Ex Parte Bivens

Board of Patent Appeals and Interferences

Jun 28, 2010

10642130 (B.P.A.I. Jun. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ERIC BIVENS
____________

Appeal 2009-007955
Application 10/642,130
Technology Center 3700
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Decided: June 29, 2010
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Before: JENNIFER D. BAHR, STEVEN D.A. McCARTHY, and STEFAN
STAICOVICI, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Eric Bivens (Appellant) appeals under 35 U.S.C. § 134 (2002) from
the Examiner's decision rejecting claims 1-12 and 20-25. Claims 13-19 have
been canceled. We have jurisdiction over this appeal under 35 U.S.C. § 6
(2002).

The Invention
Appellant's claimed invention is directed to a vent tube permanently
secured to the inner surface of a container, such as a plastic two liter
container. Spec. 10.
Claim 1, reproduced below, is illustrative of the claimed invention.
1. An apparatus for containing a fluid, said
apparatus comprising:
(a) a body for containing a fluid, said body
having an upper portion and a lower portion, said
upper portion of said body having an aperture
formed therein for permitting liquid to be poured
into and out of said body, said body further
including at least one sidewall forming an outer
periphery of said body;
(b) a vent member being disposed in said
body, said vent member being a separate piece
from said body, said vent member having first and
second ends, said first end of said vent member
being positioned adjacent said aperture formed in
said upper portion of said body;
(c) said first end and said second end of said
vent member each having an opening formed
therein;
(d) said vent member having a fluid
passageway for connecting said opening formed in
said first end to said opening formed in said
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second end to allow for an external gas to pass
through said vent member and into said body as
liquid is poured out of said body; and,
(e) said vent member being permanently
secured to said at least one sidewall of said body.

The Rejections
Appellant seeks review of the following rejections:
A. Claims 1-3 and 23 as anticipated by Goff (US 6,138,877 issued Oct. 31,
2000).
B. Claim 6 as unpatentable over Goff in view of Braginetz (US 5,839,625
issued Nov. 24, 1998).
C. Claims 7, 20, 24, and 25 as unpatentable over Goff and Turoff (US
4,655,355 issued Apr. 7, 1987).
D. Claims 7 and 20-22 as unpatentable over Goff, Turoff, and Hullihen (US
4,523,687 issued Jun. 18, 1985).
E. Claims 1-6, 8-12, and 23 as anticipated by Cox (US 3,066,819 issued
Dec. 4, 1962).
F. Claims 1-6, 8-12, and 23 as unpatentable over Cox and Codorniz (US
5,104,010 issued Apr. 14, 1992).
G. Claim 5 as unpatentable over Cox, Codorniz, and Burrows (US 5,211,314
issued May 18, 1993).
H. Claims 1-4, 8-12, and 23 as anticipated by Codorniz.
I. Claim 5 as unpatentable over Codorniz and Burrows.
J. Claim 6 as unpatentable over Codorniz and Braginetz.
K. Claims 7, 20, 24, and 25 as unpatentable over Codorniz and Turoff.
L. Claims 7 and 20-22 as unpatentable over Codorniz, Turoff, and Hullihen.
M. Claims 1-4, 7-10, 23, and 24 as anticipated by Moser (US 1,243,963
issued Oct. 23, 1917).
N. Claims 7, 20-22, and 25 as unpatentable over Moser and Wanke (US
4,142,657 issued Mar. 6, 1979) or Turoff.
O. Claim 11 as unpatentable over Moser and Codorniz.
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SUMMARY OF DECISION
We AFFIRM-IN-PART and enter NEW GROUNDS of REJECTION.

OPINION
Appellant argues each of the Examiner's anticipation rejections A, E,
H, and M separately. However, for each rejection, Appellant argues that the
Examiner has not identified a vent member "permanently secured" to a body
or a "securement means for permanently securing" a vent member to a body
as required by claims 1, 7, 8, and 20. Appeal Br. 20-31. In addition, for
rejections E and H, Appellant argues that Cox and Codorniz do not teach a
vent member that is a separate piece from the body. Appeal Br. 20-22, 25-
27, 29, 31.
Thus, the first dispositive issue in this appeal is whether Goff, Cox,
Codorniz, or Moser describes a vent member "permanently secured" to a
body or a "securement means for permanently securing" a vent member to a
body as required by claims 1, 7, 8, and 20.
In Rejections G and I, the Examiner additionally finds that Burrows
describes using ultrasonic welding to secure a vent to a container. Ans. 7, 8-
9. Appellant argues that Burrows does not teach ultrasonic welding, is non-
analogous art, and that there is no teaching or suggestion to "modify any of
these references to satisfy the claimed invention." Appeal Br. 31-32.
Thus, the second dispositive issue in this appeal is whether Burrows
teaches ultrasonic welding, is analogous art, and whether the Examiner has
articulated a reason with rational underpinning for modifying the pouring
apparatus of Cox, as modified by Codorniz with the weld described in
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Burrows, and for modifying the pouring apparatus of Codorniz with the
weld described in Burrows.
The Goff Reference
The Examiner found that the screw-on vent member in Goff is
"permanent" if one chose to leave it in place. Ans. 4, 11-12; cf. Goff, fig. 2,
col. 4, ll. 4-14 (noting items 28 and 29 which define a threaded channel for
receiving threaded neck 12 of bottle 11). However, claim 1 requires a vent
member "permanently secured" to the body. Goff's vent has threads
defining a removable structure. Thus, Goff's apparatus does not describe a
vent member "permanently secured" to a body as recited in claim 1. In
addition, the Examiner does not make any findings in Rejections B, C, and
D regarding modifying the spout attachment of Goff to have a permanently
secured vent member. As such, we do not sustain Rejections A, B, C, and
D.
The Moser Reference
The Examiner found that the clip-on vent member in Moser is
permanent if "left on the bottle by the user." Ans. 10, 16; cf. Moser, ll. 57-
79 (noting clamping member 8 holds tube 5 in position so that it is secure
but "readily removable"). However, each of claims 1, 7, and 8 requires a
vent "permanently" secured to the body. Moser's clip-on vent is removable.
Thus, Moser does not describe a vent member "permanently secured" to a
body as recited in claims 1 and 8, or a "means for permanently securing" as
recited in claim 7. In addition, the Examiner does not make any findings in
Rejections N and O regarding modifying the tube in Moser to have a vent
member permanently secured to a body. As such, we do not sustain
Rejections M, N, and O.
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The Cox Reference
The Examiner found that Cox describes a "vent at 14 disposed
permanently in the body." Ans. 6. However, item 14 in Cox is a handle
unrelated to the vent. Col. 2, l. 31, fig. 2. Next, the Examiner, apparently
addressing the "permanently secured" limitation of claims 1 and 8, states
that claim 1 is a product-by-process claim such that there is no structural
difference between the apparatus of claim 1 and that of Cox, which has a
"bottle … [and] the vent structure … molded together." Ans. 6. Claims 1
and 8 are not product-by-process claims, however. Instead, they recite
certain structural features of an apparatus, not a process for making an
apparatus. Structurally, there is a difference between a "molded" structure,
as the Examiner describes Cox, and a structure comprising a "separate
piece" "permanently connected" to another piece, as required by claim 1. To
establish anticipation, every element and limitation of the claimed invention
must be found in a single prior art reference, arranged as in the claim.
Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
2001).
Further, to the extent that Cox may describe a separate vent tube
connected to a body of the container, the Examiner has not made any
findings regarding the manner of connection between breathing tube 12 and
the bottle. See Cox, col. 2, ll. 23-26 ("the breathing tube lies on the inside
surface of the bottle"), col. 3, ll. 10-15 ("said breathing tube being affixed
along the inner side of said spout") (emphasis added); see also In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992) ("the examiner bears the initial
burden, on review of the prior art or on any other ground, of presenting a
prima facie case of unpatentability."). The Examiner has not demonstrated
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that Cox describes a vent member "permanently secured" to a body as
recited in claims 1 and 8. As such, we do not sustain Rejection E.
The Codorniz Reference
The Examiner found that two embodiments of Codorniz each
separately anticipate independent claims 1 and 8. Ans. 8. In the first
embodiment, the Examiner found an air supply 14 "mounted" to the interior
surface of a container. Id. In the second embodiment, the Examiner found
that portion 10 and bottle 11 are "attached." Ans. 15.
The Examiner does not make any findings regarding whether air
supply 14 of the first embodiment of Codorniz (figures 1-2) is "permanently
secured" to the container, as required by claims 1 and 8. Codorniz merely
states that "air supply conduit 14 is mounted with an interior surface of the
pouring neck 12." Col. 3, ll. 27-30. Absent any supporting evidence or
logic by the Examiner, we do not find that the air supply "mounted" to the
interior necessarily describes a vent member permanently secured to the
container. See Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268
(Fed. Cir. 1991) (to establish inherency, the extrinsic evidence "must make
clear that the missing descriptive matter is necessarily present in the thing
described in the reference, and that it would be so recognized by persons of
ordinary skill.").
The second embodiment of Codorniz (figures 3-5) describes a
container pouring apparatus 10 that is affixed to the neck 12 via a threaded
wall 22 that meshes with the threaded surface 13 of neck 12. Col. 3, ll. 49-
55. A threaded, screw-on connector is not permanent. Thus, the second
embodiment does not describe the vent member being permanently secured
to the body.
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The Examiner has not made any findings in Rejections J, K, and L
regarding modifying Codorniz's pouring apparatus embodiments to include a
vent member permanently secured to a body. Thus, we do not sustain
Rejections H, J, K, and L.
Lastly, with respect to Rejection F over the combined teachings of
Cox and Codorniz, since neither Cox nor Codorniz discloses a vent member
"permanently secured" to a body as recited in claims 1 and 8, Rejection F
likewise cannot be sustained.
The Burrows Reference
In Rejections G and I, the Examiner correctly found that Burrows
describes securing a vent to a container by ultrasonic welding. Ans. 7, 8-9;
see Burrows, col. 5, ll. 25-44 (belying Appellant's argument that Burrows
fails to teach ultrasonic welding). Appellant argues that Burrows is not
analogous art because it is directed to a syrup dispenser and valve assembly.
Appeal Br. 32. Appellant also argues that "there is no teaching or
suggestion to modify any of these references to satisfy the claimed
invention." Id.
Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor, regardless
of the problem addressed, and (2) if the reference is not within the field of
the inventor's endeavor, whether the reference still is reasonably pertinent to
the particular problem with which the inventor is involved. In re Clay, 966
F.2d 656, 658-59 (Fed. Cir. 1992). See also In re ICON Health and Fitness,
Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007) (a reference is analogous prior
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art if "it is one which, because of the matter with which it deals, logically
would have commended itself to an inventor's attention in considering his
problem").
We find that Burrows, in the dispensing field, describes a base plate
42 of a syrup dispenser valve assembly 14 ultrasonically welded to a bottle.
Col. 5, ll. 35-44 ("base plate 42 is securely and permanently mounted within
the bottle neck … by … ultrasonic welding"). Thus, we find that Burrows is
both in the same field of endeavor (dispensing) and addresses a matter
relevant to Cox, Codorniz, and the present invention. In particular, Burrows
describes a means to "securely and permanently" mount an object on a
bottle, and Cox and Codorniz both have objects mounted in a bottle. Thus,
Burrows is analogous prior art.
Appellant's argument regarding a teaching or suggestion is not
persuasive because the Examiner is not required to find an explicit teaching
or suggestion to combine the prior art references. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 415 (2007) ("We begin by rejecting the rigid
[TSM] approach"). The Examiner reasons that the weld taught in Burrows
would "provide the desired process for making the apparatus," that is, the
method for connecting the breathing tube 12 in Cox or the air supply conduit
14 in Codorniz to the body of the container. Thus, the Examiner's proposed
combinations appear to be nothing more than using a known method,
ultrasonic welding, to improve the known devices of Cox and Codorniz in a
predictable way (welds permanently secure two objects). See KSR, 550 U.S.
at 417 ("if a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
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application is beyond his or her skill"). As such, the Examiner has
articulated a reason with rational underpinning for combining the weld of
Burrows with the dispensing apparatus of Codorniz and Cox as proposed in
Rejections G and I. Thus, we sustain the Rejections G and I.

NEW GROUNDS of REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b) (2009), we reject
claims 1 and 8 under 35 U.S.C. § 103(a) as unpatentable over Codorniz and
Burrows. In particular, we find that Codorniz describes a body 11 and vent
member 14 as recited in claims 1 and 8. See col. 3, ll. 21-33, fig. 1. We find
that Codorniz also describes that the vent member 14 is mounted to the
sidewall of body 11, but that Codorniz does not explicitly describe how the
vent is mounted to the body. See id. ("air supply conduit 14 is mounted with
an interior surface of the pouring neck 12"). However, we find that Burrows
describes a valve assembly 14 with a base plate 42 "securely and
permanently mounted within the bottle neck … [by] ultrasonic welding."
Col. 5, ll. 35-47. Further, we find that ultrasonic welding is a "securement
means for permanently securing said vent member to said body" as recited in
claim 8 and enumerated in the Specification as the corresponding structure
for the "means for … securing." See Spec. 11:7-9 ("vent tube 10 may be
permanently secured … using … ultrasonic welding"). We further find that
tube 14 of Codorniz, and thus the connection that holds it to body 11, are
disposed entirely on one side of a vertical plane as recited in claim 8.
One of ordinary skill in the art at the time of invention would have
found it obvious to utilize ultrasonic welding as described in Burrows to
mount the vent tube 14 to body 11 in Codorniz in order to "securely and
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permanently" mount the vent member 14 in the body 11. Therefore,
Codorniz's container pouring apparatus, as modified in view of the teachings
of Burrows, renders obvious the subject matter of claims 1 and 8.
Pursuant to our authority under 37 C.F.R. § 41.50(b) (2009), we
additionally reject claims 1 and 8 under 35 U.S.C. § 103(a) as unpatentable
over Cox and Burrows. In particular, we find that Cox describes a body
(bottle 11) and vent (breathing tube 12) as recited in claims 1 and 8. See col.
2, ll. 26-33, fig. 2. We find that Cox also describes that the vent is attached
to the inside surface of the bottle, which can be made of plastic, but that Cox
does not explicitly describe how the vent is attached to the body. See col. 2,
ll. 23-26 ("the breathing tube lies on the inside surface of the bottle"), col. 2,
ll. 49-51 (the "vessel can be molded … from any plastic material …
especially synthetic resins"), col. 3, ll. 10-15 ("said breathing tube being
affixed along the inner side of said spout"). However, we find that Burrows
describes a valve assembly 14 with a base plate 42 "securely and
permanently mounted within the bottle neck … [by] ultrasonic welding."
Col. 5, ll. 35-47. Further, we find that ultrasonic welding is a "securement
means for permanently securing said vent member to said body" as recited in
claim 8 and enumerated in the Specification as the corresponding structure
for the "means for … securing." See Spec. 11:7-9 ("vent tube 10 may be
permanently secured … using … ultrasonic welding"). We further find that
the breathing tube 12 of Cox, and thus the connection that holds it to bottle
11, are disposed entirely on one side of a vertical plane, as required by claim
8.
One of ordinary skill in the art at the time of invention would have
found it obvious to utilize ultrasonic welding as described in Burrows to
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mount the breathing tube 12 to bottle 11 in Cox in order to "securely and
permanently" mount the vent member 14 in the body 11. Therefore, Cox's
pouring apparatus, as modified in view of the teachings of Burrows, renders
obvious the subject matter of claims 1 and 8.
The Board of Patent Appeals and Interferences is a review body,
rather than a place of initial examination. We have made the rejections
above under 37 C.F.R. § 41.50(b). However, we have not reviewed the
remaining claims to the extent necessary to determine whether these claims
are unpatentable over Cox and Burrows, Codorniz and Burrows, and/or
other patents cited in the record. We leave it to the Examiner to determine
the appropriateness of any further rejections based on these references.

DECISION
We affirm the Examiner's decision as to claim 5. We reverse the
Examiner's decision as to claims 1-4, 6-12, and 20-25. We enter new
grounds of rejection under 35 U.S.C. § 103(a) for claims 1 and 8.

FINALITY OF DECISION
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
"Appellant may file a single request for rehearing within two months of the
date of the original decision of the Board."
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
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37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new
evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner,
in which event the proceeding will be remanded to
the examiner. . . .

(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same record. . . .
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. § 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
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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) (2007).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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