Ex Parte Loibl et al

Patent Trial and Appeal Board

May 25, 2016

12044260 (P.T.A.B. May. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/044,260 03/07/2008
75620 7590 05/26/2016
Kane Kessler P.C.
1350 A venue of the Americas
26th Floor
New York, NY 10019
FIRST NAMED INVENTOR
Gregory H. Loibl
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.
13113.00002 6912
EXAMINER
DUKE, EMMANUEL E
ART UNIT PAPER NUMBER
3744
MAILDATE DELIVERY MODE
05/26/2016 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 GREGORY H. LOIBL, GEORGE SIDEBOTHAM, and
MICHAEL B. GUTIERREZ
Appeal2014-004782
Application 12/044,260
Technology Center 3700
Before JOHN C. KERINS, STEFAN STAICOVICI, and LEE L. STEPINA,
Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Gregory H. Loibl et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner's final decision rejecting claims 1-8, 10, 11, 13-24,
33-39, and 41. We have jurisdiction over this appeal under 35 U.S.C.
§ 6(b ).
We REVERSE.
THE INVENTION
Appellants' invention relates to methods and devices for rapid cooling
of fluids in various containers.
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Application 12/044,260
Claims 1, 10, 1 7, and 19 are independent. Claims 1, 17, and 19 are
illustrative of the claimed invention and are reproduced below:
1. A method of deterring bacterial growth in food liquids by
rapidly cooling hot bulk food liquids from a temperature of
equal to or greater than 140°F, comprising the steps of:
placing a hot bulk food liquid having a viscosity and an
initial temperature equal to or greater than 140°F in a resealable
container having a size and an inherent void volume that traps
air in contact with the hot bulk food liquid;
placing the container in a substantially horizontal
orientation;
rotating the container substantially about its longitudinal
axis; and
spraying the surface of the container with a cooling
medium while the container is rotating,
wherein when a target temperature in the bulk food liquid
is reached, bacterial growth in the food liquid is deterred.
1 7. A method of deterring bacterial growth in food liquids by
rapidly cooling hot bulk food liquids from a temperature equal
to or greater than 140°F, comprising the steps of:
placing a hot bulk food liquid having a viscosity and a
temperature equal to or greater than 140°F in a resealable
container;
placing the container in a substantially horizontal
orientation;
rotating the container substantially about its longitudinal
axis; and
spraying the surface of the container with a cooling
medium while the container is rotating,
wherein said rotating step further includes varying the
speed of rotation of the container depending on the viscosity of
the hot bulk food liquid to be cooled.
19. A system of deterring bacterial growth in food liquids by
rapidly cooling hot bulk food liquids from a temperature equal
to or greater than 140°F, comprising:
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Application 12/044,260
a chilling station, comprising:
a reservoir for holding a cooling medium, said
reservoir including a reservoir outlet for removing excess of
said cooling medium;
a container bay disposed substantially above said
reservoir adapted to receive at least one container of hot bulk
food liquid having a viscosity and a temperature equal to or
greater than 140°F to be cooled, said container including a
substantially smooth cylindrical container housing and a
container top sealingly attachable to and removable from said
housing;
at least one rotator adapted to rotate said container
placed in said container bay substantially around said
container's longitudinal axis;
a spray jet outlet, disposed substantially above said
container bay and in fluid communication with said reservoir,
adapted to spray said container with said cooling medium while
said rotator is rotating said container; and
a fixed container tightening and loosening station having
an upward projection matingly engageable with a recess on a
bottom of said container adapted to substantially prevent said
container housing from moving when a user tightens or loosens
said container top on said container housing when said
container recess is fitted over said container tightening and
loosening station projection.
THE REJECTIONS 1
The Examiner has rejected:
(i) claims 1-8 under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA),
first paragraph, as failing to comply with the written description
requirement;
1 An objection to claims 2-8, 11, 13-16, 18, 20-24, 33-39, and 41 is
withdrawn by the Examiner in the Answer. Ans. 2 (mailed January 16,
2014).
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Application 12/044,260
(ii) claims 1-8 under 35 U.S.C. § l 12(a) or 35 U.S.C. § 112 (pre-
AIA), first paragraph, as failing to comply with the enablement requirement;
(iii) claims 1-8 under 35 U.S.C. § 112, second paragraph, as being
indefinite;
(iv) claims 1-8, 10, 17, and 18 under 35 U.S.C. § 103(a) as being
unpatentable over Loibl (US 2004/0112069 Al, pub. June 17, 2004,
hereinafter "Loibl '069"), West (US 4,304, 105, iss. Dec. 8, 1981 ), and
Baird-Smith (US 2002/0125249 Al, pub. Sept. 12, 2002);
(v) claims 11 and 13 under 35 U.S.C. § 103(a) as being unpatentable
over Loibl '069, West, Baird-Smith, and Langlois (US 2004/0178200 Al,
pub. Sept. 16, 2004);
(vi) claims 14 and 15 under 35 U.S.C. § 103(a) as being unpatentable
over Loibl '069, West, Baird-Smith, Langlois, and Lavin (US 2006/0021995
Al, pub. Feb. 2, 2006);
(vii) claim 16 under 35 U.S.C. § 103(a) as being unpatentable over
Loibl '069, West, Baird-Smith, and Vnuk (US 2,744,655, iss. May 8, 1956);
(viii) claims 19, 20, 23, 24, and 33 under 35 U.S.C. § 103(a) as being
unpatentable over Loibl (US 5,505,054, iss. Apr. 9, 1996, hereinafter "Loibl
'054"), West, Baird-Smith, and Lavin;
(ix) claims 21and22 under 35 U.S.C. § 103(a) as being unpatentable
over Loibl '054, West, Baird-Smith, Lavin, and Conde Hinojosa (US
2006/0185372 Al, pub. Aug. 24, 2006);
(x) claims 34--37 under 35 U.S.C. § 103(a) as being unpatentable over
Loibl '054, West, Baird-Smith, Lavin, and Loibl '069; and
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Application 12/044,260
(xi) claims 38, 39, and 41 under 35 U.S.C. § 103(a) as being
unpatentable over Loibl '054, West, Baird-Smith, Lavin, and Long
(US 3,283,523, iss. Nov. 8, 1966).
ANALYSIS
Claims 1--8--112, 1st __ Written Description
The Examiner finds that the phrase "when a target temperature in the
bulk food liquid is reached, bacterial growth in the food liquid is deterred,"
constitutes new matter. Final Act. 4. In the Answer, the Examiner states
that although the Specification discloses that 40°F is a safe temperature to
store the container in the refrigerator, there is no disclosure of bacterial
growth in the food liquid being deterred at 40°F. See Ans. 23.
Appellants assert that the Specification discloses that "it is important
to cool down hot bulk food liquids, i.e., to deter bacteria from growing in the
food liquid and rendering it unsafe to consume,'' and that "the specification
repeatedly teaches lowering the food liquid to a safe temperature for storage,
i.e., the target temperature," and also that "the specification is replete with
teachings of the safe temperature being about 40°F." Br. 15., citing Spec. 2,
11. 7 and 12; 3, 11. 15-20; 9; 10; 11; and 20, 11. 3-5.
To satisfy the written description requirement, the Specification must
describe the claimed invention in sufficient detail that one skilled in the art
can reasonably conclude that the inventor had possession of the claimed
invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562---63 (Fed. Cir.
1991 ). Here, the Specification discloses that bacteria "grows extremely
rapidly in the temperature range between 140° and 41°F, often doubling
every 20 minutes in this temperature range." Spec. 1-2. The Specification
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also discloses that once a food liquid has been cooled past the danger zone to
about 40°F, it is safe for storage in a refrigerator. See id. at 20. Based on
this disclosure, one of ordinary skill in the art would understand that there is
a danger zone or range where bacteria grows rapidly, and a safe zone, where
it does not. One of ordinary skill in the art would further reasonably infer
that bacterial growth is slowed and deterred in the safe zone when the
temperature of the food is at about 40°F, because if bacteria were still
growing unabated, it would not be safe. Moreover, because Appellants
repeatedly disclose that "about 40°F" is a safe temperature and is a suitable
temperature for cold storage, one of ordinary skill in the art would
reasonably conclude that "about 40 °F" is the claimed target temperature.
As such, one of ordinary skill in the art would reasonably conclude that
Appellants had possession of the claim limitation reciting that, "when a
target temperature in the bulk food liquid is reached, bacterial growth in the
food liquid is deterred.''
Therefore, the rejection of claims 1-8 under 35 U.S.C. § 112(a) or
35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement is not sustained.
Claims 1--8--112, lst __ Enablement
The Examiner finds that the Specification "does not reasonably
provide enablement for bacterial growth in the food liquid being deterred
when the bulk food liquid temperature reaches a target temperature." Final
Act. 4. The Examiner states that the target temperature is not defined nor is
the criticality of such a temperature disclosed or described in the instant
Specification. Id. The Examiner thus concludes that one skilled in the art
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would not know how to make and/or use the full scope of the claimed
invention without undue experimentation. Id.
Appellants argue that there is no "undue experimentation, or any
experimentation at all, to make or use the claimed invention; one of ordinary
skill in the art need only tum to the above-mentioned portions of the
specification and readily grasp the target temperature." Br. 16.
As discussed above, because Appellants repeatedly disclose that
"about 40°F" is a safe temperature and is a suitable temperature for cold
storage, one of ordinary skill in the art would reasonably conclude that
"about 40 °F" is the claimed target temperature. Moreover, because one of
ordinary skill in the art would reasonably conclude that bacterial growth is
slowed and deterred in the safe zone when the temperature of the food is at
about 40 °F, the Examiner has not established that undue experimentation
would be required to determine whether bacterial growth in the food liquid
is deterred.
Therefore, the rejection of claims 1-8 under 35 U.S.C. § 112(a) or
35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
enablement requirement is not sustained.
Claims 1-8-112, 2nd __ Jndefiniteness
The Examiner finds that "[i]t is unclear what target temperature would
deter bacterial growth in the bulk food liquid." Final Act. 5.
Appellants assert that "one of ordinary skill in the art need only tum
to the above-mentioned portions of the specification and readily grasp the
target temperature." Br. 16.
If the scope of a claim would be reasonably ascertainable by those
skilled in the art, when read in light of the Specification, then the claim is
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not indefinite. See Energizer Holdings Inc. v. Int 'l Trade Comm 'n, 435 F.3d
1366 (Fed. Cir. 2006. Appellants disclose throughout the Specification that
"about 40°F" is a safe temperature and is a suitable temperature for cold
storage, and as such, one of ordinary skill in the art would reasonably
conclude that "about 40 °F" is the claimed target temperature. By the same
token, one of ordinary skill would reasonably ascertain that a target
temperature of about 40°F would deter bacterial growth in the bulk food
liquid. As such, we are persuaded by Appellants' arguments to the effect
that, when read in light of the Specification, persons of ordinary skill in the
art would understand what target temperature would deter bacterial growth
in the bulk food liquid.
The rejection of claims 1-8 under 35 U.S.C. § 112, second paragraph,
as being indefinite, is not sustained.
Claims 1--8, 10, 17, and 18--0bviousness--Loibl '069/West/Baird-Smith
Claims 1--8 and 10
Claim 1 recites, in part, placing a hot bulk food liquid having a
viscosity and an initial temperature equal to or greater than 140°F in a
resealable container having a size and an inherent void volume that traps air
in contact with the hot bulk food liquid. Independent claim 10 recites, in
part, a top sealingly attachable to and removable from the housing, the top
including an inherent void volume, and that the void volume of the top traps
air in contact with the hot bulk food liquid inside said container even if the
housing is completely filled prior to attachment of the top.
The Examiner relies on Loibl '069 as disclosing a container having a
size and "an inherent void volume 12b that traps air in contact with the hot
bulk food liquid." Final Act. 7, citing Loibl '069 i-f 51; Fig. lb. In the
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Answer, the Examiner states that the combination of Loibl '069 and
Baird-Smith suggests a container with an inherent void space that traps air
above the surface of content of the container because Baird-Smith teaches
"reclosing the open end of a resealable container (10) with a cap (12) having
the inherent void volume (25) that traps air in contact with the hot bulk food
liquid," in order to "extend[] the shelf life of the food product after opening
the container." Ans. 26, citing Baird-Smith i-fi-153 and 60; Figs. 1 and 2.
Appellants assert that Loibl '069 does not disclose a "container having
an inherent void volume physically built into the container top." Br. 21.
Appellants point out that "[i]t is not possible to overfill the inventive
container; air will always be trapped inside in direct contact with the
contents." Id. Appellants thus argue that the claimed container necessarily
traps air and prevents the sealed container from being completely full, which
"is a structural limitation neither taught nor suggested by Loibl '054 or
'069.'' Id. at 22. Appellants also argue that Baird-Smith has nothing to do
with deliberately trapping air in contact with the contents of the container
via an inherent void volume, because Baird-Smith's membrane 11 is
interposed between gap 25 and the contents of the container. Id. at 23-24.
Appellants assert that the purpose of the gap in Baird-Smith is to enable
membrane 11 to stretch during the cooking of the food inside can 10, i.e., as
expansion occurs. Id. at 24, citing Baird-Smith i153. Appellants argue that,
moreover, the Examiner's reliance on paragraph 60 of Baird-Smith is
misplaced, because extending the shelf life of the products after opening the
can "is not brought about by any inherent void volume" and rather, is
"because a good seal is made between cap 12 and can 10 (specifically,
annular member 24 engages either flange 18 or an annular portion of
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membrane 11 remaining adhered thereto, 'to provide a short to medium term
resealing facility.'" Id. at 24, citing Baird-Smith i-f 60.
Appellants have the better argument, because the claims require an
inherent void volume, and also require that the inherent void volume traps
air in contact with the hot bulk food liquid. We agree with Appellants that
the recitation of an "inherent void volume" has structural connotations. The
Examiner does not provide an adequate technical reason why Loibl '069's
void volume would necessarily occur, in that the container illustrated is
generic in nature and, as illustrated, appears to be capable of being
completely filled and lacking a void volume. Although the Examiner also
relies on Baird-Smith as having an inherent void volume, the void volume in
Baird-Smith does not trap air in contact with the hot bulk food liquid,
because Baird-Smith's membrane 11 is between gap 25 and the hot bulk
food liquid. See Baird-Smith i-fi-1 43 and 55; Fig. 1; see also Br. 24. The
entire disclosure of Baird-Smith is directed to the use of membrane 11 and
the advantages of using membrane 11 when heating Baird-Smith's food
product, and the Examiner does not adequately explain what the proposed
modification to Loibl '069 would be, nor why such modification would
exclude membrane 11, such that the void volume would trap air in contact
with the hot bulk food liquid. As such, the Examiner has failed to establish
prima facie obviousness of claims 1 and 10.
The rejection of claims 1-8 and 10 is therefore not sustained.
Claims 17 and 18
Independent claim 1 7 recites, in part, that a claimed rotating step
further includes varying the speed of rotation of the container depending on
the viscosity of the hot bulk food liquid to be cooled.
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Application 12/044,260
The Examiner relies on paragraph 34 of Loibl '069 for this feature.
See Final Act. 11.
Appellants argue that Loibl '069 does not mention viscosity in
paragraph 34 or anywhere. Br. 27. Appellants argue that rather, Loibl '069
relates to a preprogrammed device with a set number of timing sequences
and/or rotational speeds that might vary based on the type of container, type
of liquid/beverage, and desired temperature of liquid. Id. Appellants assert
that "the device may be rotated or not rotated (to avoid fizzing over of
carbonated contents) or used to chill different beverages having the same
viscosity (beer, wine, soda)." Id. Appellants thus argue that the Examiner's
reliance on Loibl '069 "is based solely on a hindsight reconstruction of the
invention using Appellants' teachings as a blueprint, which is expressly
forbidden." Id.
The Examiner's underlying finding that paragraph 34 of Loibl '069
discloses varying the speed of rotation of the container based on a differing
viscosity of the hot bulk food liquid is not supported by a preponderance of
the evidence. The Examiner has not adequately explained how Loibl '069
could be so interpreted, given that Loibl '069 focuses on the type of
container, namely, bottle or can, made of glass, metal, or plastic and the
shape and volume of such a container, and not the contents of the container,
with the exception of whether or not it is carbonated. See Loi bl '069 i-fi-f 14,
20, 65, and 66. Although we appreciate that Loibl '069 contemplates
processing containers holding different beverages, the Examiner has not
established that the different beverages to be cooled with the Loibl '069
device, namely, beer, wine, and champagne, have different viscosities, and
in particular, viscosities that are so different so as to require a change in
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rotational speed for cooling. The Examiner has thus failed to establish prima
facie obviousness of claim 17.
The rejection of claims 17 and 18 is not sustained.
Claims 11 and 13--0bviousness--Loibl '069/West/Baird-Smith/Langlois
The Examiner does not rely on Langlois in any manner that remedies
the deficiencies in the rejection of claim 10 based on the teachings of Loibl
'069, West and Baird-Smith. For the same reasons, the rejection of claims
11 and 13 is not sustained.
Claims 14 and 15--0bviousness--Loibl '069/West/Baird-Smith/
Langlois/Lavin
The Examiner does not rely on Langlois or Lavin in any manner that
remedies the deficiencies in the rejection of claim 10 based on Loibl '069,
West and Baird-Smith. Because claims 14 and 15 depend from claim 10, the
rejection of claims 14 and 15 is also not sustained.
Claim 16--0bviousness-- Loibl '069/West/Baird-Smith/Vnuk
The Examiner does not rely on Vnuk in any manner that remedies the
deficiencies in the rejection of claim 10 based on Loibl '069, West and
Baird-Smith. Accordingly, the rejection of claim 16 is not sustained.
Claims 19, 20, 23, 24, and 33--0bviousness--Loibl '054/West/Baird-
Smith/Lavin
Independent claim 19 recites, in part, a fixed container tightening and
loosening station having an upward projection matingly engageable with a
recess on a bottom of said container.
The Examiner relies on Lavin for this limitation and states that
because Lavin's "lid 30 is affixed to 20," this "constitutes a fixed container
tightening and loosening station." Final Act. 17, citing Lavin i-f 43; Fig. 2.
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In the Answer, the Examiner additionally states that "the general concept of
mechanically affixing a base object or manually holding down the base
object to enable counter twisting of an attached object falls within the realm
of common knowledge as an obvious mechanical expedient." Ans. 29.
Appellants argue that claim 19 requires that "the container tightening
and loosening station is fixed, i.e., immovable," and by contrast, Lavin's
element 30 "is only a container lid, it is not immovably fixed to another
structure." Br. 31.
Lavin discloses that element 30 is a screw-type lid for body 20. Lavin
i-f 41. Although we appreciate that Lavin's lid 30 has ridge 32 that could be
used with groove 28 on a second housing (body), Lavin does not disclose
that the grooves and ridges are used for tightening/loosening and rather
discloses that they are designed to be interfitted for storage purposes. See
Lavin i-f 43. Moreover, Lavin does not disclose a lid that is fixed in a
specific position, and the Examiner has not adequately explained what
modification to the lid would be made that would result in a fixed container
tightening and loosening station, nor how this would have been seen as
being an obvious modification to Lavin.
The rejection of claim 19, and of claims 20, 23, 24, and 33 depending
therefrom, is not sustained.
Claims 21 and 22--0bviousness--Loibl '054/West/Baird-Smith/Lavin/Conde
Hinojosa
The Examiner does not rely on Conde Hinojosa in any manner that
remedies the deficiencies in the rejection of claim 19 based on Loibl '054,
West, Baird-Smith, and Lavin. For the same reasons, the rejection of claims
21 and 22 is not sustained.
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Claims 34-37--0bviousness--Loibl '054/West/Baird-Smith/Lavin/Loibl '069
The Examiner does not rely on Loibl '069 in any manner that
remedies the deficiencies in the rejection based on Loibl '054, West,
Baird-Smith, and Lavin. Thus, the rejection of claims 34--37 is not
sustained.
Claims 38, 39, and 41--0bviousness--Loibl '054/West/Baird-
Smith/Lavin/Long
The Examiner does not rely on Long in any manner that remedies the
deficiencies in the above rejection based on Loibl '054, West, Baird-Smith,
and Lavin. Therefore, the rejection of claims 38, 39, and 41 is not sustained.
DECISION
The rejection of claims 1-8 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement is reversed.
The rejection of claims 1-8 under 35 U.S.C. § 112(a) or 35 U.S.C.
§ 112 (pre-AIA), first paragraph, as failing to comply with the enablement
requirement is reversed.
The rejection of claims 1-8 under 35 U.S.C. § 112, second paragraph,
as being indefinite is reversed.
The rejection of claims 1-8, 10, 17, and 18 under 35 U.S.C. § 103(a)
as being unpatentable Loibl '069, West, and Baird-Smith is reversed.
The rejection of claims 11 and 13 under 35 U.S.C. § 103(a) as being
unpatentable over Loibl '069, West, Baird-Smith, and Langlois is reversed.
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The rejection of claims 14 and 15 under 35 U.S.C. § 103(a) as being
unpatentable over Loibl '069, West, Baird-Smith, Langlois, and Lavin is
reversed.
The rejection of claim 16 under 35 U.S.C. § 103(a) as being
unpatentable over Loibl '069, West, Baird-Smith, and Vnuk is reversed.
The rejection of claims 19, 20, 23, 24, and 33 under 35 U.S.C.
§ 103(a) as being unpatentable over Loibl '054, West, Baird-Smith, and
Lavin is reversed.
The rejection of claims 21and 22 under 35 U.S.C. § 103(a) as being
unpatentable over Loibl '054, West, Baird-Smith, Lavin, and Conde
Hinojosa is reversed.
The rejection of claims 34--37 under 35 U.S.C. § 103(a) as being
unpatentable over Loibl '054, West, Baird-Smith, Lavin, and Loibl '069 is
reversed.
The rejection of claims 38, 39, and 41under35 U.S.C. § 103(a) as
being unpatentable over Loibl '054, West, Baird-Smith, Lavin, and Long is
reversed.
REVERSED
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