Ex Parte Miller

Patent Trial and Appeal Board

Jun 1, 2018

13951220 (P.T.A.B. Jun. 1, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/951,220 07/25/2013 Alexander K. Miller
26874 7590 06/05/2018
FROST BROWN TODD LLC
3300 Great American Tower
301 East Fourth Street
CINCINNATI, OH 45202
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.
0136288.0648555-CJC 8904
EXAMINER
CASTILLO, KEVIN CHARLES
ART UNIT PAPER NUMBER
3781
NOTIFICATION DATE DELIVERY MODE
06/05/2018 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):
patents@fbtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXANDER K. MILLER
Appeal2017-006738
Application 13/951,220 1
Technology Center 3700
Before LINDA E. HORNER, BENJAMIN D. M. WOOD, and
NATHAN A. ENGELS, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1--4 and 6-8. Final Office Action
(March 3, 2016) (hereinafter "Final Act."). 2 We have jurisdiction under
35 U.S.C. § 6(b).
1 Alexander K. Miller ("Appellant") identifies Trophies, Inc. as the real
party in interest. Appeal Brief (September 30, 2016) (hereinafter "Appeal
Br."), at 1.
2 Claims 5 and 9-16 are withdrawn from consideration. Final Act. 1.
Appeal2017-006738
Application 13/951,220
The claimed subject matter relates to "lids for holding a can or a bottle
inverted in a disposable cup." Specification (July 25, 2013) (hereinafter
"Spec."), i-f 2. Figures 8 and 9 of the Drawings are reproduced below and
show a sectional view and a perspective view, respectively, of an
embodiment of the claimed cup lid. Id. i-fi-114-15.
~-,1117
100·_,., /:-__~ "' f/ ~, \\'\r·JH
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Figures 8 and 9 show lid 100 capable of holding a can as well as a
bottle. Spec. i-f 24. Lid 100 is formed by dome 124, can receptacle 132,
bottle receptacle 122, and rim attachment 128. Id. Aperture 112 extends
through the inner volume of can receptacle 132 and bottle receptacle 122.
Id. Can receptacle 132 includes upper edge 117. Id. i-f 19 (describing upper
edge 17 of the first embodiment). Both can receptacle 132 and bottle
receptacle 122 are preferably conical or tapering in shape such that they
narrow as they extend into the interior of dome 124. Id. i-f 24. Can
receptacle 132 is sized to allow a can of similar diameter to a typical twelve
ounce can to be inserted therein and is deep enough to hold the can in place.
Id. Bottle receptacle is sized to receive the neck of a typical beer or soda
bottle. Id. When inserted, the shoulders of the bottle rest against the
transition between can receptacle 132 and bottle receptacle 122. Id. Rim
attachment 128 snaps over the rim of a cup to hold lid 100 onto the cup. Id.
2
Appeal2017-006738
Application 13/951,220
The Examiner rejected the claims under 35 U.S.C. § 112(b) as being
indefinite based on claim language recited in claim 1. The Examiner also
rejected the claims as anticipated by the prior art. For the reasons provided
below, we disagree with the Examiner's determination that the claim
language is unclear when read in light of the Specification. We also
disagree with the Examiner's finding of anticipation. Accordingly, we
REVERSE.
CLAIMED SUBJECT MATTER
Claim 1 is the sole independent claim on appeal and is reproduced
below.
1. A lid for holding a can or a bottle upside down
inside a cup, the lid comprising:
a rim attachment mechanism allowing the lid to be
attached to the cup;
a dome connected to the rim attachment mechanism such
that the dome extends above the cup when the lid is attached to
the cup, the dome having an aperture therein;
a can receptacle extending from the top of the dome into
the interior of the dome through the aperture in the dome,
wherein the can receptacle is formed to accept a can and to hold
the can in a fixed position relative to the lid; and
a bottle receptacle extending from a bottom of the can
receptacle, wherein the bottle receptacle is formed to accept a
neck of the bottle and to hold the bottle in a fixed position relative
to the lid.
Appeal Br. 7 (Claims Appendix).
3
Appeal2017-006738
Application 13/951,220
REJECTIONS
The Final Office Action includes the following rejections: 3
1. Claims 1--4, 6, and 8 stand rejected under 35 U.S.C. § 112(b) as
being indefinite for failing to particularly point out and distinctly
claim the subject matter which the inventor or a joint inventor
regards as the invention.
2. Claims 1--4 and 6-8 stand rejected under 35 U.S.C. § 102(a)(l) as
anticipated by Takatsuki (US 5,497,892, issued March 12, 1996).
ISSUES
The Examiner determined that the claim language reciting the can
receptacle "extending from the top of the dome into the interior of the dome"
is indefinite because, according to the Examiner, the Figures do not show
this claim feature and the Specification is silent as to where or how the can
receptacle is placed within the lid. Final Act. 4; see also Examiner's Answer
(January 24, 2017) (hereinafter "Ans."), at 8 (explaining that Figures 8 and 9
show the can receptacle extending from a top edge of a flat portion of the
lid, and "unless the flat top is considered part of the 'dome,' Appellant's
argument is not persuasive."). Appellant argues that Figures 8 and 9 show a
lid having a can receptacle extending downward from the dome and that the
description of this lid in the Specification "contains ample description of the
3 The Examiner also objected to the Drawings for failing to show the feature
recited in dependent claim 2." Final Act. 2. Appellant presents arguments
rebutting this objection. Appeal Br. 4. This drawing objection is
petitionable, not appealable. See In re Berger, 279 F.3d 975, 984 (Fed. Cir.
2002) (noting that matters of a discretionary, procedural, or non-substantive
nature are not appealable to the Board when they are not directly connected
with the merits of issues involving rejections of claims).
4
Appeal2017-006738
Application 13/951,220
dome, the bottle and can receptacles, and their relation to each other.
Appeal Br. 4-5 (citing Spec. i-f 24 and original claim 1). An issue before us
is whether the language reciting the can receptacle "extending from the top
of the dome into the interior of the dome" is clear.
With regard to anticipation, the Examiner found that Takatsuki
discloses a lid, including a dome (curved portion of 30) connected to a rim
attachment mechanism (21) such that the dome extends above the cup when
the lid is attached to the cup. Final Act. 4 (citing Takatsuki, Fig. 4).
Appellant argues that the Examiner erred in finding that Takatsuki discloses
a lid including a dome. Appeal Br. 5-6. Another issue before us is whether
Takatsuki discloses a lid including a dome.
ANALYSIS
First Ground of Rejection: Indefiniteness
The Specification describes, with reference to Figures 3 and 4, that lid
10 includes dome 24 and bottle receptacle 22 including upper edge 1 7.
Spec. i-f 19. Based on this description, we understand flat upper edge 17 to
refer to part of bottle receptacle 22, which extends downwardly from the top
of dome 24. Figures 8 and 9 similarly show lid 100 comprising dome 124,
can receptacle 132, and bottle receptacle 122. Spec. i-f 24. Dome 124 is
shown below shaded in blue in annotated Figure 9. Can receptacle 132
includes upper edge 11 7, as shown below shaded in orange in annotated
Figure 9.
5
Appeal2017-006738
Application 13/951,220
128
Annotated Figure 9 illustrates that the flat portion at upper edge 117 is
part of can receptacle 132 and the top of dome 124 is located at the topmost
portion of the curved part of lid 100. The flat portion of the can receptacle at
upper edge 117 extends along the top of dome 124, and the remainder of can
receptacle 132 extends downwardly from upper edge 117 and into the
interior of dome 124. Thus, we find that one having ordinary skill in the art
would understand what is meant by the claim language "a can receptacle
extending from the top of the dome into the interior of the dome through the
aperture in the dome" when that language is read in light of the
Specification. Accordingly, we do not sustain the rejection of claims 1-4, 6,
and 8 under 35 U.S.C. § 112(b ).
Second Ground of Rejection: Anticipation by Takatsuki
The Examiner provides a dictionary definition of "dome" as "a
vaulted roof having a circular, polygonal, or elliptical base and a generally
hemispherical or semihemispherical shape." Ans. 9 (citing THE AMERICAN
HERITAGE DICTIONARY). The Examiner found that the curved portion of
Takatsuki's funnel-shaped filling port element 30 is a dome. Final Act. 4;
Ans. 9 (finding "Takatsuki disclose a top with a circular base having a
semihemisp heri cal shape").
6
Appeal2017-006738
Application 13/951,220
Figure 4 of Takatsuki is reproduced below.
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Figure 4 of Takatsuki shows a cross-sectional view of filler cap 24.
Takatsuki, col. 3, 11. 7-8. Takatsuki's element 30 is funnel-shaped with a
rounded upper outer edge. In other words, the outer surface of element 30
extends downwardly from the upper surface and then tapers inwardly and
downwardly; only the upper circumferential edge of element 30 is rounded.
We agree with Appellant that Takatsuki's funnel-shaped filling port
element 30 is not in the form of a dome. In particular, we disagree with the
Examiner that the rounded portion of element 30 forms a semihemispherical
shape. For these reasons, the Examiner erred in finding independent claim
1, and dependent claims 2--4 and 6-8, anticipated by Takatsuki.
Accordingly, we do not sustain the rejection of claims 1--4 and 6-8 under
35 U.S.C. § 102(a)(l).
7
Appeal2017-006738
Application 13/951,220
DECISION
The decision of the Examiner rejecting claims 1--4 and 6-8 is
reversed.
REVERSED
8