Ex Parte DeedsDownload PDFPatent Trial and Appeal BoardMay 30, 201713769803 (P.T.A.B. May. 30, 2017) Copy Citation 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. 13/769,803 02/18/2013 M. Rinley Deeds JD-812B-US 1049 24804 7590 06/01/2017 MICHAEL BEST & FRIEDRICH LLP (Diversey, Inc.) 100 E WISCONSIN AVE STE 3300 MILWAUKEE, WI 53202 EXAMINER DURAND, PAUL R ART UNIT PAPER NUMBER 3754 NOTIFICATION DATE DELIVERY MODE 06/01/2017 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): jd.patentsupport@diversey.com mkeipdocket@michaelbest.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte M. RINLEY DEEDS Appeal 2015-006615 Application 13/769,803 Technology Center 3700 Before CHARLES N. GREENHUT, JILL D. HILL, and NATHAN A. ENGELS, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 6—10, 12—19, and 21—25, which constitute all the claims pending in this application. Claims 1—5, 11 and 20 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part and designate a new ground of rejection. Appeal 2015-006615 Application 13/769,803 CLAIMED SUBJECT MATTER The claims are directed to a dispenser system. Claim 6, reproduced below, is illustrative of the claimed subject matter: 6 A dispensing system for dispensing material from different containers, the dispensing system comprising: a dispenser defining a receptacle shaped to receive the containers in an axial direction; a first closure secured to a first container and supported by the receptacle, the first closure including a cap having an opening through which material from the first container is dispensable, a portion of the first closure slidable relative to the cap to selectively expose the opening in the cap; a drive system operably engaged with the first closure to drive the slidable portion to selectively dispense material from the first container; and a retainer coupled to the receptacle and releasably engageable with the cap, the cap and the retainer having a keyed relationship in which complementary portions of the cap and the retainer move in the axial direction with respect to one another upon insertion of the cap into the receptacle, the retainer having a portion that flexes in response to engagement by the cap to retain the cap in the receptacle, to resist removal of the first container from the receptacle, and to maintain engagement of the drive system with the first closure during use, wherein the retainer is removable and interchangeable with another retainer keyed differently to a second closure on a second container, and wherein the keyed relationship between the cap and the retainer permits full insertion of the first closure into the receptacle and prevents full insertion of the second closure into the receptacle. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Thomas et al. (“Thomas”) US 5,832,972 Nov. 10, 1998 Arent et al. (“Arent”) US 6,269,837 B1 Aug. 7, 2001 Argentieri (“Argentieri”) US 6,386,392 B1 May 14, 2002 2 Appeal 2015-006615 Application 13/769,803 Livingston et al. (“Livingston”) US 2005/0247742 A1 Nov. 10, 2005 REJECTIONS Claim 6—10, 12—14, 18, 19, 21, and 25 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Livingston, Argentieri and Thomas. Claims 15—17 and 22—24 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Livingston, Argentieri, Thomas, and Arent. OPINION Regarding claim 6, Appellant contends Argentieri lacks complimentary portions of the cap and retainer that move in the same axial direction in which the dispenser receives the container. App. Br. 6—8. This is incorrect. The “axial direction” is defined according to claim 6 as the direction in which the receptacle receives containers. Claim 6 requires complementary portions of the cap and retainer to move with respect to one another in this same axial direction. However, to the extent such an assumption underlies Appellant’s arguments, we note that claim 6 does not require any particular axes of those structures creating the recited “keyed relationship” to be parallel with, or in the same direction as, the defined axial direction. See, e.g., Application Figs. 1 and 2 (depicting an aperture 46 having a longitudinal axis extending in the same direction in which the container is inserted into the dispenser). As the Examiner correctly points out, the protrusion 17 and the spring (unenumerated) of Argentieri, collectively regarded as the recited “retainer,” and the cap 28, have 3 Appeal 2015-006615 Application 13/769,803 complimentary portions 161, 17 that move in the defined axial direction with respect to one another. Final Act. 3 (“(i.e. the retainer is axially stationary, while the container moves axially downward)”); Argentieri Figs. 1A-C. The fact that there is additional movement perpendicular to the axial direction (App. Br. 8; Reply Br. 3—4), i.e., under the spring force, does not mean that the limitation requiring axial movement is unsatisfied. Additional elements or operability do not prevent a prior-art combination from satisfying open-ended claims. Appellant additionally argues that retainer protrusion 17 does not flex. App. Br. 8; Reply Br. 5. As the Examiner correctly points out, claim 6 requires the “retainer,” which the Examiner regards as the combination of protrusion 17 and its biasing spring, to have a “complimentary portion[],” which the Examiner regards as protrusion 17, and “a portion that flexes,” which the Examiner regards as the spring. Arguments that merely point out, correctly or not, that there is no indication that protrusion 17 flexes, are not germane to the Examiner’s rejection. The last argument in the Appeal Brief specifically relating to claim 6 is that in Argentieri “the locking mechanism 25 does not prevent full insertion of a second closure into the receptacle.” App. Br. 9; see also Reply Br. 4—6. The Examiner initially disagrees by construing “full insertion” in an unreasonably broad way: “without full mesh between corresponding keys on the cap and retainer, the container may not be fully secured in place (i.e. can easily be removed), and can be considered not “fully inserted.” Ans. 3. 1 Contrary to Appellant’s argument (Reply Br. 4) Argentieri illustrates a complementary recess 16 in the reservoir 10 but expressly states that the complimentary recess can be formed by the cap. See col. 7,11. 15—19. 4 Appeal 2015-006615 Application 13/769,803 We cannot agree with the Examiner’s claim construction in this regard because one skilled in the art would understand a distinction between insertion and securement or fixation. In any case, and as the Examiner reminds, to the extent Argentieri’s device might be regarded as failing to satisfy the limitations in question pertaining to exclusive keying, the Examiner’s rejection relied on Thomas to demonstrate that such arrangements were old and well-known in the art. Ans. 3; Final Act. 4. The Examiner’s findings and analysis with respect to Thomas in that regard stand uncontroverted. Appellant raises an additional argument in the Reply Brief that “Argentieri does not teach that the retainer is coupled to the receptacle.” Reply Br. 2—3 (reproducing Figure 1C of Argentieri). This argument is untimely (37 C.F.R. § 41.41(b)(2)), inapposite, and incorrect. The Examiner relied on Livingston, not Argentieri, for the receptacle itself, so any absence of coupling in Argentieri alone is not pertinent to the Examiner’s rejection. Further, although the schematic illustrations of Argentieri’s locking mechanism in Figures 1A-C do not depict every structural detail of Argentieri’s device, Argentieri makes it clear that at least one of the protrusion or recess is a component of the dispensing appliance 11 including a recess 22 or “receptacle.” See col. 7,11. 39-41. For the foregoing reasons, we sustain the Examiner’s rejection of claim 6, and the Examiner’s rejection of claim 12, which is argued for the same reasons (App. Br. 11—12). 5 Appeal 2015-006615 Application 13/769,803 Claims 1,9, 13, and 212 present essentially the same issue. Regarding claims 7, 9, and 13, in addition to relying on the schematic illustrations of the Argentieri locking mechanism depicted in Figures 1A—C, the Examiner cites Figures 5 and 7 (Final Act. 4, 5; Ans. 4, 5) which illustrate an embodiment of Argentieri depicted in greater detail. In particular, the Examiner cites latch 46 as a component of Argentieri’s retainer that defines a portion of a wall of the receptacle. Final Act. 4, 5; Ans. 4, 5. Latch 46 appears to satisfy the claim language in question (see, e.g., Argentieri Figure 9; col. 13,11. 6—8, 22—23), and Appellant, referring only to the structures of Figures 1 A—C, has not addressed the Examiner’s findings in this regard. As such, the Examiner’s findings and analysis regarding this issue stands uncontroverted. Claim 21 contains limitations similar to claim 7, but the Examiner does not appear to have expressly set forth similar findings in addressing claim 21. Presumably, as this limitation is not otherwise addressed, this is the result of an oversight, and the Examiner intended the findings and analysis set forth regarding claims 7, 9, and 13 to apply to claim 21. For the foregoing reasons, we sustain the rejection of claims 7, 9, 13, and 21. However, as we supplement the Examiner’s rejection of claim 21 by incorporating the Examiner’s analysis related to claims 7 and 13, we designate our affirmance of claim 21 as a new ground of rejection to ensure Appellant has a fair opportunity to respond. 2 Appellant presents the same arguments for claim 21 as provided for claim 6 but additionally argues the limitation, “a retainer having a wall defining at least a portion of the receptacle supporting the first closure” which is similar to that introduced by claims 7 and 13. 6 Appeal 2015-006615 Application 13/769,803 Although claim 8 is argued under a separate subheading (App. Br. 10— 11), we are unable to identify any argument specifically related to the language of claim 8 and the Examiner’s rejection thereof. 37 C.F.R. § 41.37(c)(l)(iv) requires “more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.” See In re Lovin 652 F.3d 1349, 1357 (Fed. Cir. 2011). We sustain the rejection of claim 8. Regarding claim 18, Appellant argues: There is no teaching or suggestion of such a flange in the cited references, and it would not have been obvious to include any flange (let alone a flange that extends radially outward) on the pushbutton releasable locking mechanism 25 of Argentieri (that comprises the moveable protrusion 17 and spring means 27, which the Examiner asserts is equivalent to the claimed retainer). Reply Br. 11. The Examiner’s rejection of claim 18 is predicated on “hav[ing] a flange extending radially outward in order to act as a stop to limit the radially outward movement of the protrusion as a container is inserted, and [a determination] that a mere reversal of the essential working parts of a device involves only routine skill in the art.” Final Act. 6. It is unclear, from the Examiner’s statement, where the Examiner proposes to extend a flange and what parts of the prior-art device the Examiner proposes it would have been obvious to reverse. The Answer is no more enlightening on this point. See Ans. 6. We further note, to the extent that the Examiner is relying on the same structure in Argentieri to meet two different components of the system of claim 18, the flange of claim 18 is recited as an additional element of the retainer (see, e.g., flange 44 Application Figure 3), as opposed to a more specific requirement for the retainer protrusion of claim 7 Appeal 2015-006615 Application 13/769,803 12. It is not apparent how the Examiner’s proposed combination satisfies the language of claim 18. “[T]he precise language of 35 U.S.C. § 102 that ‘(a) person shall be entitled to a patent unless,’ concerning novelty and unobviousness, clearly places a burden of proof on the Patent Office which requires it to produce the factual basis for its rejection of an application under sections 102 and 103.” It is neither our place, nor Appellant’s burden, to speculate as to the basis for rejecting claims. In re Stepan, 660 F. 3d 1341, 1345 (Fed. Cir. 201 l)(It is the PTO’s obligation to provide timely notice to the applicant of all matters of fact and law asserted.) Accordingly, we reverse the Examiner’s rejection of claim 18. The remaining claims are not separately argued. DECISION The Examiner’s rejections of claims 6—10, 12—17, and 19 are affirmed. The Examiner’s rejection of claims 21—25 is affirmed but designated as including a new ground of rejection under 37 C.F.R. § 41.50(b). The Examiner’s rejection of claim 18 is reversed. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground 8 Appeal 2015-006615 Application 13/769,803 of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 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; 37 C.F.R, $ 41.50(b) 9 Copy with citationCopy as parenthetical citation