Ex Parte BARTLEY

Patent Trial and Appeal Board

Dec 11, 2018

15194513 (P.T.A.B. Dec. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/194,513 06/27/2016
96191 7590 12/13/2018
Chinta Perdomo Berks & Fratangelo LLP
85 Broad St 17th Fl
New York, NY 10004
FIRST NAMED INVENTOR
Prenith Lenear BARTLEY
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.
01023-0lUS 6877
EXAMINER
KUMAR, RAKESH
ART UNIT PAPER NUMBER
3651
NOTIFICATION DATE DELIVERY MODE
12/13/2018 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):
aberks@chintaperdomo.com
aberks@cpbfcounsel.com
USPTO@dockettrak.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PRENITH LENEAR BARTLEY
Appeal2018-004960
Application 15/194,513
Technology Center 3600
Before CHARLES N. GREENHUT, MICHAEL J. FITZPATRICK, and
JEREMY M. PLENZLER, Administrative Patent Judges.
FITZPATRICK, Administrative Patent Judge.
DECISION ON APPEAL
Prenith Lenear Bartley ("Appellant") 1 appeals under 35 U.S.C.
§ 134(a) from the Examiner's final decision rejecting claims 1, 2, 4--7, and
12. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part and enter new grounds of rejection.
1 The real party in interest is identified as Bartley Investments, L.C. LLC.
Appeal Br. 4.
Appeal2018-004960
Application 15/194,513
STATEMENT OF THE CASE
The Specification
According to Appellant, the claimed invention "relates generally to
improved bottle cap design to facilitate the dispensing of pills from a pill
bottle ... one or two pills at a time." Spec. i-f2.
Figures, 1, IA, and IB are reproduced below. 2
'"--. . ...____, .. ---·· ... ~
FIG, 1A
FIG. 1
FIG.1B
Figures, 1, IA, and IB, reproduced above, show a cap assembly mounted on
a pill bottle 200. Spec. i-f37. The cap assembly includes inner cap 110 and
outer cap 120. Id. Each cap has a circularly-shaped and horizontally
extending "panel" and a "side skirt" extending downward from the
2 These figures are reproduced from the replacement drawings filed April
24, 2017.
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Application 15/194,513
circumference of the panel. Spec. i-fi-f4I--42; Figs. 2A and 3A. The inner cap
includes triangular opening 115, and the outer cap includes corresponding
triangular opening 125. Spec. i-f37. When the triangular openings are
aligned with one another, pills in the bottle may be dispensed. Id.; see also
Fig. IA. When the triangular openings are not aligned with one another,
pills in the bottle cannot be dispensed. Spec. i-f37; see also Fig. IB.
The Rejected Claims
Claims 1, 2, 4--7, and 12 stand rejected. Final Act. 1. Claims 3 and 8
are cancelled, and claims 9-11 are withdrawn from consideration. Appeal
Br. 11-12; Final Act. 1. Independent claims 1 and 12 are representative and
reproduced below.
1. A cap assembly for a medicine bottle containing
tablets or capsules comprising:
an inner cap comprising a first top panel with an
extended shoulder, a first single opening contained in the first
top panel, and a first skirt extending downward from the first
top panel, the first skirt having an inner surface with a first
mechanism for engaging a neck of the bottle; and
an outer cap over said inner cap, said outer cap engaged
by the extended shoulder of the inner cap, said outer cap
comprising a second top panel, a second single opening
contained in the second top panel, and a second skirt extending
downward from the second top panel, the second skirt having
an inner surface with a second mechanism for engaging the
inner cap and an outer surface with one or more ridges for
providing a non-slip grip;
wherein by twisting the outer cap until the second
opening aligns with the first opening and on tilting the bottle,
one or two tablets or capsules are dispensed at a time through
the aligned openings when the medicine bottle is tilted.
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12. A removable circular insert for a medicine bottle
compnsmg:
a cylindrical sleeve having a floor and an open top with a
flange on the top edge, and having a triangular opening in the
floor, wherein the insert fits into a mouth of the bottle and
partially covers the mouth of the bottle, wherein the flange
extends over a top lip of the mouth of the bottle and rests on the
lip, such that a conventional cap for the bottle fits normally into
place over the sleeve, and wherein the opening reduces the area
for dispensing a tablet or capsule in the bottle, such that only
one or two tablets or capsules are dispensed when the bottle is
tilted for the purpose of dispensing tablets or capsules.
Appeal Br. 11, 13-14.
The Appealed Rejections
The following rejections are before us for review:
1. claims 1 and 4--7 under 35 U.S.C. § 103 as obvious over the
Martin3 and Moulding4 (Final Act. 2); and
2. claims 2 and 12 under 35 U.S.C. § 103 as obvious over Martin,
Moulding, and Beckertgis5 (Final Act. 5).
DISCUSSION
The Examiner's Rejection of Claims 1, 2, and 4-7
We adopt the Examiner's factual findings regarding what the cited
prior art teaches. See Final Act. 2-6.
However, we do not adopt the Examiner's implicit construction of the
limitation "said outer cap comprising a second top panel, a second single
3 US 5,213,238, issued May 25, 1993 ("Martin").
4 US 4,460,106, issued July 17, 1984 ("Moulding")
5 US 5,421,472, issued June 6, 1995 ("Beckertgis").
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opening contained in the second top panel," as recited in claim 1 and
incorporated by reference into claims 2 and 4--7.
To meet this limitation, the Examiner cited Martin's outer cap 22
having semi-circular opening 30. Final Act. 3. 6 As pointed out by
Appellant, Martin's outer cap ( and its corresponding top panel) includes
seven additional, smaller openings 32. Appeal Br. 7; see also Martin Fig. 4,
ref. 30, 32. Appellant argues the following:
The instant claims require first and second single openings in the
caps that can be aligned to dispense one or two tablet or capsules
at a time. The recitation of "single" here means that there is one
and exactly one opening in each cap. In the outer cap of Martin,
there are a plurality of openings (drawing numbers 30 and 32).
Appeal Br. 7.
The Examiner answers as follows:
[P]ertaining to the negative limitations of "a single opening" it is
to be noted the appellant incorporated said limitations to
overcome the cited rejections in the Non Final dated 02/24/2017.
The appellant's specification provide no disclosure of a
"single" or "only one" opening and provide no pertinent reason
for a "single" or "only one" opening in the disclosure of the inner
or outer caps.
Ans. 5.
We agree with the Examiner that the application as filed does not
provide written description support for this type of negative limitation.
However, it is nonetheless a limitation of the claims, and the Examiner has
6 As acknowledged by Appellant, the Examiner inadvertently cited semi-
circular opening 66 in the inner cap instead of that of the outer cap. Appeal
Br. 7; see also Ans. 5.
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not shown where such limitation is met in the art of record. See MPEP
§ 2143.03(II) ("When evaluating claims for obviousness under 35 U.S.C.
103, all the limitations of the claims must be considered and given weight,
including limitations which do not find support in the specification as
originally filed (i.e., new matter). Ex parte Grasselli, 231 USPQ 393 (Bd.
App. 1983) aff'd mem. 738 F.2d 453 (Fed. Cir. 1984)")
Martin does not disclose a "single" opening in its outer cap. See
Martin Fig. 4. Further, the Examiner's notation that Martin's outer cap is
divided into three regions, one of which includes a single opening (30) is not
commensurate with the scope of the claims. See Ans. 5.
Accordingly, we reverse the rejection of claims 1, 2, and 4--7.
The Examiner's Rejection of Claim 12
Independent claim 12 recites "a triangular opening" but does not
preclude additional openings. Appeal Br. 13-14. The Examiner rejected
claim 12 as obvious over Martin, Moulding, and Beckertgis. The Examiner
relied on Martin for teaching all of the structure of claim 12 save the
triangular shape of the opening. Final Act. 2-3, 6. The Examiner relied on
Moulding for teaching application of the structure to a medicine bottle. Id.
The Examiner relied on Beckertgis for teaching a triangular shape for an
opening in a cap or top of a container. Id. at 5---6.
The Examiner provided the following rationale for combining these
prior art features:
It would have been obvious to one of ordinary skill in the
art at the time the invention was made to have modified the
teachings of Martin to have included the articles contained in the
dispenser as being tablets or capsules as taught by Moulding
because using the Martin dispenser to dispense alternative
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articles such as tablets or capsules would expand the usefulness
of the dispenser thus increasing potential sales of the dispenser.
Id. at 3--4.
It would have been obvious to one of ordinary skill in the
art at the time the invention was made to have modified the
teachings of Martin in view of Moulding to have included the
first and second dispensing openings as being shaped as rounded
triangles as taught by Beckertgis because rounded comers would
reduce stress factors at the comer of the openings thus strengthen
the dispenser cap assembly.
Id. at 5-6.
Appellant argues against the rejection of claim 12 only by challenging
that a person of ordinary skill in the art would have combined the teachings.
Appeal Br. 9-10. Appellant's arguments are not persuasive. With respect to
combining Martin and Moulding, Appellant does not rebut the Examiner's
articulated rationale. Appellant merely provides conclusory attorney
argument. See Appeal Br. 8 ("The Examiner's reasoning is improper
hindsight bias."). With respect to combining Marting/Moulding with
Beckertgis, Appellant attempts to rebut the Examiner's rationale by arguing
that "[ s ]trength of the comers is not a factor in this invention, and this is not
a meaningful motivation." Id. at 10. The latter aspect of this argument is
conclusory attorney argument. The former aspect of this argument is
inapposite. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 419-20 (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. . . . [ A ]ny need or problem known in the field of endeavor at the
time of invention and addressed by the patent can provide a reason for
combining the elements in the manner claimed.").
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We affirm the rejection of claim 12.
New Ground ofRejection-35 U.S.C. § 103
Claims 1, 2, and 4--7 are rejected as unpatentable under 35 U.S.C.
§ 103 over Martin and Moulding as articulated by the Examiner in the Final
Action, save that we find the asserted prior art suggests ( as opposed to
discloses) a "a second single opening contained in the second top panel."
More specifically, person of ordinary skill in the art, adapting Martin to a
medicine bottle application would omit the smaller openings 32 of Martin's
outer cap as unnecessary or useless for pills/tablets exceeding the size of
openings 32. This would leave semi-circular opening 30 a "single" opening.
Additionally, a person of ordinary skill in the art, adapting Martin to a
medicine bottle application, would have reason to employ only one opening
in order to control the egress of tablets/pills, an objective of Moulding.
Appellant's argument concerning the incompatibility of Martin and
Moulding based on their different utilities (Appeal Br. 6; Reply Br. 2-3)
fails to account for the level of skill in the art. See In re Sovish, 7 69 F .2d
738, 743 (CCPA 1985). As the Examiner points out (Ans. 3--4), Appellant
does not demonstrate why a person of ordinary of ordinary skill would
regard teachings relating to dispensing bottles as relevant only when the
same, or very similar, articles are being dispensed. Appellant also appears to
argue that the use recitation in the preamble implies a degree of restriction
on the free rotation of the outer cap. Reply Br. 3. As the Examiner also
points out, a cap assembly for a medicine bottle can be regarded as
structurally complete without such a restriction. See Ans. 6. Thus, there is
no reason to import such unrecited structural requirements into the claims
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based only on the intended use recitations appearing in the preamble. See,
e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997); Rowe v.
Dror, 112 F.3d 473, 478 (Fed. Cir. 1997) (a preamble is not limiting "where
a patentee defines a structurally complete invention in the claim body and
uses the preamble only to state a purpose or intended use for the
invention.").
New Ground ofRejection-35 U.S.C. § 112(a)
Claims 1, 2, and 4--7 are rejected as unpatentable under 35 U.S.C.
§ 112(a) for failing to provide adequate written description support for the
negative limitation "single" opening precluding more than one opening in
either the inner cap or the outer cap. As discussed above, the term "single"
is defined by what it is not accompanied by, thereby effectively rendering
the term similar to a negative limitation. As the Examiner noted, the
Specification provides no discussion of a "single" or "only one" opening in
either cap and does not describe a reason to exclude additional openings.
See Ans. 5; Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed.
Cir. 2012) ("Negative claim limitations are adequately supported when the
specification describes a reason to exclude the relevant limitation."); Arista
Networks, Inc. v. Cisco Sys., Inc., 908 F.3d 792, 798 (Fed. Cir. 2018)
("[N]othing in the specification suggests that Cisco's proposed negative
limitation is a required part of the contemplated 'broadcast.' We therefore
see no reason to limit the term as Cisco proposes."). "Any claim containing
a negative limitation which does not have basis in the original disclosure
should be rejected under 35 U.S.C. § 112(a)." MPEP § 2173.05(i).
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SUMMARY
The Examiner's rejection of claims 1, 2, and 4--7 is reversed. The
Examiner's rejection of claim 12 is affirmed. New grounds of rejection are
entered pursuant to 37 C.F.R. § 4I.50(b) against claims 1, 2, and 4--7.
TIME PERIOD FOR RESPONSE
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 4I.50(b).
Section 4I.50(b) provides "[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review." Section
4I.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise one of
the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under §41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
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Application 15/194,513
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the MPEP § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§§ 41.50(±), 41.52(b ).
AFFIRMED-IN-PART; 37 C.F.R. § 4I.50(b)
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