Ex Parte Prchal

Patent Trial and Appeal Board

Mar 21, 2017

13828033 (P.T.A.B. Mar. 21, 2017)

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