Ex Parte DiBiasio

Patent Trial and Appeal BoardAug 27, 2018

14527051 (P.T.A.B. Aug. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/527,051 10/29/2014 22922 7590 08/29/2018 REINHART BOERNER VAN DEUREN S.C. ATTN: TRAVIS MCDONNELL, PARALEGAL IOOONORTHWATER STREET SUITE 2100 MILWAUKEE, WI 53202 FIRST NAMED INVENTOR Sergio DiBiasio 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 086567-0397 7130 EXAMINER CASTRIOTTA, JENNIFER ART UNIT PAPER NUMBER 3781 NOTIFICATION DATE DELIVERY MODE 08/29/2018 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): IP Admin@reinhartlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SERGIO DIBIASIO Appeal2017-009922 Application 14/527 ,051 1 Technology Center 3700 Before LINDA E. HORNER, ERIC C. JESCHKE, and ANTHONY KNIGHT, Administrative Patent Judges. KNIGHT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. Â§ 134(a) from a rejection of claims 1-3, 6-10, and 12-14, the remaining pending claims. 2 We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. 1 According to Appellant, the real party in interest is Silgan Plastics LLC, who is also the applicant under 37 C.F.R. Â§ 1.46. Appeal Br. 2. 2 Claims 4, 5, 11, and 15-21 were cancelled. Id. at 15-16 (Claims App'x). Appeal2017-009922 Application 14/527 ,051 CLAIMED SUBJECT MATTER The invention is directed to a dual chamber container having a separation between the chambers that extends from the bottom of the container to the top of the sealing surface of the single neck. Spec. ,r 1. Claims 1 and 9 are the sole independent claims. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A multiple-chamber container comprising: a first tapered neck portion; a first chamber including a first bottom wall and a first side wall formed with the first bottom wall and terminating at the first tapered neck portion which defines a first opening into the first chamber; a second tapered neck portion; a second chamber including a second bottom wall substantially coplanar with the first bottom wall and a second side wall formed with the second bottom wall and terminating at the second tapered neck portion which defines a second opening into the second chamber, each neck portion including a semi- circular shaped external surface having an external thread; a hollow cylindrical collar having a circular cross-section defining a substantially circular opening; and a transition portion which provides a content-tight junction between the first and second neck portions and the hollow cylindrical collar such that any content passing between either chamber and the circular opening must pass through the hollow cylindrical collar. Appeal Br. 15 (Claims App'x). REJECTIONS The Examiner made the following rejections: I. Claims 1-3 and 6-8 stand rejected under 35 U.S.C. Â§ 103 as being unpatentable over Murray et al. (US 2002/0074347 Al, published June 20, 2 Appeal2017-009922 Application 14/527 ,051 2002) ("Murray") and Berger et al. (US 5,954,224, issued Sept. 21, 1999) ("Berger"). II. Claims 9, 10, and 12-14 stand rejected under 35 U.S.C. Â§ 103 as being unpatentable over Murray, Berger, and Bettle, III et al. (US 4,894,267, issued Jan. 16, 1990) ("Bettle"). OPINION Rejection I-The rejection of claims 1-3 and 6-8 under 35 US.C. Â§ 103 over Murray and Berger The Examiner finds that Murray discloses a multiple-chamber container including, inter alia, first and second chambers and externally threaded first and second tapered neck portions, with each tapered neck portion having a semi-circular shape. Final Act. 3--4. The Examiner finds that Murray does not disclose a hollow cylindrical collar having a circular cross-section and a transition portion that provides a content-tight junction. Id. at 5. The Examiner relies upon Berger Figures 1 and 2 to teach a collar and a transition portion. Id. at 5---6. Below is a copy of Berger, Figures 1 and 2, as annotated by the Examiner. 3 Appeal2017-009922 Application 14/527 ,051 10"Â·''""""'~: <Â· Â·~: :::: , Berger's Figure 1 above illustrates a single-chambered tubular container having a circular cross-section, and Figure 2 illustrates a dual- chambered tubular container. Berger 3 :27-31. As annotated, the Examiner's copy of Berger's Figure 1 includes an identified transition portion and a collar, as indicated above. The Examiner determines that it would have been obvious to a person having ordinary skill in the art at the time of the invention to modify Murray with the teachings of Berger to include a spout for more accurate pouring. Id. at 6. Appellant argues that Berger does not cure the deficiencies of Murray because Berger fails to teach a multi-chamber container having a hollow collar and a transition portion. Appeal Br. 7, 9. Appellant argues that it is not apparent where Berger teaches an increase in dispensing accuracy. See Reply Br. 5. Appellant also contends that there is a lack of an explanation as 4 Appeal2017-009922 Application 14/527 ,051 to how or why the transition portion and collar of Berger would result in an increase in dispensing accuracy. Id. Thus, Appellant argues that Berger fails to provide one skilled in the art with sufficient motivation to combine Berger and Murray. Id. Appellant contends that "the Examiner has failed to provide any rational underpinning as to why one would modify Murray et al. with Berger et al. given that Murray et al. already discloses the use of a spout to facilitate pouring." Appeal Br. 11. In addressing the reasoning for combining Murray and Berger, the Examiner refers to Murray as teaching "it is known that it is desirable to accurately dispense the compositions from a dual chamber compartment." Ans. 5 (citing Murray ,r,r 58-59). Thus, according to the Examiner, "[t]he incorporation of the teachings of the transition portion and hollow collar being attached directly to the neck of the container, as taught by Berger et al., further increases this accuracy." Id. We are not persuaded that the Examiner's analysis is sufficiently detailed and complete to support a conclusion that the claimed subject matter would have been obvious. Claim 1 recites a multiple-chambered container having a hollow collar with a circular cross-section and circular opening, as well as a transition portion between the first and second neck portions and the hollow collar. Appeal Br. 15 (Claims App'x). The Examiner's reasoning for modifying Murray is faulty in that the Examiner proposes that one of ordinary skill in the art would have modified Murray to include a spout for more accurate pouring. Final Act. 6. However, as Appellant points out, Murray already discloses the use of a spout in combination with other features to facilitate accurate pouring. See Appeal Br. 11 ("Specifically, Murray et al. teaches in FIGS. 5A-9B and in 5 Appeal2017-009922 Application 14/527 ,051 paragraphs [0042] and [0056]-[0059] various spout features that may be incorporated into the multi-chamber container to facilitate more accurate dispensing."). See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007) (quoting with approval In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)) ("[R ]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness."). Here, the Examiner's reasoning for combining Murray with Berger falls short because Murray already discloses the use of a spout in combination with other container features for accuracy, the exact same reason as offered by the Examiner. In this instance, the Examiner's reasoning for the combination lacks rational underpinning because the Examiner has not explained why Berger's spout is more accurate than Murray's spout. In view of the foregoing discussion, we do not sustain the Examiner's unpatentability rejection of claim 1 and its dependent claims 2, 3, and 6-8. Rejection II-The rejection of claims 9, 10, and 12-14 under 35 US.C. Â§ 103 over Murray, Berger, and Bettle Independent claim 9 contains limitations similar to claim 1. Compare Appeal Br. 15 (Claims App'x), with id. at 16. Claims 10 and 12-14 depend from claim 9. Id. at 16 (Claims App'x). The Examiner relies on the same deficient findings and reasoning based on Murray and Berger discussed above, regarding claim 1 (see supra the rejection of claim 1 ). Bettle does 6 Appeal2017-009922 Application 14/527 ,051 not cure the deficiencies. Thus, for the same reasons discussed above, we do not sustain the rejection of claims 9, 10, and 12-14. DECISION For the above reasons, the Examiner's rejection of claims 1-3, 6-10, and 12-14 is reversed. REVERSED 7