Ex Parte Resnikoff et al

Patent Trial and Appeal Board

Aug 17, 2017

13715578 (P.T.A.B. Aug. 17, 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.
13/715,578 12/14/2012 Joshua Isaac Nielsen Resnikoff 47-01 1065
58727 7590
Stahl Law Firm
Norbert Stahl
3559 Mt Diablo Blvd #52
Lafayette, CA 94549
EXAMINER
NGO, LIEN M
ART UNIT PAPER NUMBER
3754
MAIL DATE DELIVERY MODE
08/17/2017 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 JOSHUA ISAAC NIELSEN RESNIKOFF and
AARON BROOKS PANONE
Appeal 2015-007279
Application 13/715,578
Technology Center 3700
Before JEFFREY A. STEPHENS, CARL L. SILVERMAN, and
FREDERICK C. LANEY, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 seek our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Office Action (“Final Act.”) rejecting claims 21—37, as
supplemented by the first Advisory Action (dated July 30, 2014, hereinafter
“First Adv. Act.”) and second Advisory Action (dated Aug. 22, 2014,
1 The real party in interest is identified as TRAP, Inc. App. Br. 4.
Appeal 2015-007279
Application 13/715,578
hereinafter “Second Adv. Act.”).2 We have jurisdiction under 35 U.S.C.
§ 6(b). An oral hearing was held on August 7, 2017.
We affirm.
Claimed Subject Matter
Claims 21 and 30 are independent. Claim 21, reproduced below with
added formatting, illustrates the claimed subject matter.
21. A lid, wherein said lid has a circular shape;
wherein said lid has a diameter of 66 to 74 millimeter or a
diameter of 82 to 90 millimeter;
wherein said lid can fit within a screw-on ring for a Mason
jar;
wherein said lid comprises a bottom surface that can travel
the circumference of the opening of said Mason jar for sealing of
the contact area between the lid and the Mason jar when the lid
is attached to the Mason jar with the screw-on ring;
wherein said lid comprises a protrusion;
wherein said lid comprises a hole for removal of liquid
from said Mason jar;
and wherein said lid does not include a downward
concentric extrusion on the outside of said Mason jar.
2 Claims 1—20, 38, and 39 are cancelled. Response to Office Action 2, 4—5
(filed July 17, 2014, hereinafter “Amendment after Final”).
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Rejections3,4
I. Claims 35—37 stand rejected under 35 U.S.C. § 112, fourth
paragraph, as being of improper dependent form for failing to further limit
the subject matter of the claim upon which each claim depends. Final Act.
6-7.
II. Claims 21—37 stand rejected under 35 U.S.C. § 102(e) as
anticipated by, or in the alternative, under 35 U.S.C. § 103(a) as obvious
over, Moore et al. (US 2011/0226802 Al, published Sept. 22, 2011)
(“Moore”). Final Act. 7—8.
3 Appellants state “Claims 30—33 stand rejected for double patenting under
37 C.F.R. § 1.75.” App. Br. 5. The Final Action, however, states that
claims 30-33 are “objected to under 37 CFR 1.75 as being a substantial
duplicate of claims 21—24” or “will be objected to under 37 CFR 1.75” if
claims 21—24 are found allowable. Final Act. 4. “Petition may be taken to
the Director in the case of objections or requirements not involved in the
rejection of any claim (§ 1.181).” 37 C.F.R. § 1.113(a). Petitionable matters
are not generally within the jurisdiction of the Board. See In re Mindick,
371 F.2d 892, 894 (CCPA 1967) (holding Examiner’s refusal to enter an
amendment not reviewable on appeal); In re Hengenhold, 440 F.2d 1395
(CCPA 1971); see also MPEP §§ 706.01, 1002, 1201. The potential claim
objection in this case is not before us on appeal. For the same reason, the
objection to claims 35—37 as being in improper form for multiple dependent
claims, Final Act. 5, is not before us.
4 The Final Action rejected claims 21—34 under 35 U.S.C. § 112, second
paragraph, as being indefinite. Final Act. 5—6. Amendments made in
Appellants’ Amendment after Final appear to relate to the Examiner’s
indefiniteness rejection. See Amendment After Final 2, 3 (amending claims
21 and 30 to recite only a lid in the preamble and removing reference to a jar
in the preamble). The Second Advisory Action directs entry of the
amendment, but neither the Advisory Actions nor the Examiner’s Answer
explicitly withdraw the indefiniteness rejection. The Examiner’s Answer
does, however, restate the applicable grounds of rejection, and does not
include a rejection under 35 U.S.C. § 112, second paragraph. Under these
circumstances, we will consider the indefiniteness rejection withdrawn.
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III. Claims 21—37 stand rejected under 35 U.S.C. § 102(b) as
anticipated by, or in the alternative, under 35 U.S.C. § 103(a) as obvious
over, Belcastro (US 2005/0184075 Al, published Aug. 25, 2005). Final
Act. 8.
IV. Claims 21—24 and 30-37 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Brown et al. (US 7,828,165 B2, issued Nov. 9,
2010) (“Brown”). Final Act. 8-9.
V. Claims 21—37 stand rejected under 35 U.S.C. § 102(e) as
anticipated by, or in the alternative, under 35 U.S.C. § 103(a) as obvious
over, Hakim (US 2012/0091143 Al, published Apr. 19, 2012). Final Act. 9.
DISCUSSION
Rejection I
The Examiner determines that claims 35—37 fail to further limit the
subject matter of the claims from which they depend, or fail to include all
limitations of the claims from which they depend. Final Act. 6. The
Examiner explains that, for example, claim 35 depends from claims 34 and
22, but each of those claims depends from claim 21. Id. The Examiner calls
this a “double inclusion” because claim 35 refers to two claims, each of
which depends from claim 21. Ans. 11. Appellants argue each of claims
35—37 further limit the claims from which they depend and that the
Examiner has not determined otherwise.
Claim 21 is directed to a lid, with a protrusion and other limitations.
Claim 22, which depends from 21, further limits claim 21 by specifying that
“said protrusion comprises a top surface at a non-parallel angle away from
the bottom surface of said lid.” Claim 34 also depends from claim 21
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because, although directed to a method, the claim refers to claim 21 in the
step of “placing a lid according to claim 21 onto the opening of a Mason
jar.” Thus, claim 34 includes all limitations of claim 21.
Claim 35 recites a “method according to claim 34, wherein the lid is a
lid according to claim 22.” Thus, claim 35 includes all limitations of claim
34, and further limits the claim such that the protrusion of the lid “comprises
a top surface at a non-parallel angle away from the bottom surface of said
lid,” as recited in claim 22. “Double inclusion” may be a proper basis for an
objection to the claim under 37 C.F.R. § 1.75(c) for being in improper
multiple dependent form because it refers to two claims cumulatively, and
not in the alternative.5 The Examiner does not, however, explain how
“double inclusion” in these claims fails to further limit the subject matter of
the claim(s) from which the claims depend. Accordingly, we do not sustain
the rejection of claims 35—37 under 35 U.S.C. § 112, fourth paragraph.
Rejection II
Anticipation by Moore
Following the Final Action, the Second Advisory Action entered
Appellants’ amendment adding to claim 21 the limitation that “said lid has a
diameter of 66 to 74 millimeter or a diameter of 82 to 90 millimeter,” and
adding to claim 30 that “said lid has a diameter of 78 to 86 millimeter.”
Amendment After Final 2, 3. The Second Advisory Action states that the
“Amendment After Final would not make the claims in conditions for
allowance because the differences of the diameter of a lid from the prior art
5 As noted in footnote 4, supra, the Examiner’s objection on this basis is not
before us.
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would have involved a mere change in size of a component,” and “[a]
change in size is generally recognized as being within the level of ordinary
skill in the art.” Second Adv. Act. 2. The Second Advisory Action does
not, however, withdraw the rejections under 35 U.S.C. § 102, and the
rejections under § 102 are restated in the Examiner’s Answer. Ans. 3—6.
Appellants argue Moore does not disclose several limitations recited
in claim 21, including that Moore does not disclose a Mason jar or the lid
diameters recited in claim 21. App. Br. 10. As Appellants point out, Reply
Br. 2, in the Answer, Ans. 7, the Examiner states the references “disclose the
claimed invention except for the lid having diameter of 66 to 74 mm or 82-
90 mm or 78-68 mm,” along with other limitations of the dependent claims.
Thus, the Examiner agrees that Moore does not disclose the diameter
limitations in independent claims 21 and 30. The Examiner’s findings and
reasoning that a mere change in size is within the level of ordinary skill in
the art pertains only to obviousness, and not anticipation. We agree with
Appellants that, under these circumstances, the rejection of independent
claims 21 and 30 as anticipated by Moore is not supported. Accordingly, we
do not sustain the rejection of claims 21 and 30 as anticipated by Moore, and
we do not sustain the rejection on the same basis of dependent claims 22—29
and 31—37.
Obviousness over Moore
As to obviousness, Appellants argue “Moore is nowhere concerned
with ‘a lid’ or ‘a method’ related to a ‘Mason jar’ or a ‘Kilner jar’ as Moore
nowhere even mentions the words ‘Mason,’ ‘Kilner,’ or ‘jar’ and nowhere
suggests ‘a lid’ or ‘a method’ related thereto.” App. Br. 14. Appellants also
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contend the Examiner failed to respond to the evidence of secondary
considerations of non-obviousness submitted with declarations by the named
inventors submitted under 37 C.F.R. §§ 1.131 and 1.132. Id.
In the Answer, the Examiner determines that reciting intended use
with a Mason jar does not result in a structural difference that patentably
distinguishes from the prior art. Ans. 11. As noted above, the Examiner
also finds the diameters recited for use with a Mason jar (claim 21) and a
Kilner jar (claim 30) “would have been an obvious matter of design choice
. . . since such modification would have involved a mere change in the size
of a component,” which “is generally recognized as being within the level of
ordinary skill in the art.” Id. at 12. Appellants do not challenge these
findings by the Examiner, but continue to assert that secondary
considerations of non-obviousness were not properly considered. Reply Br.
3-17.
The Examiner finds the Rule 132 declaration does not overcome the
obviousness rejections “because evidence of commercial success of articles
not covered by the claims subject to the 35 U.S.C. 103 rejection (the
differences of lid diameters, vent hole diameters and lid thickness) was not
probative of nonobviousness.” Ans. 8—9. Appellants argue the Examiner’s
explanation is untimely, the explanation only addresses the secondary
consideration of commercial success, and that the Rule 132 declaration
concerns lids covered by the claims at issue and demonstrates that the
claimed features are responsible for the commercial success. Reply Br. 4.
We agree with the Examiner that Appellants have not established that
the submitted evidence of commercial success relates to products falling
within independent claims 21 or 30. Paragraph 3 of the Declaration of
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Aaron Panone under 37 C.F.R. § 1.132 (filed Apr. 19, 2014, hereinafter
“Panone Declaration”) discusses the features of lids sold by JRAP, Inc.
(“JRAP”). The Panone Declaration describes how the lids fit with a Mason
jar and the screw-on ring, and describes other features of the lids, including
thickness, diameter of the hole, and height of the protrusion. Panone Deck
para. 3. The declaration does not, however, describe the diameter of the lids.
See id. Claim 21 limits the lid diameter to “66 to 74 millimeter” or “82 to 90
millimeter,” and claim 30 limits the diameter to “78 to 86 millimeter.”
Absent documentary or testimonial evidence that the lids sold by JRAP have
diameters within the ranges recited in claims 21 and 30, Appellants’
evidence of secondary considerations lacks the required nexus to the claims
and is, therefore, not probative of nonobviousness. See In re Paulsen, 30
F.3d 1475, 1482 (Fed. Cir. 1994) (determining that purported evidence of
nonobviousness “carrie[d] no weight” because it did not relate to articles
within the scope of claims rejected under 35 U.S.C. § 103(a)). The lack of
nexus applies to the considerations of commercial success, industry praise,
copying, and long-felt but unsolved need.
Appellants contend that Mason jars come in two size openings,
regular or wide, for which the lids are designed, citing the Specification.
Reply Br. 4 (citing Spec. 1:21—25, 7:28, 15:4—9, 19:21—24). The cited
portions of the Specification indicate that a Mason jar is a canning jar, a
regular canning jar’s mouth diameter is 60 millimeters, and a wide jar’s
mouth diameter is 76 millimeters. Spec. 1:21—25, 7:28, 15:4—9, 19:21—24.
Therefore, according to Appellants, the Panone Declaration’s description of
lids used with a Mason jar describes lids covered by the claims on appeal.
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Even accepting that the “Mason jar” referred to in the Panone
Declaration has an opening of 60 or 76 millimeters as described in the
Specification, and that the lids sold “fit” the jar, the declaration fails to
establish that the lids meet the diameters recited in the claims, which do not
correspond exactly to the size of the opening. The Specification indicates
that it is desirable for the lids to have a diameter larger than the inner
diameter of the opening of a beverage container on which the lid is used, and
specifies various ranges of sizes. Spec. 14:30—15:4. This is consistent with
claim 21, for example, which recites a minimum diameter of 66 millimeters,
which is 6 millimeters larger than the opening of a regular mouth jar. Based
on the evidence of record, therefore, it is possible that TRAP sold lids with
diameters between 60 and 65 millimeters wide, or 76 to 81 millimeters wide,
which would fall outside the scope of claim 21.
Appellants also fail to address claim 30’s recitation of a diameter of
78 to 86 millimeters, which is meant to fit with a Kilner jar that presumably
has an opening of 72 millimeters. See Spec. 15:9—10. The Panone
Declaration does not appear to mention a Kilner jar, much less the range of
diameters recited in claim 30.
Although the Examiner addressed the Panone Declaration as it relates
to secondary considerations of non-obviousness only in the Answer, we
recognize also that the lid diameter ranges recited in the independent claims
on appeal were added to the claims by amendment after the Final Action.
See Amendment After Final 2—3. Appellants elected to respond in the Reply
Brief to the Examiner’s findings in the Answer regarding the lack of nexus.
Given our agreement with the Examiner’s findings as to the lack of a nexus
between the evidence of secondary considerations and the scope of the
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claims as amended, on the record before us, Appellants do not inform us of
error in the rejection based on obviousness.
Accordingly, for the reasons discussed above and by the Examiner,
we are not informed of error in the Examiner’s rejection of claims 21—37
under 35 U.S.C. § 103(a) as unpatentable over Moore. Thus, we sustain the
rejection of claims 21—37 on that basis.
Rejections III—V
Anticipation
For the same reasons discussed above with respect to the anticipation
rejection based on Moore, we reverse the anticipation rejections set forth in
Rejections III—V.
We note that Brown specifically teaches use of its lid with a container
that “has a size equivalent to that of a Mason jar,” col. 4,1. 32, and with a
container that “has a Mason jar style of configuration,” col. 7,11. 54—55.
Appellants contend Brown does not teach “a lid” because the Examiner
identifies item 21 in Figures 7—9 as the lid, but item 21 is a vent insert. App.
Br. 27. It is unclear whether the Examiner considers vent insert 21 to be the
“lid” recited in the claims, or considers vent insert 21 to be a portion of the
lid in conjunction with nipple 22. In any event, Brown does not disclose a
specific diameter of lid. For the same reason, discussed supra, that we do
not agree with Appellants’ argument that a specific lid diameter is addressed
in the Panone Declaration merely by virtue of its reference to a Mason jar,
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Brown also does not inherently disclose the diameter ranges recited in
independent claims 21 and 30.6
Obviousness
Appellants’ arguments related to the obviousness rejections based on
Belcastro and Hakim are the same as those presented with respect to the
rejection over Moore. App. Br. 19—20, 25—26; Reply Br. 3—17. For the
same reasons discussed above with respect to the obviousness rejection
based on Moore, we sustain the obviousness rejections set forth in
Rejections III and V.
DECISION
We reverse the Examiner’s rejections of: claims 35—37 under 35
U.S.C. § 112, fourth paragraph; claims 21—37 under 35 U.S.C. § 102(e) as
anticipated by Moore; claims 21—37 under 35 U.S.C. § 102(b) as anticipated
by Belcastro; claims 21—24 and 30-37 under 35 U.S.C. § 102(b) as
anticipated by Brown; and claims 21—37 under 35 U.S.C. § 102(e) as
anticipated by Hakim.
We affirm the Examiner’s rejections of: claims 21—37 under 35
U.S.C. § 103(a) as obvious over Moore; claims 21—37 under 35 U.S.C.
§ 103(a) as obvious over Belcastro; and claims 21—37 under 35 U.S.C.
§ 103(a) as obvious over Hakim.
6 A rejection based on obviousness over Brown is not before us.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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