Ex Parte Allen

Patent Trial and Appeal Board

Feb 21, 2019

14122000 (P.T.A.B. Feb. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/122,000
7590
OLEN YORK
15 RIVERVIEW CT.
MILTON, WV 25541
11/13/2014
02/21/2019
FIRST NAMED INVENTOR
Charles Allen
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.
ALLQl PA 14 9604
EXAMINER
GRANO, ERNESTO ARTURIO
ART UNIT PAPER NUMBER
3735
MAIL DATE DELIVERY MODE
02/21/2019 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 CHARLES ALLEN
Appeal2019-001464
Application 14/122,000
Technology Center 3700
Before STEVEN D.A. McCARTHY, LISA M. GUIJT, and
FREDERICK C. LANEY, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection2 of claims 1-7. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 The Reply Brief is submitted solely to identify the Applicant, Charles
Allen, a micro-entity, as the real party in interest. Reply Br. 2; Appeal Br. 1.
2 Appeal is taken from the Final Office Action dated April 9, 2018.
Appeal2019-001464
Application 14/122,000
STATEMENT OF THE CASE
Claim 1, the sole independent claim reproduced below, is exemplary
of the subject matter on appeal.
1. An inflation valve cap comprising:
a cap body having an aperture, the aperture housing
a valve body;
the valve body having a linearly elongated bore and
perforation; and
the aperture, the linearly elongated bore, and the
perforation arranged in coaxial alignment; and
the perforation forming at the terminus of the
linearly elongated bore and continuing to an exterior
margin of the valve body, the perforation comprising a
retumably resilient material and forming a substantially
impermeable seal at an initial state within the valve body.
THE REJECTIONS
I. Claims 1 and 3 stand rejected under 35 U.S.C. § 102 as
anticipated by Tubbs (US 2,713,713; issued July 26, 1955).
II. Claim 2 stands rejected under 35 U.S.C. § 103 as unpatentable
over Tubbs and Jordan (US 6,010,028; issued Jan. 4, 2000).
III. Claim 4--7 stand rejected under 35 U.S.C. § 103 as unpatentable
over Tubbs.
ANALYSIS
Rejection I
Regarding independent claim 1, the Examiner finds that Tubbs
discloses an inflation valve cap, as claimed, including a cap body having an
aperture (i.e., closure member 25, aperture 26) and a valve body having a
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Application 14/122,000
linearly elongated bore (i.e., rubber valve 29, tool-guiding aperture 35 ).
Final Act. 2-3 (citing Tubbs, Fig. 2); see also Tubbs 3:20-29, 4:34--35.
Appellant argues that "element 3 5 is specifically described as an
'aperture' ... and is depicted and described as an opening or open space at
the very top of the valve, consistent with the common understanding of the
term and any dictionary definition that might be consulted." Appeal Br. 9
(citing Tubbs 4:35). Appellant submits that the common definition of the
claim term "aperture" is "an element defining an opening with no
impediment of ingress or egress at either end of the opening ( e.g., such as an
aperture of a camera)," while the claim term "bore" is "generally understood
as having at least one end that terminates with some other element, usually
provided either temporary or permanent closure, such as the inside of a gun
barrel ( with a closed, internal end and an open, external end for firing a
bullet)." Id. Appellant concludes that Tubbs' tool-guiding aperture 35 is an
aperture, not a bore. Id.
The Examiner responds that "a 'bore' is usually a cylindrical hole,"
and that Tubbs' tool-guiding aperture 35 is depicted in Figure 2 as having
"[an] elongated opening ... that extends linearly." Ans. 3. The Examiner
determines that the structure of Tubbs' aperture 3 5 is identical to the linearly
elongated bore disclosed in Appellant's Specification.
We determine that an ordinary definition of the claim term "aperture,"
in view of the Specification, is "an opening or open space" (WEBSTER'S
THIRD NEW INT'L DICTIONARY 99 (1993), and an ordinary definition of the
claim term "bore," in view of the Specification, is "a hole made by or as if
by boring" (id. at 255). Thus, we determine that a bore is a type of aperture,
or open space, and that by identifying an open space as an aperture, as in
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Application 14/122,000
Tubbs, does not exclude the open space from also having the characteristics
of a bore, i.e., a hole made as if by boring.
Figure 2 of Tubbs is reproduced below.
Figure 2 of Tubbs depicts a sectional view of the closure member with the
rubber valve, and particularly, tool-guiding aperture 35 in rubber valve 29.
Tubbs 2:35-37. Although patent drawings may not be relied on for defining
precise proportions if the specification is silent on the issue, a drawing is
available as a reference for all that it teaches a person of ordinary skill in the
art. See Hockerson-Halberstadt, Inc. v. Avia Group Int'!, Inc., 222 F.3d 951,
956 (Fed. Cir. 2000); In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972).
Notwithstanding Tubbs' identification of numeral 35 as an aperture, Figure
2 of Tubbs depicts aperture 35 as a cylindrical hole, for example, made as if
by boring in rubber valve 29, and therefore, a preponderance of evidence
supports the Examiner's finding that Tubbs discloses a linearly elongated
bore as claimed.
Accordingly, we sustain the Examiner's rejection of independent
claim 1 as anticipated by Tubbs. Appellant chose not to present a separate
argument for the patentability of claim 3, which depends from claim 1, and
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Application 14/122,000
therefore, for essentially the same reasons as stated supra, we also sustain
the Examiner's rejection of claim 3.
Re} ection II
Dependent claim 2, which depends from independent claim 1, recites,
in relevant part, "wherein the cap body further comprises internal threads for
threaded coupling with external threads of a beverage bottle." Appeal Br. 28
(Claims App.). The Examiner reasons that it would have been obvious "to
replace the cap to clamp attachment of Tubbs with threading attachment as
taught by Jordan ... to allow for removal of the cap threads." Final Act. 4
(citing Jordan 4:47---67, Fig. 4).
Appellant argues that Jordan is non-analogous art, and therefore,
improperly relied on by the Examiner. Appeal Br. 10. In particular,
Appellant submits that Jordan discloses "an aluminum can with a metal cap
20," wherein "there is no indication that the metal cap 20 is intended to
accommodate a valve body for inflating the internal volume of the can upon
which it is seated." Id. ( citing Jordan 4:47-5:8). Appellant further submits
that "a metal cap would become an unsafe projectile," and therefore, is
"unsafe" for use as claimed. Id.
The Examiner responds that Jordan is in the same field of endeavor as
Appellant's invention, namely, "closures for sealing an opening of a
container." Ans. 6.
A reference qualifies as prior art for an obviousness determination
when it is analogous to the claimed invention. Innovention Toys, LLC. v.
MGA Ent., Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011). "Two separate tests
define the scope of analogous art: ( 1) whether the art is from the same field
of endeavor, regardless of the problem addressed, and (2) if the reference is
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Application 14/122,000
not within the field of the inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved." In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). The "field of
endeavor" test asks if the structure and function of the prior art is such that it
would be considered by a person of ordinary skill in the art because of
similarity to the structure and function of the claimed invention as disclosed
in the application. Id. at 1325-26. "A reference is reasonably pertinent ...
if it is one which, because of the matter with which it deals, logically would
have commended itself to an inventor's attention in considering his
problem." In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). "If a reference
disclosure has the same purpose as the claimed invention, the reference
relates to the same problem, and that fact supports use of that reference in an
obviousness rejection." Id. Whether a prior art reference is "analogous" is a
question of fact. Id. at 658.
We agree with the Examiner's determination that the field of endeavor
of Appellant's invention is closures for sealing an opening of a container, as
determined by the Examiner. Therefore, Jordan is analogous to the claimed
invention because the field of endeavor of Jordan's invention is also a
closure for sealing an opening of a container. See, e.g., Jordan 1: 12-16
("This invention relates to methods for manufacturing of metal cans, and in
particular to the manufacture of a reclosable can having a threaded neck
portion for receiving a threaded closure to seal contents in the container.").
Further, a problem addressed by Appellant, relative to the internal threads on
the cap body of claim 2, is to provide "repurposed objects and materials that
may be utilized as 'plinking' targets" (Spec. ,r 6), wherein "[t]he cap body
may include ... threads for threaded coupling with a threaded beverage
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Application 14/122,000
bottle neck" (id. ,r 8). Again, Jordan discloses "a reclosable can having a
threaded neck portion for receiving a threaded closure to seal contents in the
container," which is reasonably pertinent to the problem of sealing a new
cap onto a used container for repurposing the container (Jordan 1: 12-16
( emphasis added)).
Appellant also argues that objective indicia of non-obviousness
overcome the Examiner's rejection of claim 2, including "long-felt,
unresolved need and the failure of others; copying by a competitor; and
unsolicited praise by others." Appeal Br. 11; see also id. at 12-26.
To be afforded substantial weight, the objective indicia of non-
obviousness must be tied to the novel elements of the claim at issue. See,
e.g., In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011). Appellant refers to
"the cap for threaded mating with the external threads of the neck of a
beverage bottle," as a feature of the commercial product embodying the
invention, when presenting Appellant's evidence of commercial success.
Appeal Br. 13-14 ( citing Exhibit 1 for disclosing sales of "approximately
$29,000.00" during a six month period). Appellant also submits that the
lack of a similar product marketed by Umarex US 3 (i.e., "an equivalent cap-
and-valve produce for producing a reactive-target") is evidence of a long-felt
unresolved need and/or failure of others. Id. at 16. Appellant further
submits evidence of copying by a competitor. Id. at 17.
In this case, we find that the evidence strongly suggests the claimed
subject matter (i.e., internal threads on a cap body for threaded coupling with
external threads of a beverage bottle, as set forth in clahn 2) is nothing more
3 Appellant identifies Umarex US as a former exclusive licensee. Reply Br.
2.
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Application 14/122,000
than the application of a known technique to a known device to yield
predictable results. And after weighing all of the evidence before us, we
find that the Examiner's evidence and rationale supporting obviousness
outweighs Appellant's contrary evidence of long-felt need. This is
particularly true when an invention involves nothing more than "the
predictable use of prior art elements according to their established
functions." Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010)
(quoting KSR, 550 U.S. at 417); see also Ohio Willow Wood Co. v. Alps
South, LLC, 735 F.3d 1333, 1344 (Fed. Cir. 2013) ("[W]here a claimed
invention represents no more than the predictable use of prior art elements
according to established functions, ... evidence of secondary indicia are
frequently deemed inadequate to establish non-obviousness.").
Accordingly, we sustain the Examiner's rejection of claim 2.
Rejection Ill
Claims 4 and 6, which depend from independent claim 1, require, in
relevant part, "the perforation [ to] travers[e] frorn the terminus of the
linearly elongated bore within the bulb of the va1ve body to the exterior
margin of the bulb." Appeal Br. 29----30 (Claims App.). The Examiner finds,
with respect to independent claim 1, that Tubbs' slit 3 6 corresponds to the
claimed perforation. Final Act. 3.
Appellant argues that Tubbs discloses that slit 3 6 '" extends
completely through the valve member,"' and therefore, Tubbs does not
disclose "a perforation that is oriented at the terminus of a linearly elongated
bore as recited in [c]lairns 4 and 6." Appeal Br. 27 (quoting Tubbs 4:36-
37). In particular, Appellant argues that because Tubbs fails to disclose a
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Application 14/122,000
linearly elongated bore (as presented supra with respect to claim 1), Tubbs
cannot disclose a perforation oriented at the terminus of such a bore. Id.
As depicted in Figure 2 of Tubbs, slit 36 traverses from the terminus
of the linearly elongated bore (i.e., too1-guided aperture 35, as determined
supra) within the bulb of n1bber valve 29 to an exterior margin of the bulb,
such that filling tool 31 can fill the container. See, e.g., Tubbs 3 :54---59
("filling tool 31 in the form of a tubular member or hollow needle is then
inserted through the n1bber valve 29, and a suitable gas ... is introduced
under pressure through such tool to the interior of the container 21"). Thus,
Appellant's argument does not apprise us of error in the Examiner's finding.
Accordingly, we sustain the Examiner's rejection of claims 4 and 6 .
. Appellant chooses not to present separate arguments for the patentability of
claim 7, which depends from claim 6, and therefore, for essentially the same
reasons as stated supra, we sustain the Examiner's rejection of claim 7.
DECISION
The Examiner's decision rejecting claims 1-7 is AFFIRMED.
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
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