Ex Parte Starling

Patent Trial and Appeal Board

Aug 14, 2017

12804701 (P.T.A.B. Aug. 14, 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.
12/804,701 07/27/2010 Gordon Sterling Starling AMK-5961-2 9651
23117 7590 08/16/2017
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
KING, BRIAN M
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
08/16/2017 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):
PTOMAIL@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GORDON STERLING STARLING
Appeal 2016-005332
Application 12/804,701
Technology Center 3700
Before DANIEL S. SONG, WILLIAM A. CAPP, and
ANTHONY KNIGHT, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 the Examiner’s Final
Rejection of claims 1—7 in the present application. We have jurisdiction
under 35 U.S.C. §§ 6(b) and 134.
We AFFIRM.
The claimed invention is directed to a cooling device for bottles
(Title; Abstract). Representative independent claim 1 reads as follows
(Response to Notification of Non-Compliant Appeal Brief, Claims App’x,
paragraphing added for clarity, italics also added):
Appeal 2016-005332
Application 12/804,701
1. An apparatus for cooling liquid stored in bottles for use
with a cooling medium in a thermally insulated chest, the
apparatus comprising
a plate having a plurality of spaced holes each for
receiving a respective one of the bottles therein, wherein said
holes are sized to accommodate standard size beverage cans and
bottles,
said holes spacing keeping each of said bottles from
physical contact with the bottles adjacent thereto,
said holes establishing gaps between the respective
bottles and said respective hole surfaces to enable flow of
the cooling medium through said gaps adjacent and in
contact with said bottles,
a support surface on one side of said plate for
supporting the cooling medium thereon, the support
surface defining a convective cooling area via the cooling
medium for the liquid stored in the bottle, and
means for mounting said plate within the thermally
insulating chest.
The claim language italicized above was not present in the claims as
filed, but was added by amendment. Independent claim 5 similarly recites
that the holes are “sized to accommodate standard size beverage cans and
bottles,” this limitation also having been added by amendment.
The Examiner rejects the claims as follows:
1. Claims 1—7 as unpatentable under 35 U.S.C. § 112, first
paragraph, as filing to comply with the written description
requirement (Final Office Action (hereinafter “Final Act.”) 2).
2. Claims 1—7 as unpatentable under 35 U.S.C. § 112, second
paragraph, as being indefinite (Final Act. 3).
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Application 12/804,701
3. Claim 1 under 35 U.S.C. § 102(e) as anticipated by Silberman1
(Final Act. 4).
4. Claims 2, 4, and 5—6 under 35 U.S.C. § 103(a) as obvious over
Silberman in view of Tedder2 (Final Act. 5).
5. Claim 3 under 35 U.S.C. § 103(a) as obvious over Silberman
(Final Act. 6).
6. Claim 3 under 35 U.S.C. § 103(a) as obvious over Silberman in
view of Drummond3 (Final Act. 7).
7. Claims 5—7 are rejected under 35 U.S.C. § 103(a) as obvious
over Silberman in view of Tedder and Drummond (Final Act. 7).
ANALYSIS
Only those arguments actually made by the Appellant have been
considered in this decision. Arguments that the Appellant could have made
but chose not to make have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(l)(iv).
Written Description
Claims 1—7 stand rejected as unpatentable under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement
(Final Act. 2). The Examiner rejects independent claims 1 and 5, finding
that “[t]he specification does not establish a standard size for the bottles and
1 U.S. Patent No. 8,065,889 Bl, issued November 29, 2011.
2 U.S. Patent No. 6,763,959 B2, issued July 20, 2004.
3 US. Patent No. 4,821,525, issued April 18, 1989.
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Application 12/804,701
only references ‘bottles on the market’ and ‘90% of beverage bottles’ which
is not the same as standard size and as such this is considered to be new
matter.” (Final Act. 2). The Examiner also finds that “no cans are
referenced in the specification as originally filed and as such this is also
considered to be new matter.” (Final Act. 2; see also Ans. 11). Claims 2—\
and 7 stand rejected as being dependent upon a rejected claim (Final Act. 3).
The Appellant disagrees and argues that
the references in the specification to holes that are sized “slightly
larger than the maximum diameter of most of the beverage
bottles on the market” and to holes dimensioned to
“accommodate the circumferences of about 90% of beverage
bottles 17 (Figure 1) offered for retail sale” as well as Fig. 1 itself
provide support for this claimed feature of the invention.
(App. Br. 9; see also Spec. Tflf 6, 14, 15).
The Appellant also argues that
an industry standard is established by the industry itself.
According to various sources, the industry standard bottle (ISB)
for beer, for example, is the North American longneck. The
standard size measures 9" in height and 2.4" in diameter. See,
for example, www.yankeeschooner.com, “Glass Beer Bottles —
12 oz. Longneck.” See also the Wikipedia entry for “beer
bottle,” referring to the longneck as an “industry standard bottle
(ISB).”
(App. Br. 9).
The Appellant’s arguments are unpersuasive. Initially, we observe
that the Examiner is correct that “no cans are referenced in the specification
as originally filed,” and as such, there is no written description for the claim
limitation “standard size beverage cans.” (Final Act. 2; Ans. 11). In
addition, it cannot be reasonably disputed that size of beverage bottles varies
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Application 12/804,701
widely. While the Appellant has introduced some evidence as to the
dimensions of a “longneck” bottle being a standard, we agree with the
Examiner that at best, the Appellant has only established a standard “with
respect to beer bottles,” and not for other non-beer beverage bottles
(Ans. 11). In other words, even if there is evidence as to a standard for beer
beverage bottles, that standard may, or may not, be applicable to other
beverages or to other beverage industries that may utilize different standards,
and thus, the proffered evidence fails to demonstrate a “standard size
beverage” bottle as recited.
The Appellant further explains that it “twice attempted to delete the
purported ‘new matter’ from the independent claims” via amendments, but
these amendments were denied entry (App. Br. 10; see also Reply Br. 1—2).
However, the Examiner’s decision to not enter a submitted amendment is
not an appealable issue. In re Watkinson, 900 F.2d 230, 233 (Fed. Cir.
1990) (Board has no jurisdiction for matters within the discretion of the
examiner and not tantamount to a rejection of claims). Such procedural
matters should have been raised by way of a timely petition pursuant to 37
C.F.R. § 1.181.
Accordingly, in view of the above considerations, the Examiner’s
rejection of claims 1—7 based on lack of written description is affirmed.
Indefiniteness
Claims 1—7 also stand rejected as unpatentable under 35 U.S.C. § 112,
second paragraph, for indefiniteness (Final Act. 3). The Examiner finds that
independent claims 1 and 5 are indefinite because “beverage bottles exist in
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Application 12/804,701
an extremely wide range of sizes and shapes,” and that it is “well known that
beverage containers come in ranges from very small to very large and as
such there is no standard size for beverage cans or bottles.” (Final Act. 3).
Claims 2—\ and 7 stand rejected for being dependent upon a rejected claim
(Final Act. 3). We again agree with the Examiner.
The Appellant argues that
those of ordinary skill in the art would readily appreciate the size
of the holes relative to ‘standard size beverage cans and bottles’
as such standard sizes are well-known and well-established in the
beverage industry.
(App. Br. 10).
In support, the Appellant refers to the arguments submitted with
respect to the written description rejection (App. Br. 9), and again points to
the Specification, which “describes that the exemplary dimensions ‘will
accommodate the circumferences of about 90% of beverage bottles offered
for retail sale,’” so that “those of ordinary skill in the art would readily
appreciate the metes and bounds of the invention.” (App. Br. 10-11; see
also Spec. 6, 14, 15).
However, as the Examiner finds and as discussed supra relative to the
written description rejection, the existence of a “standard size” for beverage
cans and bottles has not been demonstrated by the record. To the contrary,
the Specification instructs a person of ordinary skill in the art that “the
invention is not limited in its scope to specific dimensions.” (Spec. 114).
Accordingly, the claim language in light of the Specification would not
provide clarity to those skilled in the art regarding the scope of the subject
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Application 12/804,701
matter which the claims encompass. See In re Hammack, 427 F.2d 1378
(CCPA 1970).
The Appellant further argues that “Appellant attempted to eliminate
this issue for appeal by specifying a specific dimension of the holes.” (App.
Br. 11). However, as noted above, the Examiner’s decision to not enter a
submitted amendment is not appealable. In re Watkinson, 900 F.2d at 233.
Accordingly, in view of the above considerations, the Examiner’s
rejection of claims 1—7 based on indefiniteness is also affirmed.
Prior Art Rejections
Since claims 1—7 fail to satisfy the requirements of the second
paragraph of 35 U.S.C. § 112, we are constrained to reverse, pro forma, the
prior art rejections because they necessarily are based on speculative
assumptions as to the scope of the claims. See In re Steele, 305 F.2d 859,
862—63 (CCPA 1962) (holding that the Board erred in affirming a rejection
of indefinite claims because the rejection was based on speculative
assumptions as to the meaning of the claims); cf. In re Smith, 2008 WL
4998624 (BPAI 2008)(declining to reach art rejections “because an
affirmance of the lack of written description rejection disposes of all claims
on appeal,” and it is not “necessary to address the obviousness of claims
which contain a limitation not described by the specification, as filed.”).
CONCLUSIONS
1. The Examiner’s rejection of claims 1—7 as unpatentable under
35 U.S.C. § 112, first paragraph, is AFFIRMED.
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2. The Examiner’s rejection of claims 1—7 as unpatentable under
35U.S.C. § 112, second paragraph, is AFFIRMED.
3. The Examiner’s prior art rejections are reversed, pro forma.
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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