Ex Parte Bodum

Patent Trial and Appeal Board

Apr 23, 2018

12812397 (P.T.A.B. Apr. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/812,397 07/09/2010
23373 7590 04/25/2018
SUGHRUE MION, PLLC
2100 PENNSYLVANIA A VENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
Jorgen Bodum
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.
Ql 19461 6822
EXAMINER
PERREAULT, ANDREW D
ART UNIT PAPER NUMBER
3788
NOTIFICATION DATE DELIVERY MODE
04/25/2018 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte J0RGEN BODUM
Appeal2017-000736
Application 12/812,397
Technology Center 3700
Before STEFAN STAICOVICI, MICHAEL L. WOODS, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant 1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1, 3-7, 14, and 16-18. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 The real party in interest is PI-Design AG. Appeal Br. 2.
Appeal2017-000736
Application 12/812,397
CLAIMED SUBJECT MATTER
The claims are directed to a double-walled vessel having a pressure
equalization opening. Claim 1, reproduced below with emphasis added, is
illustrative of the claimed subject matter:
1. A double-walled vessel comprising:
an outer vessel body;
an inner vessel body arranged in the outer vessel body in
such a way that a gas-filled interspace is formed between the
inner and the outer vessel body, a pressure compensation opening
being present in a limit wall of at least one of the vessel bodies;
and
a plug sealing the pressure compensation opening, the plug
being made of an elastic and hydrophobic material, the plug
having at least one gas passage channel extending completely
through the plug, the gas passage channel having dimensions that
allow a passage of air while being sufficiently small to prevent
water from penetrating into the interspace, due to a negative
capillarity caused by the hydrophobic properties of the material
of the plug.
PRIOR ART RELIED UPON BY THE EXAMINER
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Frank
Firestone
Dantes
Dais
Borchardt
us 3,326,230
us 4,545,492
US 2001/0048035 Al
US 6,789,393 B2
US 2008/0190512 Al
REJECTIONS
June 20, 1967
Oct. 8, 1985
Dec. 6, 2001
Sept. 14, 2004
Aug. 14, 2008
(I) Claims 1, 3, 5, 7, and 16-18 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Dais and Firestone.
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(II) Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Dais, Firestone, and Dantes.
(III) Claims 6 and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Dais, Firestone, and Borchardt.
(IV) Claims 1, 3, 5, 7, and 16-18 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Dais and Frank.
(V) Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Dais, Frank, and Dantes.
(VI) Claims 6 and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Dais, Frank, and Borchardt.
Claims 1, 3, 5, 7, and 17
OPINION
Rejection (I)
The Examiner finds that Dais discloses most of the features recited in
claim 1, including "a plug sealing the pressure compensation opening" and
that the plug comprises hydrophobic material. 2 Final Act. 4--5. With respect
to the plug taught by Dais, the Examiner states, "Dais describes the plug as
opening in response to pressure but Dais does not describe the specific
structure of the plug/valve. The plug may or may not have a channel having
dimensions such [as] 0.1 mm." Id. at 4. The Examiner finds that Firestone
discloses a plug with a channel (pinhole 10) extending completely
2 The Examiner also finds that it would have been obvious to modify the
material to be hydrophobic based on its suitability for its intended use. Final
Act. 5 (citing In re Leshin, 277 F.2d 197 (CCPA 1960)).
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Application 12/812,397
therethrough and having a diameter of0.1 mm. Id. at 4--5. The Examiner
determines that it would have been obvious to provide Firestone's channel in
the plug of Dais in order to eliminate the flow of water through the plug
while permitting air to flow in order to relieve pressure. Id. at 4 (citing
Firestone, col. 1, col. 3, 11. 3-15). With respect to the requirement in claim 1
that the channel have "dimensions that allow a passage of air while being
sufficiently small to prevent water from penetrating into the interspace, due
to a negative capillarity caused by the hydrophobic properties of the material
of the plug" (hereinafter the "negative capillarity limitation"), the Examiner
refers to page 5 of Appellant's Specification to construe this language and
determines that the proposed combination of the teachings of Dais and
Firestone would have the same structure as recited in claim 1, and would,
therefore, "perform the same intended use as [Appellant's] device." Id. at 5;
see also Spec. 5. In other words, the Examiner finds that the inherent result
of the proposed combination of Dais and Firestone is structure that would
"prevent water from penetrating into the interspace, due to a negative
capillarity caused by the hydrophobic properties of the material of the plug."
Appellant contends that the negative capillarity limitation depends on
three factors, specifically, (i) the diameter of the channel, (ii) the length of
the channel, and (iii) the material from which the channel is made,
particularly, its hydrophobic properties. Appeal Br. 16. Appellant contends
that the text of Firestone is silent regarding the length of pinhole 10. Id.
Appellant further contends that, to the extent the Figures of Firestone
provide any indication of the length of pinhole 10, they imply that it is very
short. Id. Additionally, Appellant contends that the Examiner has not
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Application 12/812,397
established that the materials comprising the plug in Dais and top part 5 of
Firestone (where pinhole 10 is located) are hydrophobic. Id. at 15-17.
In response, the Examiner reiterates the finding that the structure in
the proposed combination of Dais and Firestone would be the same as that
recited in claim 1, and therefore, the proposed combination would satisfy the
negative capillarity limitation. Ans. 16-1 7. The Examiner does not
specifically address Appellant's argument regarding the length of pinhole 10
of Firestone. Id.
Appellant's Specification states:
The dimensions of the gas passage channel are in this case
chosen such that the capillary effect in the channel effectively
prevents the passage of water. The diameter of the gas passage
channel is, for example, at most about 0.1 mm, combined with a
length of at least about 1 mm, for silicone plastic or a material
similar hydrophobic properties. Of course, other dimensions are
also possible.
Spec. 4, 11. 3-10. We understand this portion of the Specification to link the
capillary effect that prevents the passage of water to three characteristics,
namely, channel diameter, channel length, and the hydrophobic properties of
the material comprising the channel. The statement in the Specification,
quoted by the Examiner (Final Act. 5, Ans. 13), that "[t]he channel
nevertheless remains at all times sufficiently small in its diameter that, due
to the hydrophobic properties of the material and the resultant negative
capillarity, no passage of water is possible" (Spec. 4, 11. 25-29) does not
support a finding that the length of the channel is not relevant to the negative
capillarity of the channel. Rather, this text from the Specification is used to
explain that the diameter requirement for providing the negative capillarity
effect is satisfied, even when a needle is used to form the channel. See Spec.
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Application 12/812,397
4, 11. 12-29. Accordingly, we agree with Appellant's argument that the
Examiner has not established by a preponderance of the evidence that the
structure in the Examiner's proposed combination of the teachings of Dais
and Firestone would provide the negative capillarity limitation recited in
claim 1. Although it is quite possible that the actual dimensions that would
result from the proposed combination of Dais and Firestone would achieve
the negative capillarity effect required by claim 1, on the record before us,
we do not agree that this would necessarily be the result. Accordingly, we
do not sustain the rejection of claim 1 and claims 3, 5, 7, and 1 7 depending
therefrom as unpatentable over Dais and Firestone.
Claims 16 and 18
Independent claim 16 recites a self-sealing gas passage channel, and
the channel is "configured to widen under the influence of the pressure
difference to only such an extent that negative capillarity prevents water
from penetrating into the interspace while allowing a passage of air."
Appeal Br. 34 (Claims App.). In rejecting claim 16, the Examiner makes the
same findings regarding the negative capillarity of the structure in the
proposed combination of Dais and Firestone as discussed above regarding
the rejection of claim 1. See Final Act. 3--4. Accordingly, for the same
reason discussed with respect to the rejection of claim 1, we do not sustain
the Examiner's rejection of claim 16 and claim 18 depending therefrom as
unpatentable over Dais and Firestone.
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Rejections (II) and (III)
The Examiner's use of Dantes and Borchardt does not remedy the
deficiency in Rejection (I) above. See Final Act. 6. Accordingly, for the
reason discussed above regarding Rejection (I), we do not sustain Rejections
(II) and (III).
Re} ection (IV)
The Examiner makes the same findings regarding Dais as those
discussed above regarding Rejection (I), and relies on Frank to teach a
channel extending completely through a plug as recited in claim 1. Final
Act. 7-8. Specifically, the Examiner finds that valve member 17 comprises
a porous, hydrophobic material that allows for the passage of air. Id. at 8.
Similar to the explanation provided by the Examiner in the rejection of claim
1 based on Dais and Firestone, the Examiner determines that the structure
resulting from the proposed combination of Dais and Frank would satisfy the
negative capillarity limitation, which the Examiner again characterizes as an
"intended use." Id. The Examiner states that modifying the plug of Dais to
include the porous valve member of Frank to eliminate the flow of water
while allowing the flow of air to prevent contamination and allow breathing
which would prevent generation undesirable odors. Id. (citing Frank, col. 1,
col. 4, 1. 30).
Appellant contends that Frank fails to disclose a passage extending
completely through valve 17, and, in any event, there is no reason to modify
Dais to provide the negative capillarity limitation recited in claim 1. Appeal
Br. 17; Reply Br. 6. In this regard, Appellant states, "[t]he valve 90 in the
embodiment of Figure 8 operates properly to release vapor that exists under
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high pressure when heated and there is no existing or even hypothetical need
for a change in that valve structure." Id.
We disagree with Appellant's contention that Frank does not disclose
a passage extending all completely through valve 17 because Frank discloses
that valve 17 is porous and allows for the passage of air therethrough. See
Frank, col. 2, 11. 21-25. Further, Frank teaches the valve 17 allows the
equalization of air pressure differentials on opposite sides of the valve. See
id., col. 4, 11. 63---66. Additionally, Frank states, "[i]t should be assumed that
the housing 14 is continuous along the remainder of its entire exterior
surface ... with the only opening provided being that through the porous
material 17." Id., col. 4, 11. 56-59. Thus, as air pressure equalizes across
valve 17, and Frank describes valve 17 as having the only opening in the
structure, a preponderance of the evidence supports the Examiner's finding
that valve 17 includes at least one channel passing completely therethrough.
We also disagree with Appellant's contention that the Examiner has
not set forth an adequate reason to modify Dais to include the porous
structure valve 17 disclosed by Frank as proposed. In this regard,
Appellant's argument emphasizes the embodiment of Figure 8 of Dais,
which deals with a pressure relief valve, and on the allegation that Frank
does not disclose a channel passing all the way through valve 17. Appeal
Br. 17; Reply Br. 6, 9-10; see also Dais, col. 3, 11. 46-50. We note that the
Examiner's rejection cites the teachings of the embodiments in both Figure 8
and Figure 9 of Dais, not just the one in Figure 8. See Final Act. 7-8.
Further, with respect to Appellant's contention that "there is no existing or
even hypothetical need for a change" in the valve structure depicted in
Figure 8 of Dais, we understand the Examiner's proposed modification to be
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Application 12/812,397
directed to an improvement that allows breathing (equalization of pressure),
as opposed to pressure relief upon reaching a predetermined pressure limit.
See Dais, col. 6, 11. 47-50. As noted by the Examiner (Final Action 8), this
reasoning is supported by the disclosure of Frank (columns 1, 4 ).
Appellant contends that the Examiner did not give sufficient weight to
the negative capillarity limitation in claim 1. Appeal Br. 14. In response,
the Examiner reiterates that the structure resulting from the proposed
combination of the teachings of Dais and Frank would be the same as the
structure recited in claim 1, and, therefore, "would perform the same
intended use as [Appellant's] device." Ans. 14.
Although we agree with the Examiner that Frank's valve 17 allows air
pressure to equalize on opposite sides of the valve, a preponderance of the
evidence does not support the Examiner's finding that the structure resulting
from the proposed combination would satisfy the negative capillarity
limitation of claim 1. In other words, the proposed combination of the
teachings of Dais and Frank may achieve the same benefit as the device
recited in claim 1 (gas pressure equalization), but the record does not support
by a preponderance of the evidence that this effect would be the result of
negative capillarity. Accordingly, we do not sustain the rejection of claims
1, 3, 5, 7, and 17 as unpatentable over Dais and Frank.
Claims 16 and 18
As independent claim 16 recites a similar limitation to the one
discussed above regarding claim 1, we do not sustain the rejection of claim
16 and claim 18 depending therefrom as unpatentable over Dais and Frank.
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Rejections (V) and (VI)
The Examiner's use of Dantes and Borchardt does not remedy the
deficiency in Rejection (IV) above. See Final Act. 6. Accordingly, for the
reason discussed above regarding Rejection (IV), we do not sustain
Rejections (V) and (VI).
DECISION
The Examiner's decision to reject claims 1, 3-7, 14, and 16-18 is
reversed.
REVERSED
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OPINION DISSENTING-IN-PART
ST AI CO VICI, Administrative Patent Judge, dissenting in part.
I join the majority decision directed to the reversal of the rejections of
claims 1, 3-7, 14, and 16-18 under 35 U.S.C. § 103(a) based upon the
combined teachings of Dais and Firestone. I also concur with the majority
decision that Frank discloses a passage extending completely through valve
17 and that the Examiner has set forth adequate reasoning with rational
underpinnings to modify the device of Dais to include Franks' porous valve
membrane 1 7.
However, I disagree with my colleagues that the Examiner erred in
rejecting independent claims 1 and 16 over the combined teachings of Dais
and Frank because the record does not support by a preponderance of the
evidence that Frank's valve member 17 achieves gas pressure equalization
due to negative capillarity.
It is well settled that what a reference teaches a person of ordinary
skill is not limited to what a reference specifically "talks about" or what is
specifically "mentioned" or "written" in the reference. Syntex (US.A.) LLC
v. Apotex, Inc. 407 F.3d 1371, 1380 (Fed. Cir. 2005). In this a case, although
Frank does not explicitly use the phrase "negative capillarity" that does not
mean that the skilled artisan would not employ logic, judgment, and
common sense to interpret Frank in light of the phrase "negative capillarity."
See Perfect Web Tech., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir.
2009). After all, "[a] person of ordinary skill is also a person of ordinary
creativity, not an automaton." KSR v. Teleflex, 550 U.S. 398, 421 (2007).
A person of ordinary skill in the art would readily appreciate that
capillarity is the result of surface tension forces where a liquid in a small
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passage, such as a tube, will rise above or fall below the surface of the
surrounding liquid depending on the forces of attraction between the liquid
molecules and the solid molecules of the tube. 3 The skilled artisan would
also appreciate that when the liquid in a tube falls below the surface of the
surrounding liquid, the height of the liquid column has a negative value, as
opposed to a positive value when it rises above the surface of the
surrounding liquid. Therefore, as Appellant's Specification does not assign
or suggest a particular definition to the phrase "negative capillarity," in my
view, a reasonable interpretation of the phrase "negative capillarity" is that
of capillary action where the liquid in the tube falls below the surface of the
surrounding liquid and, thus, the resulting height of the liquid column has a
negative value.
In interpreting the disclosure of Frank, the Examiner correctly finds
that Frank's valve member 17 is made from a hydrophobic material that
"'freely permits the passage of air therethrough while preventing any water
from passing through the valve means."' Ans. 15 (citing Frank, col. 1---col.
4, 1. 30) (emphasis added). More specifically, Frank explains that valve
member 1 7 is able to "discriminat[ e] between air and water ... [because of]
the hydrophobic qualities of the porous material which coacts with the
surface tension of the water to prevent passage thereof." Frank, col. 5, 11. 3-
7 (emphasis added). As such, the skilled artisan would recognize that in
Frank, due to "negative capillarity," that is, the hydrophobic qualities of
porous valve member 17, i.e., surface tension properties, the water level
within the pores of valve member 17 falls below the surface level of the
3 See e.g., https://www.britannica.com/science/capillarity (last visited April
14,2018).
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surrounding liquid and, thus, water is prevented from passing therethrough.
Such an interpretation is consistent with Appellant's Specification, which
states that "[ d]ue to its hydrophobic properties and the resultant negative
capillary effect, the plug, despite the presence of the gas passage channel,
prevents water from penetrating interspace 5." Spec. 8, 11. 9--13 (emphasis
added). Accordingly, in my opinion, the record does support by a
preponderance of the evidence that Frank's valve member 17 achieves gas
pressure equalization due to "negative capillarity," as called for by each of
independent claims 1 and 16.
In conclusion, for the reasons explained above, I would affirm the
obviousness rejection of independent claims 1and16 under 35 U.S.C.
§103(a) as unpatentable over Dais and Frank.
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