Ex Parte Jones

Patent Trial and Appeal Board

Jan 24, 2019

14815109 (P.T.A.B. Jan. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/815,109 07/31/2015
37468 7590 01/25/2019
STOCKWELL & SMEDLEY, PSC
861 CORPORATE DRIVE, SUITE 200
LEXINGTON, KY 40503
FIRST NAMED INVENTOR
Curt Jones
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.
925-002 Cont 9159
EXAMINER
STIJLII, VERA
ART UNIT PAPER NUMBER
1791
MAIL DATE DELIVERY MODE
01/25/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CURT JONES
Appeal2018-003157
Application 14/815, 109
Technology Center 1700
Before KAREN M. HASTINGS, JEFFREY B. ROBERTSON, and
WESLEY B. DERRICK, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1-12, 14--19, 22 and 23 under
35 U.S.C. § 103(a) over the combined prior art of Lynn (US 2010/0287951
Al, published Nov. 18, 2010), and Melvin (US 2010/0062134 Al, published
Mar. 11, 2010. The Examiner also rejected the claims on the basis of
nonstatutory double patenting based on US 9,107,444 with Melvin as well as
a provisional rejection on the basis of nonstatutory double patenting based
on copending application no. 15/138,583 (e.g., Ans. 3, 4; Non-final Action
3, 4).
1 The real party in interest is stated to be Beaded Distribution Company,
LLC (Appeal Br. 2).
Appeal2018-003157
Application 14/815, 109
We have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
Independent claim 1 is illustrative of the subject matter on appeal:
1. A method for manufacturing a mixed drink comprising:
combining one or more non-alcoholic ingredients with one or more
alcoholic ingredients to form a liquid mix formulation;
cryogenically freezing the liquid mix formulation to form a
plurality of cryogenically frozen beads of the liquid mix formulation
by dripping the liquid mix formulation into liquid nitrogen; and
combining the frozen beads with a first liquid to form the
mixed drink.
Independent claim 9 is similarly directed to a method of making a
mixed drink using cryogenically frozen beads of alcoholic and non-alcoholic
ingredients (Claims Appendix 13).
At the outset, we note that Appellant does not argue the rejections
based on nonstatutory obviousness-type double patenting (Appeal Br. 7).
Thus, we summarily affirm these rejections.
ANALYSIS
Upon consideration of the evidence on this record and each of
Appellant's contentions, we find that the preponderance of evidence
supports the Examiner's conclusion that the subject matter of Appellant's
claims is unpatentable over the applied prior art. We sustain the Examiner's
§ 103(a) rejection essentially for the reasons set out by the Examiner in the
Answer.
We add the following primarily for emphasis.
It has been established that "the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
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Application 14/815, 109
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398,418 (2007). Likewise, it is also well settled that a
reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in the art would have reasonably been
expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264---65 (Fed.
Cir. 1992).
Appellant's principal argument regarding claim 1 (and claim 9) is that
there is no reason to arrive at cryogenically frozen beads having both
alcoholic and non-alcoholic ingredients which are then combined with a
liquid to form a mixed drink based on Lynn and Melvin since Lynn is
directed to non-alcoholic frozen beads and Melvin is directed to alcohol
containing frozen beads useful as a single phase frozen dessert product, thus
their teachings are "incongruent" (Appeal Br. 7) and the "applied
combination teaches away from the combination of a frozen beaded
alcoholic mix with any liquid" (Appeal Br. 8). Appellant also presents
separate arguments to claims 9 and 10, arguing that preparing yet another
frozen bead formulation to mix with the first alcoholic frozen beads is not
taught or suggested (Appeal Br. 10). These arguments are reiterated in the
Reply Brief.
Appellant's arguments do not appreciate the teachings and inferences
of the applied prior art as whole, and are not persuasive of reversible error
for at least the reasons set out by the Examiner (Ans. 10-12). Whether a
reference teaches away from a claimed invention is a question of fact. In re
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Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). 2 The Examiner aptly points
out that, contrary to the Appellant's position, one of ordinary skill would
have readily inferred that a mixture of both alcoholic and non-alcoholic
ingredients in a frozen bead form as exemplified in Melvin ( e.g., Melvin
,r,r 70, 73, Abstract), would also predictably be useful as frozen beads to be
used with another liquid component to make a drink, as exemplified in Lynn
(e.g., Lynn ,r,r 21, 22, 25; Ans. generally). See In re Keller, 642 F.2d 413,
425 (CCP A 1981) ("The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference .... Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art"); In re
Nievelt, 482 F.2d 965,968 (CCPA 1973) ("Combining the teachings of
references does not involve an ability to combine their specific structures.").
Further, as we "take account of the inferences and creative steps that
a person of ordinary skill in the art would employ," we find a person of
ordinary skill in the art would have, within their level of skill, made frozen
beads of both alcoholic and non-alcoholic ingredients (as exemplified in
Melvin) to be mixed with other liquids, alcoholic or non-alcoholic (as
suggested by Lynn), for a mixed drink (as recited in claims 1 and 9), and/or
to be mixed with an additional frozen bead formulation ( as recited in claim
9), based on the combined teachings of the applied prior art for reasons
articulated by the Examiner (see generally Ans.). KSR Int'!, 550 U.S. at
418; see also id. at 421 ("A person of ordinary skill is also a person of
2Cf Ricoh Co., Ltd. v. Quanta Computer Inc., 550 F.3d 1325, 1332 (Fed.
Cir. 2008)(a reference can distinguish prior art in order to show the novelty
of an invention without teaching away from combining the prior art with the
invention disclosed in the reference.).
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Application 14/815, 109
ordinary creativity, not an automaton"); Ball Aerosol & Specialty Container,
Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (under the
flexible inquiry set forth by the Supreme Court, the PTO must take account
of "the inferences and creative steps," as well as routine steps, that an
ordinary artisan would employ)).
Accordingly, we affirm the Examiner's prior art rejection of the
claims under 35 U.S.C. § 103(a) for the reasons given above and presented
by the Examiner.
DECISION
The Examiner's § 103(a) rejection is affirmed.
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)(l).
AFFIRMED
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