Ex Parte PALMER et al

Patent Trials and Appeals Board

May 28, 2019

14388273 - (D) (P.T.A.B. May. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/388,273 09/26/2014 Jason PALMER
24737 7590 05/30/2019
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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.
2012P00366WOUS 2813
EXAMINER
MAI,TRIM
ART UNIT PAPER NUMBER
3733
NOTIFICATION DATE DELIVERY MODE
05/30/2019 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):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON PALMER,
BART-JAN ZWART, CHRISTOPHER JOHN HUFF, and
JACOB BRINKERT
Appeal2018-008172
Application 14/388,273
Technology Center 3700
Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
LISA M. GUIJT, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant 1 appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection2 of claims 1, 2, 5, 6, 8, 10, 11, and 13-15. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Koninklijke Philips N.V. ("Appellant") is the applicant as provided under
37 C.F.R. § 1.46 and is identified as the real party in interest. Appeal Br. 3.
2 Appeal is taken from the Final Office Action dated Oct. 24, 2017.
Appeal2018-008172
Application 14/388,273
STATEMENT OF THE CASE
Claim 1 is the sole independent claim on appeal. Claim 1, reproduced
below with disputed limitations italicized for emphasis, is exemplary of the
subject matter on appeal.
1. A teat for an infant feeding bottle, said teat comprising a
resilient wall defining a central nipple and an areola that extend
around a central axis, said teat being elastically transformable
between a distended state in which the nipple defines a global
maximum and at least one depressed state that is accessible from
the distended state by forcing the nipple at least partially into the
areola along the central axis, and in which said resilient wall
additionally defines an annular double fold that is absent in the
distended state and defines an outer local maximum and an inner
local minimum, both extending circumferentially around the
global maximum,
wherein the resilient wall defines a circumferential fold
region that, in said at least one depressed state, ranges from the
local maximum to the local minimum of the double fold, wherein
said fold region has a rotationally asymmetric wall thickness
distribution for effecting by said resilient wall an elastic
transformation of said teat from the at least one depressed state
to the distended state, and
wherein that the rotationally asymmetric wall thickness
distribution in the fold region is:
(i) least partially effected through a plurality of
elongate, tangentially equidistantly spaced-apart ribs that are
arranged on an inner surface of the resilient wall and defined by
wall thickness-defined structures of said resilient wall wherein at
least one of the ribs has a different length and/or width and/or
thickness than the other ribs, such that said ribs effect a
rotationally asymmetric wall thickness distribution in said fold
region, or
(ii) at least partially effected through the use of
rotationally asymmetric distribution of at least two materials
having a mutually different modulus of elasticity.
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THE REJECTI0NS 3
I. Claims 1, 2, 5, 6, 8, 10, 11, 13, and 15 stand rejected under 35
U.S.C. § I02(a) as being anticipated by Tesini (US 2015/0202122 Al;
published July 23, 2015), or in the alternative, under 35 U.S.C. § I03(a) as
unpatentable over Tesini and Horan (US 2,628,909; issued Feb. 17, 1953).
II. Claim 14 stands rejected under 35 U.S.C. § I03(a) as
unpatentable over Tesini and Kesselring (US 4,505,398; issued Mar. 19,
1985).
III. Claims 1, 2, 5, 6, 11, 13, and 15 stand rejected under 35 U.S.C.
§ I02(b) as being anticipated by Rees (US 2012/0074090 Al; published
Mar. 29, 2012) or Tashiro (JP 2006-6809; published Jan. 12, 2006), or in the
3 The Examiner's objection to the drawings is a petitionable, not appealable,
matter (see Final Act. 2-3; see also 37 C.F.R. § 1.181; Ex Parte Frye, 94
USPQ2d 1072, 1077-78 (BPAI 2010) (precedential); and the following
rejections have been withdrawn: (i) claims 1, 2, 5, 6, 8, 10, 11, 13, and 15
under 35 U.S.C. § I03(a) as being unpatentable over Tesini and Ballin '445
(US 3,468,445; issued Sept. 23, 1969), Ballin '771 (US 3,339,771; issued
Sept. 5, 1967), or Koll (US 3,572,533; issued Mar. 30, 1971); (ii) claims 1,
2, 5, 6, 8, 10, 11, 13, and 15 under 35 U.S.C. § I02(a) as being anticipated
by Yamashita (US 2012/0265245 Al; published Oct. 18, 2012); (iii) claims
1, 2, 5, 6, 8, 10, 11, 13, and 15 under 35 U.S.C. § I03(a) as being
unpatentable over Yamashita and Horan, Ballin '445, Ballin '771, or Koll;
(iv) claim 14 under 35 U.S.C. § I03(a) as being unpatentable over
Yamashita and Kesselring; (v) claims 1, 2, 5, 6, 11, 13, and 15 under 35
U.S.C. § I03(a) as being unpatentable over Rees and Ballin '445, Ballin
'771, or Koll; and (vi) claims 1, 2, 5, 6, 11, 13, and 15 under 35 U.S.C.
§ I03(a) as being unpatentable over Tashiro and Ballin '445, Ballin '771, or
Koll; and (vii) claim 10 under 35 U.S.C. § I03(a) as unpatentable over
Tashiro and Ballin '445, Ballin '771, or Koll (see Ans. 2-3). We note that
claim 10 was not rejected under 35 U.S.C. § I03(a) as unpatentable over
Tashiro and Ballin '445, Ballin '771, or Koll; rather, claim 10 was rejected
over Tashiro alone (see Ans. 3; Final Act. 3---6).
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alternative, under 35 U.S.C. § 103(a) as unpatentable over, Rees or Tashiro,
and Horan.
IV. Claim 10 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Rees or Tashiro.
V. Claim 14 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Rees or Tashiro, and Kesselring.
ANALYSIS
Rejection I
Anticipation by Tesini
Claims 1 and 15
Appellant argues claims 1 and 15 as a group. Appeal Br. 17. We
select claim 1 as representative, and claim 15 stands or falls with claim 1.
See 37 C.F.R. § 4I.37(c)(l)(iv).
Regarding independent claim 1, the Examiner finds that Tesini
discloses the limitations of claim 1 (Final Act. 3--4), including, inter alia, at
least partially effecting the rotationally asymmetric wall thickness
distribution in a fold region by: (i) elongated tangentially equidistantly
spaced-apart ribs 312-314 defined by wall thickness-defined structures,
wherein at least one of ribs 312-314 has a different length, width, and/or
thickness than the other ribs 312-314 (i.e., "each of the ribs has variable
width thickness") (id. at 4 (citing Tesini ,r 68, Fig. lOA); see also Ans. 12);
and (ii) the use of rotationally asymmetric distribution of at least two
materials having a mutually different modulus of elasticity (i.e., valve 100
has "a different durometer" or "material" relative to "the rest of the test"
which "would effectively mak[ e] the distribution of the material rotationally
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asymmetric as claimed") (Final Act. 4 ( citing Tesini ,r 29); see also Ans. 5
("the presence of the valve in the areola would render the areola region
rotationally asymmetric")).
Appellant argues that Tesini discloses "a rotational symmetric wall
thickness distribution in a fold region of a resilient wall of the teat" and
"fail[ s] to describe, teach or suggest, individually or in combination, a
rotational asymmetric wall thickness distribution in a fold region of a
resilient wall of the teat," as claimed. Appeal Br. 16; Reply Br. 18; see also
id. at 19 ("Tesini fails to describe, teach or suggest any type of a wall
thickness distribution of the fold region_for effecting an elastic
transformation of the teat from a depressed state to a distended state."). In
particular, Appellant submits that Tesini teaches that "ribs 312-314 have the
same shape and dimensions," including, for example, "[an] identical varying
thickness ... between 2mm ± Imm." Reply Br. 18-19; see Tesini ,r 68
("[ t ]he height or protrusion of the ribs from the interior wall is typically 2
mm± 1 mm").
As correctly argued by Appellant, a preponderance of the evidence
fails to support the Examiner's finding that Tesini discloses that one of ribs
312-314 has a different length, width, or thickness from the other ribs 312-
314; rather, Tesini discloses that each of the lengths, widths, and thicknesses
of ribs 312-314 are the same as the other ribs. See, e.g., Tesini ,r 68, Figs.
IOA---C).
However, claim 1, as set forth supra, requires the rotationally
asymmetric wall thickness distribution in the fold region to be at least
partially effected by either the variably dimensioned ribs or the use of
rotationally asymmetric distribution of at least two materials having
mutually different modulus of elasticity, and Appellant fails to provide
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persuasive argument or evidence as to why the latter claim requirement is
not met by Tesini's valve 100, according to the Examiner's findings supra.
See Appeal Br. 16-18; Reply Br. 18-19. In other words, Appellant's
argument that Tesini "fails to describe, teach or suggest any type of a wall
thickness distribution of the fold region_for effecting an elastic
transformation of the teat from a depressed state to a distended state" does
inform us of error in the Examiner's reliance on Tesini's valve 100. Reply
Br. 19; see also id. at 18-19; Appeal Br. 16-18; 37 C.F.R. § 4I.37(c)(l)(iv)
(statements that merely point out what a claim recites are not considered to
present an argument for separate patentability of the claim); see also In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (Rule 41.37 requires more than
recitation of the claim elements and a naked assertion that the elements are
not found in the prior art). Notably, Tesini discloses that "[m]ultiple valves
can be spaced around the periphery of the base or flange of the teat, typically
but not necessarily evenly spaced around the periphery" and that with
respect to valve 100, "[i]t may be possible to change the sensitivity of the
valve even more by making a valve with a different durometer, or out of a
different material than the rest of the teat, in a two-shot molding process."
Tesini ,r,r 27, 29.
Accordingly, we sustain the Examiner's rejection of independent
claim 1 under 35 U.S.C. § 102(b) as anticipated by Tesini, and claim 15 falls
therewith.
Claims 2, 10, 11, and 13
Appellant chose not to present arguments for the patentability of
claims 2, 10, 11, and 13, which depend from independent claim 1, apart
from the arguments presented supra for the patentability of claim 1, and
therefore, for essentially the same reasons presented supra, we also sustain
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the Examiner's rejection of claims 2, 10, 11, and 13 under 35 U.S.C.
§ 102(b) as anticipated by Tesini. 4 Appeal Br. 17-18; Reply Br. 25.
Claims 5, 6, and 8
Appellant argues that T esini fails "to describe, teach or suggest,
individually or in combination, the ... limitations of dependent claims 5, 6
and 8." Appeal Br. 16-17, 36-37, 46-47, 56; Reply Br. 24, 37, 45--46, 53-
54. As noted supra, statements that merely point out what a claim recites
are not considered to present an argument for separate patentability of the
claim. Accordingly, we sustain the Examiner's rejection of claims 5, 6, and
8 under 35 U.S.C. § 102(b) as anticipated by Tesini.
Obviousness over Tesini and Horan
Claims 1 and 15
Regarding Tesini's teat, the Examiner reasons alternatively that it
would have been obvious to provide a nipple "in the double folded position
to enable one to ship the nipple along with a bottle," as taught by Horan.
Final Act. 5.
Regarding claims 1 and 15, Appellant argues that Horan fails to
disclose "a rotational asymmetric wall thickness distribution in a fold region
of a resilient wall of the teat as encompassed by claims 1 and 15." Appeal
Br. 16. Appellant generally relies on the arguments presented supra with
respect to independent claim 1. Appeal Br. 18-19; Reply Br. 22-23, 26.
Appellant also argues that
4 Appellant omits claim 10 from their restatement of the Examiner's
rejection. See Final Act. 3 (rejecting claims 1, 2, 5, 6, 8, 10, 11, 13, and 15
pursuant to 35 U.S.C. § 102(b) as anticipated by Tesini). Appeal Br. 10, 17;
Reply Br. 11.
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Horan is no more than cumulative than Tesini ... teaching a
mechanical property of a wall thick distribution of ribs/elastic
material for preventing a teat collapse and fails to describe, teach
or suggest a modification of Tesini . . . to incorporate a
mechanical property of a wall thick distribution of ribs/elastic
material for preventing both a teat collapse and a teat depression,
as claimed. Reply Br. 23.
Appellant's arguments do not apprise us of error in the Examiner's
reliance on Tesini for disclosing a rotationally asymmetric wall thickness
distribution in a fold region of a resilient wall of the teat at least partially
effected through the use of rotationally asymmetric distribution of at least
two materials having a mutually different modulus of elasticity, or for the
Examiner's reliance on Horan for disclosing a double folded position, as
claimed.
Accordingly, we sustain the Examiner's rejection of claims 1 and 15
under 35 U.S.C. § 103(a) as unpatentable over Tesini and Horan.
Claims 2, 10, 11, and 13
Appellant chose not to present arguments for the patentability of
claims 2, 10, 11, and 13, which depend from independent claim 1, apart
from the arguments presented supra for the patentability of claim 1, and
therefore, for essentially the same reasons presented supra, we also sustain
the Examiner's rejection of claims 2, 10, 11, and 13 under 35 U.S.C.
§ 103(a) as unpatentable over Tesini and Horan. 5 Appeal Br. 18-19; Reply
Br. 22-23, 26.
5 Appellant omits claim 10 from their restatement of the Examiner's
rejection. See Final Act. 3 (rejecting claims 1, 2, 5, 6, 8, 10, 11, 13, and 15
pursuant to 35 U.S.C. § 103(a) as unpatentable over Tesini and Horan).
Appeal Br. 10, 18; Reply Br. 12.
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Claims 5, 6, and 8
Appellant argues that Horan fails to disclose the limitations of claims
5, 6, and 8. Appeal Br. 37, 47, 56-67; Reply Br. 38, 46, 54. As noted
supra, statements that merely point out what a claim recites are not
considered to present an argument for separate patentability of the claim.
Accordingly, we sustain the Examiner's rejection of claims 5, 6, and 8 as
unpatentable under 35 U.S.C. § 103(a) over Tesini and Horan.
Re} ection II
Obviousness over Tesini and Kesselring
Claim 14
Regarding claim 14, which is rejected pursuant to 35 U.S.C. § 103(a)
as unpatentable over Tesini and Kesselring, as set forth supra, Appellant
chose not to present arguments for the patentability of claim 14, which
depends from independent claim 1, apart from the arguments presented
supra for the patentability of claim 1. Appeal Br. 18; Reply Br. 25.
Accordingly, for essentially the same reasons presented supra, we also
sustain the Examiner's rejection of claim 14 under 35 U.S.C. § 103(a) as
unpatentable over Tesini and Kesselring.
Rejection III
Anticipation by Rees
Claims 1 and 15
Appellant argues claims 1 and 15 as a group. Appeal Br. 27. We
select claim 1 as representative, and claim 15 stands or falls with claim 1.
See 37 C.F.R. § 4I.37(c)(l)(iv).
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Application 14/388,273
Regarding independent claim 1, the Examiner finds that Rees
discloses the limitations of claim 1, including, inter alia, at least partially
effecting the rotationally asymmetric wall thickness distribution in a fold
region by elongated tangentially equidistantly spaced-apart ribs defined by
wall thickness-defined structures, wherein at least one of ribs has a different
length, width, and/or thickness than the other ribs 8. Final Act. 5-6 (citing
Rees, e.g., Fig. 12A). In particular, the Examiner relies on Figures 12A and
12B (i.e., the seventh embodiment (Rees ,r,r 26, 27)) for disclosing ribs 52
"having different width by itself due to the oval shape and different
thickness." Ans. 13.
Appellant generally argues that Rees discloses "a rotational symmetric
wall thickness distribution in a fold region of a resilient wall of the teat" and
"fail[ s] to describe, teach or suggest, individually or in combination, a
rotational asymmetric wall thickness distribution in a fold region of a
resilient wall of the teat," as claimed. Appeal Br. 16; Reply Br. 18.
Regarding Figures 12A and 12B of Rees, Appellant argues that these figures
depict "a rotational symmetric wall thickness distribution of elongate,
tangentially equidistantly spaced-apart identical ribs 52." Reply Br. 20.
Appellant further argues that Rees teaches "a single degree of elasticity for
the fold region" ( citing Rees ,r 48 ( disclosing that the teat is "formed of any
appropriate plastic material such as silicon") and fails to disclose "any type
of wall thickness distribution of the fold region_for effecting an elastic
transformation of the teat from a depressed state to a distended state." Reply
Br. 21.
Figures 12A and 12B are reproduced below.
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FIG. 12A
FIG. 12B
Figures 12A and 12B disclose a plan and side view, respectively, of "teat 50
having a circular cross-section include[ing] three vertical ribs 52 equally
angularly spaced around the inner wall of the teat 50," such that "no matter
where the teat is compressed ... the ribs cannot be compressed on top of
each other to intersect and create a point force." Rees ,r,r 26, 27, 47. Rees
also discloses that "where appropriate any of the embodiments can have
opposing thick and thin walls as discussed with reference to FIGS. 9A and
9B." Id. at ,r 49; see also id. at ,r 43 (disclosing with reference to Figure 9A
that the teat has "varying wall thickness such that one elongate wall ... has a
comparatively small thickness and the opposing elongate wall ... has a
comparatively large thickness"). Rees further discloses that "[t]he ribs are
preferably integrally formed with the teat." Id. at at ,r 48. Thus, a
preponderance of the evidence supports the Examiner's finding that when
the embodiment depicted in Figures 12A and 12B of Rees is modified to
include varying wall thicknesses, wherein ribs 52 are integrally formed with
the wall, as expressly disclosed in Rees, the modification results in
the rotationally symmetric wall thickness distribution in the fold
region [being at] least partially effected through a plurality of
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elongate, tangentially equidistantly spaced-apart ribs that are
arranged on an inner surface of the resilient wall and defined by
wall thickness-defined structures of said resilient wall wherein at
least one of the ribs has a different length, width and/or thickness
than the other ribs, such that said ribs effect a rotationally
asymmetric wall thickness distribution in said fold region,
as recited in claim 1.
Accordingly, we sustain the Examiner's rejection of independent
claim 1 under 35 U.S.C. § 102(b) as anticipated by Rees, and claim 15 falls
therewith.
Claims 2, 11, and 13
Appellant chose not to present arguments for the patentability of
claims 2, 11, and 13, which depend from independent claim 1, apart from the
arguments presented supra for the patentability of claim 1, and therefore, for
essentially the same reasons presented supra, we also sustain the Examiner's
rejection of claims 2, 11, and 13 under 35 U.S.C. § 102(b) as anticipated by
Rees. Appeal Br. 26-27; Reply Br. 30-31.
Claims 5 and 6
Appellant argues that Rees fails "to describe, teach or suggest,
individually or in combination, the ... limitations of dependent claims 5, 6
and 8." Appeal Br. 16-17, 41--42, 51; Reply Br. 41, 49. As noted supra,
statements that merely point out what a claim recites are not considered to
present an argument for separate patentability of the claim. Accordingly, we
sustain the Examiner's rejection of claims 5, 6, and 8 under 35 U.S.C.
§ 102(b) as anticipated by Tesini.
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Obviousness over Rees and Horan
Claims 1 and 15
Regarding Rees' teat, the Examiner reasons alternatively that it would
have been obvious to provide a nipple "in the double folded position to
enable one to ship the nipple along with a bottle," as taught by Horan. Final
Act. 5.
Regarding claims 1 and 15, Appellant argues that Horan fails to
disclose, "a rotational asymmetric wall thickness distribution in a fold region
of a resilient wall of the teat as encompassed by ... claims 1 and 15."
Appeal Br. 16. Appellant generally relies on the arguments presented supra
with respect to independent claim 1. Appeal Br. 28; Reply Br. 32.
Appellant also argues that
Horan is no more [] cumulative than ... Rees ... teaching a
mechanical property of a wall thick distribution of ribs/elastic
material for preventing a teat collapse and fails to describe, teach
or suggest a modification of . . . Rees . . . to incorporate a
mechanical property of a wall thick distribution of ribs/elastic
material for preventing both a teat collapse and a teat depression,
as claimed. Reply Br. 23.
Appellant's arguments do not apprise us of error in the Examiner's
reliance on Rees for disclosing a rotationally asymmetric wall thickness
distribution in a fold region of a resilient wall of the teat at least partially
effected through a plurality of ribs, as claimed, or for the Examiner's
reliance on Horan for disclosing a double folded position, as claimed.
Accordingly, we sustain the Examiner's rejection of claims 1 and 15
under 35 U.S.C. § 103(a) as unpatentable over Rees and Horan.
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Claims 2, 11, and 13
Appellant chose not to present arguments for the patentability of
claims 2, 11, and 13, which depend from independent claim 1, apart from the
arguments presented supra for the patentability of claim 1, and therefore, for
essentially the same reasons presented supra, we also sustain the Examiner's
rejection of claims 2, 11, and 13 under 35 U.S.C. § 103(a) as unpatentable
over Rees and Horan. Appeal Br. 28-29; Reply Br. 32.
Claims 5 and 6
Appellant argues that Horan fails to disclose the limitations of claims
5 and 6. Appeal Br. 42, 52, 56-67; Reply Br. 38, 46, 54. As noted supra,
statements that merely point out what a claim recites are not considered to
present an argument for separate patentability of the claim. Accordingly, we
sustain the Examiner's rejection of claims 5, 6, and 8 under 35 U.S.C.
§ 103(a) as unpatentable over Tesini and Horan.
Anticipation by Tashiro
Claims 1 and 15
Appellant argues claims 1 and 15 as a group. Appeal Br. 31-3 2. We
select claim 1 as representative, and claim 15 stands or falls with claim 1.
See 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Tashiro discloses a rotationally asymmetric
wall thickness distribution of a teat, as claimed. Final Act. 6 ( citing, e.g.,
Tashiro, Fig. 9). In particular, the Examiner finds that Figure 9 depicts that
"each rib 706 has varying thickness as it taper[s] from the inner wall." Ans.
14. The Examiner also finds that Tashiro teaches that the teat is made from
"at least two materials having a mutually different modulus of elasticity" and
that "the valve in [Figure] 9 also renders the teat rotationally asymmetric."
Id.
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Appellant generally argues that Tashiro discloses "a rotational
symmetric wall thickness distribution in a fold region of a resilient wall of
the teat" and "fail[ s] to describe, teach or suggest, individually or in
combination, a rotational asymmetric wall thickness distribution in a fold
region of a resilient wall of the teat," as claimed. Appeal Br. 16; Reply Br.
18. In particular, Appellant argues that Figure 9 depicts
a rotational symmetric wall thickness distribution of an upper
flexible wall 702 and a lower rigid wall 701 with a pair of
elongate, tangentially identical ribs 706 that are not equidistantly
space[d]-apart (i.e., ribs 706 do not oppose each other, therefore
each side of one rib 706 is not equidistance to opposing side of
other rib 706).
Reply Br. 21. Appellant further argues that Tashiro fails to disclose "any
type of a wall thickness distribution of the fold region_for effecting an
elastic transformation of the teat form a depressed state to a distended state."
Id. at 22.
We agree with Appellant's argument that Figure 9 of Tashiro fails to
depict ribs 706 equidistantly spaced apart about the circumference of the
wall of the teat. Further, we determine that the Examiner erred by relying on
Figure 9 alone for disclosing that each rib 706 has varying thickness as it
tapers from the inner wall. "[P]atent drawings do not define the precise
proportions of the elements and may not be relied on to show particular sizes
if the specification is completely silent on the issue." Hockerson-
Halberstadt, Inc. v. Avia Group Int'!, Inc., 222 F.3d 951, 956 (Fed. Cir.
2000) (patent owner's argument hinged on an inference drawn from certain
figures about the quantitative relationship between the respective widths of a
groove and fins) (citing In re Wright, 569 F.2d 1124, 1127 (CCPA 1977)
("Absent any written description in the specification of quantitative values,
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Application 14/388,273
arguments based on measurement of a drawing are of little value.") ( the
remaining citations omitted)).
Notwithstanding, Appellant does not dispute that the upper flexible
walls have a different modulus of elasticity than the lower rigid walls. We
determine that the Examiner's finding is speculative regarding whether such
a difference in modulus of elasticity of the walls alone results in a
rotationally asymmetric wall thickness distribution in the fold region, as
required by claim 1, because the upper and lower walls themselves are each
depicted as symmetrical about the axis of the teat. See, e.g., Tashiro, Fig. 9.
Appellant's Specification discloses that
[t]he fold region 30 of the teat 10, which may be generally made
of a first constituent material, may, for instance, include
rotationally asymmetrically distributed 'inlays', portions or
patches of a second constituent material having a modulus of
elasticity that differs from that of the first. An example, is the
recesses 28 shown in Fig. 3A being made of the second
constituent material with the remaining portion of fold region 30
being made of the first constituent material.
Spec., p. 5 (as amended on Sept. 5, 2017). The claims, however, do not
exclude the removal of material from also resulting in such rotationally
asymmetric wall thickness distribution in the fold region. Here, Appellant
fails to address the removal of material in the lower rigid wall 701, for the
valve, as relied on by the Examiner supra, for at least partially creating such
an effect. Thus, Appellant's argument does not apprise us of error in the
Examiner's finding that claim 1 reads on Tashiro' s Figure 9.
Accordingly, we sustain the Examiner's rejection of claim 1 under 35
U.S.C. § 102(b) as anticipated by Tashiro, and claim 15 falls therewith.
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Claims 2, 11, and 13
Appellant chose not to present arguments for the patentability of
claims 2, 11, and 13, which depend from independent claim 1, apart from the
arguments presented supra for the patentability of claim 1, and therefore, for
essentially the same reasons presented supra, we also sustain the Examiner's
rejection of claims 2, 11, and 13 under 35 U.S.C. § 102(b) as anticipated by
Tashiro. Appeal Br. 32; Reply Br. 34.
Claims 5 and 6
Appellant argues that Tashiro "fails to describe the aforementioned
limitations" of dependent claims 5 and 6. Appeal Br. 44, 54, 56. As noted
supra, statements that merely point out what a claim recites are not
considered to present an argument for separate patentability of the claim.
Accordingly, we sustain the Examiner's rejection of claims 5 and 6 under 35
U.S.C. § 102(b) as anticipated by Tashiro.
Obviousness over Tashiro and Horan
Claims 1 and 15
Regarding Tashiro's teat, the Examiner alternatively reasons that it
would have been obvious to provide a nipple "in the double folded [position]
to enable one to ship the nipple along with a bottle," as taught by Horan.
Final Act. 6.
Regarding claims 1 and 15, Appellant argues that Horan fails to
disclose "a rotational asymmetric wall thickness distribution in a fold region
of a resilient wall of the teat as encompassed by claims 1 and 15." Appeal
Br. 16. Appellant generally relies on the arguments presented supra with
respect to independent claim 1. Appeal Br. 18-19, 33-34; Reply Br. 22-23.
Appellant also argues that "Horan is no more [] cumulative than Tesini . ..
teaching a mechanical property of a wall thick distribution of ribs/ elastic
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material for preventing a teat collapse and fails to describe, teach or suggest
a modification of ... Tashiro to incorporate a mechanical property of a wall
thick distribution of ribs/elastic material for preventing both a teat collapse
and a teat depression," as claimed. Reply Br. 23.
Appellant's arguments do not apprise us of error in the Examiner's
reliance on Tashiro for disclosing a rotationally asymmetric wall thickness
distribution in a fold region of a resilient wall of the teat at least partially
effected through the use of rotationally asymmetric distribution of at least
two materials having a mutually different modulus of elasticity, or for the
Examiner's reliance on Horan for disclosing a double folded position, as
claimed.
Accordingly, we sustain the Examiner's rejection of claims 1 and 15
under 35 U.S.C. § 103(a) as unpatentable over Tashiro and Horan.
Claims 2, 11, and 13
Appellant chose not to present arguments for the patentability of
claims 2, 11, and 13, which depend from independent claim 1, apart from the
arguments presented supra for the patentability of claim 1, and therefore, for
essentially the same reasons presented supra, we also sustain the Examiner's
rejection of claims 2, 11, and 13 under 35 U.S.C. § 103(a) as unpatentable
over Tashiro and Horan. Reply Br. 35.
Claims 5 and 6
Appellant argues that Horan fails to disclose the limitations of claims
5 and 6. Reply Br. 42, 52. As noted supra, statements that merely point out
what a claim recites are not considered to present an argument for separate
patentability of the claim. Accordingly, we sustain the Examiner's rejection
of claims 5 and 6 under 35 U.S.C. § 103(a) as unpatentable over Tashiro and
Horan.
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Rejection IV
Obviousness over Rees or Tashiro
Claim 10
Regarding claim 10, the Examiner reasons that it would have been
obvious "to provide the material of liquid silicone rubber to provide the
desired material for manufacturing," for the teats of Rees or Tashiro. Final
Act. 6. Appellant argues that claim 10 is allowable for at least the same
reasons as set forth supra with respect to independent claim in view of Rees
or Tashiro. Appeal Br. 27, 32; Reply Br. 31, 34--35. Accordingly, for
essentially the same reasons as set forth supra, we sustain the Examiner's
rejection of claim 10 under 35 U.S.C. § 103(a) as unpatentable over Rees or
Tashiro.
Rejection V
Obviousness over Rees or Tashiro and Kesselring
Claim 14
Regarding claim 14, the Examiner reasons that it would have been
obvious "to provide a plurality of space recesses," as taught by Kesselring,
"to provide added resiliency" to the teats of Rees or Tashiro. Final Act. 6.
Appellant argues that claim 14 is allowable for at least the same reasons as
set forth supra with respect to independent claim in view of Rees or Tashiro,
and Kesselring. Appeal Br. 28, 33; Reply Br. 31, 35. Accordingly, for
essentially the same reasons as set forth supra, we sustain the Examiner's
rejection of claim 14 under 35 U.S.C. § 103(a) as unpatentable over Rees or
Tashiro, and Kesselring.
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DECISION
The Examiner's rejections of claims 1, 2, 5, 6, 8, 10, 11, 13, and 15
under 35 U.S.C. §§ 102(a) (as anticipated by Tesini) and 103(a) (as
unpatentable over Tesini and Horan) are AFFIRMED.
The Examiner's rejections of claim 14 under 35 U.S.C. § 103(a) as
unpatentable over Tesini, Rees, or Tashiro, and Kesselring are AFFIRMED.
The Examiner's rejections of claims 1, 2, 5, 6, 11, 13, and 15 under 35
U.S.C. §§ 102(b) (as anticipated by Rees) and 103(a) (as unpatentable over
Rees and Horan) are AFFIRMED.
The Examiner's rejection of claims 1, 2, 5, 6, 11, 13, and 15 under 35
U.S.C. §§ 102(b) (as anticipated by Tashiro) and 103(a) (as unpatentable
over Tashiro and Horan) is AFFIRMED.
The Examiner's rejection of Claim 10 under 35 U.S.C. § 103(a) as
unpatentable over Rees or Tashiro 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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