Ex Parte Bryan et al

Patent Trial and Appeal Board

Jul 25, 2017

13283923 (P.T.A.B. Jul. 25, 2017)

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.
13/283,923 10/28/2011 Raymond G. Bryan 27844-189 1598
76656 7590
Patent Docket Department
Armstrong Teasdale LLP
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
EXAMINER
CASTRIOTTA, JENNIFER
ART UNIT PAPER NUMBER
3781
NOTIFICATION DATE DELIVERY MODE
07/27/2017 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):
USpatents @ armstrongteasdale. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAYMOND G. BRYAN and JIMI FRANCIS
Appeal 2015-005857
Application 13/283,9231
Technology Center 3700
Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants appeal under 35U.S.C. § 134 from the Examiner’s
decision rejecting claims 1—21. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, “[t]he real party in interest... is Handi-Craft
Company.” Br. 2.
Appeal 2015-005857
Application 13/283,923
STATEMENT OF THE CASE
Subject Matter of the Appellants ’ Invention
The Appellants’ invention “relates generally to bottle assemblies and
more particularly to a nipple for a bottle assembly.” Spec. para. 2. An
aspect of the invention concerns a nipple’s shape for simulating the breast of
a nursing mother, which promotes proper placement of an infant’s mouth
when latching onto the breast. See Spec, paras. 9-10, 57.
Independent claims 1, 8, 12, 16, and 21 concern primarily portions of
a nipple’s structure, including a base portion, a bulbous sidewall, and an end
portion; and, more particularly, how a dimension of a portion of a nipple
structure relates to other dimensions of the same portion and/or other
portions of the nipple structure. See Br., Claims App. Claim 8, with line
breaks and indentations added, is illustrative:
8. A nipple for use with a nursing bottle, the nipple
comprising:
a base portion positionable proximate the nursing
bottle upon assembly therewith;
a bulbous sidewall connected to and extending
upward from the base portion, the bulbous sidewall having
a height and a maximum width that is larger than said
height; and
a generally cylindrical end portion extending
upward from the bulbous sidewall distal from the base
portion and having an outlet opening therein, the end
portion having a diameter,
a ratio of said maximum width of the bulbous
sidewall to said diameter being between about 2.6 and
about 3.25.
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Appeal 2015-005857
Application 13/283,923
Evidence
Dreyfus
Dieringer et al.
(hereinafter “Dieringer”)
Hakim
US 1,590,152
US 6,161,710
US 6,994,225 B2 Feb. 7, 2006
June 22, 1926
Dec. 19, 2000
Rejections
We understand the Final Office Action to include two grounds of
rejection under pre-AIA 35 U.S.C. § 103(a), which stand on appeal:
claims 1—11 and 16—21 as unpatentable over Hakim and
Dieringer; and
claims 12—15 and 21 as unpatentable over Dreyfus.
The Final Office Action includes two minor oversights with regard to
the rejection under § 103(a) as unpatentable over Hakim and Dieringer. The
first oversight is the failure to include claim 21 in the ground of rejection.
See Final Act. 2, 13—16. The Appellants acknowledge this oversight
explicitly. Br. 7, 15—16. The second oversight is the failure to include
independent claim 8 and dependent claims 9—11 in the ground of rejection.
Although the Appellants have not explicitly acknowledged that claims 8—11
have been rejected under this ground, the Appellants have acknowledged
that the rejection of claim 8 includes a paragraph at “[pjages 17—18 of the
Office Action” (Final Act. 17). This paragraph explicitly cites to column 3,
lines 1—6 of Dieringer as evidence. See Final Act. 18. As such, even with
the Examiner’s failure to include Dieringer, along with Hakim, in the
statement of the rejection of claims 8—11 (Final Act. 16), Dieringer is
nonetheless included as evidence in the ground of rejection. Due to this
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Application 13/283,923
oversight, separate statements for the rejection of claims 1—7 and 16—21 and
of claims 8—11 are set forth in the Final Office Action. See Final Act. 2, 16.
To facilitate a more accurate record, we have consolidated the separate
statements into a single ground of rejection.
ANALYSIS
Independent Claims 1 and 16, and Dependent Claims 2—7 and 17—20 as
Unpatentable Over Hakim and Dieringer
Independent claim 1 requires, among other things, a nipple having a
base portion, bulbous sidewall, and an end portion, where the bulbous
sidewall’s maximum width is greater than the nipple’s height. See Br.,
Claims App.
The Examiner finds that Hakim discloses a nipple having rim 38,
base 32, and area 36 that corresponds with the base portion, the bulbous
sidewall, and the end portion of independent claim 1, respectively. See Final
Act. 2—3 (citing to Hakim, Figs. 1, 6). The Examiner also finds that Hakim
fails to disclose base 32’s maximum width being greater than the height of
the nipple. See Final Act. 4. The Examiner relies on Dieringer’s teachings
to remedy the deficiency of Hakim. Final Act. 4 (citing Dieringer, Fig. 13,
col. 3, 17—20). The Examiner concludes that a skilled artisan would have
modified the height and width of Hakim’s nipple with the teachings of
Dieringer “in order to simulate the dimensions of a natural breast and ease in
the transition to/from breast feeding to bottle feeding.” Final Act. 4—5; see
Dieringer, col. 3,11. 1—6. Stated differently, to simulate the natural breast
changes to the dimensions of the nipple portions are required, including the
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Application 13/283,923
dimensions of Hakim’s bulbous sidewall (base 32) and end portion
(area 36). See Final Act. 25.
The Appellants argue that Hakim does not disclose a “bulbous
sidewall having a height and a maximum width that is larger than said
height,” as recited in claim 1. Br. 9 (emphasis omitted). The Appellants
support this argument, primarily, by attacking the Examiner’s findings as to
the dimensions of Hakim’s nipple that are undisclosed (i.e., the dimensions
of Hakim’s nipple that are not to scale). See Br. 10—11. The Appellants
argue that the Examiner’s findings rely improperly on inferences to
determine dimensions of portions of Hakim’s nipple. See Br. 10. The
Appellants’ argument is not persuasive as to error in the Examiner’s
rejection.
Although the Examiner relies on dimensions of Hakim’s nipple that
are undisclosed, the Examiner modifies these dimensions, particularly that of
the bulbous sidewall of Hakim’s nipple, with Dieringer’s teaching to
simulate the dimensions of a natural breast. This modification, among other
things, changes the dimensions of the bulbous sidewall and the height of
Hakim’s nipple. As such, the Appellants’ argument that Hakim does not
disclose “bulbous sidewall having a height and a maximum width that is
larger than said height” fails to account for the Examiner’s modification.
Further, we find that the modification of Hakim’s teachings results in a
nipple with a “bulbous sidewall having a height and a maximum width that
is larger than said height,” as recited in claim 1.
The Appellants also argue that “it would not have been obvious to
modify Hakim with the teachings of Dieringer because the combination
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Application 13/283,923
would result in a nipple having the same problems as the nipples disclosed in
Appellants[’] background as failing to simulate breast-feeding.” Br. 13.
The Appellants support this argument by pointing to Hakim’s
disclosure of, “a no-spill valve design that can be used with any of the
traditional nipple[s] . . . , e.g., regular nipples as shown in FIG. 1, or wide
neck nipples as shown in FIG. 2.” Br. 12 (citing col. 9,11. 45—48). This is
not persuasive of error. Although the cited disclosure of Hakim describes
the use of a valve with specific nipple neck sizes for the embodiments of
Figures 1 and 2, Hakim goes on to describe that “any other neck sized
nipple” can be used for the embodiments of Figure 6. Hakim, col. 9,11. 53—
58. The Appellants also support this argument by pointing to Dieringer’s
nipple, which includes an inner liner and an outer liner to simulate the
pressures associated with breast-feeding, including those associated with
“latching-on,” and avoiding other pressures that may cause “nipple
confusion.” See Br. 12—13. This is not persuasive of error. The Examiner
relies on Dieringer’s teachings only for the dimensions of the outer liner,
which simulate the natural breast. Ans. 25. Accordingly, the pressures
associated with the inner liner and outer liner working together as a valve are
not pertinent to the Examiner’s rejection. Stated differently, the Examiner
does not rely on the dimensions or functionality associated with the inner
liner. Further, the Examiner’s explanation is consistent with the proffered
reasoning to combine the teachings of the references, i.e., simulating the
dimensions of a natural breast.
Thus, we sustain the rejection of claim 1 as unpatentable over Hakim
and Dieringer. The Appellants provide a separate heading, but do not
advance additional arguments for the rejection of claims 2—7. See Br. 13.
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As such, we sustain the rejection of claims 2—7 as unpatentable over Hakim
and Dieringer.
The Appellants advance the same unpersuasive arguments for the
rejection of independent claim 16 as those previously discussed for claim 1.
Br. 14—15. The Appellants provide a separate heading, but do not advance
additional arguments for the rejection of claims 17—20. See Br. 13. As such,
we sustain the rejection of claims 16—20 as unpatentable over Hakim and
Dieringer.
Independent Claim 8 and Dependent Claims 9—11 as Unpatentable Over
Hakim and Dieringer
Independent claim 8 requires a nipple having a bulbous sidewall and
an end portion, where the ratio of the bulbous sidewall’s maximum width to
the end portion’s diameter is between about 2.6 and about 3.25. See Br.,
Claims App.
The Examiner finds that Hakim discloses a nipple having a base 32
and an area 36 that corresponds with the bulbous sidewall and end portion of
independent claim 8, respectively. See Final Act. 16—17. The Examiner
also finds that Hakim fails to disclose the ratio of the bulbous sidewall’s
maximum width to the end portion’s diameter being between about 2.6 and
about 3.25. See Final Act. 17. However, the Examiner reasons:
Absent a showing of criticality with respect to the claimed
ratio of the width of the sidewall to the diameter of the end
of the nipple, it would have been obvious to a person of
ordinary skill in the art at the time of the invention to adjust
the dimensions through routine experimentation in order
to achieve dimensions that resemble a natural breast
(Dieringer et al. - Col. 3, Ln. 1—6). It has been held that
discovering an optimum value of a result effective variable
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Application 13/283,923
involves only routine skill in the art. In re Boesch,
617 F.2d 272, 205 USPQ 215 (CCPA 1980) or MPEP
§2144.05.
Final Act. 17—18 (emphasis added). In light of this, it is clear that the
Examiner’s rationale is based on an object of Dieringer’s invention, i.e., “to
provide a natural nipple baby feeding apparatus that is manufactured from a
mold of an actual woman’s breast” (Dieringer, col. 3,11. 1—3). This object
establishes adequate support for the finding that a nipple resembling a
natural breast is a result effective variable in the discovery of an optimum
value.
Although the Appellants acknowledge the Examiner’s reasoning on
pages 17—18 of the Final Office Action (Br. 18), the Appellants fail to
acknowledge the Examiner’s reliance on Dieringer’s teaching as evidence.
Indeed, the Appellants’ argument against the rejection of claim 8 is based
solely on Hakim’s failure to establish a result effective variable. This
argument is not persuasive because, as explained above, the Examiner’s
reasoning is based on a finding that Dieringer teaches the result effective
variable.
Thus, we sustain the rejection of claim 8 as unpatentable over Hakim
and Dieringer. The Appellants provide a separate heading, but do not
advance additional arguments for the rejection of claims 9—11. See Br. 19.
As such, we sustain the rejection of claims 9—11 as unpatentable over Hakim
and Dieringer.
Independent Claim 21 as Unpatentable Over Hakim and Dieringer
The Appellants advance the same arguments for the rejection of
independent claim 21 as previously discussed for claim 1. Br. 15—16. To
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the extent that the arguments are pertinent to the rejection of claim 21, we
determine that they are unpersuasive.
The Appellants also argue that the Examiner’s rejection fails to
address explicitly the claimed feature that requires the bulbous sidewall
height to be greater than the base portion height.2 See Br. 16; Br., Claims
App. However, the Examiner’s rejection includes findings adequate to
explain the Examiner’s rejection. See Final Act. 13—16. Indeed, the
Examiner finds Hakim’s rim 38 corresponds with the claimed base portion.
See Final Act. 13. And, the Examiner finds Hakim discloses a bulbous
sidewall (base 32), but modifies the dimensions of Hakim’s bulbous sidewall
with the teachings of Dieringer to result in all of the features of the claimed
“bulbous sidewall.” See Final Act. 13—16. Hence, the Examiner’s rejection
gives notice to the Appellants with regard to the claimed feature that
requires the bulbous sidewall height to be greater than the base portion
height. Additionally, the Appellants do not provide a persuasive argument
explaining how the Examiner’s rejection fails to result in the bulbous
sidewall height to be greater than the base portion height.
Thus, we sustain the rejection of claim 21 as unpatentable over Hakim
and Dieringer.
2 For reference, claim 21 labels the height of the bulbous sidewall as a
“second height” and the height of the base portion as a “first height.” See
Br., Claims App. As recited, claim 21 reads “a second height being greater
than said first height.” Br., Claims App.
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Application 13/283,923
Independent Claims 12 and 21, and Dependent Claims 13—15 as
Unpatentable over Dreyfus
Independent claim 12 requires a nipple having a bulbous sidewall and
a base portion, where the bulbous sidewall height is greater than the base
portion height.3 See Br., Claims App.
The Examiner finds Dreyfus discloses a nipple having a cap c and a
tubular portion d that corresponds with the bulbous sidewall and base
portion of independent claim 12, respectively, except for the bulbous
sidewall height being greater than the base portion height. See Final
Act. 19-20.
The Examiner reasons that changing the height of Dreyfus’s cap c
relative to tubular portion d is “an obvious matter of design choice to a
person of ordinary skill in the art.” Final Act. 20. The Examiner bolsters
this reasoning by finding that the Appellants failed to disclose that bulbous
sidewall height being greater than the base portion height “provides an
advantage” or “is used for a particular purpose or solves a stated problem,”
and as such, “does not provide [a] patentable distinction over the prior art of
record.” Final Act. 20.
The Appellants contend that the Examiner’s reasoning lacks
justification. Br. 20; see Br. 21. The Appellants’ contention is not
persuasive. The function of tubular portion d is to hold the nipple to the
bottle’s neck. See Ans. 26; Dreyfus, 1:87—90. So as long as tubular
portion d has the ability to hold the nipple to the neck of a bottle, changing
3 For reference, claim 12 labels the height of the bulbous sidewall as a
“second height” and the height of the base portion as a “first height.” See
Br., Claims App. As recited, claim 12 reads “said second height being
greater than said first height.” Br., Claims App.
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Application 13/283,923
the relative height of cap c to tubular portion d is a matter of design. The
Appellants fail to explain persuasively, using evidence or technical
reasoning, why changing cap c’s height to be greater than tubular portion d’s
height takes away the ability of tubular portion d to hold the nipple to a
bottle’s neck.
The Appellants also assert an advantage of the bulbous sidewall
height being greater than the base portion height as being able to shield an
“infant’s face from contact with other portions of the bottle, such as the
collar.” Br. 21. This assertion is not persuasive as it fails to correlate the
relative heights of specific portions of a nipple (i.e., the bulbous sidewall
height and base portion height) to the asserted advantage. In other words,
the Appellants fail to explain persuasively why the bulbous sidewall’s height
being greater than the base portion’s height provides the asserted advantage,
rather than other features of the invention, such as the maximum width of
the bulbous sidewall. See Ans. 26.
The Appellants also argue that Dreyfus lacks a suggestion that a
skilled artisan should experiment with the height of tubular portion d in
relation to the height of cap c to obtain better results. See Br. 20—22. In
other words, Dreyfus does not recognize the relative height of cap c to
tubular portion d as a result-effective variable. See Br. 20. This assertion is
not persuasive as it fails to respond to the reasoning advanced in the
Examiner’s rejection of claim 12.
Thus, we sustain the rejection of claim 12 as unpatentable over
Dreyfus. The Appellants provide a separate heading, but do not advance
additional arguments for the rejection of claims 13—15. See Br. 22. As such,
we sustain the rejection of claims 13—15 as unpatentable over Dreyfus.
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The Appellants advance the same unpersuasive arguments for the
rejection of independent claim 21 as previously discussed for claim 12.
Br. 23. As such, we sustain the rejection of claim 12 as unpatentable over
Dreyfus.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1—21.
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)(l)(iv).
AFFIRMED
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