Ex Parte PrchalDownload PDFPatent Trial and Appeal BoardMar 21, 201713828033 (P.T.A.B. Mar. 21, 2017) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/828,033 03/14/2013 Ronald L. Prchal 95485-868227 1253 20350 7590 03/23/2017 KTT PATRTrK TOWNSFND fr STOrKTON T T P EXAMINER Mailstop: IP Docketing - 22 1100 Peachtree Street NEWHOUSE, NATHAN JEFFREY Suite 2800 ART UNIT PAPER NUMBER Atlanta, UA 5U5UV 3782 NOTIFICATION DATE DELIVERY MODE 03/23/2017 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): ipefiling@kilpatricktownsend.com jlhice@kilpatrick.foundationip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RONALD L. PRCHAL and RP PROMOTIONAL DESIGNS LLC Appeal 2015-005505 Application 13/828,033 Technology Center 3700 Before JAMES P. CALVE, WILLIAM A. CAPP, and LEE L. STEPINA, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the final rejection of claims 1,21, and 24 under 35 U.S.C. § 112, second paragraph; and the following claims as unpatentable under 35 U.S.C. § 103(a): claims 1—5, 11, 12, 21—23, and 25 over Hogan (US 2004/0232156 Al, pub, Nov. 25, 2004) and Kelley (US 4,831,842, iss. May 23, 1989); claim 13 over Hogan, Kelley, and Prince (US 7,922,031 Bl, iss. Apr. 12, 2011); and claim 24 over Hogan, Kelley, and Rivera (US 2008/0147151 Al, pub. June 19, 2008). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2015-005505 Application 13/828,033 THE INVENTION Appellant’s invention is an insulating sleeve type holder for a beverage container. Spec. 14. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A beverage container holder, comprising: an insulating sleeve including a first end opposite a second end, the first end defined by a first opening sized to receive a beverage container and the second end defined by a second opening and a third opening separated by a connecting tab to prevent the beverage container from passing through the insulating sleeve; a lining affixed to an internal surface of the sleeve along a first longitudinal seam and a diametrically opposite second longitudinal seam each extending from and between the first end and the second end so that the beverage container is collapsible about the first longitudinal seam and the second longitudinal seam and a first enclosed pocket and a second enclosed pocket is formed between the sleeve and the lining; and at least one insert positioned within both the first pocket and the second pocket and including at least one sealed compartment containing refreezable material. OPINION Indefiniteness under 35 U.S.C. § 112, Second Paragraph Claim 1 The Examiner maintains that the following limitation of claim 1 is indefinite because it is unclear how “at least one insert” can be positioned within both the first and second pocket, rather than each of the pockets. at least one insert positioned within both the first pocket and the second pocket and including at least one sealed compartment containing refreezable material. Final Action 2; Claims App; Ans. 2—3. 2 Appeal 2015-005505 Application 13/828,033 In response, Appellant argues, in conclusory fashion, that claim 1 is definite as understood in light of the Specification. Appeal Br. 6 (citing Spec. 138). The PTO can properly reject a claim as indefinite if the claim is ambiguous, vague, incoherent, opaque, or otherwise unclear. In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014). The test for definiteness under 35 U.S.C. § 112, is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). During patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed. See In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). Careful and straightforward claim drafting by prosecuting attorneys and agents, and rigorous application by examiners of the statutory standard to particularly point out and distinctly claim the subject matter regarded to be the invention, see 35 U.S.C. § 112,12 (2000), serve an important public notice function. Predicate Logic, Inc. v. Distributive Software, Inc., 544 F.3d 1298, 1300 (Fed. Cir. 2008). Section 112 places the burden of precise claim drafting on the applicant. See In re Morris, 111 F.3d 1048, 1056—57 (Fed. Cir. 1997). It is unclear to us how an insert can be positioned within “both” a first pocket and a second pocket where the two pockets are separated by first and second longitudinal seams that extend from the first end to the second end of the holder. We have reviewed paragraph 38 of the Specification cited by Appellant and are unable to find that it produces the requisite clarity required by statute. We sustain the indefmiteness rejection of claim 1. 3 Appeal 2015-005505 Application 13/828,033 Claim 21 Claim 21 is an independent claim. Claims App. The Examiner takes the position that claim 21 suffers from the same indefmiteness problem as claim 1. Final Action 2. Unlike claim 1, claim 21 recites a first insert and a second insert. Id. The first insert is positioned within the first pocket and the second insert is positioned within the second pocket. Id. The claim is sufficiently definite in regards to this matter. Accordingly, we do not sustain the indefmiteness rejection of claim 21. Claim 24 Claim 24 depends from claim 21 and adds the limitation: “wherein the first and second insert each comprise a plurality of sealed compartments, each compartment of the first and second insert is adjacent at least one other compartment separated by a seam, and each compartment of the first and second insert contains about 10 milliliters of refreezable material.” Claims App. The Examiner finds that the language directed to sealed compartments is confusing. Final Action 3. For purposes of the art rejection, the Examiner assumes that Appellant intended to state that “each compartment is separated by a seam.” Id. While Appellant’s claim language is perhaps somewhat awkward, we, nevertheless, think that a person of ordinary skill in the art would interpret the current claim language to have the same meaning assigned by the Examiner and, therefore, do not find the claim indefinite. We do not sustain the indefmiteness rejection of claim 24. 4 Appeal 2015-005505 Application 13/828,033 Unpatentability of Claims 1—5, 11, 12, 21—23, and 25 over Hogan and Kelley Appellants argue claims 1—5, 11, 12, 21—23, and 25 as a group. Appeal Br. 4—6. We select claim 21 as representative. See 37 C.F.R. §41.37(c)(l)(iv) (2016). The Examiner finds that Hogan teaches the invention substantially as claimed except for removable inserts and a lining attached to the sleeve. Final Action 5—6. The Examiner relies on Kelley as disclosing these features. Id. at 6. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time the invention was made to modify Hogan’s sleeve with inserts and a lining. Id. According to the Examiner, a person of ordinary skill in the art would have done this to keep the beverage cool. Id. In traversing all of the art rejections, Appellant’s sole argument is that Hogan teaches away from the claimed invention. Appeal Br. 5. Appellant argues that Hogan teaches the need to reduce the amount of cutting and sewing or gluing necessary to manufacture the item. Id.', Reply Br. 2. Appellant argues that modifying Hogan with Kelley would increase the complexity and cost of Hogan. Id. Appellant’s argument is not persuasive. A reference does not teach away if it merely discloses an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellant has not directed us to any language in Hogan that criticizes, discredits, or otherwise discourages investigation into using liners and/or inserts to cool a beverage. The fact that one purpose of Hogan is to provide a simplified construction is not dispositive here, particularly where Kelley teaches a way 5 Appeal 2015-005505 Application 13/828,033 to provide a cooling jacket for such a simplified design. “Common sense teaches . . . that familiar items may have obvious uses beyond their primary purposes.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). “A reference may be read for all that it teaches, including uses beyond its primary purpose.” In re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012). We are, therefore, not apprised of error and we sustain the Examiner’s unpatentability rejection under 35 U.S.C. § 103(a) of claims 1—5, 11, 12, 21— 23, and 25. Unpatentability of Claims 13 and 24 Appellant does not argue for the separate patentability of claims 13 and 24 apart from arguments presented with respect to claim 1 which we have previously considered and found unpersuasive. Appeal Br. 5. We sustain the unpatentability rejection under 35 U.S.C. § 103(a) of claim 13. DECISION The decision of the Examiner to reject claim 1 as indefinite is affirmed. The decision of the Examiner to reject claims 21 and 24 as indefinite is reversed. The decision of the Examiner to reject claims 1—5, 11—13 and 21—25 as unpatentable under 35 U.S.C. § 103(a) 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)(l)(iv). AFFIRMED 6 Copy with citationCopy as parenthetical citation