Ex Parte DiBiasio

Patent Trial and Appeal Board

Aug 27, 2018

14527051 (P.T.A.B. Aug. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/527,051 10/29/2014
22922 7590 08/29/2018
REINHART BOERNER VAN DEUREN S.C.
ATTN: TRAVIS MCDONNELL, PARALEGAL
IOOONORTHWATER STREET
SUITE 2100
MILWAUKEE, WI 53202
FIRST NAMED INVENTOR
Sergio DiBiasio
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.
086567-0397 7130
EXAMINER
CASTRIOTTA, JENNIFER
ART UNIT PAPER NUMBER
3781
NOTIFICATION DATE DELIVERY MODE
08/29/2018 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):
IP Admin@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SERGIO DIBIASIO
Appeal2017-009922
Application 14/527 ,051 1
Technology Center 3700
Before LINDA E. HORNER, ERIC C. JESCHKE, and
ANTHONY KNIGHT, Administrative Patent Judges.
KNIGHT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1-3, 6-10, and 12-14, the remaining pending claims. 2 We have jurisdiction
under 35 U.S.C. § 6(b ).
We REVERSE.
1 According to Appellant, the real party in interest is Silgan Plastics LLC,
who is also the applicant under 37 C.F.R. § 1.46. Appeal Br. 2.
2 Claims 4, 5, 11, and 15-21 were cancelled. Id. at 15-16 (Claims App'x).
Appeal2017-009922
Application 14/527 ,051
CLAIMED SUBJECT MATTER
The invention is directed to a dual chamber container having a
separation between the chambers that extends from the bottom of the
container to the top of the sealing surface of the single neck. Spec. ,r 1.
Claims 1 and 9 are the sole independent claims. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1. A multiple-chamber container comprising:
a first tapered neck portion;
a first chamber including a first bottom wall and a first side
wall formed with the first bottom wall and terminating at the first
tapered neck portion which defines a first opening into the first
chamber;
a second tapered neck portion;
a second chamber including a second bottom wall
substantially coplanar with the first bottom wall and a second
side wall formed with the second bottom wall and terminating at
the second tapered neck portion which defines a second opening
into the second chamber, each neck portion including a semi-
circular shaped external surface having an external thread;
a hollow cylindrical collar having a circular cross-section
defining a substantially circular opening; and
a transition portion which provides a content-tight junction
between the first and second neck portions and the hollow
cylindrical collar such that any content passing between either
chamber and the circular opening must pass through the hollow
cylindrical collar.
Appeal Br. 15 (Claims App'x).
REJECTIONS
The Examiner made the following rejections:
I. Claims 1-3 and 6-8 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Murray et al. (US 2002/0074347 Al, published June 20,
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Appeal2017-009922
Application 14/527 ,051
2002) ("Murray") and Berger et al. (US 5,954,224, issued Sept. 21, 1999)
("Berger").
II. Claims 9, 10, and 12-14 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Murray, Berger, and Bettle, III et al. (US 4,894,267,
issued Jan. 16, 1990) ("Bettle").
OPINION
Rejection I-The rejection of claims 1-3 and 6-8
under 35 US.C. § 103 over Murray and Berger
The Examiner finds that Murray discloses a multiple-chamber
container including, inter alia, first and second chambers and externally
threaded first and second tapered neck portions, with each tapered neck
portion having a semi-circular shape. Final Act. 3--4. The Examiner finds
that Murray does not disclose a hollow cylindrical collar having a circular
cross-section and a transition portion that provides a content-tight junction.
Id. at 5. The Examiner relies upon Berger Figures 1 and 2 to teach a collar
and a transition portion. Id. at 5---6. Below is a copy of Berger, Figures 1
and 2, as annotated by the Examiner.
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Appeal2017-009922
Application 14/527 ,051
10"·''""""'~:
<·
·~:
:::: ,
Berger's Figure 1 above illustrates a single-chambered tubular
container having a circular cross-section, and Figure 2 illustrates a dual-
chambered tubular container. Berger 3 :27-31. As annotated, the
Examiner's copy of Berger's Figure 1 includes an identified transition
portion and a collar, as indicated above. The Examiner determines that it
would have been obvious to a person having ordinary skill in the art at the
time of the invention to modify Murray with the teachings of Berger to
include a spout for more accurate pouring. Id. at 6.
Appellant argues that Berger does not cure the deficiencies of Murray
because Berger fails to teach a multi-chamber container having a hollow
collar and a transition portion. Appeal Br. 7, 9. Appellant argues that it is
not apparent where Berger teaches an increase in dispensing accuracy. See
Reply Br. 5. Appellant also contends that there is a lack of an explanation as
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Application 14/527 ,051
to how or why the transition portion and collar of Berger would result in an
increase in dispensing accuracy. Id. Thus, Appellant argues that Berger fails
to provide one skilled in the art with sufficient motivation to combine Berger
and Murray. Id. Appellant contends that "the Examiner has failed to
provide any rational underpinning as to why one would modify Murray et al.
with Berger et al. given that Murray et al. already discloses the use of a
spout to facilitate pouring." Appeal Br. 11.
In addressing the reasoning for combining Murray and Berger, the
Examiner refers to Murray as teaching "it is known that it is desirable to
accurately dispense the compositions from a dual chamber compartment."
Ans. 5 (citing Murray ,r,r 58-59). Thus, according to the Examiner, "[t]he
incorporation of the teachings of the transition portion and hollow collar
being attached directly to the neck of the container, as taught by Berger et
al., further increases this accuracy." Id.
We are not persuaded that the Examiner's analysis is sufficiently
detailed and complete to support a conclusion that the claimed subject matter
would have been obvious. Claim 1 recites a multiple-chambered container
having a hollow collar with a circular cross-section and circular opening, as
well as a transition portion between the first and second neck portions and
the hollow collar. Appeal Br. 15 (Claims App'x).
The Examiner's reasoning for modifying Murray is faulty in that the
Examiner proposes that one of ordinary skill in the art would have modified
Murray to include a spout for more accurate pouring. Final Act. 6.
However, as Appellant points out, Murray already discloses the use of a
spout in combination with other features to facilitate accurate pouring. See
Appeal Br. 11 ("Specifically, Murray et al. teaches in FIGS. 5A-9B and in
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Application 14/527 ,051
paragraphs [0042] and [0056]-[0059] various spout features that may be
incorporated into the multi-chamber container to facilitate more accurate
dispensing."). See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007)
(quoting with approval In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006))
("[R ]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness."). Here, the Examiner's reasoning for combining Murray with
Berger falls short because Murray already discloses the use of a spout in
combination with other container features for accuracy, the exact same
reason as offered by the Examiner. In this instance, the Examiner's
reasoning for the combination lacks rational underpinning because the
Examiner has not explained why Berger's spout is more accurate than
Murray's spout.
In view of the foregoing discussion, we do not sustain the Examiner's
unpatentability rejection of claim 1 and its dependent claims 2, 3, and 6-8.
Rejection II-The rejection of claims 9, 10, and 12-14
under 35 US.C. § 103 over Murray, Berger, and Bettle
Independent claim 9 contains limitations similar to claim 1. Compare
Appeal Br. 15 (Claims App'x), with id. at 16. Claims 10 and 12-14 depend
from claim 9. Id. at 16 (Claims App'x). The Examiner relies on the same
deficient findings and reasoning based on Murray and Berger discussed
above, regarding claim 1 (see supra the rejection of claim 1 ). Bettle does
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Application 14/527 ,051
not cure the deficiencies. Thus, for the same reasons discussed above, we do
not sustain the rejection of claims 9, 10, and 12-14.
DECISION
For the above reasons, the Examiner's rejection of claims 1-3, 6-10,
and 12-14 is reversed.
REVERSED
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