Ex Parte Brown

Patent Trial and Appeal Board

Mar 30, 2016

12465539 (P.T.A.B. Mar. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/465,539 05/13/2009
22200 7590 04/01/2016
PARK, VAUGHAN, FLEMING & DOWLER LLP
2820 FIFTH STREET
DA VIS, CA 95618
Wendell Brown
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.
WB-014 3811
EXAMINER
TARAZANO, DONALD LAWRENCE
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
04/01/2016 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):
DAN@PARKLEGAL.COM
j eannie@parklegal.com
trisha@parklegal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PA TENT TRIAL AND APPEAL BOARD
Ex parte WENDELL BROWN1
Appeal2014-004308
Application 12/465,539
Technology Center 1700
Before MARK NAGUMO, KAREN M. HASTINGS, and
MONTE T. SQUIRE, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Wendell Brown ("Brown") timely appeals under 35 U.S.C. § 134(a)
from the non-final rejection2' 3 of claims 8-18 and 20-23, which are all of
the pending claims. We have jurisdiction. 35 U.S.C. § 6.
We AFFIRM-IN-PART.
1 The real party in interest is listed as Wendell Brown, the named inventor.
(Appeal Brief, filed 3 June 2013 ("Br."), 1.)
2 Office Action mailed 16 January 2013 ("Office Action"; cited as "OA").
3 A Request for Continued Examination under 3 7 C.F .R. § 1.114 was filed
on 4 October 2012.
Appeal2014-004308
Application 12/465,539
A. Introduction4
OPINION
The subject matter on appeal relates to an apparatus for carrying
dehydrated food (e.g., a powder or gel), to
which water or some other liquid may be
added to reconstitute the food.
(Spec. 2 [0007].) The apparatus comprises a
pouch fitted with an aperture through which
the food and liquid may be added, and a
shell into which the pouch may be placed.
In some embodiments, as illustrated in
Fig. 3A, right, apparatus 300[5J comprises a
pouch 302 that fits into rigid shell 304.
(Id. at [0009].) Flanged aperture 340:342,
which permits pouch 302 to be opened,
closed, filled, and emptied, is
accommodated by permanent slot 344 in
case 304. Apparatus 300 is self-standing
when pouch 302 in installed within
shell 304. (See claim 8, reproduced infra.).
302
304
1 .. ----------- ---- "
~ --~-~~~
{Fig. 3A shows an embodiment of the claimed apparatus}
4 Application 12/465,539, Expandable Food Container, filed 13 May 2009.
We refer to the '"539 Specification," which we cite as "Spec."
5 Throughout this Opinion, for clarity, labels to elements are presented in
bold font, regardless of their presentation in the original document.
2
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Application 12/465,539
According to the '539 Specification, the claimed apparatus provides a
more convenient and efficient container for transporting and rehydrating
dehydrated food than does the prior art. (Spec. 1 [0005]-2 [0006].)
Independent claim 8 is representative and reads:
An apparatus configured to transport a hydratable food and
receive a liquid for mixing with the hydratable food, the
apparatus comprising:
a pouch comprising:
an interior cavity; and
a flanged aperture providing access to the interior cavity,
wherein the pouch is closed except for the flanged
aperture; and
a rigid shell comprising:
a panel forming an elliptical cylinder; and
a permanent slot configured to removably receive the
flanged aperture as the pouch is installed in the rigid
shell;
vvherein the apparatits is self-standing vvhen the poitch is
installed within the shell.
(Br., Claims App. A-1; some indentation, paragraphing, and emphasis
added.)
Claims 9-12 and 20-23 depend from claim 8.
Claim 13, set out in full infra, is the only other independent claim.
Remaining dependent claims 14-18 depend from claim 13.
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Appeal2014-004308
Application 12/465,539
The Examiner maintains the following grounds of rejection6 :
A. Claims 8-10, 12-18 and 20-23 stand rejected under
35 U.S.C. § 103(a) in view of Forsman. 7
Al. Claims 11 and 15 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Forsman and Thermo
Fischer Scientific. 8
B. Claims 8-10, 12-18 and 20-23 stand rejected under
35 U.S.C. § 103(a) in view ofKauss. 9
Bl. Claims 11 and 15 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Kauss and Thermo
Fischer Scientific.
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Although Brown argues the patentability of independent claim 8 in
parallel with independent claim 13, the claims differ in several ways that
merit separate discussion. Except as noted infra, Brown does not raise
arguments for the separate patentability of the dependent claims, which
therefore stand or fall with the corresponding independent claims.
37 C.F.R. § 41.37(c)(l)(iv) (2013).
6 Examiner's Answer mailed 21November2013 ("Ans.").
7 Barley A. Forsman et al., Hydration system with improved fluid reservoir,
U.S. Patent No. 7,070,075 B2 (2006).
8 www.nalgene-outdoor.com/detail.aspx?ID=71 visited 22 February 2012.
(A check of the Nalgene website on 21January2016 failed to find this
item).
9 Eric Kauss et al., Modular pack system, U.S. Patent Application
Publication US 2007/0152007 Al (2007).
4
Appeal2014-004308
Application 12/465,539
Claim 8
Brown urges the Examiner erred harmfully in finding that Forsman
describes a rigid pack 202, illustrated in
Fig. 22, (right), which is described as
being designed to be strapped to a
user's back. (Br. 4, 11. 4-9.)
Fig. 22
200
'""
{Forsman Fig. 22 shows pack 102 for reservoir 12}
Brown argues further that pack 202 contains explicitly flexible reservoir 12
(illustrated in Figs. 1 and 2, below), and that there is nothing to indicate,
\_14 \,~,1~--18
{Forsman Figs. 1 and 2 show plan and side views of flexible reservoir 12}
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Appeal2014-004308
Application 12/465,539
contrary to the Examiner's findings, "that a water-filled pouch (by itself or
within another article) may be considered to be 'self-standing' ... even
though apparently it is the water within the pouch, (not the pouch itself) that
allows it to 'stand."' (Br. 5, 11. 3-6.)
The Examiner (OA 3, 1. 15) cites the disclosure of Forsman at
column 12, lines 14-23 as support for the finding that pack 202 has a rigid
shell. That passage, however, does not describe the rigidity of the pack,
although it does state that the pack includes "body mounting straps 208" that
can be shoulder straps or waist straps. We find that no substantial evidence
supports the Examiner's findings that Forsman describes pack 202 as being
rigid, and that the weight of the evidence supports Brown's arguments to the
contrary.
The Examiner finds further that the pack "is a bag or carrying sack
type article," and further finds that "it has a degree of rigidity in order to be
useful for its intended purpose of carrying items." (OA 3, 11. 19-21.)
During examination, claims are to be interpreted by giving the terms
that appear in them the broadest reasonable meaning, when read in light of
the supporting disclosure by a person having ordinary skill in the art. In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). When a term is not defined
in the Specification, the ordinary meaning is presumed to apply. In the
context of material objects, an ordinary meaning of the word "rigid," is,
"very firm rather than pliant or flexible in structure: lacking or devoid of
flexibility." 10 The Examiner, however, has not directed our attention to any
disclosure in the '539 Specification indicating that Brown uses the word
10 Webster's 3d New International Dictionary, unabridged (1993).
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Application 12/465,539
"rigid" in a more general way, let alone in a way so broad as to encompass
the "rigidity" of any material capable of carrying items. To the extent the
Examiner relies on such a broad reading of the term "rigid," we hold the
Examiner's claim construction readings harmfully erroneous.
With respect to Kauss, Brown points out (Br. 8, 11. 7-9) that Kauss
describes, in paragraph [0059], on which the Examiner relies as evidence
that Kauss teaches a rigid shell (OA 9, 11. 6-13), that the outer shell 112 for
hydration pack 110 is an "outer fabric shell." Brown points out that, as seen
in Figs. 4 and 811 , the "portions not zipped up (e.g., a flap of shell 112,
pockets 132) will flop over due to their relaxed natures." (Br. 8, 11. 10-12.)
On the present record, in the absence of prior art evidence of record
that the flexible packs described by Forsman and by Kauss are rigid, as
required by claim 8, the rejections of claim 8-10, 12, and 20, 21, and 23
over each of Forsman and Kauss are reversed.
claim 11
The Examiner relies on Thermo Fischer Scientific as evidence that the
pouch is comprised of two panels joined at three of the four edges of the
panel, and a bottom joined to the remaining fourth edges of the two panels
(claim 11, dependent on claim 8).
Brown does not acknowledge the rejection of claim 11 in view of
either Forsman or Kauss, each further combined with Thermo Fischer
Scientific. Accordingly, argument on this issue has been waived, and we
summarily affirm the rejection of claim 11.
11 Fig. 8 is reproduced infra at 11.
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Application 12/465,539
Claim 22
Claim 22 depends from claim 8 and recites that "the apparatus is
designed to be transported by hand." (Br., Claims App. A-3.) The
Examiner makes no findings regarding the "transported by hand" limitiation
that cure the deficiencies of the rejection of independent claim 8. We
therefore reverse the rejection of claim 22, notwithstanding that Brown's
arguments are not persuasive because the limitation of claim 22 does not
impose any requirements of structure that Forsman does not have; nor does
claim 22 exclude any structure that Forsman does have. The rejections of
claim 22 are reversed.
Independent claim 13
Independent claim 13 reads as follows:
An apparatus for transporting and reconstituting a hydratable
food, the apparatus comprising:
an expandable closed pouch
containing the hydratable food and
having a substantially rectangular form when not
expanded;
an aperture defining a bore through a surface of the pouch
for accessing an interior of the pouch; and
an expandable shell configured to receive the expandable
pouch;
wherein the aperture is configured to permit a liquid to be
introduced to the interior to reconstitute the hydratable
food;
wherein the expandable shell comprises
a slot configured to guide the aperture when the
expandable shell receives the expandable pouch,
wherein the aperture remains exposed after the pouch is
received in the shell;
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Appeal2014-004308
Application 12/465,539
wherein the expandable pouch and the expandable shell
automatically expand as the liquid is introduced; and
wherein the apparatus is self-supporting in an upright
orientation after said automatic expanding.
(Br., Claims App. A-1 to A-2; some indentation, paragraphing, and emphasis
added.)
Although, as mentioned supra, Brown argues claim 13 in parallel with
claim 8, certain differences need to be kept in mind. First, claim 13 recites
that the pouch is "expandable." (Spec. 9 [0051]-10 [0052]; see also Fig. 5
(not reproduced here), showing pleated side edges). Claim 8, in contrast,
does not characterize the mechanical properties of the pouch. Claim 13 also
recites that the shell is expandable. (Id.) Where claim 8 requires that the
shell be "rigid," claim 13 does not. Furthermore, claim 13 recites that "the
apparatus is self-supporting in an upright orientation after said automatic
expanding" (Br., Claims App. A-2), i.e., after being filled with liquid and
automatically expanded. Claim 8, in contrast, requires that "the apparatus is
self-standing when the pouch is installed within the shell" (id. at A-1 ), a
condition that does not require that the pouch be filled with liquid.
Regarding the patentability of claim 13 in view of Forsman, Brown
urges first that "[t]he 'closed' nature of the 'expandable closed pouch'
element of claim 13 was not specifically addressed (Office Action,
paragraph 9, lines 2--4), but has only one opening and therefore overcomes
Forsman for the reason stated above." (Br. 3, 11. 21-23.)
This argument is not persuasive of harmful error because the "closed
pouch" is not limited to a single aperture. In contrast to claim 8, claim 13
does not require that "the pouch is closed except for the flanged aperture."
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Application 12/465,539
Patentability may not be established based on "limitations" that are neither
express nor inherent in a claim. In any event, flexible drinking tube 22, to
which Brown objects, is provided with valves 28, and mouthpiece 26 may be
bite-actuated, indicating, as the Examiner found (Ans. 15, 11. 1-6, discussing
the limitation in claim 8) that reservoir 12 is "closed" when these valves are
closed.
Brown urges further that the Examiner erred in finding that Forsman' s
water-filled pouch may be considered to be "self-supporting," "even though
apparently it is the water within the pouch (not the pouch itself) that allows it
to 'stand."' (Br. 5, 11. 3-5.) "In addition," Brown argues, "a water-filled
pouch will naturally slump or subside as gravity requires, in contrast to
Appellant's invention as claimed." (Id. at 11. 9-10.)
The difficulty with this argument is that claim 13 merely requires that
"the apparatus is self-supporting in an upright orientation after said
automatic expanding," and both "the expandable pouch and the expandable
shell automatically expand as the liquid is introduced." (Br., Claims
App. A-2.) Thus, the apparatus is self-supporting after the liquid is poured
into the expandable pouch, which is in the expandable shell. Claim 13 does
not specify that the apparatus, or any part of the apparatus, be self-
supporting when the apparatus is not filled with liquid. Nor does claim 13
limit the mode by which the filled apparatus is self-supporting.
Brown raises no other arguments for the patentability of claim 13 in
view of Forsman. We conclude that Brown has not shown harmful error in
the rejection of claim 13 in view of Forsman.
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Application 12/465,539
We therefore atlinn the rejection of claims 13-18 in view of Forman.
Finally, however, Brown argues, referring to Figs. 4 and 8, that Kauss
provides "no indication that a bottom or base of shell 112 is adequately
shaped or sized to allow the
combination to balance upright." (Br.,
sentence bridging 8-9.) Fig. 8, shown
right, shows an exploded view of hydration
pack 110 and backpack 130. "The inside
surface of backpack 130 includes two
studs 46 that may be used to mount
11. 10-17.) These features
support Brown's contention that Kauss
provides no indication that the
hydration back or backpack are
designed to stand upright.
120 120
{Kauss Fig. 8 shows hydration pack 110 and backpack 130}
The Examiner has not directed our attention to any disclosure in
Kauss indicating that hydration pack 110 or backpack 130 are shaped or
sized to allow the backpack containing the filled hydration pack to stand
upright.
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Application 12/465,539
We conclude that weight of the evidence supports Brown regarding
the patentability of claim 13 in view of Kauss. We therefore reverse the
rejection of claims 13-18 under 35 U.S.C. § 103(a) in view ofKauss.
Claim 15
Claim 15 depends from claim 13, and requires that "the aperture is
located on a first edge of the expandable pouch." (Br., Claims App. A-2.)
Brown does not acknowledge the rejection of claim 15 in view of either
Forsman or Kauss, each further combined with Thermo Fischer Scientific.
Accordingly, argument on this issue has been waived, and we summarily
affirm the rejection of claim 15.
C. Order
It is ORDERED that the rejection of claims 8-10, 12, and 20-23
under 35 U.S.C. § 103(a) in view of Forsman is REVERSED;
It is further ORDERED that the rejection of claims 8-10, 12, and 20-
23 under 35 U.S.C. § 103(a) in view ofKauss is REVERSED;
It is further 0 RD ERED that the rejection of claims 13-18 under
35 U.S.C. § 103(a) in view of Forsman is AFFIRMED;
It is further 0 RD ERED that the rejection of claims 13-18 under
35 U.S.C. § 103(a) in view ofKauss is REVERSED;
It is further ORDERED that the rejection of claims 11 and 15 under
35 U.S.C. § 103(a) in view of the combined teachings of Forsman and
Thermo Fischer Scientific is AFFIRMED;
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Application 12/465,539
It is further ORDERED that the rejection of claims 11 and 15 under
35 U.S.C. § 103(a) in view of the combined teachings of Kauss and Thermo
Fischer Scientific is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED-IN-PART
13