Ex Parte Prado

Board of Patent Appeals and Interferences

Nov 7, 2008

11350979 (B.P.A.I. Nov. 7, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RICHARD PRADO

Appeal 2008-2042
Application 11/350,979
Technology Center 3600
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Decided: November 7, 2008
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Before RICHARD TORCZON, SALLY GARDNER LANE, and
MICHAEL P. TIERNEY, Administrative Patent Judges.

TORCZON, Administrative Patent Judge

DECISION ON APPEAL
STATEMENT OF THE CASE
The appellant, Richard Prado (Prado), seeks review under 35 U.S.C.
§ 134 for rejections of claims 7-14. We REVERSE.
The rejection
The examiner relied upon the following prior art in rejecting the
claims (Ans. at 4):
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Juranek US 6,601,803 B1 5 Aug. 2003
Willows et. al. (Willows) US 6,971,562 B2 6 Dec. 2005

The examiner found that the Willows patent anticipated claims 7-11,
13, and 14 under 35 U.S.C. § 102(e) (Ans. at 2-3). The examiner also held
that the subject matter of claim 12 would have been obvious under 35 U.S.C.
§ 103 in view of the Willows and Juranek patents (Ans. at 2-3).
Claims 7, 13, and 14 are independent claims. Claims 8-12 depend on
claim 7. Prado argues claims 7-11, 13, and 14 as a single group, but argues
claim 12 separately.
The claims
Prado discloses a harness holding device for a baby bottle or sippy
cup, which allows the baby to manipulate and use the item (Spec. at 1:5-7).
Prado Figure 1a (right) shows a side
elevation view of the bottle holder
with a sponge-backed
pad 114, two nylon
straps 102, 104,
adjustment
locks 106, 108,
and a sliding holder 118 with adjustable straps 120 (Spec. at 5:7-18).
Claim 7 as the illustrates the subject matter of the rejected claims (Br.
at 17, indenting added to comply with 37 C.F.R. § 1.75(i)):
An attachable baby cup holder, comprising:
an absorbent mass, having a front side and a back side;
at least one belt affixed to the back side of the absorbent
mass, the belt having two ends;
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a means for fastening the two ends of each said belt
together;
a means for snugging the fastened belt around an infant's
chest at a selected position;
a loop slidably connected to at least one belt; and
a means for adjustably retaining a sippable beverage
container within sight and reach of the infant, the retaining
means connected to the loop and permitting the infant to drink
from the container while it is retained in the holder.

On appeal, Prado explains (Br. at 3) that the adjustable container
retaining means corresponds to the hook-and-loop fastener (e.g., VELCRO®
straps). Claim 12, which depends from claim 7, further requires the
adjustable retaining means comprise hook-and-loop material (Br. at 18).
ANTICIPATION
Issue
Prado contends that Willows does not describe claim 7's adjustable
means for retaining a sippable beverage container (Br. at 12). The examiner
contends that Willow's top-sleeve assembly, counter flap, and associated
buckles provide the claimed means (Ans. at 4). Would those in the art have
understood Willows to describe a structure equivalent to Prado's means for
adjustably retaining a sippable beverage container?
Findings of Fact
1. Prado discloses the use of hook-and-loop straps 120 to secure a bottle
(Spec at 5:12-17).
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2. Willows Figure 1 (below) illustrates a bottle in a bottle pack 2, where
a top sleeve assembly 34 secures the bottle in the pack (Willows at 5:49-
6:57).

3. A second flap 39 connects to the top-sleeve assembly 34 by way of
buckles 41, 42 to secure the bottle (Willows at 4:61-65).
4. The examiner has not provided a basis for finding that flaps buckled
together are structurally equivalent to hook-and-pile straps.
Principles of Law
Grouped claims stand or fall together. 37 C.F.R. § 41.37(c)(1)(vii).
It is appropriate to focus claim construction on the disputed limitation.
Gechter v. Davidson, 116 F.3d 1454, 1460 (Fed. Cir. 1997). A claim
limitation expressed as a means for performing a specified function shall be
construed to cover the corresponding structure described in the specification
and equivalent structures. 35 U.S.C. § 112(6).
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Analysis
Claim 7 uses means-plus-function format to define structures for
retaining the beverage (Br. at 17). By statute, the format constrains the
elements within the scope of the limitation to those elements with the
limiting function and structures equivalent to the structures in the disclosure
performing the function. In Prado's specification, the corresponding
structure is a hook-and-loop fastener 120. Although the examiner identifies
a structure, the Willows top-sleeve assembly 34 and associated elements, as
providing the same function, the record provides no basis for finding the
Willows structures to be structurally equivalent to a hook-and-pile strap.
The present record lacks support for finding a structural equivalent in
Willows that is within the scope of the contested limitation. Willows does
not anticipate the claimed invention of claim 7.
OBVIOUSNESS
Issue
Prado contends that the combined teachings of Willows and Juranek
do not teach or suggest a slidable loop using hook-and-pile material to retain
a bottle (Br. at 14). The examiner relies on the Juranek patent to show the
use of a hook-and-loop structure to retain a cup. Would a person having
ordinary skill in the art have appreciated from Willows and Juranek the
combination of an adjustable loop using hook-and-loop material to retain a
container?
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Findings of Fact
5. Juranek describes using hook-and-loop fasteners to securing a baby
bottle to a pad (Juranek at 3:38-42).
6. Willows describes a bottle pack 2 that is fixed at attachment points 61
to separate waist strap bands 31 (Willows at 10:32-49).
7. According to Prado, a difference between the subject matter of
claim 12 and the Willows/Juranek combination is that the combination lacks
a loop connection that can slide on at least one belt that has an adjustable
strap for retaining the baby bottle or cup (Br. at 14).
Principles of Law
Claimed subject matter can be obvious even where all of the claimed
features are not found in specific prior art references, provided there is a
reason to modify the prior-art teachings to something within the scope of the
claimed invention. Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1307
(Fed. Cir. 2006).
Analysis
Juranek shows hook-and-loop material as part of a system for
retaining a container. It would have been readily apparent to a person
having ordinary skill in the art to substitute a hook-and-loop fastener for the
buckles associated with the top-sleeve assembly in Willows. Willows does
not, however, teach that the container-retaining loop is slidable as the
examiner asserts. The examiner, who bears the ultimate burden of proof for
the issue of obviousness, appears to have misapprehended what Willows
actually teaches about the attachment of the top-sleeve assembly to the belts.
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Consequently, the examiner has not provided a reason to modify the
Willows pack to make it slidable despite Prado's arguments on this point.
Whether such a modification would have been obvious anyway has not been
developed on the record for this appeal. A conclusion of obviousness cannot
be sustained on the present record.
HOLDING
The rejections of claims 7-14 are—
REVERSED

ack

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Anthony Claiborne
849 136th Avenue N.E.
Bellevue, WA 98005