James Elliott

Patent Trials and Appeals BoardOct 28, 2020

2020001971 (P.T.A.B. Oct. 28, 2020)

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. 14/881,893 10/13/2015 James Elliott NYLS-1 9375 135800 7590 10/28/2020 New York Law School PTO Clinic c/o Fay Kaplun & Marcin, LLP 150 Broadway, Suite 702 New York, NY 10038 EXAMINER NEWAY, BLAINE GIRMA ART UNIT PAPER NUMBER 3735 NOTIFICATION DATE DELIVERY MODE 10/28/2020 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): USPTOcorrespondence@nyls.edu mmarcin@fkmiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JAMES ELLIOTT ____________ Appeal 2020-001971 Application 14/881,8931 Technology Center 3700 ____________ Before PHILIP J. HOFFMANN, BRUCE T. WIEDER, and KENNETH G. SCHOPFER, Administrative Patent Judges. WIEDER, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 1 and 3–11. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as James Elliott. (Appeal Br. 2.) Appeal 2020-001971 Application 14/881,893 2 CLAIMED SUBJECT MATTER Appellant’s invention relates to “an apparatus for pivotally connecting containers using engagement members.” (Spec. ¶ 2.) Claim 1 is the sole independent claim on appeal. It recites (emphasis added): 1. An apparatus comprising: a first container comprising a first bottom surface and a first side surface rising from the first bottom surface; and a second container comprising a second bottom surface and a second side surface rising from the second bottom surface; wherein the first container and the second container are configured to be pivotally coupled to rotate around a first axis that is parallel to a second axis that runs through the first bottom surface and the second bottom surface when the first and second containers are oriented in a same upright position and wherein, when one of the first and second containers is rotated around the first axis, the other one of the first and second containers remains in the upright position with the first axis remaining parallel to the second axis by force of gravity. REJECTIONS2 Claims 1, 3–5, 7, 8, and 11 are rejected under 35 U.S.C. § 102(a)(1) as anticipated by Elferink (WO 2011/157851 A1, pub. Dec. 22, 2011). Claim 6 is rejected under 35 U.S.C. § 103 in view of Elferink and Stimmel (US 4,886,239, iss. Dec. 12, 1989). Claims 9 and 10 are rejected under 35 U.S.C. § 103 in view of Elferink and Conner (US 4,984,684, iss. Jan 15, 1991). 2 The rejection of claims 5–11 under 35 U.S.C. § 112(b) was withdrawn. (Answer 3.) Appeal 2020-001971 Application 14/881,893 3 ANALYSIS “[A]n invention is anticipated if the same device, including all the claim limitations, is shown in a single prior art reference. Every element of the claimed invention must be literally present, arranged as in the claim.” Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989). “Anticipation can occur when a claimed limitation is ‘inherent’ or otherwise implicit in the relevant reference.” Standard Havens Prods., Inc. v. Gencor Indus., Inc., 953 F.2d 1360, 1369 (Fed. Cir. 1991). “[T]he mere recitation of a newly discovered function or property, inherently possessed by things in the prior art, does not cause a claim drawn to those things to distinguish over the prior art.” In re Swinehart, 439 F.2d 210, 212–13 (CCPA 1971). A prior art device need only be capable of a recited intended use. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). The Examiner finds that claim 1 is anticipated by Elferink. (Final Action 3; see also Answer 3–5.) Appellant argues: Elferlink [sic] does not teach or suggest coupling the containers in a manner to allow when one of the first and second containers is rotated around the first axis, the other one of the first and second containers remains in the upright position with the first axis remaining parallel to the second axis by force of gravity. There is no indication that one container of Elferink will remain in the upright position when the other container rotates, simply that the containers rotate with respect to each other. (Appeal Br. 6.) The Examiner answers that the device of Elferink is clearly capable of being pivotally coupled wherein when one of the first and second containers is Appeal 2020-001971 Application 14/881,893 4 rotated around the first axis, the other one of the first and second containers remains in the upright positon with the first axis remaining parallel to the second axis by force of gravity. (Answer 4.) The Examiner adds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. (Id.) Elferink discloses couplable containers, and more specifically, “couplable beverage containers.” (Elferink, pg. 1, ll. 2–4.) Figures 9–11 of Elferink are instructive and are reproduced below. Appeal 2020-001971 Application 14/881,893 5 “Fig. 9 is a plan side view of an[] embodiment of couplable containers forming part of a container system” and “Figs 10-11 are different views of details showing coupling means of the containers of Fig. 9.” (Id., pg. 8, ll. 3–6.) Elferink teaches that an embodiment is shown in Fig. 9 (front view) with details in Fig. 10 (perspective view) and Fig. 11 (top view). The first container 1A comprises first coupling means 5A in the form of a button comprising a relatively wide discoid portion 19A connected with a relatively narrow waist 21A to a container side wall portion 6A, here . . . arranged on a container collar portion 4A. The second container 1B comprises a second coupling means 7B in the form of a groove in a container side wall portion having, when viewed along the container axis AB a general C-shape (Fig. 11) and in front view a general J-shape or field hockey stick shape (Figs 9, 10) with a stem portion 45 and a tip portion 47. For coupling the first and second containers 1A, 1B, the button-shaped first coupling portion 5A is introduced into the stem portion 45 of the groove-shaped second coupling means 7B and arranged into the tip portion 47 thereof, or in the bend portion between the stem and tip portions 45, 47 so that upon lifting the first container 1A the first coupling means 5A slides into the tip portion 47. Thus coupled, the first and second coupling means 5A, 7B interengage and both containers 1A, 1B may be lifted together by holding either one of them. (Id., pg. 14, ll. 3–23.) Thus, when Elferink’s containers 1A and 1B are interengaged, the containers can pivot around the axis formed by waist 21A of the button. Appellant argues that “because the cups of Elferink are designed to enable carrying multiple containers having simply [sic] by holding one container, the connections of Elferink must be structurally different because they perform a different function.” (Reply Br. 3.) We do not agree. Appeal 2020-001971 Application 14/881,893 6 Appellant has chosen to claim the invention in functional terms. And while “there is nothing intrinsically wrong with the use of such a technique in drafting patent claims,” In re Swinehart, 439 F.2d at 212, if a prior art device is capable of performing that function, then the claim is not patentable. Id. at 212–213; see also In re Schreiber, 128 F.3d at 1477. Although not specifically recited in Elferink, if, e.g., both of Elferink’s containers (1A and 1B) are in an upright position holding a food or drink, and container 1A is rotated about the axis formed by waist 21A, absent some additional force acting on container 1B, gravity (and inertia) will keep container 1B in its upright position. Particularly in view of this, Appellant does not persuasively argue why the Examiner erred in finding that Elferink is “capable of being pivotally coupled wherein when one of the first and second containers is rotated around the first axis, the other one of the first and second containers remains in the upright positon with the first axis remaining parallel to the second axis by force of gravity.” (See Answer 4.) Therefore, we are not persuaded that the Examiner erred in rejecting claim 1 as anticipated by Elferink. Claims 3–5, 7, 8, and 11 are not separately argued and fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).3 Appellant’s arguments with regard to the obviousness rejections of claims 6, 9, and 10 are that the additionally cited prior art does not cure the asserted deficiency of Elferink. (Appeal Br. 8.) However, for the reasons 3 In light of the above, we need not address the Examiner’s findings or Appellant’s arguments regarding the additional embodiment disclosed in Elferink’s Figures 12–16. Appeal 2020-001971 Application 14/881,893 7 discussed, we are not persuaded of such a deficiency. Therefore, we are also not persuaded that the Examiner erred in rejecting claims 6, 9, and 10. CONCLUSION The Examiner’s rejection of claims 1, 3–5, 7, 8, and 11 under 35 U.S.C. § 102(a)(1) is affirmed. The Examiner’s rejections of claims 6, 9, and 10 under 35 U.S.C. § 103 are affirmed. In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–5, 7, 8, 11 102(a)(1) Elferink 1, 3–5, 7, 8, 11 6 103 Elferink, Stimmel 6 9, 10 103 Elferink, Conner 9, 10 Overall Outcome 1, 3–11 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)(1)(iv). AFFIRMED