Ex Parte Szczygiel- Durante

Patent Trial and Appeal Board

Dec 5, 2013

12157943 (P.T.A.B. Dec. 5, 2013)

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.
12/157,943 06/16/2008 Lisa Szczygiel- Durante 9334
23722 7590 12/05/2013
IRVING KESCHNER
21535 HAWTHORNE BOULEVARD
SUITE 385
TORRANCE, CA 90503
EXAMINER
NGUYEN, TRINH T
ART UNIT PAPER NUMBER
3644
MAIL DATE DELIVERY MODE
12/05/2013 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 LISA SZCZYGIEL-DURANTE1
__________

Appeal 2011-012654
Application 12/157,943
Technology Center 3600
__________

Before ERIC GRIMES, MELANIE L. McCOLLUM, and ULRIKE W.
JENKS, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
hummingbird feeder assembly. The Examiner has rejected the claim as
anticipated. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Claim 1 is pending and on appeal (App. Br. 7-8). Claim 1 reads as
follows:

1 Appellant identifies herself as the real party in interest (App. Br. 3).
Appeal 2011-012654
Application 12/157,943

2
1. A hummingbird feeder assembly having first and second modes of
utilization comprising:
a tubular container closed at the bottom and opened at the top, said
container having liquid food therein and sized to be held in the hand of a
user;
a member positioned within the opening formed in the top of the
container to enclose the food within the container, a hole being formed in
said member;
a flower shaped member having a hollow center, said flower shaped
member being inserted into the opening formed in said enclosing member;
and
means for coupling said feeder to a non-porous surface providing said
first mode of utilization, said feeder being removably engaged from said
coupling means to provide said second mode of utilization.
Claim 1 stands rejected under 35 U.S.C. § 102(b) as anticipated by
Liethen (US 2008/0141944 A1, Jun. 19, 2008) (Ans. 4).
The Examiner finds:
Liethen discloses a hummingbird feeder assembly comprising:
a tubular container (10) closed at the bottom and opened at the
top, said container having liquid food therein and sized to be
held in the hand of a user; a member (11) positioned within the
opening formed in the top of the container to enclose the food
within the container, a hole being formed in said member; a
flower shaped member (12) having a hollow center, said flower
shaped member being inserted into the opening formed in said
enclosing member; and means (20,41,42,43,56,70,80,91) for
coupling said feeder to a non-porous surface providing said first
mode of utilization, said feeder being removably engaged (it is
noted that the feeder can be removably engaged from the
coupling means if the user decides to do so) from said coupling
means to provide said second mode of utilization.
(Id. at 4-5.)
Appeal 2011-012654
Application 12/157,943

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Appellant argues:
[T]he liethen reference does not disclose or suggest that the
feeder 2 can be used other than in the context of having a jar 10
held in a manner so that a bird can eat the jar contents. As
noted in paragraph [0060] of the reference, the bird feeder 2 is
set for utilization by “hanging the bird feeder to allow birds to
eat the jam or jelly in the jar” (emphasis supplied).
(App. Br. 9-10.)
ISSUE
Does the evidence support the Examiner’s finding that Liethen
discloses a feeder being removably engaged from a coupling means to
provide a second mode of utilization?
FINDINGS OF FACT
1. The Specification discloses a feeder 10 that “is used to attract
hummingbirds and train them to feed by hand after becoming familiar with
the feeder when attached to a surface. Thereafter, feeder 10 can be removed
from its holder and held in the hand of a user.” (Spec. 5: 11-13.)
2. Liethen discloses a “bird feeder [that] allows easily attaching an
existing jar of jam or jelly, then hanging the bird feeder to allow birds to eat
the jam or jelly in the jar” (Liethen, ¶ [0060]).
3. Liethen also discloses: “Standard jelly or jam may be
purchased in containers, off the shelf at any grocery store and attached to the
feeder using various rigging and fastening mechanisms. Jars that are 10 to
12 oz. glass containers are recommended.” (Id. at ¶ [0007].)
PRINCIPLES OF LAW
“[T]erms [that] merely set forth the intended use for, or a property
inherent in, an otherwise old composition . . . do not differentiate the
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Application 12/157,943

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claimed composition from those known to the prior art.” In re Pearson, 494
F.2d 1399, 1403 (CCPA 1974). Arguments not made are waived. See
37 C.F.R. § 41.37(c)(1)(vii) (“Any arguments or authorities not included in
the brief or a reply brief . . . will be refused consideration by the Board,
unless good cause is shown.”).
ANALYSIS
Appellant does not dispute that Liethen’s feeder is removably engaged
from the coupling means. In addition, we agree with the Examiner that “to
provide said second mode of utilization” is an intended use limitation that is
met by a device that it capable of performing the intended use (Ans. 5).
Moreover, we conclude that the Examiner has set forth a prima facie case
that Liethen’s feeder is capable of being used in a second mode of
utilization, specifically, being “held in the hand of a user,” as described in
the present Specification (Spec. 5: 11-13), which Appellant has not rebutted.
CONCLUSION
The evidence supports the Examiner’s finding that Liethen discloses a
feeder being removably engaged from a coupling means to provide a second
mode of utilization. We therefore affirm the anticipation rejection.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

cdc