Joshua Malone

Patent Trials and Appeals Board

Feb 3, 2020

14976055 - (D) (P.T.A.B. Feb. 3, 2020)

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.
14/976,055 12/21/2015 JOSHUA MALONE 64784.007 7236
130382 7590 02/03/2020
Brett Mangrum
1515 N Town East Blvd., STE 138
Mesquite, TX 75150
EXAMINER
STCLAIR, ANDREW D
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
02/03/2020 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):
brett@etheridgelaw.com
jmalone@tinnus.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOSHUA MALONE

Appeal 2018-008578
Application 14/976,055
Technology Center 3700
____________

Before CYNTHIA L. MURPHY, KENNETH G. SCHOPFER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–7, 9–13, 15, 16, 18–21, 23, 24, and
26–30. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Tinnus
Enterprises, LLC. Appeal Br. 2.
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BACKGROUND
The Specification discloses “a system and method for filling
containers with fluids.” Spec. ¶ 2.
CLAIMS
Claims 1, 10, 18, and 26 are the independent claims on appeal. Claim
1 is illustrative of the appealed claims and recites:
1. An apparatus for filling a plurality of balloons with a fluid,
the apparatus comprising:
a fitting configured to couple to a fluid supply; and
a plurality of branch assemblies extending from the fitting,
each branch assembly comprising:
a tube coupled to the fitting at a first end of the tube;
a balloon removably coupled to a second end of the tube,
the balloon having a neck with an unstretched diameter greater
than the diameter of the tube; and
a valve configured to automatically seal the opening of the
balloon if the balloon is decoupled from the tube.
Appeal Br. 33.
REJECTIONS2
1. The Examiner rejects claims 10–13, 15, 16, 18–21, 23, 24, and 26–30
under 35 U.S.C. § 112(a) as failing to comply with the written
description requirement.
2. The Examiner rejects claims 10–12, 15, 16, 18–20, 23, 24, and 26–30
under 35 U.S.C. § 112(a) as failing to comply with the enablement
requirement.

2 The Examiner’s rejection under 35 U.S.C. § 112(b) has been withdrawn.
See Ans. 2.
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3. The Examiner rejects claims 1–7 and 9 under 35 U.S.C § 102(a)(1) as
anticipated by LuckyPennyShop.com.3
4. The Examiner rejects claims 10–13, 15, 16, 18–21, 23, 24, and 26–30
under 35 U.S.C. § 103 as unpatentable over Furey4 in view of Billon,5
Bonnet,6 Durst,7 Gill,8 and Fields.9
5. The Examiner rejects claims 1–7, 9–13, 15, 16, 18–21, 23, 24, and 26–30
on the ground of non-statutory double patenting as unpatentable over the
claims of US Patent No. 9,242,749, US Patent No. 9,051,066, US Patent
No. 9,527,612, US Patent No. 9,533,779, US Patent No. 9,682,789, US
Patent No. 9,315,282, and US Patent Application No. 15/613,037.
DISCUSSION
Written Description
A. “automatically-sealing container”
The Examiner determines that the phrase “automatically-sealing
container” in claims 10, 18, and 26 broadens the scope of the claims beyond
that which is supported by the original disclosure. Final Act. 5. The
Examiner relies on various references to show that there is “a very high level
of structural variation within the genus of automatically-sealing containers.”
Id. at 5–6. The Examiner determines

3 “Bunch O Balloons Review 100 water balloons in less than a minute!,”
available at https://www.youtube.com/watch? v=S1DaXYT6O2A, pub. Aug.
5, 2014.
4 Furey et al., US 2005/0132821 A1, pub. June 23, 2005.
5 Billon, FR 2911512, pub. July 25, 2008.
6 Bonnet, US 5,444,962, iss. Aug. 29, 1995.
7 Durst, US 2014/0212074 A1, pub. July 31, 2014.
8 Gill, US 1,315,955, iss. Sept. 16, 1919.
9 Fields, US 2,629,379, iss. Feb. 24, 1953.
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Because the species of automatically-sealing container described
in the original disclosure does not reflect the variety within the
genus of automatically-sealing containers, and because one
skilled in the art would not readily discern that other
automatically-sealing containers would perform similarly to the
species disclosed, claims 10-12, 15, 16, 18-20, 23, 24, and 26-30
do not comply with 112(a).
Id. at 6–7.
The test for sufficiency of the written description requires determining
whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). A
sufficient description of a genus . . . requires the disclosure of
either a representative number of species falling within the
scope of the genus or structural features common to the
members of the genus so that one of skill in the art can
“visualize or recognize” the members of the genus.
Id. at 1350. Further, “the level of detail required to satisfy the written
description requirement varies depending on the nature and scope of the
claims and on the complexity and predictability of the relevant technology.”
Id. at 1351 (citing Capon v. Eshhar, 418 F.3d 1349, 1357–58 (Fed. Cir.
2005)).
Here, although the claim may be directed to a genus, we disagree with
the Examiner that the claimed genus is any “automatically-sealing
container.” Rather, the claim recites specific structure that limits the
claimed genus to those “automatically-sealing container[s]” that have “a
neck” that may be “disposed around and removably attached to a second end
of the tube, such that the container, if sufficiently filled with water, is
detachable by gravity or by gravity combined with a manually applied
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acceleration of the tube.” See Claim 10. We note that the Examiner does
not address the differences in the claimed genus and the broader genus of all
“automatically-sealing container[s].”
Further, we agree with Appellant that when the appropriate genus is
considered, the Specification provides adequate disclosure therefor. See,
e.g., Reply Br. 4–5; see also Appeal Br. 8–9. In particular, consistent with
the claim language, the Specification discloses the genus as those containers
that require force “to pull open the necks of containers 18, and removal of
the force causes the necks to constrict and close.” Spec. ¶ 17. And the
Specification likewise discloses several species within this disclosed genus
including containers with various elastic valves including elastic fasteners,
corrugations, smocking, elastic fibers, internal plugs, and external plugs
through which the tubes 16 are inserted. Id. at ¶¶ 17, 18. The Specification
further discloses that when such containers are filled with fluid they are
removed from the tubes 16 and the valves automatically close. Id. at ¶ 18.
We find this description is sufficient to reasonably convey that Appellant
was in possession of the claimed genus at the time the application was filed.
Based on the foregoing, we are persuaded of reversible error with
respect to this rejection of claim 10. Accordingly, we do not sustain the
rejection of claim 10 as lacking adequate written description support. For
the same reasons, we do not sustain this rejection of independent claims 18
and 26 or any of dependent claims 11–13, 15, 16, 19–21, 23, 24, and 27–30.
B. Claim 26 - “the fluid paths having no valve capable of stopping
fluid”
The Examiner separately determines that written description support
is lacking for the negative limitation “the fluid paths having no valve
capable of stopping fluid” in claim 26. Final Act. 7. The Examiner finds
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that this language is not supported in the original disclosure because “[t]he
mere absence of a feature in the figures is not adequate support for a
negative claim limitation” and “the valve is not disclosed in a list of
alternative or optional elements.” Id.
We are persuaded of error in this rejection by Appellant’s arguments.
See Appeal Br. 13–15. In particular, we agree with Appellant that Figures 1
and 3 depict fittings without and with a valve in the fluid path. Thus,
contrary to the Examiner’s finding, the Specification does disclose a valve in
the fitting as an alternative or optional element. We are not persuaded
otherwise by the Examiner’s response.
In response to Appellant’s argument, the Examiner first finds that the
valve depicted in Figure 3 is not in the fluid path defined by claim 26.
Claim 26 recites, inter alia,
a fitting comprising an inlet configured to connect to a fluid
source and a bulkhead joining the at least three branch assemblies
at respective second ends of their respective tubes, the fitting and
the at least three branch assemblies at least partially defining
fluid paths extending from a common point within the fitting to
the inside of each container of the at least three branch
assemblies, the fluid paths having no valve capable of stopping
fluid at least while the containers of the at least three branch
assemblies remain attached to their respective tubes.
Appeal Br. 37. We agree with Appellant that Figure 3 depicts a fitting 31
connecting the fluid source 14 to a bulkhead 12 that joins the branch
assemblies 16. Further, this fitting at least partially defines the fluid path
and includes a valve. Alternatively, Figure 1 depicts a fitting (above arrow
A) that connects the fluid source to the bulkhead and does not include such a
valve in the fluid path. Thus, we disagree with the Examiner that these
figures do not depict alternative embodiments with and without valves.
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Alternatively, the Examiner asserts that if valve 32 is considered
within the fluid path, the figures do not show the entirety of the fluid path
such that they cannot indicate whether a valve is present somewhere else
along the fluid path in Figures 1 and 3. Ans. 10. To the extent the Examiner
is asserting that a valve may be present anywhere along the fluid path of the
embodiment in Figure 1 such that claim 26 would not read on this
embodiment, we disagree. One would understand the claim language to
require the absence of a valve within the fluid path as partially defined by
the fitting and the at least three branch assemblies.
Based on the foregoing, we are persuaded of reversible error in this
written description rejection of claim 26. Accordingly, we do not sustain
this rejection of independent claim 26, and for the same reasons, we do not
sustain this rejection of dependent claims 27–30.
Enablement
The Examiner determines that independent claims 10, 18, and 26
“contain subject matter which was not described in the specification in such
a way as to enable one skilled in the art . . . to make and/or use the
invention” based on the language “automatically-sealing container.” Final
Act. 7. The Examiner finds that this claim language “is broad and functional
terminology defining a genus of devices, whereas the pending disclosure
enables only a single species of container which can seal automatically.” Id.
Thus, the Examiner finds that “the scope of the claims is significantly
greater than the scope of enablement in the application” because “[t]he
claims cover every type of container that can seal automatically, including
containers which have not been invented yet, and containers having
structures substantially dissimilar to that enabled by the present application.”
Id. at 7–8. Finally, the Examiner finds:
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Regarding the Wands factors, the breadth of the claims is
great, the nature of the invention is evident from the pending
specification, the state of the prior art is evident from the cited
references, the level of ordinary skill is considered to be average
or moderate such as a person with an associate’s degree in
engineering or comparable professional experience, the level of
predictability in the art is considered to be average or moderate,
the amount of direction provided by the inventor and the
existence of working examples consist of a single disclosed and
enabled species of automatically-sealing container, and the
quantity of experimentation needed to make or use the full scope
of the claimed invention (i.e. every automatically-sealing
container including those not yet invented) is very great and rises
to the level undue experimentation.
Id. at 8.
The test for compliance with the enablement requirement is whether
the disclosure, as filed, is sufficiently complete to enable one of ordinary
skill in the art to make and use the claimed invention without undue
experimentation. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
“Enablement is not precluded by the necessity for some experimentation . . .
However, experimentation needed to practice the invention must not be
undue experimentation. The key word is ‘undue,’ not ‘experimentation.’”
Id. at 736–737 (citations omitted).
Here, we are persuaded of reversible error by Appellant’s arguments.
See Appeal Br. 15–16. Most notably, as we found above with respect to the
written description rejection, we find that the Examiner’s rejection focuses
on a genus that is not commensurate with the narrower scope of the claims at
issue. For example, claim 10 not only recites an “automatically-sealing
container” but also further limits the structure and function of the container
by requiring that the container includes “a neck disposed around and
removably attached to a second end of the tube, such that the container, if
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sufficiently filled with water, is detachable by gravity or by gravity
combined with a manually applied acceleration of the tube.” Appeal Br. 34.
Further, we agree with Appellant that the Specification discloses multiple
embodiments comporting with the scope of the claimed genus, which were
similarly discussed above with respect to the written description rejection.
See Spec. ¶¶ 17, 18.
Finally, the Examiner’s cursory review of the Wands factors with
respect to the broader genus identified by the Examiner does not persuade us
that undue experimentation would be required to make or use the invention
as claimed. Given the narrower scope of the genus actually required by the
claims, the examples provided in the Specification, and the level of
predictability in the container arts especially with respect to balloons, we are
not persuaded that undue experimentation would be required to make or use
the full scope of the invention as claimed.
Based on the foregoing, we are persuaded of error in this rejection,
and thus we do not sustain the enablement rejection of claims 10–12, 15, 16,
18–20, 23, 24, and 26–30.
Anticipation
As an initial matter, the Specification indicates that the present
application is a continuation of Application No. 14/723,953, which is a
continuation of Application No. 14/492,487, which claims the benefit of the
filing dates for provisional Application No. 61/937,083 and provisional
Application No. 61/942,193.10

10 We refer to these non-provisional and provisional applications
collectively as “the priority applications” below.
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With respect to this rejection, Appellant argues that all limitations of
claim 1 were disclosed in two non-provisional applications from which this
application is a continuation, and thus, based on the filing date of these non-
provisional applications, the video relied upon in the rejection of claim 1
does not qualify as prior art under 35 U.S.C § 102(b)(1)(A). Appeal Br. 28–
31. In particular, Appellant asserts that each of the non-provisional parent
applications provide support for the claim limitation requiring “the balloon
having a neck with an unstretched diameter that is greater than the diameter
of the tube.” Id. In support, Appellant asserts that “[t]his limitation is
unmistakably shown, for example, by Figure 2 . . . and the accompanying
description.” Id. at 30. With respect to Figure 2, Appellant provides the
following annotation:

Above is an annotated portion of Figure 2 depicts a cross-sectional
portion of a balloon 18A and provides an annotation denoting an alleged
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“neck with an unstretched diameter.” Id. at 30. Based on this figure,
Appellant argues:
As shown above, a person of ordinary skill in the art would
readily recognize from the disclosure in the non-provisional
parent applications that the inventor possessed the concept of a
balloon with a neck that has an unstretched diameter greater than
the diameter of tube. Indeed, that claim language basically
describes in prose a portion of what Figure 2 shows (as
emphasized by the annotations above).
Id.
A claim is entitled to priority from the filing date of an earlier filed
application, but only if the earlier filed application describes the subject
matter of the claim as required by 35 U.S.C. § 112(a). See 35 U.S.C. § 120.
Thus, the priority document must provide adequate written description
support for such a claim. Here, we agree with the Examiner that Appellant
has not pointed to any disclosure in the priority applications that supports
adequately the claim limitation at issue. See Ans. 20–21. Regarding the
figure relied upon by Appellant, each of the priority applications contains a
figure that is the same or substantially the same as Figure 2 provided in the
present application, although some of these figures appear to be hand drawn
while others appear to be computer-drafted. Although Appellant asserts that
this figure includes “a neck with an unstretched diameter,” we see no
indication in any of these figures that any neck portion is unstretched.
Rather, these figures are either unlabeled, as in the provisional applications,
or labeled only with reference numerals unrelated to the neck of the balloon,
as in the non-provisional applications.
Regarding the portions of the Specifications that discuss these figures,
we see no disclosure regarding whether the neck portion identified by
Appellant is stretched or unstretched. Notably, Appellant asserts that the
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limitation at issue is “unmistakably shown by Figure 2 . . . and the
accompanying description,” but Appellant does not provide any portion of
such description in support. And we cannot agree that one of ordinary skill
in the art would readily recognize from the written disclosure that any
portion of the neck is unstretched in the relevant figures. As noted by the
Examiner, a priority Specification suggests that the neck portions of the
balloons must be stretched to fit over the tubes 16, i.e., “a top portion may be
flexible enough to be inserted around tubes 16.” See, e.g., Application No.
14/723,953 Spec. ¶ 20. Further, this Specification also describes Figure 2 as
“a simplified cross-sectional view of a portion of the embodiment of system
10.” Id. at ¶ 26. No specific description of the neck is further provided with
respect to the description related to Figure 2 in this priority application, or in
any of the other priority applications. See id. at ¶¶ 26–28. Because there is
no specific disclosure regarding any portion of the neck depicted in Figure 2;
because the Specification indicates Figure 2 is a simplified depiction; and
because the Specification otherwise only suggests that the neck must be
stretched to fit on the tubes, we disagree with Appellant that one of ordinary
skill would recognize that the claim limitation at issue is “unmistakably
shown” in Figure 2 in the priority applications. Rather, one cannot tell
whether any neck portion in Figure 2 is stretched or unstretched.
Based on the foregoing, we find that the priority applications do not
reasonably convey to those skilled in the art that the inventor had possession
of the claimed subject matter at issue here. Further, because Appellant does
not raise any substantive argument regarding the art relied upon in this
rejection, we are not persuaded of error in the rejection of claim 1 as
anticipated. Accordingly, we sustain this rejection. For the same reasons,
we also sustain the rejection of dependent claims 2–7 and 9.
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Obviousness
With respect to the obviousness rejection, Appellant groups all claims
together. See Appeal Br. 19–28. We select claim 10 as representative of
this group of claims, and claims 12, 13, 15, 16, 18–21, 23, 24, and 26–30
will stand or fall with claim 10. See 37 C.F.R. 41.37(c)(1)(iv).
With respect to claim 10, the Examiner finds that Furey discloses a
fitting with branch assemblies having tubes as claimed. Final Act. 11. The
Examiner also finds that Furey discloses containers, but the Examiner
acknowledges that Furey does not disclose automatically-sealing containers
as claimed. Id. Regarding the automatically-sealing containers, the
Examiner finds that each of Billon, Bonnet, Durst, Gill, and Fields teaches
an automatically-sealing container that may be combined with Furey to
arrive at the claimed configuration. Id. at 12.
The Examiner concludes that it would have been obvious to modify
Furey to include an automatically-sealing container “for the purpose of
eliminating the need for the heat knife described in Furey and for providing
an efficiently sealing container of known construction.” Id. The Examiner
also determines that making such a modification “would merely amount to a
combination of known elements according to known methods with
predictable results.” Id. Finally, the Examiner finds that the modified
device of Furey would necessarily be capable of performing the function of
the claimed “automatically-sealing container” or that “these features would
result from an obvious matter of non-critical scaling or relative dimensions
which would not have changed the operation of the device.” Id. at 13.
Finally, regarding Appellant’s evidence of objective indicia of non-
obvious, the Examiner finds that the scope of claim 10 is not commensurate
with the commercial embodiment relied upon. Id. at 14 (citing the
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Declaration of Josh Malone under 37 CFR 1.132, dated March 9, 2017
(“Malone Declaration”)). The Examiner finds that “[t]here is no evidence in
the record to show that the facts in the declaration would also be true of a
device which does not have water balloons.” Id. Further, the Examiner
finds that the “claims do not require the fastener that is present in the
commercial embodiment . . . [and t]here is no evidence in the record to show
that a device without the disclosed fastener would have been operable or
commercially successful.” Id.
As discussed below, we are not persuaded of reversible error in the
obviousness rejection of claim 10.
Appellant first argues that none of the relied upon art combinations
“renders obvious ‘an automatically-sealing container’ having the specific
configuration claimed.” Appeal Br. 19–20. In support, Appellant asserts
that the rejection does not address the requirement that the container must
have “a neck disposed around and removably attached” to an end of the tube
or the requirement in claim 10 that “the container, if sufficiently filled with
water, is detachable by gravity or gravity combined with a manually applied
acceleration of the tube.” Id. at 22. Appellant also asserts that the Examiner
erroneously dismisses these limitations as functional language. Id.
We are not persuaded of error for the reasons provided by the
Examiner in the Answer. See Ans. 15–18. In particular, the Examiner
specifically identifies how the references meet the limitations addressed by
Appellant in this argument, and the Examiner also explains why certain
language is considered functional. Id. By way of Example, we agree with
the Examiner that “Bonnet discloses a neck of a container (104) being
removably attached to a conduit (114) to fill the container (104).” Ans. 15
(citing Bonnet Fig. 1, col. 3, ll. 49–50). We also find that Bonnet discloses a
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container that is removed by gravity from the chute when bladder 110 is
deflated. Bonnet col. 3, ll. 45–51.
Next, Appellant argues that the Examiner’s reasoning is insufficient
and highlights why Furey teaches away from the combinations proposed.
Appeal Br. 20. Specifically, Appellant asserts that the Examiner’s reasoning
“for the purpose of eliminating the need for the heat knife” in Furey is
inconsistent with Furey’s explanation that severing is needed and would be
vitiated by using a removably attached container as claimed. Id. at 20–21.
We are not persuaded. Furey teaches only that severing such that the
container is aseptically sealed is preferred. See Furey ¶ 7. We disagree that
Furey’s preference for one method of attachment over another amounts to a
teaching away from the use of any “automatically-sealing container” as
claimed. See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d
1314, 1327 (Fed. Cir. 2009) (“A reference does not teach away […] if it
merely expresses a general preference for an alternative invention[.]”).
Finally, Appellant relies on the Malone Declaration in arguing that
there is “evidence of extraordinary commercial success derived from the
claimed invention,” such that the “evidence is entitled to substantial weight,”
and thus, Appellant indicates that this evidence is sufficient to overcome the
prima facie showing of obviousness. Appeal Br. 23–28. However, as
discussed below, we are not persuaded that Appellant’s evidence is
sufficient to outweigh and overcome the evidence of obviousness.
To be given substantial weight in the determination of obviousness or
nonobviousness, objective evidence of non-obviousness must be relevant to
the subject matter as claimed, and therefore it must determined whether
there is a nexus between the merits of the claimed invention and the
evidence of secondary considerations. Ashland Oil, Inc. v. Delta Resins &
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Refractories, Inc., 776 F.2d 281, 305 n.42 (Fed. Cir. 1985). Objective
evidence of nonobviousness including commercial success must be
commensurate in scope with the claims. In re Tiffin, 448 F.2d 791 (CCPA
1971) (evidence showing commercial success of thermoplastic foam “cups”
used in vending machines was not commensurate in scope with claims
directed to thermoplastic foam “containers” broadly). In order to be
commensurate in scope with the claims, the commercial success must be due
to claimed features, and not due to unclaimed features. Joy Technologies
Inc. v. Manbeck, 751 F. Supp. 225, 229 (D.D.C. 1990), aff’d, 959 F.2d 226,
228 (Fed. Cir. 1992) (Features responsible for commercial success were
recited only in allowed dependent claims, and therefore the evidence of
commercial success was not commensurate in scope with the broad claims at
issue.). An inventor’s opinion as to the purchaser’s reason for buying the
product is insufficient to demonstrate a nexus between the sales and the
claimed invention. In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996).
Further, gross sales figures do not show commercial success absent evidence
as to market share, Cable Electric Products, Inc. v. Genmark, Inc., 770 F.2d
1015 (Fed. Cir. 1985), or as to the time period during which the product was
sold, or as to what sales would normally be expected in the market, Ex parte
Standish, 10 USPQ2d 1454 (BPAI 1988).
The Malone Declaration provides evidence that the Bunch O Balloons
(“BoB”) product is a commercial embodiment of the Appellant’s invention
that garnered $929,160 in pledges through a crowd-funding campaign; was
the subject of “a substantial number of requests to license the patent rights”
resulting in an exclusive license; and has sold over 10 million units. See
Malone Decl. ¶¶ 2, 4–6. Additionally, the declaration states that the BoB
product received multiple awards in the toy industry; extensive media praise;
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and that a preliminary injunction was awarded based on copying. Id. at
¶¶ 8–13.
Appellant argues that there is a presumption of a nexus between the
claimed invention and the commercial success because the “evidence shows
that (1) the claimed invention reads on the specific Bunch of Balloons
product sold, and (2) the claimed invention is not a subcomponent of, but
rather the entirety of, that product.” Appeal Br. 24. However, neither the
Declaration nor any other evidence in the record shows that the alleged
commercial success is because of the features of claim 10, and not due to
other features. The declaration simply states: “BoB does not merely
incorporate the claimed invention as a component, but rather is virtually
described in its entirety by certain claims of the subject application.”
Malone Decl. ¶ 3. This assertion falls short of stating that the BoB product
contained nothing beyond what is recited in claim 10, such that the alleged
commercial success would not be attributed to other features — regardless
of whether those features might appear in other claims of the application.
Further, although the declaration provides evidence of the total
number of sales, the record includes no evidence of market share or any
other comparison of sales between the BoB product and similar products
such that one could evaluate the significance of the sales data. For example,
such evidence might include evidence related to sales of other water balloon
products or specific evidence showing that the BoB product garnered praise
or awards based on the features claimed in claim 10. Absent such evidence,
even if we were to determine that the claims read on the BoB product, the
record provides no basis for us to determine whether any such commercial
success of the product is based on any of the features claimed in claim 10.
Finally, we also agree with the Examiner that the record includes no
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evidence showing that the commercial success is commensurate with the full
scope of the claims at issue, which are directed to “automatically-sealing
containers . . .” more broadly than the water balloons in the BoB product.
See In re Tiffin, 448 F.2d at 791.
Thus, when we consider totality of the obviousness evidence, the
record supports the Examiner’s position that claim 10 would have been
obvious over the prior art..
Based on the foregoing, we are not persuaded of reversible error with
respect to representative claim 10. Accordingly, we sustain the rejection of
claim 10 and claims 12, 13, 15, 16, 18–21, 23, 24, and 26–30, which fall
with claim 10, as noted above.
Double Patenting
With respect to the double patenting rejection, Appellant argues only
that “the claims in question are necessarily directed to different, ‘patentably
distinct’ subject matter.” Appeal Br. 31; see also Reply 20. Further,
Appellant states that a terminal disclaimer will be filed to obviate this
rejection if claims are otherwise found allowable. See Appeal Br. 31. We
are not persuaded of error. Appellant’s listing of certain claim features
without further substantive discussion is not sufficient to show error in the
rejection. See Reply Br. 20. Further, Appellant asserts that “even a cursory”
comparison of the claims here with the patented claims “confirms the
rejected claims are patentably distinct.” Id. However, a review of claim 1 of
US Patent No. 9,242,749 (the 749 patent) reveals the opposite. The claim in
the 749 patent reads:
An apparatus comprising:
Appeal 2018-008578
Application 14/976,055
19
a housing comprising an opening at a first end and a
plurality of holes extending through a common face of the
housing at a second end;
a plurality of hollow tubes, each hollow tube attached to
the housing at a respective one of the holes at the second end of
the housing;
a plurality of containers, each container removably
attached to a respective one of the hollow tubes; and
a plurality of elastic fasteners, each elastic fastener
clamping a respective one of the plurality of containers to a
respective tube, and each elastic fastener configured to restrict
detachment of its respective container from its respective tube
and to automatically seal its respective container upon
detachment of the container from its respective tube, the
restriction of each elastic fastener being sufficiently limited to
permit its respective container to detach from its respective tube
upon one or more of (1) at least partially filling the container with
a fluid and (2) shaking the housing;
wherein the apparatus is configured to fill the containers
substantially simultaneously with the fluid.
Appellant does not identify any substantive difference between this claim
and claim 1, for example. Thus, we are not persuaded of error in the
rejection and we sustain it.
CONCLUSION
We REVERSE the rejections under 35 U.S.C. § 112(a). We AFFIRM
the remaining rejections.
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).

Appeal 2018-008578
Application 14/976,055
20
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
10–13, 15,
16, 18–21,
23, 24, 26–30
112(a) Written
description
10–13,
15, 16,
18–21,
23, 24,
26–30
10–12, 15,
16, 18–20,
23, 24, 26–30
112(a) Enablement 10–12,
15, 16,
18–20,
23, 24,
26–30
1–7, 9 102(a)(1) LuckyPenny.com 1–7, 9
10–13, 15,
16, 18–21,
23, 24, 26–30
103 Furey, Billon,
Bonnet, Durst,
Gill, Fields
10–13, 15,
16, 18–21,
23, 24, 26–
30

1–8, 9–13,
15, 16, 18–
21, 23, 24,
26–30
Double Patenting 1–7, 9–13,
15, 16, 18–
21, 23, 24,
26–30

Overall
Outcome
1–7, 9–13,
15, 16, 18–
21, 23, 24,
26–30

AFFIRMED