11677775 (P.T.A.B. Jul. 19, 2013)

Ex Parte Mueller et al

Patent Trial and Appeal BoardJul 19, 2013

11677775 (P.T.A.B. Jul. 19, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte EDWARD L. MUELLER, DOUGLAS F. TAYLOR and R. BRUCE YACKO ____________ Appeal 2011-006124 Application 11/677,775 Technology Center 3700 ____________ Before: JAMES P. CALVE, WILLIAM A. CAPP and BEVERLY M. BUNTING, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the final rejection of claims 1-7, 10-15 and 18-20 as unpatentable under 35 U.S.C. § 103(a) over Yacko (US 6,290,100 B1, iss. Sep. 18, 2001) and Guild (US 5,863,126, iss. Jan. 26, 1999). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2011-006124 Application 11/677,775 - 2 - THE INVENTION Appellants’ invention relates to a concentrate cartridge for a diluting and dispensing container. Spec. 1, para. [0002]. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A concentrate cartridge comprising: a hollow main body having a first open end forming a closure seat and a spaced apart second end; a tube in fluid tight sliding relationship with the main body having a first end and a second end including a closure adapted to selectively seat with the closure seat of the main body, wherein the first end extends beyond the second end of the main body to enable contact with a dispensing sprayer; means for coupling the first open end of the main body to a diluting and dispensing container; and means for coupling the second end of the main body to the dispensing sprayer, whereby the closure is unseated by the coupling of the second end of the main body to the dispensing sprayer. OPINION Unpatentability of Claims 1-7, 10-15 and 18-20 Appellants argue claims 1-7, 10-15 and 18-20 as a group. App. Br. 5- 11. We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). The Examiner finds that Yacko discloses all of the elements of claim 1 except that it lacks a means for coupling the respective ends of the cartridge to: (1) the dispensing container; and (2) the sprayer. Ans. 3-4. The Examiner relies on Guild as disclosing a concentrate cartridge with the two elements missing from Yacko. Ans. 4. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time Appeal 2011-006124 Application 11/677,775 - 3 - of the invention to modify the Yacko cartridge with the coupling means of the Guild cartridge to achieve the claimed invention. Id. According to the Examiner, this would allow the cartridge to be placed outside of the dispensing container thereby increasing the holding capacity of the container while in use. Id. The Examiner finds that the proposed modification merely uses a known technique to improve a similar device in the same way. Ans. 4-5. The Examiner also considers the results achieved by the proposed modification, namely, unseating the cartridge seal by coupling the sprayer to the cartridge, to be predictable to one of ordinary skill. Ans. 5. Appellants traverse the Examiner’s rejection by arguing that Yacko’s cartridge resides inside, not outside, of the dispensing container as in the claimed invention. App. Br. 5. This argument is unpersuasive as non- obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981). Here, the Examiner relies on Guild as disclosing a cartridge that resides outside of the dispensing container. Ans. 7. Next, Appellants argue that Guild teaches away from the claimed invention. App. Br. 7-8. Appellants argue that Guild recites a closure that is not unseated upon assembly of the various system components. App. Br. 7. Appellants argue that Guild’s system enables mixing and dispensing to occur at a later time than assembly. Id. We disagree that this amounts to a teaching away. A reference does not teach away if it merely expresses an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed. In re Fulton, 391 F.3d Appeal 2011-006124 Application 11/677,775 - 4 - 1195, 1201 (Fed. Cir. 2004). Appellants have not directed us to any language in Guild that criticizes, discredits or discourages investigation into a system that mixes the contents of the cartridge immediately upon assembly. Appellants next argue that the Examiner’s proposed combination conflicts with the intended purpose and benefits of Guild. However, it is not necessary for the prior art to serve the same purpose as that disclosed in Appellants’ Specification in order to support the conclusion that the claimed subject matter would have been obvious. See In re Linter, 458 F.2d 1013, 1016 (CCPA 1972). “A reference may be read for all that it teaches, including uses beyond its primary purpose.” In re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418-421 (2007)). “Common sense teaches . . . that familiar items may have obvious uses beyond their primary purposes . . . .” KSR, 550 U.S. at 420. Appellants also argue that the Examiner’s proposed combination would render the prior art unsatisfactory for its intended purpose. Ans. 8. Appellants contend that modifying Yacko’s cartridge as proposed would render it unsatisfactory, because it would become too wide to fit inside of the dispensing container. Id. However, this argument is unpersuasive as it is well settled that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference, but what the combined teachings of the references would have suggested to a skilled artisan. See In re Keller, 642 F.2d at 425; Mouttet, 686 F.3d at 1332. A person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle. KSR, 550 U.S. at 420. Here, the Examiner’s proposed combination teaches or suggests Appeal 2011-006124 Application 11/677,775 - 5 - all of the limitations of claim 1 and the Examiner has adequately explained how a person of ordinary skill would have been able to fit together the teachings of the cited references. Finally, Appellants argue that the Examiner’s proposed combination changes Yacko’s principle of operation because various changes would have to be made to Yacko. App. Br. 10-11. The Examiner responds that the proposed combination retains the same basic principle of operation as Yacko, namely, the cartridge opens and releases its contents upon assembly of the device. Ans. 9. Yacko discloses a dispensing container with a concentrate cartridge. Yacko, Col. 3, ll. 8-12. The Yacko cartridge has a radially outward extending closure that opens in response to a downward force that is applied when the cartridge and dispensing container are assembled. Yacko, Col. 3, ll. 25-33. This is essentially the same principle of operation as the instant invention.1 The preponderance of the evidence supports the Examiner’s findings and conclusion. We sustain the Examiner’s unpatentability rejection of claims 1-7, 10-15 and 18-20. DECISION The decision of the Examiner to reject claims 1-7, 10-15 and 18-20 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)(1)(iv). AFFIRMED msc 1 Appellants also argue that Guild merely discloses a baby bottle with a nipple, not a sprayer. App. Br. 9. We need not decide whether a baby bottle nipple is a “sprayer,” as Yacko discloses a cartridge whose closure is unseated when coupled to a dispensing sprayer. Yacko, Fig. 1. The proposed combination teaches or suggests all of the limitations of claim 1.