Ex Parte Gupta et al

Patent Trial and Appeal Board

Nov 20, 2017

13502943 (P.T.A.B. Nov. 20, 2017)

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.
4310-110445 9707
EXAMINER
BECKER, DREW E
ART UNIT PAPER NUMBER
1792
MAIL DATE DELIVERY MODE
13/502,943 06/04/2012 Anupy Singla Gupta
24628 7590 11/21/2017
Husch Blackwell LLP
Husch Blackwell Sanders LLP Welsh & Katz
120 S RIVERSIDE PLAZA
22ND FLOOR
CHICAGO, IL 60606
11/21/2017 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 ANUPY SINGLA GUPTA and SANDEEP GUPTA1
Appeal 2016-003012
Application 13/502,943
Technology Center 1700
Before TERRY J. OWENS, MONTE T. SQUIRE, and LILAN REN,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1—
19.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as Anupy Single Gupta (Appeal
Brief, filed September 15, 2015 (“App. Br.”), 2).
2 In this decision, we refer to the Final Office Action mailed May 15, 2015
(“Office Action,” cited as “Final Act.”), the Examiner’s Answer mailed
December 29, 2015 (“Ans.”), and the Reply Brief filed January 26, 2016
(“Reply Br.”).
Appeal 2016-003012
Application 13/502,943
CLAIMED SUBJECT MATTER
The claims are directed to a storage device, and more specifically, a
storage device to store cooking ingredients such as spices. Claim 1,
reproduced below (emphases added), is illustrative of the claimed subject
matter:
1. A storage apparatus for holding and providing access for
a variety of different cooking ingredients comprising:
an outer container;
an outer cover that fits over the outer container;
a plurality of storage containers that are positioned within
the outer container whereby each container has a top opening and
wherein at least some of the plurality of storage containers have
a top surface adjacent the top opening that have an identification
of the goods contained within written in braille and some of the
plurality of storage containers are color coded to identify
ingredients that work well in combination with each other, and
at least one of the storage containers having a partial cover
that extends across and covers only part of the top opening of the
container and defines at least one edge that extends across the
storage container top opening wherein the outer container cover
snuggly secures and seals each of the plurality of storage
containers to prevent the different cooking ingredients from
spilling or mixing together, wherein the outer container cover
needs to be removed to provide access to all individual storage
containers thereby eliminating any need to remove a cover or top
portion from each individual storage container and wherein once
the outer cover is placed over the outer container, the plurality of
storage containers are properly sealed to prevent light, dirt,
moisture or other foreign particles from entering into the storage
containers.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
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Appeal 2016-003012
Application 13/502,943
Holdsworth
Schmidt
Cilluffo
Kolacek
Weir
Klein
US 1,598,524
US 1,919,574
US 3,424,351
US 5,251,758
US 7,326,428 B2
US 2010/0072099 A1
Aug. 31, 1926
July 25, 1933
Jan. 28, 1969
Oct. 12, 1993
Feb. 5, 2008
Mar. 25,2010
Non-patent literature: Stainless Steel Masala Dabba Box,
https://web.archive.org (Oct. 29, 2014) (hereinafter “Masala”).
REJECTIONS
Claims 1—19 are rejected under pre-AIA 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the inventor or a joint inventor, or
for pre-AIA the applicant regards as the invention. Final Act. 2.
Claims 1—7, 9-16, 18, and 19 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Masala in view of Cilluffo, Weir,
Schmidt, Klein, and Kolacek. Ans. 3.
Claims 8 and 17 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Masala, in view of Cilluffo, Weir, Klein, Kolacek,
Schmidt, and Holdsworth. Final Act. 7.
OPINION
Upon consideration of the evidence and each of the respective
positions set forth in the record, we find that the preponderance of evidence
supports the Examiner’s findings and conclusions that the subject matter of
Appellants’ claims is unpatentable over the applied art. Accordingly, we
sustain each of the Examiner’s rejections on appeal for the reasons set forth
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Application 13/502,943
in the Final Office Action and in the Answer. We add the following for
emphasis.3
Indefiniteness
The Examiner rejects all claims for failing to comply with the
definiteness requirement under 35 U.S.C. § 112, second paragraph because
the recited claim term “storage containers [that] are color coded to identify
ingredients that work well in combination with each other” does not
reasonably apprise those skilled in the art of the scope of the invention when
read in light of the specification. Final Act. 2. The Examiner reasons that
“ingredients that work well in combination with each other” may be based
on an individual’s subjective and often varying standard and that the
specification does not provide any standard at all for ascertaining whether
certain ingredients are the ones “that work well in combination with each
other.” Ans. 8—9.
Appellants do not dispute the Examiner’s finding that the
specification lacks sufficient explanation as to how a skilled artisan might be
apprised of the scope of the invention but instead state that “a search of the
Internet using the phrase ‘cooking ingredients that work well together’
produces 107,000,000 results.” App. Br. 8. Appellants argue that the
abundance in the search result shows that “an organization providing the
claimed storage apparatus would have no difficulty identifying ingredients
that meet that need.” Reply Br. 2.
3 Appellants do not make separate arguments for claims 2—19. We address
claim 1 in order to resolve the disputes on this appeal. 37 C.F.R.
§ 41.37(c)(l)(vii).
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Application 13/502,943
“[AJmbiguity in claim scope is at the heart of the definiteness
requirement of 35 U.S.C. § 112,12.” Amgen, Inc. v. Hoechst Marion
Roussel, Inc., 314 F.3d 1313, 1342 (Fed. Cir. 2003). “The test for
definiteness is whether one skilled in the art would understand the bounds of
the claim when read in light of the specification.” Miles Laboratories, Inc.
v. Shandon Inc., 997 F.2d 870, 875 (Fed. Cir. 1993).
In this case, Appellants do not refer to the specification to show that,
“when read in light of the specification,” a skilled artisan would understand
the bounds of the claim. App. Br. 8; Reply Br. 2. We are, therefore, not
persuaded that the Examiner erred in rejecting the claims under 35 U.S.C.
§112, second paragraph.
Obviousness
Dispositive of the obviousness rejection over Masala, Cilluffo, Weir,
Schmidt, Klein, and Kolacek is whether the combined prior art teaches or
suggests: (1) an
outer container cover [that] snuggly secures and seals each of
the plurality of storage containers to prevent the different
cooking ingredients from spilling or mixing together, wherein
the outer container cover needs to be removed to provide access
to all individual storage containers thereby eliminating any
need to remove a cover or top portion from each individual
storage container and wherein once the outer cover is placed
over the outer container, the plurality of storage containers are
properly sealed to prevent light, dirt, moisture or other foreign
particles from entering into the storage containers,
(2) “storage containers [that] have a top surface adjacent the top opening that
have an identification of the goods contained within written in braille,” and
(3) “storage containers [that] are color coded to identify ingredients that
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Application 13/502,943
work well in combination with each other.” Compare App. Br. 9—11 with
Final Act. 3—6.
With regard to an “outer container cover [that] snuggly secures and
seals each of the plurality of storage containers to prevent the different
cooking ingredients from spilling or mixing together ...” as recited in claim
1, Appellants argue that the Examiner “is engaging in mere speculation”
“without offering any evidence that the uses or capabilities of the lids of
Schmidt.” App. Br. 10, 11. Appellants, however, do not address, much less
dispute the Examiner’s finding that Weir teaches a smaller inner container
and a larger outer container sealed and secured. Compare App. Br. 10-11 &
Reply Br. 4—5 with Final Act. 4 (citing various portions of Weir) & Ans. 11.
Appellants do not disagree with the Examiner’s rationale to combine Weir
with the remaining references. Compare App. Br. 10—11 & Reply Br. 4—5
with Final Act. 4—5 & Ans. 10—11. No error has been identified in this
aspect of the obviousness finding.
Appellants do not dispute that Kolacek teaches a food container
having “a strip of material containing indications, such as in braille, which
indications can state the . . . contents of the container.” Compare App. Br.
11—14 (acknowledging that “Kolacek merely indicates a level of hotness”) &
Reply Br. 3—5 with Final Act. 6 (citing Kolacek Figure 1 at #163) & Ans. 9—
12; see also Kolacek 2:43—47. Appellants also do not dispute that Klein
teaches a container having a “color coded indicia” “predetermined with
respect to flavor or taste of nut or food product to be stored in the container.”
Compare App. Br. 11—14 & Reply Br. 4 (citing Klein | 8 and
acknowledging that “Klein is merely directed to the use of a ‘color code . . .
to allow the user to identify and distinguish the contents of varying
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Application 13/502,943
characteristics’”) with Final Act. 6 (citing Klein Abstract, Figure 5 at #74,
Figure 6 at #92,129) & Ans. 9-12; see also Klein 127.
Appellants instead argue, without specificity, that the prior art does
not disclose structures that “allow[] the blind to use the claimed container
based upon the braille projections extending upwards from a surface of each
of the containers and ... a novice to use the claimed container without
extensive experience in cooking.” App. Br. 9. “[Ajpparatus claims cover
what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch
& Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). Appellants’ argument,
directed to how a recited device may be used does not identify any structure
that is not taught or suggested by the prior art and does not identify
reversible error in the Examiner’s findings.
Appellants lastly argue that a prima facie case of obviousness has not
been established because “none of the cited references are directed to the
problem solved by the claimed invention.” App. Br. 14. Appellants argue
that the prior art references do not recognize the problems solved by the
recited apparatus. Id.
Obviousness does not require prior art references to recognize or even
suggest the problem that applicant attempted to solve. Prior art does not
have to teach combining references for the reason that Applicant combined
them. In re Dillon, 919 F.2d 688, 692—93 (Fed. Cir. 1990) (en banc)
(emphases in original). In this case, the Examiner provides a detailed
“articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness” in both the rejection (Final Act. 4—6) and the
Examiner’s Answer (Ans. 12—13). See KSRInt’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). Appellants do not address the Examiner’s rationale to
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Application 13/502,943
combine. See, e.g., App. Br. 12—14; Reply Br. 3—5. Other than stating a
general disagreement, Appellants do not identify factual evidence in support
of their disagreement with the Examiner’s rationale. Appellants have not
adequately explained or identified reversible error in the Examiner’s
§ 103(a) rejections. See 37 C.F.R. § 41.37(c)(1) (iv) (2012); see also In re
Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
DECISION
The Examiner’s rejection of claims 1—19 under pre-AIA 35 U.S.C.
112, second paragraph is affirmed.
The Examiner’s rejections of claims 1—19 under pre-AIA 35 U.S.C.
103 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
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