2020006333 (P.T.A.B. Jul. 1, 2021)

Tonia Miller

Patent Trials and Appeals BoardJul 1, 2021

2020006333 (P.T.A.B. Jul. 1, 2021)

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. 16/169,766 10/24/2018 Tonia Walstad Miller 107086-0002D1C1 5887 24267 7590 07/01/2021 CESARI AND MCKENNA, LLP ONE LIBERTY SQUARE SUITE 310 BOSTON, MA 02109 EXAMINER WILKENS, JANET MARIE ART UNIT PAPER NUMBER 3637 NOTIFICATION DATE DELIVERY MODE 07/01/2021 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): USPTOMail@c-m.com docket@c-m.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TONIA WALSTAD MILLER ____________ Appeal 2020-006333 Application 16/169,766 Technology Center 3600 ____________ Before MAHSHID D. SAADAT, CATHERINE SHIANG, and CARL L. SILVERMAN, Administrative Patent Judges. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1 and 2, which are all the claims pending and rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b). We reverse, and enter a new ground of rejection pursuant to our authority under 37 C.F.R. § 41.50(b). 1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Tonia Walstad Miller as the real party in interest. Appeal Br. 3. Appeal 2020-006333 Application 16/169,766 2 STATEMENT OF THE CASE Introduction The present invention relates “generally to furniture and, more specifically, to furniture which is capable of storing water or other material within its structure.” Spec. 1:14–15. In particular, the invention addresses the problem of providing storage space for emergency water supply: One problem that often arises in connection with creating an emergency water supply of sufficient capacity is inadequate storage space. For example, FEMA recommends storing at least a three-day emergency water supply which includes at least one gallon of water per person per day just for drinking. Following that recommendation with some additional allowance for unforeseen needs, a family of four persons would need to store at least 15 gallons of water. Further, the same family of four would need to store on the order of 35 gallons of water (e.g., 7 five-gallon containers) to be prepared for an emergency lasting about one week. Thus, storage of a reasonable emergency water supply for even a few people quickly translates into significant storage space. . . . In brief summary, the present invention provides a variety of furniture pieces in which water or other material may be stored. Id. at 1:23–2:5; 2:12–13. Claims 1 and 2 recite: 1. A table having integrated storage capacity comprising: [Limitation A] a frame; [Limitation B] a tabletop supported by said frame and having a port; and [Limitation C] an emergency water store including a liquid- tight bladder attached to said tabletop, disposed beneath said tabletop and configured for filling and drawing by way of said port, said emergency water store providing integrated long-term storage capacity for storing a supply of water that is intended for human Appeal 2020-006333 Application 16/169,766 3 consumption, wherein the table has a decorative outer surface and a design and appearance of common household furniture. 2. The table as in claim 1 wherein said liquid-tight bladder includes a valve for filling or drawing. References and Rejection2 Claims Rejected 35 U.S.C. § References 1 and 2 103(a) Molnar (US 6,298,866 B1, Oct. 9, 2001), Smith (US 4,838,613, June 13, 1989) RELATED APPLICATIONS This invention is related to the following applications: US Application No. 13/218,874; US Application No. 13/268,083; and US Application No. 14/224,720. ANALYSIS Obviousness3 We have reviewed the Examiner’s rejection in light of Appellant’s contentions and the evidence of record. We concur with Appellant’s contentions that the Examiner has not provided sufficient basis for finding the cited portions of Molnar teach “a table … comprising: … a tabletop … having a port,” as recited in claim 1. See Appeal Br. 8–9; Reply Br. 3–4. 2 Throughout this opinion, we refer to the (1) Final Office Action dated Aug. 5, 2019 (“Final Act.”); (2) Appeal Brief dated June 8, 2020 (“Appeal Br.”); (3) Examiner’s Answer dated July 9, 2020 (“Ans.”); and (4) Reply Brief dated Sept. 9, 2020 (“Reply Br.”). 3 Appellant raises additional arguments. Because the identified issue is dispositive of the appeal, we do not address the additional arguments. Appeal 2020-006333 Application 16/169,766 4 The Examiner cites Fig. 2 of Molnar for teaching the claimed “table,” and further cites element 134 and dispenser 140 for teaching the claimed “tabletop” and “port,” respectively. See Final Act. 2; Ans. 3. However, the Examiner has not provided sufficient evidence to show Figure 2 constitutes the claimed “table,” as one may argue that figure includes a table with an umbrella. Although the Examiner does not cite Figure 1 of Molnar, we leave it to the Examiner to determine whether that figure teaches “a table … comprising: … a tabletop … having a port,” as recited in claim 1. In particular, Figure 1 illustrates an integrated table with a tabletop 44 (the “tabletop”) having a hole (the “port”). See Molnar, Fig. 1. Because the Examiner has not provided sufficient evidence or explanation to support the rejection based on Figure 2 of Molnar, we are constrained by the record to reverse the Examiner’s rejection of independent claim 1. We also reverse the Examiner’s rejections of corresponding dependent claim 2. Appeal 2020-006333 Application 16/169,766 5 NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b) Pursuant to our authority under 37 C.F.R. § 41.50(b), we newly reject claims 1 and 2 under 35 U.S.C. § 103(a) as being unpatentable over the collective teachings and suggestions of Page (U.S. 3,007,756; Nov. 7, 1961) and Dovey (U.S. 2008/0128412 A1; Jun. 5, 2008). Legal Principles “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.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). “If a person of ordinary skill can implement a predictable variation [of the known work], § 103 likely bars its patentability.” KSR, 550 U.S. at 417. “For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” Id. The “analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” Id. at 421. Obviousness Analysis Claim 1 Page teaches the preamble “[a] table having integrated storage capacity” in at least Figures 5 and 6, each of which shows a table having an Appeal 2020-006333 Application 16/169,766 6 integrated keg 36 (“integrated storage capacity”). See Page Figs. 5–6; 1:12– 16, 25–29; 2:24–36; see also claims 1–3. Limitation A “a frame” is taught by Page’s legs 37. See Page Figs. 5– 6; 2:24–25 (“In FIGS. 5 and 6 there is disclosed a table of a different character having . . . legs 37”); see also claims 1–3. Limitation B “a tabletop supported by said frame and having a port” is taught by Page’s top 35, which is supported by legs 37 and has an opening 43. See Page Figs. 5–6; 2:24–25, 2:34 (“In FIGS. 5 and 6 there is disclosed a table of a different character having a top 35 . . . legs 37 . . . the table top having an opening 43”); see also claim 3. Among Limitation C, Page teaches “[a] . . . water store . . . attached to said tabletop, disposed beneath said tabletop.” Page’s keg 36 is attached to the underside of top 35 and is used to store liquids. See Page Figs. 5–6; 2:24–36. One skilled in the art would understand Page’s liquids include, or at least suggest, water. Further, Page’s keg 36 is “configured for filling and drawing by way of said port” and “providing integrated long-term storage capacity for storing a supply of water.” Because Page describes “the table top [35] having opening 43 through which . . . a measuring stick 44 extends into the keg 36 through the upper head 45 of the keg 36” (Page Figs. 5–6; 2:34–36), Page teaches, or at least suggests, configuring the keg 36 for filling and drawing by way of the opening 43. Because the “object of the invention is to provide furniture which . . . will serve multiple purposes including . . . a container . . . for liquids” (Page 1:25–28) and the liquid stored inside keg 36 is held there until it is ready for release, Page suggests using the keg 36 to “provid[e] integrated long-term storage capacity for storing a supply of” Appeal 2020-006333 Application 16/169,766 7 water. Alternatively, it would have been obvious for one skilled in the art to use Page’s keg 36 to provide integrated “long-term” storage capacity for storing a supply of liquids (such as water), because keg 36 has the capacity for storing liquids that are not ready to be consumed for a long time, and using the keg 36 for such purpose eliminates the need of using a separate container, which requires additional costs and space, for such long-term storage. Additionally, Page teaches or at least suggests “the table has a decorative outer surface and a design and appearance of common household furniture” because according to Page: This invention relates to furniture used within and around buildings of various kinds -including homes, offices, and other habitable quarters and particularly to the structural and ornamental features which contribute both to the appearance and utility of such furniture. The invention relates specifically to furniture . . . appropriate for use in den, trophy rooms, cellars, patios, camp cottages, swimming pools, and the like. Furnishings determine to a large degree, the nature of living quarters including the attractiveness and individuality thereof and they exert an influence upon the spirits and attitude of those present. It is an object of the invention to provide relatively simple, inexpensive, and sturdy furniture, of attractive and unusual appearance, and susceptible of use in various areas and locations both indoors and out. Another object of the invention is to provide furniture which can be easily produced, of readily available materials, and will serve multiple purposes including that of a support, a work Appeal 2020-006333 Application 16/169,766 8 surface, a container both for liquids or solids, and as a novel decorative article. A further object of the invention is to provide furniture susceptible of adjustment or slight modification for the adaptation of the same to the use for which it is to be employed, and in order that by such flexibility of design a maximum use and advantage to the owner can be obtained. Page 1:6–35 (emphases added). Turning to the secondary reference, Dovey describes: The present invention provides a knockdown storage vessel for liquids . . . . The liquids . . . are stored in a bladder that is encased in a . . . barrel[, such as a keg.] The bladder 110 includes a gland assembly 112 for filling and dispensing material from the bladder 110. The bladder of the disclosed storage vessel provides water-tight storage to retain liquids. Embodiments of the knockdown vessel have further utility for liquid . . . for emergency purposes and/or for use in remote or third-world locations, such as for water, . . . rice, flour, powdered milk, [which are items intended for human consumption.] Dovey ¶¶ 4, 6, 17, 32; Fig. 1. Therefore, Dovey teaches, or at least suggests, “an emergency water store including a liquid-tight bladder . . . said emergency water store . . . for storing a supply of water that is intended for human consumption,” as recited in claim 1. Further, because Dovey teaches storing water for emergency purposes and/or for use in remote or third-world locations (Dovey ¶ 32), Appeal 2020-006333 Application 16/169,766 9 Dovey teaches, or at least suggests, “said emergency water store providing integrated long-term storage capacity for storing a supply of water.” We note Dovey cumulatively teaches or suggests “[a] . . . water store . . . providing integrated long-term storage capacity for storing a supply of water,” as Page already teaches or suggests such claims elements (discussed above). We further note cumulatively, claim 1 recites a “table” product, and the claimed “emergency” recites how the water store is used. Therefore, the claimed “emergency” constitutes intended use, and “emergency water store” encompasses Page’s keg. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (“[i]t is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable”). One skilled in the art would have seen the benefit of modifying Page’s keg to include Dovey’s features of “an emergency water store . . . providing integrated long-term storage capacity for storing a supply of water that is intended for human consumption,” so that Page’s keg would have the benefit of storing and providing drinking water when such water becomes unavailable during earthquakes or natural disasters that may occur in the future. See KSR, 550 U.S. at 424 (“[t]he proper question to have asked was whether a . . . designer of ordinary skill . . . would have seen a benefit to upgrading Asano with a [feature from the secondary reference]”). Further, one skilled in the art would have seen the benefit of modifying Page’s keg to include Dovey’s feature of “a liquid-tight bladder,” in order to provide additional protection against accidental leak of liquid, easy access to the stored water by retrieving the bladder, and easy replacement of the Appeal 2020-006333 Application 16/169,766 10 bladder—instead of the keg—in the event of wear and tear from long-term use. Although it is not required, Dovey also provides additional support for our rationale to combine the teachings and suggestions of Page and Dovey. See Dovey ¶¶ 4, 6, 7, 17, 32–33, and 38. Claim 2 Claim 2 depends from claim 1 and further recites “wherein said liquid-tight bladder includes a valve for filling or drawing.” According to Dovey, an end section of the barrel includes a hole and the bladder includes a gland so as to allow filling and dispensing of material from the vessel. The bladder 110 includes a gland assembly 112 for filling and dispensing material from the bladder 110. An embodiment of the invention can use a tap assembly 610 for the dispensing of liquids, as illustrated in FIG. 6. As shown in the cross-section, the tap assembly includes a body 620, an air tube 630, a collar 640, and an actuator 650. In use, the collar 640 attaches to the gland of the bladder with a first set of threads and uses a pliable washer to seal the assembly. The body 620 of the tap assembly is threaded into a second set of threads on collar 640 and tightened by hand using bosses on the body 620. The body 620 has a liquid passage and an air passage that can be alternately opened and closed via rotation of actuator 650. Air tube 630 is connected to the air passage to extend the conduit further into the vessel. The internal bladder includes a gland that extends through an external barrel section and the gland is sealed by any known means . . . the gland can be sealed with a tap assembly or a cap. In another variation, the storable vessel components comprises Appeal 2020-006333 Application 16/169,766 11 a first end barrel section dimensioned to nest in a central barrel section and a second end barrel section dimensioned to nest in the first end barrel section. Dovey ¶¶ 8, 17, 23, 24; see also Dovey Figs. 1, 6. Because Dovey describes the bladder 110 including a gland assembly 112 for filling and dispensing material, such as water, from the bladder 110, Dovey teaches “said liquid-tight bladder includes a valve for filling or drawing,” as recited in dependent claim 2. One skilled in the art would have seen the benefit of modifying Page’s keg to include Dovey’s feature, in order to provide easy access to the stored water inside the bladder. Therefore, Page and Dovey collectively teach claim 2. Although it is not required, Dovey also provides additional support for our rationale to combine the teachings and suggestions of Page and Dovey. See Dovey ¶¶ 4, 8, 23, 38. Analogous Art “Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed [‘Field Test’] and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved [‘Problem Test’].” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citations omitted). Appeal 2020-006333 Application 16/169,766 12 (i) The Field Test To determine the invention’s field of endeavor, we consider the “explanations of the invention’s subject matter in the patent application, including the embodiments, function, and structure of the claimed invention.” In re Bigio, 381 F.3d at 1325 (citations omitted). According to the Specification, The present invention relates generally to furniture and, more specifically, to furniture which is capable of storing water or other material within its structure. In brief summary, the present invention provides a variety of furniture pieces in which water or other material may be stored. Spec. 1:14–15; 2:12–13. Exemplary, non-limiting embodiments of furniture include a table, a lamp with a liquid tight globe, and a sculpture. See Spec. Figs. 1–12B; 2:12–24; 2:27–4:2 (listing drawings of exemplary furniture pieces that are capable of storing water or other materials); 4:4–7:3 (describing drawings of exemplary furniture pieces that are capable of storing water or other materials). As a result, this invention is in the field of storing liquids or dry materials in furniture. We note “furniture” is a broad term and includes, but is not limited to, a sculpture. See Spec. 4:1–2 (“FIGS. 12A and 12B show a sculpture 1200 having integrated storage capacity for water or other material”) (emphasis added). Consistent with this invention, Page is in the field of storing liquids or dry materials in furniture. According to Page, this “invention relates to furniture . . . which contribute[s] . . . to the . . . utility of such furniture” and “multiple purposes including that of . . . a container both for liquids or Appeal 2020-006333 Application 16/169,766 13 solids.” Page 1:7–11, 1:27–29. Exemplary embodiments include tables with barrels or kegs, but the “invention is not limited by that which is illustrated in the drawing and described in the specification.” See Page 1:39–2:38; 2:45–47; Figs. 1–6. Turning to Dovey, the “invention relates to a knockdown storage vessel for liquids or dry goods.” Dovey ¶ 1. Exemplary, non-limiting embodiments include storage vessels, such as barrels. See, e.g., Spec. ¶¶ 4– 10; 17–28. Further, “the present invention may be embodied in other specific forms . . . and that the examples and embodiments described herein are in all respects illustrative and not restrictive. Those skilled in the art of the present invention will recognize that other embodiments using the concepts described herein are also possible.” Spec. ¶ 40. As discussed above, “furniture” is a broad term and includes, but is not limited to, a sculpture. Consistent with our interpretation, a relevant dictionary defines “furniture” as “equipment that is necessary or desirable.” The Merriam- Webster Dictionary 309 (1997). Because Dovey’s storage barrel is an equipment that is necessary or desirable, it constitutes furniture. As a result, Dovey is also in the field of storing liquids or dry materials in furniture. Because this invention, Page, and Dovey are all in the same field of storing liquids or dry materials in furniture, Page and Dovey are analogous art. (ii) The Problem Test As discussed above, this invention, Page, and Dovey are all in the same field of endeavor. Additionally, we also address the Problem Test, and as discussed below, Page and Dovey also qualify under that test. Appeal 2020-006333 Application 16/169,766 14 This invention addresses the problem of providing storage space for emergency water supply: One problem that often arises in connection with creating an emergency water supply of sufficient capacity is inadequate storage space. For example, FEMA recommends storing at least a three-day emergency water supply which includes at least one gallon of water per person per day just for drinking. Following that recommendation with some additional allowance for unforeseen needs, a family of four persons would need to store at least 15 gallons of water. Further, the same family of four would need to store on the order of 35 gallons of water (e.g., 7 five-gallon containers) to be prepared for an emergency lasting about one week. Thus, storage of a reasonable emergency water supply for even a few people quickly translates into significant storage space. . . . In brief summary, the present invention provides a variety of furniture pieces in which water or other material may be stored. Spec. 1:23–2:5; 2:12–13. Turning to Page, among other things, it addresses the problem of providing storage space for liquids (which may include water) and “maximizing use and advantage to the owner.” See, e.g., Page 1:25–35. Because such storage space can be used as storage for emergency water supply, which furthers the objective of “maximizing use and advantage to the owner” (Page 1:34), Page is reasonably pertinent to the problem of providing storage space for emergency water supply, and, therefore, is analogous art. Turning to Dovey, among other things, it addresses the problem of using a “knockdown vessel . . . for liquid . . . storage and . . . for emergency purposes and/or for use in remote or third-world locations, such as for water.” Dovey ¶ 32. Therefore, Dovey is reasonably pertinent to the Appeal 2020-006333 Application 16/169,766 15 problem of providing storage space for emergency water supply, and, therefore, is analogous art. CONCLUSION We reverse the Examiner’s decision rejecting claims 1 and 2 under 35 U.S.C. § 103(a). Pursuant to our authority under 37 C.F.R. § 41.50(b), we newly reject claims 1 and 2 under 35 U.S.C. § 103(a) as being unpatentable over the collective teachings and suggestions of Page and Dovey. TIME PERIOD This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b), which provides “[a] new ground of rejection . . . shall not be considered final for judicial review.” WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, Appellants must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection Appeal 2020-006333 Application 16/169,766 16 and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. 37 C.F.R. § 41.50(b). Further guidance on responding to a new ground of rejection is also in the Manual of Patent Examining Procedure § 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 41.50(f). Appeal 2020-006333 Application 16/169,766 17 In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1, 2 103(a) Molnar, Smith 1, 2 1, 2 103(a) Page, Dovey (new ground of rejection) 1, 2 Overall Outcome 1, 2 1, 2 REVERSED; 37 C.F.R. § 41.50(b)