Ex Parte Bernhard

Patent Trial and Appeal Board

Feb 15, 2018

13790077 (P.T.A.B. Feb. 15, 2018)

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.
13/790,077 03/08/2013 Jordan S. Bernhard 110403-3 2178
26285 7590 02/20/2018
KfrT flATRS T T P-Pimhnrah
EXAMINER
210 SIXTH AVENUE
PITTSBURGH, PA 15222-2613
SMITH, PRESTON
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
02/20/2018 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):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JORDAN S. BERNHARD
Appeal 2017-005844
Application 13/790,0771
Technology Center 1700
Before KAREN M. HASTINGS, CHRISTOPHER C. KENNEDY, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to35U.S.C. § 134, Appellant seeks our review of the
Examiner’s rejections under 35 U.S.C. § 103(a) adverse to the patentability
of claims 1, 5—8, 14, 15, 17, 18, 20—28, and 30-32.
We have jurisdiction under 35 U.S.C. § 6.
We reverse.
1 Jordan Creative Works, LLC is stated to be the real party in interest. App.
Br. 2.
Appeal 2017-005844
Application 13/790,077
BACKGROUND
The subject matter on appeal relates to combination beverage and
storage containers useful for simultaneously holding a beverage and another
product such as food or a toy. Spec. Tflf 2, 4.
Independent claim 1 is illustrative, is taken from the Claims Appendix
of the Appeal Brief, and appears below (with key limitations italicized):
1. A combination beverage and storage container, comprising:
a container body including a non-removable top end wall
and at least one upstanding vertical wall defining a first enclosed
storage area and a second storage area adjacent the first enclosed
storage area such that the second storage area is at least partially
surrounded by the first enclosed storage area and is at least
partially defined by a bottom wall and a rear wall and wherein
the first enclosed storage area has a bottom portion that has a
first volume and an upper portion that has a second volume that
is less than the first volume, the bottom portion of the first
enclosed storage area being adjacent to the bottom wall and the
upper portion of the first enclosed storage area being adjacent to
the rear wall;
a consumable liquid in the first enclosed storage area;
a closure member movably affixed to the container body
for completely enclosing the second storage area;
a first access opening extending into the first enclosed
storage area through the top end wall', and
a first seal member interacting with said container body to
establish a sealed cover over the first access opening.
App. Br. 20 (emphasis added).
2
Appeal 2017-005844
Application 13/790,077
OPINION
The Examiner rejects the claims 1, 5—8, 14, 15, 17, 18, 20-28, and
30-32 as unpatentable over Crossley,2 Hanneman,3 and Andrews,4 either
with or without Peppier.5 Final Act. 3—5; Ans. 3—5.
We need only consider independent claims 1 and 14.
In support of the rejections, the Examiner provides (Ans. 6) an
annotated Figure 3 of Crossley reproduced below:
"A
vertical wall denning ly
enclosed storage
area I
7closure member
move Die affixed
to the container
body for
completely
enclosing the
second storage
A: A ox
The annotated Figure 3 of Crossley depicts a vertical cross-section of
a pill cup. Ans. 6; Crossley 111.
2 David W. Crossley, US 2007/0068949 Al, published March 29, 2007.
3 Amy F. Hanneman, US 6,079,586, issued June 27, 2000.
4 Jared P. Andrews, Sr., US 6,053,401, issued April 25, 2000.
5 Stanley R. K. Peppier, US 3,931,891, issued January 13, 1976.
3
Appeal 2017-005844
Application 13/790,077
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art, or would have been obvious based on the
knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988). This the Examiner has failed to do, so we reverse the
rejections.
First, we note that the Examiner has relied on an unreasonably broad
interpretation for the recited “top end wall” by relying on Crossley’s middle
portion of an interior wall. Ans. 6. It is well-established that during
examination, “the PTO must give claims their broadest reasonable
construction consistent with the specification.” In re ICON Health and
Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). Throughout the
Specification, the phrase “top end wall” is used to refer to a top exterior
portion of a container, and not a middle or interior part of the container. See,
e.g., Figs 1-4 ffl 75-77, 79), Figs. 10-12 (1 85), Figs. 13-15 (H 89, OI­
OS), and Figs. 45—47 (1109). Therefore, the Examiner’s reliance on
Crossley’s angled interior middle wall to evince the “top end wall” of
independent claims 1 and 14 is unreasonably broad.
Moreover, even if Crossley’s angled interior middle wall could be
reasonably construed to be a “top end wall,” Appellant is correct (Reply Br.
4) that such wall neither contains “a first access opening extending” there
through, nor a “seal member ... to establish a sealed cover over” it.
Furthermore, claim 1 requires the bottom portion of the first enclosed
storage container to have a greater volume than the top portion. On this
4
Appeal 2017-005844
Application 13/790,077
record, there is no fact finding to establish that this limitation is met by the
Crossley pill cup. In fact, it appears to us that the opposite is true. Crossley,
Fig. 3.
SUMMARY
The decision of the Examiner is reversed.
REVERSED
5