Donald W. Lusareta

Patent Trials and Appeals Board

Nov 4, 2019

11811041 - (D) (P.T.A.B. Nov. 4, 2019)

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.
11/811,041 06/08/2007 Donald W. Lusareta 711269 5648
23460 7590 11/04/2019
LEYDIG VOIT & MAYER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON AVENUE
CHICAGO, IL 60601-6731
EXAMINER
NEWAY, BLAINE GIRMA
ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
11/04/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
Chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONALD W. LUSARETA
Appeal 2019-002811
Application 11/811,041
Technology Center 3700
Before JENNIFER D. BAHR, CHARLES N. GREENHUT, and
BRETT C. MARTIN, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 17–20, 23, 25, and 27–44. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as TRS Lid
Technology, LLC. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
Appellant’s invention is directed to “a disposable lid with filter for a
drink container to overcome the problem of loose tea leaves or any other
insoluble matter not desir[able] to consume from reaching the mouth of the
drink consumer.” Spec. ¶ 15. Claim 17, reproduced below, is illustrative of
the claimed subject matter.
17. A lid for closing a cup, the cup having a rim and being
adapted and sized to hold a beverage including consumable
fluid within an interior, the lid comprising:
a cup attachment portion for removable association with
the rim of the drink cup in a snug, liquid-tight relation,
an annular cover portion,
a spout extending from said annular cover portion and
unitarily formed with said annular cover portion, the spout
having a lower end, an upper end, and opposed side walls
between the lower end and the upper end defining an elongated
interior space, the spout further having an opening disposed
adjacent the upper end to provide passage of the beverage from
the interior of the cup through the elongated interior space and
the opening when the cup attachment portion is associated with
the cup, and
only a single filter, the filter being coupled to the lid, the
filter being seated within and secured within and across said
elongated interior space of the spout to filter the beverage as the
beverage passes from the interior of the cup into and
through the interior space and opening of the spout, the filter
being a foam filter block extending from a lower portion of the
spout towards the upper end of the spout and abutting at least a
portion of the opposed side walls;
wherein, as the lid is repositioned into a vertical position,
fluid within the spout adjacent the opening flows back through
the filter to at least partially clean the filter, and
wherein all fluid entering and leaving the spout flows
through the filter.
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Application 11/811,041

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EVIDENCE
The prior art relied upon by the Examiner is:
Name Reference Date
DeMars US 4,899,902 Feb. 13, 1990
Thompson US 5,846,418 Dec. 8, 1998
Cai US 7,032,507 B2 Apr. 25, 2006
Kelstrom US 2006/0163251 A1 July 27, 2006

REJECTION
I. Claims 17–20, 23, 25, and 27–44 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
II. Claims 23, 28, 32–35, 38–40, and 42–44 stand rejected under
35 U.S.C. § 103(a) as unpatentable over DeMars and Thompson.
III. Claims 17, 18, 20, 27, 29–31, 37, and 41 stand rejected under
35 U.S.C. § 103(a) as unpatentable over DeMars, Thompson, and Cai.
IV. Claims 25 and 36 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over DeMars, Thompson, and Kelstrom.
V. Claim 19 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
DeMars, Thompson, Cai, and Kelstrom.
OPINION
Rejection I—Written Description
The Examiner finds that the limitation “only a single filter” recited in
each of independent claims 17, 23, 33, and 40 lacks written description
support in the present application. See Final Act. 2.
The fundamental factual inquiry for ascertaining compliance with the
written description requirement is whether the disclosure of the application
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relied upon reasonably conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date. See Ariad
Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc). “This inquiry . . . is a question of fact,” and “the level of detail
required to satisfy the written description requirement varies depending on
the nature and scope of the claims and on the complexity and predictability
of the relevant technology.” Id. “[T]he specification must describe an
invention understandable to that skilled artisan and show that the inventor
actually invented the invention claimed.” Id.
Appellant argues that “[e]ach embodiment depicted in the drawings as
well as the related descriptions thereof refers to a single filter.” Appeal Br. 4
(discussing three embodiments, namely, the embodiment of Figures 1–3, the
embodiment of Figures 4–7, and the embodiment of Figures 8–12).
According to Appellant, “the written description includes no discussion
whatsoever of the inclusion of more than one filter within a lid.” Id.
The Examiner finds that Figure 12 of the present application “is a
sectional view and therefore it cannot be known how many filters are present
or being shown” and that “[t]he [S]pecification is open for the inclusion of
unspecified number of filters.” Ans. 3.
Appellant’s Specification describes Figure 12 as “showing the filter
inserted within the spout portion of the lid and the holding area for filtered
liquid positioned above the filter and below the spout void.” Spec. ¶ 41
(emphasis added). The Specification also refers repeatedly to “the filter 18”
and “the filter 64.” Id. ¶¶ 32, 48 (emphasis added, boldface omitted).
Further, the Specification describes the passage of liquid beverage through
filter 64 in the direction of arrow “A” to become filtered beverage as the cup
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is tilted to allow the user to take a sip, the retention of an amount of the
filtered beverage within spout holding area 66, and the reverse flow of
residual filtered beverage held in spout holding area 66 back through filter
64 in the direction of Arrow “B” as the cup is returned to its vertical or
upright position, thereby helping “to clean or partially clean filter 64
between sips from cup 70” to “[maintain] generally unobstructed flow of
beverage from the cup during use.” Id. ¶¶ 47–49 (boldface omitted); see
Fig. 12. The Specification describes “the filter” as “a filter of approximate
1/4 inch thickness composed of a generally open foam-like or open-cellular
structure composed of plastic or paper or cellulose-based fibers.” Spec. ¶ 50
(emphasis added). This description of the filter being a filter reasonably
conveys to those skilled in the art that there may be only one filter in the
disclosed embodiments. Thus, Appellant’s Specification describes at least
one embodiment of the invention including the claimed subject matter,
including only one filter. The fact that Appellant does not expressly exclude
other possible embodiments comprising more than one filter does not negate
the fact that the Specification describes at least one embodiment having only
a single filter.
For the above reasons, we agree with Appellant that the disclosure of
the present application reasonably conveys to those skilled in the art that
Appellant had possession of the claimed subject matter as of the filing date.
Accordingly, we do not sustain the rejection of claims 17–20, 23, 25, and
27–44 as failing to comply with the written description requirement.
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Rejection II—Obviousness: DeMars and Thompson
Principles of Law Pertaining to Obviousness:
In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). See also In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984). It is incumbent upon the examiner to
establish a factual basis to support the legal conclusion of obviousness. See
In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so doing, the examiner
is expected to make the factual determinations set forth in Graham v. John
Deere Co., 383 U.S. 1, 17 (1966), viz., (1) the scope and content of the prior
art; (2) the differences between the prior art and the claims at issue; and (3)
the level of ordinary skill in the art. In addition to these factual
determinations, the examiner must also provide “some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval in KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Analysis:
Claims 23, 28, 32, and 42:
In rejecting independent claim 23, the Examiner finds that DeMars
lacks a “filter being subjacent the shoulder in and across the interior space”
and “spaced from the opening to define a cavity between the filter, the
opening, and a portion of the opposed walls,” as required in claim 23. Final
Act. 4. The Examiner determines it would have been obvious, in view of the
teachings of Thompson, to provide the spout of DeMars with a filter, but
does not articulate in the rejection any findings or reasoning to explain why
it would have been obvious to dispose the filter subjacent the shoulder and
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spaced from the opening to define a cavity as called for in claim 23. See id.
at 4–5.
Appellant argues that the Examiner ignores the limitations in claim 23
setting forth the particular relationship of the filter to the shoulder. Appeal
Br. 8. Claim 23 recites a specific spatial relationship between the shoulder
and the filter—namely, “the filter being subjacent the shoulder” and “spaced
from the opening to define a cavity between the filter, the opening, and a
portion of the opposed walls.” Claims App. 2. The Examiner does not
explain why it would have been obvious to dispose a filter in this particular
location in the lid of DeMars.2 All words in a claim must be considered in
judging the obviousness of the claimed subject matter. See In re Wilson, 424
F.2d 1382, 1385.
For the above reasons, the Examiner fails to set forth sufficient factual
findings and reasoning to establish that the subject matter of independent
claim 23 would have been obvious. Accordingly, we do not sustain the
rejection of claim 23, or claims 28, 32, and 42, which depend from claim 23,
under 35 U.S.C. § 103(a).

2 Appellant alludes to the Examiner’s treatment of the recitation of the
relationship between the filter and the shoulder in addressing claim 35.
Appeal Br. 8; see Final Act. 6. However, the Examiner’s statement that
“[t[he modified DeMars further discloses the filter being disposed adjacent
the shoulder and between the shoulder and the opening” (Final Act. 6),
although pertinent to claim 35, is not pertinent to claim 23, which recites a
different location of the filter—namely, “subjacent the shoulder” and
“spaced from the opening to define a cavity between the filter, the opening,
and a portion of the opposed walls.” Compare Claims App. 2 (claim 23),
with id. at 4 (claim 35).
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Claims 33–35, 38–40, 43, and 44:
Independent claims 33 and 40 require, in pertinent part, that “as the lid
is repositioned into a vertical position, fluid within the spout adjacent the
opening flows back through the filter to at least partially clean the filter.”
Claims App. 3, 4–5. In addressing this limitation, the Examiner states that
“the modified device of DeMars is capable of being used as claimed”
without setting forth any factual findings or providing any technical
explanation to support this statement. See Final Act. 6.
Appellant argues that “there would be no reason to provide a back
flow through the Thompson exit filter 34,” and that “any incidental flow
back through the exit filter 34 of Thompson is not a necessary aspect
required for the operation or even necessarily a desirable feature of the exit
filter 34 of Thompson.” Appeal Br. 9. Indeed, the Examiner must provide
sufficient evidence or scientific reasoning to establish there is a sound basis
for the examiner’s belief that the functional limitation is an inherent
characteristic of the prior art. See In re Spada, 911 F.2d 705, 708 (Fed. Cir.
1990). However, the Examiner does not respond to this argument.
In light of the above, the Examiner fails to provide the requisite
factual findings and reasoning to support the conclusion that the subject
matter of claims 33 and 40 would have been obvious. Accordingly, we do
not sustain the rejection of claims 33 and 40, or their dependent claims 34,
35, 38, 39, 43, and 44, under 35 U.S.C. § 103(a).

Rejection III—Obviousness: DeMars, Thompson, and Cai
Independent claim 17, like independent claims 33 and 40, recites that
“as the lid is repositioned into a vertical position, fluid within the spout
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adjacent the opening flows back through the filter to at least partially clean
the filter.” Claims App. 1. Claim 17 also recites that the filter is “a foam
filter block.” Id.
The Examiner’s application of Cai for its teaching of providing a filter
made of open-cell foam material (Final Act. 10) in rejecting independent
claim 17, as well as claims 18, 20, 29–31, and 41, which depend from claim
17, and claims 27 and 37, which depend from claims 23, and 33,
respectively, does not make up for the deficiencies in the rejection of claims
23 and 33 discussed above. Accordingly, for the same reasons, we do not
sustain the rejection of claims 17, 18, 20, 27, 29–31, 37, and 41 under
35 U.S.C. § 103(a).

Rejection IV—Obviousness: DeMars, Thompson, and Kelstrom
The Examiner’s application of Kelstrom for its teaching to secure a
filter element to a lid with an adhesive (Final Act. 13) in rejecting claims 25
and 36 does not cure the deficiencies in the rejections of claims 23 and 33,
from which claims 25 and 36 depend. Accordingly, we do not sustain the
rejection of claims 25 and 36 under 35 U.S.C. § 103(a).

Rejection V—Obviousness: DeMars, Thompson, Cai, and Kelstrom
The Examiner’s application of Cai (Final Act. 10) and Kelstrom
(Final Act. 13) in rejecting claim 19, which depends, via claim 18, from
claim 17, does not overcome the aforementioned deficiency in the rejection
of claim 17. Accordingly, we also do not sustain the rejection of claim 19
under 35 U.S.C. § 103(a).
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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
17–20, 23,
25, 27–44
112, first
paragraph
Written Description 17–20, 23,
25, 27–44
23, 28, 32–
35, 38–40,
42–44
103(a) DeMars, Thompson 23, 28, 32–
35, 38–40,
42–44
17, 18, 20,
27, 29–31,
37, 41
103(a) DeMars, Thompson,
Cai
17, 18, 20,
27, 29–31,
37, 41
25, 36 103(a) DeMars, Thompson,
Kelstrom
25, 36
19 103(a) DeMars, Thompson,
Cai, Kelstrom
19
Overall
Outcome
17–20, 23,
25, 27–44

REVERSED