Daniel Dougherty et al.

Patent Trials and Appeals Board

Mar 15, 2022

2021005113 (P.T.A.B. Mar. 15, 2022)

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. 16/282,635 02/22/2019 Daniel A. Dougherty 172754.00003 8068 13503 7590 03/15/2022 QUARLES & BRADY LLP/BURGESS ATTN: IP DOCKET 411 E. WISCONSIN AVE. STE. 2400 MILWAUKEE, WI 53202-4428 EXAMINER NASH, BRIAN D ART UNIT PAPER NUMBER 3734 NOTIFICATION DATE DELIVERY MODE 03/15/2022 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): pat-dept@quarles.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DANIEL A. DOUGHERTY and IRENE DOUGHERTY ____________ Appeal 2021-005113 Application 16/282,635 Technology Center 3700 ____________ Before STEFAN STAICOVICI, MICHAEL J. FITZPATRICK, and GEORGE R. HOSKINS, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge STAICOVICI. Opinion dissenting filed by Administrative Patent Judge FITZPATRICK. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE. Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision in the Final Office Action (dated June 11, 2020, hereinafter “Final 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Daniel Dougherty and Irene Dougherty are identified as the real party in interest in Appellant’s Appeal Brief (filed Feb. 10, 2021, hereinafter “Appeal Br.”). Appeal Br. 4. Appeal 2021-005113 Application 16/282,635 2 Act.”) rejecting claims 1-11. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). SUMMARY OF DECISION We REVERSE. INVENTION Appellant’s invention is directed “to beverage containers mounted atop fuel tanks on motorcycles.” Spec. 1. Claim 1, the sole independent claim, is representative of the claimed invention and reads as follows: 1. A beverage container for a motorcycle having a fuel tank located between its handlebars and seat, the beverage container comprising: a container fastener configured for fastening the beverage container to an upper surface of the fuel tank; a reservoir for containing liquid within the beverage container; a hose coupled to the reservoir for providing access to the liquid, the hose extending through an opening in an outer surface of the beverage container; a plurality of anchors located at a plurality of locations on an outer surface of the beverage container; and a retractable reel, comprising: a hose fastener for fastening a retraction line of the retractable reel to a distal end of the hose; and a reel fastener for fastening the retractable reel to a selected anchor among the plurality of anchors, the retractable reel being configured for retractably engaging the distal end of the hose such that when a rider releases the distal end of the hose, a drinking valve at the distal end of the hose retracts to a position proximate the selected anchor. Appeal 2021-005113 Application 16/282,635 3 Appeal Br. 45 (Claims App.). REJECTIONS I. The Examiner rejects claims 1, 4-9, and 11 under 35 U.S.C. § 103(a) as being unpatentable over VelEau2 and Jurries.3 II. The Examiner rejects claims 2, 3, and 10 under 35 U.S.C. § 103(a) as being unpatentable over VelEau, Jurries, and Jaeger.4 ANALYSIS Rejection I The Examiner finds VelEau discloses most of the limitations of independent claim 1 including, inter alia, a beverage container (hydration pack) and mounting system capable of attaching to a motorcycle’s fuel tank, a reservoir containing a beverage, a hose with a bite-valve for accessing the beverage, a plurality of anchors, and a retractable reel configured to engage the distal end of the hose, such that when a user releases the hose the drinking valve retracts to a location proximate the anchor. Final Act. 3. The Examiner explains that because “claim 1 merely claims a beverage container ‘for a motorcycle’, i.e. for use with a motorcycle,” “[t]he claims are not directed to the combination of a hydration pack and a motorcycle.” Examiner’s Answer (dated June 25, 2021, hereinafter “Ans.”) 6, 8. The Examiner then turns to Jurries to disclose “that the VelEau hydration system 2 “Showers Pass VelEau 42 Hydration System - 42 fl. oz.,” see, e.g., https://www.rei.com/product/815173/showers-pass-veleau-42-hydration- system-42-fl-oz. 3 Amy Jurries, “Retractable Reel Controls Your Hydration Tube.” 4 Jaeger et al., US 2018/0035787 Al, published Feb. 8, 2018. Appeal 2021-005113 Application 16/282,635 4 is adaptable to work with any hydration backpack,” and, thus, “Jurries teaches the bite valve retracted to the hydration pack that VelEau . . . [is] missing.” Final Act. 4 (emphasis omitted); Ans. 7. Thus, the Examiner concludes that it would have been obvious for a person of ordinary skill in the art “to apply the teachings of Jurries with the hydration pack system of VelEau” in order to “provid[e] a hydration system for use with a motorcycle that will allow a user to control their hydration hose while riding, making it easier and safer to grab a drink while operating their vehicle.” Final Act. 4 (emphasis omitted). Appellant argues that “the ‘saddle-mounted hydration reservoir system’ of VelEau would be incapable of reasonably fastening to an upper surface of a fuel tank.” Appeal Br. 30. According to Appellant, It would require not only a resizing or repositioning of the “hydration reservoir” of VelEau, but an entire reconfiguration of the “seat post strap,” the tube “mounts,” and the “ratcheting strap that goes through the saddle rails” to somehow attach the VelEau reservoir to the upper surface of a fuel tank. Id. It is well settled that if the preamble is “necessary to give life, meaning, and vitality” to the claim, then the claim preamble should be construed as if in the balance of the claim. Pitney Bowes, Inc. v. Hewlett- Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (citation omitted). Here, the preamble of independent claim 1 recites, “[a] beverage container for a motorcycle having a fuel tank,” and the body of the claim recites, “a container fastener configured for fastening the beverage container to . . . the fuel tank.” See Appeal Br. 45 (Claims App.) (emphasis added). As such, because claim 1 relies on a portion of the preamble as antecedent basis for the “fuel tank” limitation in the body of the claim, we treat related language Appeal 2021-005113 Application 16/282,635 5 in the preamble as limiting. Proveris Sci. Corp. v. Innovasystems, Inc., 739 F.3d 1367, 1372-73 (Fed. Cir. 2014) (treating preamble language as limiting when a portion of the language appeared in the body of the claim). In addition, the phrase “configured to” is generally used to mean “made to” or “constructed to” perform the claimed function. In re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014) (citing Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012)). Thus, although we agree with the Examiner’s assertion that claim 1 is “not directed to the combination of a hydration pack and a motorcycle” (see Ans. 8), nonetheless, we construe claim 1 to require a “container fastener” that is “made to” or “constructed to” fasten the claimed beverage container to a motorcycle’s fuel tank (see Appeal Br. 45 (Claims App.)). In this case, in a first instance, VelEau discloses a seat post strap and a ratcheting strap for attaching the beverage container to a seat (saddle) of a bicycle. See VelEau 1. Although the Examiner’s position is that VelEau’s seat post strap and ratcheting strap are “capable of” fastening VelEau’s beverage container to a motorcycle’s fuel tank (see Ans. 7), the Examiner has not made any findings that VelEau’s seat post strap and ratcheting strap are “made to” or “constructed to” fasten VelEau’s beverage container to a motorcycle’s fuel tank. In other words, the Examiner has not made any findings or provided any technical reasoning to indicate how a skilled artisan would use VelEau’s seat post strap and ratcheting strap to fasten VelEau’s beverage container to a motorcycle’s fuel tank. In particular, we note VelEau’s disclosure of attaching its beverage container to a bicycle seat (saddle) with a ratcheting strap that “goes through the saddle rails.” See VelEau 1. As a motorcycle fuel tank does not have Appeal 2021-005113 Application 16/282,635 6 “saddle rails” like a bicycle, it is not clear from the Examiner’s rejection how a skilled artisan would fasten VelEau’s beverage container to a motorcycle’s fuel tank. For example, Appellant’s Specification describes the use of magnets to “affix the beverage container 108 to the fuel tank 102.” Spec. 5, ll. 30-31. As such, in the absence of VelEau’s “saddle rails,” and in light of Appellant’s description of magnets, the rejection does not adequately explain how VelEau’s seat post strap and ratcheting strap are “made to” or “constructed to” fasten VelEau’s beverage container to a motorcycle’s fuel tank. Even assuming arguendo that fastening the hydration pack of VelEau to the top surface of a motorcycle’s fuel tank “would require only routine skill in the art,” as per the Examiner’s position, this, in itself, is not a sufficient explanation. See Ans. 7. Thus, the rejection fails to provide an adequate explanation “for the saddle-mounted system [of VelEau] to be completely reconfigured to be ‘capable of’ mounting to an upper surface of a fuel tank of a motorcycle.” Appeal Br. 30. As such, for the foregoing reasons, and because Jurries likewise does not disclose how VelEau’s seat post strap and ratcheting strap are “made to” or “constructed to” fasten VelEau’s beverage container to a motorcycle’s fuel tank (see Final Act. 4), the Examiner’s legal conclusion of obviousness is not supported by sufficient factual evidence, and thus, cannot stand. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (holding that “[t]he legal conclusion of obviousness must be supported by facts. Where the legal conclusion is not supported by facts it cannot stand.”). Furthermore, in a second instance, the reason proffered by the Examiner to modify VelEau’s beverage container with the retractable reel of Jurries, namely, “to allow a user to control their hydration hose while riding, Appeal 2021-005113 Application 16/282,635 7 making it easier and safer to grab a drink while operating their vehicle,” appears to already be adequately performed by the beverage container of VelEau. The Examiner has not provided any findings that VelEau recognized a problem with its retractable reel. See Final Act. 3-4. In particular, VelEau explicitly discloses that “[t]o take a drink, simply grab the bite valve, bring it up to your mouth, drink, and then let the retracting cord and magnet re-secure [the] bite valve.” See VelEau 1. Thus, the Examiner fails to articulate a sufficient reason, with rational underpinnings, why, in the absence of hindsight gleaned improperly from Appellant’s underlying disclosure, a person having ordinary skill in the art would have modified VelEau’s beverage container with the retractable reel of Jurries to arrive at the subject matter of independent claim 1. Without a persuasive articulated rationale based on rational underpinnings, the Examiner’s rejection is the result of hindsight analysis. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds [require] some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”) (cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). We, thus, agree with Appellant that “the rationale . . . regarding the desire to make it ‘easier and safer’ to grab a drink while operating a motorcycle appears to have been gleaned solely from Appellant’s disclosure and thus, is based on impermissible hindsight.” Appeal Br. 29. In conclusion, for the foregoing reasons, we do not sustain the rejection under 35 U.S.C. § 103(a) of independent claim 1, and its respective dependent claims 4-9 and 11, as unpatentable over VelEau and Jurries. Appeal 2021-005113 Application 16/282,635 8 Rejection II The Examiner’s use of the Jaeger disclosure does not remedy the deficiency of the VelEau and Jurries combination discussed supra. See Final Act. 4-5. Therefore, for the same reasons discussed above, we also do not sustain the rejection of claims 2, 3, and 10 over the combined teachings of VelEau, Jurries, and Jaeger.5 CONCLUSION Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4-9, 11 103(a) VelEau, Jurries 1, 4-9, 11 2, 3, 10 103(a) VelEau, Jurries, Jaeger 2, 3, 10 Overall outcome 1-11 REVERSED 5 As we do not sustain the Examiner’s rejections, we do not reach the merits of the Declarations, filed under 37 C.F.R. § 1.132, by: Daniel Dougherty, on November 9, 2020; Michael Williams, on November 9, 2020; and Glenn Hood, on November 4, 2020. Appeal 2021-005113 Application 16/282,635 9 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DANIEL A. DOUGHERTY and IRENE DOUGHERTY ____________ Appeal 2021-005113 Application 16/282,635 Technology Center 3700 ____________ Before STEFAN STAICOVICI, MICHAEL J. FITZPATRICK, and GEORGE R. HOSKINS, Administrative Patent Judges. FITZPATRICK, Administrative Patent Judge. DISSENTING I respectfully dissent from the majority’s Decision reversing the Examiner’s rejections. Claim 1 is an apparatus claim directed to “[a] beverage container for a motorcycle having a fuel tank located between its handlebars and seat.” Appeal Br. 45. The beverage container includes, among other features, “a container fastener configured for fastening the beverage container to an upper surface of the fuel tank.” Based on these recitations, the majority “construe claim 1 to require a ‘container fastener’ that is ‘made to’ or ‘constructed to’ fasten the claimed beverage container to a motorcycle’s fuel tank.” Supra. Appeal 2021-005113 Application 16/282,635 10 The Examiner found that VelEau discloses “a beverage container (hydration pack) and mounting system capable of being attached to a motorcycle having a fuel tank located between its handlebars and seat.” Final Act. 3 (emphasis added). Appellant disputes that finding. See Appeal Br. 30 (“Appellant submits that the VelEau would be incapable of being reasonably attached to a motorcycle.” (emphasis added)). In my opinion, this Appeal should not turn on whatever difference in claim scope results from adopting “‘made to’ or ‘constructed to’” (the majority’s construction) versus “capable of” (the Examiner’s and Appellant’s construction). In my opinion, this Appeal should turn on whether the prior art includes or lacks whatever structure or function is required of the recited “container fastener.” The Specification does not provide much detail regarding the “container fastener.” In fact, outside of the claims, the Specification does not even mention a “container fastener.” See generally Spec. In the Appeal Brief, Appellant directs us to lines 18 through 31 of page 5 of the Specification for written description of this limitation. Appeal Br. 7. Those lines state the following: The outer surface 204 may take any suitable size, shape, or form, not limited to the size or shape illustrated in FIG. 2. For example, the outer surface 204 may have a generally rectangular-solid, curved, rounded, or oval shape, and in some examples, may be configured to take a shape generally based on the shape of the fuel tank 102 onto which the beverage container 108 may be mounted. The beverage container 108 may in some examples be sized and shaped so as not to interfere with the rider's view or use of the gauges and controls of the motorcycle 100. In some examples, a bottom surface 206 of the beverage container 108 may be generally flat, or concave, and configured to be mounted stably onto a top surface of the Appeal 2021-005113 Application 16/282,635 11 fuel tank 102. The footprint of the bottom surface 206 may be configured to be relatively small, that is, such that it may sit on the tank comfortably between the rider’s legs. In a further aspect, the bottom surface 206 of the beverage container 108 may be constructed of a non-scratch material, and in some examples, may include one or more magnets to help affix the beverage container 108 to the fuel tank 102. Spec. 5:18-31. Although this excerpt describes some features that facilitate beverage container 108 being mounted stably onto, sit upon, or magnetically affixed to fuel tank 102, it lacks any description of a “container fastener,” let alone any structure that it requires. Thus, I would construe “container fastener” as a functional limitation, the function being “fastening the beverage container to an upper surface of the fuel tank,” as recited in claim 1. And, given the extremely limited description in the Specification of how that function may be achieved, I would construe “container fastener” quite broadly. In re Swinehart, 439 F.2d 210, 213 (C.C.P.A. 1971) (“‘Functional’ terminology may render a claim quite broad. By its own literal terms a claim employing such language covers any and all embodiments which perform the recited function.”). Finally, I would find that VelEau’s hydration pack is capable of being fastened to an upper surface of a fuel tank. First, I see nothing that would prevent VelEau’s hydration pack from being “mounted stably onto a top surface” of a fuel tank or merely “sit[ting] on the tank.” See Spec. 5:26-28; see also Appeal Br. 7 (citing Spec. 5:18-31 as written description for the “container fastener” limitation). Second, I see no error in the Examiner’s finding that VelEau’s anchor straps could be used to fasten the hydration pack to a fuel tank. Final Act. 3; Ans. 5; see also VelEau 2 (“The VelEau Appeal 2021-005113 Application 16/282,635 12 attaches to the bike with a seat post strap and a sturdy, ratcheting strap that goes through the saddle rails, keeping the system secure.). Accordingly, I respectfully dissent from the Decision’s reversal of the Examiner’s rejections.