Ex Parte Danelski

Patent Trial and Appeal Board

Apr 12, 2017

13673376 (P.T.A.B. Apr. 12, 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.
13/673,376 11/09/2012 Paul Danelski PD002US 5520
86211 7590 04/14/2017
Interfacial Solutions IP, LLC
13703 Danube Lane
Rosemount, MN 55068
EXAMINER
ANDERSON, DON M
ART UNIT PAPER NUMBER
3781
NOTIFICATION DATE DELIVERY MODE
04/14/2017 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):
beszymanski @ charter.net
beszymanski@iplmgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL DANELSKI
Appeal 2015-006000
Application 13/673,376
Technology Center 3700
Before JOHN C. KERINS, STEFAN STAICOVICI, and LEE L. STEPINA,
Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1—
3, 5—7, and 9—13. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to a liquid container cap. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. An article comprising a removable cap for a receptacle
capable of holding liquids, wherein the removable cap has a
mating end that is capable of forming a closure for the receptacle
for retaining liquid in the receptacle, the cap having a fluid
Appeal 2015-006000
Application 13/673,376
reservoir with a surface, the surface possessing a release
mechanism for selectively dispensing liquid from the receptacle
through the release mechanism, the release mechanism is a
pressure release valve or a mechanical valve affixed in a non-
adjustable position relative to the receptacle at an angle of about
10 degrees to about 80 degrees as measured from a horizontal
plane of the mating end of the cap to a vertical plane of the cap.
REFERENCES
prior art relied upon by the Examiner in rejecting the claims on
US 4,949,883 Aug. 21, 1990
US 5,588,548 Dec. 31,1996
REJECTION
Claims 1—3, 5—7,1 and 9—13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Dubach and Brankley.
The
appeal is:
Dubach
Brankley
OPINION
The Examiner finds that Dubach discloses most of the limitations of
claim 1 including a removable cap (2) for a receptacle (T) and a release
mechanism (13) at an angle, but that the release mechanism is not at the
recited angle nor is the release mechanism a pressure release valve or a
mechanical valve. See Final Act. 2—3. Nonetheless, the Examiner finds that
Brankley discloses a receptacle with a cap and a release mechanism at an
angle of from about 0 to about 60 degrees and that the release mechanism is
1 Claim 8 is cancelled. See Br. 11 (filed Nov. 18, 2014); see also Final
Act. 2 (mailed Apr. 18, 2014). Thus, the Examiner’s inclusion of claim 8 in
the heading of the rejection is understood to be a typographical error.
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Application 13/673,376
a pressure release valve or a mechanical valve. Id. at 3. The Examiner
concludes that it would have been obvious “to make the angle of the release
mechanism of Dubach 60 degrees, as taught by Brankley, so as to reduce the
amount of air that a user would draw into their mouths if drinking or sucking
the contents from the receptacle,” and that it would have been obvious “to
have made the release mechanism of Dubach a pressure release valve or a
mechanical valve, as taught by Brankley, so that more control over the flow
or release of the contents could be exerted by a user.” Id.
Appellant argues that the Examiner ignores structural features of the
invention related to the angle of the release mechanism relative to the cap
because Dubach “discloses that the angle of the discharge spout is not
important,” and because “[t]he angular position of the adjustable bottleneck
of Brankley is derived from annular ribs and a flexible channeling tube (Col.
6, line 66 -Col. 7, line 32) that is separate and distinct from the cap of
Brankley.” Br. 7—8. Appellant asserts that the Examiner has relied on
impermissible hindsight because “the Examiner has essentially ignored the
teaching of Dubach that clearly indicates that the angle of the discharge
spout is not relevant.” Br. 8.
The Examiner responds that “one cannot show nonobviousness by
attacking references individually where the rejections are based on
combinations of references.” Ans. 7 (citing In re Keller, 642 F.2d 413
(CCPA 1981); In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986)). The
Examiner states that Dubach teaches an angled release mechanism, but not
that the release mechanism is angled within the claimed range. Id. The
Examiner states that the reason to angle the release mechanism of Dubach
within the claimed range comes directly from Brankley, namely, it “reduces
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Application 13/673,376
the amount of air being drawn into a user’s mouth. Ans. 8 (citing Brankley,
col. 2,11. 35—50, Abstract).
We agree with the Examiner on these points. Dubach discloses that
“[t]he cover surface (10) is inclined [(i.e., angled)] toward the cone axis
(K),” but does not disclose an angle or range of angles for the incline.
Dubach, col. 2,11. 37—38. The Examiner relies on Brankley as disclosing
that an angle of from about 0 to 60 degrees reduces the amount of air coming
from the reservoir. See Brankley, Abstract; see also Ans. 8. Appellant does
not adequately explain why having an angle as taught by Brankley to reduce
the amount of air would not be beneficial to Dubach. Although we
appreciate that the angle in Brankley is based on an adjustable bottleneck
and that Brankley discloses a separate cap, Dubach already discloses a cap
having a release mechanism affixed in a non-adjustable position, and the
Examiner relies on Dubach for these features and looks to Brankley for
teaching that a particular angle is beneficial. See Final Act. 2—3. Moreover,
because the Examiner’s rationale for modifying Dubach, namely, for
reducing air from the reservoir, comes from Brankley (see Brankley,
Abstract), and is not gleaned from Appellant’s Specification, we do not find
persuasive Appellant’s argument that the Examiner has relied on
impermissible hindsight. Further, we do not find it pertinent whether
Dubach indicates that the particular angle is or is not relevant inasmuch as
the Examiner finds that Brankley provides a motivation for the proposed
modification that results in the valve being disposed at an angle relative to
the receptacle that falls within the scope of the claim.
Appellant also argues that “the Examiner has not provided any basis
for replacing the discharge spout in the primary reference with a mechanical
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Application 13/673,376
valve or pressure release valve.” Br. 8. Appellant asserts that because the
invention of Dubach is a closure cap that can be manufactured as a single
piece, the Examiner has failed to identify a reason that “is grounded in the
rationale of the references to make not only the combination of Dubach in
view of Brankley, but also completely replace critical elements in each
reference to come up with the claimed invention.” Br. 8. Appellant
contends that the Examiner’s rationale “is contrary to the teaching of the
primary reference and thus made in hindsight of the present application to
support the conclusion of obviousness.” Br. 8.
The Examiner responds that the rationale “to make the release
mechanism of Dubach a pressure release valve or a mechanical valve comes
from general knowledge within the art that it is desirable for a user to have
additional control over the flow of fluid from a container or release
mechanism.” Ans. 8. As such, the Examiner states that the rationale “does
not include knowledge gleaned only from the applicant’s disclosure;
therefore the prima facie case of obviousness is not based on improper
hindsight reasoning.” Id. The Examiner also states that, although Dubach
teaches a single piece manufactured article,
the test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the
primary reference; nor is it 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.
Id. (citing In re Keller, 642 F.2d 413 (CCPA 1981)).
We disagree with Appellant’s arguments on this point. Dubach’s
invention is directed to an improvement in a one-piece closure that is made
in a mold without using a slide unit. See Dubach, col. 1,11. 20-25. The
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Application 13/673,376
critical aspect of Dubach’s invention is injection molding with the closure
“in an inclined position ... as shown in FIG. 6.” Id. at col. 3,11. 18—22.
Appellant does not adequately explain how having an incline (angle) as
taught by Brankley would prevent injecting molding as a one-piece closure.
Moreover, contrary to Appellant’s assertion that the Examiner is using both a
separate bottleneck and a valve to replace the spout of Dubach, which is
“contrary to the objective of a single piece manufactured article sought by
Dubach” (see Br. 8), the Examiner proposes to make the substantially
cylindrical release mechanism (spout 13) of the closure of Dubach a nipple
(pressure release valve) as taught by Brankley. See Final Act. 3. A nipple is
a cylinder with one end closed except for a small central opening. See
Brankley, col. 6,11. 48—52; Figs. 4, 5. Appellant does not adequately explain
why such a cylinder could not me made as part of a one-piece closure to
replace the cylindrical spout of Dubach, as the Examiner suggests. In any
event, even if it were not possible to manufacture a nipple (pressure release
valve) as part of a one-piece closure, and multiple pieces were necessary,
tradeoffs involved regarding features, costs, manufacturability, or the like,
do not necessarily prevent the proposed combination. See Winner Int'l
Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact
that the motivating benefit comes at the expense of another benefit, however,
should not nullify its use as a basis to modify the disclosure of one reference
with the teachings of another. Instead, the benefits, both lost and gained,
should be weighed against one another.”). In this regard, weighing any
benefits lost against those gained, we find that the Examiner’s reason for
modifying Dubach (so that more control over the flow or release of the
contents could be exerted by a user), such that the release mechanism is a
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Application 13/673,376
pressure release valve or a mechanical valve (Brankley’s nipple), is
supported by rational underpinnings.
We have considered all of Appellant’s arguments for the patentability
of claim 1, but the Examiner has the better position. Accordingly, we affirm
the Examiner’s rejection of claim 1. Appellant relies on the same arguments
for the patentability of claims 2, 3, 5—7, and 9—13 (see Br. 6—8), and these
claims fall with claim 1.
DECISION
The Examiner’s rejection of claims 1—3, 5—7, and 9—13 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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