Ex Parte Funderburg

Board of Patent Appeals and Interferences

Jan 27, 2012

11652699 (B.P.A.I. Jan. 27, 2012)

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.
11/652,699 01/12/2007 Deanna Funderburg 4092
7590 01/27/2012
Mr. Timothy D. Smith
5075 Canton Heights Dr.
Jackson, MI 39211
EXAMINER
DUCKWORTH, BRADLEY
ART UNIT PAPER NUMBER
3632
MAIL DATE DELIVERY MODE
01/27/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DEANNA FUNDERBURG
__________

Appeal 2010-006057
Application 11/652,699
Technology Center 3600
___________

Before RICHARD E. SCHAFER, JAMESON LEE, and
SALLY GARDNER LANE, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL
Deanna Funderburg (“Appellant”), the real party in interest, appeals
under 35 U.S.C. § 134(a) from a final rejection of claims 1-7 and 9-14. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION.
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THE APPLIED PRIOR ART
The Examiner relied upon the following prior art references:
Mogil US 6,073,796 Jun. 13, 2000
Millis US 4,989,811 Feb. 5, 1991
THE REJECTIONS ON APPEAL
1

Claim 14 was finally rejected by the Examiner under 35 U.S.C. § 112,
second paragraph, as failing to particularly point out and distinctly claim the
invention.
Claims 1, 3-6, and 9-14 were finally rejected by the Examiner under
35 U.S.C. § 102(b) as anticipated by Mogil.
Claim 2 was finally rejected by the Examiner under 35 U.S.C.
§ 103(a) as obvious over Mogil and Millis.
Claim 7 was finally rejected by the Examiner under 35 U.S.C.
§ 103(a) as obvious over Mogil.
APPELLANT’S INVENTION
Appellant discloses a system for tethering a baby bottle or sip cup.
(Spec. ¶ 1). An example of the invention is shown by Appellant’s Fig. 1,
reproduced below. (Spec. ¶ 15). In the example, a sip cup 28 is held within
a form-fitting and zippered jacket 23 of neoprene. (Spec. ¶ 21). A first end
of a tether 21 attaches to a D-loop 26 (not shown; see Fig. 4) of the jacket

1
The Appeal Brief addresses an objection to claims 5-7, set forth in the last
office action. (Final Rej. 2:3-8). Objections are reviewable by petition to
the Director and are not appealable to the Board. In re Hengehold, 440 F.2d
1395, 1403-1404 (CCPA 1971). The Examiner also regards the objection as
not a rejection. (Ans. 2:26-28). Because the objection is not a rejection of
Appellant’s claims, we do not reach that part of Appellant’s brief discussing
the objection.
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23. (Spec. ¶ 22). A second end of the tether 21 attaches to a clip 22 that is
large enough to clip around the post of a vehicle headrest. (Spec. ¶ 23).

Independent claims 1 and 14 are reproduced below:
1. A baby bottle or sip cup holder and tether
apparatus comprising:

a flexible thermal insulating bottle holder contoured to
surround and conform to the shape of the average baby bottle,
sip cup or other appropriate beverage container;

a tether attached at one end to the bottle holder; and

a clip or fastener attached to the opposite end of the
tether from the bottle holder facilitating the attachment of the
apparatus to a structural component.

14. A method of utilizing a baby bottle or sip cup
holder and tether apparatus, comprising the steps of:

placing a baby bottle, sip cup or other appropriate
beverage container within a bottle holder and securing the
zipper or Velcro® closer means if an embodiment having the
vertical opening or seam is utilized;
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securing a clip or fastener to a fixed structure such as a
headrest post;

adjusting the length of the tether to an appropriate length
such that the person partaking of the beverage and that person’s
caretaker, if appropriate, can easily access the holder and the
beverage container within the holder.
FINDINGS AND ANALYSIS
1. § 112, second paragraph, rejection of claim 14
Claim 14 was rejected under 35 U.S.C. § 112, second paragraph, as
indefinite because “the zipper or Velcro closer means” and “the vertical
opening or seam” lack antecedent basis. (Ans. 3:15-17). No other reason
was provided by the Examiner to support the rejection.
“Antecedent basis” refers to a claim drafting technique, whereby
modifying a claim feature with “the” or “said” (e.g., “the zipper”) indicates
the feature was earlier introduced and described by the claim (e.g., “a zipper
…”). If a claim’s scope can be reasonably ascertained despite a lack of
explicit antecedent basis, the claim is not indefinite. Energizer Holdings
Inc. v. Int’l Trade Comm’n, 435 F.3d 1366, 1370-71 (Fed. Cir. 2006).
The terms at issue – “the zipper or Velcro closer means” and “the
vertical opening or seam” – are recited in the claimed step of “securing the
zipper or Velcro® closer means if an embodiment having the vertical
opening or seam is utilized.” The Examiner has not shown, or even asserted,
that the lack of express antecedent basis would have caused a skilled artisan
to be unable to reasonably ascertain the scope of the claim. It appears that if
the indefinite article “a” is used in place of each instance of “the,” the
Examiner’s stated issue goes away. It is unexplained why one with ordinary
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skill would not have simply regarded Appellant as having recited the
indefinite article “a” because there is no antecedent basis for “the.”
We do not sustain the indefiniteness rejection of claim 14.
2. § 102(b) rejection of claims 1, 3-6, and 9-14 over Mogil
Claims 1, 3-6, and 9-14 were rejected as anticipated by Mogil.
Appellant separately addresses independent claims 1 and 14. Claims 3-6
and 9-13 depend from claim 1. Appellant does not argue the merits of
claims 3-6 and 9-13 separate from that of claim 1. (Brief 15:17-18).
Mogil
Mogil discloses a water bottle holder with a shoulder strap. (Mogil
8:35-39). An example of the holder is shown by Mogil’s Fig. 1, reproduced
below. (Mogil 6:18-20). In the example, a water bottle 22 is held within a
form-fitting and zippered jacket of insulating material 56, 58 (jacket halves).
(Mogil 6:49-53; 7:7-14). End clips (not labeled) of a shoulder strap 126
attach to respective D-loops 124, 128 (both shown by Fig. 4) of the jacket
56, 58. (Mogil 8:35-53).
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Claims 1, 3-6, and 9-13
Claim 1 is directed to a “holder and tether apparatus” comprising a
holder for a “baby bottle, sip cup or other appropriate beverage container”
and a tether and clip “facilitating the attachment of the apparatus to a
structural component.” The Examiner found that Mogil’s jacket 56, 58
constitutes the recited bottle holder, that the water bottle 22 constitutes the
recited beverage container, and that the shoulder strap 126 and clips
constitute the recited tether and clip. (Ans. 4:2-11).
Appellant does not assert any structural difference between the
claimed and prior art features. Rather, Appellant argues that claimed and
prior art features have different purposes. For instance, Appellant states that
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the “intended purpose of the invention … is to provide a [sic] easy and safe
way to control and locate a baby bottle or cup while in a vehicle,” but “[t]he
primary purpose of the Mogil patent is to provide an insulating holder for a
bottle that is specifically designed to fit within the insulating holder.” (Brief
17:8-15). The argument is misplaced. The absence of a disclosure relating
to function does not defeat a finding of anticipation if all structural elements
are met by the prior art. In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir.
1997). Moreover, Appellant does not assert that the device of Mogil is
incapable of providing an easy and safe way to control and locate a baby
bottle, sip cup, or other appropriate beverage container in a vehicle.
For example, claim 1 recites the holder as contoured to surround and
conform to the shape of a baby bottle, sip cup, or other appropriate beverage
container. Mogil’s holder conforms to a spill-resistant water bottle and thus
has a contour satisfying the claim.
Claim 1 recites the tether and clip as “facilitating the attachment of the
apparatus to a structural component.” Mogil’s strap and clip clearly can be
detached from one of the D-loops in order to attach the bottle and jacket 56,
58 to a structural component.
Appellant argues that Mogil’s strap and clips do not form a “tether,”
as claimed. This argument is unpersuasive. Appellant fails to explain why
the strap and clips together do not have the structure of a tether. Appellant
has shown no error in the Examiner’s determination that Mogil’s shoulder
strap and clips together constitute a tether and are capable of tethering the
bottle and jacket 56, 58 to a structural component. The Examiner has set
forth a prima facie case of anticipation which has not been rebutted by the
Appellant.
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We sustain the anticipation rejection of claim 1 and claims 3-6 and 9-
13 falling therewith.
Claim 14
Claim 14 is directed to a method of using a holder and tether
apparatus. The method includes the step of securing a clip or fastener to a
fixed structure such as a headrest post.
The Examiner found that Mogil anticipates the securing step by
securing both ends of the shoulder strap 126 to the jacket 56, 58. (Ans. 4:9-
11). Appellant argues that because Mogil only attaches the shoulder strap
126 to the jacket 56, 58, and “not to an outside object,” it does not tether the
bottle and jacket 56, 58 to a fixed structure, as claimed. (Brief 20:3-9).
We agree with Appellant. Claim 14 is a method claim and requires
actual performance of tethering the container and holder to a fixed structural
component. In the context of Appellant’s specification, “fixed structural
component” is not reasonably interpreted as met by a wearer’s body or any
portion of the container itself. Mogil’s strap 126 is described as a shoulder
strap (Mogil 8:35-53) and thus at best secures the bottle and jacket 56, 58 to
the wearer, not to a fixed structural component, as claimed. The Examiner
has not pointed to any description in Mogil which indicates that the strap
126 is secured to a fixed structural component.
Accordingly, we do not sustain the anticipation rejection of claim 14.
3. § 103(a) rejection of claim 2 over Mogil and Millis
Millis
Millis discloses a system for tethering a baby bottle. (Millis abstract).
An example of the system is shown by Millis’ Fig. 1, reproduced below.
(Millis 2:59-61). In the example, a baby bottle 1 is held within a form-
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fitting jacket 5 of neoprene. (Millis 3:4-9 and 57-62). A first end of a tether
7 attaches to the jacket 5. (Millis 3:9-11). A second end of the tether 7
attaches to a fastener 8 (e.g., a Velcro® strap) that can anchor the system to
various objects, including a vehicle headrest post. (Millis 3:25-32).

Analysis
Claim 2 was rejected as unpatentable over Mogil and Millis. Claim 2
depends from claim 1 and recites that the holder comprises neoprene.
Appellant acknowledges that Mogil’s jacket and Millis’ neoprene jacket are
both used to insulate their respective containers. (Brief 21:1-2). The
Examiner determined that in light of Millis it would have been obvious to
one with ordinary skill to use neoprene to form Mogil’s jacket. (Ans. 6:23-
25).
Appellant argues that neoprene is used in the “current invention” for
its durability, not its insulation properties. (Brief 21:2-4). The argument is
misplaced. In an obviousness determination, it is not necessary to combine
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teachings for the purpose of solving that problem with which the applicant
was concerned. In re Dillon, 919 F.2d 688, 692-93 (Fed. Cir. 1990) (in
banc), cert. denied, 111 S.Ct. 1682 (1991). There need only be an
articulated reasoning with rational underpinnings to support a motivation to
combine teachings. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). That is
the case here, as Millis discloses the use of neoprene to insulate a container.
We are persuaded of no error in the obviousness rejection of claim 2
over Mogil and Millis.
4. § 103(a) rejection of claim 7 over Mogil
Claim 7 was rejected as obvious over Mogil. Claim 7 depends from
claim 4, which in turn depends from claim 1. Claim 4 adds that the holder
has a vertical opening or seam for improved container access. Claim 7 adds
a zipper and Velcro® feature that primarily and secondarily close the seam,
respectively. The dispute on appeal centers on the feature added by claim 7.
The Examiner determined that it would have been obvious to use a
zipper and Velcro® to close Mogil’s holder, because each would simply
serve its known function. (Ans. 7:3-6). Appellant argues that the combined
use of a zipper and Velcro® would not have been obvious, because the
combination “better” prevents children from removing a secured bottle.
(Brief 21:12-16).
Appellant’s argument is misplaced. The question is not whether using
zipper and Velcro® together has an advantage over just using zipper or
Velcro®, but whether that advantage would not have been expected by one
with ordinary skill. One with ordinary skill in the art would have expected
that using both zipper and Velcro® would provide a more secure means of
attachment than just using either zipper or Velcro® because of the presence
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of redundancy. Appellant has not asserted, much less shown, that redundant
protection would not have been expected by one with ordinary skill in the art
from using both zipper and Velcro®. As the Examiner determined, both the
zipper and the Velcro® are used in a manner according to each’s customary
usage. We are not persuaded of error in the Examiner’s rejection.
We are persuaded of no error in the obviousness rejection of claim 7
over Mogil.
NEW GROUND OF REJECTION
Pursuant to 37 C.F.R. § 41.50(b), we enter the following new ground
of rejection:
Claim 14 is rejected under 35 U.S.C. § 103(a) as obvious over Mogil
and Millis.
In the context of the anticipation rejection of claim 14 over Mogil, the
feature determined as missing from Mogil is the step of securing the clip or
fastener to a fixed structure such as a headrest post. The Appellant also
argues that the clip shown in Mogil does not appear sufficiently big enough
to attach to a headrest post and that the purpose of Mogil’s invention is
different from that of the Appellant. All other recited features of claim 14
were not argued by the Appellant with respect to Mogil.
As noted in our findings above, Millis discloses a system for tethering
a baby bottle, secured within a form-fitting jacket 5, to a vehicle headrest
post. (Millis 3:25-32). The concept of tethering a baby bottle to a headrest
post was already known to one with ordinary skill in the art.
In view of Millis, a skilled artisan would have understood that Mogil’s
water bottle, which is a beverage container, may also be tethered to a
headrest post by the end clip on the shoulder strap 126. One with ordinary
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skill would have recognized that the benefits for tethering a baby bottle to a
headrest post are also benefits for tethering a water bottle to a headrest post.
The level of ordinary skill is such that one with ordinary skill would have
recognized that all persons, baby or not, may become undesirably separated
from their beverage containers while they travel in a vehicle.
That Mogil’s clip does not appear big enough for attachment to a
headrest post is of no moment. One with ordinary skill in the art possesses a
basic level of skill and would have known to use a clip of sufficient size to
perform its intended function. See In re Sovish, 769 F.2d 738, 743 (Fed. Cir.
1985). A person of ordinary skill in the art is also a person of ordinary
creativity and not an automaton. KSR International Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007). It is not mere speculation Mogil’s bottle can be
attached to a headrest post. Also, that the purpose of Mogil’s invention is
different from that of Appellant’s invention is of no moment. A prior art
reference must be considered for everything it teaches by way of technology
and is not limited to the particular invention it is describing and attempting
to protect. EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed.
Cir.), cert. denied, 474 U.S. 843 (1985).
DECISION
The rejection of claim 14 under 35 U.S.C. § 112, second paragraph, is
reversed.
The rejection of claims 1, 3-6, and 9-13 under 35 U.S.C. §102(b) as
anticipated by Mogil is affirmed.
The rejection of claim 14 under 35 U.S.C. §102(b) as anticipated by
Mogil is reversed.
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The rejection of claim 2 under 35 U.S.C. § 103(a) as obvious over
Mogil and Millis is affirmed.
The rejection of claim 7 under 35 U.S.C. § 103(a) as obvious over
Mogil is affirmed.
Claim 14 is herein rejected under 35 U.S.C. § 103(a) as obvious over
Mogil and Millis.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). That section provides that 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 proceeding will be remanded to
the examiner….

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same
record….

AFFIRMED-IN-PART
New Ground of Rejection - 37 C.F.R. § 41.50(b)

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lb

Mr. Timothy D. Smith
5075 Canton Heights Drive
Jackson, MI 39211