Ex Parte Coric et al

Patent Trial and Appeal Board

Feb 25, 2019

14517640 (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/517,640 10/17/2014
23446 7590 02/27/2019
MCANDREWS HELD & MALLOY, LTD
500 WEST MADISON STREET
SUITE 3400
CHICAGO, IL 60661
FIRST NAMED INVENTOR
Milos Coric
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.
28395US01 4217
EXAMINER
RASHID, FAZLE A
ART UNIT PAPER NUMBER
1774
NOTIFICATION DATE DELIVERY MODE
02/27/2019 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):
mhmpto@mcandrews-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MILOS CORIC and COLIN KNIGHT 1
Appeal2018-004390
Application 14/517 ,640
Technology Center 1700
Before BEYERL YA. FRANKLIN, GEORGE C. BEST, and LILAN REN,
Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify the real party in interest as Sears Brands, L.L.C. App.
Br. 2.
Appeal2018-004390
Application 14/517 ,640
Appellants request our review under 35 U.S.C. § I34(a) of the
Examiner's decision rejecting claims 1-20. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants' subject matter on appeal and is
set forth below:
1. An apparatus, comprising:
a mixer insert that comprises:
an enclosing component adapted for application to an
opening in a container to which the mixer insert is applied, to
enclose a space in the container; and
one or more mixing components, adapted to fit within the
enclosed space when the enclosing component is applied to the
opening in the container, wherein:
the one or more mixing components are configured to
mix material placed within the enclosed space when the
combination of the container and the mixer insert is subject to
particular force or movement; and
the combination of the container and the mixer insert is
configured such that the material placed in the enclosed space is
mixed only when the particular force or movement is applied to
the combination of the container and the mixer insert as a
whole.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Bonacci
Keough
Figueroa
us 5,934,800
US 6,511,218 B2
US 2014/0043931 Al
2
Aug. 10, 1999
Jan.28,2003
Feb. 13,2014
Appeal2018-004390
Application 14/517 ,640
THE REJECTIONS
1. Claims 1-20 are rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112
(pre-AIA), first paragraph, as failing to comply with the written description
requirement.
2. Claims 1-5, 7, 8, 10-15, 17, 19, and 20 are rejected under 35 U.S.C.
§ 102( a )(1) as being anticipated by Bonacci.
3. Claims 6 and 16 are rejected under 35 U.S.C. § 103 as being
unpatentable over Bonacci in view of Figueroa.
4. Claims 9 and 18 are rejected under 35 U.S.C. § 103 as being
unpatentable over Bonacci in view of Keough.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant sand in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t
has long been the Board's practice to require an applicant to identify the
alleged error in the examiner's rejections."). After considering the evidence
presented in this Appeal (including the Examiner's Answer, the Appeal
Brief, and the Reply Brief), we are persuaded that Appellants identify
reversible error. Thus, we reverse the Examiner's rejections and add the
following primarily for emphasis.
Rejection 1
It is the Examiner's position that the claims fail to meet the written
description because the Appellant's disclosure fails to disclose that the
3
Appeal2018-004390
Application 14/517 ,640
mixing occurs only when the particular force or movement is applied to the
combination of the container and the mixer insert as a whole.
We are persuaded by Appellants' position in the record. Appellants
explain that the Examiner argues that the written description is not met
because the Specification discloses performing the mixing in ways other
than by applying the force to the combination of the container and insert as a
whole. Appeal Br. 4--6. Appellants explain that, even if this is true, this
does not mean that the Appellant's disclosure fails to provide written
description of the claimed subject matter; rather, it merely means that
the description may cover other ways for providing the mixing. Id. We
agree and note that limiting the mixing to "only when the particular force or
movement is applied to the combination of the container and the mixer insert
as a whole" as claimed is justified by MPEP 2173.05(i). If alternative
elements are positively recited in the specification, they may be explicitly
excluded in the claims. See In re Johnson, 558 F.2d 1008, 1019 (CCPA
1977) (" [the] specification, having described the whole, necessarily
described the part remaining."); see also Ex parte Grasselli, 738 F.2d 453
(Fed. Cir. 1984 ). Also note that a lack of literal basis in the specification for
a negative limitation may not be sufficient to establish a prima facie case for
lack of descriptive support. Ex parte Parks, 30 USPQ2d 1234, 1236 (Bd.
Pat. App. & Inter. 1993).
In view of the above, we reverse Rejection 1.
4
Appeal2018-004390
Application 14/517 ,640
Rejection 2
Appellants' claimed subject matter is depicted in Appellants' Figure
1, reproduced below:
Mixer Insert ~
.100 ~
Lid Section ---
102
Handle
.12Q
. . . . . . . . . . . . . ' . . . ' . . . . ....... · ... '
. . . . . . ~ ... ' ' ~ . ' ~ . - .... . ~ . . . . ~ ... . . ~ . , , ~
Container
(e.g., bucket)
llQ
Securing Means
(e.g., clamps)
1aQ
Container's
Internal Space
Figure 1 illustrates an example use of a mixer insert for a bucket, in
accordance with an embodiment of the present application.
5
Appeal2018-004390
Application 14/517 ,640
The Examiner equates Appellants' mixer insert 100 with Bonacci' s
insert bucket 14 shown in Bonnaci' s Figure 1, reproduced below:
Figure 1 of Bonnaci.
Appellants submit that Bonacci does not disclose at least the
limitation of "a mixer insert that comprises . . . an enclosing component
adapted for application to an opening in a container to which the mixer insert
is applied, to enclose a space in the container; and one or more mixing
components, adapted to fit within the enclosed space when the enclosing
component is applied to the opening in the container," as recited in claims 1
and 13. Appeal Br. 7. Reply Br. 6-8. We agree with Appellants that
Bonacci's bucket 14 is not a "mixer insert" within the meaning of this claim
term for the reasons provided by Appellants in the record. 2 We also agree
with Appellants that Appellants' claimed enclosing element is a component
2 The Examiner's response to this argument on page 10 of the Answer does
not adequately address the argument regarding Bonnaci's bucket 14. Rather,
the Examiner focuses on the lid as being an enclosure, but this was not the
point being made by Appellants.
6
Appeal2018-004390
Application 14/517 ,640
of the mixing insert itself, whereas lid 26 of Bonacci is a stand-alone
element that is applied to Bonacci's insert bucket 14 (the alleged "mixer
insert"). Appeal Br. 7-8. Reply Br. 6-8.
We thus reverse Rejection 2. Because the Examiner does not rely
upon the additional references applied in Rejections 3 and 4 to cure the
stated deficiencies of Bonacci, we reverse these rejections for the same
reasons.
DECISION
Each rejection is reversed.
ORDER
REVERSED
7