Ex Parte Casey

Patent Trials and Appeals Board

May 21, 2019

14593763 - (D) (P.T.A.B. May. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/593,763
154037 7590
Griffith Barbee PLLC
4514 Cole Ave
Ste. 600
Dallas, TX 75205
01/09/2015
05/21/2019
FIRST NAMED INVENTOR
Theodore Casey
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.
15.00027 8549
EXAMINER
RASHID, FAZLE A
ART UNIT PAPER NUMBER
1774
MAIL DATE DELIVERY MODE
05/21/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THEODORE CASEY
Appeal2018-005355
Application 14/593,763
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner rejected claims 1-3 of Application 14/593,763 under
35 U.S.C. § 102(a)(l) as anticipated. Answer (Feb. 15, 2018). Pursuant to
35 U.S.C. § 134(a), Appellant1 seeks reversal of this rejection. 2 We have
jurisdiction under 35 U.S.C. § 6(b).
1 DryBev International, Inc. is identified as the applicant and the real party in
interest. Appeal Br. 2.
2 The Examiner's Final Office Action rejected claims 1-3 of the '763
Application under 35 U.S.C. § 102(a)(l) as anticipated. Final Act. 3 (Jan.
17, 2017). After Appellant filed his initial Appeal Brief, the Examiner
entered new grounds of rejection. Answer 2--4. Rather than reopening
Appeal2018-005355
Application 14/593,763
For the reasons set forth below, we reverse.
BACKGROUND
The '763 Application describes a method and system for separately
storing and mixing two or more substances. Spec. 1.
Claim 1 is representative of the '763 Application's claims and is
reproduced below from Appendix A.
1. A method for separately storing and mixing two or more
substances in a container system, the method comprising:
(a) holding one or more first substances in a main
container,
(b) holding one or more second substances in a storage
repository coupled within said main container;
( c) closing said storage repository with a liner to
prevent said second substances from mixing with said first
substances;
( d) engaging said liner with a mixing blade to aid in
sealing said repository closed;
and
( e) when mixing of said first substances with said
second substances is desired:
disengaging said mixing blade from said liner;
releasing said liner to open said storage
repository;
closing said main container with a cap coupled to
said mixing blade; and
prosecution, Appellant opted to maintain the present appeal. Reply Br. 1, 3-
4.
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Appeal2018-005355
Application 14/593,763
shaking said container system to cause mixing of
said first substances with said second substances,
wherein said mixing blade aids in said mixing step.
Appeal Br. 7 (App. A) (emphasis added).
REJECTION
On appeal, the Examiner maintains the following rejection:
Claims 1-3 are rejected under 35 U.S.C. § 102(a)(l) as anticipated by
Kachur. 3 Answer 3.
DISCUSSION
The Examiner rejected claims 1-3 as anticipated by Kachur based on
new grounds. Answer 3.
Appellant argues for reversal of the anticipation rejection of these
claims based on limitations recited in independent claim 1. See Reply Br. 4--
6. We, therefore, select claim 1 as representative of the claims subject to
this ground of rejection; claims 2 and 3 will stand or fall with claim 1.
37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner must establish a prima facie case of anticipation under
35 U.S.C. § 102 by showing that all elements arranged as specified in a
claim are disclosed within the four comers of a reference, either expressly or
inherently, in a manner enabling one skilled in the art to practice an
embodiment of the claimed invention without undue experimentation.
ClearValue, Inc. v. Pearl River Polymers, Inc., 668 F.3d 1340, 1344 (Fed.
3 US 3,924,741, issued Dec. 9, 1975.
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Appeal2018-005355
Application 14/593,763
Cir. 2012) (pre-AIA statute); Sanofi-Synthelabo v. Apotex Inc., 550 F.3d
1075, 1083 (Fed. Cir. 2008) (pre-AIA statute).
Claim 1 recites the method steps of "closing said storage repository
with a liner" and "releasing said liner to open said storage repository." The
Examiner found that Kachur discloses the claimed liner that is released
because Kachur's Figure 3 depicts the "releasing of liner 12 to open capsule
2." Answer 3 ( citing Kachur Fig. 3).
Appellant argues, inter alia, that Kachur's lower portion 12 ofwall 11
is not a liner and even assuming that lower portion 12 of wall 11 moves,
lower portion 12 is not released. Reply Br. 6. According to Appellant,
"[ r ]elease means to 'free from confinement,' or 'free from anything that
restrains."' Id. at 5 (citing Dictionary.com, Dictionary.com Unabridged,
Random House, Inc. http:// dictionary.reference.com/browse/release (last
visited December 17, 201 7) ). Appellant further argues that Kachur' s lower
portion 12 "is not 'free from confinement[,'] or 'free from anything that
restrains."' Reply Br. 6.
We begin by interpreting the language of claim 1. In particular, we
construe the term "releasing said liner."
During prosecution, the PTO gives the language of the proposed
claims "the broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in the art, taking
into account whatever enlightenment by way of definitions or otherwise that
may be afforded by the written description contained in the applicant's
specification." In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
In this instance, the Specification discloses that
[r]eleasable liner 25 may be a gasket, i.e., it may be loosely
placed over second upper opening 19 in the absence of cap 300
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Appeal2018-005355
Application 14/593,763
being placed on bottle 100, so that the releasable liner 25 might
fall off when cap 300 is removed. Or, releasable liner 25 might
be coupled to bottle 100 and/or lip 18 using an adhesive.
Spec. 8-9 ( emphasis added). We, therefore, interpret the claimed "releasing
said liner" step as requiring the freeing of the liner from confinement or
restraint by, for example, a cap or an adhesive.
The Examiner, however, construes the claim as not requiring the
consideration of features that free the liner from either confinement or
restraint. The Examiner, furthermore, has not provided sufficient factual
findings that lifting Kachur's lower portion 12 of tubular wall 11, which is
"slidably mounted" within tubular sleeve 7, discloses the claimed step of
"releasing said liner." Kachur 2:39--40; see also id. at Fig. 3. In other
words, the Examiner's rejection is not supported by findings that Kachur
describes that lower portion 12: (i) is confined or restrained in closing
capsule 2 and (ii) freed from such confinement or restraint to enable opening
capsule 2. See Answer 3.
Thus, the Examiner's finding, that lifting Kachur's lower portion 12
of tubular wall 11 describes the claimed step of "releasing said liner" merely
because doing so opens capsule 2, is erroneous. Therefore, we reverse the
rejection with respect to claims 1-3.
CONCLUSION
For the reasons set forth above, we reverse the§ 102(a)(l) rejection of
claims 1-3 of the '763 Application.
REVERSED
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