John Bongiovanni

Patent Trials and Appeals Board

Jun 5, 2020

2019006389 (P.T.A.B. Jun. 5, 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.
15/610,932 06/01/2017 John Bongiovanni BONJ22B 8442
41681 7590 06/05/2020
Miller & Hurley
12 Parkside Drive
Dix Hills, NY 11746-4879
EXAMINER
PANCHOLI, VISHAL J
ART UNIT PAPER NUMBER
3754
MAIL DATE DELIVERY MODE
06/05/2020 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 JOHN BONGIOVANNI
____________

Appeal 2019-0063891
Application 15/610,9322
Technology Center 3700
____________

Before PHILLIP J. KAUFFMAN, TARA L. HUTCHINGS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.

HUTCHINGS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 11 and 12. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 Our Decision references Appellant’s Specification (“Spec.,” filed June 1,
2017) and Appeal Brief (“Appeal Br.,” filed Mar. 26, 2019), and the
Examiner’s Answer (“Ans.,” mailed May 24, 2019) and Final Office Action
(“Final Act.,” mailed Oct. 29, 2018).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies John Bongiovanni as the real party in
interest. Appeal Br. 2.
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CLAIMED INVENTION
Claim 11, reproduced below with added bracketed notations, is the
sole independent claim on appeal and is representative of the claimed subject
matter:
11. A device for acting as both a container and a funnel
which comprises:
a) a body;
b) a neck;
c) a spout; and
d) a base;
[1] wherein said neck has a proximal end and a
distal end;
[2] wherein said proximal end of said neck is
connected to said body;
[3] wherein said spout is disposed at said distal end
of said neck;
[4] wherein said body and said base are for holding
a fluid to be dispensed through said spout via said neck;
and
[5] wherein said base is for being at least partially
detached from said body after said dispensing of said
fluid through said spout via said neck, so that said body,
said neck, and said spout may act as a funnel;
[6] wherein said neck comprises a flexible portion;
[7] wherein said flexible portion of said neck is
flexible by virtue of having an accordion construction;
[8] wherein said device further comprises a cap;
wherein said cap is threadably attachable to said spout;
[9] wherein said spout is rigid;
[10] wherein said base comprises an indented
portion and a flush portion;
[11] wherein said body has a circumference;
[12] wherein said indented portion has a
circumference which is recessed from said circumference
of said body by a distance;
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[13] wherein said flush portion has a
circumference substantially identical to said
circumference of said body;
[14] wherein said base further comprises at least
two guides;
[15] wherein said at least two guides comprise an
upper guide and a lower guide;
[16] wherein said guides are for guiding a user in
cutting of said device;
[17] wherein said upper guide is on said indented
portion of said base;
[18] wherein said lower guide is on said flush
portion of said base;
[19] wherein when a user cuts said upper guide of
said base and said lower guide of said base, a bottom
portion and a central portion are separated from said
base;
[20] wherein said bottom portion of said base has a
sidewall portion;
[21] wherein said sidewall portion has an interior
size;
[22] wherein said interior size of said sidewall
portion of said bottom portion of said base corresponds to
said circumference of said indented portion of said base;
[23] wherein said sidewall portion of said bottom
portion of said base has a cross-sectional thickness; and
[24] wherein said cross-sectional thickness of said
sidewall portion of said bottom portion of said base is
substantially identical in measure to said distance by
which said circumference of said indented portion of said
base is recessed from said circumference of said body.

REJECTIONS
Claim 11 is rejected under 35 U.S.C. § 103 as unpatentable over Ha
(US 4,602,728, iss. July 29, 1986) and Genius Asian, 4 Ways to Make an
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Application 15/610,932

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Engine Oil Funnel & 2 Ways to Pour Oil, (May 26, 2014),
https://www.youtube.com/watch?v=ICcqwXPSxmk (“Digital Video”).
Claim 12 is rejected under 35 U.S.C. § 103 as unpatentable over Ha,
Digital Video, and Rogers Martijena (US 2010/0044339 A1, pub. Feb. 25,
2010).

ANALYSIS
Claim 11
We are persuaded at least by Appellant’s argument that the Examiner
erred in determining that it would have been an obvious design choice to
modify Ha to have a “cross-sectional thickness of said sidewall portion of
said bottom portion of said base [be] substantially identical in measure to
said distance by which said circumference of said indented portion of said
base is recessed from said circumference of said body,” as recited in claim
11, limitation (d)(24). Appeal Br. 4–9.
As a brief overview of the prior art, Ha discloses a container adapted
to pour its contents into a hard-to-reach opening. Ha 1:5–7. Ha’s container
10´ includes reservoir 12 with bottom 14, top 16´, bottom rim 18, and top
rim 20. Id. at 3:28–32, Fig. 2. Top 16´ includes neck 24´ adapted to be
extendible from a collapsed position. Id. at 3:33–39. Digital Video teaches
how to make an engine oil funnel by removing a bottom portion of an empty
plastic container, such as a soda bottle, milk jug, or motor oil container. See
Digital Video; see also Final Office Action 6–7 (providing screen shots of
Digital Video).
In rejecting claim 11, the Examiner primarily relies on Ha for
disclosing the limitations recited in claim 11. See Ans. 11; see also Final
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Act. 2–4. The Examiner acknowledges that Ha does not teach “cutting the
container along the upper and the lower guide to form a funnel and a funnel
cap out of the container as suggested by the claim” (i.e., limitations (d)(14)–
(d)(19)). Ans. 11. However, the Examiner relies on Digital Video for
teaching that it “would have been obvious . . . to cut the container of Ha
along the upper and lower guides or any other location as deemed fit by a
consumer or a user to form a make-shift funnel[.]” Ans. 11–12 (emphasis
added); see also Final Act. 5.
The Examiner also recognizes that Ha’s container does not disclose
the claimed cross-sectional thickness of the sidewall portion of the base, as
recited in limitation (d)(24) of claim 11. Ans. 11; Final Act. 4. However,
the Examiner determines that modifying the base of Ha’s container to meet
limitation (d)(24) would have been an obvious matter of design choice. Id.
at 4–6. Specifically, the Examiner reasons that the modification involves “a
mere change in the size of a component” that could be performed for various
reasons, “such as providing a stronger and thicker wall for increasing the
circumferential strength of the container” or “changing the thickness of the
[] base portion of a container to increase its vertical stability when the
container as a whole is placed on a horizontal surface.” Id. at 5–6 (citing
MPEP § 2144.04(IV)).
Yet, Appellant’s Specification provides that when a user cuts along
upper guide 44 of base 18 and lower guide 46 of base 18, bottom portion 48
and central portion 50 are separated from base 18. Spec. 11:28–30,
Figs. 2, 4. Bottom portion 48 of base 18 has sidewall portion 52 having
interior size 54 that corresponds to circumference 38 of indented portion 32
of base 18 (i.e., limitation (d)(24)). Id. at 11:31–12:4, Fig. 4. “This
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construction allows the bottom portion 48 to act as a cap for the device 10
after it has been used as a funnel, as illustrated in Figures 4, 6, and 7.” Id. at
12:4–6. The correspondence of size of the interior of the sidewall portion of
the circumference of the indented portion allows the cap to fit snugly on
device 10 after it is used as a funnel. Id. at 12:6–9. In addition, this
construction “allows the bottom portion 48 to fit sleekly with the body for
both aesthetic and storage reasons.” Id. at 12:17–19. Put simply, limitation
(d)(24), as recited in claim 11, allows the bottom portion of the base to be an
effective cap after the device is used as a funnel. Appeal Br. 5 (arguing that
the bottom portion once removed would “fit snugly onto the indented
portion without sliding or being precariously balanced,” and would “keep
debris out of the container”).
Given this difference in structure and function from Ha and Digital
Video, we are persuaded that the Examiner erred in relying on design choice
for the proposed modification of Ha. See In re Gal, 980 F.2d 717, 719–20
(Fed. Cir. 1992) (finding of obvious design choice precluded when claimed
structure and the function it performs are different from the prior art).
Therefore, we do not sustain the rejection of claim 11 under 35 U.S.C.
§ 103 as unpatentable over Ha and Digital Video.
Claim 12
The Examiner’s rejection of dependent claim 12 under 25 U.S.C.
§ 103 does not cure the deficiencies in the rejection of the independent
claim, as set forth above. Therefore, we do not sustain the rejection of
claim 12 under 35 U.S.C. § 103 for the same reasons.

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CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
11 103 Ha, Digital Video 11
12 103 Ha, Digital Video,
Rogers Martijena
12
Overall
Outcome
11, 12

REVERSED