Ex Parte Spiegel

Patent Trial and Appeal Board

Aug 22, 2017

13750116 (P.T.A.B. Aug. 22, 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.
HJS-25/DIV II 7020
EXAMINER
NGUYEN, TRINH T
ART UNIT PAPER NUMBER
3644
MAIL DATE DELIVERY MODE
13/750,116 05/14/2013 H. Jay Spiegel
28230 7590 08/22/2017
H. JAY SPIEGEL - H. JAY SPIEGEL & ASSOCIATES
P.O. BOX 11
MOUNT VERNON, VA 22121
08/22/2017 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 H. JAY SPIEGEL
Appeal 2015-006110
Application 13/750,1161
Technology Center 3600
Before ANNETTE R. REIMERS, ARTHUR M. PESLAK, and
ANTHONY KNIGHT, Administrative Patent Judges.
KNIGHT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s non-
final decision rejecting claims 21—40. Appellant, in accordance with 37
CFR § 41.47, presented oral arguments on August 9, 2017. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
1 According to Appellant, the real party in interest is Premium Products, Inc.
App. Br. 1.
Appeal 2015-006110
Application 13/750,116
The claims are directed to a container for “promoting efficient water
drinking by animals.” Spec. 2:20-21. Claims 21 and 35 are the only
independent claims. Claim 21 reproduced below, is representative of the
claimed subject matter:
21. A drinking container for animals, comprising:
a) a first narrow sub-chamber having spaced first and
second side walls, said side walls having upper terminations
that are linear and parallel throughout their lengths, and said
first sub-chamber being filled with and retaining a quantity of
liquid, said first sub-chamber also being defined by end walls
shorter in length than said side walls, said end walls having
upper terminations lying in a common horizontal plane with
said upper terminations of said side walls, said end walls having
respective ends connected to respective adjacent ends of said
side walls;
b) a second sub-chamber being filled with and retaining a
quantity of liquid and having one side at least partially defined
by said second side wall, each sub-chamber having a floor, said
sub-chambers being fluidly interconnected adjacent said sub­
chamber floors;
c) said first and second side walls being spaced apart by a
distance closely corresponding to a width of a tongue of an
animal selected to drink said liquid from said container,
whereby when said animal drinks said liquid with their tongue
in a lapping motion, interaction between sides of said tongue
and said walls results in a greater quantity of water remaining
on said tongue for a longer period of time during each lap than
would be the case (1) in the absence of said interaction and (2)
if said distance did not closely correspond to said width of said
tongue, thereby enhancing efficiency of drinking by said
animal.
App. Br. 36, Claim App.
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Appeal 2015-006110
Application 13/750,116
REJECTIONS2
The Examiner made the following rejections:
1. Claims 21—40 stand rejected under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the subject
matter regarded as the invention.
2. Claims 21—26, 28—36, and 38-40 stand rejected as unpatentable
under 35 U.S.C. § 103(a) over Barnes (US 705,896, issued July 29, 1902)
and Kimbrough III (US D251,688, issued Apr. 24, 1979).
3. Claims 27 and 37 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Barnes, Kimbrough III, and Rohrer (US 6,971,331 Bl,
issued Dec. 6, 2005).
OPINION3
Rejection 1
The Examiner finds that claims 21—40 are indefinite for failing to
particularly point out and distinctly claim the subject matter which is
2 New grounds of rejection are given in the Examiner's Answer. Ans. 2—11.
Appellant chose to maintain the Appeal as provided in 37 C.F.R.
§ 41.39(b)(2) and address the new ground of rejection. Further, Appellant
has incorporated-by-reference arguments made in the Brief. Reply Br. 1—3.
3 Appellant requests that a de novo review be made of the grounds of
rejection. Id. at 2. All issues properly raised by Appellant have been
considered in this decision. See ex Parte Frye, 94 USPQ2d 1072 (BPAI),
2010 WL 889747 (“Filing a Board appeal does not, unto itself, entitle an
appellant to de novo review of all aspects of a rejection. If an appellant fails
to present arguments on a particular issue — or, more broadly, on a
particular rejection — the Board will not, as a general matter, unilaterally
review those uncontested aspects of the rejection.”).
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Appeal 2015-006110
Application 13/750,116
regarded as the invention. In particular, the Examiner finds that “the phrase
‘corresponding to a width of a tongue of an animal’ is confusing since it is
unclear as to what. . . [it] intends and/or encompasses (i.e., what kind and
type of animal is the claimed limitation ‘an animal’ refers to?).” Ans. 2.
Further, the Examiner finds that the terms “narrow” and “closely” are
relative terms and, as such, render the claims indefinite. Id. at 3.
Additionally, the Examiner finds the phrase “said reservoir is sized to
receive an inverted bottle” is unclear. Id. Specifically, the Examiner
questions how the reservoir “is sized” to receive a bottle. Finally, the
Examiner finds that the “whereby clause” in claim 21 is a statement of
“intended or desired use and is not a positive limitation but only requires the
ability to so perform; therefore, it does not constitute a limitation in any
patentable sense.” Id. To conclude the rejection, the Examiner cites to
MPEP sections 2114 and 2115 and states that “[i]f the prior art structure is
capable of performing the intended use, then it meets the claim.” Id. at 4.
Appellant asserts that the “[Specification and drawings are crystal
clear as to exactly what is meant by the width of a tongue of an animal.”
App. Br. 14. In support of the assertion, Appellant references Figure 7 and
the Specification 6:14—7:4 and describes the animals tongue as it would
relate to the invention. See App. Br. 15. (“As is clear, Figure 7 shows a
schematic representation of a portion 5 of a tongue 1 of an animal located
between two adjacent walls identified in Figure 7 with the reference
numerals 21 and 23.”). Appellant’s Figure 7 depicts the tongue width of the
animal as reference letter “c” and the spacing between the tongue and walls
with reference letter “b.” A copy of Figure 7 is reproduced below.
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Appeal 2015-006110
Application 13/750,116
FIG. 7
Appellant’s Figure 7 and the description of the invention in the
Specification at pages 6 and 7 clearly define that the width of the animal
tongue as just that, a tongue measured from side to side. Further, the
Examiner’s question as to the type of animal is answered by the
Specification. See Spec 2:3—4. (“The animal, such as a dog, cat, other pet or
other animal, merely laps the water from the bowl or container and keeps
lapping until it has received its fill.”). One skilled in the art would
understand from this description in the Specification the range of animal
tongue widths encompassed by the claim. Thus, the Examiner has not
demonstrated that the disputed phrases are indefinite.
Though the terms “closely” and “narrow” may not be contained
within the Specification, the description requirement does not demand that
the Specification recite the claimed invention in haec verba. Ariad Pharms.,
Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc).
“Written description” support for the language of the claims may be
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Appeal 2015-006110
Application 13/750,116
contained in the drawings. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
1565 (Fed. Cir. 1991). Furthermore, Appellant’s description at pages 6 and
7 of the Specification and Figure 7 illustrate how the terms “closely” and
“narrow” are to be interpreted. See Reply Br. at 7—9. We accept Appellant’s
definitions for the terms “closely” and “narrow.” The Examiner has thus not
shown that these disputed terms are indefinite.
Appellant uses the phrase “said reservoir is sized to receive an
inverted bottle” to claim the invention. While the Examiner may take issue
with the word choice, this is not a matter of indefmiteness. Reading the
claims in light of the Specification, it is clear that one embodiment of the
invention includes a reservoir having an inverted bottle. As the
Specification states “the sub-chamber 73 is sized to receive an inverted
bottle 81.” Spec. 8:7—18. Further, the drawings show an inverted bottle
received in the reservoir. See Figures 11 and 12. Thus, the Examiner has
not shown that the phrase is indefinite.
Finally, with respect to the “whereby clause,” Appellant argues that
the Examiner cannot ignore any claim features. App. Br. 17. Appellant
refers to Ex parte Taeyong Yoon, Appeal Number 2010-000843 (BPAI
2012) (unpublished). App. Br. 17—18. There, the Board said that “[a]
statement of intended use cannot distinguish over a prior art apparatus that
discloses all the recited limitations and is capable of performing the recited
function.” The Examiner in making the rejection referenced MPEP 2114
and 2115 and further stated that “[i]f the prior art structure is capable of
performing the intended use, then it meets the claim.” Ans. 4. Both
Appellant and the Examiner are in dispute over whether the claim language
in question is a patentable limitation. Whether a limitation creates a
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Appeal 2015-006110
Application 13/750,116
patentable distinction over the prior art or not is not a question of
indefiniteness but one for analysis under 35 U.S.C §§ 102, 103. Therefore,
the Examiner has not shown that the “whereby clause” is indefinite.
Accordingly, the rejection of claims 21—40 under 35 U.S.C. 112,
second paragraph, will not be sustained.
Rejection 2
Claims 21 and 35
The Examiner finds that Barnes teaches first and second sub­
chambers that may be filled with liquid and sidewalls for the sub-chambers
that are “spaced apart by a distance closely corresponding to a width of a
tongue of an animal selected to drink said liquid from said container.” Ans.
5. The Examiner states that the spacing “results in a greater quantity of
water remaining on said tongue for a longer period of time during each lap.”
Id. According to the Examiner, Barnes lacked side walls with linear and
parallel top surfaces. Id. at 6. According to the Examiner, Kimbrough III
teaches the limitations missing from Barnes. Id. The Examiner reasons that
the modification would have been obvious “because a change in form or
shape ... is generally recognized as being well known within the level to
one of ordinary skill in the art depending on one’s intended use.” Id. 7.
Appellant responds that “Barnes teaches a ‘feed trough’ for feeding
hogs.” Reply Br. 11. As viewed by Appellant, Barnes teaches “spacing of
the bars 8 ... to allow a hog to insert their entire head between adjacent bars
to preclude a neighboring hog from pushing them aside.” Id. at 14. Further,
Appellant asserts that there is “no teaching or suggestion in Barnes of any
relationship . . . between the spacing [of the bars] and the width of a hog’s
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Application 13/750,116
tongue.” Id. See also id. at 17. (“Barnes does not disclose correlating the
width of a sub-chamber to the width of the tongue of an animal selected to
drink therefrom.”).
As Appellant asserts, Barnes is a device for feeding hogs. Barnes
1:9—14 (“Its object is ... to enable the small hogs to feed equally without
being displaced by the large ones”). (Emphasis added). The trough is
divided into compartments to “give space for each hog to feed without being
pushed aside by his neighbor.” Id. at 1:51—53. Appellant’s claim 21 and 35
include structure as well as function. See In re Schreiber, 128 F3d 1473,
1478 (Fed. Cir. 1997). (“A patent applicant is free to recite features of an
apparatus either structurally or functionally.”). Claims 21 and 35 both recite
that the walls are “spaced apart by a distance closely corresponding to a
width of a tongue of an animal.” Barnes does not teach that the walls of his
device have a spacing that corresponds to the width of a tongue. Further, the
Examiner has not demonstrated how Barnes teaches the function of an
“interaction between sides of said tongue and said walls results in a greater
quantity of water remaining on [the animal’s] tongue,” as recited in Claims
21 and 35. Therefore, rejection of claims 21 and 35 is not sustained.
The Examiner’s rejection of claims 22—26, 28—34, 36, and 38-40 is
predicated on the Examiner’s articulated rationale, discussed above, with
respect to claims 21 and 35. Accordingly, the rejection of claims 22—26, 28—
34, 36, and 38—40 suffers from the same deficiency as the rejection of claims
21 and 35, and, thus, is not sustained.
Rejection 3
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Appeal 2015-006110
Application 13/750,116
Claims 27 and 37 depend from claims 21 and 35, respectively. Rohrer
does not cure the deficiency of Barnes and Kimbrough III. Accordingly, we
likewise do not sustain the rejection of claims 27 and 37 based upon the
Barnes, Kimbrough III, and Rohrer.
DECISION
The Examiner’s decision to reject claims 21—40 under 35 U.S.C.
§112, second paragraph is reversed.
The Examiner’s decision to reject claims 21—26, 28—36, and 38-40
under 35 U.S.C. § 103 is reversed.
The Examiner’s decision to reject claims 27 and 37 under 35 U.S.C.
§ 103 is reversed.
REVERSED
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