This post considers a recent PTAB appeal by Nestle in which the examiner maintained rejections in which features from references were combined merely because the features were conventional. The PTAB reversed confirming that merely because features are convention is not, in and of itself, a reason to combine them. The case is Appeal 2023-000273, Application 16/533,196.
This case has a rather complicated prosecution history. The application on appeal claims priority back to an earlier (now-abandoned application) that was itself subject to an appeal (in which the examiner was affirmed). This may explain somewhat the doggedness with which the examiner continues to reject claims, even with relatively incomplete rejections.
Claim 1 on appeal relates to an infant nutritional product container.
9. A method of providing a nutritional product to an infant,
the method comprising:
(i) removing a portion of the nutritional product from a container with a cap detached from the container,
the cap comprising a base panel, four cap side panels extending from the base panel, and a circular threaded portion extending from a bottom of the base panel, the base panel having a substantially rectangular cross section and defining a hole therethrough, the circular threaded portion circumscribing the hole in the base panel;
a hinged lid attached to the cap, the hinged lid comprising a first portion coplanar with the base panel and a second portion coplanar with one of the four cap side panels when the hinged lid covers the hole, the cap comprising a recessed portion constructed and arranged to accommodate the first and the second portions of the hinged lid therein, and the recessed portion continuously extending from the base panel of the cap into the one of the four cap side panels of the cap with which the second portion of the hinged lid is coplanar; and
the container containing the nutritional product, the container releasably attachable to the cap, the cap being removable from the container to allow a removal of a desired amount of the nutritional product in the container, and the hinged lid being openable so that a desired amount of the nutritional product can be poured therethrough, the container comprising a top panel, a bottom panel and four container side panels extending between the top panel and the bottom panel, the top panel defining a hole therethrough, the container being in a shape of a rectangular cuboid, and the four container side panels are recessed, the circular threaded portion of the cap is threadingly attachable to a circular threaded portion of the container, the circular threaded portion of the container extends from the top panel and defines the hole through the top panel, and the top panel is a rectangular surface extending from the circular threaded portion to the four container side panels, the container is configured to move between (a) an open configuration wherein the cap is detached from the container and (b) a closed configuration wherein the container is completely sealed by the cap, wherein dimensions of the cap and the container are such that the cap and the container have identical peripheral shapes so as to appear as a cohesive unit when the container has the closed configuration, the top panel of the container has a generally rectangular perimeter where the top panel of the container contacts the four cap side panels extending from the base panel of the cap when the container has the closed configuration, and the top panel of the container extends from
the circular threaded portion of the container to the generally rectangular perimeter;
(ii) attaching the cap to the container, wherein the circular threaded portion of the cap is threadingly attached to the circular threaded portion of the container;
(iii) opening the hinged lid via the recessed portion; and
(iv) removing another portion of the nutritional product through the hole in the top panel of the container while the cap is attached to the container.
Fig. 2 from the application is reproduced below illustrating an example embodiment of the cap.
Much of the disagreement between the examiner and applicant related to the cap and container shaped as a cohesive unit, where the top panel the top panel of the container has a generally rectangular perimeter where the top panel of the container contacts the four cap side panels extending from the base panel of the cap when the container has the closed configuration. The Applicant attacked the Examiner’s obviousness rationale, and in particular whether sufficient motivation to combine was provided. The Answer explained the reason to combine as follows:
The PTAB confirmed that such reasoning is insufficient (internal citations omitted):
Here, the Examiner’s explanation is insufficient because it consists of a finding that the portion of Rainey’s packaging that the Examiner proposes to adapt to and incorporate into Vogel’s packaging was conventional in the packaging art. This amounts to an assertion that a person having ordinary skill in the art would have a reason to combine any prior art references in any manner merely because the designs are known. If such reasoning were enough, no invention describable as a combination of known elements—which is to say the vast majority of inventions—would be patentable. This is not the law.
In effect, it was as if the examiner did not provide any explanation as to why the skilled artisan would have made the proposed combination, since no other reasoning was provided other than reliance on motivation to do what was allegedly conventional.
Applicants will often see examiners use reasoning along the lines done here - i.e., it is obvious to do conventional things. Yet, as confirmed by this case, such reasoning is insufficient. Beware, however, that merely because the examiner relies on such reasoning, this does not necessarily mean the rejection is in error and will be reversed on appeal. Often examiner supplement such assertions with additional citations, reasoning, etc. In such cases, Applicants would do well to ensure that their arguments take into account these additional points.