Michael R. Schramm

Patent Trials and Appeals Board

Aug 27, 2019

15236117 - (D) (P.T.A.B. Aug. 27, 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.
15/236,117 08/12/2016 Michael R. Schramm MRS-038U 1090
52966 7590 08/27/2019
Schramm-Personal-ACT
Michael R. Schramm
350 West
2000 South
Perry, UT 84302
EXAMINER
STCLAIR, ANDREW D
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
08/27/2019 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):
mike@schrammpatent.com
mikeschramm@besstek.net
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL R. SCHRAMM
____________

Appeal 2018-009143
Application 15/236,117
Technology Center 3700
____________

Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and
WESLEY B. DERRICK, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Applicant1 (“Appellant”) appeals under 35 U.S.C. § 134(a) from
the Primary Examiner’s final decision to reject claims 1–20.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 The Applicant is identified as the real party in interest (Appeal Brief filed
June 6, 2018 (“Appeal Br.”), 2).
2 Appeal Br. 3–21; Reply Brief filed September 25, 2018 (“Reply Br.”), 2–9;
Final Office Action entered January 8, 2018 (“Final Act.”), 5–12;
Examiner’s Answer entered July 26, 2018 (“Ans.”), 2–6.
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I. BACKGROUND
The subject matter on appeal relates to a spill-proof bubble creation
kit, which is provided with a container and a bubble creation composition
concentrate (“BCCC”) (Specification filed August 12, 2016 (“Spec.”), ¶¶ 1,
3). Representative claim 1 is reproduced from the Claims Appendix to the
Appeal Brief, as follows:
1. A kit comprising at least one container and at least
one BCCC, wherein said container includes an open opening and
is adapted such that when said container contains a liquid, at least
a portion of said liquid is prevented from running out of said
container regardless of the orientation of said container.
(Appeal Br. 22).
II. REJECTIONS ON APPEAL3
The claims on appeal stand rejected as follows:
A. Claims 1, 5, 7, 15, and 19 under AIA 35 U.S.C. § 102(a)(1) as
anticipated by Thai;4
B. Claims 6 and 20 under AIA 35 U.S.C. § 103 as unpatentable
over Thai in view of Schramm;5

3 The Appeal Brief includes arguments relating to an objection to claims 1
and 15 based on formal matters (Appeal Br. 3–4; Final Act. 5). But as the
Examiner points out (Ans. 2), issues pertaining to objections based on
formal matters are reviewed only by way of a timely-filed petition. M.P.E.P.
§ 706.01 (Rev. 08.2017, Jan. 2018); 37 C.F.R. § 1.181. In addition, the
Appeal Brief includes arguments against an anticipation rejection based on
Grafani (Appeal Br. 8). The Examiner, however, did not maintain such a
rejection in the Final Action (Final Act. 5–12). Therefore, we do not address
these issues.
4 US 2001/0035413 A1, published November 1, 2001.
5 US 2002/0129763 A1, published September 19, 2002.
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C. Claims 2–4, 8–12, and 16–18 under 35 U.S.C. § 103 as
unpatentable over Thai in view of Grafani et al.6 (“Grafani”);
D. Claim 13 under 35 U.S.C. § 103 as unpatentable over Thai in
view of Grafani and further in view of Schramm; and
E. Claims 8 and 14 under 35 U.S.C. § 103 as unpatentable over
Thai in view of Grafani.
(Ans. 2–6; Final Act. 2–12).
III. DISCUSSION
Rejection A. Although the Appellant refers to several claims, the
arguments are based on claim 1 (Appeal Br. 4–8). Absent arguments for
separate patentability within the meaning of 37 C.F.R. § 41.37(c)(1)(iv), all
claims subject to this rejection stand or fall with claim 1.
The Examiner finds that Thai describes a kit that includes every
limitation recited in claim 1 (Final Act. 5–6 (citing Thai, ¶¶ 9, 13, 38, 47 and
Fig. 4)). The Appellant does not dispute the Examiner’s finding (Final Act.
6) that Thai teaches a container that contains a bubble solution and is
adapted to prevent the solution from running out of the container regardless
of its orientation (Appeal Br. 4–8). Rather, the Appellant’s position is that
Thai’s bubble solution in the kit is not a “BCCC” as defined in the
Specification (id. at 4 (citing Spec. ¶ 17)).
For the reasons well-stated by the Examiner (Ans. 2–4), the
Appellant’s argument fails to identify reversible error in the Examiner’s
rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).

6 US 2,632,191, issued March 24, 1953.
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The Appellant’s Specification defines “BCCC” as follows:
[W]here used in this application unless specifically indicated
otherwise, BCCC shall be understood to be a non-liquid BCCC
(e.g. in powdered, crystalized, or beaded form) or a substantially
concentrated liquid BCCC, wherein such substantially
concentrated liquid BCCC is substantially viscous and is more
viscous than water and preferably at least as viscous as SAE 10
motor oil, and further more preferably more viscous than olive
oil[.]
(Spec. ¶ 17 (emphasis added)). This sets forth an understanding of “BCCC”
to be limited to one of two embodiments: a non-liquid BCCC or a
substantially concentrated liquid BCCC that is “substantially viscous and is
more viscous than water,” unless there is an indication otherwise. Paragraph
20 of the Specification indicates the described embodiments, which would
include the two embodiments described for “BCCC” in paragraph 17, are
not limiting, as follows:
The present invention may be embodied in other specific
forms without departing from its spirit or essential
characteristics. The described embodiments are to be considered
in all respects only as illustrative and not restrictive. The scope
of the invention is, therefore, indicated by the appended claims
rather than by the foregoing description. All changes which
come within the meaning and range of equivalency of the
claims are to be embraced within their scope.
(Id. ¶ 20 (emphasis added)).
Based on the Specification disclosures as a whole, we are in complete
agreement with the Examiner that “[t]he broadest reasonable interpretation
of the term ‘BCCC’ in the context of the present application is ‘bubble
creation composition concentrate’, i.e. any concentrate of a composition that
can create bubbles” and that “[s]oap and water is a composition that creates
bubbles, and therefore soap is a BCCC” (Ans. 2). Under that interpretation,
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Thai’s “bubble solution for use with a bubble producing toy, or . . .
detergent” (Thai, ¶¶ 36, 47) meets the “BCCC” limitation.
The Appellant argues that the “qualification” in paragraph 20 of the
Specification “is routine in patent applications and merely effectively
cautions that the specific disclosure . . . should not be read into the claims”
and, therefore, the definition in paragraph 17 controls (Appeal Br. 7). That
argument, however, asks us to ignore both paragraph 17, which allows for
other meanings of the term BCCC, and paragraph 20, which makes clear to
one skilled in the relevant art that the other disclosures in the Specification
are merely exemplary and not limiting.
Even if “BCCC” is interpreted under the definition provided in
paragraph 17 of the Specification, we agree with the Examiner (Ans. 3–4)
that Thai would still anticipate. The definition in paragraph 17 of the
Specification, includes a meaning that the “BCCC” is a concentrated BCCC
that “is substantially viscous and more viscous than water” (Spec. ¶ 17).
Although the definition states that it is “preferably at least as viscous as SAE
motor oil” (emphasis added), that preferred embodiment fails to further limit
the broad description “substantially viscous and more viscous than water.”
Thus, it reasonably appears that all that is required to meet the “substantially
viscous” limitation is that the liquid is “more viscous than water.” As we
found above, Thai describes providing a bubble solution or detergent (Thai,
¶ 36), which would necessarily have a viscosity that is greater than that of
water. The Appellant, on the other hand, does not offer any reasoning based
on facts establishing that Thai’s liquid bubble solution or detergent cannot
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be considered a “BCCC” that “is substantially viscous and more viscous
than water.”7
For these reasons and those given by the Examiner, we uphold the
Examiner’s rejection as maintained against claim 1.
Rejection B. The Appellant does not argue this rejection separately
(Appeal Br. 3–21). Therefore, we sustain Rejection B for the same reasons
stated above.
Rejection C. In addition to the arguments based on the “BCCC”
limitation in claim 1, the Appellant contends that “Grafani does not qualify
as prior art . . . because it is not analogous to the inventions of the rejected
claims as presently presented” (id. at 9). The Appellant contends that “while
suds may solve Grafani’s problem of cleaning [bath tubs and automobiles],
it is expressly repugnant to [the A]ppellant’s problem of creating/blowing
bubbles to the point of teaching away” because “[i]t is well known that suds
or foam is the enemy of and counterproductive to the creation of amusement
bubbles (see Appx E)” (id. at 11).
We disagree with the Appellant. Grafani was cited to show that soap
may be provided in the form of a plurality of dissolvable pellets (Final Act. 9
(citing Grafani, col. 3, ll. 65–69)). The mere fact that Grafani teaches soaps
in the context of cleaning bath tubs or automobiles (Grafani, col. 1, ll. 1–6)
does not negate the knowledge in the soap art that dissolvable soap pellets
were known. We have not been directed to persuasive reasoning why Thai’s

7 The Appellant refers to “Soap Bubble Wiki” or “Appx D” as proof that
bubble juice recipes are not “viscous” (Appeal Br. 5). Appendix D,
however, does not establish that Thai’s bubble solution or detergent would
have a viscosity lower than that of water.
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soap bubble solution or detergent cannot be formulated from pellets, as was
well-known in the art, which is all that is required by, e.g., claim 2.
The Appellant’s non-analogous art is unpersuasive, because our
reviewing court has explained that the Supreme Court of the United States
instructed the scope of analogous art must be looked at broadly. Wyers v.
Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010); KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007) (“When a work is available in one
field of endeavor, design incentives and other market forces can prompt
variations of it, either in the same field or a different one.”) (emphasis
added).
The Appellant’s own Specification indicates that providing a soap
bubble solution from various non-liquid forms is an important objective
(Spec. ¶ 17). Grafani also provides soap solutions from various soap forms,
such as soap pellets or powder (Grafani, col. 3, l. 65–col. 4, l. 1). Therefore,
Grafani teaches a similar purpose as that disclosed in the current
Specification. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1380–81
(Fed. Cir. 2007) (a reference is analogous if it addresses the same or similar
problem).
We also find no persuasive merit in the Appellant’s teaching away
argument. First, Appendix E merely states that “suds (lots of tiny small
bubbles stuck together) . . . will make the mixture unreliable for blowing big,
beautiful bubbles” but adds that this problem may be overcome by “put[ting]
it aside until the suds burst” (Appendix E-2). That is not the type of
“teaching away” that would have precluded an obviousness conclusion.
Second, even if suds or foam are detrimental to formation of soap bubbles
for amusement, the Examiner’s rejection does not rely on substituting
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Grafani’s cleaning solution for Thai’s soap bubble solution for amusement
but, rather, providing Thai’s solution from soap pellets as shown in Grafani
(Final Act. 9).
For these reasons and those provided by the Examiner, we sustain
Rejection C.
Rejections D and E. The Appellant relies on the same arguments,
which we found unpersuasive above (Appeal Br. 13–21). Therefore, we
sustain Rejections D and E for the same reasons.
IV. SUMMARY
Rejections A through E are sustained. Therefore, the Examiner’s final
decision to reject claims 1–20 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).

AFFIRMED