Ex Parte RIOS

Patent Trials and Appeals Board

Jun 6, 2019

14733425 - (D) (P.T.A.B. Jun. 6, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/733,425 06/08/2015
23373 7590 06/10/2019
SUGHRUE MION, PLLC
2000 PENNSYLVANIA A VENUE, N.W.
SUITE 900
WASHINGTON, DC 20006
FIRST NAMED INVENTOR
Ramon TAMARIT RIOS
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.
Q220359 2700
EXAMINER
PATEL, BRIJESH V
ART UNIT PAPER NUMBER
3736
NOTIFICATION DATE DELIVERY MODE
06/10/2019 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAMON TAMARIT RIOS
Appeal2017-010764
Application 14/733,425
Technology Center 3700
Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL 1
The Appellant appeals from the Examiner's rejection of claims 1-9
and 13-23 under 35 U.S.C. §§ 103 and 112. 2 We do not sustain the
Examiner's§ 103 rejection, but we do sustain the Examiner's§ 112
rejection. Thus, we AFFIRM.
1 The Appellant appeals under 35 U.S.C. § 134; we have jurisdiction over
this appeal under 35 U.S.C. § 6(b). A hearing was held on June 4, 2019.
2 Claims 1-23 are pending in the application, although claims 10-12 are
withdrawn from consideration. (See Final Action 1.)
Appeal2017-010764
Application 14/733,425
STATEMENT OF THE CASE
The Appellant's invention "relates to a cap for consuming a liquid
from a container comprising at least one hole for the exit of liquid from the
container and at least one hole for the entrance of air into the container."
(Spec., Abstract.) The air inlet incorporates "a check valve allowing the
entrance of air but not the exit of liquid therethrough," and it is "built into
the body of the cap." (Id.)
Sole Independent Claim on Appeal
1. A cap, made from a single material, having a top
surface, a cover adapted to fit the top surface, and a perimetric
side wall configured to be fitted on an opening of a liquid
container, with at least one liquid outlet for the exit of liquid
from the liquid container and at least one air inlet, flush with
the top surface of the cap, for the entrance of air into the
container, comprising
- a check valve configured to allow the entrance of air
into the liquid container, and prevent the exit of the liquid from
the liquid container; said check valve built into the cap and
protruding inwardly from an inside of the top surface of the
cap;
- said check valve further comprising a tubular body with
two ends, such that a first end is located in the air inlet, and the
second end opposite the first comprises contacting walls
configured to close the tubular body when at rest; said
contacting walls further configured to separate and open the
tubular body when said check valve in use or when vacuum is
created inside the container;
- the perimetric side wall containing threads configured
to screw the cap to the opening of the liquid container; wherein
the cover, the check valve, the perimetric side wall, and the
threads are an integral one-piece construction.
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Appeal2017-010764
Application 14/733,425
Rejections
I. The Examiner rejects claims 1-9 and 13-23 under 35 U.S.C.
§ 103, as being unpatentable over Marie 3 in view of Caldicott. 4 (See Final
Action 4.)
II. The Examiner rejects claims 1-9 and 13-23 under 35 U.S.C.
§ 112, as being indefinite. (See Final Action 3.)
ANALYSIS
Independent claim 1 sets forth "[a] cap, made from a single material,"
having "a perimetric side wall" that is "configured to be fitted on an opening
of a liquid container," "at least one air inlet" that is "flush with the top
surface of the cap," and a "check valve" that is "built into the cap." (Appeal
Br., Claims App.) Claim 1 also requires the perimetric side wall and the
check valve to be part of "an integral one-piece construction." (Id.) Claim 1
further requires the check valve to comprise a "tubular body with two ends,"
with the first end "located in the air inlet," and "contacting walls configured
to close the tubular body when at rest." (Id.)
Rejection I
The Examiner determines that Marie and Caldicott, in combination,
teach a cap having all of the features required by independent claim 1. (See
Final Action 4--5.) The Appellant argues that neither Marie nor Caldicott
"teach each and every limitation of the claimed invention." (Appeal Br. 16.)
3 FR 2904610 Al, published February 8, 2008.
4 US 2002/0158075 Al, published October 31, 2002. Our quotations from
this reference will omit the bolding of drawing-associated reference
numerals.
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Application 14/733,425
More specifically, the Appellant argues that, even if Marie and Caldicott
"were considered together by one skilled in the art," this combination would
not result in a cap having "a check valve in the form of a tubular body."
(Reply Br. 6.) We are persuaded by the Appellant's position.
The Examiner relies upon Marie to disclose a cap having a perimetric
side wall configured to be fitted on an opening of a liquid container, an air
inlet, and a check valve that is built into the cap. (See Final Action 4.) The
Examiner acknowledges that Marie teaches that the cap's perimetric wall
should be made of one material, while the check valve should be made of
another material. (See id. at 5.) Thus, according to the Examiner, Marie
does not show or suggest a cap in which the perimetric side wall and the
check valve are part of "an integral one piece construction," as required by
independent claim 1.
The Examiner relies upon Caldicott to teach a similarly-featured cap
"made as an integral one-piece construction from a single material." (Final
Action 5.) The Examiner determines that it would have been obvious, in
view of the teachings of Caldicott, to make Marie's cap "as an integral one-
piece construction from a single material" in order to "simplify the overall
construction process of the cap." (Id.)
Caldicott does indeed teach "a spill-proof closure [8] for a liquid
container comprising a single component." ( Caldicott ,r 21.) And this
single-component closure 8 comprises "a planar portion 16 that has an air
entry valve 14" which allows "air to return through this valve after liquid has
exited." (Id. ,r,r 23, 24; see also id. Figs. 1, 2.) But, as pointed out by the
Appellant, "the air entry valve of Caldicott is made by cutting slits in a thin
horizontally extending portion of the wall." (Reply Br. 11, see also
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Appeal2017-010764
Application 14/733,425
Caldicott ,r 27, Figs. 4A, 4C.) In other words, "there is no tubular structure."
(Reply Br. 11.)
We agree with the Appellant that "the slit in the horizontal thin
portion of the cap wall to produce the air inlet valve of Caldicott is tied to
[its] one-piece construction." (Reply Br. 11.) We also agree with the
Appellant that, if a person of ordinary skill in the art were to modify Marie's
cap to have "a one piece construction" based on the teachings of Caldicott,
this person "would adopt the valve of Caldicott." (Id., n. 1.) Thus, in
Marie's modified cap, the air inlet valve would not have the tubular body
required by independent claim 1. Put another way, the Examiner's proposed
combination of the prior art would not result in a cap having "a check valve
in the form of a tubular body." (Id. at 6.)
Insofar as the Examiner is saying that Marie's air inlet valve
comprises a "tubular body" (Final Action 4), the drawings in this reference
seem to indicate otherwise. (See, e.g., Marie, Figs. 1-3.) In any event, as
indicated above, the combination of prior-art teachings would result in
Marie's (purportedly tubular) valve being replaced by Caldicott's non-
tubular valve.
Insofar as the Examiner is saying that Caldicott's air inlet valve 14 has
a "tubular body" (Final Action 5), the drawings in this reference also seem
to indicate otherwise. (See Caldicott, Figs. 3A, 3B.) As pointed out by the
Appellant, "Caldicott does not show a tubular air entry valve," and instead
shows "a small profiled air entry valve." (Appeal Br. 14.)
Insofar as the Examiner is saying that a check valve having "a tubular
body" is a "well-known structure" (Final Action 8), this may or may not be
true. Regardless, the record contains no explanation as to how or why a
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Application 14/733,425
person of ordinary skill in the art would incorporate this allegedly "well-
known structure" into Marie's modified cap (i.e., as modified by the
teachings of Caldicott to have a one-piece construction). (See id.)
Thus, we do not sustain the Examiner's rejection of claims 1-9
and 13-23 under 35 U.S.C. § 103, as being unpatentable over Marie in
view of Caldicott.
Rejection II
The Examiner determines that independent claim 1, and the claims
depending therefrom, are indefinite as they include both the terms "liquid
container" and "container" (Final Action 3); and this makes it "unclear as to
which container is being referred to" (Answer 3). The Appellant argues that
"[t]here can be no confusion as to which container is being referenced" in
the claim language. (Appeal Br. 10.) We are persuaded by the Appellant's
position.
As pointed out by the Appellant, "the claims do not recite any other
container." (Appeal Br. 10.) Moreover, in the Specification, there is only one
container discussed, and the terms "container" and "liquid container" are used
interchangeably. (See, e.g., Spec. 1, 11. 23-25.) As such, we agree with the
Appellant that, when the claims are read in light of the Specification, one of
ordinary skill in the art would understand that the term "liquid container" and
"container" refer to the same container.
However, the Examiner also determines that independent claim 1 is
indefinite due to the phrases "at least one air inlet" and "the air inlet."
(Final Action 3.) As noted by the Examiner (see Answer 3), the Appellant
did not address this issue in the Appeal Brief. (See Appeal Br. 10.) As
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Application 14/733,425
such, we summarily sustain the Examiner's rejection of independent
claim 1, and the claims depending therefrom, under 35 U.S.C. § 112. 5
Thus, we sustain the Examiner's rejection of claims 1-9 and 13-23
under 35 U.S.C. § 112, as being indefinite.
DECISION
We REVERSE the Examiner's rejection of claims 1-9 and 13-23
under 35 U.S.C. § 103.
We AFFIRM the Examiner's rejection of claims 1-9 and 13-23 under
35 U.S.C. § 112.
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)(iv).
AFFIRMED
5 In the Reply Brief, the Appellant asserts that this issue "does not render the
claim indefinite merely because its antecedence recites 'at least one air
inlet'" and "one skilled in the art would readily understand that they are one
and the same structure in the claim." (Reply Br. 5.) Inasmuch as this
constitutes an argument for patentability, this argument was not raised in the
Appeal Brief, and, therefore, we do not consider it for purposes of the
present appeal. (See 37 C.F.R. §4I.41(b)(2).)
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