Ex Parte RAHIMI et al

Patent Trial and Appeal Board

Sep 18, 2018

14985281 (P.T.A.B. Sep. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/985,281
68543 7590
Arent Fox LLP
555 West Fifth Street
48th Floor
12/30/2015
09/20/2018
Los Angeles, CA 90013
FIRST NAMED INVENTOR
Arezo Nora RAHIMI
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.
035039.00009 6583
EXAMINER
BECKER, DREW E
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
09/20/2018 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):
patentdocket@arentfox.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AREZO NORA RAHIMI and
NAIRI YERJANIK MARKARIAN
Appeal 2017-011656
Application 14/985,281
Technology Center 1700
Before JAMES C. HOUSEL, JEFFREY R. SNAY, and
MICHAEL G. McMANUS, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner's decision finally rejecting claims 1 and 10 under 35 U.S.C. § 103
1 Our Decision refers to the Specification (Spec.) filed December 30, 2015,
the Examiner's Final Office Action (Final Act.) dated September 22, 2016,
Appellant's Appeal Brief (Br.) filed April 24, 2017, and the Examiner's
Answer (Ans.) dated June 26, 2017.
2 Appellant is the Applicant, ALKIPOPS INC., which is identified in the
Appeal Brief as the real party in interest (Br. 4).
Appeal 2017-011656
Application 14/985,281
as unpatentable over Leonhardt3 in view ofReinhardt, 4 Andersen, 5 and
Mamiye. 6,7 We have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
STATEMENT OF THE CASE
The invention relates to an apparatus having a vessel for holding
liquid and a mount for mounting a food substance (Spec. ,r 1 ).
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal.
1. An apparatus, comprising:
a vessel having a cylindrical shape capable of holding
between 1 and 2 ounces of a liquid, wherein the vessel is made
of polyethylene terephthalate (PET) plastic, wherein the vessel
is translucent such that a user can determine a flavor of the
liquid based on an observed color of the liquid in the
translucent vessel, and wherein the liquid includes at least some
vodka or tequila;
a cap detachably connected to an end of the vessel,
wherein the cap comprises a tamper evident portion, and
wherein the liquid drains from the vessel only when the cap is
detached;
a mount connected to an end of the vessel opposite the
cap; and
a food substance consisting of candy on the mount,
wherein the mount comprises a locking portion configured to
expand from the mount to fit into an interior recess of the food
substance, and wherein the liquid is configured to be held only
3 Leonhardt, US 2008/0213437 Al, published September 4, 2008.
4 Reinhardt et al., US 2013/0156918 Al, published June 20, 2013
("Reinhardt").
5 Andersen, US 2007/0286929 Al, published December 13, 2007.
6 Mamiye, US 2011/0104343 Al, published May 5, 2011.
7 Pending claims 11-15 and 18-21 have been withdrawn from further
consideration by the Examiner and are not before us in this appeal (Final
Act. 1).
2
Appeal 2017-011656
Application 14/985,281
in the vessel exterior to the food substance.
ANALYSIS
The Examiner finds Leonhardt discloses an apparatus having a
transparent plastic cylindrical vessel, a twist cap, a mount with an expanded
locking portion, and candy on the mount substantially as claimed except for
an explicit teaching that: 1) the vessel holds 1-2 oz. of a liquid comprising
vodka or tequila; 2) the plastic of the vessel is polyethylene terephthalate
(PET); and 3) the cap includes a tamper evident portion (Ans. 3). For the
first feature, the Examiner finds Reinhardt teaches a device comprising a
hollow vessel and a food substance mounted on one end, wherein the vessel
may hold vodka or tequila and has a volume of 0.5-2.0 oz. (id.). For the
second feature, the Examiner finds Andersen teaches a device including a
candy element and a hollow cylindrical vessel made from PET, which may
also be transparent or translucent (id. at 4). For the third feature, the
Examiner finds Mamiye teaches a cylindrical vessel holding liquid with a
twist cap on one end thereof having a tamper evident portion (id.). In view
of the prior art teachings of Reinhardt, Andersen, and Mamiye, the Examiner
concludes that it would have been obvious to modify Leonhardt's apparatus
such that the vessel is made from translucent PET, holds 1-2 oz. of vodka or
tequila, and includes a twist cap having a tamper evident portion, as doing so
would have yielded predictable results (id. at 3-5).
The Examiner details extensive reasons why the ordinary artisan
would have found such modifications to have been obvious. Specifically,
the Examiner finds that each of these references are directed to
food/confectionary devices having hollow cylindrical vessels capable of
holding liquid (Ans. 3-5). In addition, the Examiner finds it was known that
3
Appeal 2017-011656
Application 14/985,281
consumers desire single serving alcoholic beverage containers such as
commonly found in hotel mini-bars, as well as food products with varied
tastes including confections combined with alcohol such as vodka and
tequila (id. at 4). Moreover, the Examiner finds twist caps having tamper
evident portions were well known and commonly used to inform consumers
prior to purchase whether a product has been damaged, tampered, removed,
or contaminated (id. at 5).
Appellant argues that the Examiner fails to provide a rationale to
combine Leonhardt, Andersen, and Mamiye such that the cap comprises a
tamper evident portion (Br. 9). In this regard, Appellant contends that
Leonhardt's device is designed to hold and extract a message rather than a
liquid, and that Leonhardt's lower handle 18 is elongated to cradle the
message so that it is easily removed and holds the message so that it does not
fall (id. at 10). According to Appellant, if the message were replaced with a
liquid in Leonhardt, much of the lower handle space would not be utilized
because the liquid would spill when the lower handle is removed (id.).
Further, Appellant contends that if a cap in Leonhardt did not have an
elongated portion, Leonhardt would be rendered inoperable for its intended
purpose because removal of the message would be much more difficult (id.).
As such, Appellant argues that Leonhardt would not work with a tamper
evident cap (id.).
This argument is not persuasive of reversible error. Initially, we note
that Appellant fails to direct our attention to any disclosure in Leonhardt
requiring that lower handle portion 18 be elongated to cradle a message for
easy removal, nor do we find any. Also, Leonhardt itself teaches that lower
handle portion 18 may be configured as a twist-off cap with upper and lower
4
Appeal 2017-011656
Application 14/985,281
handle portions 16, 18 including complementary thread elements (Leonhardt
,r 28). We see no reason why such a cap would only be capable of cradling
and holding a message when removed. It appears that Appellant's argument
is based on Leonhardt's Figures IA-IC which depict lower handle portion
18 with an extended portion beyond its friction fit mating portion. However,
although it might be desirable to minimize empty space in the vessel when
filled with a liquid, Appellant provides no reasoning why excess empty
space would be inoperable or would somehow not work with a tamper
evident portion as taught by Mamiye.
Moreover, in modifying Leonhardt to fill the vessel with liquid rather
than a message, the ordinary artisan would have understood the need to
design the space within the vessel in a manner to fit its use, especially in
view of Reinhardt and Mamiye, both of which teach a reduced covering or
cap. "[T]he [obviousness] analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill would employ." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007); see also In re Preda, 401 F .2d 825, 826 (CCP A 1968) ("[I]t is
proper to take into account not only specific teachings of the reference but
also the inferences which one skilled in the art would reasonably be
expected to draw therefrom."). Therefore, Appellant fails to support the
argument that Leonhardt would not work with a tamper evident cap.
Appellant further argues that the combination of Leonhardt,
Reinhardt, Andersen, and Mamiye fails to provide a mount with a locking
portion configured to expand from the mount to fit into an interior recess of
the food substance (Br. 11). As to the Examiner's finding that Leonhardt's
5
Appeal 2017-011656
Application 14/985,281
teaching of small ball 22 on mount 20, Appellant urges that Leonhardt fails
to teach any expandability or locking ability related to ball 22 (id.).
Appellant further contends that none of Reinhardt, Andersen, and Mamiye
remedy this deficiency (id. at 11-12).
Appellant's argument is not persuasive of reversible error. In
deciding this issue, we begin, appropriately, with the claim's words. See
Oakley, Inc. v. Sunglass Hut Int'!, 316 F.3d 1331, 1339 (Fed. Cir. 2003)
( explaining that anticipation and obviousness require comparison of the
properly construed claims to the available prior art); Amazon.com, Inc. v.
Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001) ("Only
when a claim is properly understood can a determination be made ...
whether the prior art anticipates and/or renders obvious the claimed
invention."). During examination, claim terms are given their broadest
reasonable construction consistent with the specification. In general, words
used in a claim are accorded their ordinary and customary meaning.
Honeywell Int'! Inc. v. Universal Avionics Sys. Corp., 488 F.3d 982, 992
(Fed. Cir. 2007).
Further, although a claim is interpreted in light of the specification, it
is important that limitations from the specification not be imported into the
claim.
[I]t is the language itself of the claims which must particularly
point out and distinctly claim the subject matter which the
applicant regards as his invention, without limitations imported
from the specification .... Limitations in the specification not
included in the claim may not be relied upon to impart
patentability to an otherwise unpatentable claim.
In re Lundberg, 244 F.2d 543 (CCPA 1957).
6
Appeal 2017-011656
Application 14/985,281
Claim 1 recites "the mount comprises a locking portion configured to
expand from the mount to fit into an interior recess of the food substance."
Neither Appellant nor the Examiner attempt to explicitly construe this
limitation of claim 1. However, the Examiner appears to construe this
limitation as requiring that the mount have a locking portion that has a
greater dimension than the mount so as to create a locking arrangement
between the locking portion and the food substance when the substance is
formed thereon. This construction is precisely what Leonhardt' s small ball
22 is and does. On the other hand, Appellant appears to construe this
limitation as requiring that the mount have a locking portion that expands
into a preformed interior recess of a food substance to thereby create the
locking arrangement. As Appellant argues, none of the applied prior art
teaches a mount including any portion that is capable of expanding into a
preformed recess of a food substance.
Although Appellant failed to direct our attention to any support for
their position, we note Specification paragraph 30, the only description in
the Specification with regard to the locking portion of the mount, indicates
that this locking portion is not shown in the figures (Spec. ,r 30). However,
the locking portion is described as being configured to prevent the food
substance from dismounting from the mount. This paragraph further
discloses that the locking portion "may provide a means for locking
configured to expand in an interior recess of the food substance 102 to
prevent dismounting of the food substance 102." In addition, this paragraph
discloses "[ t ]he locking portion may expand in an interior recess of the food
substance." Finally, this paragraph discloses that "[ o ]nee expanded, the
7
Appeal 2017-011656
Application 14/985,281
locking portion may prevent the food substance from inadvertently
dismounting from the mount."
Our understanding of Specification paragraph 30 is that the locking
portion may include or be a means that is capable of expanding into a
preformed interior recess of a food substance. However, we note that the
disclosure fails to disclose any structure that is capable of performing this
function.
Turning again to the claim language, we note that claim 1 does not
recite the locking portion in the same manner as the locking portion is
described in the Specification. For example, claim 1 recites that the locking
portion is configured to "expand from the mount," whereas the Specification
discloses that the locking portion may "expand in an interior recess of the
food substance." As the Examiner finds, Leonhardt's small ball 22 expands
from the mount, in that the ball's dimensions extend beyond that of the
mount. When the food substance is formed over Leonhardt's mount and
ball, the locking portion (small ball 22) fits into an interior recess of the food
substance. Construing the recitation in question as Appellant apparently
argues would require that we import limitations from the Specification into
the claim, i.e., that we import the limitation that the locking portion includes
a means for expanding into a preformed interior recess of the food
substance. Claim 1 does not require this limitation.
Appellant does not argue claim 10 separately (Br. 12). Accordingly,
we sustain the Examiner's rejection of claims 1 and 10.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Examiner's Answer, the decision of the Examiner rejecting claims 1
8
Appeal 2017-011656
Application 14/985,281
and 10 under 35 U.S.C. § 103 as unpatentable over Leonhardt in view of
Reinhardt, Andersen, and Mamiye 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)(l ).
AFFIRMED
9