11071827 (B.P.A.I. Aug. 17, 2010)

Ex Parte Holms et al

Board of Patent Appeals and InterferencesAug 17, 2010

11071827 (B.P.A.I. Aug. 17, 2010)

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. 11/071,827 03/03/2005 Debra A. Holms BAB-102US 5035 24314 7590 08/18/2010 JANSSON SHUPE & MUNGER LTD. 245 MAIN STREET RACINE, WI 53403 EXAMINER VALENTI, ANDREA M ART UNIT PAPER NUMBER 3643 MAIL DATE DELIVERY MODE 08/18/2010 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte DEBRA A. HOLMS and RORY J. HOLMS ____________________ Appeal 2009-009135 Application 11/071,827 Technology Center 3600 ____________________ Before LINDA E. HORNER, JOHN C. KERINS, and FRED A. SILVERBERG, Administrative Patent Judges. SILVERBERG, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-009135 Application 11/071,827 2 STATEMENT OF THE CASE Debra A. Holms and Rory J. Holms (Appellants) seek our review under 35 U.S.C. § 134 of the final rejection of claims 1-7, 10, 11 and 17-24. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Appellants’ claimed invention is directed to a dual-purpose cap for a jar-aquarium permitting emptying and refilling of the aquarium with the cap on (Spec. 1: 24-25). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A dual-purpose jar-aquarium comprising: • a readily-portable container containing a fish and water enriched by the fish with plant-enhancing nutrients that are products of the fish's metabolism and their bacterial breakdown; and • a dual-purpose cap removably secured to the container such that it remains in place while the jar-aquarium is inverted, the cap including a single topwall with an edge, the topwall having a non-apertured major topwall portion and a minor topwall portion with a plurality of apertures therethrough, including a sole unobstructed water-ingress aperture sized to accept passage of a free unbroken stream of clean water therethrough for cap-on filling of the jar-aquarium and a grouping of water-egress apertures laterally spaced from the water-ingress aperture, each water-egress aperture smaller than the water-ingress aperture to facilitate controlled cap-on out- Appeal 2009-009135 Application 11/071,827 3 pouring of the enriched water, whereby jar-aquarium water may be changed without removing the cap, at least one of the apertures being continuously open. THE REJECTIONS The following rejections by the Examiner are before us for review: 1. Claims 1, 2 and 10 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Collecting Live Specimens (New Jersey Scuba Diver-Marine Biology-Collecting Live Specimens, published Feb. 13, 2005) in view of Stephan (US D400,397, issued Nov. 3, 1998). 2. Claims 3-6 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Collecting Live Specimens in view of Stephan, and further in view of Mendenhall (US 5,894,952, issued Apr. 20, 1999). 3. Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Collecting Live Specimens in view of Stephan, and further in view of Pillers (US D441,288 S, issued May 1, 2001). 4. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Collecting Live Specimens in view of Stephan, and further in view of Hollinger (US D408,226, issued Apr. 20, 1999). 5. Claim 11 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Collecting Live Specimens in view of Stephan, and further in view of Wang (US D490,940 S, issued Jun. 1, 2004). 6. Claims 17-212 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Collecting Live Specimens in view of Stephan, and further in view of Terry (US 6,327,997 B1, issued Dec. 11, 2001). 2 Claim 21 is considered a part of this appeal. While the statement of the Grounds of Rejection section of the Examiner’s Answer (Ans. 3, 8) does not Appeal 2009-009135 Application 11/071,827 4 7. Claims 22-24 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Collecting Live Specimens in view of Stephan and Terry, and further in view of Goldman (US D279,317, issued Jun. 18, 1985). ISSUE The issue before us is whether the Examiner erred in concluding that the combined teachings of Collecting Live Specimens and Stephan would have led a person having ordinary skill in the art to “a sole unobstructed water-ingress aperture,” as called for in independent claim 1 (App. Br. 6). ANALYSIS Rejection of claims 1, 2 and 10 over Collecting Live Specimens and Stephan Appellants contend that combined teachings of Collecting Live Specimens and Stephan do not describe “a sole unobstructed water-ingress aperture,” as called for in independent claim 1 (App. Br. 6). The Examiner found that Collecting Live Specimens is silent as to including a sole unobstructed water-ingress aperture (Ans. 4). Appellants state that the Examiner was correct in noting that Collecting Live Specimens does not describe “a sole unobstructed water- ingress aperture,” as called for in independent claim 1 (App. Br. 6). The Examiner found that Stephan describes a sole unobstructed water-ingress aperture, wherein the water-ingress aperture contains mesh (Ans. 4, 11). include claim 21, the body of the rejection of claims 17-20 (Ans. 9) discusses claim 21. Appeal 2009-009135 Application 11/071,827 5 The Examiner concluded that “the open/unobstructed apertures of Collecting Live Specimens as modified by the configuration and relative proportions taught by Stephan are sized to accept passage of a free unbroken stream of water.” (Emphasis original) (Ans. 11-12). Appellants disagree with the Examiner, and contend that Stephan does not describe an unobstructed water-ingress aperture (App. Br. 8). Claim 1, the only independent claim, calls for, inter alia, “a sole unobstructed water-ingress aperture.” Stephan is a design patent, which includes no description of the design in the specification beyond a brief description of the drawings. Stephan describes an ornamental design of a container with a strainer lid, wherein the strainer lid includes a strainer aperture (fig. 1). We find that Stephan’s strainer aperture is an aperture covered by mesh. The patent specification does not assign or suggest a particular definition to the term “unobstructed.” Therefore, in determining the ordinary and customary meaning of the claim term “unobstructed” as viewed by a person of ordinary skill in the art, it is appropriate to consult a general dictionary definition of the word “unobstructed” for guidance. Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010). The ordinary meaning of the word “unobstructed” includes “Free from obstructions; clear.”3 3 THE AMERICAN HERITAGE® DICTIONARY OF THE ENGLISH LANGUAGE (4th ed. 2007) http://www.credoreference.com/entry/hmdictenglang/unobstructed (last visited June 22, 2010). Appeal 2009-009135 Application 11/071,827 6 We find that an aperture covered by mesh is not free from obstructions and clear. Therefore, we find that Stephan’s mesh covered aperture is not an unobstructed aperture. Accordingly, we find that the Examiner’s conclusion of obviousness is based on flawed findings. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). (“[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.”). Therefore, we are constrained to reverse the rejection of independent claim 1. Likewise, we are constrained to reverse the rejection of dependent claims 2 and 10. Rejection of Claims 3-7, 11, 17-24 The Examiner has not relied on Mendenhall, Pillers, Hollinger, Wang, Terry or Goldman for any teaching that would remedy the deficiency in the combined teachings of Collecting Live Specimens in view of Stephan (Ans. 5-10, 12-13). Thus, we are constrained to reverse the rejection of dependent claims 3-7, 11, 17-24. CONCLUSION The Examiner has erred in concluding that the combined teachings of Collecting Live Specimens and Stephan would have led a person having ordinary skill in the art to “a sole unobstructed water-ingress aperture,” as called for in independent claim 1. Appeal 2009-009135 Application 11/071,827 7 DECISION The decision of the Examiner to reject claims 1-7, 10, 11 and 17-24 is reversed. REVERSED Klh JANSSON SHUPE & MUNGER LTD. 245 MAIN STREET RACINE, WI 53403