Ex Parte Burgess et al

Patent Trial and Appeal Board

Sep 27, 2017

12769900 (P.T.A.B. Sep. 27, 2017)

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.
12/769,900 04/29/2010 James E. Burgess BPMDL0009JB (10072U) 8618
27939 7590 09/27/2017
Philip H. Burrus, IV
Burrus Intellectual Property Law Group LLC
222 12th Street NE
Suite 1803
Atlanta, GA 30309
EXAMINER
MATHEW, FENN C
ART UNIT PAPER NUMBER
3781
MAIL DATE DELIVERY MODE
09/27/2017 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 JAMES E. BURGESS and JOHN KUTSCH
Appeal 2016-003477
Application 12/769,900
Technology Center 3700
Before STEVEN D.A. McCARTHY, LISA M. GUIJT, and
PAUL J. KORNICZKY, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge KORNICZKY.
Opinion Concurring filed by Administrative Patent Judge McCARTHY.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-003477
Application 12/769,900
STATEMENT OF THE CASE
Appellants Janies E. Burgess and John Kutsch1 appeal under
35 U.S.C. § 134(a) from the Examiner’s decision, as set forth in the Final
Office Action dated March 25, 2015 (“Final Act.”), rejecting claims 14—16
and 21—23 under 35 U.S.C. § 103(a) as being unpatentable over Deaton (US
4,228,798, issued October 21, 1980) and Reiner (US 2008/0015526 Al,
published January 17, 2008).2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The claims are directed to a stackable canister and lid assembly.
Spec. 1 (Title). Claim 14, the only independent claims on appeal, is
reproduced below with disputed limitations italicized for emphasis:
14. A canister assembly, comprising:
a canister base having a bottom and a tapered sidewall
extending from the canister base to a lid-engaging rim; and
a lid comprising:
an interior portion surrounded by a perimeter portion
defining a canister connector, the interior portion defining a first
partial interior portion occupying seventy percent or less of the
interior portion and a second partial interior portion occupying
thirty percent or more of the interior portion, wherein:
the lid comprises a plurality of ports extending from the
interior portion;
all ports of the plurality of ports are disposed along the first
partial interior portion; the lid comprises a pour spout disposed
along the second partial interior portion; and
1 Appellants identify Medline Industries, Inc. as the real party in
interest. Appeal Brief, dated October 1, 2015 (“Appeal Br.”), at 2.
2 Claims 1—13 and 17—20 are cancelled. Appeal Br. 14—16 (Claims
App.).
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Application 12/769,900
axes of each of the ports are aligned substantially
orthogonally with a pour spout axis of the pour spout and
substantially parallel with a plane defined by the perimeter
portion; and
a stacking recess to receive a filter of an adjacent lid when
the adjacent lid is rotated out of phase from, and stacked together
with, the lid.
DISCUSSION
The Rejection of Claims 14—16 and 21—23
as Unpatentable Over Deaton and Reiner
Appellants argue claims 14—16 and 21—23 as a group. Appeal Br. 8.
We select claim 14 as the representative claim, and claims 15, 16, and 21—23
stand or fall with claim 14. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Deaton discloses all of the limitations of
claim 14 except for “axes of each the ports aligned substantially
orthogonally with a pour spout axis of the [pour] spout and substantially
parallel with a plane defined by the perimeter portion." Final Act. 3. For
this missing limitation, the Examiner finds that Reiner discloses that port 5
is designed to connect to a hose to receive fluids into the container, and is
angled between 15° and 30° relative to lid 2 to prevent kinking of the
attached hose. Id. at 3^4 (citing Reiner || 22—23, Fig. 1).
The Examiner determines that it would have been obvious “to angle
the ports 30 and 34 of Deaton at an angle between 15 and 30° to the top of
the lid, as taught by Reiner, in order to prevent kinking of the hose
connected to the port, as taught by Reiner,” and that, in the proposed
combination of Deaton in view of Reiner, “the ports 30 and 46, will be
‘substantially’ orthogonal to the pour spout 40 and will be ‘substantially’
parallel to a plane defined by the perimeter of the lid, since the port will be
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Application 12/769,900
between 60 and 75° to the vertical pour spout 40, as modified by Reiner.”
Id.', see also Ans. 7—9. The Examiner notes that the “term ‘substantially’
allows for a broad interpretation of the claim.” Id.
Appellants argue that the Examiner’s rejection is erroneous for several
reasons. First, Appellants argue
Reiner fails to teach each and every limitation of [Appellants’]
claim 14 because none of the port axes are orthogonal to the
pour spout or parallel to the plane defined by the perimeter
portion of the lid. To the contrary, this reference teaches away
from [Appellants’] claim by teaching that all ports are
substantially parallel or acutely aligned with the pour spout axis
and orthogonally to the plane defined by the perimeter portion of
the lid.
Appeal Br. 10—11; see also id. at 12 (“none of Reiner’s port axes are
orthogonal to the pour spout axis”).
Appellants’ argument regarding Reiner is unpersuasive because it is
not commensurate with the scope of claim 14. Claim 14 requires that the
port axes are (1) “substantially3 orthogonal,” not “orthogonal” as argued by
Appellants, to the pour spout axis, and (2) “substantially parallel,” not
“parallel” as argued by Appellants, to the plane of the perimeter of the lid.
Appeal Br. 15 (Claims App.).
3 A plain meaning of “substantially” is “being largely but not wholly
that which is specified.” The Merriam-Webster Dictionary,
https://www.merriam-webster.com/dictionary/substantially, last visited
September 17, 2017. This meaning is consistent with the usage in the
Specification. See, e.g., Spec. 131 (“To further increase stackability, each
of the plurality of ports 107, 108, 109 in this illustrative embodiment has
been turned sideways, such that a reference axis 110, 111, 112 running
through each of the plurality of ports 107, 108, 109 is aligned substantially
parallel with a plane 113 defined by the perimeter portion 103.”).
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Application 12/769,900
Appellants’ argument is also unpersuasive because it does not address
the rejection as articulated by the Examiner. The Examiner determines that,
because Reiner’s port 5 is angled between 15° and 30° relative to lid 2, it is
(1) substantially orthogonal to the axis of pour spout 8, and (2) substantially
parallel to the plane of the plane of the perimeter of the lid, as recited in
claim 14. See, e.g., Final Act. 3^4; Ans. 7—9. We understand that, if
Deaton’s ports are angled at 15° (relative to the lid horizontal plane in Figure
5 of Reiner), as proposed by the Examiner’s rejection, adjacent lids would
be advantageously stackable, as recited in claim 14. Because Appellants do
not properly address the rejection articulated by the Examiner in the Appeal
Brief, Appellants do not identify error.
In their Reply Brief, Appellants subsequently raise a new argument
that Reiner’s port 5 is not “substantially orthogonal” to the pour spout axis
or “substantially parallel” to the lid perimeter. Reply Br. 6—9. Because this
argument could have been presented in the Appeal Brief to rebut the
rejection in the Final Office Action, thus, affording the Examiner an
opportunity to consider and respond to it, the argument is untimely. See
37 C.F.R. § 41.37(c)(vii)(second sentence); In re Hyatt, 211 F.3d 1367, 1373
(Fed. Cir. 2000) (noting that an argument not first raised in the brief to the
Board is waived on appeal); Ex part Borden, 93 USPQ2d 1473, 1477 (BPAI
2010) (informative) (The Board is not required “to take up a belated
argument that has not been addressed by the Examiner, absent a showing of
good cause.”). Appellants offer no justification for their untimely argument.
Second, Appellants argue that Deaton does not correct the alleged
deficiencies in Reiner. Appeal Br. 10—11. Appellants have mischaracterized
the rejection as articulated by the Examiner, and are attacking the references
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individually. Contrary to Appellants’ argument, the rejection uses Reiner to
remedy the deficiencies of Deaton. See Ans. 7. After identifying Deaton,
not Reiner, as the primary reference, the Examiner finds that Deaton does
not disclose “axes of each the ports aligned substantially orthogonally with
a pour spout axis of the [pour] spout and substantially parallel with a plane
defined by the perimeter portion.” Final Act. 3. The Examiner then finds
that Reiner, which discloses ports that are substantially orthogonal to the
pour spout axis and substantially parallel to the plane of the lid perimeter,
corrects the deficiencies of Deaton. Final Act. 4; Ans. 7—9; In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references.”). Appellants do not
address the rejection as articulated by the Examiner and, thus, do not
identify error by the Examiner.
Third, Appellants argue that “[wjhen Deaton is combined with Reiner,
the combination fails to teach each and every limitation of [Appellants’]
claim 14” because (1) “neither reference teaches a port axis that is
orthogonal with a pour spout axis as claimed by [Appellants],” and (2)
“neither reference teaches a port axis parallel to a plane defined by a
perimeter portion of a lid.” Appeal Br. 11 (emphasis omitted, italics added);
see also id. at 9. As discussed above with respect to Appellants’ argument
regarding Reiner, Appellants’ argument is not commensurate with the scope
of claim 14, which requires that the port axes are (1) “substantially
orthogonal,” not “orthogonal,” to the pour spout axis, and (2) “substantially
parallel,” not “parallel,” to the plane of the perimeter of the lid. Appellants’
argument also does not address the Examiner’s determination that, because
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Application 12/769,900
Reiner’s port 5 is angled between 15° and 30° relative to lid 2, it is (1)
substantially orthogonal to the axis of pour spout 8, and (2) substantially
parallel to the plane of the perimeter of the lid, as recited in claim 14. See,
e.g., Final Act. 3^4; Ans. 7—9. Because Appellants do not properly address
the rejection articulated by the Examiner in the Appeal Brief or the actual
scope of claim 14, Appellants do not identify error.
Fourth, Appellants argue that “the combination [Deaton and Reiner]
teaches away from [Appellants’] claims by teaching that all port axes should
be parallel with the axis of the pour spout, save one port axis of Reiner that
is skew.” Appeal Br. 11—12 (emphasis added). Appellants’ argument, as
discussed above, is not commensurate with the scope of claim 14, which
requires the port axes are “substantially orthogonal,” not “orthogonal,” to the
pour spout axis. In addition, Reiner’s disclosure that port 5 is not parallel to
the pour spout axis indicates that Reiner does not criticize, discredit, or
discourage the use of non-parallel ports, as argued by Appellants. DePuy
Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir.
2009) (A “reference does not teach away, however, if it merely expresses a
general preference for an alternative invention but does not ‘criticize,
discredit, or otherwise discourage’ investigation into the invention
claimed.”) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)).
Appellants’ argument is unpersuasive.
For the reasons above, the rejection of claim 14 is sustained. Claims
15, 16, and 21—23 fall with claim 14.
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DECISION
For the above reasons, the Examiner’s rejection of claims 14—16 and
21-23 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)(l)(iv).
AFFIRMED
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UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES E. BURGESS and JOHN KUTSCH
Appeal 2016-003477
Application 12/769,900
Technology Center 3700
Before STEVEN D.A. McCARTHY, LISA M. GUIJT, and
PAUL J. KORNICZKY, Administrative Patent Judges.
McCARTHY, Administrative Patent Judge, concurring.
Claim 14 is the sole independent claim on appeal. Claim 14 recites:
14. A canister assembly, comprising:
a canister base having a bottom and a tapered sidewall extending
from the canister base to a lid-engaging rim; and
a lid comprising:
an interior portion surrounded by a perimeter portion
defining a canister connector, the interior portion
defining a first partial interior portion occupying
seventy percent or less of the interior portion and a
second partial interior portion occupying thirty
percent or more of the interior portion, wherein:
the lid comprises a plurality of ports extending from
the interior portion;
all ports of the plurality of ports are disposed along
the first partial interior portion;
the lid comprises a pour spout disposed along the
second partial interior portion; and
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Appeal 2016-003477
Application 12/769,900
axes of each of the ports are aligned substantially
orthogonally with a pour spout axis of the
pour spout and substantially parallel with a
plane defined by the perimeter portion; and
a stacking recess to receive a filter of an adjacent lid when
the adjacent lid is rotated out of phase from, and
stacked together with, the lid.
The Examiner rejects appealed claims 14—16 and 21—23 under pre-
AIA 35 U.S.C. § 103(a) as being unpatentable over Deaton (US 4,228,798,
issued Oct. 21, 1980) and Reiner (US 2008/0015526 Al, publ. Jan. 17,
2008). Instead, I would enter new grounds of rejection against these claims
as indefinite under the second paragraph of pre-AIA 35 U.S.C. § 112.
Because the appealed claims are indefinite, I would reverse the rejection of
those claims, pro forma, under § 103(a), as being based on speculative
assumptions as to the meaning of the claims. See In re Steele, 305 F.2d 859,
862-63 (CCPA 1962).
The statutory requirement of particularity and distinctness
in claims is met only when [the claims] clearly distinguish what
is claimed from what went before in the art and clearly
circumscribe what is foreclosed from future enterprise. A zone
of uncertainty which enterprise and experimentation may enter
only at the risk of infringement claims would discourage
invention only a little less than unequivocal foreclosure of the
field. Moreover, the claims must be reasonably clearcut to
enable courts to determine whether novelty and invention are
genuine.
United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 236 (1942) (italics
added for emphasis).
The Patent and Trademark Office has an affirmative duty to issue only
patents having claim language on which the public can rely. For this reason,
Examiners scrutinize the definiteness of claim language closely during
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prosecution. See Ex parte Miyazaki, 89USPQ3d 1207, 1201—11 (Bd. Patent
App. & Interf. 2008), citing Exxon Research & Eng’g Co. v. United States,
265 F.3d 1371, 1375 (Fed. Cir. 2001). When an Examiner establishes a
prima facie case that a claim is indefinite, the applicant must respond with
persuasive argument explaining how the language would have
communicated the scope of the claim to one of ordinary skill in the art. In re
Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014).
Claim 14 recites a canister assembly in which “axes of each of the
ports are aligned substantially orthogonally with a pour spout axis of the
pour spout and substantially parallel with a plane defined by the perimeter
portion.” (Italics added for emphasis.) “Substantially” is a term of degree.
For example, the term “substantially parallel” indicates nearly, but not
absolutely, parallel. When a term of degree is used, there must be some
standard for measuring that degree (e.g. the specification should provide
some standard for measuring the meaning of the term of degree). Without a
standard for measuring, the claim is indefinite because the boundaries cannot
be determined. See Ex parte Lazzara, appeal 2007-0192 slip op. at 3 (Bd.
Patent App. & Interf. November 13, 2007) (informative) (citing Seattle Box
Co. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 820—21 & 826
(Fed. Cir. 1984)).
The Specification does not formally define the terms “substantially
orthogonal” and “substantially parallel;” or provide an express discussion of
their scope. The best guidance that the Specification provides as to what
constitutes substantial orthogonality or substantial parallelism appears in
paragraphs 31 and 32:
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In the illustrative embodiment of FIGS. 1 and 2, each of
the plurality of ports 107, 108, 109 extends from the first partial
lid interior portion 201 towards the perimeter portion 103 of the
lid member 101. To further increase stackability, each of the
plurality of ports 107, 108, 109 in this illustrative embodiment
has been turned sideways, such that a reference axis 110, 111,
112 running through each of the plurality of ports 107, 108, 109
is aligned substantially parallel with a plane 113 defined by the
perimeter portion 103. Said differently, each of the plurality of
ports 107, 108, 109 is turned sideways so as to be parallel with a
major surface of the interior portion 102 of the lid member 101.
This can best be seen by briefly turning to FIG. 4, where a
reference axis 110 of the vacuum port is shown substantially
parallel with the plane 113 defined by the perimeter portion 103.
In the illustrative embodiments of FIGS. 1 and 2, each of
the plurality of parts 107, 108, 109 has a length that remains
within a lid perimeter 203 defined by the perimeter portion 103.
Said differently, each of the plurality of ports 107, 108, 109 has
a length that extends from the first partial lid interior portion 201
towards the perimeter portion 103, but stays within a perimeter
defined by the perimeter portion 103. As viewed in FIG. 3, the
length of each of the plurality of ports 107, 108, 109 stays within
the plan view of the stackable lid 100, and does not hang over the
perimeter portion 103. As such, when lids are stacked on top of
each other, the perimeter portion 103 does not interfere with any
of the plurality of ports 107, 108, 109.
The Specification indicates that the purpose for orienting the plurality
of ports such that “axes of each of the ports are aligned substantially
orthogonally with a pour spout axis of the pour spout and substantially
parallel with a plane defined by the perimeter portion” is to facilitate
stacking of the lids. Nevertheless, the Specification indicates that the
capacity of the lids to stack efficiently also depends on the lengths of the
ports and the configuration of the lid as a whole. Thus, stackability does not
provide a measure of whether a particular axial orientation is “substantially
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orthogonal” or “substantially parallel” within the context of the claimed
subject matter. The language is indefinite.
The problems arising from such indefinite language are illustrated in
the Examiner’s reasoning and in the Appellants’ arguments. Reiner
describes an assembled canister 1 including a lid 2 having a patient port 5
through which suction might be applied to a patient. (See Reiner, paras. 20
& 22). Reiner teaches orienting the patient port 5 at an angle of between 15°
and 30°, preferably 20°, relative to a plane perpendicular to an axis of the lid
2. (See Reiner, para. 23). Although there is no indication that Figure 5 of
Reiner is drawn to any scale, the drawing indicates that the length of the
patient port 5 and the configuration of the lid 2 are not conducive to
stacking.
Under these circumstances, neither the Examiner nor the Appellants
suggests a useful standard to measure what constitutes substantial
orthogonality or substantial parallelism as recited in claim 14. Instead, the
Examiner merely concludes that “the terms ‘substantially orthogonal’ and
‘substantially parallel’ are meant to be given a functionally broad
interpretation” (Ans. 9); and makes the conclusory findings that “a 15° angle
to a plane defined by the perimeter portion falls within the range of
‘substantially parallel’ and ... an angle of 75° to the vertical pour spout axis
falls within the range of ‘substantially orthogonal’” (id.). The Appellants
respond with a vague dictionary definition and a pair of easily
distinguishable examples in an effort to suggest that the Examiner’s
interpretation is too broad. (See Reply Br. 8 & 9).
The conclusory nature of the Examiner’s finding and the Appellants’
arguments implies that one of ordinary skill in the art would be at a loss to
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1 determine whether ports in an accused product “are aligned substantially
2 orthogonally with a pour spout axis of the pour spout and substantially
3 parallel with a plane defined by the perimeter portion.” I would enter a new
4 ground of rejection for indefiniteness against claims 14—16 and 21—23 under
5 the second paragraph of § 112; and reverse the appealed rejection pro forma.
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