Office Action entered 26 January 2006
4. 	Notice of Appeals filed 24 April 2004.
5. 	The Appeal Brief filed 26 June 2006.
6. 	The Examiner's Answer entered 26 October 2006.
7. 	Freek.
8. 	Waterbury.

Appeal 2007-1325
Application 101065,722
9. 	DeMars.
10. Aichert
11. Mueller.
12. Lane.
13. 	PTO bibliographic data sheet for the application on appeal.
14. 	Published Application 2003100897 14 A 1.
15. 	Pending claims as reproduced in the Claims Appendix of
the Appeal Brief filed 26 June 2006.
C. Issues
A first issue on appeal is whether Dart has sustained its burden of
showing that the Examiner erred in rejecting the rejected claims on appeal as
being unpatentable under 3 5 U.S.C. 5 103(a) over the prior art.
According to Dart, the first issue turns on (1) whether Freek and
Waterbury are "analogous art," (2) if so, whether there is a teaching,
suggestion or motivation to combine Freek and Waterbury, and (3) if so,
whether the combination of Freek and Waterbury "teaches" the claimed
invention.
What is not an issue in the appeal is whether the claimed invention
has been a commercial success. Dart has presented no evidence of
commercial success and accordingly has waived its opportunity to have
commercial success considered on appeal.
A second issue on appeal is whether the subject matter of claim 84
and claims which depend from claim 84 are unpatentable under 35 U.S.C.
tj 1 12, second paragraph, as being indefinite. 	37 C.F.R. tj 41.50(b) (2006).

Appeal 2007-1325
Application 101065,722
What is not an issue on appeal is whether the Examiner erred in
rejecting claims 49-59 as being unpatentable under 35 U.S.C. 5 1 12, second
paragraph, for failure to particularly point out and distinctly claim the
invention.
In the Appeal Brief, Dart says that it is "not appealing this rejection in
this proceeding." (Appeal Brief 4 n.2).
However, in the Notice of Appeal, Dart says that it appeals from the
last decision of the Examiner.
Contrary to Dart's assertion that it is not appealing the 5 112 rejection,
Dart has appealed the rejection, but has abandoned the appeal as to the
rejection.
Accordingly, the appeal will be dismissed as to claims 49-59 and
therefore there is no fwrther need to address or consider the Examiner's
5 112, second paragraph, on the merits.
D. Findings of fact
The following findings of fact are believed to be supported by a
preponderance of the evidence. To the extent that a finding of fact is a
conclusion of law, it may be treated as such. Additional findings as
necessary may appear in the discussion portion of the opinion.
The invention
The invention can be understood by references to Figs. 1 , 2 and 6, and
independent claims 83-84 and 88-89.
L

Appeal 2007-1325 Application 10/065,722
1
Drawings
142
140
138
72
48
144
24
136
70
130
14
72
154
134
156
- 30
150
26
44
50
158
52
28
22
54
20
152
-
12
42
158
2
Dart Fig. 1-Dart lid with cap in closed position 3
6
44
10
132

Appeal 2007-1325 Application 10/065,722
60 64
40
62
70
110
114
46
48
112
66
24
30
26
44
116
112
102
22
94
114
28
42
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110
100
120
92
90
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12
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142
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135
54
130
154
150
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158
146
136
52
133
152
156
148
158
1
2
3
Dart Fig. 2-Dart lid with cap in open position
7
10
118
96
44
116
20
50

Appeal 2007-1325
Application 10/065,722
Dart Fig. 6A-Lid 	with cap in closed position and showing chamber
Claims 83-84 and 88-89
Claims 83-84 and 88-89 are representative of the claimed invention
[some indentation, drawing element numbers and footnote material added].
Claim 83
A disposable, recloseable' lid [Figs. 1-2 101 comprising:
a dome-shaped cap [Figs. 1-2 121 sized to overlie and
substantially cover the open top of a cup [not shown], the cap 12
comprising
a mounting recess [Fig. 2 461,
an upper surface [Fig. 2 401,
' In the claims, as reproduced in the Claims Appendix of the Appeal Brief,
Dart uses the term "reclosable". The specification uses the term
"recloseable." See, e.g., Specification 1 7 000 1. We have reproduced the
claims using the term found in the Specification.

Appeal 2007-1325
Application 101065,722
a side wall [Fig. 2 1121 at least partially encircling the
upper surface [Fig. 2 401 and terminating in a top wall
[Fig. 2 1141, and
a drink opening [Fig. 2 9612 located in the top wall
[Fig. 2 1141;
a mounting ring [Figs. 1-2 201 connected to the cap
[Figs. 1-2 121 for mounting the cap to a cup; and
a tab closure [Fig. 2 141 comprising a mounting plug
[Fig. 2 SO] and a drink plug [Fig. 2 541 connected by a strap [Fig. 2
521, the mounting plug [Fig. 2 SO] sized to be received within the
mounting recess [Fig. 2 461, and the drink plug [Fig. 2 541 sized to be
received within the drink opening [Fig. 2 541 wherein the user can
13 	open and close the lid by removing or inserting the drink plug from
14 	the drink opening.
15 	Claim 84
16 	A disposable, recloseable lid [Figs. 1-2 101 comprising:
17 	a dome-shaped cap [Figs. 1-2 121 sized to overlie and
18 	substantially cover the open top of a cup [not shown], the cap 12
19 	comprising
20 	an upper surface [Fig. 2 401,
21 	a drink opening [Fig. 2 961, and
22 	a mounting recess [Fig. 2 461 formed therein;
In the Specification, element 96 is referred to as "[tlhe dispensing
aperture." Specification 9 10049.

Appeal 2007-1325
Application 101065,722
1 	a mounting ring [Fig. 1 201 connected to the cap 12 below the
upper surface 40 and for mounting the cap 12 to a cup [not shown];
and
a tab closure [Fig. 2 401 comprising
a mounting plug [Fig. 2 501 and
a drink plug [Fig. 2 541
connected by a strap [Fig. 2 521,
the mounting plug [Fig. 2 501 sized to be received within the
mounting recess [Fig. 2 461, and
the drink plug [Fig. 2 541 sized to be received within the drink
opening [Fig. 2 961 where the user can open and close the lid by
removing or inserting the drink plug from the drink opening;
13 	wherein the mounting recess [Fig. 2 461 has a bottom wall
14 	[Fig. 2 641 and the mounting plug has a bottom wall [Fig. 2 1301,
15 	which is spaced above the mounting recess bottom wall [Fig. 2 641
16 	when the mounting plug is received within the mounting recess
17 	[Fig. 2 461 to define a chamber [Fig. 6A area between mounting plug
18 	bottom wall 130 and mounting recess bottom wall 463]therebetween.
19 	Claim 88
20 	A disposable, recloseable lid [Figs. 1-2 101 comprising:
Insofar as we can tell, the claim language "to define a chamber
therebetween" has no direct antecedent basis in the descriptive portion of the
specification. However, see original claim 40. According to Dart, the
quoted limitation is supported in the specification at page 9 , 7 0053,
lines 8- 10 and Figure 6 [sic-Figure 	6A]. Appeal Brief 3. Later in the
opinion we reject claim 84 as being indefinite.

Appeal 2007-1325
Application 101065,722
a dome-shaped cap [Figs. 1-2 121 sized to overlie and
substantially cover the open top of a cup [not shown], the cap
[Figs. 1-2 101 comprising
an upper surface [Fig. 2 401,
a drink opening [Fig. 2 961, and
a mounting recess [Fig. 2 461 formed therein;
a mounting ring [Figs. 1-2 201 connected to the cap
[Figs. 1-2 121 below the upper surface [Fig. 2 401 and for mounting
the cap [Figs. 1-2 121 to a cup [not shown]; and
a tab closure [Fig. 2 141 comprising
a mounting plug [Fig. 2 501 and
a drink plug [Fig. 2 541
connected by a strap [Fig. 2 521,
the mounting plug [Fig. 2 SO] sized to be received within the
mounting recess [Fig. 2 461, and the drink plug [Fig. 2 541 sized to be
received within the drink opening [Fig. 2 961
wherein the user can open and close the lid by removing or
inserting the drink plug [Fig. 2 541 from the drink opening [Fig. 2 961
wherein the mounting recess [Fig. 2 461 and mounting plug
[Fig. 2 501 each comprise an inset portion,' 	and the strap [Fig. 2 521
connects to the inset portion of the mounting plug.
Insofar as we can tell, the language "inset portion" does not appear in the
descriptive portion of the specification. However, see original claims 44
and 75. Likewise, Dart does not identify any drawing element number or
portion of the Specification in discussing "inset portion" on page 3, last line
of the Appeal Brief.
4

Appeal 2007- 1325
Application 101065,722
Claim 89
A disposable, recloseable lid [ Figs. 1-2 101 comprising:
a cap [Figs. 1-2 121 sized to overlie and substantially cover the
open top [not shown] of a cup [not shown], the cap [Figs. 1-2 121
comprising a mounting recess [Fig. 2 461 and a drink opening
[Fig. 2 961;
a mounting ring [Figs. 1-2 201 connected to the cap
[Figs. 1-2 121 for mounting the cap to a cup;
a tab closure [Fig. 2 141 comprising
a mounting plug [Fig. 2 501 and a drink plug [Fig. 2 541
connected by a strap Fig. 2 521, the mounting plug [Fig. 2 501 is sized
to be received within the mounting recess [Fig. 2 461 to mount the tap
closure [Fig. 2 141 to the cap Figs. 1-2 121, and the drink plug
[Fig. 2 541 is sized to be received within the drink opening [Fig. 2 961;
a drink plug holder [Fig. 2 481 for holding the drink plug
[Fig. 2 541 in a stored position when the lid is in the open position;
and
the cap [Fig. 2 121 and tab closure [Fig. 2 141 are thermoformed
from a common plastic sheet5wherein an easy to assemble recloseable
The phrase "plastic sheet" appears in the specification. Specification 4
7 0012. 	In so far as we can tell, the phrase "common plastic sheet" does not
appear in the specification. However, the phrase "same plastic sheet"
appears in original claim 2. We assume that "same" and "common" mean
the same thing. However, in context both "same" and "common" have at
least two meanings: (1) the cap and tab closure are made from a single sheet
of plastic or (2) the cap and tab closure are made from the same plastic, but

Appeal 2007- 1325
Application 101065,722
lid [Figs. 1-2 101 is provided wherein the user can open and close the
lid by removing or inserting the drink plug [Fig. 2 541 from the drink
opening [Fig.2 961 while the tab closure remains mounted to the cap.
Prior art
Freek
Freek Fig. 1-Freek 	drink cup cap
1. With reference to Fig. 1, Freek describes a lid 10 with drink
opening 20 that is designed to be mounted to a cup 12 [not shown in Fig. 1,
but see Fig. 51. col. 3 :39-40.
possibly different sheets of the same plastic. Our concern is not relevant to
resolution of the $ 103 issues on appeal since plastic caps have long been
made by thermoforming plastics sheets and it would not make any difference
whether a cap and a tab are made from the same sheet or from different
sheets of the same plastic. Nevertheless, Dart may wish to clarify the
meaning of its claim should it elect to further prosecution of the application.

Appeal 2007-1325
Application 101065,722
2. The lid 10 can be made by thermoforming a plastic sheet material.
col. 1:65 through col. 2:3 and col. 6:53-56.
3. Drink opening 20 as illustrated in Fig. 1 is merely an opening in lid
10. The drink opening may include a cover or plug [not shown] which may
be readily removed by the consumer prior to consumption of the contents of
the cup. col. 3:61-65.
4. The use of plugs in plastic lid openings was known long prior to
Freek. See, e.g.,DeMars, Figs. 1-2.
5. Lid 10 has a top surface 44 having what Freek describes as a
conical configuration. col. 5:12-15.
6. Mounting ring 34 forming part of the lid below the top surface is
used to mount the lid to a cup. col. 4: 12-19.
7. As noted by the Examiner, the principal difference between Freek
and the claimed subject matter is that Freek "is silent regarding the specifics
of the plug" which optionally may be used with the Freek lid. Examiner's
Answer 4, third full paragraph.

Appeal 2007- 1325
Application 101065,722
Waterbury
4
5 	Waterbury Fig. 4-Waterbury 	top of can showing lid in closed position
6

Appeal 2007- 1325
Application 101065,722
Waterbury Fig. 7-top 	of can with lid in open position
4 	Waterbury Fig. 6-side 	view of top of can with lid in closed position
3
6 	8. With reference to Figs. 4 , 6 and 7, Waterbury describes an easy-to-
7 	open closure (tab) for containers, for example, sealed containers for food and
8 	beverages. col. 1:7-13.

Appeal 2007- 1325
Application 101065,722
9. Waterbury describes a tab closure comprising a closure element
15' and mounting element 14' connected by a hinge [Fig. 6 161. col. 2:65
through col. 3:3 and col. 4:lO-15.
10. The embodiment shown in Fig. 6 has a recess 22a of substantially
the same shape and depth as the out configuration and thickness of mounting
element 14. col. 4:3-6.
11. When the free end of closure element 15 is in a folded back
condition (see Fig. 2 not reproduced), a user may drink directly from the
container without having to discard the closure. col. 3:20-25.
French Patent Application 2,736,620 (hereinafter referred to as "Aichert")
Aichert Fig. 1-Aichert 	cup lid with pivoted cover section

Appeal 2007-1325
Application 10/065,722
1 	12. With reference to an English language abstract in the record and
2 	Fig. 1 ,Aichert describes a cover 4 for use on the top of a can.
3 	13. The lid has a pouring orifice 5 which can be sealed closed by a
4 	pivoted cover section 10.
5 	14. Pivoted cover section 10 is secured to cover 4 via catch [detente]
15. Detente 7 is secured to cover 4 via a recess [not numbered].
Mueller
10
11 	Mueller Figs. 15 & 16-Mueller 	stopper
12 	16. With references to Figs. 15- 16, Muller describes a stopper with
13 	two circular walls 106, 122 which serve as a means to seal openings in the

Appeal 2007-1 325
Application 101065,722
top of a plastic cup used for cold beverages. col. 1:10 and 15-16; col. 7:65
through col. 8:47.
17. The stopper has the same configuration as Dart's tab closure.
DeMars
DeMars Figs. 1- 2 D e M a r s cup lid with resealable drink opening

Appeal 2007- 1325
Application 101065,722
1 	18. With reference to Figs. 1-2, DeMars describes a lid 10 for a
2 	container 12 having a drinking spout 22 and a cover 28 adapted to fit over
3 	the spout in a friction-fit relationship to prevent spills. col. 2:45-47,
4 	col. 2:67, and col. 3 :1 1-20.
5
6 	Lane
7
8 	Lane Fig. 1-Lane 	cup lid
9 	19. With reference to Fig. 1, Lane describes a cup lid 10 having a
10 	peel-back opening 48. col. 2:37 and col. 3 :7.

Appeal 2007- 1325
Application 101065,722
20. The peel-back opening has knob 70 which can be pressed into
recess 72 when the opening is in the open position. col. 3:40-49 and
col. 4: 1-5 (describing Fig. 3 not reproduced in this opinion).
21. The Examiner found securing a plug within a recess in a lid to be
within the level of ordinary skill in the art and other art e.g.,Aichert,
describes disposable lids of various configurations having closure plugs for
removably closing a drink opening. (Office Action dated January 26, 2006,
pp- 435).
Level of skill in the art
What one skilled in the art learns from the prior art, taken individually
and as a whole, is that Dart has used known elements in the cup lid art for
their intended purpose all the while achieving an expected result.
One skilled in the art would have known that a "plug" may be inserted
into a "recess" to hold the plug into a fixed (but releasable) position.
One skilled in the art would have known that a plastic lid could be
used on plastic and "styrofoam" cups of the kind commonly found in coffee
shops and fast food restaurants.
One skilled in the art would have known how to make a cup lid with a
drink opening which could be sealed and re-sealed through multiple cycles.
One skilled in the art would have known that there are various options
for combining the known elements shown in the prior art depending on a
particularized need.
One skilled in the art would know that plastic lids could be formed
using a thermoforming process.

Appeal 2007-1325
Application 101065,722
E. Principles of law
A claimed invention is not patentable if the subject matter of the
claimed invention would have been obvious to a person having ordinary skill
in the art. 35 U.S.C. $ 103(a); KSR Int'l Co. v. Teleflex Inc., 127 S. Ct.
1727,82 USPQ2d 1385 (2007); Graham v. John Deere Co. of Kansas City,
383 U.S. 1 (1966), 148 USPQ 459.
Facts relevant to a determination of obviousness include (1) the scope
and content of the prior art, (2) any differences between the claimed
invention and the prior art, (3) the level of skill in the art and (4) any
relevant objective evidence of obviousness or non-obviousness. KSR, 127
S. Ct. at 1734,82 USPQ2d at 1389, Graham, 383 U.S. at 17-18.
A person having ordinary skill in the art uses known elements and
process steps for their intended purpose. Anderson's-Black Rock, Inc. v.
Pavement Salvage Co., 396 U.S. 57 (1969) (radiant-heat burner used for its
intended purpose in combination with a spreader and a tamper and screed);
Sakraida v. AG Pro, Inc., 425 U.S. 273,282 (1976) (the involved patent
simply arranges old elements with each performing the same function it had
been known to perform); Dunbar v. Myers, 4 Otto (94 U.S.) 187, 195 (1 876)
(ordinary mechanics know how to use bolts, rivets and screws and it is
obvious that any one knowing how to use such devices would know how to
arranged a deflecting plate at one side of a circular saw which had such a
device properly arranged on the other side).
When multiple prior art references are used to reject a claim, then the
prior art references should be "analogous." Prior art is "analogous" when a
person having ordinary skill in the art would consider it relevant or related to

Appeal 2007-1325
Application 101065,722
the invention sought to be patented. Dann v. Johnston, 425 U.S. 2 19, 229
(1976) (data processing system used in large business organization found to
analogous to inventor's data process system used in banking industry);
Graham v. John Deere Co., 383 U.S. 1,35 (1966) (where inventor was
attempting to solve mechanical closure problem, liquid containers having
pouring spouts found to be analogous to an inventor's pump spray
insecticide bottle cap); Cuno Engineering Corp. v. Automatic Devices Corp.,
3 14 U.S. 84'9 1-92 (194 1) (thermostat to break circuit in a electric heater,
toaster or iron found to be analogous to a circuit breaker used in an
inventor's cordless cigar lighter); Mast, Foos & Co. v. Stover Mfg. Co., 177
U.S. 485,493 (1900) (device used in mills other than windmills held to be
analogous to inventor's use of same device in windmills); In re Oetiker, 977
F.2d 1443, 1446,24 USPQ2d 1443, 1445 (Fed. Cir. 1992) (if art is in the
field of applicant's endeavor or is reasonably pertinent to the particular
problem with which an inventor is concerned, then the art is "analogous").
F. Analysis
Examiner's 5 103 rei ection
The Examiner rejected the claims holding that a person having
ordinary skill in the art would have found it obvious to use the closure tab of
Waterbury in the cap of Freek.
The Examiner found that securing a plug within a recess in a lid to be
within the level of ordinary skill in the art and that other prior art references,
e.g.,Aichert, describe disposable lids of various configurations having
closure plugs for removably closing a drink opening. (FF. 2 1)

Appeal 2007-1325
Application 101065,722
On that basis, the Examiner found that one skilled in the art would
have known to use the closure tab in Waterbury as part of the lid in Freek.
While we accept the Examiner's use of Waterbury as describing the
sole known use of closure tabs on lids, we prefer to make our case for
obviousness under 35 U.S.C. 5 103(a) using plural teachings of prior art tab
closures as found, e.g., in (1) Mueller, (2) Aichert, (3) De Mars and (4)
Lane. The criteria for combining references is not the number of references,
"but what they would have meant to a person of ordinary skill in the field of
the invention." In re Gorman, 933 F.2d 982,986, 18 USPQ2d 1885, 1888
(Fed. Cir. 1991).
We will affirm the Examiner's rejection of claims 3, 9- 11,27-29,
36-39,44-50,55-59,63,65-70,75-77,80-83, and 88-95 under 35 U.S.C.
5 103(a), but use additional prior art to support our holding of obviousness.
Thus our affirmance is of the Examiner's rejection under 35 U.S.C.
5 103(a) based on the combined disclosures of Freek, Waterbury, Mueller,
Aichert, De Mars and Lane.
1. Scope and Content of the Prior art and Differences
"[Plroof of what was old and in general use at the time of the alleged
invention.. .may be admitted to show what was then old, or to distinguish
what is new.. ." Dunbar v. Myers, 4 Otto (94 U.S.) 187, 199 (1 876).
From Waterbury, Mueller and Aichert one skilled in the art knows the
scope and content of the prior art includes tab closures individually
connectable to a recess in a cap using a mounting plug connected at the

Appeal 2007-1325
Application 10/065,722
recess, and each tab closure having a drink plug resealably connected to a
drink opening in the cap.
The only differences between these prior art references and the
invention claimed by Dart are: (1) in Waterbury, lid 11 is made integrally
with the container 10 rather than being a separate piece, and (2) the lids in
Muller and Aichert are constructed so as to be reusable and are not
disposableper se, as the claims recite.
However, from De Mars and Lane one skilled in the art would have
appreciated that at the time of the invention it was known to fabricate a
disposable lid for a foam plastic coffee cup with a drink plug connected to it
using an integrally formed strap. (FF. 18, 19,20).
From Freek one skilled in the art also would have appreciated the fact
that a disposable coffee cup lid made from a thermoformed plastic sheet was
known at the time of the invention and had all the structure recited in claims
83,88 and 89, except for a tab closure to connect the drink plug to the cap.
(FF. 1-7)
Connecting the drink plug to a disposable plastic lid using a strap was
known at the time of the invention as taught by DeMars and Lane.
Thus, the knowledge of a person with ordinary skill in the art included
the know-how of making plug and recess connections, and resealable drink
openings using interlocking plugs (FF. 2 1) as further evidenced by Mueller
and Aichert, and Waterbury.

Appeal 2007- 1325
Application 101065,722
2. Dart is a Combination of Familiar Elements With a Predicable Result
The combination of two known elements such as, a tab closure and a
domed-shaped disposable plastic cap with an opening in it, cannot constitute
patentable invention unless each element of the combination performs an
"additional or different fbnction in the combination [other] than they
perform out of it." See, e.g., Great Atlantic & PaczJic Tea Co. v.
Supermarket Equipment Corp., 340 U.S. 147, 152,71 S. Ct. 127, 130
(1950). We find no evidence of any such additional or different function in
Dart's claimed invention vis-a-vis the prior art tab closures.
a. The Function of Dart's Tab Closure
The Summary ofInvention in Dart describes the function of the tab
closure 14 as simply securing one end of the tab to the cap via the mounting
plug 50 and releaseably connecting the other end carrying the drink plug 54
to the drink opening 42 such that "the drink plug is sized to be received
within the drink opening wherein the user can open and close the lid by
removing or inserting the drink plug from the drink opening."
(Specification 	4)
Dart's structure and corresponding function are found repeatedly in
the prior art.
b. Prior Art Tab Closures Function in the Same Way as Dart
The prior art tab closures of Waterbury, Mueller, and Aichert when
used in the lid of Freek do what they always have done in these prior art
devices, namely, to hold a drink plug in place through the intermediary of a
connecting strip connected to the cap when the plug is in an opened

Appeal 2007-1325
Application 101065,722
condition to allow the drink opening to be resealed with the drink plug after
the contents are poured out.
In Waterbury, the tab closure has a mounting plug 14 (referred to as a
mounting element) and a drink plug 15 (referred to as a closure element)
connected by a hinge portion 16 (referred to as a hinge connection) in the
form of a strap (Waterbury, col. 2 11. 67, 68, col. 3, 11.1). The mounting plug
in Waterbury is also inset within a recess 22a formed in the lid 11 of a drink
~ o n t a i n e r . ~	Thus, when the free end of closure plug 15' is in a folded back
condition, a user may drink directly from the container without having to
discard the closure, as done in Dart. (FF. 11).
In Mueller, the tab closure 100 (Fig. 16) has a mounting plug 122 and
a drink plug 102 connected by a hinge portion 120 in the form of a strap or
strip of material 120. The drink plug 102 has the same configuration as
Dart's drink plug. (FF. 17). The cap 50 includes a recess (see Fig. 12, lead
line 12) which is sized to receive the mounting plug 122 therein so that the
drink plug 102 remains attached to the lid when the drink plug is in its open
condition allowing the contents to be poured out, again in a manner similar
to Dart. (Mueller, col. 3,ll. 49-53)
In Aichert, the tab closure 10 (Fig. 16) has a mounting plug 7 and a
drink plug 11 connected by a hinge portion 9 in the form of a strap or strip of
material. The lid 4 has a pouring orifice 5 which can be sealed closed by a
pivoted cover section 10 and opened to allow the contents to be poured out
while the closure tab remains attached to the cap 4. (FF. 13) The closure tab
Waterbury describes its "lid is provided with a recess 22a of
substantially the same shape and depth as the outer configuration and
thickness of the mounting element 14."(Waterbury, Col. 4,ll. 3-6)

Appeal 2007- 1325
Application 101065,722
10 is secured to cap 4 via catch dCtente 7 as the mounting plug 50 in Dart is
inset in the mounting recess 46 (FF. 14) to allow the drink opening to be
resealed by the attached drink plug.
We find that Dart's lid has no additional or different hnction vis-a-vis
these prior art tabs when used in connection with conventional lids, such as
found in Freek or Dart's cap 12.
3. Analogous Art
We consider Waterbury, Mueller, Aichert, De Mars and Lane all to
be analogous art because each is reasonably pertinent to the problem with
which Dart was concerned. See In re Gorrnan, 933 F.2d 982,986,
18 USPQ2d 1885, 1888 (any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a
reason for combining the elements in the manner claimed). 	See KSR, 127
S. Ct. at 1742,82 USPQ2d 1385 at 1397.
The Dart lid attempts to solve the same problem as the prior art,
namely, reclosure of a drink opening once opened. Dart describes the
problem to be solved as providing a closure "that can be opened to dispense
a beverage and closed to effectively seal the container against spillage"
through multiple cycles (Br. 6, 7).
Likewise, each of the closures in Waterbury, Mueller, Aichert, Lane
and De Mars provide a hinge or strap portion connected to the lid to allow
the closure to be articulated between opened and closed positions over a
drink opening thereby dealing and resolving the same problem posed to
Dart.

Appeal 2007- 1325
Application 101065,722
Appellants argue Waterbury is nonanalogous art because it deals with
a closure for a soda can and "not a recloseable lid for use on a cup", and thus
deals with a completely different problem. (Br. 6) But, the prior art teaches
that a lid, such as described by Dart, may cap a soda can to provide a
recloseable feature for the can once opened. More specifically, Aichert
discloses a separate recloseable plastic lid 4 used on a soda can (FF. 12-15),
further evidencing that liquid containers, such as a cup or a can, share the
same reclosure problems.
Appellants further argue, "the problem to be solved by
...Waterbury.. . is having a separate flip-top tab closure which must be
discarded after the can has been opened." (Br. 6) To the contrary,
Waterbury discloses the closure as "resealable to store unused contents"
(Waterbury col. 1,ll. 3 9 , and furthermore contemplates plural embodiments
(Figs. 2,3,7) for maintaining the closure in a "folded back" condition to hold
it in a "fully open position while the contents are discharged". (Waterbury,
col. 3,ll. 5-7, 19-23) Thus, Appellants' assertion of Waterbury being
limited to a closure "which must be discarded after the can has been opened"
(Br. 6) is believed to be incorrect.

Appeal 2007- 1325
Application 101065,722
Finally, ~ r a h a m ~	addressed a strikingly similar non-analogous art
issue as between two liquid containers each with a different closure device
and held the containers to be pertinent to one another. The Court reasoned
that the devices were pertinent to each other because both seek to solve the
same "mechanical closure problem." 	Waterbury, Mueller, Aichert, Lane
and De Mars all deal with a mechanical closure in a liquid containers as does
Dart, and thus must deal with the same mechanical closure problems.
4. The Motivation Argument
Appellants assert the "Examiner has failed to identify any motivation,
suggestion, or teaching of the desirability of combining Freek '837 with
Waterbury '797 to arrive at Applicants' invention." (Br. 9) To the extent
that Dart argues that an explicit motivation, suggestion, or teaching in the
art, the argument has been foreclosed by KSR Int '1 Co. v. Teleflex Inc., 127
S. Ct. 1727,82 USPQ2d 1385 (2007). In KSR, the Court characterized the
teaching, suggestion, motivation test as a "helpful insight" but found that
when it is rigidly applied, it is incompatible with the Court's precedents.
Graham involved two patents: (1) the familiar Graham plow patent and
(2) a Scroggins dispenser patent. The Scroggins patent is addressed in the
Calmar, Inc. v. Cook Chemical Co., and No. 43, Colgate-Palmolive Co. v.
Cook Chemical Co. part of the Graham opinion and relates to U.S. Patent
2,870,943 directed to a plastic finger sprayer with a 'hold-down' lid used as
a built-in dispenser for containers or bottles packaging liquid products,
principally household insecticides.
As between closure devices for liquid containers, the Court held that these
devices are pertinent because, "closure devices in such closely related art as
pouring spouts for liquid containers are at the very least pertinent
references." Graham, 383 U.S. at 36, 86 S. Ct 684 at 703.

Appeal 2007-1325
Application 101065,722
KSR, 127 S. Ct. at 1741,82 USPQ2d at 1396. The holding in KSR makes
clear that there is no longer, if there ever was, a rigid requirement for finding
a reason to combine teachings of the prior art.
Helphl insights, however, need not become rigid
and mandatory formulas; and when it is so applied,
the TSM test is incompatible with our precedents.
The obviousness analysis cannot be confined by a
formalistic conception of the words teaching,
suggestion, and motivation, or by overemphasis on
the importance of published articles and the
explicit content of issued patents. KSR, 127 S. Ct.
at 1741,82 USPQ2d at 1396.
Rather, the application of common sense may control the
reasoning to combine prior art teachings. See Id. at 1742, 1397.
The practice of attaching a strap to an item to prevent it from being
lost is familiar to everyone and has long been used in the simplest
applications. It is common sense, for example, to attach these items to a
holder to keep them from being lost, (1) a surf board to the surfer's ankle,
(2) reading glasses to the neck of the reader, (3) a chuck key to a drill, (4) a
fire hydrant hose opening cover to the hydrant, (5) car gas caps to a car, (6)
golf club covers one to another, (7) baby pacifiers to a baby's shirts, (8) kids
gloves to a winter coat, (9) keys to a belt, etc. Thus, common sense acquired
by everyday experience would dictate that the plug9 or cover to the drink
opening disclosed in Freek at column 3, lines 63-65, would somehow be
attached to the lid through the intermediary of a strap or lanyard in order to
prevent the plug from being lost when the contents are not being consumed.
Appellants argue (Br. 10) that the Examiner has mischaracterized the word
"plug" from Freek. But, Freek in column 3, line 63 explicitly states that a
"plug" may cover the drink opening. The term "plug" thus speaks for itself.

Appeal 2007- 1325
Application 101065,722
5. New Grounds of Rejection:
Indefiniteness rejection
Claims 84, and claims 85-87 which depend directly or indirectly from
claim 841°, are rejected under 35 U.S.C. 5 1 12, second paragraph, as being
indefinite.
Our principal concern with this is Dart's use of the word "chamber" in
the claim.
While the word chamber appears in some of the original claims, it is
not defined in the specification.
Accordingly, we give the word its ordinary meaning. One meaning of
chamber is: a natural or artificial enclosed space or cavity. 	Webster 's
Collegiate Dictionary Tenth Edition (1996).
The Waterbury mounting element is described as having substantially
the same shape and depth as the recess into which it placed. Thus, the
mounting element and recess do not have to have precisely complimentary
shapes. Nor has Dart established that a mounting element and recess made
by a thermoforming process would be expected to be precisely
complimentary. To the extent that there is any opening between the
mounting element and the recess in a device made by a third-party, we do
not think Dart is entitled to infringement relief against that party based on
the broadest reasonable interpretation of "chamber" in claim 84 and an
attempt to maneuver the invention of claim 84 to cover devices falling
l o Claims 40-43,71-74 while not dependent on claim 84 introduce the
"chamber" as a dependent claim feature and thus are also subject to the 35
U.S.C. 5 112, second paragraph rejection.

Appeal 2007-1 325
Application 101065,722
within the scope of rejected claims 83 and 88-89 and claims dependent
thereon.
However, it is probably the case that Dart intends to cover a
"chamber" of the type described in 77 1053 and 1054 as being a "gap." The
gap is created by intentionally designing the depth of the mounting element
to be shorter than the depth of the recess so that a "gap" is created for the
purpose of creating a reservoir to keep the top of the lid dry. In our view,
the features of the "gap" are not necessarily translated into claim 84 through
the use of "chamber."
If this were an infringement case, we might be inclined to construe
"chamber" as being the "gap" described in 77 1053 and 1054. However, this
is not an infringement case. The application is pending before the Patent
Office and time to avoid any possible problem in the event claim 84 is
issued in a patent is while the application is pending. To put off a claim
interpretation issue on to the public and a district court is not an efficient
implementation of the patent system. See e.g., Graham, 383 U.S. 18 (to
await litigation is-for 	all practical purposes-to 	debilitate the patent
system). We are confident that Dart can probably amend claim 84 in such a
manner as to (1) more clearly set out what Dart regards as its "chamber"
invention, (2) overcome our concerns and (3) would meet with the approval
of the Examiner. We note that the Examiner has not rejected claim 84 over
the prior art. We likewise know of no basis for rejecting the claim over the
prior art, provided it is further limited consistent with the views set out
above.

Appeal 2007-1325
Application 101065,722
Rejection of previously allowed claims
In light of foregoing, we reject claims 4-7,3 1-33,64, 78, and 79 under
35 U.S.C. 103(a) as being unpatentable over the combined teachings of
Freek, Waterbury, Mueller, Aichert, De Mars, and Lane.
Claims 4, 5, 6 , 3 1,32, 33, 78, and 79 all cover the feature of a drink
opening in a lid having a well and a drink plug received within the well by
press fitting it to the well.
Freek teaches a plug or closure formed within the drink opening 20
which is removed prior to consumption (Freek, col. 3 11. 63-65). Further, we
read the opening in the sheet material forming the lid in Freek as a "well".
Webster 's Collegiate Dictionary Tenth Edition (1996) defines "well" inter
alia, as 4: an open space extending vertically through floors of a structure;
6b: a deep vertical hole. Since the opening extends though the entire
thickness of the sheet material, it is read as a "deep" hole.
Waterbury, among others, teach a closure element 3 1 having a
depending portion 36 complementarily shaped with the pour opening in the
lid so as to create a reusable press fitting closure. (Waterbury, Col. 5,
11. 30-34)
One having ordinary skill in the art would modify the opening 20 in
Freek to include the reusable press fit closure of Waterbury for the reasons
set forth supra. Regarding the periphery well wall recited in claims 6 and
33, we note the thickness of the thermal plastic material forming the lid 10 in
Freek is read as the periphery well wall.
The recitation in claim 7 of a bottom wall in the opening is met by the
teaching in Freek of a bottom wall extending from the peripheral wall in the

Appeal 2007-1 325
Application 101065,722
lugs 42 formed in lid 10 which, if located at the bottom of the drink opening
20, would similarly provide a stop surface for the drink plug, as it does
between successively stacked lids.
The recitation in claim 64 of the top wall reduced at opposite ends of
the drink opening is met by the portions of the wall adjacent the drink
opening 20 in Freek causing a reduced surface area of material.
G. Conclusions of law
Appellant has not sustained its burden on appeal of showing that the
Examiner erred in rejecting the claims on appeal as being unpatentable under
35 U.S.C. 	103(a) over the prior art.
Claims 3,9-11,27-29,36-39,44-50,55-59,63,65-70,75-77, 	80-83,
and 88-95 (claims on appeal) are unpatentable under 35 U.S.C. fj 103(a).
Claim 4-7, 3 1-33,64, 78, and 79 (which are not on appeal) are also
unpatentable under 35 U.S.C. 	103(a) over the prior art.
Claim 84 and claims 85-87 which depend from claim 84, as well as
claims 40-43 and 7 1-74, are unpatentable under the second paragraph of
35 U.S.C. g 112.
On the record before us, Dart is not entitled to a patent containing any
of the pending claims in the application on appeal.
H. Decision
Upon consideration of the record, and for the reasons given, it is
ORDERED that the decision of the Examiner rejecting
claims 3, 9-1 1,27-29,36-39,44-50, 63, 65-70,75-77, 80-83, and 88-95 over
the prior art is affirmed.

Appeal 2007-1325
Application 10/065,722
FURTHER ORDERED that the appeal is dismissed as to claims
49-59.
FURTHER ORDERED that previously allowed claims and
claims previously indicated as containing allowable subject matter, i.e.,
claims 84-87,40,41,42,43, and 71-74 are rejected as being unpatentable
under 35 U.S.C. 5 112, second paragraph, as being indefinite.
FURTHER ORDERED that previously allowed claims 4-7,
3 1-33, 64, 78, and 79 are rejected as being unpatentable under 35 U.S.C.
$ 103(a).
FURTHER ORDERED that since our application of the
references differs from that of the Examiner and we have cited additional
prior art, and because we have rejected previously allowed claims, our
affirmance and rejection of objected to and allowed claims are designated as
a new rejection. 37 C.F.R. 5 41.50(b) (2006).
FURTHER ORDERED that our decision is not a final agency
action.
FURTHER ORDERED that within two (2) months from the
date of our decision Appellants may hrther prosecute the application on
appeal by exercise one of the two following options:
1. Request that prosecution be reopened by submitting
an amendment or evidence or both. 37 C.F.R. 5 41.50(b)(l) (2006).
2. Request rehearing on the record presently before the
Board. 37 C.F.R. $ 4 1.50(b)(2) (2006).

Appeal 2007- 1325
Application 10/065,722
FURTHER ORDERED that the time for taking action under
either 37 C.F.R. $41.5O(b)(l) or 41.50(b)(2) is not extendable under the
provisions of 37 C.F.R. 8 1.136(a) (2006).
AFFIRMED-IN-PART and DISMISSED-IN-PART
ALLOWED CLAIMS REJECTED
(37 C.F.R. 5 41.50(b) (2006))
9 	MCGARRY BAIR PC
10 	32 Market Ave. SW
11 	SUITE500
12 	GRAND RAPIDS, MI 49503

Appeal 2007-1325
Application 10/065,722
Appendix 1
Appeal 2007-1 325
Application 101065,772
Pending Claims
(Independent claims in bold)
Claim 	Status
Rejected-1 	03
Objected
Objected
Objected
Objected
Rejected-1 	03
Rejected-1 	03
Rejected-1 	03
Rejected-1 	03
Rejected-1 	03
Rejected-103
Objected
Objected
Objected
Rejected-103
Rejected-1 	03
Rejected-1 	03
Rejected-103

Appeal 2007- 1325
Application 101065,722
Objected
Objected
Objected
Objected
Rejected-1 	03
Rejected-1 	03
Rejected-1 	03
Rejected-1 	03
Rejected-1 	03
Rejected-1 	12 and 103
Rejected-1 	12 and 103
Rejected-1 	12
Rejected-1 	12
Rejected-1 	12
Rejected-1 	12
Rejected-1 	12 and 103
Rejected-1 	12 and 103
Rejected-1 	12 and 103
Rejected-1 	12 and 103
Rejected-1 	12 and 103
Rejected-1 	03
Objected
Objected
Objected
Objected

Appeal 2007- 1325
Application 10/065,722
Rejected-103
Rejected-1 	03
Rejected-103
Rejected-1 	03
Objected
Objected
Objected
Rejected-1 	03
Rejected-1 	03
Rejected-1 	03
Objected
Objected
Rejected-1 	03
Rejected-1 	03
Rejected-1 	03
Rejected-1 	03
Allowed
Allowed
Allowed
Allowed
Rejected-1 	03
Rejected-1 	03
Rejected-103
Rejected-1 	03
Rejected-1 	03

Appeal 2007-1325
Application 10/065,722

93 Rejected—103
94 Rejected—103
95 Rejected—103

41