Ex Parte Benson

Patent Trial and Appeal Board

Mar 30, 2018

13058309 (P.T.A.B. Mar. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/058,309 02/09/2011
124676 7590 04/03/2018
Russell Ng PLLC
8729 Shoal Creek Blvd., Suite 100
Austin, TX 78757
FIRST NAMED INVENTOR
Keith Benson
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.
Triple.000011-US 1103
EXAMINER
RANDALL, JR., KELVIN L
ART UNIT PAPER NUMBER
3651
NOTIFICATION DATE DELIVERY MODE
04/03/2018 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):
s tephanie@russellnglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEITH BENSON
Appeal2017-000936
Application 13/058,309
Technology Center 3600
Before JOSEPH L. DIXON, MAHSHID D. SAADAT, and MATTHEW J.
McNEILL, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 appeals under 35 U.S.C. § 134(a) from the Examiner's
Non-Final Rejection of claims 8, 10, 12-15, 20, 24, and 27-35, which
constitute all the claims pending in this application. 2 We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellant, the real party in interest is Triple Crown Dog
Academy, Inc. App. Br. 2.
2 Claims 1-7, 9, 11, 16-19, 21-23, 25, and 26 have been canceled.
Appeal2017-000936
Application 13/058,309
STATEMENT OF THE CASE
Introduction
Appellant's invention relates to "a self-righting dispenser of items, for
example, animal food and/ or animal treats." Spec. i-f 1. Claim 10 is
illustrative of the invention and reads as follows:
10. A dispenser for pet food and pet treats, the dispenser
compnsmg:
a self-righting housing including:
an upper housing, a lower housing and a cap removably
and rotatably couplable to the upper housing;
a hollow interior upper cavity in the upper housing for
containing a plurality of loose items to be dispensed from the
dispenser to an exterior of the dispenser, such that the plurality
of loose items move freely within the hollow interior upper
cavity as the dispenser is moved by a pet interacting with the
dispenser, wherein the cap is removed from the upper housing to
provide external access to the interior upper cavity and coupled
to the upper housing to enclose the interior upper cavity when
the items are dispensed from the dispenser, and wherein a
volume of the hollow interior upper cavity is defined by the cap
and an inner surf ace of an outer wall of the upper housing;
an interior lower cavity for containing a plurality of loose
items to be dispensed from the interior lower cavity to the
exterior of the dispenser, wherein the interior lower cavity is
covered at least in part by the upper housing;
a floor dividing the interior upper cavity from the interior
lower cavity;
an upper aperture through the floor by which items to be
dispensed move from the interior upper cavity to the interior
lower cavity as the dispenser is moved by the pet;
a continuously curved bottom surface that rests on an
underlying substrate; and
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a dispensing aperture, disposed in the lower housing and
in communication with the interior lower cavity, through which
items are dispensed from the interior lower cavity to the exterior
of the dispenser as the dispenser is moved by a pet interacting
with the dispenser.
The Examiner's Rejections
Claims 10, 12-15, 24, 27, 29, 30, 31, 34, and 35 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Ho (US 6,167841 Bl; Issued Jan. 2,
2001), Morrow (US 6,283,339 Bl; Issued Sept. 4, 2001), Pearce (US
2008/0083378 Al; Published Apr. 10, 2008), Anderson et al. (US
2006/0138162 Al; Published June 29, 2006) ("Anderson"), and Tsengas
(US 6,237,538 Bl; Issued May 29, 2001). See Non-Final Act. 2-8.
Claims 20, 32, and 33 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ho, Morrow, Pearce, and Tsengas. See Non-Final Act. 8-
10.
Claim 28 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Ho, Morrow, Pearce, Anderson, Tsengas, and Roessler et al. (US
6,561,378 Bl; Issued May 13, 2003) ("Roessler"). 3 See Non-Final Act. 10-
11.
ANALYSIS
In rejecting claim 10, the Examiner relies on Ho as disclosing the
recited upper and lower housing including a hollow interior for holding
loose items, a continuously curved bottom surface, and a dispensing
aperture. Non-Final Act. 2-3 (citing Ho Figs. 1-6, col. 1, 11. 19-29). The
3 The Examiner explains that claim 8 was inadvertently omitted from the
statement of the rejection of claims 8 and 28. Ans. 9.
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Application 13/058,309
Examiner further relies on Morrow as disclosing a floor, an upper aperture,
and a dispensing aperture (Non-Final Act. 3--4 (citing Morrow Figs. 1-8)),
and on Pearce as disclosing a removable cap defining the volume of the
hollow interior (Non-Final Act. 5 (citing Pearce Figs. 1-9D)). Lastly, the
Examiner finds Anderson teaches a cap rotatably coupled to the upper
housing and Tsengas teaches a continuously curved bottom surface that rests
on a substrate. Non-Final Act. 4--5. The Examiner finds that it would have
been obvious to one of ordinary skill in the art to use each of the elements
disclosed in Ho with Morrow "to control flow for selectable usage" (Non-
Final Act. 4), with Pearce and Anderson "to provide protection against
unauthorized usage of a dispensing device" (Non-Final Act. 4--5), and with
Tsengas "so as to provide an alternative design choice as known within the
art" (Non-Final Act. 5).
Motivation to Combine the References
Appellant contends the Examiner erred in combining the references
because "the alleged motivations would not have led an ordinary skilled
artisan not having reference to the present specification to construct the
claimed invention." App. Br. 7. Appellant specifically argues the stated
motivation(s) is not disclosed in Anderson, Pearce, or Tsengas, and using
Morrow's twist bottom dispenser "would actually disincentivize the
proposed combination." Id. According to Appellant, the Examiner has not
articulated "why an ordinarily skilled artisan would be motivated to seek an
alternative design choice in light of the teachings of the other cited
references, and particularly in light of Ho, which extols use of a flat bottom
to provide stability to the dispenser." App. Br. 8.
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Application 13/058,309
The Examiner responds that Appellant's arguments are against the
references individually, whereas the rejection is based on the combination of
the reference teachings. Ans. 3. We agree with the Examiner's findings and
the articulated reasoning that combining the specific elements of the cited
references, such as the curved bottom surface of Tsengas, would have
suggested the claimed subject matter to one of ordinary skill in the art. For
example, Tsengas suggests a curved bottom surface in the form of a toy ball
that rewards the pet with pet treats in order to encourage pets to play with
the toy. See Tsengas, col. 1, 11. 40-44. Moreover, as the Examiner correctly
points out, the proposed combination is not based on separate teachings of
Ho, Morrow, Pearce, Anderson, and Tsengas, but rather based on the
combination of the references as discussed above (Ans. 14). See In re
Keller, 642 F.2d 413, 425 (CCPA 1981).
Hindsight
We are also unpersuaded by Appellant's contention that the Examiner
relied on hindsight for the proposed combination. In KSR, the Supreme
Court stated that "[a] factfinder should be aware, of course, of the distortion
caused by hindsight bias and must be cautious of arguments reliant upon ex
post reasoning." KSR Int'! v. Teleflex, Inc., 550 U.S. at 421 (citing Graham
v. John Deere Co., 383 U.S. 1, 36 (1966)). Nevertheless, the Court also
qualified the issue of hindsight by stating that "[ r ]igid preventative rules that
deny factfinders recourse to common sense, however, are neither necessary
under our case law nor consistent with it." Id. at 421. Cognizant of this
precedent, we are satisfied that the Examiner's proposed combination of the
references involve nothing other than combining prior art elements that
perform their ordinary functions to predictably result in the improved
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dispenser housing of Ho based on the desired functionality of each reference
teachings. See Non-Final Act. 2-5, Ans. 2-5.
Furthermore, the skilled artisan is "a person of ordinary creativity, not
an automaton," and this is a case in which the skilled artisan would "be able
to fit the teachings of multiple patents together like pieces of a puzzle." KSR
Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 420, 421 (2007). Additionally,
"when a patent 'simply arranges old elements with each performing the
same function it had been known to perform' and yields no more than one
would expect from such an arrangement, the combination is obvious." Id. at
417 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)). The
operative question is "whether the improvement is more than the predictable
use of prior art elements according to their established functions." Id.
The combination Creates Conflict in the Reference Teachings
Appellant contends the Examiner erred by combining the references
because Anderson and Morrow relate to containers that are different from
pet feeders of Ho, Pearce, and Tsengas. App. Br. 9. Appellant further
argues that the teachings of Ho related to desirability of a flat bottom for
stability of the pet feeder would negate the suggestion and the motivation
stated by the Examiner. Id.
Appellant's contentions focus on the references separately whereas
the proposed rejection is based on the combination of Ho with Morrow,
Pearce, Anderson, and Tsengas. See also Reply Br. 4. We agree with the
Examiner (Ans. 7) that all of the features of the secondary reference need
not be bodily incorporated into the primary reference. See In re Keller, 642
F.2d 413, 425 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986). Furthermore, the artisan is not compelled to blindly follow
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the teaching of one prior art reference over the other without the exercise of
independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d
881, 889 (Fed. Cir. 1984).
Combination of References does not Result in the
Claimed Subject Matter
Appellant contends the Examiner erred in rejecting the claims over the
combination of the cited references because the proposed combination
would not result in the claimed subject matter. App. Br. 10. Appellant
further points to the specific teachings of the references and asserts one of
ordinary skill in the art would not have combined the identified features in a
manner that would match the instant claims. App. Br. 11.
The Examiner responds the combination is proper because Appellant
attempts to individually distinguish Ho and Morrow, rather than addressing
the combined teachings of the references. See App. Br. 10-11. Each
reference must be read, not in isolation, but for what it fairly teaches in
combination with the prior art as a whole. See In re Keller, 642 F .2d at 425
("The test for obviousness is not ... that the claimed invention must be
expressly suggested in any one or all of the references. Rather, the test is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art."). Furthermore, in KSR, the Supreme Court
criticized a rigid approach to determining obviousness based on the
disclosures of individual prior art references, with little recourse to the
knowledge, creativity, and common sense that a skilled artisan would have
brought to bear when considering combinations or modifications. See KSR,
550 U.S. at 415-22; see also Randall Mfg. v. Rea, 733 F.3d 1355, 1362
(Fed. Cir. 2013). Here, each reference provides a specific feature with an
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identifiable benefit that would have suggested to one of ordinary skill in the
art the proposed modifications to Ho with respect to that feature. We
therefore agree with the Examiner that it would have been obvious to
combine Morrow's teaching of a dispensing aperture and Tsengas' curved
bottom surface with Ho's teachings to arrive at the claimed invention.
CONCLUSION
As discussed herein, Appellant's arguments have not persuaded us
that the Examiner erred in finding the combination of Ho with Morrow,
Pearce, Anderson, and Tsengas teaches or suggests the disputed limitations
of claim 10, and the remaining claims which are not argued separately.
Therefore, we sustain the 35 U.S.C. § 103(a) rejections of claims 8, 10, 12-
15, 20, 24, and 27-35.
DECISION
We affirm the decision of the Examiner to reject claims 8, 10, 12-15,
20, 24, and 27-35.
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 )(iv).
AFFIRMED
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