Ex Parte Peterson et al

Patent Trial and Appeal Board

Jun 14, 2018

14533658 (P.T.A.B. Jun. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/533,658 11/05/2014
10291 7590 06/18/2018
FISHMAN STEW ART PLLC
39533 WOODWARD A VENUE
SUITE 140
BLOOMFIELD HILLS, MI 48304-0610
FIRST NAMED INVENTOR
David E. Peterson
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.
67430-0005 5723
EXAMINER
MELARAGNO, MICHAEL
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
06/18/2018 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):
docketing@fishstewip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVIDE. PETERSON and MATTHEW P. KLEIN
Appeal2017-008865
Application 14/533,658
Technology Center 3700
Before: CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
SEAN P. O'HANLON, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 2-
7 and 9-24. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part designating new grounds of rejection.
Appeal2017-008865
Application 14/533,658
CLAIMED SUBJECT MATTER
The claims are directed to a liner for a vessel. Claim 21, reproduced
below, is illustrative of the claimed subject matter:
21. A beverage containment assembly for a vessel, the assembly
compnsmg:
a flexible liner having an inner surface and an outer
surface;
a flexible tube; and
a cuff having an elongated body and a flange,
wherein the elongated body is received in at least a portion of the
tube and the flange is positioned against the inner surface of the
liner, thereby securing the liner between the cuff and the tube.
REJECTIONS
Claim 23 is rejected under 35 U.S.C. § I02(a)(l) as being anticipated
by Py (U.S. PgPub. 2007/0194045 Al, published Aug. 23, 2007).
Claims 2--41, 7, 9-12, 21 and 22 are rejected under 35 U.S.C. § 103 as
being unpatentable over Dennie (U.S. Pat. 2,831,610, issued Apr. 22, 1958),
Schmit (U.S. Pat. 4,076,147, issued Feb. 28, 1978), and Lafleur (U.S. Pat.
5,701,650, issued Dec. 30, 1997).
Claims 15-19 are rejected under 35 U.S.C. § 103 as being
unpatentable over Dennie, Schmit, Lafleur, and Heuke (U.S. Pat. 5,407,099,
issued Apr. 18, 1995).
Claim 24 is rejected under 35 U.S.C. § 103 as being unpatentable over
Py and Schmit.
1 Claims 3 and 4 were discussed in the rejection but omitted from the
rejection statement.
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Application 14/533,658
Claims 5 and 13 are rejected under 35 U.S.C. § 103 as being
unpatentable over Dennie, Schmit, Lafleur, and Werth (U.S. Pat. 7,922,212
B2, issued Apr. 12, 2011).
Claims 6 and 14 are rejected under 35 U.S.C. § 103 as being
unpatentable over Dennie, Schmit, Heuke, and Splan (U.S. Pat. 3,837,533,
issued Sept. 24, 1974).
Claim 20 is rejected under 35 U.S.C. § 103 as being unpatentable over
Dennie, Schmit, Lafleur, Heuke, and Werth.
OPINION
Throughout Appellants' briefing, Appellants contend that the
Examiner concedes various points and patentability in general by failing to
respond to certain arguments. Appellants do not cite, and we are unaware of
any precedent supporting this assertion. Patentability is judged on the
totality of the record with due consideration of argument and evidence. In re
Oetiker, 977 F. 2d 1443, 1445 (Fed. Cir. 1992) (citations omitted). A
preponderance of evidence, coupled with correct reasoning and legal
conclusions, may be sufficiently dispositive to establish unpatentability
based on the totality of the record even where the Examiner does not
respond to a specific argument. This is particularly true where arguments
pertain to matters outside the scope of our jurisdiction or are not pertinent to
the rejection for which Appellants seek our review as discussed in further
detail below. See 37 C.F.R. § 4I.37(c)(l)(iv)("The arguments shall explain
why the examiner erred as to each ground of rejection contested by
appellant").
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Application 14/533,658
Drawing Objection
As the drawing objection (see App. Br. 8; Reply. Br. 2) is not related
to a rejection of claims, it relates to a petitionable matter outside the scope of
our review and is not addressed in this appeal. See Ans. 7; MPEP § 1201; In
re Mindick, 371 F.2d 892, 894 (CCPA 1967); In re Hengehold, 440 F. 2d
1395, 1404 (CCPA 1971).
Claim 23 and 24
In rejecting claim 23 based on the embodiment depicted in Figure 22
of Py, the Examiner does not point to any evidence or offer any explanation
to support the finding of direct securement between the end portion of Py' s
tube 814 and pouch/liner 822. See Final Act. 4; Ans. 2. Figure 22 depicts a
disc-shaped unenumerated intermediate structure therebetween, and the
associated description in Py (p. 14, para. 99) does not provide details of the
connection. Reply. Br. 2-3. Anticipation cannot be established absent a
showing of each and every claim element in the prior art arranged as
required by the claim. App. Br. 8 ( citing MPEP § 2131 ). As this has not
been done, the Examiner's anticipation rejection cannot be sustained.
Because the Examiner offers no further evidence or reasoning to account for
this deficiency in the obviousness rejection of claim 24 based on Py and
Schmit, that rejection also cannot be sustained. App. Br. 22
Claim 21
The Examiner's rejection of claim 21 is premised on the obviousness
of modifying Dennie, in view of Schmit and Lafleur, to relocate the flange
portion of Dennie's nozzle 5, shown attached to the outer surface of the bag
4 (fig. 6), on the inner surface of the bag, thereby "sandwiching" the bag or
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Application 14/533,658
liner between the flange and tube 7. Final Act. 4--5. We cannot agree with
Appellants' argument (App. Br. 11-13; Reply. Br. 3) that such a
modification would destroy, or vitiate the basic principles of operation of,
Dennie's device. Appellants do not cite any evidence or provide any
technical reasoning demonstrating a preference or advantage associated with
attaching Dennie's flange to the outside of the bag. Dennie does not appear
to expressly discuss the advantages or disadvantages of any particular
connection arrangement and therefore does not criticize or "teach away"
from the Examiner's proposed alternative. See In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004); App. Br. 14. It is clearly unreasonable to characterize
the primary purpose of Dennie, which is providing a convenient disposable
liquid dispensing container (col. 1, 11. 30-35), as being dependent upon the
specific nozzle flange attachment location. See App. Br. 11-13. The exact
requirements of the recited flange attachment arrangement are correctly
found by the Examiner in Lafleur (Final Act. 4--5; see Lafleur figs. 4, 5 and
col. 7, 11. 5-11 ( teaching flange 66 "positioned against the inner surface" of
the bag liner bottom 5 8 and securing the bag liner between the spout or
"cuff' and the outlet 22 or "tube" via flange 42.)). Modifying Dennie in this
way amounts to the simple substitution or rearrangement of elements and, as
the Examiner points out, has the potential to predictably improve strength at
the connection location and discourage leakage. Accordingly, we sustain the
Examiner's rejection of claim 21.
Claim 22
In addressing the limitations of claim 22, the Examiner, by misquoting
the claim language, appears to have overlooked the requirement for "sealing
the liner between the cuff and tube." Final Act. 4 (citing Schmit for
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Application 14/533,658
"provid[ing] a seal between the cuff and liner"); App. Br 14--15. Despite
this oversight, we believe this "sealing" limitation is taught by the disclosure
of Lafleur discussed above. We modify the Examiner's rejection so as to
rely on Lafleur for this feature for the reasons given above and in the Final
Rejection. We designate our analysis in this regard as introducing a new
ground or rejection under 37 C.F.R. § 4I.50(b) so as to afford Appellants the
procedural options associated therewith.
Appellants' argument concerning the alleged absence of "outwardly
expanding" in Dennie (App. Br. 15) remains germane to the modified
grounds of rejection. Although Dennie does not expressly disclose that tube
7 is outwardly expanded when attached to the nozzle 5, as nozzle 5 is clearly
depicted with a taper (Fig. 6), there is a sound basis from which to conclude
that the tube 7 and nozzle 5 will cooperate in the manner recited in claim 22
when joined. Furthermore, the use of a tapered tube-securing arrangement is
also demonstrated by Lafleur (see Fig 10), as is the use of an "interference
fit" which the skilled artisan would understand to deform or stretch a
component so as to create a frictional securement force. Thus, while
outward tube expansion is likely implicitly taught by Dennie, even if that is
not the case, Lafleur' s teachings demonstrate that such a securement
technique was at least an obvious and predictable variant for securing a tube
to a nozzle. Again, to the extent we have supplemented the Examiner's
analysis, Appellants may respond under 37 C.F .R. § 41.50(b ).
The absence of positioning the tube over a portion of the liner (App.
Br. 15) is cured by incorporation of the Schmit and Lafleur teachings.
Appellants' argument that Dennie lacks that which Schmit's and LaFleur's
teachings would yield when incorporated as proposed by the Examiner does
little if anything to support the argument against the Examiner's
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Application 14/533,658
determination ofunpatentability. "Non-obviousness cannot be shown by
attacking references individually when the rejection is predicated upon the
teachings of a combination of references." See In re Merck & Co. Inc., 800
F.2d 1091, 1097 (Fed. Cir. 1986) (citation omitted).
Claims 2 and 9
For the same reasons discussed just above, Appellants argument that
"Dennie is completely silent regarding a cuff is configured to apply an
outward force to the liner and the flexible tube is configured to apply an
inward force to the liner" (App. Br. 16, 17-18) does not inform us of error in
the Examiner's rejection (Final Act. 4--5), which is predicated on
incorporating the teachings of Schmit and Lafleur into Dennie's device.
The modification proposed would yield substantially the same arrangement,
from a force-applying perspective, as that disclosed in Appellants'
Specification (para. 25) and therefore reasonably can be regarded as
"configured to apply" the same forces. Accordingly, we sustain the rejection
of claims 2 and 9.
Claim 3 and 10
Appellants' sole argument that Schmit is completely silent regarding a
permanent connection (App. Br. 16, 18) fails to address, and therefore fails
to inform us of any error in, the Examiner's position that forcible swaging is
a technique that results in permanent deformation and therefore a permanent
connection (Final Act. 5; Ans. 4). Accordingly, we sustain the rejection of
claims 3 and 10.
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Application 14/533,658
Claims 4 and 11
Claims 4 and 11 essentially add a desired result or benefit of the
flange cuff and liner configuration: resisting blockage of the cuff passage.
To be reasonably regarded by a skilled artisan as "configured to" do
something does not necessarily require an express disclosure of the design
goals, benefits, or purposes of a particular structure in the prior art. It is not
recognition of a desired result but the existence of the requisite structure for
bringing it about that makes an element reasonably regarded as "configured
to" perform a function or achieve a particular result. Appellants' brief
comment that the references are silent as to a flange configured for this
benefit or result (App. Br. 17, 18-19) is a skeletal argument that provides no
explanation as to why, if the same structural arrangement were provided, as
is obvious based on the combined prior-art teachings discussed above, the
same result or benefit of resisting blockage of a passage of the cuff would
not follow. Accordingly, we sustain the Examiner's rejection of claim 4 and
11.
Claims 15-20
Appellants argue, and the Examiner does not appear to address, the
claim 15 limitation requiring, "pushing a tube over at least a portion of the
liner and on to the cuff." App. Br. 19-20; Final Act. 6; Ans. 3--4. A
rejection must be set forth in sufficiently articulate and informative manner
as to meet the notice requirement of§ 132, such as by identifying where or
how each limitation of the rejected claims is met by the prior art references.
In re Jung, 637 F. 3d 1356, 1363 (Fed. Cir. 2011); see also 37 C.F.R. §
1.104( c )(2 ). As it is unclear from the record how the teachings and
disclosures of the prior art references are being applied by the Examiner to
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reject claim 15, the Examiner's rejection of claim 15 cannot be sustained.
See In re Stepan, 660 F. 3d 1341, 1345 (Fed. Cir. 2011) (It is the PTO's
obligation to provide timely notice to the applicant of all matters of fact and
law asserted.); In re Zurko, 258 F.3d 1379, 1386 (Fed. Cir. 2001)
(Rejections must be based on some concrete evidence in the record to
support the Examiner's factual findings and legal conclusions.). Because the
Examiner's rejections of dependent claims 16-20 do not account for this
deficiency, the rejections of claims 16-20 also cannot be sustained.
Claims 5 and 13
It is unclear why Appellants argue that a barb fitting does not include
"ridges." App. Br. 23. The Examiner does not appear to rely on any
personal knowledge (App. Br. 23, 24), only the unremarkable proposition
that Werth demonstrates barbed fittings 112 including ridges (depicted
without enumeration in Figs. 1, 2, 5, and 6) were well known in the art.
Final Act. 8. Accordingly, we are not apprised of error in the Examiner's
rejection of claims 5 and 13.
Claims 6 and 14
It is unclear why the Examiner believes Splan's teaching of
"adhesive" serves to teach the recited "heat seal." Final Act. 8; Ans. 7
( citing Splan col. 4, 11. 36-38). The Examiner appears to be either
misconstruing "heat seal" to include "adhesive" or misunderstanding
"adhesive" to be synonymous with, or inherently require, a "heat seal."
Whichever the case, the Examiner's rejection cannot be sustained on the
basis set forth by the Examiner. Although Py was discussed by the
Examiner regarding heat sealing in other rejections, the Examiner does not
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rely on Py or any other reference to cure the deficiency in the rejection of
claims 6 and 14.
DECISION
The Examiner's rejections of claims 2-5, 7, 2 9-13, 21 and 22 are
affirmed.
We designate our affirmance of claims 22 and 9-13 as including a
new ground of rejection under 37 C.F.R. § 4I.50(b).
The Examiner's rejections of claims 6, 14--20, 23 and 24 are reversed.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). Section 4I.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 Claims 7 and 12 were not separately argued under 37 C.F.R.
§ 4I.37(c)(l)(iv).
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Application 14/533,658
(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.
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-IN-PART; 37 C.F.R. § 4I.50(b)
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