Ex Parte Rees

Patent Trial and Appeal Board

Jul 14, 2017

13138666 (P.T.A.B. Jul. 14, 2017)

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.
JM-20 2635
EXAMINER
CASTRIOTTA, JENNIFER
ART UNIT PAPER NUMBER
3781
MAIL DATE DELIVERY MODE
13/138,666 12/12/2011
2387 7590 O'
Olson & Cepuritis, LTD.
20 NORTH WACKER DRIVE
36TH FLOOR
CHICAGO, IL 60606
Arnold Rees
07/14/2017 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 ARNOLD REES
Appeal 2015-005835
Application 13/138,666
Technology Center 3700
Before MICHAEL L. HOELTER, MICHELLE R. OSINSKI, and
GORDON D. KINDER, Administrative Patent Judges.
KINDER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134 from a rejection of claims 1
and 47—61. We have jurisdiction under 35 U.S.C. § 6(b). Oral argument
was held July 6, 2017.
We affirm.
1 We are informed that the real party in interest is Jackel International, Ltd.
Appeal Br. 1.
Appeal 2015-005835
Application 13/138,666
CLAIMED SUBJECT MATTER
The claims are directed to a teat for a baby product. Corrected Claims
App. 1. Claims 1 and 54 are independent. Claim 1, reproduced below,
illustrates the claimed subject matter:
1. A teat for a baby product comprising a base portion, a nipple
portion with an end distal to the base portion and an areola
portion therebetween from which the nipple portion extends,
wherein the teat comprises a flexible wall which is collapsible
such that a first portion of the wall and a generally opposing
second portion of the wall is adapted to move towards one
another, the teat comprising:
a first elongate protrusion disposed on an inner face of the first
portion of the wall, the first elongate protrusion extending in an
elongate direction towards the end of the nipple portion;
a second elongate protrusion disposed on an inner face of the
second portion of the wall, the second elongate protrusion
extending in the elongate direction towards the end of the nipple
portion;
wherein, when a force is applied to at least one of the first and
second portions of the wall such that the portions of the wall are
brought proximal to one another, the first protrusion is arranged
to contact the inner face of the second portion of the wall away
from the second protrusion and is further arranged to lie adjacent
to the second protrusion in a direction lateral to the elongate
direction, restricting lateral movement of the first and second
walls relative to one another.
The prior art relied upon by the Examiner in rejecting the claims on
REFERENCES
appeal is:
Rosegrant
Rohrig
US 667,738 Feb. 12, 1901
US 2004/0220618 A1 Nov. 4, 2004
2
Appeal 2015-005835
Application 13/138,666
THE REJECTION
Claims 1 and 47—61 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rosegrant in view of Rohrig.
OPINION
Claim 1
The Examiner finds that Rosegrant discloses a teat having all the
features of claim 1 except that the protrusions of Rosegrant are not elongate
protrusions. Final Act. 2-4. The Examiner further finds that Rohrig teaches
“a nipple with elongate protrusions . . . extending in the elongate direction
towards the end of a nipple portion.” Id. at 4. Based on these findings, the
Examiner concludes that it would have been obvious to modify the
projections of Rosegrant with the teachings of Rohrig because the
modification would involve a mere change in size of a component (the
projections of Rosegrant) and further because doing so would add rigidity to
the nipple so the teat cannot collapse during drinking. Id. at 5. Responding
to Appellant’s arguments, the Examiner made clear that the proposed
modification was to elongate the protrusions of Rosegrant, not to replace the
projections of Rosegrant with those of Rohrig. Id. at 13 (“Were the
projections to be elongated . . .”). “[T]he protrusions of Rosegrant are not
directly replaced with the ribs of Rohrig, but rather Rohrig is used to teach
that elongated protrusions, which happen to keep a nipple from fully
collapsing, are known in the art.” Ans. 14.
Appellant makes numerous arguments about individual features which
Appellant asserts are absent from the references individually. Appeal Br. 7—
12. Nonobviousness cannot be established by attacking the references
3
Appeal 2015-005835
Application 13/138,666
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Accordingly, Appellant’s arguments directed to the references individually
are not persuasive.
Appellant next argues that there would have been no motivation to
combine Rosegrant and Rohrig because (1) Rosegrant teaches away from the
ribs taught by Rohrig; (2) combining Rohrig ribs with Rosegrant would
make Rosegrant unsatisfactory for its intended purposes; (3) combining
Rosegrant with Rohrig is based on hindsight; and (4) the proposed
combination does not disclose every element of claim 1. Appeal Br. 13—14.
1. In connection with the teach-away argument (number 1, above),
Appellant argues that Rosegrant very specifically describes cylindrical
projections. Appellant then argues “if the cylindrical projections of
Rosegrant were replaced with the stiffening ribs taught by Rohrig, the
stiffening ribs would contact one another during compression, and block the
fluid passageways.” Id. at 15. This argument does not persuade us because
the Examiner was not proposing to substitute the stiffening ribs of Rohrig
for the projections of Rosegrant, but rather to elongate the cylindrical
projections of Rosegrant. Ans. 14. Moreover, the assertion that the
stiffening ribs of Rohrig would contact one another during compression and
block the fluid passageways is unsupported by any evidence, and is contrary
to the teachings of Rosegrant that there be a space between the projections
even when the nipple is compressed. Rosegrant, p. 1,11. 80—85, Fig. V.
During oral argument, Appellant argued that the limitations in claim 1
that “the first protrusion is arranged to contact the inner face of the second
portion of the wall” (emphasis added) and a similar limitation with respect to
4
Appeal 2015-005835
Application 13/138,666
the second protrusion require that every force applied to the teat will have
this result.2 We do not read the claim so narrowly. Claim 1 is limited to
arrangements where the projections contact the opposing wall when a force
is applied, not any particular force. Figure V of Rosegrant shows a teat after
a force has been applied to it, and the projections contact opposing walls,
thus meeting the claim limitations. It does not matter that some other force
applied to some other part of the teat in some other direction might cause the
projections to contact each other, for, with the application of some force
(e.g., the force implicitly illustrated in Figure V), the projections contact the
opposing walls.
2. In connection with argument number 2, above, Appellant again
argues against a rejection the Examiner did not make, arguing that “[i]f
cylindrical projections taught by Rosegrant were replaced by the stiffening
ribs taught by Rohrig,. . . the mouthpiece and throat regions of the teat
would be excessively stiff and too hard to collapse.” Appeal Br. 15. This
argument is not persuasive because it does not address the rejection which
relied merely on elongating the projections of Rosegrant, not substituting the
ribs of Rohrig for the projections of Rosegrant. In addition there is no
evidence that elongating the ribs in the neck of Rosegrant would inhibit
bending the nipple to the arrangement shown in Rosegrant Figure V. Nor
would elongating the projections a (Rosegrant Figs. IV and V) close the
throat of Rosegrant because the same passages b and c would remain open.
3. In connection with Appellant’s hindsight argument (number 3,
above), Appellant argues that “[cjombining Rosegrant’s cylindrical
2 It is not clear that Appellant raised this argument in Appellant’s Appeal
Brief, but we address it nonetheless.
5
Appeal 2015-005835
Application 13/138,666
protrusions with Rohrig’s stiffening ribs [results in a] change in the function
of Rohrig’s stiffening ribs” and so constitutes improper hindsight. Appeal
Br. 16—17. Appellant draws a contrast between Rohrig where Appellant
asserts the stiffening ribs prevent undesired pressing together or collapsing
of the teat wall and the projections of Rosegrant which provide a fluid
passage when the nipple collapses. Id. at 17. This argument is not
persuasive because, regardless of the language used, both Rosegrant and
Rohrig operate in a similar manner. In both Rosegrant and Rohrig, as
Appellant acknowledges (Appeal Br. 17), the object is to preserve fluid
passages when an infant sucks on the teat. In both references this is
accomplished by preserving passages between the projections/ribs which
prevent opposite walls of the teat from sealing against each other. See
Rosegrant p. 1,11. 80-86 (“no compression to which a nipple is subject can
completely close the space 6.”), and Rohrig || 17, 44 (prevent extreme
depression). Further, the Examiner found it obvious to elongate the
projections of Rosegrant in the manner taught by Rohrig, and Appellant has
not shown that there is a difference in operation that would steer one skilled
in the art away from elongating the projections of Rosegrant in light of the
elongated ribs of Rohrig.
4. In the final argument (number 4, above), Appellant argues that
Rosegrant does not have protrusions that lie adjacent to each other during
compression. Appeal Br. 18. This argument fails to consider the three
projections a shown in Rosegrant Figures IV and V. As shown in Figure V,
the three projections a lie adjacent to each other when the top surface of
each is in contact with the opposing wall of the teat.
6
Appeal 2015-005835
Application 13/138,666
Appellant incorporated by reference the arguments made in
connection with claim 1 into the arguments made in connection with claims
47—53 and 55—61 which depend directly or indirectly from claim 1. Appeal
Br. 19-31. To avoid needless repetition, we will address only the new
arguments applicable to these claims
Claim 47
Claim 47 depends from claim 1 adding the limitation that when the
“force is applied to at least one of the first and second portions of the wall
such that the portions of the wall are brought proximal to one another, the
first protrusion is arranged such that it is spaced apart from the second
protrusion.” Corrected Claims App. 1. Appellant argues that “if the
irregularly distributed cylindrical projections of Rosegrant are replaced with
the stiffening ribs of Rohrig, the stiffening ribs in the mouthpiece and throat
would touch each other when portions of the wall are brought proximal to
each other [and] they would not be spaced apart as required by claim 47.”
Appeal Br. 19. This argument is not addressed to the elongation of the
projections of Rosegrant, instead assuming substitution of Rohrig’s ribs for
the projections of Rosegrant. Because this argument is not addressed to the
rejection the Examiner made, it is not persuasive. As discussed above,
elongation of the projections of Rosegrant would preserve spaces between
them when a force is applied as illustrated in Figure V.
Claim 48
Claim 48 depends from claim 1 adding that “when the force is applied
to at least one of the first and second portions of the walls such that the
portions of the wall are brought proximal to one another, the second
protrusion is arranged to contact the inner face of the first portion of the
7
Appeal 2015-005835
Application 13/138,666
wall.” Corrected Claims App. 2. The Examiner finds that Rosegrant, as
modified in light of the elongated projections of Rohrig, teaches all the
limitations of this claim, as can be seen in Rosegrant Figure V, and citing
Rosegrant p. 1,11. 54—61 and 81—86. Ans. 5.
Appellant argues that in Rosegrant the projections will touch and then
slide sideways when a force is applied. Appeal Br. 20-21. We have already
found that this is not necessarily the case, while noting the disclosure of
Rosegrant that “[t]he effect of these three projections [a] is illustrated in Fig.
V. A compression of the throat will cause the spaces to be left, as at b b and
c.” Rosegrant p. 1,11. 80—83. Moreover, claim 1, from which claim 48
depends, requires only that lateral movement of the first and second walls
relative to one another be “restrict[ed],” not totally prevented, and Rosegrant
shows such an arrangement in Figure V.
Claim 49
Claim 49 depends from claim 1 adding, in pertinent part, that when
the claimed teat is compressed, “the protrusions are arranged such that they
are spaced apart from one another.” Corrected Claims App. 2. The
Examiner relies on the same figures and disclosure of Rosegrant as in the
rejection of claim 48, adding reference to Figure III. Ans. 5—6. The
Examiner finds that Rosegrant (modified by elongating its projections)
meets all the limitations of claim 49. Appellant does not address this
conclusion, suggesting instead that “the cylindrical projections of Rosegrant
are replaced with the stiffening ribs of Rohrig.” Appeal Br. 22. The
Appellant also argues that elongating the projections of Rosegrant would
cause them to contact each other rather than the opposite wall. Id.
8
Appeal 2015-005835
Application 13/138,666
However, Rosegrant Figure V shows that when compressed by a force, the
projections of Rosegrant do not to touch each other.
Claim 50
Claim 50 depends from claim 1 adding that one protrusion has a
dimension that is different from a corresponding dimension of the second
protrusion. Corrected Claims App. 2. The Examiner finds this modification
obvious as a matter of design choice and notes that the Appellant does not
disclose any particular advantage arising from the different dimensions, has
not stated a particular purpose for the different dimensions, and has not
stated that the different dimensions solve a stated problem. Ans. 6. The
Appellant responds that neither of the references suggests different
dimensions, and therefore do not render claim 50 obvious. Appeal Br. 23.
Appellant’s arguments do not address the findings made by the Examiner,
and accordingly do not persuade us that the Examiner erred.
Claim 51
Claim 51 depends from claim 1 adding “a first, comparatively thick
wall segment and a second, comparatively thin wall segment, the wall
segments generally opposing one another.” Corrected Claims App. 2. The
Examiner finds that Rosegrant teaches these wall thicknesses by pointing to
the projections a as being the thick wall segments and the balance of the teat
wall being the thin wall segment. Ans. 6—7. Appellant argues that Figure IV
of Rosegrant shows uniform wall thickness, not different thicknesses.
Appeal Br. 24. There is no elaboration on this contention that explains
sufficiently why the Examiner’s finding is in error. In particular, Appellant
does not address why any particular portion of projections a must not be
9
Appeal 2015-005835
Application 13/138,666
considered the wall and/or must not define the inner face of the wall so as to
support the bald assertion that Rosegrant’s walls are of uniform thickness.
Appellant next turns to the combination of Rohrig and Rosegrant as
follows:
If the throat projections (a) in Rosegrant were replaced
with the stiffening ribs of Rohrig to create thick wall segments,
as the Examiner suggests, during compression the stiffening ribs
would contact the opposing wall in a small surface area contact
point. In other words, the throat projections act as cylindrical
point projections regardless of the throat projections size or
shape.
Id. As discussed above, the Examiner is not proposing replacing the
projections of Rosegrant with the stiffening ribs of Rohrig, and accordingly
this argument does not persuade us that the Examiner erred in rejecting
claim 51.3
Claim 52
Claim 52 depends from claim 1 adding that the protrusions are
“angularly spaced or are disposed along a helical path.” Corrected Claims
App. 2. The Examiner finds that “Rosegrant further teaches the protrusions
3 During oral argument Appellant argued that the Examiner’s findings
double counted the structure which constitutes the projections in Rosegrant
because the projections are claimed as a separate element and cannot be both
projections and a thick wall segment as required by claim 51. This argument
is not found in Appellant’s Appeal Brief. See Appeal Br. 23—24.
Appellant’s Reply argues only that the “Examiner’s Answer twists the
Rosegrant reference to argue that a projection ‘a’ is the thick wall segment
and the teat wall is the thin wall segment. Such an argument is nonsensical
as Rosegrant only teaches that the nipple wall has one thickness.” Reply Br.
7—8. Just as we do not consider arguments first raised in a reply brief, we
will not consider arguments first raised at oral argument. See Carbino v.
West, 168 F.3d 32, 34—35 (Fed. Cir. 1999).
10
Appeal 2015-005835
Application 13/138,666
are angularly spaced and are disposed along a helical path” citing Figure III.
Ans. 7. The Appellant denies the Examiner’s findings concerning the
teachings of Rosegrant. Appeal Br. 25. We need not address the alternative
helical path finding, as Rosegrant clearly teaches angular spacing of the
projections, which is all that is required to meet the claim limitation. Figure
IV of Rosegrant shows three projections around a circular cross-section
positioned 120° apart. Accordingly, the Appellant’s argument does not
apprise us of error.
Claim 53
Claim 53 depends from claim 1 and further requires “generally
vertically oriented first, second and third protrusions equiangularly spaced
around the inner wall of the teat.” Corrected Claims App. 2. The Examiner
finds that Rosegrant discloses this arrangement in Figures III and IV. Ans.
7. Appellant argues that Rosegrant’s teaching of irregularly distributed
projections teaches away from the claimed equiangularly spaced projections.
Appeal Br. 25—26. The irregularly distributed projections cited by Appellant
are in the tip end of Rosegrant’s teat. The Examiner correctly referred to the
projections as found in the neck of Rosegrant’s teat and illustrated in Figures
III and IV. Appellant has not addressed the Examiner’s findings, and we
agree with the Examiner that the three projections a shown most clearly in
Figure IV are equiangularly disposed around the neck of the teat.
Accordingly, we are not persuaded that the Examiner erred in rejecting
claim 53.
Claim 54
Claim 54 is an independent claim generally similar to claim 1, and the
Examiner finds that claim 54 is obvious over the same modification of
11
Appeal 2015-005835
Application 13/138,666
Rosegrant in light of the teachings of Rohrig. Ans. 7—10. Just as in
connection with claim 1, Appellant argues that the limitations of claim 54
are not shown in either Rosegrant or Rohrig. Specifically, for example,
Appellant argues that neither Rosegrant nor Rohrig teaches a “first ribbed
elongate protrusion . . . arranged to contact an inner portion of the flexible
wall at a location spaced from and adjacent the second ribbed elongate
protrusion.” Appeal Br. 26. Our reasoning in connection with this argument
is set forth in connection with claim 1 above where we noted that the
argument does not address the combination proposed by the Examiner.
Further we find that, as proposed by the Examiner, elongating the
projections of Rosegrant in light of the teachings of Rohrig meets the
limitations of claim 54 for reasons similar to those expressed in connection
with claim 1.
Appellant also argues four grounds for concluding that one of
ordinary skill in the art would not have been motivated to combine
Rosegrant and Rohrig. Appeal Br. 27. The four grounds urged are the same
as those Appellant argued in connection with claim 1, and for the same
reasons we find them not persuasive when applied to claim 54.
Claim 55
Claim 55 depends from claim 1 and adds the limitation that “when the
teat is in a collapsed state where the portions of the walls are proximal to one
another, a shape of an upper surface of the first protrusion is such that it is
complementary to a shape of the inner face of the second portion of the
wall.” Corrected Claims App. 3. The Examiner rejects claim 55 over
Rosegrant as modified to have elongated projections in light of Rohrig. Ans.
10-11. Appellant argues that “[t]he ‘round rod’ or cone shaped projections
12
Appeal 2015-005835
Application 13/138,666
taught by Rosegrant are not complementary to the internal contour of the
nipple wall or throat portion of the teat,” citing Rosegrant page [1] 11. 35—38.
Appeal Br. 27. We agree with the Examiner that the projections of
Rosegrant are “flat on their tops” (Rosegrant p. 1,1. 41), and that Figure V
shows the flat tops of the projections against an inside wall surface which is
also flat. Accordingly we are not persuaded of error.
Claim 56
Appellant makes no additional argument in connection with claim 56.
Appeal Br. 28. Accordingly, we are not persuaded of error in the rejection
of claim 56.
Claim 57
Claim 57 depends from claim 56, which depends from claim 1.
Corrected Claims App. 4. Claim 57 adds the limitation that “when the force
is applied to at least one of the first and second portions of the wall, the
protrusions are arranged so as to distribute the force substantially evenly
amongst the protrusions or along the length of each elongate protrusion.” Id.
The Examiner finds that Rohrig teaches that when a force is applied to at
least one of the first and second portions of the wall, the protrusions are
arranged so as to distribute the force evenly amongst the protrusions or
along the length of each elongate protrusion, citing Rohrig paragraph 48.
Final Act. 12. Rohrig paragraph 48 refers to “the area in question” which is
the region where stiffening ribs are located. Rohrig 148. This is
advantageous because the softness of the teat increases in that region, and
the stiffening ribs prevent the teat from becoming extremely depressed when
the teat is used. Id. at 144. Thus in use, the teat of Rohrig compresses until
the stiffening ribs contact each other or the opposing wall of the teat. This
13
Appeal 2015-005835
Application 13/138,666
distributes the force amongst protrusions substantially evenly or along the
length of each. Accordingly, we are not persuaded of error in the rejection
of claim 57.
Claim 58
Claim 58 depends from claim 1 and adds the limitation that “when the
teat is in a collapsed state where the portions of the wall are proximal to one
another, the protrusions are arranged so that the inner faces of the first and
second portions of the wall are kept spaced apart and may define at least one
flow channel, along which fluid can pass.” Corrected Claims App. 4. The
Examiner finds that Rosegrant as modified to have elongated projections in
light of Rohrig shows all of the features of claim 58, citing particularly
Figure V and page 1, lines 81—86. Final Act. 12. Appellant argues that this
combination fails because “[i]f the cylindrical projections taught by
Rosegrant are replaced by the stiffening ribs of Rohrig, when in a collapsed
state, the stiffening ribs would abut each other and there would not be a flow
channel.” Appeal Br. 29. We need not consider the accuracy of this
assertion because it is premised on a rejection the Examiner did not make
and accordingly is not persuasive. As we noted above, the Examiner’s
rejection is predicated on elongating the projections of Rosegrant, not
substituting those of Rohrig. Appellant also argues that the overlapping
stiffening ribs would press together and create localized points of pressure
tending to damage the teat. This argument is also premised on the
misconstruction of the Examiner’s rejection, and so is not persuasive.
Claim 59
Claim 59 depends from claim 1, adding that at least one of the nipple
portion and areola portion has a generally circular cross-section or a
14
Appeal 2015-005835
Application 13/138,666
generally oval cross section, the oval cross-section having a major axis.
Corrected Claims App. 4. The Examiner finds that Rosegrant teaches a
nipple portion and an areola portion that have generally cylindrical cross-
sections as shown in Figure IV. Ans. 12. The Appellant argues that the
rejection of claim 59 should be reversed because Rohrig teaches a non­
circular cross-section. Appeal Br. 30. This argument does not address the
Examiner’s findings based on Rosegrant and so is not persuasive.
Claim 60
Claim 60 depends from claim 1 adding that “when the teat is in the
collapsed state where the portions of the wall are proximal to one another, at
least one of the cross-section of the nipple portion and the areola portion
forms a generally elongate shape which defines a major axis.” Corrected
Claims App. 4. The Examiner finds that this arrangement is taught by
Rosegrant Figure V. Ans. 12. The Appellant argues that Rohrig does not
teach such an arrangement of the collapsed teat because in Rohrig the ribs
prevent the teat from collapsing. Appeal Br. 30. Appellant’s argument is
not persuasive because it does not address the proposed combination which
consists principally of elongating the projections of Rosegrant and does not
involve substituting the stiffening ribs of Rohrig. Accordingly, we are not
persuaded of error in the rejection of claim 60.
Claim 61
Claim 61 depends from claim 60. Appellant makes no additional
arguments in connection with the rejection of claim 61 (Appeal Br. 31), and
accordingly we see no error in the rejection of claim 61 for the same reasons
expressed in connection with claims 60 and 1 from which claim 61 depends,
directly or indirectly.
15
Appeal 2015-005835
Application 13/138,666
Conclusion
For the foregoing reasons, and on this record, we do not find error in
the Examiner’s determination that the teachings of Rosegrant and Rohrig
together render claims 1 and 47—61 obvious. Accordingly, we sustain the
rejection of independent claims 1 and 47—61 under 35 U.S.C. § 103(a).
DECISION
The Examiner’s rejection of claims 1 and 47—61 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
16