Ex Parte Lutz et al

Patent Trials and Appeals BoardApr 18, 2019

14201032 - (D) (P.T.A.B. Apr. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/201,032 03/07/2014 23409 7590 04/22/2019 MICHAEL BEST & FRIEDRICH LLP (Mke) 100 E WISCONSIN A VENUE Suite 3300 MILWAUKEE, WI 53202 FIRST NAMED INVENTOR Thomas Lutz 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. 206242-9005-USOl 6768 EXAMINER CLERKLEY, DANIELLE A ART UNIT PAPER NUMBER 3643 NOTIFICATION DATE DELIVERY MODE 04/22/2019 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): mkeipdocket@michaelbest.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS LUTZ and MATTHEW ALLEN Appeal2018-005929 Application 14/201,032 Technology Center 3600 Before JAMES P. CALVE, BRETT C. MARTIN, and WILLIAM A. CAPP, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants 1 seek our review under 35 U.S.C. Â§ 134(a) of the Examiner's final rejection of claims 1-10 and 12-25 as unpatentable over 35 U.S.C. Â§ 103(a). We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. 1 Lit Lighting Solutions LLC is the real party in interest. Appeal Br. 2. Appeal2018-005929 Application 14/201,032 THE INVENTION Appellants' invention relates to containment systems. Spec. ,r 2. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A system for displaying aquatic animals in a retail environment comprising: a base having a plurality of shelves; and a plurality of removable containment elements disposed on the shelves, each of the containment elements being a cup that includes a bottom, a top, and side walls extending between the top and the bottom to enclose a volume of water, at least one of the side walls defining a flat side viewing panel for viewing an aquatic animal inside of the containment element, each of the containment elements being sized to contain a salable number of aquatic animals, wherein each containment element is configured to be removed from the system and transported to an aquarium to move the salable number of aquatic animals to the aquarium. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: Frost Tsuchiya Limcaco Bowling Bonner Tsai Lari Brielmeier us 5,042,425 us 5,408,955 us 5,647,983 us 5,881,753 US 2004/0144328 Al US 6,912,972 Bl US 2005/0166858 Al US 2011/0041773 Al Aug. 27, 1991 Apr. 25, 1995 July 15, 1997 Mar. 16, 1999 July 29, 2004 July 5, 2005 Aug. 4, 2005 Feb. 24, 2011 The following rejections under U.S.C. Â§ I03(a) are before us for review: 1. Claims 1, 2, 21, and 25 over Frost. 2. Claim 3 over Frost and Brielmeier. 2 Appeal2018-005929 Application 14/201,032 3. Claim 4 over Frost and Tsuchiya. 4. Claims 5, 6, and 15-20 over Frost and Bonner. 5. Claims 7, 12, and 14 over Frost and Lari. 6. Claims 8-10 and 24 over Frost and Tsai. 7. Claim 13 over Frost, Lari, and Limcaco. 8. Claims 22 and 23 over Frost, Lari, Tsai, and Bowling. Claim 1 OPINION Unpatentability of Claims 1, 2, 21, and 25 over Frost The Examiner finds that Frost discloses the invention substantially as claimed except for the cup limitation, which the Examiner considers to be an obvious modification. Final Action 5---6. In particular, the Examiner finds that Frost's animal cage 80 satisfies the limitation directed to a removable container that encloses a volume of water. Id. at 5. The Examiner maintains that, since animal cage 80 is constructed of Plexiglas, it inherently may enclose a volume of water so that fish can be placed, transported, and viewed. Id. at 3. Appellants argue that Frost discloses distinct containers for: (1) fish; and (2) birds and animals. Appeal Br. 7. Appellants point out that Frost discloses aquariums 55, 56, and 57 for holding fish. Id. at 8. Appellants argue that Frost's animal cage 80 holds birds and animals, not fish. Id. at 7. In response, the Examiner reiterates that Frost's Plexiglas containers are inherently capable of enclosing a volume of water. Ans. 3. Frost is directed to a containment system for fish, animals, and birds. Frost, col. 4, 11. 1-21. Frost's system includes an upright cabinet fitted with 3 Appeal2018-005929 Application 14/201,032 access doors and a sink. Id. col. 4, 11. 6-7. It has a water and air supply and a distribution system for aquariums. Id. col. 4, 11. 7-11. Mechanical and biological filters and heaters are located in the aquariums for aerating, filtering, and heating the water therein. Id. col. 4, 11. 12-14. A drain system is connected to the aquariums for drainage thereof. Id. col. 4, 11. 14--15. In addition to the aquarium subsystems of Frost, a bird and animal support is positioned on the opposite side of the cabinet from the aquariums. Id. col. 4, 11. 15-17. The bird and animal support contains multiple bird and animal cages. Id. The bird and animal support subsystem features an automatic watering system that dispenses water from the cabinet to birds and animals located in the cages. Id. col. 4, 11. 18-21. Valve spout 73 and valve trigger 7 4 of the watering system are inserted through openings in the back wall of animal cage 80. Id. col. 9, 13-17. The Examiner's finding that Frost's bird and animal cages are inherently capable of enclosing a volume of water is in error. It is well established that "[i]nherency ... may not be established by probabilities or possibilities." In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). Thus, the mere fact that a certain thing may result from a given set of circumstances is not sufficient. Id. See also Agilent Tech., Inc. v. Affymetric, Inc., 567 F.3d 1366, 1383 (Fed. Cir. 2009) (explaining that the very essence of inherency is that one of ordinary skill in the art would recognize that a reference unavoidably teaches the property in question). While it may be possible that containers made from Plexiglas can enclose a volume of water, it does not follow that all Plexiglas containers necessarily hold water. Plexiglas cages may feature holes for air breathing animals and birds. Rectangular cages may not have water tight seams. Frost 4 Appeal2018-005929 Application 14/201,032 goes to some length to differentiate between its aquariums 55-57 and its animal and bird cages 80. The aquariums feature facilities for heating, aerating, and filtering the water. Frost, col. 5, 11. 7----63. There is no indication in Frost that the animal and bird cages are capable of functioning as aquariums. See generally Frost. In particular, Frost's animal cage 80 has an opening in the back wall. Id. col. 9, 11. 13-15. The Examiner does not explain how an animal cage with a hole in the back wall can enclose a volume of water. The Examiner's inherency finding is in error. Accordingly, we do not sustain the Examiner's unpatentability rejection of claim 1. Claims 2, 21, and 25 These claims depend from claim 1. Claims App. The Examiner's rejection of these claims suffers from the same infirmity that was identified above with respect to claim 1. Thus, for essentially the same reason expressed above in connection with claim 1, we do not sustain the rejection of claims 2, 21, and 25. Unpatentability of Claims 3-6 over Combinations Based on Frost These claims depend from claim 1. Claims App. The Examiner's rejections of these claims suffer from the same infirmity that was identified above with respect to claim 1, which infirmity is not cured by either Brielmeier, Tsuchiya, or Bonner. Thus, for essentially the same reason expressed above in connection with claim 1, we do not sustain the rejections of claims 3-6. 5 Appeal2018-005929 Application 14/201,032 Unpatentability of Claims 7, 12, & 14 over Frost and Lari Claim 7 is an independent claim. Claims App. Claims 12 and 14 depend therefrom. Id. The Examiner finds that Frost discloses a plurality of removable containers that are configured to be removed from the system and transported to an aquarium to move fish. Final Action 12-13. The Examiner's findings are erroneous. The Final Office Action relies on Frost's aquariums 55-57 as the containers, but then relies on teachings regarding animal cages 80 for findings regarding removability and transportability to move fish from the system to another aquarium. Id. There is no evidence in the record to support a finding that Frost's aquariums are removable and transportable to another aquarium. This deficiency in Frost is not cured by Lari. 2 The Examiner's findings of fact are not supported by a preponderance of the evidence. Consequently, we do not sustain the Examiner's unpatentability rejection of claim 7 or of claims 12 and 14 that depend therefrom. Unpatentability of Claims 8-10 and 24 over Frost, Lari, and Tsai These claims depend, directly or indirectly, from claim 7. Claims App. The Examiner's rejection of these claims suffers from the same infirmity as the rejection of claim 7, which infirmity is not cured by Tsai. 2 Lari's fish tank is "portable," but there is no teaching that it is configured to be "transportable" to move fish from one aquarium to another. Lari, claim 1, ,r,r 38, 41, Figs. 7-11 (tank outlet 38 aligns with basin opening 51). 6 Appeal2018-005929 Application 14/201,032 Thus, for essentially the same reason expressed above in connection with claim 7, we do not sustain the rejection of claims 8-10 and 24. Unpatentability of Claim 13 over Frost, Lari, and Limcaco Claim 13 depend from claim 7. Claims App. The Examiner's rejection of claim 13 suffers from the same infirmity as the rejection of claim 7, which infirmity is not cured by Limcaco. Thus, for essentially the same reason expressed above in connection with claim 7, we do not sustain the rejection of claim 13. Unpatentability of Claims 15-20 over Frost and Bonner Claim 15 is an independent claim. Claims App. Claims 16-20 depend therefrom. Id. As with the rejection of claim 7, the Examiner relies on Frost's aquariums 55-57 as containers that are configured to be removed from the system and transported to an aquarium to move fish. Final Action 10. As with the claim 7 rejection, these findings are erroneous. There is no evidentiary support in the record to support a finding that Frost's aquariums are removable and transportable to another aquarium. This deficiency in Frost is not cured by Bonner. 3 The Examiner's findings of fact are not supported by a preponderance of the evidence. Consequently, we do not sustain the Examiner's 3 Contrary to the Examiner's findings, Bonner discloses an animal habitat, not containers that hold "aquatic" animals ( e.g., fish). Bonner, Abstract. There is no teaching that Bonner is configured to be "transportable" to move fish from one aquarium to another. 7 Appeal2018-005929 Application 14/201,032 unpatentability rejection of claim 15 or of claims 16-20 that depend therefrom. Unpatentability of Claims 22 and 23 over Frost, Lari, and Tsai, and Bowling Claim 22 depends directly from claim 8 and indirectly from claim 7, while claim 23, in tum, depends from claim 22. Claims App. The Examiner's rejection of claims 22 and 23 suffers from the same infirmity as the rejections of claims 7 and 8, which infirmity is not cured by Bowling. Thus, for essentially the same reason expressed above in connection with claims 7 and 8, we do not sustain the rejection of claims 22 and 23. DECISION The decision of the Examiner to reject claims 1-10 and 12-25 is REVERSED. REVERSED 8