Ex Parte Schramm

Patent Trial and Appeal Board

Nov 22, 2017

13234265 (P.T.A.B. Nov. 22, 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.
13/234,265 09/16/2011 Michael R. Schramm MRS-030U 8393
52966 7590
S chramm-Personal-ACT
Michael R. Schramm
350 West
2000 South
Perry, UT 84302
EXAMINER
THOMAS, KAREEN KAY
ART UNIT PAPER NUMBER
3728
NOTIFICATION DATE DELIVERY MODE
11/27/2017 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):
mikeschramm @ besstek. net
mschramm @juneaubiosciences.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL R. SCHRAMM
Appeal 2016-005611
Application 13/234,265
Technology Center 3700
Before CHARLES N. GREENHUT, LISA M. GUIJT, and
ERIC C. JESCHKE, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’
decision1 rejecting claims 1—4, 7-9, 11, 13-16, 19, 20, 22, 24-28, 31, and
38-43. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appeal is taken from the Final Office Action dated February 26, 2015
(“Final Act.”).
Appeal 2016-005611
Application 13/234,265
CLAIMED SUBJECT MATTER
Claims 1, 7, 13, 19, 25, 38, and 41 are the independent claims on
appeal. Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A container having an inner cavity and a funnel extending
into said inner cavity, wherein said container defines a single non­
assembly discrete integral structural member.
REJECTIONS2’3
I. Claims 1-3, 7, 8, 11, 25-27, and 38^10 stand rejected under
35 U.S.C. § 102(b) as anticipated by Schramm (US Re. 36,131; reissued
Mar. 9, 1999).
II. Claims 13, 14, and 16 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Schramm and LaFata (US 6,135,842; issued Oct. 24,
2000).
III. Claim 31 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Schramm.
IV. Claims 4, 9, 19, 20, 22, 24, 28, and 41—434 stand rejected under
2 The objection to claims 13-18, 41-43, and 45 have been withdrawn. Final
Act. 2; Adv. Act. 2.
3 The Examiner objects to claims 5, 6, 10, 12, 17, 18, 21, 23, 29, 30, 44, and
45 as being dependent on a rejected base claim, but indicates these claims
are allowable if rewritten, in independent form, including all of the
limitations of the base claim and any intervening claims. Final Act. 7.
4 Although omitted from the heading, claims 41—43 are rejected in the body
of this rejection in the Final Office Action. See Final Act. 5-6.
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35 U.S.C. § 103(a) as unpatentable over Schramm and Gaeta (US 5,341,948;
issued Aug. 30, 1994).
V. Claim 15 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Schramm, LaFata, and Gaeta.
ANALYSIS5
Rejection I
Independent claim 1 and dependent 3
Regarding independent claim 1, the Examiner finds, inter alia, that
Schramm’s bottle 7 is a container with an inner cavity, and that Schramm’s
funnel 8 extends into the inner cavity. Final Act. 2 (citing Schramm Fig. 1);
see also Schramm 2:33-35. The Examiner also finds that because
Schramm’s bottle 7 “is an integral structural member,” Schramm teaches a
container defining “a single non-assembly discrete integral structural
member,” as claimed. Id. (citing Schramm 1:35-38, Fig. 2). In other words,
the Examiner determines that notwithstanding Schramm’s disclosure of
funnel 8 as a separate component that is inserted into bottle 7, Schramm’s
bottle 7 (i.e., container, without a funnel) does not require assembly (i.e., is
“non-assembly”) (Ans. 7), and that Schramm’s bottle 7 is also a single
member, a discrete member, an integral member, and a structural member,
5 There are no standing rejections of any pending claims under 35 U.S.C.
§112, first and/or second paragraphs, and therefore, Appellant’s arguments
addressing a lack of written description and indefmiteness are moot. See
Appeal Br. 5-6; Final Act. 2-7; Adv. Act. 2; Ans. 2-6, 7.
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Application 13/234,265
as claimed. Ans. 7.
Appellant argues that because claim 1 recites “[a] container having an
inner cavity and a funnel extending into said inner cavity,” the funnel must
be included as an element defined by the container and thus subject to the
limitation “said container defines a single non-assembly discrete integral
structural member,” as claimed. Reply Br. 2; see also Appeal Br. 6-7. In
other words, Appellant submits that, to satisfy claim 1, Schramm’s
container, including the funnel, must be a “non-assembly,” however, “funnel
8 and ring 9 of Schramm are adapted to be disassembled and reassembled.”
Appeal Br. 7; see also id. at 11-13. Similarly, Appellant maintains that
claim 1 requires that “the funnel is an integral feature of the container.”
Reply Br. 2.
When claim terminology is construed in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language “in
light of the specification as it would be interpreted by one of ordinary skill in
the art.” In re Am. Acad. ofSci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004). We must be careful not to read a particular embodiment appearing in
the written description into the claim if the claim language is broader than
the embodiment. See Superguide Corp. v. DirecTV Enterprises, Inc., 358
F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language
may be aided by the explanations contained in the written description, it is
important not to import into a claim limitations that are not a part of the
claim. For example, a particular embodiment appearing in the written
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description may not be read into a claim when the claim language is broader
than the embodiment.”). The challenge is to interpret claims in view of the
specification without unnecessarily importing limitations from the
specification into the claims. See E-Pass Techs., Inc. v. 3Com Corp., 343
F.3d 1364, 1369 (Fed. Cir. 2003).
The Specification discloses a first embodiment as follows:
Spill resistant container 20 defines a generally cylindrical shaped
preferably one-piece plastic container defining an inner cavity
and having a side portion 22, a bottom portion 24, a floor 26, a
stand 28, a trough 30, a top portion 32, a neck 34, threads 36, a
seal faying surface 38, a bowl 40, a container opening 42, a
funnel, a funnel upper opening 45, and a funnel lower opening
48.
Spec. 19 (emphasis added); see also id. (“spill resistant container 20
preferably defines a blow molded plastic container”). The Specification also
discloses “an alternate embodiment” wherein “[the] multi-piece structure [of
the spill resistant container apparatus] preferably defines a spill resistant
container comprising a liquid-tight bonded assembly of non-destructively
inseparable discrete pieces.” Id. ^[ 22 (emphasis added).
We determine, consistent with the Specification, that the claim
language “[a] container having an inner cavity and a funnel” means that the
funnel is a feature of the container, as argued by Appellant. However, we
also determine that the claim language “wherein said container defines a . . .
member” means that the container must define some member (which is a
single, non-assembly, discrete, integral, structural member), but that this
wherein clause, as written, does not specify that the member defined by the
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container is the claimed container (which has a funnel). For example, the
descriptions in the Specification, as set forth supra, state that the structure
that is defined is the container. Claim 1 specifies that the structure defined
by the container is a member, and there are no further limitations recited in
claim 1 that define the member, other than that the member must be single,
non-assembly, discrete, integral and structural.* * * * * 6 Consequently, we do not
agree with Appellant’s argument that claim 1 requires the funnel to be a
single, non-assembly, discrete, integral, structural feature of the container,
rather, claim 1 reads on Schramm’s bottle 7 (i.e., the identified container),
which has an inner cavity and funnel 8 extending into the inner cavity,
regardless of whether Schramm’s funnel 8 is a separate structure that is
inserted into Schramm’s bottle 7. The member defined by Schramm’s
container may be Schramm’s bottle 7, which is a single, non-assembly,
discrete, integral, structural member. See Schramm 1:34-38 (“It is intended
that the bottle will be made by blow molding.”). Appellant’s argument is
not commensurate in scope with the language employed in claim 1.
Additionally, to further clarify the language of claim 1, and regarding
the claim term “integral,” there is no express definition provided in the
Specification; rather, the claim term “integral” appears only once in the
6 Notably, claim 16 recites, in relevant part, “wherein said container defines
at least one of a single non-assembly discrete structural member container
and a non-destructively inseparable container.” However, similar to the
reference in claim 1 to a member, the container defined by the container (“a
. . . container”) lacks antecedent basis if intended to modify the container
recited in claim 13, from which claim 16 depends.
6
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Application 13/234,265
Specification, as follows: “The present invention relates to spill resistant
containers and more especially relating to unitary integral single-structure
non-destructively inseparable spill resistant bubble solution containers.”
Spec. ^ 2 (emphasis added). The plain and ordinary meaning of “integral” is
“of, or relating to, or serving to form a whole : essential for completeness:
organically joined or linked. Webster’s Third New Int’l Dictionary
1173 (1993). Thus, we determine that “integral” is not restricted to a single
or one-piece construction. Notwithstanding, we determine that the claim
term “single . . . member” means the container defines a one-piece member
(whatever the member is), and not a member made from more than a single
piece. See id. at 2123 (“single” means “consisting of or having only one
part, feature, or portion, as opposed to or contrasted with double or
complex”).
Accordingly, we sustain the Examiner’s rejection of independent
claim 1. Appellant chose not to present separate argument for claim 3,
which depends from claim 1. Appeal Br. 9. Therefore, for the reasons
stated supra, we also sustain the Examiner’s rejection of claim 3.
Independent claim 7 and dependent claims 2, 8, and 11
Claim 2, which depends from independent claim 1, recites, in relevant
part, “wherein when said container contains a non-gaseous fluid and is
oriented in any orientation, at least a portion of said non-gaseous fluid is
prevented from running out of said container.” Appeal Br. 24 (Claims
App.). Independent claim 7 recites the same limitation. See id. The
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Examiner finds that Schramm’s Figure 6 depicts this limitation for
Schramm’s container 7. Final Act. 2-3; Ans. 2-3.
Appellant characterizes the Examiner’s Answer as presenting new
reasoning, and argues that although Schramm’s bottle 7 (i.e., container)
“may be an integral structural member, container 7 absolutely does not
prevent non-gaseous fluid from running out of container 7 when container 7
contains a non-gaseous fluid and is oriented in any orientation;” rather,
funnel 8 and threaded collar 9, in combination with container 7, prevent such
running out. Reply Br. 4.
Contrary to Appellant’s argument, claims 2 and 7 do not require the
container itself to prevent the non-gaseous fluid from running out of the
container. Rather, claims 2 and 7 require, with emphasis added, that “when
the container contains a non-gaseous fluid and is oriented in any
orientation . . .fluid is prevented from running out of said container” without
specifying how, or by what, that prevention occurs. Claims 2 and 7 do not
exclude other elements, such as a funnel, from being involved in preventing
at least a portion of the non-gaseous fluid from running out of the container
in any orientation of the container. Schramm expressly discloses that “when
the container is oriented in any of an infinite variations . . . , it will. . .
prevent the spillage of the solution.” Schramm 2:26-29. Thus, Appellant’s
argument does not apprise us of error in the Examiner’s findings.
Appellant does not present separate arguments for the patentability of
claims 8 and 11, which depend from claim 7, and therefore, we are also not
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Application 13/234,265
apprised of error in the Examiner’s findings with respect to claims 8 and 11.
Appeal Br. 8.
Accordingly, we sustain the Examiner’s rejection of claims 2, 7, 8,
and 11.
Independent claim 25 and dependent claims 26 and 27
Independent claim 25 recites, in relevant part, “[a] container apparatus
comprising a container . . . and an accessible bubble creation device . . .,
wherein said bubble creation device does not extend beyond an outer surface
of said container.” Appeal Br. 26 (Claims App.).
Regarding claim 25, the Examiner applies the findings from Schramm
with respect to claim 1 supra, and further determines that tapered portion 14
of Schramm’s wand 11, “which creates the bubbles” (Ans. 8), does not
extend beyond an outer surface of bottle 8 (Final Act. 3). See also Adv. Act.
2 (“[Schramm’s] bubble creation device has a lower portion that creates the
bubbles that does not extend beyond an outer surface of the container.”)
Appellant argues that “in Schramm lid 10 cannot be threaded onto
container 7 while wand 11 is positioned in container 7 expressly because
wand 11 protrudes beyond the outer surface of container 7.” Appeal Br. 8-9
(citing Appellant’s Appendix A-l); see also Reply Br. 4-5 (arguing that
Schramm’s bubble wand 11 “extend[s] beyond an outer surface of the
container of Schramm”).7
7 Appellant’s “teaching away” argument is not relevant to the Examiner’s
rejection. See Appeal Br. 14; Celeritas Techs., Ltd. v. Rockwell Int’l Corp.,
150 F.3d 1354, 1361 (Fed. Cir. 1998) (“[T]he question whether a reference
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Application 13/234,265
Although the Specification does not expressly define the claim term
“bubble creation device” as the entire “bubble creation wand 60,” we are
persuaded by Appellant’s argument that the Examiner’s interpretation of the
claim term “bubble creation device” to include only a portion of Schramm’s
wand is unreasonable. The Specification implies that the claim term “bubble
creation device,” in the context of claim 25, means an entire bubble device.
See, e.g., Spec. ^ 19 (“Bubble creation wand 60 defines a generally
elongated wand preferably plastic injection molded wand having a handle
62, a stem 64, and at least one bubble ring 66.”); see also id., Fig. 2
(depicting the entire wand, including wand handle 62, wand stem 64, and
wand ring 66 within container 20); cf. Appeal Br. 27 (Claims App.) (claim
40: “wherein said bubble creation device defines a bubble creation wand
having at least one bubble ring.”).
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 25, and claims 26 and 27 depending therefrom.
Independent claim 38 and dependent claims 39 and 40
Independent claim 38 recites, in relevant part, “a bubble creation
device and bubble creation solution substantially hermetically sealed within
said container.” Appeal Br. 26 (Claims App.) (emphasis added).
The Examiner finds, inter alia, that “hermetic[] sealing takes place
because of the threading” of Schramm’s threaded cap 10 onto bottle 7. Final
Act. 4.
‘teaches away’ from the invention is inapplicable to an anticipation
analysis.”).
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Appellant argues that assuming arguendo that Schramm’s lid 10
hermetically seals bubble creation solution within Schramm’s container 7,
“it is inherently impossible for Schramm to hermitically seal both bubble
creation solution and bubble wand 11 of Schramm within container 7 of
Schramm,” because Schramm’s wand 11 extends beyond an outer surface of
Schramm’s container 7.” Appeal Br. 10-11, 14-15; see also Reply Br. 6-8.
We are persuaded by Appellant’s argument for the reasons stated
supra (i.e., Schramm fails to support a finding that when Schramm’s
threaded cap 10 engages bottle 7, Schramm’s bubble creation device—
Schramm’s entire wand 11—may fit within bottle 8; rather, Schramm
discloses that Schramm’s bubble creation device extends beyond bottle 7).
See, e.g., Schramm, Fig. 1.
Accordingly, we cannot sustain the Examiner’s rejection of
independent claim 38, and claims 39 and 40 depending therefrom.
Rejection II
Independent claim 13 recites, in relevant part, “[a] container apparatus
comprising a container having a seal adhered thereto such that at least one
of a bubble creation device and bubble creation solution is substantially
watertightly sealed within said container, wherein said container includes
... a funnel extending into [an inner cavity of the container].” Appeal Br.
25 (Claims App.) (emphasis added).
Regarding independent claim 13, the Examiner finds, inter alia, that
Schramm generally discloses the claimed container apparatus, including
bottle 7 (i.e., the claimed container), threaded retaining ring 9 (i.e., the
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claimed seal) attached to bottle 7 (i.e., the claimed container), except that
Schramm does not disclose the seal adhered to the container, as claimed.
Final Act. 4; see also Ans. 9 (“Schramm is watertight via threaded ring (9)
and threaded cap (10)”). The Examiner relies on LaFata for disclosing a seal
adhered to the container. Id. (citing LaFata 1:26-39). The Examiner
reasons that it would have been obvious “to modify Schramm, by employing
the seal adhered to the container, in view of the teachings of LaFata ... to
have an improved air tight seal.” Id. The Examiner further reasons that
“different seals are known in the art and it would be obvious to employ
different seals for different improvement benefits.” Ans. 10. The Examiner
determines that “adhering of the seal in LaFata simply adds extra security
just in case there is a small chance water can somehow seep through the
device.” Id.
Appellant argues that Schramm’s threaded ring 9 “is not a seal” and
“cannot make the container water tight.” Appeal Br. 16; see also Reply Br.
13. Schramm discloses that “threaded retaining ring 9 keeps the funnel in
place” and that “threaded cap 10 can be used in place of the retaining ring,
for storage, to eliminate evaporation of the liquid and to prevent foreign
matter from entering the container.” Schramm 3:2-5. Thus, we determine
that a preponderance of the evidence fails to support the Examiner’s finding
that Schramm’s threaded cap provides the claimed seal.
Appellant correctly argues that the Examiner’s proposed modification
of Schramm, in view of LaFata, is “inoperable.” Appeal Br. 16. We are
persuaded that claim 13 requires “a container having a seal adhered thereto”
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and also “<2 funnel extending into [an inner cavity of the container],” and the
Examiner has not explained how Schramm’s bottle 7 can have LaFata’s seal
50 adhered thereto, thereby closing mouth 19 of bottle 7, and also receive
funnel 8, which is “inserted in the bottle” such that “lower edge 13 of the
funnel 8 is in the circular area or mouth 19 of the bottle neck.” Schramm
2:50-54, Fig. 2.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 13, and claims 14 and 16 depending therefrom.
Rejection III
Claim 31 depends from independent claim 25. The Examiner’s
reliance on the obviousness of “forming in one piece an article which has
formerly been formed in two pieces” does not cure the deficiencies in the
Examiner’s findings with respect to Schramm as applied to claim 25 as set
forth supra, and therefore, for the same reasons stated supra, we also do not
sustain the Examiner’s rejection of claim 31. Final Act. 5 (citations
omitted).
Rejection IV
Dependent claims 4 and 9
Claims 4 and 9, which depend from independent claims 1 and 7, recite
“wherein said container includes a frangible seal adhered to said container to
so as to substantially seal said inner cavity from the exterior of said
container.” Appeal Br. 24, 25.
The Examiner relies on Gaeta for disclosing a container with a
frangible seal adhered to the container, and reasons that it would have been
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obvious to “employ such a seal... to better seal the contents within the
container and to make the container tamper evident when opened.” Final
Act. 5. Gaeta’s seal is similar to LaFata’s seal, and claim 1 requires a funnel
to extend into the inner cavity of the container (i.e., Schramm’s bottle 7).
Therefore, we determine the Examiner erred for the same reasons stated with
respect to claim 13.
Notably, independent claim 7 is different in scope than independent
claim 1 discussed supra with respect to claim 4, because claim 7 does not
recite a funnel, but instead requires the container to prevent fluid from
running out of the container in any orientation, and arguably, Gaeta’s seal
may be employed to meet such a limitation if Schramm’s funnel is omitted
from the assembly. However, the Examiner has not proposed such a
modification, and a preponderance of the evidence does not support omitting
Schramm’s funnel for storage; Schramm merely discloses that although the
funnel is removable (i.e., may be inserted in the bottle), “[t]he optional
threaded cap 10 can be used in place of the retaining ring, for storage.”
Schramm 2:51, 3:2-5.
Accordingly, we do not sustain the Examiner’s rejection of claims 4
and 9.
Independent claims 19 and 41, and dependent claims 20, 22, 24, 42, and 43
Independent claims 19 and 41 recite limitations similar to claim 9, and
further recite “when said frangible seal is broken . . . said bubble creation
solution is prevented from running out of said container,” wherein Gaeta’s
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seal could not be employed to prevent the fluid from running out of the
container, as discussed supra.
Accordingly, we do not sustain the Examiner’s rejection of dependent
claims 4 and 9, independent claims 19 and 41, and claims 20, 22, 24, 42, and
43 depending therefrom.
Dependent claim 28
Claim 28 depends from independent claim 25. The Examiner’s
reliance on Gaeta for disclosing a frangible seal does not cure the
deficiencies in the Examiner’s findings with respect to Schramm as applied
to claim 25 as set forth supra, and therefore, for the same reasons stated
supra, we also do not sustain the Examiner’s rejection of claim 31. Final
Act. 5-6 (citations omitted).
Rejection V
Claim 15 depends from independent claim 13. The Examiner’s
reliance on Gaeta does not cure the deficiencies in the Examiner’s findings
with respect to Schramm and LaFata as applied to claim 13 as set forth
supra, and therefore, for the same reasons stated supra, we also do not
sustain the Examiner’s rejection of claim 15. Final Act. 7.
DECISION
The Examiner’s decision to reject claims 1-3, 7, 8, 11, and 27 is
sustained.
The Examiner’s decision to reject claims 4, 9, 13-16, 19, 20, 22, 24-
28, 31, and 38^13 is reversed.
No time period for taking any subsequent action in connection with
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this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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