Ex Parte AGASSI et al

Patent Trial and Appeal Board

Aug 13, 2018

14589596 (P.T.A.B. Aug. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/589,596 01/05/2015 Or AGASSI
122066 7590 08/15/2018
M&B IP Analysts, LLC
500 Headquarters Plaza
Morristown, NJ 07960-7070
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
AGAM P0145Cl 4936
EXAMINER
CARROLL, JEREMY W
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
08/15/2018 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):
pair@mb-ip.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OR AGASSI and REUVEN MARKO
Appeal2018-000687 1
Application 14/589,5962
Technology Center 3700
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1 and 8-10. 3 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 Our Decision references Appellants' Appeal Brief ("App. Br.," filed July
17, 2017) and Reply Brief ("Reply Br.," filed October 23, 2017), the
Examiner's Answer ("Ans.," mailed August 23, 2017), and Final Office
Action ("Final Act.," mailed February 24, 2017).
2 Appellants identify Agam Innovations, Ltd. as the real party in interest.
App. Br. 3.
3 Claims 2-7 are withdrawn from consideration (Final Act. 1 ).
Appeal2018-000687
Application 14/589,596
THE INVENTION
Independent claim 1, reproduced below, is illustrative of the subject
matter on appeal.
1. An apparatus for controlled pouring of a liquid, comprising:
a hollow cone-shaped nozzle having a nozzle orifice
through which the liquid is poured, wherein the nozzle has a
rotational symmetry at least with respect to outer walls of the
nozzle;
an air tube protruding from the nozzle at a side that is
opposite to the nozzle orifice, wherein the air tube protrudes
beyond the nozzle, wherein the air tube allows at least an air
flow when liquid is poured through the nozzle orifice; and
a cap engaged with the nozzle having a first cap orifice
generally conforming in shape to the nozzle orifice and a
second cap orifice generally conforming in shape to the
protruding air tube, wherein the second cap orifice is arranged
in a longitudinal direction on the cap, an internal hollow of the
cap having inner walls tightly conforming to the cone-shaped
outer walls of the nozzle at any rotational position of the cap
about the nozzle, the cap having a first position about the nozzle
wherein the first cap orifice is not aligned with the nozzle
orifice and the second cap orifice is not aligned with the
protruding air tube, and the cap having a second position about
the nozzle where the first cap orifice is aligned with the nozzle
orifice and the second cap orifice is aligned with the protruding
air tube of the nozzle, wherein, when the cap is in the first
position, the liquid cannot be poured through the apparatus, and
when the cap is in the second position, the liquid can be poured
through the apparatus.
App. Br. 17 (Claims App.).
THE REJECTIONS
I. Claims 1 and 8-10 are rejected on the ground of non-statutory
obvious-type double patenting as unpatentable over claims 1, 4, 6-7,
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Application 14/589,596
and 9 of Agassi et al. (US 8,944,297 B2, iss. Feb. 3, 2015) ("Agassi")
and Strand (US 4,877,159, iss. Oct. 31, 1989).
II. Claims 1 and 8-10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Moran (US 3,317,093, iss. May 2, 1967), Mumford
(US 4,376,497, iss. Mar. 15, 1983), and Strand.
ANALYSIS
Obviousness-Type Double Patenting
Appellants have not addressed or, otherwise, contested the rejection of
claims 1 and 8-10 under obviousness-type double patenting in the Briefs
before us. Thus, we summarily sustain this rejection.
Obviousness
Independent claim 1 requires, inter alia, "an air tube protruding from
the nozzle at a side that is opposite to the nozzle orifice, wherein the air tube
protrudes beyond the nozzle, wherein the air tube allows at least an air flow
when liquid is poured through the nozzle orifice." See App. Br. 17 (Claims
App.).
In rejecting claim 1 as obvious over Moran, Mumford, and Strand, the
Examiner finds that Moran is silent as to "wherein the air tube protrudes
beyond the nozzle." (Final Act. 7; see also, Ans. 6). To cure this
deficiency, the Examiner relies on Figure 2 of Strand, specifically vent
tube 17. (Id.). And the Examiner concludes that "[i]t would have been
obvious to one having ordinary skill in the art at the time the invention was
made to modify the device of Moran with air tube as taught by Strand in
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Application 14/589,596
order to provide a smooth flow of liquid from the container without surging
or gurgling." (Id.).
Appellants argue, inter alia, that the Examiner's proposed motivation
for the combination is deficient because "Moran already purports to provide
[a] steady flow without gurgling" and the Examiner "does not otherwise
assert that the vent tube of Strand would improve upon the flow of Moran,
let alone explain why the proposed modification would result in this
improvement." (App. Br. 8; see also, Reply Br. 4). According to
Appellants, "Strand does not even suggest that protrusion of the vent
path[, i.e., vent tube 17,] aids in smoothness of flow or otherwise teach any
benefits for protrusion of the vent path." (Id. at 7).
Responding to Appellants' arguments in the Answer, the Examiner
maintains that:
This motivation was obtained from the prior art of Strand
(column 3, lines 16 to 20) as one of the problems being solved.
Even though Moran does disclose gurgling as one of the
problems to be solved, it would be obvious to one of ordinary
skill in the art to substitute an anti-gurgling device on a
dispenser with a similar but improved anti-gurgling device.
(Ans. 10).
A rejection based on§ 103(a) clearly must rest on a factual basis. As
the Court in KSR made clear, "' [ r ]ejections on obviousness grounds cannot
be sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness."' KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,
418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The
Examiner has the initial duty of supplying the factual basis for the rejection
and may not resort to speculation, unfounded assumptions, or hindsight
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Application 14/589,596
reconstruction to supply deficiencies in its factual basis. In re Warner,
379 F.2d 1011, 1017 (CCPA 1967). See Belden Inc. v. Berk-Tek
LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) ("[O]bviousness concerns
whether a skilled artisan not only could have made but would have been
motivated to make the combinations or modifications of prior art to arrive at
the claimed invention."); see also InTouch Techs., Inc. v. VGO
Communications, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014).
We do not see why, and the Examiner has not adequately explained
why, a person of ordinary skill in the art would have been motivated to
modify Moran's cap member to include a vent tube as disclosed in Strand.
We have reviewed the disclosure of Strand, including column 3, lines 16-20
of Strand cited by the Examiner (Ans. 10), which discloses that "a smooth
flow of liquid from the container is achieved without surging or gurgling."
However, as Appellants point out (App. Br. 8), Moran discloses that air inlet
17 and inlet channel 20 allow the contents of the container to flow freely and
steadily without gurgling and without interruption (Moran col. 2, 11. 30-37).
Thus, we do not see that any improvement would be achieved by the
proposed modification of Moran's device.
We agree with Appellants (App. Br. 7-9) that the Examiner has not
provided articulated reasoning with rational underpinnings for modifying
Moran's device with Strand's vent tube 17. At best, the Examiner offers a
conclusory statement only- i.e., the modification would provide an
"improved anti-gurgling device" (Ans. 10), which is insufficient to establish
a prima facie case of obviousness. See Kahn, 441 F .3d at 988 ("[R ]ejections
on obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
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Application 14/589,596
underpinning to support the legal conclusion of obviousness"). The
Examiner has not cited any evidence or, otherwise, explained how the
proposed modification would provide any particular improvement.
Accordingly, we do not sustain the Examiner's rejection of
independent claim 1 and dependent claims 8-10 as unpatentable over
Moran, Mumford, and Strand.
DECISION
The Examiner's rejection of claims 1 and 8-10 on the ground of non-
statutory obvious-type double patenting is affirmed.
The Examiner's rejection of claims 1 and 8-10 under 35 U.S.C.
§ 103(a) is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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