Ex Parte Choy et al

Patent Trial and Appeal Board

Aug 5, 2016

13291021 (P.T.A.B. Aug. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/291,021 11/07/2011
85444 7590 08/05/2016
Bay Area Technolgy Law Group PC
2171 E. Francisco Blvd., Suite L
San Rafael, CA 94901
FIRST NAMED INVENTOR
Anthony Choy
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.
735.05 5425
EXAMINER
ACKUN, JACOB K
ART UNIT PAPER NUMBER
3728
MAILDATE DELIVERY MODE
08/05/2016 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 ANTHONY CHOY, JUN ARAYA, and
DENNIS CHEK KONG CHAN
Appeal2014-007534
Application 13/291,021
Technology Center 3700
Before EDWARD A. BROWN, AMANDA F. WIEKER, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Anthony Choy et al. ("Appellants") appeal under 35 U.S.C. § 134(a)
from the Examiner's final decision rejecting claims 1-12. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal2014-007534
Application 13/291,021
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is representative of the claimed subject
matter.
1. A shipping container comprising side walls, a bottom and a
top defining an internal volume, said top being selectably
displaceable for gaining access to the internal volume and for
sealing the internal volume, a valve for drawing a vacuum on
said internal volume from outside of said container, said side
walls being capable of contracting and expanding in relation
to pressure differences between said internal volume and
ambient, wherein said side walls comprise an inner wall
proximate said internal volume and an outer wall spaced from
said inner wall for defining the external volume of said
shipping container.
REJECTIONS
1) Claims 10 and 11 are rejected under 35 U.S.C. § 112, first
paragraph, for failure to comply with the written description
requirement.
2) Claims 10 and 11 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
3) Claims 1-12 are rejected under 35 U.S.C. §§ 102(b) or 102(e) as
anticipated by Kaczmarek (US 2008/0272146 Al, pub. Nov. 6,
2008), or in the alternative, under 35 U.S.C. § 103(a) as
unpatentable over Kaczmarek.
DISCUSSION
Rejections 1and2: Claims 10 and 11
The Examiner rejects claims 10 and 11under35 U.S.C. § 112, first
paragraph, because the Specification "lacks a description of a removable top,
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Application 13/291,021
and additionally, lacks a description of a removable top that is also
selectively displaceable" and "does not describe the limitation now recited in
claim 11." Final Act. 2. In addition, the Examiner states the limitations in
claims 10 and 11 "constitute New Matter in the subject application." Id. at
3.
The Examiner also rejects claims 10 and 11 as indefinite under 3 5
U.S.C. § 112, second paragraph, because their metes and bounds cannot be
determined for the same reasons stated for the rejection of claims 10 and 11
under 35 U.S.C. § 112, first paragraph. Id.
Appellants do not present any argument in response to the rejections
of claim 11 under 35 U.S.C. § 112, first and second paragraphs. Appeal Br.
5. Consequently, we summarily sustain these rejections of claim 11. In re
Berger, 279 F.3d 975, 984, 985 (Fed. Cir. 2002) (holding that the Board did
not err in sustaining a rejection under 35 U.S.C. § 112, second paragraph,
when the applicant failed to contest the rejection on appeal); Hyatt v. Dudas,
551F.3d1307, 1314 (Fed. Cir. 2008) (explaining that summary affirmance
without consideration of the substantive merits is appropriate where an
appellant fails to contest a ground of rejection).
With respect to claim 10, Appellants argue that Figure 1 of the
application "clearly shows the top to be removable from the body of the
claimed shipping container." Appeal Br. 5 (identifying the vertical arrows in
Figure 1 ). Appellants identify the portion of the Specification providing
description of the term "displaceable" in the claims. Id., quoting Spec. 6, 11.
4---6. Appellants also rely on two definitions of the word "displace." Id.,
quoting WEBSTER'S NEW COLLEGIATE DICTIONARY, G&C Merriam Co.
( 197 6). The Examiner responds that it is improper for Appellants to rely on
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Application 13/291,021
the drawings alone without textual description in the Specification for the
removable top. Ans. 7-8.
The purpose of the written description requirement in 35 U.S.C.
§ 112, first paragraph, is to "'clearly allow persons of ordinary skill in the art
to recognize that [the inventor] invented what is claimed.'" Ariad Pharm.,
Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane)
(quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1355, 1563 (Fed. Cir. 1991)).
We note the "content of the drawings may also be considered in determining
compliance with the written description requirement." In re Kaslow, 707
F.2d 1366, 1375 (Fed. Cir. 1983). Figure 1 provides support for the
limitation in claim 10 that the top is removable from the side walls, and the
Specification provides description for a top that is displaceable as recited in
claim 1. Based on this disclosure, one of ordinary skill in the art would have
recognized that Appellants invented what is claimed. Consequently, we do
not sustain the rejection of claim 10 under 35 U.S.C. § 112, first paragraph.
Likewise, to the extent the Examiner asserts that claim 10 recites new
matter, we do not sustain the rejection in light of the same disclosure.
The Examiner's rejection of claim 10 under 35 U.S.C. § 112, second
paragraph, is based essentially on the same reasons as the rejection under 35
U.S.C. §112, first paragraph. Appeal Br. 3. Given our disposition of the
rejection under 35 U.S.C. § 112, first paragraph, and because the Examiner
does not otherwise identify any language that is unclear in claim 10, we do
not sustain the indefiniteness rejection of claim 10 under 35 U.S.C. § 112,
second paragraph, for similar reasons.
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Application 13/291,021
Rejection 3: Claims 1-12-Anticipation by Kaczmarek or Obviousness over
Kaczmarek
The Examiner finds that Kaczmarek anticipates the claims because it
"discloses a container that has all the structural elements of the claimed
container, and in addition, is at least inherently capable of all of the claimed
functions." Non-Final Act. 4 (mailed June 18, 2013) ("Non-Final Act."). 1
The Examiner states that "Kaczmarek clearly shows the apparatus disclosed
therein to have a top (the top portion of the bag) and a bottom (the bottom
portion of the bag)." Final Act. 4. The Examiner alternatively finds the
"claims appear to recite elements that are each known per se in the relevant
art" and concludes "it would have been obvious to provide the apparatus of
Kaczmarek with all of the elements of the claims in order to better protect
items therein, as a design expedient or in order to provide a more
economical container." Non-Final Act. 4.
Appellants contend that Kaczmarek "is not directed to a shipping
container at all but to a portable liquid-dispensing bag." Appeal Br. 3.
Appellants contend that Kaczmarek does not disclose "a physical structure
which includes a top being selectively displaceable for gaining access to its
internal volume" and does not disclose the "removability of the top" as
recited in claim 10. Id. Appellants also contend that Kaczmarek "teaches a
bag wherein its internal volume may expand or contract depending upon the
amount of liquid loaded therein" but the "side walls of the bag do not
expand or contract." Id. at 4.
1 The Examiner incorporates by reference the Non-Final Action in its
entirety in the Final Rejection. Final Act. 4.
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Application 13/291,021
The Examiner responds that the term "shipping container" appears in
the preamble and "encompasses bags as disclosed in Kaczmarek." Ans. 3.
The Examiner asserts that Kaczmarek discloses a bag with a top wherein the
side walls are pulled apart "to access the interior of the bags" and the top is
therefore "selectively displaceable." Id. at 3--4. With respect to claim 10,
the Examiner asserts that the top of Kaczmarek's bag is removable because
it can be "cut off or tom off or otherwise removed." Id. at 6. The Examiner
acknowledges that Kaczmarek does not explicitly disclose side walls capable
of contracting and expanding but asserts "given the materials of construction
of the flexible bags of Kaczmarek, their walls would inherently expand or
contract." Id. at 4. Alternatively, the Examiner asserts that it would have
been obvious to "construct the walls of the Kazmarek bags from various
materials that would also allow for expansion and contraction" because
plastic materials capable of expanding or contracting are known in the art.
Id. at 5. For the following reasons, we do not sustain the rejection.
We note that the Examiner has not identified the specific elements in
Kaczmarek that the Examiner asserts correspond to all the limitations of the
claims. See Non-Final Act. 4; Final Act. 3-5. Kaczmarek discloses a
structure with an inner bag 2 and an outer bag 4 for dispensing liquids.
Kaczmarek, Fig. 1. Kaczmarek discloses a liquid-dispensing bag including
"fitment portal 6 connecting said inner bag 2 to said outer bag 4 in a liquid
proof manner ... to provide a passage from the inside of said inner bag to
the outside of said outer bag 4." Id. i-f 44, Fig. 2. Fitment portal 6 "may
include valve mechanisms 13." Id. i-f 51, Fig. 32. As claim 1 recites "a
valve for drawing a vacuum on said internal volume," we understand the
Examiner to find that the recited "internal volume" corresponds to the
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Application 13/291,021
internal volume of Kaczmarek' s inner bag 2 which is connected to valve
mechanism 13. Based on this initial understanding, we now compare the
Examiner's findings in regard to Kaczmarek's disclosure to the other
limitations of claim 1.
Claim 1 recites the shipping container comprises "side walls, a bottom
and a top defining an internal volume, said top being selectably displaceable
for gaining access to the internal volume." The Examiner appears to find
that the top of Kaczmarek's outer bag 4 is selectably displaceable because its
side walls can be pulled apart. Ans. 3--4. Regardless of whether the top of
Kaczmarek's outer bag 4 is selectably displaceable, separating the side walls
at the top of Kaczmarek's outer bag 4 does not result in "gaining access to
the internal volume" of inner bag 2, nor does the top of outer bag 4 seal "the
internal volume" of inner bag 2. Rather, the re-sealable opening 3 of inner
bag 2 seals inner bag 2. Further, the side walls of outer bag 4 along with the
top and bottom portions thereof, do not define the "internal volume" of inner
bag 2.
Claim 1 also recites that the side walls contract and expand "in
relation to pressure differences between said internal volume and ambient."
The Examiner does not explain how the side walls of Kaczmarek's outer bag
4 are capable of "contracting and expanding in relation to pressure
differences between said internal volume and ambient" given that the walls
of outer bag 4 are separated from the internal volume of inner bag 2 by the
volume between the inner and outer bags. See Kaczmarek, Fig. 2.
The Examiner does not find that Kaczmarek discloses any particular
"materials of construction" for its flexible bags. Kaczmarek discloses that
the "outer bag 4 may be of a semi-rigid material." Kaczmarek i-f 45. The
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Application 13/291,021
fact that the outer bag may be semi-rigid casts doubt on whether
Kaczmarek's bags are inherently capable of contracting and expanding in
relation to the recited pressure difference. "Inherency ... may not be
established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient." In re
Oelrich, 666 F. 2d, 578, 581 (CCP A 1981) (citations omitted). Thus, the
Examiner's finding that Kaczmarek inherently discloses a material that is
capable of contracting and expanding in relation to the recited pressure
difference is not based on evidence but is simply speculation.
For the foregoing reasons, the Examiner's finding that Kaczmarek
discloses all of the limitations of the claims is not supported by Kaczmarek.
Therefore, we do not sustain the rejection of claim 1 and claims 2-122 which
are dependent on claim 1under35 U.S.C. §§ 102(b) or 102(e).
The Examiner's alternative rejection of claims 1-12 as unpatentable
over Kaczmarek is deficient for the same reasons stated above. In addition,
the Examiner has not provided an adequate reason to modify the liquid-
dispensing bag of Kaczmarek, including to modify the material of the side
walls of Kaczmarek's outer bag 4 to be capable of contracting and
expanding in response to the recited pressure difference between the internal
volume and ambient, to result in the claimed shipping container. Thus, we
also do not sustain the alternative rejection of claims 1-12.
2 The Examiner's assertion, with respect to claim 10, that Kaczmarek
discloses a top "removable from said side walls" because one could cut off
the top portion of the bag is improper because it would appear to result in
destruction of the liquid-dispensing bag disclosed in Kaczmarek.
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DECISION
The Examiner's decision rejecting claims 1-12 under 35 U.S.C.
§§ 102(b) or 102(e) and/or 35 U.S.C. § 103(a) is reversed.
The Examiner's decision rejecting claim 10 under 35 U.S.C. § 112,
first paragraph and second paragraph is reversed.
The Examiner's decision rejecting claim 11 under 35 U.S.C. § 112,
first paragraph and second paragraph is affirmed.
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-IN-PART
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