Ex Parte Wurth

Patent Trial and Appeal Board

Oct 31, 2017

13778839 (P.T.A.B. Oct. 31, 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.
13/778,839 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).
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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
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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.
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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
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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.
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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
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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
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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).
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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
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