THIRSTYPET LLCDownload PDFPatent Trials and Appeals BoardMar 15, 20212020004727 (P.T.A.B. Mar. 15, 2021) Copy Citation 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. 15/820,618 11/22/2017 Christopher NERO 07002-P0001B 1564 136531 7590 03/15/2021 The Roy Gross Law Firm, LLC 50 Washington Street Suite 737/745 Norwalk, CT 06854 EXAMINER LARSEN, JEFFREY R ART UNIT PAPER NUMBER 3643 MAIL DATE DELIVERY MODE 03/15/2021 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 CHRISTOPHER NERO Appeal 2020-004727 Application 15/820,618 Technology Center 3600 ____________ Before JENNIFER D. BAHR, MICHAEL J. FITZPATRICK, and WILLIAM A. CAPP, Administrative Patent Judges. FITZPATRICK, Administrative Patent Judge. DECISION ON APPEAL Appellant, ThirstyPet LLC,1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 1, 3, 4, 7, 10, 12, 14, 16–18, and 20–26. We have jurisdiction under 35 U.S.C. § 6(b). A telephonic oral hearing was held February 22, 2020. A transcript of the hearing was entered in the record (“Tr.”). We affirm. 1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42. Appellant identifies itself as the sole real party in interest. Appeal Br. 2. Appeal 2020-004727 Application 15/820,618 2 STATEMENT OF THE CASE The Specification The Specification “relates to a portable drinking device for pets which is suitable for use when travelling with pets or when transporting pets to and from various locations.” Spec. ¶1. The Claims Claims 1, 3, 4, 7–10, 12, 14, 16–18, and 20–26 are rejected. Final Act. 1. Claims 2, 5, 6, 11, 13, 15, and 19 are cancelled. Id. at 2. No other claims are pending. Appeal Br. 17–21. Independent claim 1 is representative and reproduced below. 1. A portable drinking device for pets comprising: a circular semi-rigid wall structure, the circular semi- rigid wall structure comprising a bottom, a top, and at least one sidewall having an upper rim, the bottom and the at least one sidewall forming a reservoir for holding a liquid, the circular semi-rigid wall structure having an opening at the top; and a removable closure element which closes the opening at the top of the circular semi-rigid wall structure in a water-tight way, the removable closure element being releasably attached to the upper rim of the at least one sidewall; wherein the at least one sidewall has a plurality of recess elements arranged to prevent the circular semi-rigid wall structure from tipping over when a pet is drinking the liquid from the reservoir and wherein the bottom of the semi-rigid wall structure has an indentation that prevents the semi-rigid wall structure from tipping over when the pet is drinking the liquid, the indentation configured to create static friction to prevent the device from tipping over, and the plurality of recess elements arranged above the bottom of the sidewall, wherein each of the plurality of recess elements extend outwardly from a center point of the circular semi-rigid wall structure and wherein each of the plurality of recess elements Appeal 2020-004727 Application 15/820,618 3 are selected from a group consisting of triangle-shaped, tear- shaped, or pear-shaped, wherein the removable closure element seals the liquid within the reservoir during transport of the portable drinking device, and wherein the portable drinking device is pre-packed with the liquid. Id. at 17–18. The Examiner’s Rejections The following rejections are before us: 1. claims 14, 16, 17, 18, 20, 21, 24, and 25, under 35 U.S.C. § 112(b), as indefinite (Final Act. 2); 2. claims 1, 3, 4, 7, 8, 14, 16–18, 20, and 21 under 35 U.S.C. § 103 as unpatentable over Worry2 and Watts3 (id. at 3); 3. claim 9 under 35 U.S.C. § 103 as unpatentable over Worry, Watts, and Burge4 (id. at 7); 4. claim 10 under 35 U.S.C. § 103 as unpatentable over Worry, Watts, and Collins5 (id. at 8); 5. claim 12 under 35 U.S.C. § 103 as unpatentable over Worry, Watts, and Carpentieri6 (id.); 6. claims 22 and 24 under 35 U.S.C. § 103 as unpatentable over Worry, Watts, and Gibson7 (id. at 9); 7. claims 23 and 25 under 35 U.S.C. § 103 as unpatentable over 2 US 2015/0068464 A1, published Mar. 12, 2015 (“Worry”). 3 US 7,207,291 B1, issued Apr. 24, 2007 (“Watts”). 4 US 2006/0144340 A1, published July 6, 2006 (“Burge”). 5 US 2008/0060966 A1, published Mar. 13, 2008 (“Collins”). 6 US 2013/0291802 A1, published Nov. 7, 2013 (“Carpentieri”). 7 US 2010/0101499 A1, published Apr. 29, 2010 (“Gibson”). Appeal 2020-004727 Application 15/820,618 4 Worry, Watts, and Scheer8 (id. at 9); and 8. claim 26 under 35 U.S.C. § 103 as unpatentable over Worry, Watts, and Dellinger9 (id. at 10). DISCUSSION Rejection 1 The Examiner rejected claims 14 and 18 under 35 U.S.C. § 112(b) for reciting “the circular semi-rigid wall structure” without sufficient antecedent basis. Final Act. 2. The Examiner rejected claims 16, 17, 20, 21, 24, and 25 under 35 U.S.C. § 112(b) based on their dependency from claim 14 or claim 18. Id. Appellant does not argue against the rejection. See Appeal Br. 14 (“Appellant respectfully submits that that the antecedent basis rejections in claims 14 and 18 will be addressed upon resolution of this Appeal.”). Accordingly, we summarily affirm the rejection. Rejection 2 Appellant argues the patentability claims 1, 3, 4, 7, 8, 14, 16–18, 20, and 21 together. Appeal Br. 8–15. Accordingly, we choose claim 1 as representative of all claims subject to this rejection. See 37 C.F.R. § 41.37(c)(1)(iv). Worry discloses “a portable nutritious water drink and container for animals, such as dogs and cats.” Worry ¶1. The Examiner found that Worry’s portable container includes a “semi-rigid wall structure comprising a bottom, a top, and at least one sidewall,” but not one that is circular in shape. Final Act. 3 (citing Worry Fig. 8); see also Worry Fig. 8 (showing a generally rectangular-shaped portable drinking device for pets). The 8 US 4,211,787, issued July 8, 1980 (“Scheer”). 9 US 2009/0104314 Al, published Apr. 23, 2009 (“Dellinger”). Appeal 2020-004727 Application 15/820,618 5 Examiner found that Worry’s sidewall includes a plurality of recess elements but not ones that are “triangle-shaped, tear-shaped, or pear- shaped,” as recited in claim 1. Final Act. 3 (citing Worry Fig. 8, ref. 812). The Examiner found that Worry’s bottom optionally includes an indentation. Id. (citing Worry ¶55); see also Worry ¶55 (“The back side 202 is shown as flat but it is contemplated that the back side 202 can be indented in the middle to provide greater stability when the container system 100 is set on an uneven or bumpy surface.”). Ultimately, the Examiner found that Worry discloses substantially all of the subject matter of claim 1 but “Worry does not specifically teach a circular wall structure with a plurality of recess elements arranged above the bottom of the sidewall, each recess element extends outwardly from a center point of the circular wall structure, each recess element selected from a group consisting of triangle-shaped, tear- shaped, or pear-shaped.” Final Act. 3–4 (citing Worry ¶¶9, 38, 43, and 55, Fig. 8). Watts is discloses a “Pet Feeding Dish.” The Examiner found: Watts teaches circular wall structure 12 with a includes a plurality of recess elements 16 arranged above the bottom of the sidewall [FIG. 3], each recess element extends outwardly from a center point of the circular wall structure [FIG. 2], each recess element selected from a group consisting of triangle-shaped, tear-shaped, or pear-shaped [FIG. 3] for the purpose of providing a pet feeding dish formed to provide for increased stability and thus alleviate most potentially messy spills and to hinder sliding of the dish over the surface of the ground or floor due to inadvertent horizontal forces placed thereon. Final Act. 4 (citing Watts Figs. 2–3). In view of the teachings of Worry and Watts, the Examiner concluded: It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Appeal 2020-004727 Application 15/820,618 6 the portable drinking device taught by Worry to include a circular wall structure with a plurality of recess elements arranged above the bottom of the sidewall, each recess element extends outwardly from a center point of the circular wall structure, each recess element selected from a group consisting of triangle- shaped, tear-shaped, or pear-shaped as taught by Watts because doing so would have provided a pet feeding dish formed to provide for increased stability and thus alleviate most potentially messy spills and to hinder sliding of the dish over the surface of the ground or floor due to inadvertent horizontal forces placed thereon. Id. Appellant argues that Watts’s dish is designed “to slow the eating process for a pet such as a dog,” and, thus, “is directed to a completely different purpose than Applicant’s claims.” Appeal Br. 12. This argument does not apprise us of error. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) (“In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under § 103.”); see also id. at 420 (“[F]amiliar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.”). Appellant argues that “[t]here is no teaching in Watts that would lead a person of skill in the art to provide a portable drinking device for pets that is pre-packed with a liquid.” Appeal Br. 12. However, the Examiner relies on Worry for teaching a portable drinking device for pets that is pre-packed with a liquid. Final Act. 3. And Worry indeed teaches that. Thus, Appellant’s argument does not apprise us of error. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be Appeal 2020-004727 Application 15/820,618 7 established by attacking references individually where the rejection is based upon the teachings of a combination of references. . . . [The reference] must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole.”). Appellant argues that “Watts teaches away from a portable drinking device for a liquid. This is because the furrows 18 of Watts would make it more difficult for a pet to drink a liquid.” Appeal Br. 12. “[A] reference teaches away from a combination when using it in that combination would produce an inoperative result.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1382 (Fed. Cir. 2007). Appellant does not allege an inoperative drinking dish. Appellant alleges a less desirable one. But “the question is whether there is something in the prior art as a whole to suggest the desirability, and thus the obviousness, of making the combination, not whether there is something in the prior art as a whole to suggest that the combination is the most desirable combination available.” In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004): see also In re Keller, 642 F.2d 413, 425 (CCPA 1918) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”). Here, the prior art as a whole (which includes Worry) suggests the desirability, and thus the obviousness, of making the combination. Appellant argues that “both Worry and Watts fail to disclose or suggest an ‘indentation configured to create static friction to prevent the device from tipping over.’” Appeal Br. 12 (quoting claim 1). This argument is not persuasive because, as the Examiner points out (see Final Act. 3; Appeal 2020-004727 Application 15/820,618 8 Ans. 4, Worry states that its back side 202, which corresponds to the “bottom” in claim 1, “can be indented in the middle to provide greater stability when the container system 100 is set on an uneven or bumpy surface.” Worry ¶55. Appellant also argues that “both Worry and Watts fail to disclose or suggest . . . that ‘each of the plurality of recess elements extend outwardly from a center point of the circular semi-rigid wall structure and each of the plurality of recess elements are selected from a group consisting of triangle- shaped, tear-shaped, or pear-shaped.’” Appeal Br. 12 (quoting claim 1). Appellant’s briefs do not propose a construction for “a center point,” despite making arguments depending on its meaning. See Appeal Br. 12; Reply Br. 3. When questioned during oral hearing, counsel for Appellant asserted that the claim refers to a plurality of central points, one per recess, and that each such “center point” refers to a point on the wall structure that is central between the top and bottom of the wall structure. Tr. 10:11–11:25. That construction is unreasonable in view of the Specification. The Specification does not explicitly define “a center point” or even refer to one. See generally Spec. But the Specification repeatedly refers to “recess elements” (plural) that “extend outwardly from the center of the reservoir” (singular). Spec. ¶¶24–25, original claims 5 and 6. For example, paragraph 24 of the Specification discloses: “In certain embodiments, each of the plurality of recess elements are triangular and extend outwardly from the center of the reservoir.” Spec. ¶24 (emphasis added). Moreover, each mention of “center” used in the Specification refers to “the center of the reservoir” and not to multiple center points on the wall structure that circumvents and helps form the reservoir. Id. ¶¶24–25, original claims 5 and 6. Consistent with the Appeal 2020-004727 Application 15/820,618 9 Specification, we construe “each of the plurality of recess elements extend outwardly from a center point of the circular semi-rigid wall structure” to mean that each of the recess elements extends outwardly from the center of the circular semi-rigid wall structure (i.e., the center of the circle). As the Examiner points out, Worry’s recess elements (furrows 16), in fact, extend outwardly from the center of Watts’s circular dish. See Ans. 4. Appellant argues that “the claims require an indentation that provides a dual function as structural stabilizer and logo advertisement.” Appeal Br. 13. However, claim 1 has no such requirement. Appellant appears to be referring to a requirement of dependent claim 10. See Appeal Br. 19 (“The portable drinking device of claim 1, wherein the indentation is a logo indentation.”). Thus, we address that argument in the context of the rejection of claim 10 below (Rejection 4). Appellant has not apprised us of error in the rejection of claim 1. Accordingly, we affirm the rejection of claim 1, as well as that of claims 3, 4, 7, 8, 14, 16–18, 20, and 21, which fall therewith. Rejection 4 Appellant implicitly argues against this rejection, stating as follows: [T]he claim[] require[s] an indentation that provides a dual function as structural stabilizer and logo advertisement. It is beyond the scope of prior art to have this elegant feature as it also discloses a novel marketing technique that furthermore adds functional utility in the form of a stabilized, portable drinking device. Appeal Br. 13. First, Appellant’s argument overstates the claim language. Although claim 10 recites a “logo indentation,” it does not recite an “advertisement” or “elegant feature.” The Examiner cited Collins for teaching a logo indentation. Final Act. 8 (citing Collins ¶50, Figs. 2–3). Appeal 2020-004727 Application 15/820,618 10 Appellant’s argument that claim 10 is “beyond the scope of the prior art” is at odds with the Examiner’s findings, which we sustain. See Collins Fig. 2 (ref. 12). Appellant has not apprised us of error in the rejection of claim 10. Accordingly, we affirm the rejection of claim 10. Rejections 3 and 5–8 Appellant does not present any additional arguments for these rejections. See Appeal Br. 15. Accordingly, we likewise affirm these rejections. SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 14, 16, 17, 18, 20, 21, 24, 25 112(b) Indefiniteness 14, 16, 17, 18, 20, 21, 24, 25 1, 3, 4, 7, 8, 14, 16–18, 20, 21 103 Worry, Watts 1, 3, 4, 7, 8, 14, 16– 18, 20, 21 9 103 Worry, Watts, Burge 9 10 103 Worry, Watts, Collins 10 12 103 Worry, Watts, Carpentieri 12 22, 24 103 Worry, Watts, Gibson 22, 24 23, 25 103 Worry, Watts, Scheer 23, 25 26 103 Worry, Watts, Dellinger 26 Overall Outcome 1, 3, 4, 7, 10, 12, 14, 16–18, 20–26 Appeal 2020-004727 Application 15/820,618 11 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)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation