Ex Parte Deeds

Patent Trial and Appeal Board

May 30, 2017

13769803 (P.T.A.B. May. 30, 2017)

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.
13/769,803 02/18/2013 M. Rinley Deeds JD-812B-US 1049
24804 7590 06/01/2017
MICHAEL BEST & FRIEDRICH LLP (Diversey, Inc.)
100 E WISCONSIN AVE
STE 3300
MILWAUKEE, WI 53202
EXAMINER
DURAND, PAUL R
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
06/01/2017 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):
jd.patentsupport@diversey.com
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte M. RINLEY DEEDS
Appeal 2015-006615
Application 13/769,803
Technology Center 3700
Before CHARLES N. GREENHUT, JILL D. HILL, and
NATHAN A. ENGELS, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 6—10, 12—19, and 21—25, which constitute all the
claims pending in this application. Claims 1—5, 11 and 20 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part and designate a new ground of rejection.
Appeal 2015-006615
Application 13/769,803
CLAIMED SUBJECT MATTER
The claims are directed to a dispenser system. Claim 6, reproduced
below, is illustrative of the claimed subject matter:
6 A dispensing system for dispensing material from different
containers, the dispensing system comprising:
a dispenser defining a receptacle shaped to receive the
containers in an axial direction;
a first closure secured to a first container and supported by
the receptacle, the first closure including a cap having an opening
through which material from the first container is dispensable, a
portion of the first closure slidable relative to the cap to
selectively expose the opening in the cap;
a drive system operably engaged with the first closure to
drive the slidable portion to selectively dispense material from
the first container; and
a retainer coupled to the receptacle and releasably
engageable with the cap, the cap and the retainer having a keyed
relationship in which complementary portions of the cap and the
retainer move in the axial direction with respect to one another
upon insertion of the cap into the receptacle, the retainer having
a portion that flexes in response to engagement by the cap to
retain the cap in the receptacle, to resist removal of the first
container from the receptacle, and to maintain engagement of the
drive system with the first closure during use, wherein the
retainer is removable and interchangeable with another retainer
keyed differently to a second closure on a second container, and
wherein the keyed relationship between the cap and the retainer
permits full insertion of the first closure into the receptacle and
prevents full insertion of the second closure into the receptacle.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Thomas et al. (“Thomas”) US 5,832,972 Nov. 10, 1998
Arent et al. (“Arent”) US 6,269,837 B1 Aug. 7, 2001
Argentieri (“Argentieri”) US 6,386,392 B1 May 14, 2002
2
Appeal 2015-006615
Application 13/769,803
Livingston et al. (“Livingston”) US 2005/0247742 A1 Nov. 10, 2005
REJECTIONS
Claim 6—10, 12—14, 18, 19, 21, and 25 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Livingston, Argentieri and Thomas.
Claims 15—17 and 22—24 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Livingston, Argentieri, Thomas, and Arent.
OPINION
Regarding claim 6, Appellant contends Argentieri lacks
complimentary portions of the cap and retainer that move in the same axial
direction in which the dispenser receives the container. App. Br. 6—8. This
is incorrect. The “axial direction” is defined according to claim 6 as the
direction in which the receptacle receives containers. Claim 6 requires
complementary portions of the cap and retainer to move with respect to one
another in this same axial direction. However, to the extent such an
assumption underlies Appellant’s arguments, we note that claim 6 does not
require any particular axes of those structures creating the recited “keyed
relationship” to be parallel with, or in the same direction as, the defined axial
direction. See, e.g., Application Figs. 1 and 2 (depicting an aperture 46
having a longitudinal axis extending in the same direction in which the
container is inserted into the dispenser). As the Examiner correctly points
out, the protrusion 17 and the spring (unenumerated) of Argentieri,
collectively regarded as the recited “retainer,” and the cap 28, have
3
Appeal 2015-006615
Application 13/769,803
complimentary portions 161, 17 that move in the defined axial direction with
respect to one another. Final Act. 3 (“(i.e. the retainer is axially stationary,
while the container moves axially downward)”); Argentieri Figs. 1A-C.
The fact that there is additional movement perpendicular to the axial
direction (App. Br. 8; Reply Br. 3—4), i.e., under the spring force, does not
mean that the limitation requiring axial movement is unsatisfied. Additional
elements or operability do not prevent a prior-art combination from
satisfying open-ended claims.
Appellant additionally argues that retainer protrusion 17 does not flex.
App. Br. 8; Reply Br. 5. As the Examiner correctly points out, claim 6
requires the “retainer,” which the Examiner regards as the combination of
protrusion 17 and its biasing spring, to have a “complimentary portion[],”
which the Examiner regards as protrusion 17, and “a portion that flexes,”
which the Examiner regards as the spring. Arguments that merely point out,
correctly or not, that there is no indication that protrusion 17 flexes, are not
germane to the Examiner’s rejection.
The last argument in the Appeal Brief specifically relating to claim 6
is that in Argentieri “the locking mechanism 25 does not prevent full
insertion of a second closure into the receptacle.” App. Br. 9; see also Reply
Br. 4—6. The Examiner initially disagrees by construing “full insertion” in
an unreasonably broad way: “without full mesh between corresponding keys
on the cap and retainer, the container may not be fully secured in place (i.e.
can easily be removed), and can be considered not “fully inserted.” Ans. 3.
1 Contrary to Appellant’s argument (Reply Br. 4) Argentieri illustrates a
complementary recess 16 in the reservoir 10 but expressly states that the
complimentary recess can be formed by the cap. See col. 7,11. 15—19.
4
Appeal 2015-006615
Application 13/769,803
We cannot agree with the Examiner’s claim construction in this regard
because one skilled in the art would understand a distinction between
insertion and securement or fixation. In any case, and as the Examiner
reminds, to the extent Argentieri’s device might be regarded as failing to
satisfy the limitations in question pertaining to exclusive keying, the
Examiner’s rejection relied on Thomas to demonstrate that such
arrangements were old and well-known in the art. Ans. 3; Final Act. 4. The
Examiner’s findings and analysis with respect to Thomas in that regard stand
uncontroverted.
Appellant raises an additional argument in the Reply Brief that
“Argentieri does not teach that the retainer is coupled to the receptacle.”
Reply Br. 2—3 (reproducing Figure 1C of Argentieri). This argument is
untimely (37 C.F.R. § 41.41(b)(2)), inapposite, and incorrect. The Examiner
relied on Livingston, not Argentieri, for the receptacle itself, so any absence
of coupling in Argentieri alone is not pertinent to the Examiner’s rejection.
Further, although the schematic illustrations of Argentieri’s locking
mechanism in Figures 1A-C do not depict every structural detail of
Argentieri’s device, Argentieri makes it clear that at least one of the
protrusion or recess is a component of the dispensing appliance 11 including
a recess 22 or “receptacle.” See col. 7,11. 39-41.
For the foregoing reasons, we sustain the Examiner’s rejection of
claim 6, and the Examiner’s rejection of claim 12, which is argued for the
same reasons (App. Br. 11—12).
5
Appeal 2015-006615
Application 13/769,803
Claims 1,9, 13, and 212 present essentially the same issue. Regarding
claims 7, 9, and 13, in addition to relying on the schematic illustrations of
the Argentieri locking mechanism depicted in Figures 1A—C, the Examiner
cites Figures 5 and 7 (Final Act. 4, 5; Ans. 4, 5) which illustrate an
embodiment of Argentieri depicted in greater detail. In particular, the
Examiner cites latch 46 as a component of Argentieri’s retainer that defines
a portion of a wall of the receptacle. Final Act. 4, 5; Ans. 4, 5. Latch 46
appears to satisfy the claim language in question (see, e.g., Argentieri Figure
9; col. 13,11. 6—8, 22—23), and Appellant, referring only to the structures of
Figures 1 A—C, has not addressed the Examiner’s findings in this regard. As
such, the Examiner’s findings and analysis regarding this issue stands
uncontroverted.
Claim 21 contains limitations similar to claim 7, but the Examiner
does not appear to have expressly set forth similar findings in addressing
claim 21. Presumably, as this limitation is not otherwise addressed, this is
the result of an oversight, and the Examiner intended the findings and
analysis set forth regarding claims 7, 9, and 13 to apply to claim 21.
For the foregoing reasons, we sustain the rejection of claims 7, 9, 13,
and 21. However, as we supplement the Examiner’s rejection of claim 21 by
incorporating the Examiner’s analysis related to claims 7 and 13, we
designate our affirmance of claim 21 as a new ground of rejection to ensure
Appellant has a fair opportunity to respond.
2 Appellant presents the same arguments for claim 21 as provided for claim
6 but additionally argues the limitation, “a retainer having a wall defining at
least a portion of the receptacle supporting the first closure” which is similar
to that introduced by claims 7 and 13.
6
Appeal 2015-006615
Application 13/769,803
Although claim 8 is argued under a separate subheading (App. Br. 10—
11), we are unable to identify any argument specifically related to the
language of claim 8 and the Examiner’s rejection thereof. 37 C.F.R. §
41.37(c)(l)(iv) requires “more substantive arguments in an appeal brief than
a mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art.” See In re Lovin 652
F.3d 1349, 1357 (Fed. Cir. 2011). We sustain the rejection of claim 8.
Regarding claim 18, Appellant argues:
There is no teaching or suggestion of such a flange in the cited
references, and it would not have been obvious to include any
flange (let alone a flange that extends radially outward) on the
pushbutton releasable locking mechanism 25 of Argentieri (that
comprises the moveable protrusion 17 and spring means 27,
which the Examiner asserts is equivalent to the claimed retainer).
Reply Br. 11.
The Examiner’s rejection of claim 18 is predicated on “hav[ing] a
flange extending radially outward in order to act as a stop to limit the
radially outward movement of the protrusion as a container is inserted, and
[a determination] that a mere reversal of the essential working parts of a
device involves only routine skill in the art.” Final Act. 6. It is unclear,
from the Examiner’s statement, where the Examiner proposes to extend a
flange and what parts of the prior-art device the Examiner proposes it would
have been obvious to reverse. The Answer is no more enlightening on this
point. See Ans. 6. We further note, to the extent that the Examiner is
relying on the same structure in Argentieri to meet two different components
of the system of claim 18, the flange of claim 18 is recited as an additional
element of the retainer (see, e.g., flange 44 Application Figure 3), as
opposed to a more specific requirement for the retainer protrusion of claim
7
Appeal 2015-006615
Application 13/769,803
12. It is not apparent how the Examiner’s proposed combination satisfies
the language of claim 18. “[T]he precise language of 35 U.S.C. § 102 that
‘(a) person shall be entitled to a patent unless,’ concerning novelty and
unobviousness, clearly places a burden of proof on the Patent Office which
requires it to produce the factual basis for its rejection of an application
under sections 102 and 103.” It is neither our place, nor Appellant’s burden,
to speculate as to the basis for rejecting claims. In re Stepan, 660 F. 3d
1341, 1345 (Fed. Cir. 201 l)(It is the PTO’s obligation to provide timely
notice to the applicant of all matters of fact and law asserted.) Accordingly,
we reverse the Examiner’s rejection of claim 18.
The remaining claims are not separately argued.
DECISION
The Examiner’s rejections of claims 6—10, 12—17, and 19 are
affirmed.
The Examiner’s rejection of claims 21—25 is affirmed but designated
as including a new ground of rejection under 37 C.F.R. § 41.50(b).
The Examiner’s rejection of claim 18 is reversed.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
8
Appeal 2015-006615
Application 13/769,803
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART; 37 C.F.R, $ 41.50(b)
9