Shkolnikov, Yury et al.

Patent Trials and Appeals Board

Dec 17, 2019

14751813 - (D) (P.T.A.B. Dec. 17, 2019)

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.
14/751,813 06/26/2015 Yury Shkolnikov 22945-1 (CFTI:0045-1) 1062
109566 7590 12/17/2019
Fletcher Yoder PC (CFTI)
P.O. Box 692289
Houston, TX 77269-2289
EXAMINER
LEE, CHEE-CHONG
ART UNIT PAPER NUMBER
3752
NOTIFICATION DATE DELIVERY MODE
12/17/2019 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):
docket@fyiplaw.com
swanson@fyiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YURY SHKOLNIKOV, ANATOLY GOSIS,
MARK E. CHARPIE, and MARVIN D. BURNS
Appeal 2019-003175
Application 14/751,813
Technology Center 3700
Before LINDA E. HORNER, DANIEL S. SONG, and
LEE L. STEPINA, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 6‒12, and 21‒23.2 We have
jurisdiction under 35 U.S.C. § 6(b).

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Carlisle Fluid
Technologies, Inc. Appeal Br. 2.
2 Claims 2 and 3 are canceled; claims 4, 5, and 13‒20 are withdrawn from
consideration. Appeal Br. 2.
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The Examiner rejected the claims as unpatentable due to
obviousness-type double patenting, failure to comply with the written
description requirement, indefiniteness, anticipation, and obviousness.
Appellant does not contest the double patenting rejections. Appellant argues
that the claims, as properly interpreted, have adequate written description
support and are not indefinite. Appellant also argues that the prior art does
not disclose all the elements of the independent claim on appeal.
For the reasons explained below, we do not reach one of the double
patenting rejections. We sustain another double patenting rejection. We do
not sustain the rejections based on written description, indefiniteness,
anticipation, and obviousness. Thus, we AFFIRM IN PART.
CLAIMED SUBJECT MATTER
The claims are directed to “venting systems for liquid supply
containers for spray devices.” Spec. ¶ 2. Claim 1 is the sole independent
claim on appeal and is reproduced below.
1. A system, comprising:
a container cover configured to couple to a gravity feed
spray device, comprising:
an inner cover comprising a first inner surface;
an outer cover comprising a second inner surface;
a buffer chamber between the first inner surface of
the inner cover and the second inner surface of the outer
cover;
a liquid conduit;
a first vent conduit coupled to the outer cover,
wherein the first vent conduit comprises a first tube that
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protrudes away from the second inner surface of the outer
cover into the buffer chamber toward the first inner
surface of the inner cover, and wherein the first tube is
laterally offset from the liquid conduit;
a second vent conduit, wherein the second vent
conduit comprises a second tube that protrudes away
from the buffer chamber, wherein the liquid conduit and
the second vent conduit are configured to fluidly couple
to an interior volume of a liquid container, and wherein
the liquid conduit and the second tube are axially offset
along a central axis of the container cover;
a vent path through the first vent conduit, the
buffer chamber, and the second vent conduit; and
wherein the container cover is configured to block fluid
flow through the vent path when the container cover is coupled
to the gravity feed spray device.
Appeal Br. 16 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Grant US 3,990,609 Nov. 9, 1976
Broccoli US 4,832,232 May 23, 1989
REJECTIONS
The following rejections are on appeal:
1. Claims 1 and 6‒12 are rejected on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claims 1‒3
and 6‒10 of U.S. Patent No. 9,079,201.
2. Claims 1, 7, and 8 are provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as unpatentable
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over claims 1, 2, 7, 9, 10, and 12 of co-pending U.S. Patent
Application No. 13/789,528.
3. Claims 1, 6‒12, and 21‒23 are rejected under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description
requirement.
4. Claims 8 and 12 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
5. Claims 1, 6‒12, 22, and 23 are rejected under 35 U.S.C. § 102(b)
as anticipated by Grant.
6. Claim 21 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Grant and Broccoli.
OPINION
Double Patenting Rejections
Appellant presents no arguments contesting the obviousness-type
double patenting rejection of claims 1 and 6‒12 over issued claims 1‒3 and
6‒10 of U.S. Patent No. 9,079,201. “If an appellant fails to present
arguments on a particular issue -- or, more broadly, on a particular rejection
-- the Board will not, as a general matter, unilaterally review those
uncontested aspects of the rejection.” Ex parte Frye, 94 USPQ2d 1072,
1076 (BPAI 2010) (precedential). Thus, we summarily sustain this
rejection.
Appellant likewise presents no arguments contesting the provisional
obviousness-type double patenting rejection of claims 1, 7, and 8 over
claims 1, 2, 7, 9, 10, and 12 of co-pending U.S. Patent Application No.
13/789,528. Because this rejection is provisional, we decline to reach it.
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We leave it to the Examiner to determine at the time when any claims of this
application are otherwise in condition for allowance whether the
obviousness-type double patenting rejection remains proper. See Ex parte
Moncla, 95 USPQ2d 1884 (BPAI 2010) (precedential). The Manual of
Patent Examining Procedure (MPEP) § 804(I)(B)(l)(b) (9th ed., January
2018 [R-08.2017]) provides guidance to examiners as to the handling of
provisional nonstatutory double patenting.
Written Description Rejection
Appellant argues claims 1, 6‒12, and 21‒23 as a group. Appeal
Br. 10‒22. We select claim 1 as representative, and claims 6‒12 and 21‒23
stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (2018).
The Examiner determined that the original disclosure does not provide
adequate written descriptive support for recitation that “the liquid conduit
and the second tube are axially offset along a central axis of the container
cover” in claim 1. Final Act. 7. The rejection is based on the Examiner
reading this claim limitation as requiring that both the liquid conduit and the
second tube are not coaxial with the central axis of the container cover.
Ans. 16.
Appellant’s arguments evince a different reading of this claim
limitation based on the requirement that the elements are offset “along a
central axis of the container cover.” Appellant argues that the claim
limitation requires an axial separation along the central axis between the
liquid conduit and the second tube. Reply Br. 2. Appellant shows, with
reference to annotated Figure 6 reproduced below, that “the liquid conduit
ends before the second tube begins.” Id. at 2‒3.
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Figure 6 above, as annotated in the Reply Brief, shows an
“Approximate Central Axis of Container Cover” and a gap between the
lower end of the liquid conduit and upper end of the second tube. Reply
Br. 3. Thus, Appellant’s reading of the claim language requires an offset
between the liquid conduit and the second tube in the vertical direction.
This reading is consistent with Appellant’s Specification. For
instance, the Specification similarly describes offset distance 248 between
inner cover 154 and outer cover 152 as being “along the first axis 246 of the
outer vent conduit 232.” Spec. ¶ 36. Thus, the Specification describes an
offset along an axis in a manner consistent with Appellant’s arguments here,
in referring to a gap in the direction of the noted axis. Further, original
claim 7 recites the first and second vent conduits are spaced apart from one
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another by an offset distance that comprises an axial offset and a lateral
offset relative to the axes of the first and second vent conduits. Spec. 20
(claim 7). We understand the lateral offset of claim 7 to refer to a gap in the
horizontal direction between the axes of the vent conduits. Thus, the
Specification uses “axial offset” in a manner consistent with Appellant’s
argument here, to refer to a gap in the vertical direction. Therefore, we
agree with Appellant’s reading of “axially offset along a central axis of the
container cover” to refer to a gap between the liquid conduit and the second
tube in the direction of the central axis (i.e., vertically, as shown in Figure
6). Figure 6 provides adequate support for this claimed offset, as noted
above in the annotated Figure. For this reason, we do not sustain the
rejection of claims 1, 6‒12, and 21‒23 under 35 U.S.C. § 112, first
paragraph.
Indefiniteness Rejection
The Examiner determined that dependent claims 8 and 12 are
indefinite for lack of adequate antecedent basis, because these claims
positively recite the liquid container, which is not a positively recited
element of claim 1. Final Act. 7‒9. The Examiner rejected claim 12 on the
same reasoning as it relates to the positive recitation of “the gravity feed
spray device.” Id. at 9. The Examiner further noted that positively reciting
these components in combination with the container cover of claim 1
impermissibly directs the claimed invention to the non-elected invention of
the combination of a spray gun and container system. Id. at 8, 9.
Appellant argues that the antecedent basis for the language of claims 8
and 12 is clear in claim 1. Appeal Br. 8. Appellant notes that the Examiner
has cited nothing to support the premise that an element introduced with
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functional language cannot be positively recited in a later dependent claim.
Reply Br. 3. Appellant further argues that the Examiner’s rejection is
improper because original claims 8 and 12 positively recited “the liquid
container” and the Examiner included these claims in the restriction
requirement as forming part of the elected group. Appeal Br. 9. Appellant
argues that the Examiner improperly rejected these claims as indefinite
based on the Examiner’s own restriction requirement being overinclusive.
Reply Br. 4 (citing MPEP 2173.02).
We agree with Appellant that the language of claims 8 and 12 is clear.
Claim 1 is directed to a “system.” In claim 1, the system comprises a
container cover configured to interact with a gravity feed spray device and a
liquid container. In dependent claim 8, the system comprises both the
container cover and the liquid container. In dependent claim 12, the system
comprises the container cover, the liquid container, and the gravity feed
spray device. Thus, dependent claims 8 and 12 simply add additional
elements to the system of claim 1. We fail to see how these additional
recitations render the claim unclear. Further, the inferential introduction of
these elements in independent claim 1 provides adequate antecedent basis
for their positive recitations in dependent claims 8 and 12.
As to the Examiner’s reasoning that the claims are indefinite because
they are directed to a non-elected invention, we disagree that this is a proper
basis for finding the claims indefinite in this instance. Simply because the
dependent claims are purported to cover a different scope than the elected
invention does not render the claim unclear. The Examiner included original
claims 1‒12 in the claims identified as corresponding to Group I in the
Restriction Requirement. Original claim 8 recited “the second vent conduit
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is configured to extend into the liquid container a third distance that is
greater than 50% of a height of the liquid container.” Spec. 20. Original
claim 12 recited, “The system of claim 1, comprising the liquid container
coupled to the container cover, and the gravity feed spray device coupled to
the container cover.” Id. In response to the Restriction Requirement,
Appellant elected the claims of Group I. Appeal Br. 9. We decline to
sustain a rejection of claims 8 and 12 as indefinite in this instance on the
basis that the claims arguably add limitations that render the claims directed
to non-elected inventions, when the Examiner originally identified claims
containing these limitations as being directed to the elected invention. For
this reason, we do not sustain the rejection of claims 8 and 12 under
35 U.S.C. § 112, second paragraph.
Anticipation Rejection
Claim 1 recites “a first vent conduit coupled to the outer cover,
wherein the first vent conduit comprises a first tube that protrudes away
from the second inner surface of the outer cover into the buffer chamber
toward the first inner surface of the inner cover.” Appeal Br. 16. The
Examiner found that Grant anticipates the system of claim 1, including
disclosing a first vent conduit 40 that comprises a tube that protrudes away
from the second inner surface of the outer cover 24 into the buffer chamber
50 toward the first inner surface of the inner cover 42. Final Act. 10‒11.
Appellant argues, and we agree, that Grant’s vent opening 40, which
is disposed entirely within the lid 24, is not a tube that protrudes into buffer
chamber 50. Appeal Br. 12. As is clear from Figure 1 of Grant, vent 40 is
an opening formed through lid 24. Vent 40 is not shown or described in
Grant as being formed as a tube that protrudes into chamber 50.
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As discussed above, claim 1 also recites “wherein the liquid conduit
and the second tube are axially offset along a central axis of the container
cover.” We agree with Appellant that, when this limitation is properly
construed to require a gap between the lower end of the liquid conduit and
the upper end of the second tube, Grant fails to anticipate this limitation.
Appeal Br. 13. The dimple 54 of Grant, identified by the Examiner as
corresponding to the claimed “second vent conduit,” axially overlaps with
delivery tube 26, identified by the Examiner as the claimed “liquid conduit.”
Grant, Fig. 1.
For these reasons, we do not sustain the Examiner’s rejection of
independent claim 1 and its dependent claims 6‒12, 22, and 23 as
anticipated by Grant.
Obviousness Rejection
Claim 21 depends from independent claim 1. The Examiner’s
rejection of claim 21 is based on the same deficient finding that Grant
discloses a first tube and an axial offset as recited in claim 1. We agree with
Appellant that Broccoli does not rectify the above-noted deficiencies in
Grant. Appeal Br. 14. Thus, we likewise do not sustain the Examiner’s
rejection of claim 21 as unpatentable over Grant and Broccoli.
CONCLUSION
We do not reach the provisional obviousness-type double patenting
rejection of claims 1, 7, and 8. We sustain the rejection of claims 1 and 6‒
12 under the doctrine of obviousness-type double patenting over the issued
claims of U.S. Patent 9,079,201. We do not sustain the rejections claims 1,
6‒12, and 21‒23 under 35 U.S.C. § 112, first paragraph, of claims 8 and 12
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under 35 U.S.C. § 112, second paragraph, of claims 1, 6‒12, 22, and 23
under 35 U.S.C. § 102(b), and of claim 21 under 35 U.S.C. § 103(a). Thus,
we affirm the Examiner’s decision on unpatentability of claims 1 and 6‒12,
and we reverse the Examiner’s decision on unpatentability of claims 21‒23.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/
Basis
Affirmed Reversed Not
Reached
1, 6‒12 Obviousness-
type double
patenting
1, 6‒12
1, 7, 8 Provisional
Obviousness-
type double
patenting
1, 7, 8
1, 6‒12,
21‒23
112 ¶ 1 Written
description
1, 6‒12,
21‒23

8, 12 112 ¶ 2 Indefiniteness 8, 12
1, 6‒12,
22, 23
102(b) Grant 1, 6‒12,
22, 23

21 103(a) Grant,
Broccoli
21
Overall
Outcome
1, 6‒12 21‒23
TIME PERIOD FOR RESPONSE
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 IN PART