Ex Parte WurthDownload PDFPatent Trial and Appeal BoardOct 31, 201713778839 (P.T.A.B. Oct. 31, 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. 13/778,839 02/27/2013 Stephen Andrew Wurth 11135-US-NP 3972 69099 7590 11/02/2017 Nestle Purina Petcare Global Resources, Inc Checkerboard Square Intellectual Property Patents ST. LOUIS, MO 63164 EXAMINER NGUYEN, SON T ART UNIT PAPER NUMBER 3643 NOTIFICATION DATE DELIVERY MODE 11/02/2017 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): purinapatentmail@purina.nestle.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEPHEN ANDREW WURTH1 Appeal 2016-008625 Application 13/778,839 Technology Center 3600 Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and BRANDON J. WARNER, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1—5 and 7—18. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 Appellant is the Applicant, Nestec, S.A., which, according to the Appeal Brief, is the real party in interest. Appeal Br. 3. Appeal 2016-008625 Application 13/778,839 THE CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A measuring device useful for managing the weight of animals, the measuring device comprising: a first side with a cavity and a second opposing side having a cavity that is larger than the cavity of the first side; a first opening providing access to the cavity of the first side; a second opening providing access to the cavity of the second side, and the first opening is positioned on an opposite end of the measuring device from the second opening and faces an opposite direction relative to the second opening; and a continuous side wall that extends from the first opening to the second opening and defines a height of the measuring device, and the second side of the measuring device is integral with the first side. REJECTIONS I. Claims 1—3, 5, and 7—14 stand rejected under 35 U.S.C. § 102(b) as anticipated by Dill (US 1,562,620, iss. Nov. 24, 1925). II. Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Dill. III. Claims 15—18 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Dill and Phillippi (US 5,377,620, iss. Jan. 3, 1995). 2 Appeal 2016-008625 Application 13/778,839 DISCUSSION Rejections I and II Claims 1—5 and 7—10: In rejecting independent claim 1, the Examiner finds that Dill discloses a measuring device including, in relevant part, “a continuous side wall (2,3,4,5) that extends from the first opening to the second opening and defines a height of the measuring device.” Final Act. 2 (citing Dill, Figs. 2, 3). According to the Examiner, “sidewall (2,3,4,5) extends from the first opening (ref. 8) to the second opening (ref. 7) and defines a height (the area in between the sidewall’s top portion and bottom portion defines a height) of the measuring device.” Ans. 2—3. Appellant argues that “Dill does have a continuous side wall (see (2) in Figs 2 and 3) but it does not extend from a first opening to a second opening.” Appeal Br. 15. In particular, Appellant asserts that “Dill defines element 3 as bottom and element 4 as a raised central portion,” and “there is no basis to identify these as a ‘sidewall,’ especially since Dill already identifies elements 2 and 5 as walls.” Reply Br. 7. According to Appellant, “under the Examiner’s interpretation, Dill’s continuous sidewall would include a bottom portion and a central raised portion where only one portion of Dill’s sidewall defines the height of the trough.” Id. (emphasis added). We find Appellant’s argument persuasive of error in the Examiner’s rejection. Dill discloses that “the body is of a substantially cylindrical shape, the side walls 2 being tapered or inclined toward the bottom 3, the latter being formed concentrically thereof with a raised central portion 4.” Dill 1,11. 88— 92. Dill discloses that “walls 2 and 5 coact with the bottom 3 in forming an 3 Appeal 2016-008625 Application 13/778,839 annular chamber 7 adapted to receive water or food when the body is in the position indicated in Figure 2.” Id., 11. 107—111. Dill also discloses that “walls 5 and the portion 4, which rests on the ground, form a central cylindrical chamber 8 adapted to receive an additional supply of water or food.” Id. at 2,11. 6—10. In this regard, the Examiner takes the position that the combination of Dill’s wall 2, bottom 3, raised central portion 4, and wall 5 constitutes a “continuous side wall” that “defines a height.” See Final Act. 2; Ans. 2. However, although these elements appear to form a continuous wall structure extending between chambers 7 and 8, and at least some of the elements define a height of the trough (e.g., walls 2, 5), the Examiner’s interpretation that these elements together constitute a continuous side wall (i.e., singular feature) that defines a height of the measuring device lacks adequate evidentiary support. In particular, wall 2, bottom 3, raised central portion 4, and wall 5 collectively represent the entirety of the structure of Dill’s trough (i.e., measuring device). See Dill, Figs. 1,2. In our view, it is unreasonable to consider the entirety of Dill’s trough as constituting the “side wall” that defines a height of the trough. For at least the above reasons, the Examiner fails to establish by a preponderance of the evidence that Dill anticipates the subject matter of claim 1. In rejecting dependent claim 4 as unpatentable over Dill, the Examiner does not articulate any additional findings or reasoning that would remedy the aforementioned deficiency in the disclosure of Dill. See Final Act. 5. Accordingly, we do not sustain the rejection of independent claim 1, or its dependent claims 2, 3, 5, and 7—10, under 35 U.S.C. § 102(b) as anticipated by Dill. We likewise do not sustain the rejection of dependent claim 4 under 35 U.S.C. § 103(a) as unpatentable over Dill. 4 Appeal 2016-008625 Application 13/778,839 Claims 11, 13, and 14: In rejecting independent claim 11, the Examiner finds: Dill discloses a method of managing the weight of an animal comprising: providing the measuring device as described in the above; feeding to the animal an amount of food that fills the cavity (8) of the first side for a length of time to achieve a desired weight in the animal by using the measuring device in a first position in which the opening of the cavity of the second side is positioned on a surface on which the measuring device rests such that the opening of the cavity of the second side faces downward toward the surface (fig.3); moving the measuring device from the first position to a second position (page 2, lines 4—10, moving by inverting); and feeding to the animal an amount of food that fills the cavity of the second side to maintain the weight of the animal after the animal has achieved the desired weight (fig. 2, feeding the animal feed in cavity 7). Final Act. 4. Appellant argues that the Examiner’s findings as to the disclosure of Dill are in error because “the trough in Dill is not used to manage the weight of an animal by actively using both sides of the trough where a first side is specifically used for a length of time to achieve a desired weight and a second side is specifically used for a length of time to maintain the weight.” Appeal Br. 19. According to Appellant, Dill “only provides use of a second side if the first side becomes frozen.” Id.', see also Reply Br. 8 (asserting that “Dill’s trough is designed with a backup space in case the first side is unusable”). We are not apprised of error by Appellant’s arguments. Dill discloses “a trough for watering or feeding the sows, wherein the body thereof is constructed with chambers for double use, that is, in the event of contents thereof becoming frozen the trough may be inverted to receive a fresh supply.” Dill 1,11. 37-42. In particular, Dill discloses that “body 1 may be inverted, as illustrated in Figure 3, and when in this position 5 Appeal 2016-008625 Application 13/778,839 it will be observed that the walls 5 and the portion 4, which rests on the ground, form a central cylindrical chamber 8 adapted to receive an additional supply of water or food.” Id. at 2,11. 4—10. In other words, Dill discloses feeding by filling a first side of the trough with food, moving the trough by inverting it, and feeding by filling the second side of the trough with food. Although we appreciate Appellant’s observation that Dill describes moving the trough and feeding with the second side in the event of the food or water in the first side freezing (see Appeal Br. 19), we do not discern a patentable distinction between such activity and the recited steps of “feeding to the animal an amount of food that fills the cavity of the first side for a length of time to achieve a desired weight,” “moving the measuring device,” and “feeding to the animal an amount of food that fills the cavity of the second side to maintain the weight of the animal after the animal has achieved the desired weight.” As the Examiner points out, claim 11 does not “specifically claim the amount of food in the cavity, the length of time left for the animal to consume, and the desired weight that the user wishes the animal to have.” Ans. 9—10; see also id. at 10 (explaining that “the ‘desired weight’ can be anything, gaining, losing, or maintaining whatever weight the animal has at the time of feeding”). In other words, to the extent that the claim requires feeding the animal an amount of food that fills2 each cavity with food for a period of time, the claim does not recite any limitations 2 We note that Appellant’s Specification broadly describes that a cavity is “filled” with food “by filling level to the top of a particular cavity in the device, by filling a heaping amount in a particular cavity in the device, or by filling to one or more markers on a particular cavity in the device.” Spec. 127. 6 Appeal 2016-008625 Application 13/778,839 specifying a particular quantity of food, amount of time, or desired weight for the animal. See Appeal Br. 32 (Claims App.). With respect to Appellant’s argument that Dill does not actively manage the weight of the animal (see Appeal Br. 19), we agree with the Examiner that Dill’s feeding activity would be for the purpose of managing (i.e., achieving and maintaining) the weight of the animal (see Ans. 9). As the Examiner explains, by flipping the trough due to one cavity containing food or water being frozen and using the other cavity, Dill is concerned] with managing the weight of the animal because Dill wants to make sure the animal is getting enough food for whatever desired weight the owner wishes to have for the animal. Id. at 10; see also id. at 11 (explaining that “Dill teaches flipping the container to maintain the weight of the animal because Dill does not want the animal to starve due to the frozen food”). Appellant also argues that Dill fails to disclose “a measuring device comprising a first side with a cavity and a second opposing side having a cavity that is larger than the cavity of the first side” (Appeal Br. 32 (Claims App.)), as recited in claim 11. See id. at 19 (asserting that “there is no disclosure in Dill that one side is designed to hold less or more food or water than the other”). For the reasons that follow, we do not agree. In finding that Dill discloses this feature, the Examiner takes the position that, “[c]learly from figs. 1—3 of Dill, one of ordinary skill in the art can see that cavity 7 is larger than cavity 8.” Ans. 5. Although the Examiner additionally provides measurements of Dill’s Figure 2 and mathematical calculations to estimate the volume of each cavity (see id. at 6—7), one of ordinary skill in the art need not go to such effort to ascertain unambiguously from Dill’s figures that annular chamber 7 has a larger 7 Appeal 2016-008625 Application 13/778,839 volume than central chamber 8. In this regard, Appellant does not specifically address the Examiner’s finding that the drawing figures in Dill plainly show that annular chamber 7 (i.e., second cavity) is larger than central chamber 8 (i.e., first cavity). See Appeal Br., passim: Reply Br., passim. Thus, Appellant does not identify a deficiency in the Examiner’s finding as to the disclosure of Dill, which is supported by a preponderance of the evidence. For these reasons, Appellant fails to apprise us of error in the rejection of independent claim 11. Accordingly, we sustain the rejection of claim 11, and of its dependent claims 13 and 14, for which Appellant relies on the same arguments (see Appeal Br. 18—19), as anticipated by Dill. Claim 12: In rejecting claim 12, which depends from independent claim 11, the Examiner finds that “Dill discloses wherein the moving of the measuring device from the first position to the second position comprises flipping the measuring device such that the first side cavity switches positions with the second side cavity (page 2, lines 4—10).” Final Act. 4. Appellant argues that the Examiner’s finding is in error because, “upon flipping Dill’s device[,] the first cavity cannot switch positions with the second cavity as the cavities are not vertically oriented but are adjacent to each other in both configurations.” Appeal Br. 20. This argument is unpersuasive because it is not commensurate with the scope of claim 12, which does not require that the first and second cavities are vertically oriented. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (noting that it is well established that limitations not appearing in the claims cannot be relied upon for patentability). Instead, claim 12 only recites, in relevant part, “flipping the measuring device such 8 Appeal 2016-008625 Application 13/778,839 that the first side cavity switches positions with the second side cavity.” Appeal Br. 32 (Claims App.). Thus, Appellant’s argument does not apprise us of error in the Examiner’s finding that Dill discloses such a feature (see Final Act. 4 (citing Dill 2,11. 4—10)), which is supported by a preponderance of the evidence.3 Accordingly, we sustain the rejection of claim 12 as anticipated by Dill. Rejection III In contesting the rejection of claims 15—18, Appellant relies on the arguments set forth with respect to independent claim 11, from which these claims depend. See Appeal Br. 24—28. For the above reasons, Appellant’s arguments fail to apprise us of error in the rejection of claim 11, and, thus, likewise, do not apprise us of error in the rejection of claims 15—18. Additionally, with respect to claims 16--18, Appellant recites limitations of these claims and baldly asserts “that the present references provide no such elements].” Appeal Br. 26—27. Appellant makes no attempt to point out where the Examiner’s findings relati ve to the presence of these elements in the prior art or in the combination of the teachings of the prior art: articulated by the Examiner with regard to these limitations on pages 5-7 of the Final Action may be deficient. Appellant’s conclusory statements do not constitute separate arguments for patentability of the dependent claims pursuant to 37 C.F.R. § 41.37(c)(l)(iv), and, thus, do not identify error in the Examiner’s rejection. See In re Lovin, 652 F.3d 1349, 3 We note that Figure 2 of Dill shows the trough annular chamber 7 in an upward position, and Figure 3 shows the trough flipped over with central chamber 8 in the upward position (i.e., chambers 7 and 8 switch positions). 9 Appeal 2016-008625 Application 13/778,839 1357 (Fed. Cir. 2011) (holding that the Board had reasonably interpreted the same language in the prior rale under 37 C.F.R. § 41.37(c)(l)(vii) (the predecessor to § 41.37(c)(l)(iv)) as requiring “more substantive arguments i n an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art”). For the above reasons, Appellant does not apprise us of error in the rejection of claims 15—18 under 35 U.S.C. § 103(a) as unpatentable over Dill and Phillippi, which we, thus, sustain. DECISION The Examiner’s decision rejecting claims 1—5 and 7—10 is reversed. The Examiner’s decision rejecting claims 11—18 is affirmed. 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-IN-PART 10 Copy with citationCopy as parenthetical citation