Ex Parte VARGAS

Patent Trial and Appeal Board

Dec 14, 2018

13946974 (P.T.A.B. Dec. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/946,974 07/19/2013
36872 7590 12/18/2018
CENTRAL CALIFORNIA IP GROUP, P.C.
377 W. FALLBROOK A VENUE
#205
FRESNO, CA 93711
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Juan H. VAR GAS
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.
JV-001-Xl 1063
EXAMINER
TECCO, ANDREW M
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
12/18/2018 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):
drewfortney@cencalip.com
records@cencalip.com
terrimahan@cencalip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUAN H. VARGAS
Appeal2018-004204
Application 13/946,97 4
Technology Center 3700
Before EDWARD A. BROWN, WILLIAM A. CAPP and
ARTHUR M. PESLAK, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1-9. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellant's invention relates to fluid containers. Spec. ,r,r 24--25.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
Appeal2018-004204
Application 13/946,974
1. A stackable fluid dispensing and recycling apparatus,
compnsmg:
a) a clean fluid reservoir containing a predetermined amount of
clean fluid;
b) a dispenser attached to or in fluid communication with the
clean fluid reservoir, the dispenser configured to dispense
clean fluid from the clean fluid reservoir;
c) a flexible used fluid reservoir configured to receive and
contain used fluid, the flexible used fluid reservoir having a
capacity about equal to the capacity of the clean fluid
reserv01r;
d) an opening in the flexible used fluid reservoir configured to
allow a user to pour the used fluid into the flexible used fluid
reservoir or otherwise fill the flexible used fluid reservoir
with the used fluid;
e) a cap configured to close or seal the opening in the flexible
used fluid reservoir; and
f) a container configured to contain the clean fluid reservoir and
the flexible used fluid reservoir, the container having a
sidewall aperture through a sidewall thereof, the sidewall
having first and second perforation lines extending from the
sidewall aperture and a first folding line between the first and
second perforation lines, the dispenser extending through the
sidewall aperture to a first position external to the container,
and the container having a top aperture through a top thereof,
the top having third and fourth perforation lines extending
from the top aperture and a second folding line between the
third and fourth perforation lines, the opening in the flexible
used fluid reservoir and the cap being extendable to a second
position through the top aperture, wherein the first and
second perforation lines and first folding line are configured
to receive the dispenser inside the container, and the third
and fourth perforation lines and second folding line are
configured to receive the cap inside the container, and the
container is configured to be sealed or resealed with the clean
fluid reservoir, the used fluid reservoir, the used fluid, the
dispenser, and the cap securely resealed therein.
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Application 13/946,974
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Walker
Densham
Deuber
Geshay
Sylvester
Boonzaier
Spivey
us 3,226,002
us 4,442,936
us 5,375,703
us 6,062,431
US 6,209,781 Bl
US 6,378,733 Bl
US 2011/0259916 Al
Dec. 28, 1965
Apr. 17, 1984
Dec. 27, 1994
May 16, 2000
Apr. 3, 2001
Apr. 30, 2002
Oct. 27, 2011
The following rejections are before us for review:
1. Claims 1, 4, 5, and 9 are rejected under 35 U.S.C. § 103 as being
unpatentable over Deuber, Geshay, Boonzaier, and Spivey.
2. Claims 2 and 3 are rejected under 35 U.S.C. § 103 as being
unpatentable over Deuber, Geshay, Boonzaier, Spivey, and Densham.
3. Claims 6 and 7 are rejected under 35 U.S.C. § 103, as being
unpatentable over Deuber, Geshay, Boonzaier, Spivey, and Sylvester.
4. Claim 8 is rejected under 35 U.S.C. § 103, as being unpatentable
over Deuber, Geshay, Boonzaier, Spivey, and Walker.
OPINION
Unpatentability of Claims 1, 4, 5, and 9
over Deuber, Geshay, Boonzaier, and Spivey
Appellant argues claims 1, 4, 5, and 9 as a group. Appeal Br. 13-32.
We select claim 1 as representative. See 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Deuber discloses the claimed invention
except for: ( 1) the container being stackable; (2) a sidewall aperture; and (3)
a folding line. Final Action 2---6. The Examiner relies on Geshay as
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Application 13/946,974
disclosing a stackable container with a sidewall aperture and further relies on
Boonzaier and Spivey as disclosing liquid containers with fold lines. Id.
The Examiner concludes that it would have been obvious to a person of
ordinary skill in the art at the time of the invention to modify Deuber with a
stackable box container and sidewall spout as taught by Geshay. Id. at 5.
According to the Examiner, a person of ordinary skill in the art would have
done this to provide for gravity flow of the fluid and a top access point to
pour fluid into the container. Id. The Examiner concludes that it would
have been obvious to a person of ordinary skill in the art at the time the
invention was made to modify Dauber/Geshay with fold lines as taught by
Boonzaier and Spivey. According to the Examiner, a person of ordinary
skill in the art would have done this to make it easier to provide access to the
dispenser and cap portions. Id. at 6.
Appellant argues that Deuber is not stackable. Appeal Br. 16. This
argument does not indicate Examiner error as the Examiner relies on Geshay
for this feature. Final Action 4. Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references. In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413,425 (CCPA 1981).
Appellant next argues that Deuber does not disclose a sidewall
aperture, perforation lines, flaps and/or folding lines. Appeal Br. 16. Once
again, this argument is unpersuasive as the Examiner relies on other
references as disclosing these features. Final Action 4---6, Merck, supra;
Keller, supra.
Appellant next argues that Deuber fails to disclose a relationship
between the second bag/compartment and a sidewall aperture. Appeal
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Application 13/946,974
Br. 17. This argument amounts to yet another individual attack on a
reference individually and is equally unpersuasive. Merck, supra; Keller,
supra. Furthermore, an artisan must be presumed to know something about
the art apart from what the references disclose. See In re Jacoby, 309
F.2d 513,516 (CCPA 1962). A person of ordinary skill in the art of fluid
containers would have been familiar with a wide variety of means to flow
fluid into and dispense fluid out of a container. Here, Geshay discloses a
container with a fill spout 51 and closure 85 disposed on the top of the
container and a dispensing device 33 attached to a side member. Geshay,
col. 4, 11. 30-41, Fig. 4.
Deuber discloses an apparatus for recycling liquids, such as motor oil.
Deuber, Abstract. Deuber discloses an embodiment in which a first fluid 12,
such as unused motor oil, resides in a first container 15 and a second
fluid 14, such as used motor oil, is contained in a second container
comprised of collapsible bag 50. Deuber, col. 2, 11. 28-36, Figs. 1-5.
Although the embodiment depicted in Figures 1-5 is cylindrical in shape
with a substantially flat top and bottom, Deuber' s container can comprise a
variety of sizes, shapes, and materials. Id. at col. 2, 11. 40-54. In Deuber, an
aperture on top of the container receives a pump which is used for pumping
out unused oil. Id. at col. 1, 11. 32-37. After unused oil has been pumped
out, used oil is poured into the collapsible bag portion of the apparatus
through an aperture disposed on top of the container. Id. at col. 1, 11. 37--42;
col. 3, 11. 23-25; Fig. 3. Deuber's device is used, among other things, to
recycle used oil. Id. at col. 1, 11. 43--45; col. 2, 11. 28---62. The Examiner's
findings of fact concerning the teachings of the Deuber reference are amply
supported by the record.
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Appellant next argues that Geshay is "unconcerned with recycling"
and fails to disclose a container with a clean fluid reservoir and a flexible
used fluid reservoir. Appeal Br. 18. However, it is not necessary for the
prior art to serve the same purpose as that disclosed in Appellant's
Specification in order to support the conclusion that the claimed subject
matter would have been obvious. See In re Lintner, 458 F.2d 1013, 1016
( CCP A 1972 ). Thus, it is well settled that "a reference may be read for all
that it teaches, including uses beyond its primary purpose." In re Mouttet,
686 F.3d 1322, 1331 (Fed. Cir. 2012), citing KSR Int'! Co. v. Teleflex Inc.,
550 U.S. 398, 418-21 (2007). Geshay is directed to a package that contains
fluid. Geshay, Abstract (beverage). Geshay's package features a flaccid
bag, a carton around the bag, and a fill spout and dispensing device attached
to the bag. Id. A person of ordinary skill in the art would have understood
that Geshay' s teachings could be readily adapted to other fluid container
product applications, such as fluid recycling containers with separate clean
and used fluid reservoirs.
Appellant next argues that Geshay does not disclose a first reservoir
for clean fluid and a second reservoir for used fluid. Appeal Br. 18. This
amounts to yet another unpersuasive individual attack on a single reference
in a combination rejection. Merck, supra; Keller, supra.
Appellant next engages in a series of similar individual attacks on
each of the Boonzaier and Spivey references. See Appeal Br. 19-24.
Boonzaier discloses a six sided rectangular carton that is formed from a
blank for use in a bag-in-a-box application. Boonzaier, Abstract, col. 1,
11. 4--5. The top of Boonzaier' s carton is formed by four flaps, each
extending from an upper edge of one of the sides. Id. at Fig. 1. Boonzaier's
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Application 13/946,974
blank features fold lines 18, 22, 26, and 30 respectively for flaps 16A, 20A,
24A, and 28A. Id. at col. 2, 11. 54---65, Fig. 1. Boonzaier features a liquid
container bag with a dispensing valve. Id. at col. 4, 11. 2-12. Similarly,
Spivey discloses a carton that contains a flexible bag that is further equipped
with a spigot. Spivey, Abstract. The panels and flaps of Spivey's carton are
connected to each other along fold lines. Id. ,r 58. Certain of Spivey's flaps
and panels fold in such a manner as to provide access to spigot 44. Id. ,r 62,
Figs. 10, 17. A person of ordinary skill in the art would have understood
that the teachings of Boonzaier and Spivey could be readily adapted to other
fluid container product applications, such as dual reservoir recycle
containers.
Finally, Appellant argues that the combination of Deuber, Geshay,
Boonzaier, and Spivey fails to disclose or make obvious all of the limitations
of claim 1. Appeal Br. 24. However, having reviewed the Examiner's Final
Action, Answer, and each of the applied references, we disagree with
Appellant's conclusion and determine that the Examiner's findings of fact
that: ( 1) the applied art discloses or suggests all of the limitations of
claim 1; and (2) the teachings of the four references are combinable in the
manner proposed, are supported by a preponderance of the evidence. We
also determine that the Examiner's legal conclusion of unpatentability is
well-founded and, therefore, sustain the Examiner's unpatentability rejection
of claims 1, 4, 5, and 9.
Evidentiary Weight of the Vargas Declaration
During prosecution and the instant appeal, Appellant relies heavily on
declaration testimony by the inventor. Appeal Br. 24--32. Appellant
criticizes the Examiner for failing to accord weight to the inventor's
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Application 13/946,974
declaration testimony. Id. at 25 ("the Examiner has failed to give weight to
relevant evidence provided in the Vargas Declaration"). Appellant goes so
far as to suggest that the Examiner was not even aware of its existence
during prosecution. Id.
In response, the Examiner states that the Declaration of Juan Vargas
was given "sufficient weight." Ans. 3. The Examiner then explains that Mr.
Vargas' testimony is devoted to the shortcomings of individual references
rather than the teachings of the combination, taken as a whole. Id. at 4. The
Examiner further explains that:
Id.
While the Declaration was not specifically noted in the Office
Action of 12 April 2017, the Appellant's argument presented in
the Declaration with respect to attacking individual references
was address[ed] in Paragraph 10 of that Office Action in the
Response to Arguments. The Office is deemed to have given
the Declaration proper weight.
We have reviewed the Vargas Declaration and agree with the
Examiner that it is largely devoted to mounting attacks on the applied
references individually rather than as a whole. See Vargas Dec. ,r,r 9--24.
We have previously discussed why this tactic is unpersuasive. Merck, 800
F.2d at 1097; Keller, 642 F.2d at 425.
Appellant argues that the Vargas Declaration supplies evidence that
the claimed apparatus achieves unexpected results. Appeal Br. 25, 28, 30,
and 32. Having reviewed Mr. Vargas' declaration testimony in conjunction
with the Examiner's applied art and well-reasoned analysis, we are of the
opinion that the results achieved by the invention are no more than what a
person of ordinary skill in the art would have expected from combining the
references in the manner proposed. It is well settled that when a claim
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Application 13/946,974
"simply arranges old elements with each performing the same function it had
been known to perform" and yields no more than one would expect from
such an arrangement, the combination is obvious. KSR, 550 U.S. at 417
(quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273,282 (1976)). In the instant
case, Deuber teaches that it was known to provide motor oil containers with
two, separate reservoirs, one for unused oil, and a second one comprised of a
collapsible bag for used oil. Geshay, Boonzaier, and Spivey teach that it
was known to use a bag-in-a-box type carton to receive, hold, and dispense
fluid. The respective locations and components for managing the in-flowing
and out-flowing fluid are taught by the applied references and are entirely
predictable and expected, merely taking advantage of known principles of
fluid flow in the presence of gravity. The applied art similarly shows that it
was known to equip the bag in a bag-in-a-box configuration with a dispenser
or spigot.
Appellant's position confuses the concept of "unexpected results"
with the "advantages" afforded by the claimed invention. See, e.g., Appeal
Br. 30. An otherwise obvious improvement or advantage over the individual
references found in the prior art, without more, does not confer patentability
on an invention. See KSR, 550 U.S. at 422 (explaining that a person of
ordinary skill in the art would have seen the benefits of combining the prior
art in the manner achieved by the claimed invention).
Because the desire to enhance commercial opportunities by
improving a product or process is universal-and even
common-sensical-we have held that there exists in these
situations a motivation to combine prior art references even
absent any hint of suggestion in the references themselves.
Dystar Textilfarben GmBH & Co, v. CH Patrick Co., 464 F.3d 1356, 1368
(Fed. Cir. 2006).
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Appeal2018-004204
Application 13/946,974
Under the circumstances, the Examiner appears to have appropriately
considered the Vargas Declaration and given it appropriate weight. We are
also mindful that "an affidavit by an applicant or ccH1pp1kant as to the
-,1dv:-1nf:-lO-PS, Of his lfl"!elltiOil iS lC-SS 11efSU~'si-.:re than nne ill'.lL-~e bv '.-l ~.,,. ..... _~, .._,,_-..t~ ....... ~.t:~"'··'-· ~ , . r ..__; u- ~ ........ t~"'. ~ J J ... ~.
~· . d " " L£ V 203 "',., '717 720 --,-,,,,-~-,---,' lC'53) u1smtereste person. in re 1v1c1"-enna, t· .lcl , ( !..._!...Yi\ ) .
We remain of the opinion that the Examiner's findings of fact are supported
by a preponderance of the evidence despite giving due and appropriate
consideration to Mr. Vargas' declaration testimony.
Unpatentability of Claims 2 and 3
over Deuber, Geshay, Boonzaier, Spivey, and Densham
Appellant argues claims 2 and 3 together. Appeal Br. 33-35. We
select claim 2 as representative. 37 C.F.R. § 4I.37(c)(l)(iv).
Claim 2 depends from claim 1 and adds the limitation: "[wherein]
further comprising a funnel configured to enable the user to pour the used
fluid into the opening in the flexible used fluid reservoir." Claims App. The
Examiner finds that Deuber discloses that it is common to use a funnel in
connection with a fluid container. Final Action 7. The Examiner relies on
Densham as disclosing a container with a funnel that is configured to enable
a user to pour used fluid into the opening in a flexible used-fluid reservoir.
Id. The Examiner concludes that it would have been obvious to a person of
ordinary skill in the art at the time of the invention to incorporate a funnel
with the invention of Deuber. Id. According to the Examiner, a person of
ordinary skill in the art would have done this to make it easier to pour used
oil into the container. Id.
Appellant traverses the rejection by repeating the arguments that we
previously considered and found unpersuasive with respect to claim 1 and
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Application 13/946,974
find equally unpersuasive here. Appeal Br. 33. Appellant further argues
Densham fails to disclose sealing the used fluid in a container. Appeal
Br. 34.
Appellant's argument amounts to yet another attack on a reference
individually which is unpersuasive for reasons previously discussed. Merck,
800 F.2d at 1097; Keller, 642 F.2d at 425. Deuber teaches that "when
unused oil 12 has been used and used oil 14 inserted, plugs 36 and 44 and
cap 40 can seal apparatus 100 and apparatus 100 can be recycled." Deuber,
col. 3, 11. 65---68. Thus, the Examiner's proposed combination contemplates
sealing the used fluid in a container. This effectively refutes Appellant's
argument about sealing the fluid.
Densham is directed to an assembly or kit to enable automobile
owners to drain and change motor oil. Densham, Abstract. Densham's kit
includes a collapsible paper funnel 25. Id. at col. 11. 12-18. The Examiner's
finding that Densham's funnel corresponds to the funnel recited in claim 2 is
supported by a preponderance of the evidence. Consequently, we sustain the
Examiner's unpatentability rejection of claim 2.
Unpatentability of Claims 6 and 7
over Deuber, Geshay, Boonzaier, Spivey, and Sylvester
Appellant argues claims 6 and 7 together. Appeal Br. 33-35. We
select claim 6 as representative. 37 C.F.R. § 4I.37(c)(l)(iv).
Claim 6 depends from claim 1 and adds the limitation: "wherein the
dispenser comprises a spout equipped with a valve configured to open or
close the spout." Claims App. The Examiner finds that Sylvester discloses
a dispensing spout with a valve. Final Action 8. The Examiner concludes
that it would have been obvious to a person of ordinary skill in the art at the
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time of the invention to further modify the art applied against claim 1 with a
valve that is configured to open or close the spout. Id. According to the
Examiner, a person of ordinary skill in the art would have done this to
ensure that the fluid was dispensed only when the spigot was actuated. Id.
Appellant traverses the rejection by repeating the arguments that we
previously considered and found unpersuasive with respect to claim 1 and
find equally unpersuasive here. Appeal Br. 36-38. Appellant does not
challenge the Examiner's finding that Sylvester discloses a valve disposed
within spigot 150. Id., see also Sylvester, col. 6, 11. 40-44.
We are not apprised of error and, therefore, sustain the Examiner's
unpatentability rejection of claim 6 and 7.
Unpatentability of Claim 8
over Deuber, Geshay, Boonzaier, Spivey, and Walker
Claim 8 depends from claim 1 and adds the limitation: "wherein the
top of the container is adhered to flaps extending from sidewalls of the
container." Claims App. The Examiner finds that Walker discloses this
limitation. Final Action 9. The Examiner concludes that it would have been
obvious to a person of ordinary skill in the art at the time of the invention to
modify the applied art of claim 1 to have the container top adhered to flaps
extending from the sidewalls. Id. According to the Examiner, a person of
ordinary skill in the art would have done this to secure the top of the
container. Id.
Appellant traverses the rejection by repeating the arguments that we
previously considered and found unpersuasive with respect to claim 1 and
find equally unpersuasive here. Appeal Br. 3 8--40. Appellant does not
challenge the Examiner's finding that Walker discloses adhered flaps
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extending from the sidewalls of the container. Id., Walker, Figs. 1, 4, 5;
col. 2, 11. 40-44 ("flaps 37 and 38 of the carton are folded over the flaps 30
and 31 and pasted, glued or otherwise secured thereto").
We are, thus, not apprised of error and, accordingly, sustain the
Examiner's unpatentability rejection of claim 8.
DECISION
The decision of the Examiner to reject claims 1-9 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 )(iv).
AFFIRMED
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