Ex Parte Casey

Patent Trial and Appeal Board

Dec 12, 2018

14593771 (P.T.A.B. Dec. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/593,771
154037 7590
Griffith Barbee PLLC
4514 Cole Ave
Ste. 600
Dallas, TX 75205
01/09/2015
12/12/2018
FIRST NAMED INVENTOR
Theodore Casey
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
15.00028 4874
EXAMINER
RASHID, FAZLE A
ART UNIT PAPER NUMBER
1774
MAIL DATE DELIVERY MODE
12/12/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THEODORE CASEY
Appeal2018-002107
Application 14/593,771
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 17-19 of Application
14/593,771 under 35 U.S.C. § l 12(b) as indefinite. Final Act. 3 (Oct. 25,
2016). The Examiner further rejected claims 1-12 and 14--19 under
35 U.S.C. § 102(a)(2) as anticipated and claim 13 under 35 U.S.C. § 103 as
obvious. Id. at 4, 10. With the exception of the indefiniteness rejection,
Appeal2018-002107
Application 14/593,771
Appellant1 seeks reversal of these rejections pursuant to 35 U.S.C. § 134(a). 2
We have jurisdiction. 35 U.S.C. § 6(b ).
For the reasons set forth below, we affirm-in-part.
BACKGROUND
The '771 Application describes a container system for separately
storing and mixing two or more substances. Spec. 1.
Claim 1 is representative of the '771 Application's claims and is
reproduced below from the Claims Appendix.
1. A container system for mixing two or more substances
compnsmg:
(a) a main container for holding one or more first
substances, said main container having a first upper opening;
(b) a storage repository for holding one or more
second substances, said storage repository positioned within
and coupled to said main container, and including a lip defining
a second upper opening, said lip having an outside diameter
smaller than the diameter of the first upper opening;
( c) a mixing blade, said mixing blade having an
outside diameter smaller than the diameter of the first upper
opening and an inside diameter smaller than the outside
diameter of said lip, said mixing blade having a plurality of
openings; and
( d) a releasable liner covering said second upper
opening;
1 DryBev International, Inc. is identified as the applicant and the real party in
interest. Appeal Br. 2.
2 Appellant does not appeal the Examiner's rejections of claims 17-19.
Appeal Br. 3--4; Reply Br. 2.
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Application 14/593,771
( e) wherein said lip forms a seal with a lower surface
of said releasable liner.
Appeal Br. 11 ( emphasis added).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 17-19 are rejected under 35 U.S.C. § 112(b) as indefinite.
Final Act. 3; Answer 2.
2. Claims 1-12 and 14--19 are rejected under 35 U.S.C. § I02(a)(2) as
anticipated by Anderson. 3 Final Act. 4; Answer 3.
3. Claim 13 is rejected under 35 U.S.C. § 103 as unpatentable over
the combination of Anderson and Machan. 4 Final Act. 10;
Answer 9.
DISCUSSION
Rejection 1. The Examiner rejected claims 17-19 under 35 U.S.C.
§ 112(b) as indefinite because: (i) claim 17 provides insufficient antecedent
basis for the "said upper surface" limitation and (ii) claims 18 and 19 depend
from claim 17, but "fail to rectify this concern." Final Act. 4; Answer 2.
Appellant neither appeals nor offers any substantive arguments
against the § 112(b) rejection for indefiniteness. Appeal Br. 3--4; Reply
Br. 2. Nor has Appellant amended the '771 Application to cancel these
claims.
3 US 8,960,424 Bl, issued Feb. 24, 2015.
4 US 2013/0226148 Al, published Aug. 29, 2013.
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Application 14/593,771
In the Answer, the Examiner maintained the rejection. Answer 2.
Because Appellant has not presented any arguments on the merits, we
summarily affirm Rejection 1.
Rejection 2. The Examiner rejected claims 1-12 and 14--19 as
anticipated by Anderson. Final Act. 4; Answer 3.
Appellant does not appeal or offer any substantive arguments against
the§ 102(a)(2) anticipation rejection for claims 17-19. Appeal Br. 3--4;
Reply Br. 2. Nor has Appellant amended the '771 Application to cancel
these claims.
In the Answer, the Examiner maintained the rejection. Answer 3. We
summarily affirm Rejection 2 with respect to claims 17-19 because
Appellant has not presented any arguments on the merits.
Next, we consider whether the Examiner erred by rejecting claims 1-
12 and 14--16 as anticipated.
Appellant argues for reversal of the anticipation rejection of these
claims based on limitations recited in independent claims 1 and 14. See
Appeal Br. 4--8, 9. We, therefore, select claim 1 as representative of the
claims subject to this ground of rejection; claims 2-12 and 14--16 will stand
or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner must establish a prima facie case of anticipation under
35 U.S.C. § 102 by showing that all elements arranged as specified in a
claim are disclosed within the four comers of a reference, either expressly or
inherently, in a manner enabling one skilled in the art to practice an
embodiment of the claimed invention without undue experimentation.
ClearValue, Inc. v. Pearl River Polymers, Inc., 668 F.3d 1340, 1344 (Fed.
Cir. 2012) (pre-AIA statute); Sanofi-Synthelabo v. Apotex Inc., 550 F.3d
1075, 1083 (Fed. Cir. 2008) (pre-AIA statute).
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Application 14/593,771
Claim 1 recites "a releasable liner covering said second upper
opening." The Examiner found that Anderson discloses the claimed
releasable liner because Anderson's "liner 30 covers lower opening of
chamber 20 . .. [and a] seal [is] formed between lip of chamber 20 and
lower surface of liner 30." Answer 4 (citing Anderson column 3:58---65).
Appellant argues, inter alia, that Anderson's liner 30 does not disclose
the claimed releasable liner because
Anderson discloses that its plunger 21 "breaks or punctures
sealing member 30." There is no other disclosure in Anderson
of how any seal is ended. Disclosing a seal that is broken,
punctured, or pierced is not disclosure of a "releasable liner."
Appeal Br. 6 (see also id. at 6-7).
In response, the Examiner asserts that Anderson's "liner 30 is a 'thin
plastic or resin material' ... which is resealably attached to cover chamber
20 of the container system of Anderson (liner 30 is heat sealed, glued, or
otherwise attached to the snap-in chamber 20 . .. )." Ans. 11 (citing
Anderson 5:6-7, 5:9--13) (emphasis added).
We begin by interpreting the language of claim 1. In particular, we
construe the term "releasable liner."
During prosecution, the PTO gives the language of the proposed
claims "the broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in the art, taking
into account whatever enlightenment by way of definitions or otherwise that
may be afforded by the written description contained in the applicant's
specification." In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
In this instance, Appellant directs our attention to the Specification,
which discloses that
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Application 14/593,771
[ e ]xamples of "releasable" liners ... include "a gasket placed
loosely over second upper opening and engaging said lip"
(Claim 11 ), "further comprising a releasable cap that couples to
said main container and positions said mixing blade to contact
said upper surface of said releasable liner" (Claim 17), wherein
"said releasable liner falls off to open said storage repository
when said releasable cap is removed" (Claim 18), wherein "said
releasable liner is selectively releasable to open said storage
repository when said releasable cap is removed" (Claim 19).
Appeal Br. 6; see also Spec. 8-9 ( further disclosing that "[ r ]eleasable liner
25 may be a gasket, i.e., it may be loosely placed over second upper opening
19 in the absence of cap 300 being placed on bottle 100, so that the
releasable liner 25 might fall off when cap 300 is removed."). We,
therefore, interpret the claimed releasable liner as requiring features for
allowing liner release without destruction of the liner itself.
The Examiner's rejection is based upon an erroneous construction.
The Examiner construes the claim as not requiring the consideration of
features that enable liner release without its destruction. The Examiner has
not provided sufficient factual findings that Anderson's thin plastic or resin
liner 30, which is resealably attached to cover chamber 20, discloses the
claimed releasable liner. To the extent the Examiner equates an alleged
resealable characteristic as an indication that Anderson's liner 30 is not
destroyed following release, we are not persuaded. Our review of the
passage relied upon by the Examiner does not find that Anderson teaches or
suggests that a thin plastic or resin liner 30 is resealable. Rather, Anderson
discloses that the thin plastic or resin liner 30 has "one or more lines of
weakening to allow for dispensing of the first ingredient" through liner
destruction of the weakened areas. Anderson 5:7-8.
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Thus, the Examiner's finding, that Anderson's thin plastic or resin
liner 30 is a releasable liner merely because it can allegedly be resealably
attached, is erroneous. Therefore, we reverse Rejection 2 with respect to
claims 1-12 and 14--16.
Rejection 3. The Examiner rejected claim 13 as obvious over the
combination of Anderson and Machan. Final Act. 10; Answer 9.
"[ A ]nticipation is the epitome of obviousness." In re McDaniel, 293
F.3d 1379, 1385 (Fed. Cir. 2002) (citations omitted).
The Examiner does not rely on Machan to cure the deficiencies of
Anderson identified by Appellant. Answer 9-10; Appeal Br. 8-9. Because
we have reversed the rejection of claim 1 as anticipated by Anderson, we
also reverse the obviousness rejection of claim 13 dependent therefrom. 37
C.F.R. § 4I.37(a)(l)(iv). Therefore, we reverse Rejection 3.
CONCLUSION
For the reasons set forth above, we affirm the § 112(b) rejection of
claims 17-19; affirm the§ 102(a)(2) rejection of claims 17-19; reverse the
§ 102(a)(2) rejection of claims 1-12 and 14--16; and reverse the§ 103
rejection of claim 13.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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