Ex Parte ItoDownload PDFPatent Trial and Appeal BoardMar 10, 201713168862 (P.T.A.B. Mar. 10, 2017) Copy Citation 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.) 2 Appeal 2014-006381 Application 13/168,862 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 3 Appeal 2014-006381 Application 13/168,862 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 4 Appeal 2014-006381 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 5 Appeal 2014-006381 Application 13/168,862 “[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 6 Appeal 2014-006381 Application 13/168,862 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). 7 Appeal 2014-006381 Application 13/168,862 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 8 Appeal 2014-006381 Application 13/168,862 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 9 Copy with citationCopy as parenthetical citation