Classic Brands, LLC

Patent Trials and Appeals BoardDec 16, 2021

2021003315 (P.T.A.B. Dec. 16, 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. 14/531,925 11/03/2014 Robert W. Donegan 068164-474582 9014 24030 7590 12/16/2021 POLSINELLI PC PO Box 140310 KANSAS CITY, MO 64114-0310 EXAMINER TOPOLSKI, MAGDALENA ART UNIT PAPER NUMBER 3619 NOTIFICATION DATE DELIVERY MODE 12/16/2021 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): uspt@polsinelli.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT W. DONEGAN, BRYAN KRUEGER, and JOHN BRUNO Appeal 2021-003315 Application 14/531,925 Technology Center 3600 Before EDWARD A. BROWN, MICHAEL L. HOELTER, and BENJAMIN D. M. WOOD, Administrative Patent Judges. WOOD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 18–38. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to the applicant as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Classic Brands, LLC. Appeal Br. 3. Appeal 2021-003315 Application 14/531,925 2 CLAIMED SUBJECT MATTER The claims are directed to a bird feeder and hanger assembly. Claim 18, reproduced below, is illustrative of the claimed subject matter: 18. A bird feeder comprising: a reservoir configured to hold bird nectar, the reservoir having a mouth disposed opposite a planar surface with no openings, the mouth having an opening configured to dispense the nectar from the reservoir into a basin assembly, the reservoir invertable [sic2] from an upright orientation into an inverted orientation with the planar surface configured to contact a flat surface and the mouth disengaged from the basin assembly; and a hanger assembly having a reservoir engaging portion configured to engage a connecting portion of the reservoir near the planar surface by sliding the reservoir engaging portion over the reservoir from the mouth towards the planar surface until engaging the connecting portion of the reservoir, the reservoir engaging portion engaged to the connecting portion such that a first connector engaged to a second connector are disposed distal to the planar surface and a hanger is configured to pivot to a folded position with no portion of the hanger assembly protruding past the planar surface when the reservoir is in the inverted orientation. REFERENCES Name Reference Date Curts US 6,659,041 B1 Dec. 9, 2003 Muhr US D698,100 S Jan. 21, 2014 2 Our understanding is that the proper spelling for this term is “invertible.” https://www.dictionary.com/browse/invertible (last visited Dec. 1, 2021). For simplicity, we conform to the spelling used in the claims. Appeal 2021-003315 Application 14/531,925 3 REJECTIONS Claims Rejected 35 U.S.C. § References 18, 20–25, 32–34, 36– 38 102 Curts 18–38 103 Curts, Muhr OPINION Claims 18, 20–25, 32–34, 36–38—§ 102—Curts Independent claim 18 requires the reservoir to be “invertable” from an “upright” orientation into an “inverted” orientation, the planar surface configured to contact a flat surface while in the inverted orientation. Appeal Br., Claims App. i. Independent claim 32 contains a substantially identical limitation. Id. at iii. An “upright” orientation means the reservoir is oriented vertically. See https://www.dictionary.com/browse/upright (last visited Dec. 1, 2021). To “invert” means to “turn upside down” or “reverse in position.” https://www.dictionary.com/browse/invert (last visited Dec. 1, 2021). Thus, turning a vertically oriented reservoir upside down results in the reservoir still being vertically oriented, but with the top and bottom ends reversed in position. In other words, in the inverted orientation the reservoir must also be vertically oriented. The Examiner did not expressly find that any of the planar surfaces on Curts’ reservoir that the Examiner finds correspond to the claimed planar surface “contact[s] a flat surface” while the reservoir is in a vertical orientation. Instead, the Examiner’s finding that Curts’ reservoir discloses this limitation is based on the reservoir being oriented at an angle from vertical, presumably so the flat surface “L” against which the planar surface contacts is horizontal. See Final Act. 36 Appeal 2021-003315 Application 14/531,925 4 (Examiner’s modified version of Curts’ Figure 3 showing the reservoir at an angled orientation rather than a vertical orientation); Ans. 6 (same). “Anticipation requires the presence in a single prior art reference disclosure of each and every element of the claimed invention, arranged as in the claim.” Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984). Because the Examiner has not found that Curts discloses every element of independent claims 18 and 32, arranged as in these claims, we do not sustain the Examiner’s rejection of claims 18 and 32, as well as dependent claims 20–25, 33, 34, and 36–38, as anticipated by Curts. Claims 18–38—§ 103—Curts and Muhr Appellant raises the same arguments for each of independent claims 18, 26, and 32, and does not separately argue the patentability of dependent claims 19–25 and 27–31. Appeal Br. 13–21. We select claim 18 as representative of claims 18–38, and decide the appeal of this rejection on the basis of claim 18 alone. The Examiner relies on Curts to teach the bird feeder substantially as claimed, but finds, in the alternative, that Muhr teaches the claimed planar surface configured to contact a flat surface, and also teaches the claimed hanger assembly comprising a hanger configured to pivot to a folded position with no portion of the hanger assembly protruding past the planar surface when the reservoir is in the inverted orientation. Final Act. 10–14, 31 (citing Curts, 4:55–65, 6:60–62, Figs. 2, 2a, 3, 11); Muhr, Figs. 1–5. In relying on Muhr, the Examiner provides an annotated version of Figure 1 of Muhr in which reference numbers are assigned to the various components on Appeal 2021-003315 Application 14/531,925 5 which the Examiner relies. The Examiner’s annotated version of Muhr Figure 1 is reproduced below: As illustrated in the Examiner’s annotated version of Muhr’s Figure 1, reproduced above, the Examiner assigns reference number 1 to Muhr’s reservoir; reference number 3 to the planar surface, reference number 6 to the reservoir engaging portion, reference numbers 8 and 9 to first and second connectors, and reference number 10 to the hanger. Id. at 12–13, 18–19. The Examiner determines that it would have been obvious to one of ordinary skill in the art “to have provided the reservoir shape as taught by Curts as having a singular planar surface configuration as taught by Muhr et al in order to provide a stable surface onto which the reservoir may be inverted during filling without fear of tipping over during the filling process.” Appellant first argues that when Curts’ reservoir 14 is in an inverted orientation, “[t]he only portion of the container 14 of Curts that could Appeal 2021-003315 Application 14/531,925 6 possibly contact a flat surface in an inverted orientation would be the point, which is not a planar surface, such that Curts is not capable of the claimed features.” Appeal Br. 14–15. This argument is not persuasive. As indicated above, the Examiner relies on Muhr, at least in the alternative, to teach the claimed planar surface configured to contact a flat surface when the reservoir is in an inverted orientation. Final Act. 12–14. Appellant further contends that Muhr does not teach the planar- surface limitation. Appeal Br. 15. Appellant asserts that “Muhr is a design patent,” and only depicts its bird feeder in an upright position, with “no teaching of an inverted orientation.” Id. According to Appellant, “even if one were to unilaterally decide to invert the bird feeder of Muhr, in that orientation, the most distal portion of the bird feeder would be the peak of the hanger,” which would prevent Muhr’s planar surface from contacting a flat surface. Id. The Examiner responds that one of ordinary skill in the art would have known to invert Muhr’s reservoir to facilitate filling it, and that Muhr’s hanger is capable of pivoting to a folded position. Ans. 11–13. Appellant’s argument is unpersuasive. A design patent can be relied on as a prior-art reference in an obviousness rejection under 35 U.S.C. § 103. In re Aslanian, 590 F.2d 911, 914 (CCPA 1979). Further, a design patent is not strictly limited to what is shown in the drawings, but may be considered for what it “teaches or fairly suggests to one skilled in the art,” and “may inherently teach functional features.” Id. In this case, we agree with the Examiner that Muhr at least “fairly suggests” to one of ordinary skill in the art that the container of its bird feeder may be inverted, particularly to fill the container. Figure 1 depicts a “hummingbird feeder” (Muhr, Description), and Appellant acknowledges that it was known in the Appeal 2021-003315 Application 14/531,925 7 art to invert the reservoir of a bird feeder such as a hummingbird feeder to fill it with nectar. See Reply Br. 14 (stating that “the state of the art prior to the presently disclosed technology . . . involved a user holding a bottle in an inverted position with one hand while attempting to pour the nectar into the opening of the bottle with the other hand”). Figure 1 of Muhr also fairly suggests that the hanger of the hummingbird feeder may be pivoted to a folded position so that the planar surface of the container can contact a flat surface. As the Examiner explains, Muhr’s hanger structure comprises “two loops of wire loosely looped together,” and “[a]nyone seeing such a construction [knows] the handle is capable of pivoting.” Ans. 13. It is evident from Figure 1 of Muhr that when hanger 10 is pivoted downward (or upward if the embodiment shown in Figure 1 is inverted), hanger 10 and connectors 8 and 9 would not protrude past the planar surface when the reservoir is inverted, as claim 18 requires. Appellant also argues that the Examiner’s reason to combine lacks a “rational underpinning that may be gleaned from the cited references that renders the claims obvious without resorting to improper hindsight bias.” Appeal Br. 14. We disagree. “Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant's disclosure, such a reconstruction is proper.” In re McLaughlin, 443 F.2d 1392 (CCPA 1971). The Examiner’s reason to combine relies on the Muhr’s “stable surface onto which the reservoir may be inverted” to underpin the reason to combine, and thus does Appeal 2021-003315 Application 14/531,925 8 not include knowledge gleaned only from Appellant’s disclosure. Final Act. 14. Because we are not persuaded that the Examiner erred in rejecting claim 18, we sustain the Examiner’s rejection of claims 18–38 as unpatentable over Curts and Muhr. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 18, 20–25, 32–34, 36– 38 102 Curts 18, 20–25, 32–34, 36– 38 18–38 103 Curts, Muhr 18–38 Overall Outcome 18–38 TIME PERIOD FOR RESPONSE 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)(1)(iv). AFFIRMED