Ex Parte Escobar

Patent Trial and Appeal Board

Feb 21, 2018

13537274 (P.T.A.B. Feb. 21, 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.
13/537,274 06/29/2012 Miguel F. Escobar TNA0003USD 3488
23413 7590 02/23/2018
TANTOR TOT RTTRN T T P
EXAMINER
20 Church Street VAN BUSKIRK, JAMES M
22nd Floor
Hartford, CT 06103 ART UNIT PAPER NUMBER
3788
NOTIFICATION DATE DELIVERY MODE
02/23/2018 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MIGUEL F. ESCOBAR
Appeal 2017-004440
Application 13/537,2741
Technology Center 3700
Before CHARLES N. GREENHUT, ANNETTE R. REIMERS, and
LISA M. GUIJT, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant2 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s decision3 rejection of claims 1, 2, 4, and 54 under 35 U.S.C.
§ 102(b) as anticipated by Hwang (US 6,915,920 B2; issued July 12, 2005).
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
1 This application is a division of US Application No. 12/649,678, which is
the subject of Appeal 2017-004806. Appeal Br. 2.
2 Appellants identify the real party in interest as Tapones Escobar, S.A.
Appeal Br. 2.
3 Appeal is taken from the Final Office Action dated May 4, 2015.
4 Claims 3 and 6—10 have been withdrawn from consideration. Appeal Br.
2.
Appeal 2017-004440
Application 13/537,274
We REVERSE and enter a NEW GROUND OF REJECTION of
claims 1, 2, 4, and 5 under 35 U.S.C. § 112, second paragraph, pursuant to
our authority under 37 CE.R. § 41.50(b).
THE CLAIMED SUBJECT MATTER
Claim 1 is the sole independent claim on appeal. Claim 1, reproduced
below, is illustrative of the subject matter on appeal.
1. A composite synthetic cork stopper, comprising:
a handle portion;
a synthetic cork stopper portion; and
an interlocking portion configured to mate the
handle portion to the synthetic cork stopper portion,
wherein said interlocking portion is
configured to prevent movement of the handle
portion away from said synthetic cork stopper
portion, and
wherein the interlocking portion is provided
within an interior portion of the synthetic cork
stopper portion, such that when the synthetic cork
stopper portion is placed on the handle portion, the
interlocking portion is not visible.
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Application 13/537,274
OPINION
Regarding independent claim 1, the Examiner finds that Hwang
discloses a synthetic cork stopper, comprising “a handle” (i.e., plug 2), a
“synthetic cork stopper” (i.e., jacket 3), and “an interlock” (i.e., body 1).
Final Act. 4 (citing Hwang 4:24—28, Fig. 1). The Examiner determines that
Hwang’s body 1 is “capable of mating with the handle to the cork, wherein
said interlocking portion is capable of preventing movement of the handle
portion away from said synthetic cork stopper portion where the interlock is
provided in an interior of the cork, such that when the cork is place on the
handle, the interlock is not visible,” as claimed. Id. (citing Hwang, Fig. 4).
Appellant argues that “Hwang fails to show a mated intermediate
portion and handle portion (i.e. in a non-sliding arrangement).” Appeal Br.
4. In support, Appellant submits that “[i]n all cases, Hwang requires that the
handle portion [(i.e., plug 2)] slide in and out of the stopper (i.e., jacket 3)]
to provide varying amounts of locking force thereon.” Id. at 4—5 (emphasis
added) (citing Hwang 4:58—62, 5:11—17, Figs. 3, 4). Specifically,
Appellants submit that “Hwang describes a coaxially arrangement, with the
handle portion 20 and 1 sliding towards and away from the cork portion 3
during operation” and that “leg 21 slides within [] the flexible walls 12 of
body 1 after being inserted into the opening 15 of the body 1 (which is a
plastic member).” Id. at 5 (emphasis added) (citing Hwang 3:46—53, 4:56—
66).
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Application 13/537,274
The Examiner responds that Hwang discloses that
the bottle stopper can be initially released by upward pulling
force and used to reseal the bottle neck 4. The second neck 23 is
firmly engaged with the protrusion 14 and cannot released from
it, when the top of the body 1 will arrive at the bottom of the
annular wall 25 and be received within it. It, therefore, indicates
with an appearance that the stopper has been used and the bottle
neck 4 has previously opened.”
Ans. 4 (citing Hwang 5:17—24).
Appellant replies that “[t]he ONLY description in Hwang is a coaxial
sliding arrangement of the handle portion and the synthetic cork stopper
portion, and the ONLY way that Hwang can work is to use such coaxial
sliding, meaning the handle HAS to move away from the synthetic cork
stopper portion.” Reply Br. 2 (citing Hwang 5:17—24). Appellants submit
that because Hwang discloses two expansion portions for forming a locking
means and a resealing means, and “there is always coaxial sliding of the
handle relative to the synthetic cork portion.” Id. at 5.
We are not persuaded by Appellant’s argument; rather, a
preponderance of the evidence supports the Examiner’s finding that
Hwang’s body 1 (i.e., the interlocking portion) is configured to prevent
movement of plug 2 (i.e., the handle portion) away from jacket 3 (i.e., the
synthetic cork stopper), as discussed infra. To the extent Appellant argues
that the claims require the interlocking portion to be configured to prevent
any axial or sliding movement (i.e., sliding movement of a handle toward a
synthetic cork stopper portion), Appellant is arguing limitations that are not
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Appeal 2017-004440
Application 13/537,274
recited in the claims. Limitations not appearing in the claims cannot be
relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Regarding the first expansion position of leg 21 of plug 1 (with
reference to Hwang’s Figure 2), Hwang discloses that “the body 1 and the
jacket 3 are assembled without the plug 2 and easily inserted into the bottle
neck 4 because of [(sic.)] without any expansion of the bottle stopper.”
Hwang 4:50-53, Fig. 2. Hwang also discloses “[a] second step of closing
bottle process,” wherein “leg 21 is inserted into the opening 15 of the body 1
and pressed to engage the first neck 22 with protrusion 14 to form a locking
means.'1'’ Id. at 4:57—61 (emphasis added), Fig. 3. Hwang discloses that
“when the first neck 22 is engaged with the protrusion 14, the leg 21 can
only allow pressing to advance in the body V and that “[t]he locking means
provides a maximum expansion to lock around the bottle neck 4, which
cannot be released from the bottle the neck.” Id. at 4:66—5:5 (emphasis
added). In other words, Hwang discloses that body 1 (i.e., the interlocking
portion) is configured to allow movement of plug 2 (i.e., the handle portion)
toward jacket 3 (i.e., the synthetic cork stopper portion), but to prevent
movement of plug 2 away from jacket 3 once leg 21 of plug 2 is inserted into
opening 15 of body 1, wherein neck 22 of leg 21 and protrusion 14 of body 1
form a locking means. Hwang explains that, in this locking position, “the
top of the body 1 is coplanar with the end of the annular wall 25 so that it
has an appearance and a function of indicating whether the bottle neck has
previously opened or the stopper has been used.” Id. at 5:5—8.
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Appeal 2017-004440
Application 13/537,274
Regarding the second expansion position of leg 21 of plug 1 (with
reference to Hwang’s Figure 4), Hwang discloses “a step for releasing and
resealing bottle neck,” wherein “after the plug 2 is pressed downward to
form a resealing means, the second neck 23 is then engaged with the
protrusion 14.” Hwang 5:9-14 (emphasis added). Hwang discloses that
“[t]he releasing means provides a slight expansion which diameter is
relatively smaller than the diameter of the locking means for allowing to
initially release the bottle neck 4” and that “the bottle stopper can be initially
released by upward pulling force and used to reseal the bottle neck 4,”
however, Hwang clearly discloses that “second neck 23 is firmly engaged
with the protrusion 14 and cannot release from it, when the top of the body
1 will arrive at the bottom of the annular wall 25 and be received within it.”
Id. 5:14—22 (emphasis added). In other words, when releasing and resealing,
Hwang teaches that the entire bottle stopper is removed from neck 4 of the
bottle, with second neck 23 secured to protrusion 14, such that Hwang’s
jacket 3 with protrusion 14 (i.e., the interlocking portion) is configured to
prevent movement of plug 2 (i.e., the handle portion) away from jacket 3
(i.e., the synthetic cork stopper portion), as claimed.
Moreover, to interpret Hwang according to Appellant’s argument (i.e.,
such that leg 21 of Hwang’s body 1 is configured to slide axially away from
Hwang’s jacket 3) would result in annular wall 25 being spaced from the top
of body 1, defeating the purpose of Hwang’s invention. See Hwang 5:21—24
(“. . . when the top of the body 1 will arrive at the bottom of the annular wall
25 and be received within it[,] [i]t therefore, indicates with an appearance
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Appeal 2017-004440
Application 13/537,274
that the stopper has been used and the bottle neck 4 has previously
opened.”).
Appellant also argues that the claim limitation . an interlocking
portion... within an interior portion of the synthetic cork stopper portion. . .
such that. . .the interlocking portion is not visible’” is not “described in
Hwang, which instead is configured without the interlocking portion being
provided within an interior portion of the synthetic cork portion.” Appeal
Br. 5—6; Reply Br. 5.
The Examiner responds that “because the body [1] covers both the
second neck [22] and protrusion [14], the interlocking locking portion will
not be visible.” Ans. 4 (citing Figs. 1, 4). In other words, the Examiner is
interpreting the claimed “interlocking portion” as a portion of the
interlocking component as described in the Specification, thus, determining
that protrusion 14 alone is the claimed interlocking portion. Appellant does
not provide a reply to the Examiner’s position. See Reply Br. 5—6.
The claim term “interlocking portion” does not appear in the
Specification, except as recited in the claims as originally filed. Instead, the
Specification discloses that
[Referring now to FIGURE 1, an exemplary improved composite
synthetic cork is illustrated generally at 10. A synthetic cork
portion 12 is joined to a decorative handle portion 14 at an
exemplary neck 16 thereof. The neck portion includes an annular
indent 18, into which a protruding portion 20 of the interlocking
component 22 installs.
Spec. 120 (emphasis added). Figure 1 of the Specification is reproduced
below.
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Appeal 2017-004440
Application 13/537,274
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FIGURE 1
Figure 1 of the Specification depicts “a cross-sectional side view of an
exemplary composite stopper.” Id. 110. The Specification also discloses
that
FIGURE 2 illustrates an exemplary exaggerated view of the
synthetic cork portion 12 and interlocking component 22. As
may be seen from the FIGURE, the interlocking component 22
nests within an inner aperture 26 of the synthetic cork portion 12
and itself includes a projection 28 ... . In exemplary
embodiments, . . . the interlocking component 22 may fuse with
the synthetic cork portion 12 during the molding process.
Id. 121 (emphasis added). Figure 2 of the Specification is reproduced
below.
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Appeal 2017-004440
Application 13/537,274
12
FIGURE 2
Figure 2 is “a cross-sectional side view of an exemplary cork component and
interlocking componentId. 111 (emphasis added). The Specification also
refers to “the interlocking component 22” when describing molding the
synthetic cork component and interlocking component 22 together. See,
e.g., Spec. H22—26.
Regarding the claim limitation in dispute, the Specification discloses
that “the interlocking component is molded within an interior space of said
synthetic cork component, such that the interlocking component is not
readily apparent or not visible upon assembly with the decorative handle.”
Spec. 17.
An ordinary meaning of the claim term “portion” is “a part of a
whole.” Webster’s Third New Int’l Dictionary 1768 (1993).
Claims 2, 4, and 5, which depend from claim 1, require “said
interlocking portion” to “include[] a projection,” “comprise[] an annular
projection,” and to be “trapped within the material of said cork portion.”
Appeal Br. 7 (Claims App’x).
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Appeal 2017-004440
Application 13/537,274
We determine that the Examiner’s interpretation of the claim term
“interlocking portion” to mean a portion of the interlocking component (i.e.,
protruding portion 22) is unreasonable in view of the Specification. Rather,
we determine that the claimed “interlocking portion” means the interlocking
component, as described in the Specification, which is itself a portion (or
part of) the composite synthetic cork stopper recited in the preamble of
claim 1. In other words, the claimed composite synthetic cork stopper
comprises three distinct portions (or parts): a handle portion, a synthetic
cork stopper portion, and an interlocking portion.5
Thus, claim 1 requires the interlocking portion, which corresponds to
Hwang’s body 1, to be “not visible” when Hwang’s jacket 3 (i.e., the
synthetic cork stopper portion) is placed on Hwang’s plug 2 (i.e., the handle
portion). Hwang’s jacket 3 is depicted and described as being placed on
Hwang’s plug 2 in Figures 3 and 4; however, it is speculative as to whether
Hwang’s body 1, which is “provided within an interior of’jacket 3, is
visible through the bottle. Further, as described supra, when Hwang’s entire
5 Although the Specification does not exclude interpreting the claimed
“interlocking portion” as meaning a portion of the interlocking component,
“[t]he correct inquiry in giving a claim term its broadest reasonable
interpretation in light of the specification is not whether the specification
proscribes or precludes some broad reading of the claim term adopted by the
examiner” or whether an interpretation “is not inconsistent with the
specification,” but rather, whether the interpretation “corresponds with what
and how the inventor describes his invention in the specification, i.e., an
interpretation that is ‘consistent with the specification.’” In re Smith Int’l
Inc., 871 F.3d 1375, 1382-83 (2017).
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Appeal 2017-004440
Application 13/537,274
plug 2, body 1, and jacket 3 are removed from the bottle for reuse (i.e.,
releasing and releasing), body 1 is exposed, and therefore, visible.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 1, and claims 2, 4, and 5 depending therefrom, under
35 U.S.C. § 102(b) as anticipated by Hwang.
NEW GROUND OF REJECTION
We reject claim 1 under 35 U.S.C. § 112, second paragraph, as being
indefinite.
Claims, when read in light of the specification, must “reasonably
apprise those skilled in the art both of the utilization and scope of the
invention” using language “as precise as the subject matter permits.” In re
Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). “A claim is indefinite if its
legal scope is not clear enough that a person of ordinary skill in the art could
determine whether a particular [embodiment] infringes or not.” Geneva
Pharms., Inc., 349 F.3d 1373, 1384 (Fed. Cir. 2003) (finding indefinite a
claim interpretation where determining whether a given chemical
composition would infringe depended on the particular bacteria to which the
composition was applied, and the bacteria was not specified in the claim.).
As set forth supra, claim 1 recites, in relevant part, “wherein the
interlocking portion is provided within an interior portion of the synthetic
cork stopper portion, such that when the synthetic cork stopper portion is
placed on the handle portion, the interlocking portion is not visible.”
However, claim 1 uses the transitional phrase “comprising,” which allows
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Application 13/537,274
the claims to encompass a device with additional structures that are not
recited in the claim. Thus, it is unclear whether an interlocking portion
would or would not be visible in the presence of additional (unclaimed)
structures (i.e., an opaque or transparent bottle in Hwang). For example,
claim 1 reads on Hwang’s cork stopper when placed on an opaque bottle,
but does not read on Hwang’s cork stopper when placed on a translucent
bottle. Moreover, it is unclear from which vantage point visibility is to be
judged.
Because claims 2, 4, and 5 depend from claim 1, and therefore,
incorporate the limitations of claim 1, we also reject claims 2, 4, and 56
under 35U.S.C. § 112, second paragraph, as being indefinite.
DECISION
We reverse the Examiner’s rejection of claims 1, 2, 4, and 5 under
35 U.S.C. § 102(b).
We enter a new ground of rejection of claims 1, 2, 4, and 5 under
35 U.S.C. § 112, second paragraph, as being indefinite.
6 Notably, although claim 5 recites “wherein said interlocking portion is
trapped within the material of said cork portion,” claim 5 does not specify
that the entirety of the interlocking portion is so trapped, and further, the
Specification describes the housing portion also traps the interlocking
portion.
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Application 13/537,274
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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Application 13/537,274
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).
REVERSED; 37 C.F.R. $ 41.50(b)
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