Ex Parte Pawlowski

Patent Trial and Appeal Board

Sep 14, 2016

11299420 (P.T.A.B. Sep. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111299,420 12/12/2005
7590
PA TENTS+ TMS
A Professional Corporation
2849 W. Armitage Ave.
Chicago, IL 60647
09/14/2016
FIRST NAMED INVENTOR
Mark Pawlowski
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.
PAW-P-05-001 9031
EXAMINER
BRADEN, SHAWNM
ART UNIT PAPER NUMBER
3728
MAILDATE DELIVERY MODE
09/14/2016 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 MARK PAWLOWSKI
Appeal2014-008860
Application 11/299,420
Technology Center 3700
Before LYNNE H. BROWNE, THOMAS F. SMEGAL, and
BRENT M. DOUGAL, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Mark Pawlowski (Appellant) appeals under 35 U.S.C. § 134 from the
rejection of claims 1, 2, 6-8, 12, 13, and 21-34 1 under35 U.S.C. § 103(a) as
unpatentable over Quase (US 3,659,108, iss. Apr. 25, 1972) and Weterrings
(US 6,026,685, iss. Feb. 22, 2000). We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm-in-part.
1 Although the Examiner sets forth a separate statement of the grounds of
rejection for claims 23, 24, and 31 (Final Act. 7), these claims are subject to
the same grounds of rejection as claim 7, from which they depend. See Final
Act. 2.
Appeal2014-008860
Application 11/299,420
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An apparatus for storing contents within an adjustable
volume to remove air from the adjustable volume to preserve the
contents, the apparatus comprising:
a first section having a top end and a bottom end wherein
the bottom end is opposite to the top end wherein the first section
has an interior surface and an exterior surface and further
wherein the first section has a first volume to store the contents
wherein the first volume is defined between the top end, the
bottom end and the interior surface;
a second section connected to the first section wherein the·
second section has a distal end and a proximate end wherein the
second section has an outer surface and an inner surf ace wherein
the second section has a second volume to store the contents
wherein the first section and the second section have a height
defined between the top end of the first section and the distal end
of the second section wherein the first volume of the first section
and the second volume of the second section form the adjustable
volume for storing the contents wherein the height and the
adjustable volume are modified by moving the bottom end of the
first section to any one of an infinite number of positions between
the proximate end and the distal end of the second section
wherein the adjustable volume is increased by moving the
bottom end of the first section away from the distal end of the
second section wherein the adjustable volume is decreased by
moving the bottom end of the first section toward the distal end
of the second section; and
a seal between the first section and the second section
wherein the seal remains in place while positioning the first
section between the proximate end and the distal end of the
second section and at any one of the infinite number of positions
between the proximate end and the distal end of the second
section wherein the outer surface of the first section remains
sealed with the inner surface of the second section at any one of
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Application 11/299,420
the infinite number of positions between the proximate end and
the distal end of the second section and further wherein the seal
maintains any one of the infinite number of positions of the
bottom end of the first section between the proximate end and
the distal end of the second section.
DISCUSSION
Claims 1, 7, 25, and 27
Appellant argues claims 1 and 7 together. See Appeal Br. 10-15.
Furthermore, Appellant does not provide separate arguments for the
patentability of claims 25 and 27, which depend from claim 1. See Appeal
Br. 21-24. We select claim 1 as the illustrative claim, and claims 7, 25, and
2 7 stand or fall with claim 1.
The Examiner finds that Quase discloses all of the limitations of claim
1 except for a
seal [that] remains in place while positioning the first section
between the proximate end and the distal end of the second
section and at any one of the infinite number of positions
between the proximate end and the distal end of the second
section wherein the outer surface of the first section remains
sealed with the inner surface of the second section at any one of
the infinite number of positions between the proximate end and
the distal end of the second section and further wherein the seal
maintains any one of the infinite number of positions of the
bottom end of the first section between the proximate end and
the distal end of the second section.
Final Act. 3--4. The Examiner further finds that
Weterrings teaches (see fig. 5) straight vertical walls
wherein the seal (50) remains in place while positioning the first
section (the base 12) between the proximate end and the distal
end of the second section ( 14) and at any one of the positions
between the proximate end and the distal end of the second
section wherein the outer surface of the first section remains
sealed with the inner surface of the second section positions
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Application 11/299,420
between the proximate end and the distal end of the second
section and further wherein the seal maintains any one of the
infinite number of positions of the bottom end of the first section
between the proximate end and the distal end of the second
section in the same field of endeavor for the purpose of adding
more adjustability to an adjustable volume, not just expanded or
collapsed but infinitely adjustable.
Id. at 4. Based on these findings, the Examiner determines that it would
have been obvious "to have straight non-tapered walls and seals as taught by
W etterings for the walls and seal of Quase in order to add infinite
adjustability to the volume of Quase." Id.
Appellant contends that "Wetterings does not teach a container having
a seal that maintains any one of the infinite number of positions of the
bottom end of the first section (sleeve 80) between the proximate end and
the distal end of the second section (base 60)." Appeal Br. 10. In support of
this contention, Appellant notes that "[a]s seen in FIG. 7 of Wetterings, ribs
66 do not extend to the top of base 60. Thus, the sleeve cannot be fully
extended relative to the base while still engaging the vertical ribs for
stability." Id. at 11.
Although Appellant's observations are correct, they are not
commensurate in scope with claim 1. Claim 1 does not require that the
infinitely adjustable volume extend from the proximate end to the distal end
of the second section. Rather, claim 1 requires that the infinitely adjustable
volume be movable between an "infinite number of positions between the
proximate end and the distal end." Appeal Br. 36. Wetterings' ribs are
located between the proximate and distal ends of its second section and the
volume is infinitely adjustable along the ribs. Thus, Appellant does not
apprise us of error.
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Application 11/299,420
Appellant further contends that "one of ordinary skill in the art would
not have been motivated to combine Quase and Wetterings in the manner
claimed" because "Quase and Wetterings are in different fields of endeavor"
and "neither Quase nor Wetterings (1) address the same problem or (2) serve
the same purpose." Appeal Br. 12; see also id. at 31-33. In other words,
Appellant is arguing that Quase and Wetterings are non-analogous art.
"Two separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of the problem
addressed and, (2) if the reference is not within the field of the inventor's
endeavor, whether the reference still is reasonably pertinent to the particular
problem with which the inventor is involved." In re Bigio, 381F.3d1320,
1325 (Fed. Cir. 2004) (citing In re Deminski, 796 F.2d 436, 442 (Fed. Cir.
1986); In re Wood, 599 F.2d 1032, 1036 (CCPA 1979)).
Appellant notes that "[ t ]he field of endeavor in Quase is underwater
storage devices of corrosive chemicals and/or radioactive materials" and
"[t]he field of endeavor in vVetterings is 'adjustable measurement devices,
and particularly to measuring containers for use in the kitchen in measuring
quantities of powdered, granular and liquid food materials;"' however,
Appellant does not identify the field of endeavor of the instant invention.
Appeal Br. 12. The Specification states "the present invention relates to a
system and a method of changing a volume of a container." Spec. 1, 11. 7-8.
The Specification does not limit the types of containers to which it pertains.
Rather, the Specification further states that "[i]t is generally known to use a
container to store and/or to hold solids, gases and/or liquids. The container,
such as, for example, a paint can or a water bottle." Spec. 2, 11. 1--4. Thus,
the field of endeavor of the instant invention is containers and is not limited
to a particular type of container. As noted by Appellant, Quase and
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W etterings are directed to containers and thus, are in the same field of
endeavor as the invention. Accordingly, they are analogous art under the
first analogous art test. Having determined that Quase and W ettering qualify
as analogous art, and thus, prior art under the first analogous art test, we
need not consider whether they qualify as analogous art based on the second
analogous art test.
Next, Appellant argues that "Quase and Wetterings teach significantly
different structures such that a person having ordinary skill in the art would
not have been motivated to combine the references." Appeal Br. 12.
However, "it is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review." In re
Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (citation omitted). The
relevant inquiry is whether the claimed subject matter would have been
obvious to those of ordinary skill in the art in light of the combined
teachings of those references. See In re Keller, 642 F.2d 413, 425 (CCPA
1981 ). "Combining the teachings of references does not involve an ability to
combine their specific structures." In re Nievelt, 482 F.2d 965, 968 (CCPA
1973). Here, the Examiner determines that Wetterings suggests the use of
straight non-tapering walls and a seal that remains in place. See Final Act. 4.
Appellant does not explain why the Examiner's determination is in error.
Thus, Appellant does not apprise us of error.
Moreover, to the extent that Appellant is arguing that there is not
motivation for the proposed combination, this argument is foreclosed by
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398 (2007), in which the Court
rejected the rigid requirement of a teaching or suggestion or motivation to
combine known elements in order to show obviousness. KSR, 550 U.S. at
415. The Court noted that an obviousness analysis "need not seek out
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Application 11/299,420
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." Id. at 418.
In addition, Appellant argues that "Quase does not teach 'straight
non-tapered walls and seals."' Appeal Br. 14. This fact is not in contention,
as Quase is not relied upon to teach these features. As discussed supra, the
rejection relies upon Wetterings to meet the limitations argued. See Final
Act. 4.
Finally, Appellants argue that "the Examiner failed to provide a
sufficient rationale why one of ordinary skill in the art would have been
motivated to combine Quase and Wetterings." Appeal Br. 15. As discussed
supra, this argument is foreclosed by KSR. To the extent that Appellant is
arguing that the Examiner's articulated reasoning lacks rational
underpinning, the Examiner explains that:
[in] the Quase reference, it is not clear if the seal maintains
contact with the sidewalls while transitioning from an expanded
position to a collapsed position. The sidewalls are slanted and a
variable gap which is not shown in (fig. 3) would need to be
sealed. It is possible that this gap would be sealed by the 0-ring
which is elastic, but again this is not clearly shown. Since the
Quase reference dose not clearly show the seal which maintains
an infinite number of positions. The Weterrings reference comes
in clearly showing (see fig. 5) straight vertical walls with a seal
(50) between them. These walls move to an infinite number of
positions, always having the seal (50) between them.
Ans. 2. Appellant does not address the Examiner's reasoning, and thus, does
not apprise us of error.
For these reasons, we sustain the Examiner's decision rejecting claim
1, and claims 7, 25, and 27, which fall therewith.
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Claim 6
Appellant argues that:
Given that Wetterings teaches the sleeve 80 encircling the base
60 with the top end wall 62, similar to the plunger-tube structure
of a syringe, a person having ordinary skill in the art would not
be motivated to add a third section (element 3 of Quase) to the
teachings of Wetterings.
Appeal Br. 16.
Appellant's argument is not responsive to the rejection as articulated
by the Examiner. As discussed supra, Quase discloses a third section. The
rejection does not propose adding a third section to Wetterings. See Final
Act. 5. Thus, Appellant does not apprise us of error.
In addition, Appellant again argues that "Wetterings would not
maintain 'any one of the infinite number of positions of the bottom end of
the first section between the proximate end and the distal end of the second
section,' as required by Claim 6." Appeal Br. 16-17. Appellant's argument
is not commensurate in scope with claim 1 as discussed supra. Moreover,
we do not find any deficiencies in the rejection of claim 1 from which claim
6 depends.
We sustain the Examiner's decision rejecting claim 6.
Claims 2 and 8
Appellant argues claims 2 and 8 together. See Appeal Br. 17-18. We
select claim 2 as the representative claim, and claim 8 stands or falls with
claim 2.
The Examiner finds that "Quase further shows a ring (39 is an 0-ring)
forming the seal (39) between the first section and the second section
wherein the ring is constructed from one of the group consisting of rubber,
silicone and latex." Final Act. 5.
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Appellant argues that Quase doesn't disclose "a ring that forms a seal
and maintains the relative positions [of] the adjacent sections" because "[i]n
Quase, detent mechanism 3 6 holds the container expanded once the
elements have been moved to their fully expanded position." Appeal Br. 17.
Appellant further argues that Wetterings doesn't disclose such a ring
because "Wetterings teaches a flange 72 providing a seal 70." Id. In
addition, Appellants note that in Wetterings "'[t]he seal material preferably
contains a substantial proportion of polypropylene, as well as a small
quantity of wax for lubricity."' Id. at 18. However, Appellants do not
address the combined teachings of Quase and Wetterings or explain what
limitations from claims 2 and 8 are lacking.
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
As discussed supra, the rejection relies on Quase for its teaching of an 0-
ring and Wetterings for teaching a seal that "remains in place while
positioning the first section (the base 12) between the proximate end and the
distal end of the second section (14) and at any one of the positions between
the proximate end and the distal end of the second section." Final Act. 4.
Appellant does not explain why the combined teachings of Quase and
W etterings do not suggest the claimed ring. Thus, Appellant does not
apprise us of error.
We sustain the Examiner's decision rejecting claim 2, and claim 8,
which falls therewith.
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Claims 12 and 13
Appellant does not present separate arguments for the patentability of
claim 13, which depends from claim 12. See Appeal Br. 18-19, 21. Thus,
claim 13 stands or falls with claim 12.
The Examiner finds that Quase "shows a cap (18) removably attached
to the top end of the container wherein the cap engages the top end of the
container to seal the container." Final Act. 6.
Appellant contends that "Quase does not teach a cap 'removably
attached' to the top end of the container consistent with the lexicography of
Appellant's invention," because "Quase teaches a cover 18 that seals an
access opening 16." Appeal Br. 18-19. In support of this contention,
Appellant notes that in Quase the cover 18 rests "upon an upper section 5
with no additional structural mechanism maintaining the interface between
the cover 18 and the upper section 5;" whereas the Specification describes
the claimed cap stating that "'[t]he cap 19 may screw, may snap and/or may
twist onto the top end 5 of the container 3."' Id. at 19 (citing Spec. 12).
Appellant's contention is not well taken because although the claims
are interpreted in light of the specification, limitations from the specification
are not read into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993). Claim 12 does not require attaching the cap to the top end of the
container, nor does it preclude a cap that relies upon its own weight for such
attachment. Thus, Appellant does not apprise us of error.
We sustain the Examiner's decision rejecting claim 12, and claim 13
which falls therewith.
Claims 21 and 22
For both claims 21 and 22 the Examiner finds that Quase
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shows a removable cap (18) secured to the top end of the first
section to close the top end of the first section wherein the
removable cap has a vent (crack open the cap to vent) that
operates as a one-way valve to expel air from the adjustable
volume through the vent as the adjustable volume is decreased.
Final Act. 6.
Appellant argues that "Quase does not teach a 'removable cap [that]
has a vent ..... ' In Quase, inlet 14 is disposed within a top wall 9."
Appeal Br. 20. Appellant is correct. Quase does not disclose a cap that "has
a vent." We note that this vent is positively recited in claims 21 and 22.
We do not sustain the Examiner's decision rejecting claims 21 and 22.
Claims 26 and 28
For both claims 26 and 28 the Examiner finds that "Quase further
shows the inner surface of the second section which is contacted by the seal
is flat (see fig. 4 ). " Final Act. 7.
Appellant contends that "Quase fails to teach the seal contacting a flat
inner surface of the second section and/or a flat outer surface of the first
section." Appeal Br. 21. In support of this contention, Appellant notes that
Quase "discloses a semicircular groove in each the inner surface of the
second section and the outer surface of the first section that houses 0-ring
39" as opposed to an "inner surface of the second section that is contacted
by the seal [that] is flat." Id. Responding to this argument, the Examiner
maintains that the surface in question is flat and directs our attention Quase' s
Figure 4 reproduced below:
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FIG.4
Figure 4 is a detail of the tank construction shown in Figure 1. It appears
that surfaces engaging the 0-rings 39 are grooves; however, it is unclear if
this is the case. As correctly noted by the Examiner, Quase does not discuss
this detail. See Ans. 4--5. Accordingly, the Examiner's determination that
these surfaces are flat is not supported by a preponderance of the evidence.
We do not sustain the Examiner's decision rejecting claims 26 and 28.
Claims 29--34
The Examiner determines that Quase discloses or suggests all of the
limitations of claim 29. See Final Act. 8-9. In particular, the Examiner
finds that Quase discloses:
positioning the first section of the apparatus between the
proximate end and the distal end of the second section of the
apparatus and at the position between the proximate end and the
distal end of the second section of the apparatus wherein the seal
remains in place relative to one of the first section and the second
section while positioning the first section and further wherein the
seal connects the bottom end of the first section to the second
section ( 4) to maintain position and seal with any position
between the proximate end and the distal end of the second
section ( 4 ).
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Id. We note that in rejecting claim 29, the Examiner does not make any
findings pertaining to Wetterings. Id.
Appellant argues that "Quase fails to teach a seal that maintains the
relative position of adjacent sections." Appeal Br. 25. In the Answer, the
Examiner notes that in "the Quase reference, it is not clear if the seal
maintains contact with the sidewalls while transitioning from an expanded
position to a collapsed position." Ans. 2. The rejection of claim 29 does not
rely upon W etterings to cure this deficiency in Quase. Accordingly,
Appellant is correct.
We do not sustain the Examiner's decision rejecting claim 29. Claims
30-34 depend from claim 29. The rejection of these claims does not cure
the deficiency in the rejection of claim 29. Accordingly, we do not sustain
the Examiner's decision rejecting claims 30-34.
Claims 23 and 24
Appellant argues claims 23 and 24 together. See Appeal Br. 29--31.
We select claim 23 as the representative claim, and claim 24 stands or falls
with claim 23.
The Examiner determines that the limitations at issue would have
been obvious because "[i]t is well known in the prior art to re-arrange the
rings and section in the same field of endeavor for the purpose of obtaining
different heights or wider bases or making the components more versatile."
Final Act. 7.
Appellant argues that "[t]he Office Action contains no reference to a
patent or published application by either Holmes or Berbrich. The Examiner
failed to show that the claimed limitations are reflected in prior art
references." Appeal Br. 30.
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Responding to this argument, the Examiner explains that the reference
to Holmes and Berbrich was a typographical error and should have been a
reference to Quase and Wetterings. Ans. 6.
Appellant further argues that "Quase does not teach rings to
structurally maintain the height of the container, as Quase utilizes a detent
structure to maintain the relative position of two sections when fully
extended." Appeal Br. 20. Appellant's argument is not responsive to the
rejection as articulated by the Examiner which relies upon the combined
teachings of Quase and W ettering, as well as a determination that re-
arranging components in the manner claimed was known. See Final Act. 7.
Thus, Appellant does not apprise us of error.
In addition, Appellant argues that "Quase is from a different field of
endeavor than the Appellant's invention." Appeal Br. 30. Appellant's
argument is not persuasive for the reasons discussed supra with respect to
claim 1.
Next, Appellant argues that "vVetterings does not teach rings and
utilizes a flange structure to maintain the relative positions of the sections."
Appeal Br. 31. However, this argument is also not responsive to the
rejection as articulated by the Examiner. As noted supra, non-obviousness
cannot be established by arguing the references separately when the
rejection is based on their combined teachings.
Finally, Appellant argues that "the references lack the limitations
positively recited in independent Claim 7 from which Claims 23 and 24
depend." Id. As we find no deficiencies in the rejection of claim 7, as
discussed supra, Appellant's argument is unconvincing.
For these reasons, we sustain the Examiner's decision rejecting claim
23, and claim 24 which falls therewith.
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DECISION
The Examiner's rejection of claims 1, 2, 6-8, 12, 13, and 25 is
AFFIRMED.
The Examiner's rejection of claims 21, 22, 26, and 28-34 is
REVERSED.
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-IN-PART
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