Keith Alan. Mullin et al.

Patent Trials and Appeals Board

Aug 6, 2019

14694951 - (D) (P.T.A.B. Aug. 6, 2019)

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.
14/694,951 04/23/2015 Keith Alan MULLIN 3025.033 2803
36790 7590 08/06/2019
TILLMAN WRIGHT, PLLC
PO BOX 49309
CHARLOTTE, NC 28277-0076
EXAMINER
WONG, JESSICA BOWEN
ART UNIT PAPER NUMBER
3644
MAIL DATE DELIVERY MODE
08/06/2019 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 KEITH ALAN MULLIN and LOREN TAYLOR

____________

Appeal 2018-008126
Application 14/694,951
Technology Center 3600
____________

Before JENNIFER D. BAHR, WILLIAM A. CAPP, and
NATHAN A. ENGELS, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Keith Alan Mullin and Loren Taylor (hereinafter collectively
“Appellant”)1 seek our review under 35 U.S.C. § 134(a) of the final rejection
of claim 33 under 35 U.S.C. § 112(b) as indefinite, claims 1, 7, and 12
under 35 U.S.C. § 102(a) as anticipated by Day (US 9,107,390 B1, iss. Aug.
18, 2015),2 and claims 3–6, 10, 11, 13–15, and 33 as unpatentable under 35
U.S.C. § 103(a) over Day. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE-IN-PART and REMAND.

1 Make Ideas, LLC, is the Applicant and real party in interest. Appeal Br. 3.
2 Claim 12 has been cancelled. Claims App.
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THE INVENTION
Appellant’s invention relates to pet toys that dispense medicine.
Spec. 1. Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A pet toy for dispensing medicine, comprising:
an outer shell;
an actuator assembly coupled to the outer shell;
a mortar and pestle, wherein either the mortar or the pestle
is supported by the actuator assembly; and
an ingestible material initially disposed within the outer
shell, wherein the ingestible material is initially disposed in the
mortar;
wherein manipulation, by a pet, of the actuator assembly
relative to the outer shell causes the pestle to enter the mortar,
thereby displacing the ingestible material from the mortar such
that it exits the outer shell for ingestion by the pet.
OPINION
Indefiniteness of Claim 33
A claim is properly rejected as indefinite under 35 U.S.C. § 112
second paragraph, if, after applying the broadest reasonable interpretation in
light of the specification, the metes and bounds of a claim are not clear
because the claim “contains words or phrases whose meaning is unclear.” In
re Packard, 751 F.3d 1307, 1310, 1315 (Fed. Cir. 2014) (per curiam)
(approving, for pre-issuance claims, the standard from MPEP § 2173.05(e));
see also Ex parte McAward, Appeal 2015-006416, 2017 WL 3669566, at *5
(PTAB Aug. 25, 2017) (precedential) (adopting the approach for assessing
indefiniteness approved by the Federal Circuit in Packard).
In the instant case, the Examiner considers that the phrase “the pestle
is a blunt tool” renders claim 33 indefinite. Final Action 3. According to
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the Examiner, using the words “a tool” suggests an alternative/additional
element apart from the pet toy. Id.
Appellant argues that “blunt tool” is merely descriptive of a pestle,
which already has an established meaning. Appeal Br. 24–26. “A mortar
and pestle is a well-known tool (or tools), and in fact are among the most
ancient tools known to mankind.” Id. at 25.
In response, the Examiner redefines the rejection as being a problem
with antecedent basis. Ans. 10–11.
We disagree with the Examiner that there is an antecedent basis
problem or that the claim is otherwise indefinite. Claim 33 depends from
claim 1 and adds the limitation: “wherein the mortar is bowl-shaped and the
pestle is a blunt tool whose distal end fits into the bowl-shaped mortar.”
Claims App. The recited claim elements of “the mortar” and “the pestle”
have sufficient antecedent bases, clearly referring back to the recited
element(s) of “a mortar and pestle” recited in claim 1. Reciting that “the
pestle is a blunt tool” merely adds more detailed description to “the pestle”
and, in our opinion, would cause no confusion to a person of ordinary skill
in the art attempting to determine the metes and bounds of the claims. See
In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007)
(explaining that, during prosecution, claim terms are given their ordinary
and customary meaning as would be understood by one of ordinary skill in
the art in the context of the entire disclosure).
We do not sustain the Examiner’s Section 112 indefiniteness rejection
of claim 33.
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Anticipation of Claims 1 and 7
Claim 1
The Examiner finds that Day discloses each and every limitation of
claim 1. Final Action 4–5. In particular, the Examiner finds that rib
elements 1208 shown in Figure 27 of Day correspond to Appellant’s claimed
mortar and pestle. Id. at 4. The Examiner purportedly relies on
dictionary.com as supplying a “general definition” and, therefore,
appropriate construction of “mortar and pestle.” Id.
Appellant argues, among other things, that Day lacks a mortar and
pestle as claimed. Appeal Br. 29. Appellant cites a Wikipedia article for the
proposition that a mortar and pestle is a kitchen device used since ancient
times. Id. Appellant argues, correctly, that the “mortar” is a bowl and the
“pestle” is a club-shaped object that is pressed and rotated onto a substance
to be ground within the bowl of the mortar. Id.
In response, the Examiner provides an annotated version of Figure 27
of Day where ribs 1208 are labeled with “mortar” portions and “pestle”
portions. Ans. 12–13.
Determining whether claims are anticipated involves a two-step
analysis. In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012). The
first step involves construction of the claims of the patent at issue. Id. The
second step involves comparing the claims to prior art. Id. A prior art
reference anticipates a patent claim under 35 U.S.C. § 102 if it discloses all
of the limitations of the claim, “arranged or combined in the same way as in
the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed.
Cir. 2008).
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With respect to the first step of claim construction, it appears to us
that the alleged dictionary definition relied on by the Examiner in the Final
Action is a definition for “pestle,” not “mortar and pestle,” as alleged.3 We
recently accessed the definition of “pestle” in dictionary.com and noted that
there are two definitions of the noun form of “pestle,” namely:
1. a tool for pounding or grinding substances in a mortar; and
2. any of various appliances for pounding, stamping, etc.
www.dictionary.com/browse/pestle last accessed July 17, 2019 (emphasis
added). The Examiner bases the rejection on the second definition recited
above to the complete exclusion of the first definition. With respect to
construing “mortar and pestle,” we are at a loss to explain how or why the
Examiner: (1) uses a definition of just “pestle” instead of attempting to
define “mortar and pestle;” and, in so doing, (2) selectively ignores the first
above recited definition of pestle as related to a tool for grinding substances
“in a mortar.”
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under
the broadest reasonable interpretation standard, claim terms are given their
ordinary and customary meaning as would be understood by one of ordinary
skill in the art in the context of the entire disclosure. In re Translogic Tech.,
Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). However, a construction that is
“unreasonably broad” and which does not “reasonably reflect the plain

3 See www.dictionary.com/browse/pestle last accessed July 17, 2019. We
are unable to locate a definition of “mortar and pestle” in dictionary.com.
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language and disclosure” will not pass muster. Microsoft Corp. v.
Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015).
Here, the Examiner errs by relying on an incorrect and overly broad
construction of “mortar and pestle.” Whether or not the Examiner’s
dictionary definition is accurate insofar as it relates to the meaning of
“pestle,” it does not reflect the ordinary and customary meaning of “mortar
and pestle” as it would be understood of by one of ordinary skill in the
context of the entire disclosure. See, e.g., Spec. ¶¶ 10 (“the pet medicine
dispenser further includes a mortar and pestle”), 41–47, Figs. 1C, 1E–1G.
Day discloses a pet toy that receives a food item. The Figure 27
embodiment is defined by wall 1212 that mimics the shape of an apple.
Day, col. 12, ll. 4–6. The apple shape is substantially hollow, featuring
internal chamber 1218. Id. Fig. 27, col. 12, ll. 4–10. Within internal
chamber 1218 are a plurality of relatively narrow, spaced apart ribs 1208
that extend between the top and bottom of chamber 1218. Id. Ribs 1208
and flaps 1202 form a valve that opens and closes to insert and then retain a
foot item. Id. col. 12, ll. 14–16. Following insertion of a food item,
ribs 1208 operate as a sort of cage to help retain food within chamber 1218.
Id. col. 12, ll. 28–47.
We have reviewed the annotated version of Figure 27 supplied by the
Examiner in the Answer. Ans. 13. Such annotated Figure, the Examiner’s
analysis thereof, and the remaining disclosure of Day fail to support the
Examiner’s findings of fact that Day possesses either a “mortar” or a
“pestle,” much less a combined “mortar and pestle” as claimed. For
example and without limitation, the Examiner’s alleged “mortar portions” of
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ribs 1208 do not reasonably resemble a bowl shaped receptacle as one would
traditionally understand constitutes a “mortar.”
The Examiner’s findings of fact that all limitations are disclosed in
Day are not supported by a preponderance of the evidence. Net MoneyIN,
545 F.3d at 1370. Accordingly, we do not sustain the Examiner’s
Section 102 rejection of claims 1 and 7.
Unpatentability of Claims 3–6, 10, 11, 13–15 and 33
over Day
Claims 3–6, 10, 11, and 33
These claims depend, directly or indirectly, from claim 1. Claims
App. The Examiner’s rejection of these claims suffers from the same
infirmity that was identified above with respect to claim 1, which infirmity is
not cured by additional findings, analysis, or rationale attendant upon the
grounds of rejection being under Section 103 instead of Section 102. Thus,
for essentially the same reason expressed above in connection with claim 1,
we do not sustain the rejection of claims 3–6, 10, 11, and 33.
Claims 13–15
These claims depend, directly or indirectly, from claim 12. Claims
App. However, claim 12 has been cancelled. Id. It is unclear to us whether
claims 13–15 should be treated as cancelled in view of their dependency
from cancelled claim 12, or whether they should be treated as now
depending from another, albeit unidentified, claim.4

4 Appellant indicates that claims 13–15 depend, either directly or indirectly,
from claim 1 and should be reversed for the same reasons noted previously
with respect to the rejection of claim 1 under Section 102. Appeal Br. 40.
However, without more, this is insufficient to advise us of the metes and
bounds of these claims to permit review of the rejection on the merits.
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Under the circumstances, we do not reach the merits and, instead,
remand the Examiner’s rejection of claims 13–15 so that Appellant and the
Examiner can better clarify the posture and status of these claims. See 37
C.F.R. § 41.50 (a)(1) (authorizing remand to the Examiner).
DECISION
The decision of the Examiner to reject claims 1, 3–7, 10, 11, and 33 is
REVERSED.
The Examiner’s rejection of claims 13–15 is hereby REMANDED to
the Examiner for further consideration in view of Appellant’s cancellation of
claim 12.
REVERSED-IN-PART, REMANDED