Ex Parte Jain

Patent Trial and Appeal Board

Apr 24, 2018

13711258 (P.T.A.B. Apr. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/711,258 12/11/2012
29880 7590 04/26/2018
FOX ROTHSCHILD LLP
PRINCETON PIKE CORPORATE CENTER
997 LENOX DRIVE
BLDG. #3
LAWRENCEVILLE, NJ 08648
FIRST NAMED INVENTOR
Neeraj Jain
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.
P35712-A (054762.00007) 9689
EXAMINER
POOS, MADISON LYNN
ART UNIT PAPER NUMBER
3781
NOTIFICATION DATE DELIVERY MODE
04/26/2018 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):
ipdocket@foxrothschild.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NEERAJ JAIN
Appeal2016-003983 1
Application 13/711,25 8
Technology Center 3700
Before LYNNE H. BROWNE, JILL D. HILL, and BRENT M. DOUGAL
Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Neeraj Jain (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner's final decision rejecting claims 16-18 and 20-27. 2 We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM, designating the affirmance A NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. §41.50(b).
1 Appellant identifies Loving Pets Corporation, as the real party in interest.
Appeal Br. 2.
2 Claims 1-15, 19, and 28-36 have been canceled. Appeal Br. 22-25
(Claims App.)
Appeal2016-003983
Application 13/711,258
BACKGROUND
Sole independent claim 16, reproduced below, represents the claimed
invention.
16. An animal water and food bowl which resists tipping
and slipping when being used by the animal and which
comprises:
a rigid first shell formed from a thermoplastic,
thermosetting, or other plastic material which is resistant to
denting and is receptive to paint or ink, the first shell having a
top, a bottom having a maximum diameter, and a sidewall
extending between the bottom and the top of the first shell in a
first substantially straight line, wherein the maximum diameter
of the bottom is greater than a length of the sidewall between
the top and the bottom of the first shell;
a second shell formed from stainless steel and positioned
at least in part within the first shell, the second shell having a
sidewall extending between a bottom and a top of the second
shell in a second substantially straight line and having a length
between the top and the bottom of the second shell, wherein a
spacing between an outer surface of the sidewall of the second
shell and an inner surface of the sidewall of the first shell is
substantially zero over a substantial entirety of the length of the
sidewall of the second shell; and
an anti-slip provision removably mounted on the first
shell, wherein the anti-slip provision comprises a ring of an
elastomeric material removably mounted in a recess formed in
the bottom of the first shell using an interference fit between the
ring and the first shell.
REJECTI0N3
3 Appellant proposed canceling claims 28-36 in an amendment filed with
the Appeal Brief received on August 21, 2015. This amendment was
entered in the Advisory Action transmitted on September 18, 2015.
Accordingly, the rejections of claims 28-26 are moot.
2
Appeal2016-003983
Application 13/711,258
Claims 16-18 and 20-27 stand rejected under 35 U.S.C. § I03(a) as
obvious over by Jerstroem (US RE39,39I E; reissued Nov. 14, 2006)
(hereinafter "Jerstroem"), Walker (US 5,709,168; iss. Jan 20, 1998), and
Chen (US 2008/0105694 Al; pub. May 8, 2008). Final Act. 2.
ANALYSIS
Appellant argues claims 16-18 and 20-27 as a group. We select
independent claim 16 as representative. 37 C.F.R. § 4I.37(c)(l)(iv). Claims
17, 18, and 20-27 stand of fall with claim 16.
Regarding independent claim 16, the Examiner finds that Jerstroem
discloses a bowl which "resists tipping and slipping" and comprises the
claimed "first shell ( outer body 20) formed from a thermoplastic,
thermosetting, or other plastic material ( col. 2, lines 26-28) ... wherein the
maximum diameter of the bottom is greater than a length of the sidewall
between the top and the bottom of the first shell (Fig. 3)." Final Act. 2-3.
The Examiner also finds that Jerstroem's bowl comprises "a second shell
(inner body 10) formed from stainless steel ( col. 2, line 14) and positioned at
least in part within the first shell (Fig. 3)" with no spacing between the
respective sidewalls as recited in claim 16. Id. at 3. The Examiner assigns
no patentable weight to the bowl being for animal food and water,
considering it to define an intended use rather than a structural distinction.
Id.
The Examiner finds that Jerstroem does not disclose: (1) a rigid first
shell; (2) sidewalls of the first and second shells that extend in a
substantially straight line; or (3) and an anti-slip provision comprising a ring
of an elastomeric material removably mounted in a recess formed in the
3
Appeal2016-003983
Application 13/711,258
bottom of the first shell using an interference fit between the ring and the
first shell. Id.
The Examiner finds, however, that: (1) Walker discloses a bowl made
from rigid plastic; and (2) Chen discloses a container 1 having straight
sidewalls and a bottom 10 with a skidproof member 2 mounted in a slot 11
therein. Id. at 4 (citing Walker 3:58, Chen, Figs. 2 and 3). The Examiner
concludes that it would have been obvious to one skilled in the art to modify
Jerstroem by "us[ing] the rigid plastic material of Walker" and the straight
walls of Chen, and "add[ing] the removable skidproof member attached to
the bottom" as taught by Chen "to provide a low cost ... bowl (Walker, col.
1, line 42) and to provide a bowl that sets stably on a flat and smooth plane
without sliding freely (Chen, pg. 1, ,r 0002)." Id.
Appellants broadly assert that it would not have been obvious to
modify the side walls of Jerstroem to be straight, because Jerstroem's
discussion of tipping teaches away from the proposed modification, and the
Examiner's proposed modification: (1) would alter the principle of
operation of Jerstroem; and (2) would render Jerstroem unsuitable for its
intended purpose as a tippable bowl. Appeal Br. 9; see also Jerstroem 2:50-
55 ("The outer body 20 ... resists sliding [and] facilitate[s] tipping of the
bowl during use.").
Appellants also broadly assert that it would not have been obvious to
modify the Jerstroem's bowl "with a removable skidproof member attached
to the bottom thereof," because Jerstroem's discussion of resilient material
on the bottom teaches away from the proposed modification, and the
Examiner's proposed modification: (1) would alter the principle of
4
Appeal2016-003983
Application 13/711,258
operation of Jerstroem; and (2) would render Jerstroem unsuitable for its
intended purpose as a tippable bowl. Appeal Br. 9.
To teach away, a reference must "criticize, discredit, or otherwise
discourage the solution claimed." In re Fulton, 391 F.3d 1195, 1201 (Fed.
Cir. 2004). We are not persuaded that Jerstroem's discussion of bowl
tipping facilitation rises to the level of teaching away from straight sides, or
that Jerstroem's frictional material over its entire body teaches away from a
removable skidproof member. Jerstroem does not criticize, discredit, or
otherwise discourage straight sides or a non-slip ring.
Further, Appellants' broad assertion does not define the principle of
operation of Jerstroem, or how it would be altered by the proposed
combination, and is therefore unpersuasive. Merely stating features of the
bowl as taught by Jerstroem does not establish a principle of operation.
Lastly, even if J erstroem' s mention of facilitating bowl tipping renders its
intended purpose to be a tippable bowl, Appellant has not informed us why a
bowl with straight sides cannot be tipped by a user. Although rounded sides
may facilitate tipping, we are not persuaded that a straight sided bowl is
unsuitable for tipping. Further, although Appellant mentions "the criticality
of [ Jerstroem' s] frictional material to the user's ability [to] readily tip the
bowl" (Appeal Br. 10), Appellant provides no citation to Jerstroem, or any
other evidence, supporting the alleged "criticality," and we are unable to
discern such criticality from Jerstroem's disclosure.
Appellant also argues that Jerstroem's "tippable bowl" is not capable
of "functioning effectively as an animal water and food bowl." Appeal Br.
13. Lacking an explanation of why this is so, or what additional structure is
required over the prior art, this argument is not persuasive of Examiner
5
Appeal2016-003983
Application 13/711,258
error. It is not clear why Jerstroem's bowl is incapable of being used as an
animal food and water bowl, and more particularly why the proposed
combination of references would not yield a bowl capable of use as an
animal water and food bowl which resists tipping.
Appellant argues that Jerstroem's bowl is formed from a resilient
frictional surface rather than the claimed dent resistant "rigid material," and
that sidewalls of Jerstroem's outer bowl are not straight and thus,
Jerstroem's disclosure is not a relevant reference. Appeal Br. 13, 14, 18.
This argument is not persuasive, because it is Walker that the Examiner
finds discloses the rigid plastic shell, and it is Chen that the Examiner finds
discloses straight sidewalls. Final Act. 4. Appellants argument improperly
attacks Jerstroem individually, rather than addressing the Examiner's
proposed combination. Similarly, regarding Appellant's argument that
Jerstroem does not disclose the claimed elastomeric ring (Appeal Br. 14), it
is Chen that the Examiner finds discloses the ring. Final Act. 4. We
therefore are not persuaded by this argument.
Appellant then argues that modifying J erstroem with Chen and
Walker as proposed by the Examiner would render Jerstroem "unsuitable for
its intended purpose of mixing." Appeal Br. 14. As above, lacking a proper
explanation of why Jerstroem, as modified by Walker and Chen, would be
unsuitable for mixing, we are not persuaded by this argument. Appellant
argues next that Jerstroem teaches away from straight walls (id.) and a
plastic outer shell (id. at 20), which is not persuasive because Jerstroem does
not "criticize, discredit, or otherwise discourage" straight walls or a plastic
outer shell. In re Fulton, 391 F.3d at 1201.
6
Appeal2016-003983
Application 13/711,258
Appellant argues that, because Jerstroem already has a non-slip
surface, one skilled in the art would not modify it to include Chen's non-slip
elements. Appeal Br. 1 7. This argument is not persuasive, because it does
not address the Examiner's proposed combination of Jerstroem, Walker, and
Chen, wherein Jerstroem is modified to have a plastic outer shell as in
Walker, which would then accommodate a non-slip element of Chen. See
Final Act. 4.
Appellant argues that the Examiner's rejection is based on two
erroneous findings, because: (1) "there is no clear teaching in [Chen] that
the skidproof members disclosed thereon are removable;" and (2) Jerstroem
does not disclose a diameter of its bottom surface being greater than a length
of its sidewalls. Appeal Br. 9-10, 14.
Regarding the first contention, while Chen does not explicitly disclose
removability of its skidproof members, one skilled in the art would find
removability obvious given the illustration of Chen's skidproof members in
the "explosive" views where the skidproof members are separate from the
bowls, and the views in which the skidproof member resides in a "slot"
therefor. Chen, ,r,r 2, 3, 19 (A skidproof member with shape corresponding
to the slot is mounted in the slot.), 5-18 ( describing the Figures), and Figs.
1-14. Chen's skidproof members 2 are either removably mounted in the
slots 11 or non-removably mounted in the slots, such that the option of
removable mounting was within the understanding of the skilled artisan at
the time of the invention, rendering predictable results, and is therefore
obvious. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 415--421 (2007)
(Providing exemplary rationales such as use of a known technique to
improve similar devices in the same way.).
7
Appeal2016-003983
Application 13/711,258
Appellant contends that Chen's Figure 4 and 5 "depict space between
the skidproof member (2) and the periphery of the slot ( 11) within which it
is mounted, thus indicating that the skidproof member (2) is not mounted
using an interference fit as required by claim 16 of the present application."
Appeal Br. 1 7. Chen simply discloses mounting the complementary-shaped
skidproof member 2 in the slot 11, and not that the mounting is via an
interference fit. Chen ,r,r 2, 3, 19. However, regardless of the illustrated
gap, it would have been obvious to one skilled in the art to use an
interference fit for removable mounting, because an interference fit was a
known removable mounting technique at the time of the invention. See
KSR, 550 U.S. at 415--421 (Providing exemplary rationales such as use of a
known technique to improve similar devices in the same way.).
Regarding Appellant's second contention, while Jerstroem may not
disclose its bottom diameter being greater than a length of its sidewalls,
Chen and Walker disclose this bottom-to-sidewall ratio. See, e.g., Chen
Figs. 3, 10; Walker Fig. 6. Modifying Jerstroem to have the sidewall ratio of
Chen or Walker would be a simple substitution of one known element
( sidewall length great than bottom diameter) for another ( sidewall length
less than bottom diameter) to obtain predictable result (e.g., a bowl that is
less likely to spill when not desirable). See KSR, 550 U.S. at 415--421.
For the reasons set forth above, we sustain the Examiner's rejection of
independent claim 16. Claims 17, 18, and 20-27 fall with claim 16.
Because our conclusion is based on a statement of the rejection that differs
from the statement articulated by the Examiner, we designate our affirmance
as a new ground of rejection under 37 C.F.R. § 4I.50(b) to provide
Appellants with a full and fair opportunity to react to the rejection.
8
Appeal2016-003983
Application 13/711,258
DECISION
The Examiner's rejection of claims 16-18 and 20-27 is AFFIRMED
and designated as NEW GROUNDS OF REJECTION under 37 C.F.R.
§ 4I.50(b).
This decision contains new grounds of rejection pursuant to
37 C.F.R. § 4I.50(b), which provides that "[a] new ground of
rejection pursuant to this paragraph shall not be considered final
for judicial review." 37 C.F.R. § 4I.50(b) also provides that
Appellants, 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 ....
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; 37 C.F.R. §4I.50(b)
9