Ex Parte Choi et alDownload PDFPatent Trial and Appeal BoardSep 16, 201312133954 (P.T.A.B. Sep. 16, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 12/133,954 06/05/2008 Robert Choi KRN 330B 1671 78569 7590 09/17/2013 DASCENZO Intellectual Property Law, P.C. 1000 SW Broadway, Suite 1555 Portland, OR 97205 EXAMINER BRADEN, SHAWN M ART UNIT PAPER NUMBER 3728 MAIL DATE DELIVERY MODE 09/17/2013 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 ROBERT CHOI, BARLEY A. FORSMAN, JEREMY GALTEN ____________ Appeal 2011-010768 Application 12/133,954 Technology Center 3700 ____________ Before JOHN C. KERINS, NEIL T. POWELL, and JILL D. HILL, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-010768 Application 12/133,954 2 STATEMENT OF THE CASE Robert Choi, Barley A. Forsman, and Jeremy Galten (Appellants) appeal under 35 U.S.C. § 134 from a final rejection of claims 21, 22, 26, 28- 42, and 44-48. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. CLAIMED SUBJECT MATTER The claimed subject matter relates to “drink bottles with bite-actuated mouthpieces.” Spec., p. 1, ll. 12-13. Claim 1 illustrates the subject matter on appeal and is reproduced below with the key disputed limitations emphasized. 1. A drink container, comprising: a self-supporting fluid container having a neck with an opening, a fluid container base, and a wall structure extending between the neck and the fluid container base; wherein the fluid container includes an internal compartment sized to hold 12- 36 fluid ounces of potable drink fluid, and further wherein the fluid container has a semi-rigid construction; and a cap assembly removably coupled to the fluid container to cover the opening, the cap assembly comprising: a cap assembly base coupled to the neck of the fluid container; a drink spout extending in at least a defined orientation relative to the cap assembly base and having an outlet, wherein the drink spout defines at least a portion of a fluid conduit for drink fluid to flow from the fluid container through the drink spout; and Appeal 2011-010768 Application 12/133,954 3 a self-sealing mouthpiece fluidly coupled to the drink spout and including a sealable opening through which drink fluid may be selectively dispensed from the drink container to a user, wherein the mouthpiece is selectively configured between a closed configuration, in which the mouthpiece is adapted to prevent drink fluid from being dispensed therethrough, and an open configuration, in which the mouthpiece is adapted to permit drink fluid to be dispensed therethrough, wherein the mouthpiece is biased to automatically return from the open configuration to the closed configuration, and further wherein the mouthpiece is further adapted to emit drink fluid from the fluid container responsive to a user squeezing the fluid container. EVIDENCE The Examiner relies on the following evidence: Morifuji US 5,101,991 April 7, 1992 Flinn US 5,433,353 July 18, 1995 Paczonay US 5,791,510 August 11, 1998 Sullivan US 5,873,478 February 23, 1999 Dark US 6,116,458 September 12, 2000 REJECTIONS Claims 21, 22, 28, 29, 32-39, 41, 44, 45, 47, 48 stand rejected under 35 U.S.C. § 103(a) as obvious over Dark and Paczonay. Claims 30 and 46 stand rejected under 35 U.S.C. § 103(a) as obvious over Dark, Paczonay, and Morifuji. Claims 21, 22, 26, 31, 36, 38, and 40-42 stand rejected under 35 U.S.C. § 103(a) as obvious over Flinn, Sullivan, and Paczonay. Appeal 2011-010768 Application 12/133,954 4 ANALYSIS Rejection under § 103 over Dark and Paczonay Claims 21, 22, 28, 29, 32, 34-39, 41, 44, 45, and 48 Appellants argue that Paconzay and Dark fail to disclose a valve assembly that changes from a closed configuration to an open configuration to emit drink fluid there through when a user squeezes the semi-rigid fluid container. App. Br. 10-11. Appellants admit that semi-rigid containers were known in the art (App. Br. 12, Reply Br. 2), but argue that Dark only discloses a semi-rigid container in its background section (App. Br. 11, Reply Br. 2). Appellants argue that the Examiner’s rejection is not a proposed combination of Dark, Paczonay, and the common knowledge of one of ordinary skill in the art as evidenced by the background of Dark, and as such fails to include a required further step of providing a reason for modifying the subject matter of the disclosed straw bottle of Dark. Appellants also argue that Dark’s drink container dispenses liquid when a user sucks on spout 3 to draw liquid through the straw 8 from the volume of the bottle 2, and not when a user squeezes the bottle. App. Br. 11. Appellants argue that because Dark’s bottle includes a straw, even if the bottle was semi-rigid, if a user were to tilt the bottle and squeeze the bottle, an air pocket would become present at the bottom of the bottle where the straw opens into the bottle, such that a squeezable bottle with a straw would not work even to properly dispense fluid, even with the bite-actuated mouthpiece of Paczonay. App. Br. 13. Appellants further argue that Paczonay’s bite valve is not designed or otherwise configured to dispense drink fluid responsive to a user squeezing Appeal 2011-010768 Application 12/133,954 5 an associated fluid container to increase pressure upstream of the bite valve. App. Br. 13-14, Reply Br. 2-3. Appellants argue that if a personal hydration bite valve is configured to dispense drink fluid responsive to an increase in pressure in the flexible reservoir (e.g., from squeezing the reservoir), the bite valve would be ineffective for its intended use, namely, dispensing drink fluid only upon a user biting the end region of the bite valve and sucking. App. Br. 15. Appellants argue that Paconzay’s bite valve is instead configured to dispense drink fluid only upon a user biting the end region of the bite valve and sucking liquid through the bite valve, and that modifying Paconzay’s bite valve “would destroy at least a substantial portion of the utility of the bite valve because the valve would frequently dispense drink fluid” at undesirable times. App. Br. 15. The Examiner responds that Dark discloses a plastic container, squeezing the container, and the plastic material of the top mouth piece flexing up and down. The Examiner finds that Dark’s container is therefore semi-rigid. The Examiner also finds that bite valves such as Paczonay’s are made of material that is flexible and resilient and that, if enough pressure is applied by squeezing and pressurizing a container, fluid is going to come out and when a user squeezes the container of Dark alone or as combined with the valve of Paczonay, the fluid will take the path of least resistance and come out of the mouth piece. Ans. 13-14. In addition, neither Appellants’ arguments nor Appellants’ Specification explains why the bite-actuated mouthpiece of Paczonay would operate differently than Appellants’ claimed self-sealing mouthpiece. Appellants’ Specification discusses only the bite actuation of its mouthpiece, not how the mouthpiece acts to allow passage of fluid upon squeezing the container. Appellants do not point to any structure Appeal 2011-010768 Application 12/133,954 6 in their own Specification that is different from Paczonay’s mouthpiece such that the two mouthpieces will behave differently in response to fluid in the container being squeezed. Regarding Appellants argument directed to tilting and squeezing Dark’s bottle having a straw, the Examiner responds that the existence of a straw does not exclude the bottle from being squeezed. Ans. 13-14. In addition, Appellants’ arguments improperly assume that a user would tilt the bottle before squeezing it and thus improperly conclude that an air pocket would become present at the bottom of the bottle where the straw opens into the bottle and cause the bottle to not work properly. Appellants lastly argue that the Examiner’s reason for combining Dark and Paczonay is a mere conclusory statement based on hindsight, and that one of ordinary skill in the art would not have been motivated to combine Dark with Paczonay because Dark teaches away from the proposed combination at column 1, lines 61-65 and because combining Dark and Paczonay would require modification of Paczonay’s bite valve to a configuration in which the bite valve would leak under normal operating conditions. App. Br. 16-17. The Examiner responds that adding a valve such as Paczonay’s to the end of Dark's container would add further control and safety to a drinking vessel. Ans. 14. Paczonay itself teaches that the addition of a bite-actuated valve to the end of an open conduit provides selective delivery of liquid to a user’s mouth. See Paczonay, col. 1, ll. 52-55 and col. 3, ll. 4-7. Paczonay’s selective delivery teaches the control and safety reasoning asserted by the Examiner. Appellants have not alleged that placement of Paczonay’s mouthpiece on Dark’s container would not provide such control and safety. Appeal 2011-010768 Application 12/133,954 7 Further, column 1, lines 61-65 of Dark do not teach away from the Examiner’s proposed modification, but rather state that prior art drink cup cap structures did not achieve market acceptance at least because a soft tube extending out of the mouth piece was not acceptable. Regarding Appellants’ argument that Paczonay’s bite valve, placed on Dark’s container, would leak under normal operating conditions, the test for obviousness is not whether the features of the secondary reference can be bodily incorporated into the structure of the primary reference, but rather what the combined teachings of those references would have suggested to those skilled in the art. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appellants argue that, to arrive at the subject matter of these claims, the proposed combination itself necessarily must be modified, and doing so would not have been obvious to one of ordinary skill in the art (App. Br. 17), but Appellants’ arguments regarding the non-obviousness of the alleged necessary modification are conclusory and therefore not persuasive. Appellants present no separate arguments regarding claims 22, 28, 29, 32, 34, 35, 37-39, 41, 44, 45, and 48. Claims 22, 28, 29, 32, 34, and 35 therefore fall with claim 1, and claims 37-39, 41, 44, 45, and 48 therefore fall with claim 36. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claims 33 and 47 Dependent claims 33 and 47 depend, respectively, from independent claims 21 and 36 and recite that “the drink spout extends in a fixed orientation relative to the cap assembly base.” Appellants argue that the Examiner’s combination of Dark and Paczonay teaches away from this subject matter, exclusively relating to a bottle with a drink spout that pivots Appeal 2011-010768 Application 12/133,954 8 relative to its base, and that one skilled in the art would interpret the subject matter of dependent claims 33 and 47 to preclude a pivoting drink spout. App. Br. 18-19. The Examiner responds that the claim limitation “the drink spout extends in a fixed orientation relative to the cap assembly base” is met by Dark as interpreted by the Examiner when viewing the act of pivoting the spout of Dark to the extended position. Appellants have not presented a persuasive argument that the claimed “fixed orientation” excludes a pivoting drink spout, and we therefore sustain the rejection of claims 33 and 47. Rejection under § 103 over Dark, Paczonay, and Morifuji Appellants do not argue for the separate patentability of claims 30 and 46, and we therefore sustain this rejection for the reasons set forth above. Rejection under §103 over Flinn, Sullivan, and Paczonay Appellants argue that the bite valve of Paczonay cannot be added to the combined teachings of Flinn and Sullivan to render obvious a semi-rigid fluid container with a valve assembly that is “adapted to emit a drink fluid from the fluid container responsive to a user squeezing the fluid container” as recited in independent claims 21 and 36. App. Br. 21 (emphasis omitted). Appellants again argue that Paczonay’s bite valve is not adapted to dispense drink liquid in response to an increase in pressure upstream of the bite valve, but rather is configured to dispense drink fluid only upon a user biting the end region of the bite valve and sucking liquid through the bite valve. App. Br. 21-22. Appellants argue that if personal hydration system bite valves are configured to dispense drink fluid in response to container Appeal 2011-010768 Application 12/133,954 9 squeezing, then such bite valves would be ineffective for their intended use of dispensing drink fluid only upon a user biting the end region of the bite valve and sucking liquid through the bite valve. App. Br. 22. Appellants argue that because Paczonay’s bite valve is not configured to emit drink fluid from the fluid container in response to a user squeezing an associated fluid reservoir, combining Paczonay with Flinn and Sullivan would not result in a squeezable bottle from which drink fluid is dispensed upon the squeezing of the bottle as recited in independent claims 21 and 36. App. Br. 22-23. For the reasons set forth above with respect to Paczonay’s bite valve being capable of emitting drink fluid in response to a user squeezing an associated container, we are not persuaded by Appellants’ arguments regarding Paconzay’s bite valve not operating in the claimed manner. Appellants also argue that modifying Flinn and Sullivan with Paczonay’s bite valve would not have been obvious to one of ordinary skill in the art because doing so would require modifying Paczonay’s bite valve such that the bite valve would leak under normal operating conditions, because if Paczonay’s bite valve was configured to emit drink fluid in response to an increase in internal pressure in the flexible bladder, the bite valve would dispense drink fluid at undesired times, and therefore one of ordinary skill in the art would not have been motivated to make such a modification. App. Br. 24. The Examiner found that it would have been obvious to one having ordinary skill in the art at the time the invention was made to combine the squeeze bottle of Flinn and the cap of Sullivan and Paczonay’s bite valve to have a squeeze bottle with a bite valve allowing one-handed control. Ans. Appeal 2011-010768 Application 12/133,954 10 13. The Examiner responds to Appellants’ argument by reiterating that adding Paczonay’s bite valve to the end of the combined container of Flinn and Sullivan would add further control and safety to a drinking vessel. Id. at 15. As stated above, Paczonay itself teaches that the addition of a bite- actuated valve to the end of an open conduit to provide selective delivery of liquid to a user’s mouth. See Paczonay, col. 1, ll. 52-55 and col. 3, ll. 4-7. Paczonay’s selective delivery teaches the control and safety reasoning asserted by the Examiner. Appellants have not alleged that placement of Paczonay’s mouthpiece on Dark’s container would not provide such control and safety. We therefore are not persuaded by the Examiner’s arguments and we sustain the rejection of claims 21-22, 36, 38, and 41 as unpatentable over Flinn, Sullivan, and Paczonay. Claims 26 and 42 Appellants argue that Flinn, Sullivan, and Paczonay fail to teach or suggest a drink spout having a central axis, an on/off valve, and that rotation of the drink spout relative to the cap assembly base and about the central axis selectively configures the on/off valve to a dispensing configuration. App. Br. 25. Appellants allege that the claimed “central axis” extends generally through the center of the drink spout in the longitudinal direction of the drink spout. App. Br.25 Sullivan opens and closes its drink spout by pivoting the spout on the cap and about an axis that extends through projections 25. See Sullivan, Figure 5. Appeal 2011-010768 Application 12/133,954 11 The Examiner responds that “the features upon which appellant relies (i.e., in the Specification, appellants expressly describe this central axis as a long axis) are not recited in the rejected claim(s).” Ans. 15. However, although the long axis is not recited in the claim, Appellants’ arguments are directed to properly construing the term “central axis” in claims 26 and 42, and we agree with Appellants that the one skilled in the art at the time of the invention would consider the “central axis” of the drink spout to be its long(itudinal) axis. Sullivan does not teach rotation of the drink spout relative to the cap assembly base and about a longitudinal axis of the drink spout to selectively configure the on/off valve to a dispensing configuration. We therefore do not sustain the rejection of claims 26 and 42. Claims 31 and 40 Appellants argue that Flinn, Sullivan, and Paczonay fail to teach or suggest a mouthpiece including a mouthpiece base portion adjacent the cap assembly base, the mouthpiece base portion having a contoured configuration that does not extend a constant distance from the outlet, and further wherein the drink spout includes a complementary portion that engages the mouthpiece base portion and resists rotation of the mouthpiece relative to the drink spout. App. Br. 28-30. The Examiner finds, as illustrated on page 16 of the Answer, that Sullivan includes a mouthpiece base portion and engaging complementary portion as claimed. Appellants state that the claimed “spout” and “mouthpiece” are recited as separate and distinct structures, and claims 31 and 40 relate to a contoured configuration of a base portion of the mouthpiece, and a Appeal 2011-010768 Application 12/133,954 12 complementary contoured portion of the drink spout, “such that the mouthpiece (which is separate and apart from the drink spout) is restricted (but not necessarily prevented) from rotating relative to the drink spout.” App. Br. 28. Appellants argue that Paczonay does not disclose a mouthpiece having a base portion with a contoured configuration, and that Sullivan’s element 22, while arguably a drink spout, would not be considered the claimed “mouthpiece” under the Examiner’s proposed combination of Sullivan with Paczonay’s mouthpiece, and that Sullivan’s element 17 and 19 are not portions of a drink spout or complementary to Sullivan’s elements 20 and 22. We agree with Appellants that, given the Examiner’s proposed combination of Flinn, Sullivan, and Paczonay, the combined references do not teach the claimed mouthpiece including a mouthpiece base portion having a contoured configuration that does not extend a constant distance from the outlet, and a drink spout including a complementary portion that engages the mouthpiece base portion and resists rotation of the mouthpiece relative to the drink spout. The Examiner contends that Paczonay teaches the mouthpiece, and the mouthpiece base portion is claimed to be part of the mouthpiece. Further, Sullivan’s element 22 rotates or pivots up and down about projections 25 rather than rotating in a clockwise or counterclockwise direction, such that its complementary portions do not resist rotation of element 22, or of a mouthpiece that can be combined therewith. We therefore do not sustain the rejection of claims 31 and 40. Appeal 2011-010768 Application 12/133,954 13 DECISION We AFFIRM the rejection of claims 21, 22, 28, 29, 32-39, 41, 44, 45, 47, and 48 under 35 U.S.C. § 103(a) as obvious over Dark and Paczonay. We AFFIRM the rejection of claims 30 and 46 under 35 U.S.C. § 103(a) as obvious over Dark, Paczonay, and Morifuji. We AFFIRM the rejection of claims 21, 22, 36, 38, and 41 under 35 U.S.C. § 103(a) as obvious over Flinn, Sullivan, and Paczonay. We REVERSE the rejection of claims 26, 31, 40, and 42 under 35 U.S.C. § 103(a) as obvious over Flinn, Sullivan, and Paczonay. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART rvb Copy with citationCopy as parenthetical citation