Ex Parte Finney

Patent Trial and Appeal Board

Apr 2, 2018

13904268 (P.T.A.B. Apr. 2, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/904,268 05/29/2013
26875 7590 04/04/2018
WOOD, HERRON & EV ANS, LLP
2700 CAREW TOWER
441 VINE STREET
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Claudia Finney
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.
FINE-02US 3019
EXAMINER
LYNCH, ROBERT A
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
04/04/2018 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):
usptodock@whe-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CLAUDIA FINNEY
Appeal2017-001853
Application 13/904,268
Technology Center 3700
Before JEFFREY N. FRED MAN, ELIZABETH A. LA VIER, and
RYAN H. FLAX, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134 involving claims to a multi-
pack of liquid-containing pacifiers. The Examiner rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.
Statement of the Case
Background
"Traditionally, pacifiers, also known as binkies, solely serve a
soothing function for babies. In order to deliver liquids to a baby, a separate
bottle is used" (Spec. 1 ). "[M]any liquid-containing pacifiers are designed
to be filled by the user and to be reused multiple times. Having to refill a
1 Appellant identifies the Real Party in Interest as the inventor, Claudia
Finney (see App. Br. 4).
Appeal2017-001853
Application 13/904,268
pacifier may be inconvenient and/or unsanitary. Moreover, because current
liquid-containing pacifiers are intended to be reusable, they are sold as
individual units" (id.).
The "invention of this application comprises a disposable, liquid-
containing pacifier. The pacifier includes a bulb that is sold pre-filled with
liquid ... The one-time use, disposable nature of the pacifier is convenient
and sanitary. The pacifier may be sold in a multi-pack" (Spec. 2).
The Claims
Claims 1-11 and 13-20 are on appeal. Claim 9 is representative and
reads as follows:
9. A multi-pack of liquid-containing pacifiers, the multi-
pack comprising:
a plurality of pacifiers, each pacifier being intended for a
single use and comprising:
a bulb containing liquid;
a nipple coupled to a proximal end of the bulb, the nipple
having an aperture located at a proximal end thereof;
a guard positioned intermediate the bulb and the nipple;
and
a valve coupled to a proximal end of the bulb, the valve
defining open and closed positions, wherein the valve is
configured to move to the open position when a pressure is
applied to at least one of the nipple and bulb, so as to allow at
least a portion of the liquid to flow from the bulb to the nipple;
flexible packaging surrounding each pacifier to create an
individually-wrapped unit, the flexible packaging being capable
of deforming to the shape of the pacifier; and
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Application 13/904,268
an outer package surrounding multiple individually-
wrapped units.
The Issues
A. The Examiner rejected claims 9-11 and 13-20 under 35 U.S.C.
§ 103(a) as obvious over Crowe,2 Yancy, 3 and Yelton4 (Final Act. 4--8).
B. The Examiner rejected claims 1-8 under 35 U.S.C. § 103(a) as
obvious over Crowe, Yancy, Yelton, and Zade5 (Final Act. 4--8).
A. 35 US.C. § 103(a) over Crowe, Yancy, and Yelton
The Examiner finds Crowe teaches pacifiers "comprising a bulb (26)
containing liquid ... a nipple (18) ... having an aperture (24) located at a
proximal end thereof; a guard (12) positioned intermediate the bulb (26) and
the nipple ( 18)" (Final Act. 4 ). The Examiner finds Crowe teaches "a valve
(39) coupled to a proximal end of the bulb" where the "valve is configured
to move to the open position when a pressure is applied to at least one of the
nipple and bulb ... so as to allow at least a portion of the liquid to flow from
the bulb to the nipple" (Final Act. 4).
The Examiner acknowledges that "Crowe fails to teach flexible
packaging surrounding individually wrapped pacifier units" and "outer
packaging [that] surrounds rows and columns of a plurality of individually
wrapped pacifier units" (Final Act. 6).
2 Crowe et al., US 5,772,685, issued June 30, 1998.
3 Yancy, US 2004/0044367 Al, published Mar. 4, 2004.
4 Yelton et al., US 6,209,786 Bl, issued Apr. 3, 2001.
5 Zade, US 5,366,481, issued Nov. 22, 1994.
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Application 13/904,268
The Examiner finds Yancey teaches "individually wrapped pacifier
units" with "flexible packaging (124/140) [that] is capable of conforming
and/or deforming to the shape of the pacifier" (Final Act. 6). The Examiner
finds Yelton teaches "outer packaging ( 6) surrounds rows and columns of a
plurality of individually wrapped product units" (Final Act. 7).
The Examiner finds it obvious to use Yancey's flexible pacifier
packaging for Crowe's pacifiers "in order to beneficially provide for a
sterilization-maintaining barrier prior to use of the pacifier" (Final Act. 7)
and obvious to use Yelton's outer packaging "to beneficially provide for a
container for shipping, display, and subsequent removal of a plurality of
individually wrapped consumer products" (Final Act. 8).
The issue with respect to obviousness is: Does the evidence of record
support the Examiner's conclusion that Crow, Yancy, and Yelton render the
claims obvious?
Findings of Fact
1. Figure 1 of Crowe is reproduced below:
FIG. t
"FIG. 1 is a transverse cross-sectional view of a unitary nipple-bulb
dispenser embodiment of the present unit employing a reusable valve
means" (Crowe 2:50-52).
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Application 13/904,268
2. Crowe teaches a
bulb means 26 having an outlet end 28 mounted on said stop
member and adapted to communicate with said inlet end 20 of
said nipple means for allowing a pressurized flow of fluid 30,
i.e., liquid or air, from said bulb means to said nipple means
upon compression of said bulb means.
(Crowe 3:37--41).
3. Crowe teaches a guard, specifically "body or stop means 12
rests on the infants lips as it sucks the pacifier nipple and ingests the
medicine" (Crowe 4: 11-12).
4. Crowe teaches an embodiment where the "bulb means is
provided as a separate element of the unit and may be merchandised, e.g., as
a prefilled item packaged in a clear plastic, antiseptically sealed blister-type
package" (Crowe 4:47--49).
5. Yancy teaches "a ready-to-use, single-use pacification device
for safe and convenient oral delivery of sweeteners to infant or juvenile
recipients" (Yancy i-f 3).
6. Yancy teaches
pacifier 12 is either manufactured and packaged in an envelope
128 of a packaging material 124 providing a sterilization-
maintaining barrier for package 140 which is provided with pre-
cut tear notches 39 to facilitate user breach of the package and
removal of the ready-to-use sensory diversion device
immediately prior to use.
(Yancy i-f 22).
7. Yancy teaches: "Preferably, packaging material 28 is a flexible,
transparent polymeric material ... which the user can manipulate and
deform" (Yancy i-f 23).
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Application 13/904,268
8. Yelton teaches "containers which may be used for shipping a
plurality of products and optionally converted to an open container suitable
to display the products for individual use" (Yelton 1 :5-8).
9. Yelton teaches "a plurality of products 21 inside of the
container. ... the products 21 preferably fit into the interior of the container
6 in orderly fashion" and the containers "are particularly suitable for
containing a plurality of products which may themselves be containers
of individual products" (Yelton 5:30-45).
Principles of Law
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Analysis
We adopt the Examiner's findings of fact and reasoning regarding the
scope and content of the prior art (Final Act. 4--8; FF 1-9) and agree with
the conclusion that the claims are obvious over Crowe, Yancy, and Yelton.
We address Appellant's arguments below.
Claims 9 and 13
Appellant contends "Claim 13 recites 'a plurality of disposable
pacifiers, each pacifier being intended for a single use.' . . . The Examiner
alleges that 'the statement of intended use and other functional statements
... do not impose any structural limitations on the claims distinguishable
over Crowe. Appellant respectfully disagrees" (App. Br. 13). Appellant
contends the "additional structure [in Crowe] increases the complexity of the
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Application 13/904,268
pacifier and increases the risk of leakage, both of which are undesirable"
(id.).
We find this argument unpersuasive. Here, claims 9 and 13 expressly
identify "single use" requirement as "intended" (see App. Br. 19--20, claims
9, 13). It 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." In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997); see also In re Zierden, 411
F.2d 1325, 1328 (CCPA 1969) ("A mere statement of a new use for an
otherwise old or obvious composition cannot render a claim to the
composition patentable.").
Neither claim 9 nor 13 recites any language that excludes separate
pre filled pacifier bulbs as disclosed by Crowe (FF 4) or otherwise imposes a
structural limitation that distinguishes the claimed pacifiers from the obvious
combination of Crowe, Yancy, and Yelton. We agree with the Examiner
that Crowe' s pacifiers include bulbs containing liquid (FF 4 ), nipples (FF 1 ),
a guard between the bulb and nipple (FF 1, 3), and a valve that operates to
open when pressure is applied to allow liquid flow (FF 2).
We further agree with the Examiner that it would have been obvious
to individually package Crowe' s pacifiers in single use packaging for sale
"for safe and convenient oral delivery of sweeteners to infant or juvenile
recipients" as disclosed by Yancy (FF 5) that are sterilized for individual
protection (FF 6).
Appellants contend "the art of record provides no evidence that
providing a readily open able shipping and display container of Yelton
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Application 13/904,268
would be useful to the infant pacifier-fluid administering unit of the
modified Crowe" (App. Br. 13).
We are not persuaded. We agree with the Examiner that packaging
the individually wrapped units of Crowe and Yancy into a larger outer
package with multiple units would have been obvious as demonstrated by
Yelton' s teaching of packaging containers that "are particularly suitable for
containing a plurality of products which may themselves be containers of
individual products" (FF 9) in order to allow a package for both shipment
and sale (FF 8). That is, the advantage would be easier shipment to a
merchant and easier display of the product within the merchant's place of
business.
Claim 17
Appellant contends:
Advantages of the bulb having at least one generally planar
surface are specifically stated in paragraph [0015] of
Appellant's application. For example, "the bulb 12 of the
pacifier 10 serves at least two purposes: containing liquid
therein for the child 5 to consume and providing a handle for
the child 5 or care giver to grasp." Appellant's application,
paragraph [0015]. Further, "at least one of the planar surfaces
20, 21 may have a design 24 thereon." Appellant's application,
paragraph [0016]. Having at least one planar surface allows for
the design to be more easily applied through a variety of
application processes. Such a benefit went unrecognized in
Crowe.
(App. Br. 15).
The Examiner responds
such benefits are provided by all shapes of pacifier bulbs or
other infant liquid receptacles. Any shape bulb may contain
liquid, provide a grasping surface and have a design included
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Application 13/904,268
thereon. As previously stated, Appellant has not disclosed that
such a specific structure solves any stated problem or is
anything more than one of numerous shapes or configurations a
person ordinary skill in the art would find obvious for the
purpose of providing a compressible reservoir for retaining
fluid.
(Ans. 8-9).
We find the Examiner has the better position. We agree with the
Examiner that the particular arrangement of a pacifier bulb with a "generally
planar surface" as recited in claim 17 was "a design choice and provide[ s]
the same functionality," In re Magna Electronics, Inc., 611 Fed. App'x 969,
972, 974 (Fed. Cir. 2015) (non-precedential), as the prior art .. Indeed, the
Specification itself states the "the bulb 12 may comprise any of variety of
shapes and/or sizes" (Spec. 3), recognizing the equivalence of different
shapes and sizes. We are not persuaded that Appellant has established, with
evidence, that selection of a "planar surface" makes the pacifier easier to
grasp or more easily allows a design to be applied. See In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984) (explaining that arguments and
conclusions unsupported by factual evidence carry no evidentiary weight).
Claim 18
Appellant contends "claim 18 recites that 'the bulb has a design
integrally formed thereon.' Appellant asserts that the spherical shape of
bulb means 26 does not allow for 'the bulb [to have] a design integrally
formed thereon' as presently recited in claim 18" (App. Br. 16; footnote
omitted).
The Examiner responds "designs or indicia (e.g. animals) integrally
formed on the outside surface of the bulb (e.g. stamped, drawn, or the like)
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are matters relating to ornamentation which have no mechanical functional
relationship and cannot be relied upon to patentably distinguish the claimed
invention from the prior art" (Ans. 9). The Examiner also finds it "is
considered well-known for designs or indicia to be placed on curved and/or
spherical shaped portions of pacifiers" (id.).
We find the Examiner has the better position. Claim 18 requires a
"design integrally formed" on the bulb of the pacifier. "Where the printed
matter is not functionally related to the substrate, the printed matter will not
distinguish the invention from the prior art in terms of patentability." In re
Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983). Here, Appellants provide no
evidence that the design formed on the bulb performs a function, but rather
serves as decoration (see Spec. 3 "the design 24 is a picture of a cow").
Therefore, the design is "printed matter [that] in no way depends on the kit,
and the kit does not depend on the printed matter." In re Ngai, 367 F.3d
1336, 1339 (Fed. Cir. 2004).
To the extent that Appellant is arguing the prior art is not enabled to
form such a design integrally on a spherical shape, this represents attorney
argument without any supporting evidence, and we are not persuaded. See
In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument in
a brief cannot take the place of evidence."); see also De Blauwe, 736 F.2d at
705.
Conclusion of Law
The evidence of record supports the Examiner's conclusion that Crow,
Yancy, and Yelton render the rejected claims obvious.
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B. 35 US.C. § 103(a) over Crowe, Yancy, Yelton, and Zade
The Examiner relies upon Crowe, Yancy, and Yelton to suggest a
"pacifier fluid administering unit comprising all the limitations of the claim
except for each pacifier having a generally planar retaining member
removable from the pacifier" (Final Act. 8).
The Examiner finds Zade teaches "a retractable pacifier (2)
comprising a generally planar retaining member ( 6) removable from the
pacifier" (Final Act. 8).
The Examiner finds the use of a removable retaining member obvious
in order "to beneficially allow for each pacifier to be moved between a
sucking position that allows for easy extension of the nipple for suckling by
an infant and a protected storage position that keeps the nipple free from
dirt, germs and other contamination, as taught by Zade" (Final Act. 9).
The issue with respect to obviousness is: Does the evidence of record
support the Examiner's conclusion that Crow, Yancy, Yelton, and Zade
render claim 1 obvious?
Findings of Fact
10. Figures 2 and 3 of Zade are reproduced below:
FIG.2
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"FIG. 2 is a perspective view of the assembled device with the nipple
extending from the shield and storage cylinder. FIG. 3 is a perspective view
of the assembled device with the nipple retracted within the protective shield
and storage container" (Zade 3:60-65).
11. Zade teaches the "shield is fixed to the outer end of the
cylindrical structure and has two holes at each side of the shield" (Zade
3:21-22).
12. Zade teaches the "nipple is fixed permanently and locked,
which can't come out front the shield to go to the baby's throat to cause
asphyxia" (Zade 3 :32-35).
Principles of Law
"The protocol of giving claims their broadest reasonable interpretation
during examination does not include giving claims a legally incorrect
interpretation. This protocol is solely an examination expedient, not a rule
of claim construction." In re Skvorecz, 580 F.3d 1262, 1267 (Fed. Cir.
2009).
Analysis
Appellants contend
contrary to the Examiner's interpretation of Zade, the pacifier is
bound on a first end by the nipple shield 6, on a second end by
the circular member 26, and on the sides by the cylindrical
container 4. Therefore, Zade (like the other cited references)
also fails to teach or suggest that "for each pacifier, a generally
planar, retaining member removable from the pacifier" as
presently recited in claim 1.
(App. Br. 10).
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The Examiner responds "the cross hatch patterns of the shield 6 and
cylindrical container 4 to be generally perpendicular to each other providing
two separate pieces" (Ans. 23). The Examiner contends "the general
definition of 'fixed' is 'placed or attached in a way that does not move
easily' (see http://www.merriam-webster.com/dictionary/fixed). Thus, a
fixed connection remains moveable/removable (as shown in Figs. 3 and 5)
and is not a permanent connection" (Ans. 3).
We find Appellants have the better position. Zade teaches the "nipple
is fixed permanently" (FF 12), and the reasonable interpretation of such
permanent fixation is that shield cannot be removed. We also agree with
Appellants that Zade would not provide a reason to make the shield
removable because that could cause asphyxia (FF 12; cf App. Br. 9). 6
Conclusion of Law
The evidence of record does not support the Examiner's conclusion
that Crow, Yancy, Yelton, and Zade render claim 1 obvious.
SUMMARY
In summary, we affirm the rejection of claims 9, 1 7, and 18 under 3 5
U.S.C. § 103(a) as obvious over Crowe, Yancy, and Yelton. Claims 10, 11,
13-16, 19, and 20 fall with claims 1, 17, and 18.
6 We are uncertain as to why the Examiner focused on the shield as the
removable element because the removable retaining member in the
Specification encompasses "a sheet of cardboard or plastic" into which the
nipple is inserted (see Spec. 5), reasonably encompassing packaging
materials for the pacifiers.
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We reverse the rejection of claims 1-8 under 35 U.S.C. § 103(a) as
obvious over Crowe, Yancy, Yelton, and Zade.
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-IN-PART
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