Ex Parte RakoczyDownload PDFPatent Trial and Appeal BoardFeb 26, 201413374975 (P.T.A.B. Feb. 26, 2014) Copy Citation 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. 13/374,975 01/26/2012 Betsie Marshall Davis Brooks Rakoczy RAKO-001RE 6681 16205 7590 02/27/2014 Sandra L. Layer 1500 Willow Brook Drive Palm Harbor, FL 34683 EXAMINER BERONA, KIMBERLY SUE ART UNIT PAPER NUMBER 3644 MAIL DATE DELIVERY MODE 02/27/2014 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 PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte BETSIE MARSHALL DAVIS BROOKS RAKOCZY ____________________ Appeal 2014-002725 Application 13/374,975 Patent 7,971,552 B1 Technology Center 3600 ____________________ Before: JENNIFER D. BAHR, STEFAN STAICOVICI, and JAMES P. CALVE, Administrative Patent Judges. CALVE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The application at issue in this appeal is an application for reissue of US Patent 7,971,552 B1 (“the ‘552 patent”), which issued on July 5, 2011. App. Br. 1. Appellant appeals under 35 U.S.C. § 134 from the rejection of claims 1-16. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2014-002725 Application 13/374,975 Patent 7,971,552 B1 2 CLAIMED SUBJECT MATTER Claims 1 and 9 are independent. Claim 1 is reproduced below. 1. A system for providing liquid/food for pets/animals through an adjustable, free-standing, portable support, the system comprising, in combination: a container adapted to receive food/water for pets/animals of various sizes; a support base including a horizontal lower plate and a vertical upper plate, the vertical plate including a pair of laterally spaced top bolt holes and at least one pair of vertically aligned, laterally spaced additional bolt holes, a hand aperture extending through the vertical upper plate above the top holes for lifting purposes; a container retainer having a vertical component with a pair of bolts extending rearwardly from the vertical component, the bolts being spaced the same distance as between the holes, the container retainer having a horizontal component extending forwardly from a lower extent of the vertical component, the horizontal components having a fixed opening with an upper surface removably contacting and supporting at least a portion of the container, the container being removably positionable on the horizontal component of the container retainer independent of container content; and wing nuts removably coupled to the bolts after the bolts are positioned through a preselected pair of bolt holes, the wing nuts adapted to be temporally removed from the bolts and the bolts positioned through a different pair of bolt holes for adjusting the height of the container retainer and the container as a function of the size of the pet/animal to consume water/food from the container. REJECTION Claims 1-16 are rejected under 35 U.S.C. § 251 as an impermissible recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. Appeal 2014-002725 Application 13/374,975 Patent 7,971,552 B1 3 ANALYSIS The Examiner found that the present claims omit several limitations that were added by amendment immediately prior to allowance. Ans. 3. Notably, the Examiner found that the present claims omit the limitation of a bowl positioned on the horizontal lower plate beneath the dispensing mechanism of the water bottle adapted to collect unintended dripping, the preamble transitional phrase “consisting of,” and features of the bottle retainer limitation that appeared in claim 1 of the ‘552 patent.1 Ans. 3. Appellant argues that the present claim includes features that were not included in any prior prosecution to capture the adjustability and flexibility of the system to meet the changing needs of pets. App. Br. 8. Appellant also argues that the present claim excludes features that were included in the prior prosecution such as “water bottle” that is replaced by a broader term “container” and the limitation “bottle container retainer” is replaced with a “container retainer.” App. Br. 10-11. Appellant asserts that the intent of these amendments is to provide a system that accommodates a plurality of containers that are positionable at various heights to meet various nutritional and hydration requirements for animals as the animal progresses from youth to maturity, rather than to claim a specific container shape and size to meet only a specific need of the animal. App. Br. 11. Appellant’s arguments do not address the Examiner’s finding that the present claims impermissibly recapture claimed subject matter surrendered during prosecution to obtain the ‘552 patent because the claims do not recite “a bowl positioned on the horizontal lower plate beneath the dispensing 1 The ‘552 Patent issued with a single claim, claim 1. Appeal 2014-002725 Application 13/374,975 Patent 7,971,552 B1 4 mechanism of the water bottle adapted to collect unintended dripping.” Claim 1 of the ‘552 patent included this limitation. Appellant added this limitation to claim 1 during prosecution to overcome the prior art. Amdt., Feb. 22, 2011, at 2; see Interview Agenda for 2/17/11, Feb. 16, 2011, at 1, 3. Appellant argued that major differences exist between the invention as claimed in that amendment and the prior art to include “the addition of a bowl beneath the dispensing mechanism ‘to collect unintended drippings’” in a new paragraph 4. Amdt., Feb. 22, 2011, at 4. The Examiner issued a Notice of Allowance in response to this amendment. Notice of Allowance, May 6, 2011. Reissue claim 1 omits this limitation entirely. Appellant has not identified any narrowing amendment of reissue claim 1 that is material to this omitted limitation. Such broadening of reissue claim 1 constitutes impermissible recapture. See Pannu v. Storz Instruments Inc., 258 F.3d 1366, 1371-72 (Fed. Cir. 2001). We sustain the rejection of claim 1 and its dependent claims 2-8. Reissue claims 9-16 are directed to “[a] method for providing liquid/ food for pets/animals through an adjustable, free-standing, portable support system.” Claim 9 recites the steps of providing a container, providing a support base, and providing a container retainer having the features recited for each of these limitations in reissue claim 1, and adjusting the height of the container retainer. Claim 9 does not include a step of providing a bowl. Thus, claim 9 impermissibly recaptures subject matter that Appellant surrendered to obtain allowance of claim 1 of the ‘552 patent for the reasons discussed supra for claim 1 of the present reissue claims. We sustain the rejection of claims 9-16. Appeal 2014-002725 Application 13/374,975 Patent 7,971,552 B1 5 DECISION We AFFIRM the rejection of claims 1-16. 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 mls Copy with citationCopy as parenthetical citation