Over the past few weeks, we considered Case 5 of the Comparative Study on Hypothetical/Real Cases: Novelty (November 2009), based on the specification of continuation-in-part US Patent No. 6,431,415 (“the ‘415 patent”). We originally were asked to provide a proposed amendment to address the novelty rejection during prosecution of Case 5. However, we spent last week explaining additional concerns relating to indefiniteness and BRI.
Now, we propose to amend the claims as follows.
1. A dispensing top for
passing only several kernels of a popped popcorn at a time from an open-ended container filled with popped popcorn, having
a generally conical shape and an opening at each end, the opening at the reduced end
allows several kernels of popped popcorn to pass through at the same time being at least one inch and less than 4.5 inches, and
means at the enlarged end of the top to embrace the open end of the container,
the taper of the top being uniform and such as to by itself jam up the popped popcorn before the reduced end of the cone
and permit the dispensing of only a few kernels at a shake of a package when the top is mounted on the container.
Why? First, we might want to recite the structure that permits the function of “allowing several kernels . . . to pass through at the same time.” The specification identifies this feature as a one-inch opening. ‘415 patent, col. 1, ll. 50-53.
Further, the specification states popped kernels are of a length of ¾ inch to 1 inch. Id., col. 2, ll. 61-65. The one-inch opening is sufficient to pass one piece of a 1-inch popped kernel and 1.8 pieces of a ¾-inch popped kernel. So, a minimum opening of one inch seems like a technically accurate, broad recitation.
In addition, we might want to avoid potential indefiniteness issues relating to the function of “dispensing of only a few kernels.” There is no explicit discussion of an advantageous range of opening diameters or angles of the conical shape. Further, the ‘415 specification generally includes only vague terms (e.g., “short and squat,” id., col. 3, l. 6) and very detailed measurements (e.g., id., Fig. 5). Claim features reciting the vague terms might raise an indefiniteness issue; claim features reciting detailed measurements might risk overly narrowing the claim scope.
The ‘415 specification states the lower, enlarged end opening is usually 4.5 inches. Id., col. 1, ll. 54-56. Because the top is tapered, the upper, reduced end must be less than 4.5 inches. A brief mathematical check suggests a 4.5-inch opening on the reduced end would permit at least 20 pieces of popcorn to pass through simultaneously. Although the opening of a preferred embodiment is likely smaller, the specification again does not provide clear guidance about an advantageous value or range for a maximum diameter of the reduced opening. Thus, we might claim the diameter of the reduced opening broadly, until a rejection is made.
We see some inconsistency between “passing only several kernels of a popped popcorn at a time” in the preamble and “dispensing of only a few kernels at a shake of a package” at the end of the claim. It is easy to propose deleting the preamble’s “passing only” feature. One reason is the limiting effect of the preamble is unclear. MPEP 2111.02. In addition, the “dispensing of only a few kernels” is more limiting, as “only a few” is fewer than “only several.”
As stated previously, there are definiteness concerns regarding the phrase “only a few.” So, we propose eliminating that phrase in favor of the broader feature of “the opening at the reduced end . . . being . . . less than 4.5 inches.”
We also propose eliminating the function to “allow several kernels of popped popcorn to pass through at the same time.” This feature might be functionally redundant to the structural feature of “the opening at the reduced end being at least one inch.” As such, this extra “allow[ing]” recitation might be unduly limiting. MPEP 2143.03 (citing In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970) (“All words in a claim must be considered in judging the patentability of that claim against the prior art.”)).
What about the anticipation rejection premised on inherency? In sustaining the Examiner’s rejection, the Board of Patent Appeals and Interferences (BPAI) scaled up the prior art Harz patent. In re Schreiber, para. 24. It’s probably easier for the Examiner and BPAI to say the prior art Harz patent inherently teaches particular functions than to say that Harz inherently teaches a particular dimension.
This view is somewhat support by the majority opinion in In re Schreiber. (“The declaration, however, does not specify the dimensions of . . . the dispensing top that was tested.”) This view is also backed up by Claim 1 of the ‘415 patent, which mostly differs from the Case 5 claim by reciting “the opening at the reduced end being of a diameter greater than one inch.” So, our proposed amendment should overcome the novelty rejection.