Ex parte KIRKLAND

Board of Patent Appeals and Interferences

Aug 25, 1998

08173560 (B.P.A.I. Aug. 25, 1998)

Application for patent filed December 22, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte MARK R. KIRKLAND
_____________
Appeal No. 97-0172
Application 08/173,5601
______________
ON BRIEF
_______________
Before CALVERT, COHEN and ABRAMS, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 15
to 17 and 21 to 24. The other claims in the application, 1 to
14 and 18 to 20, stand withdrawn from consideration under 37
CFR § 1.142(b) as being directed to a nonelected invention.
Appeal No. 97-0172
Application 08/173,560
Rejections (2) and (3) are new grounds of rejection first raised in the2
examiner's answer.
2
The claims on appeal are drawn to a method of vending
non-beverage foods and non-comestible items from vending
machines configured to vend canned drinks. The claims are
reproduced in Appendix A of appellant's reply brief (Paper No.
20, filed June 28, 1996).
The references over which the claims on appeal stand
rejected are:
Mullin 3,043,474 Jul. 10, 1962
Rockola 5,080,256 Jan. 14, 1992
Sampson 5,199,598 Apr. 06, 1993
The claims on appeal stand rejected on the following
grounds:2
(1) Claims 15 to 17 and 21 to 24, anticipated by
Rockola, under 35 USC § 102(b);
(2) Claims 15 to 17, 21 and 24, unpatentable over Rockola
in view of Mullin, under 35 USC § 103;
(3) Claims 15 to 17, 22 and 23, unpatentable over Rockola
in view of Sampson, under 35 USC § 103.
Rejection (1)
Appeal No. 97-0172
Application 08/173,560
3
Rockola discloses a typical can beverage vending machine
10, having improvements in the can delivery mechanism.
Although Rockola does not disclose that the cans vended by the
machine are "filled with a material other than a liquid
beverage", as recited in claim 15, the examiner asserts that
the claims are anticipated because "the contents in this
instance have no bearing on the manner in which the container
is being dispensed from the machine" (final rejection, page
3), citing Ex parte Pfeiffer, 135 USPQ 31 (Bd. Apps 1961), and
Ex parte Kangas, 125 USPQ 419 (Bd. Apps 1960).
We do not consider this rejection to be well taken. In
order to anticipate a claim, a prior art reference must
disclose every limitation of the claimed invention, either
explicitly or inherently. In re Schreiber, 128 F.3d 1473,
1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). In the present
case, Rockola does not disclose, expressly or inherently, a
container filled with a material other than a liquid beverage,
and therefore does disclose the steps recited in claim 15 of
"providing at least one container . . . filled with a material
other than a liquid beverage", "providing a vending machine .
. . being loaded with said at least one container containing a
Appeal No. 97-0172
Application 08/173,560
4
material other than a liquid beverage", and "vending
selectively from said vending
machine said at least one container containing other than a
liquid beverage."
We do not regard the Pfeiffer and Kangas decisions as
authority for disregarding the recitation in these steps that
the container is filled with other than a liquid beverage.
Neither In re Moreton, 288 F.2d 708, 129 USPQ 227 (CCPA 1961)
nor In re Fong, 288 F.2d 932, 129 USPQ 264 (CCPA 1961), both
cited in Pfeiffer, 135 USPQ at 33, supports such a position;
rather, they hold that, as stated in Moreton, 288 F.2d at 709,
129 USPQ at 228:
since one cannot claim a new use per se, because it
is not among the categories of patentable inventions
specified in 35 U.S.C. 101, it is claimed as a
method, as permitted by 35 U.S.C. 100(b).
In the present case, appellant's claimed invention is, in
effect, a new use for known apparatus, i.e., using a canned
liquid beverage vending machine to vend cans of non-liquid
beverage materials, and has been properly claimed as a method.
We do not consider that in this situation there is any
justification for not following the rule that "all limitations
Appeal No. 97-0172
Application 08/173,560
5
must be considered and that it is error to ignore specific
limitations distinguish-
ing over the references." In re Boe, 505 F.2d 1297, 1299, 184
USPQ 38, 40 (CCPA 1974). When all claimed limitations are
considered, Rockola clearly does not anticipate the appealed
claims.
Accordingly, rejection (1) will not be sustained.
Rejections (2) and (3)
The bases of these rejections are set forth on pages 5 to
7 of the examiner's answer. After fully considering the
record in light of the arguments in the appellant's brief and
reply brief, and in the examiner's answer and supplemental
answer, we conclude that the rejections will not be sustained.
Appellant states at page 3 of the reply brief that he
"does not contest the fact that products or material other
than liquid beverages are placed in cans which are dispensable
from a vending machine". However, this is not determinative
of the question of obviousness of the claimed subject matter,
as the examiner seems to assume. What is lacking in the
applied prior art is any teaching or suggestion of filling a
container, which is sized to contain a liquid beverage and
Appeal No. 97-0172
Application 08/173,560
6
dispensable from a canned drink vending machine, with
something other than a liquid beverage.
Neither Mullin nor Sampson contains any such teaching, nor
does
Rockola suggest that the disclosed beverage cans might contain
anything other than beverages. Absent any such teaching or
suggestion, a prima facie case of obviousness has not been
established.
Rejection Under 37 CFR § 1.196(b)
Pursuant to 37 CFR § 1.196(b), claims 23 and 24 are
rejected for failing to comply with 35 USC § 112, second
paragraph. These claims are indefinite in that while parent
claim 15 recites "at least one container", claims 23 and 24
each recite "said containers". This recitation of plural
containers thus has no antecedent basis. Also, it is not
clear whether the term "is loaded" is intended to be a method
step (i.e., "loading") or simply a description of the vending
machine's contents.
Conclusion
The examiner's decision to reject claims 15 to 17 and 21
to 24 is reversed.
Appeal No. 97-0172
Application 08/173,560
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Claims 23 and 24 are rejected pursuant to 37 CFR §
1.196(b).
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR § 1.196(b) provides that, “A new ground of rejection
shall not be considered final for purposes of judicial
review.”
37 CFR § 1.196(b) also provides that 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 of rejection to avoid termination of proceedings
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
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Application 08/173,560
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connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
NEAL E. ABRAMS )
Administrative Patent Judge )
Appeal No. 97-0172
Application 08/173,560
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Julie K. Morriss
Trask, Britt & Rossa
P.O. Box 2550
Salt Lake City, UT 84110