Ex Parte Ito

Patent Trial and Appeal Board

Mar 10, 2017

13168862 (P.T.A.B. Mar. 10, 2017)

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.
13/168,862 06/24/2011 Russ Ito 377739-991100 1867
26379 7590
DLA PIPER LLP (US )
2000 UNIVERSITY AVENUE
EAST PALO ALTO, CA 94303-2248
EXAMINER
NICOLAS, FREDERICK C
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
03/14/2017 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):
PatentDocketingU S -Palo Alto @ dlapiper. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RUSS ITO
Appeal 2014-006381
Application 13/168,862
Technology Center 3700
Before CYNTHIA L. MURPHY, BRUCE T. WIEDER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’s
rejections of claims 1—20. We have jurisdiction over this appeal under
35 U.S.C. § 6(b).
We AFFIRM IN PART.
1 The Appellant identifies the real party in interest as “RJ Enterprise, LLC.”
(Appeal Br. 1.)
Appeal 2014-006381
Application 13/168,862
STATEMENT OF THE CASE
The Appellant’s invention relates to an “apparatus for holding and
cooling a storage container for liquid.” (Spec. 1,11. 3^4.)
Illustrative Claim
1. An apparatus for storing and dispensing a liquid,
comprising:
side walls coupled to a top member;
a bottom member comprising threads that mate with
threads on the side walls, wherein the bottom member is
removably coupled to the side walls;
one or more handles attached to the side walls;
two or more wheels attached to one or more of the side
walls and bottom member;
a drain attached to one or more of the side walls and
bottom member for draining liquid from the apparatus;
a storage container within the side walls containing a
liquid; and
a tap connected to the storage container for dispensing
the liquid.
Yanes
McDonough
Binder
Lea
Rich
References
US 3,789,622
US 4,164,853
US 4,174,811
US 4,633,678
US 5,875,646
Feb. 5, 1974
Aug. 21, 1979
Nov. 20, 1979
Jan. 6, 1987
Mar. 2, 1999
Rejections
I. The Examiner rejects claims 1—5, 7, and 9-13 under 35 U.S.C.
§ 103(a) as unpatentable over Lea, McDonough, and Binder. (Final
Action 3.)
II. The Examiner rejects claim 6 under 35 U.S.C. § 103(a) as
unpatentable over Lea, McDonough, Binder, and Rich. (Final Action 5.)
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III. The Examiner rejects claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Lea, McDonough, Binder, and Yanes. (Final Action 5.)
IV. The Examiner rejects claim 14—17 under 35 U.S.C. § 103(a) as
unpatentable over Lea, McDonough, and Yanes. (Final Action 5.)
V. The Examiner rejects claim 18—20 under 35 U.S.C. § 103(a) as
unpatentable over Lea, McDonough, Yanes, and Binder. (Final Action 7.)
ANALYSIS
Independent Claim 1
Independent claim 1 sets forth an apparatus comprising a “bottom
member,” “side walls,” a “top member,” and a “storage container within the
side walls.” (Appeal Br., Claims App.) The Examiner finds that Lea
discloses such an apparatus. (See Final Action 3.) Lea discloses a cooler 10
having a bottom-sidewall structure 14/16, a lid 24, and a beer keg 65 placed
within the compartment defined by the bottom-sidewall structure. (See Lea,
col. 3,11. 4—3, col. 4,11. 8—10; see also id. Figs. 1—3.)
Independent claim 1 additionally requires “two or more wheels”
attached to the bottom member and/or side walls. (Appeal Br., Claims App.)
The Examiner finds that McDonough teaches an apparatus having wheels
attached to the bottom thereof. (See Final Action 3.) In McDonough, the
bottom of a beer barrel cooler “is fitted with wheels” for “portability to
transfer the cooler from place to place.” (McDonough, col. 2,11. 49—50; see
also id. Figs. 1, 2.) The Examiner determines that it would have been
obvious to modify Lea’s beer keg cooler “to have McDonough’s wheels” in
order to “transfer the apparatus from place to place.” (Final Action 3.)
The Appellant argues that “combining the wheels of McDonough”
with Lea’s cooler would render it “unsatisfactory for its intended purpose
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because the keg would break when someone tried to use the wheels.”
(Appeal Br. 8.) According to the Appellant, McDonough requires the cooler
to “to tilt for the wheels to engage” and, if Lea’s cooler is tilted, beer keg 65
“would fall toward one side of the container” and “the handle 66 of the
pump would likely break.” {Id. at 6; see also Reply Br. 2-4.)
We are not persuaded by this argument because it focuses only on the
alleged consequences of tilting one embodiment of Lea’s cooler. Lea
discloses that, when its cooler is used with a laterally extending pump 64,
the pump handle 66 extends through a notch 28 in the sidewall structure.
{See Lea, col. 4,11. 41—48, Figs. 1—3.) The Appellant’s argument, as we
understand it, is that tilting would cause Lea’s laterally extending pump
handle 66 to contact a surrounding surface of the cooler. However, Lea also
teaches that its cooler can be used “with a pump 68 located externally of the
container.” {Id., col., 4,11. 48—51; see also id. Fig. 7.) The Appellant does
not assert that this externally-located pump would also be likely to break or
would be otherwise incompatible with a tilting wheel arrangement.
The Appellant also argues that Lea’s cooler “is intended to be
stationary and not to be portable.” (Appeal Br. 7; see also Reply Br. 2.) We
are not persuaded by this argument because Lea specifically discloses that its
cooler “can be transported to any desired location.” (Lea, col. 4,1. 28.)
In view of the foregoing, the Appellant does not establish that the
Examiner errs in determining that it would have been obvious to modify
Lea’s beer keg cooler to include the wheels required by independent claim 1;
and the Appellant does not argue that the Examiner’s position is flawed in
other respects. Thus, we sustain the Examiner’s rejection of independent
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Application 13/168,862
claim 1 under 35 U.S.C. § 103(a) as unpatentable over Lea, McDonough,
and Binder (Rejection I).
Dependent Claims 2—5, 7, and 9—13
Claims 2—5, 7, and 9-13 depend directly or indirectly from
independent claim 1, (see Appeal Br., Claims App.), are rejected on the
same ground as independent claim 1 (see Final Action 3), and are not argued
separately (see Appeal Br. 6—8). Thus, they fall with independent claim 1;
and we sustain the Examiner’s rejection of dependent claims 2—5, 7, and
9—13 under 35 U.S.C. § 103(a) as unpatentable over Lea, McDonough, and
Binder (Rejection I).
Dependent Claim 6
Claim 6 depends directly from independent claim 1 and additionally
requires that “the top member is removable from the side walls by a screw
mechanism.” (Appeal Br., Claims App.) The Examiner finds that Rich
teaches such a removable top member. (See Final Action 5.) Rich discloses
a “device for cooling food and beverages” having a threaded arrangement
for attaching a “spill proof lid” to the top end of a cylindrical shell “in a
removable manner.” (Rich col. 5,11. 4—5, 44-48.) The Examiner determines
that it would have been obvious to make Lea’s top member (lid 24) threaded
“in order to provide a spill proof lid.” (Final Action 5.)
The Appellant argues that Lea and Rich are “in different areas of art”
and therefore “[o]ne of ordinary skill in the art would not have combined
those references.” (Appeal Br. 8.) The Appellant also argues that “[a]
removable lid on a single beverage cup is different than a removable lid on
an apparatus for storing a keg.” (Id.) The Appellant further argues that
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“[t]he embodiment of Rich is of a different scale and in a different area of art
than the subject invention.” (Id.)
We are not persuaded by these arguments because the record reflects
that Lea and Rich are from the same field of endeavor as the Appellant’s
invention. According to the Specification, the Appellant’s “invention relates
generally to a method and apparatus for holding and cooling a storage
container for liquid.” (Spec. 1,11. 3—4.) Likewise, Lea’s “invention pertains
to beverage coolers” (Lea, col. 1,1. 4), and Rich’s “invention relates
generally to coolers” (Rich, col. 1,1. 6). As for the differences in size and
scale between a beverage cup and a beer keg, the Examiner’s proposed
modification does not require a bodily incorporation of Rich’s threaded lid
into Lea’s cooler.
In view of the foregoing, the Appellant does not establish that the
Examiner errs in determining that it would have been obvious to modify
Lea’s beer keg cooler to include the removable top member required by
dependent claim 6. The Appellant only otherwise argues that the
“underlying combination” of Lea and McDonough is “faulty” (Appeal Br. 8)
but, as discussed above, this argument is unpersuasive. Thus, we sustain the
Examiner’s rejection of dependent claim 6 under 35 U.S.C. § 103(a) as
unpatentable over Lea, McDonough, Binder, and Rich (Rejection II).
Dependent Claim 8
Claim 8 depends directly from independent claim 1 and additionally
requires a “bottom member” that “comprises one or more protrusions for
receiving the storage container.” (Appeal Br., Claims App.) The Examiner
finds that Yanes teaches protrusions that receive a storage container. (See
Final Action 5.) Yanes discloses that a beer barrel 15 can be “suspended” in
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the interior space of an insulating structure by “spring fingers 22 which are
fixed to the interior of a rear lid 21(Yanes col. 2,11. 2—6.) The Examiner
determines that it would have been obvious to “provide Yanes’ protrusions”
on the bottom member of Lea’s cooler “in order to hold the storage
container.” (Final Action 5.)
The Appellant argues that, in Yanes, the spring fingers “suspend” the
beer barrel but do not “receive it.” (Appeal Br. 9—10.) According to the
Appellant, “[i]n the [Specification, protrusions are designed to partially
surround the storage container to create an opening that ‘receives’ the
storage container.” {Id. at 9.)
We are not persuaded by this argument because it is not supported by
the Specification. The Specification does not provide a special definition for
the term “receive” which would require the protrusions to partially surround
and/or create an opening for the storage container. And a dictionary
definition of “receive” is “to hold, bear, or contain.”2 This ordinary meaning
of the term “receive” would encompass protrusions that hold (suspend) the
storage container as well as protrusions that instead contain (surround) the
storage container.
In view of the foregoing, the Appellant does not establish that the
Examiner errs in determining that Lea’s cooler, when modified in the
proposed manner, would possess the protrusions required by dependent
claim 8. The Appellant only otherwise argues that the “underlying
combination” of Lea and McDonough is “faulty” (Appeal Br. 10) but, as
discussed above, this argument is unpersuasive. Thus, we sustain the
2 http://www.dictionary.com/browse/receive (last visited March 2, 2017).
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Examiner’s rejection of dependent claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Lea, McDonough, Binder, and Yanes (Rejection III).
Independent Claim 14
Independent claim 14, like dependent claim 8, requires a “bottom
member” that “comprises one or more protrusions.” (Appeal Br., Claims
App.) As discussed above, the Examiner finds that Yanes teaches
protrusions that receive a storage container; and the Examiner determines
that it would have been obvious to provide such protrusions on the bottom
member of Lea’s cooler “in order to hold the storage container.” (See Final
Action 6.)
Independent claim 14 additionally specifies that the protrusions are
“for minimizing movement of the storage container in a direction parallel to
the bottom member.” (Appeal Br., Claims App.) The Examiner fails to
provide findings as to whether Yanes’s protrusions could or would minimize
container movement. (See Final Action 5—7.)
The Appellant argues that “[t]he relied upon combination does not
disclose all of the elements of claim 14” and does “not render it obvious.”
(Appeal Br. 11.) According to the Appellant, Yanes’s spring fingers 22 “can
minimize movement in a direction perpendicular to the bottom member, but
it will not minimize movement in a direction parallel to the bottom member
as required by the claim.” (Id.)
We are persuaded by this argument because, as indicated above, the
Examiner provides no findings to counter the Appellant’s explanation of the
movement-minimizing features, or lack thereof, of Yanes’s protrusions. As
such, the Examiner does not sufficiently establish that the Lea’s cooler,
when modified by the teachings of Yanes in the proposed manner, would
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have possessed the protrusions required by independent claim 14. Thus, we
do not sustain the Examiner’s rejection of independent claim 14 under
35 U.S.C. § 103(a) as unpatentable over Lea, McDonough, and Yanes
(Rejection IV).
Dependent Claims 15—20
Claims 15—20 depend directly or indirectly from independent claim 14
and thus likewise require protrusions “for minimizing movement of the
storage container in a direction parallel to the bottom member.” (Appeal Br.,
Claims App.) The Examiner’s further findings and determinations with
respect to these dependent claims (see Final Action 5—7) do not compensate
for the above-discussed shortcoming in the rejection of independent claim 14
Thus, we do not sustain the Examiner’s rejection of dependent claims 15—17
under 35 U.S.C. § 103(a) as unpatentable over Lea, McDonough, and Yanes
(Rejection IV); and we do not sustain the Examiner’s rejection of dependent
claims 18—20 under 35 U.S.C. § 103(a) as unpatentable over Lea,
McDonough, Yanes, and Binder (Rejection V).
DECISION
We AFFIRM the Examiner’s rejections of claims 1—13.
We REVERSE the Examiner’s rejections of claims 14—20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED IN PART
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