Ex Parte Setton

Board of Patent Appeals and Interferences

Aug 18, 2010

10926109 (B.P.A.I. Aug. 18, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DAVID SETTON
____________________

Appeal 2009-007171
Application 10/926,109
Technology Center 3700
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Before JOHN C. KERINS, STEFAN STAICOVICI, and KEN B.
BARRETT, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-007171
Application 10/926,109

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STATEMENT OF THE CASE
David Setton (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s decision rejecting claims 1-7. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
Appellant’s claimed invention pertains to beverage containers for
active sports use where the reservoir is pre-filled with a beverage
concentrate. Spec. 2, 3. Claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A method for forming a personal hydration device which
includes carrier means for being carried by a user and a carcass
attached to the carrier means wherein the carcass is designed to
enclose a substantial majority of a reservoir and further wherein
the reservoir is designed to store a beverage and to facilitate
drinking of the beverage by the user while the reservoir is
carried within the carcass of the personal hydration device, the
method comprising:
forming a body of the reservoir in a shape which is
adapted for use in conjunction with the personal hydration
device;
filling the body with a beverage concentrate;
sealing the beverage concentrate within the body in such
a manner that access to the beverage concentrate within the
body evidences breaking of the seal; and
placing the sealed reservoir within the carcass of the
personal hydration device.

Appeal 2009-007171
Application 10/926,109

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THE REJECTIONS
The following Examiner’s rejections are before us for review:
1. Claims 1-7 are rejected under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over claims 1-7 of
U.S. Patent No. 6,837,026; and
2. Claims 1-7 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tripp (GB 2 249 775 A, published May 20, 1992) and
Hechler (US 4,095,726, issued June 20, 1978).

OPINION
1. Claims 1-7 are rejected under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over claims 1-7 of
U.S. Patent No. 6,837,026
In the section of the Appeal Brief entitled “Grounds for Rejection to
Be Reviewed on Appeal,” Appellant identifies the Section 103 obviousness
rejection as the “one main ground of rejection,” but does not list the
obviousness-type double patenting rejection. App. Br. 10; see also id. at 1,
5. The Examiner made the double patenting rejection in the Final Rejection
and maintains that rejection in the Answer. Final Rej. mailed March 15,
2006, at 2; Ans. 2-3. Appellant does not present any arguments rebutting
this rejection. As such, the Appellant has waived any argument of error, and
we summarily sustain the rejection of claims 1-7 under the judicially created
doctrine of obviousness-type double patenting as being unpatentable over
claims 1-7 of U.S. Patent No. 6,837,026.

Appeal 2009-007171
Application 10/926,109

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2. Claims 1-7 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tripp and Hechler
Claim 1, with emphasis added, recites the step of “filling the body [of
the reservoir] with a beverage concentrate.” The Examiner found that Tripp
discloses “filling the reservoir with a beverage.” Ans. 4. The Examiner’s
explanation of the ground of rejection does not explicitly mention a
“concentrate.” Id. at 4-5. Appellant asserts that “[t]he Examiner has cited
no teaching or suggestion of the filling of a reservoir with beverage
concentrate.” App. Br. 11. In response, the Examiner maintains that
“concentrate” is a relative term since any liquid of any concentration, such
as milk or juice, can be further watered down, and therefore “the beverage of
Tripp is a ‘concentrate’ relative a beverage that is further watered down.”
Ans. 5.
The Examiner’s position is, effectively, that every beverage is a
beverage concentrate. This is an unreasonably broad construction because it
reads the term “concentrate” out of the claim. Further, one of ordinary skill
in the art reading the claim in light of the Specification would understand
that a beverage and a beverage concentrate are different – a beverage is a
beverage concentrate plus a reconstituting liquid. See, e.g., Claim 1 (the
preamble referring to a reservoir “designed to store a beverage and to
facilitate drinking of the beverage” while the body recites filling the
reservoir body with a beverage concentrate); Spec. 3-4 (referring to the
consumption of a beverage made from a beverage concentrate); id. at 7 (the
reservoir is preferably filled with the proper amount of concentrate for
mixing with a quantity of water equal to the liquid capacity of the reservoir);
see also App. Br., Evid. Appendix (MERRIAM-WEBSTER’S ONLINE
DICTIONARY defining “concentrate” as: “a food reduced in bulk by
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Application 10/926,109

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elimination of fluid ”). The Examiner did not
find that either cited reference discloses a “concentrate” within the meaning
of Appellant’s claims.
The Examiner also concludes that it would have been obvious, from
Tripp’s disclosure of filling the hydration reservoir with a beverage, to fill
the reservoir with a concentrate. Ans. 5-6. This conclusion is based on the
Examiner’s finding that “[t]he packaging of beverages in both concentrate
and non-concentrate forms is notoriously well known in the packaging field
and the use of a beverage in any form would teach one to package a
concentrate as well.” Id. The Examiner’s findings might support a
conclusion that it would have been obvious to package a concentrate and a
non-concentrate in their known respective containers (e.g., a twelve-ounce
can of juice concentrate and a gallon jug of a non-concentrate beverage, or a
packet of powdered sports drink concentrate and a bottle of sports drink
ready for consumption). However, the Examiner has failed to adequately
explain, with rational underpinning, why it would have been obvious to
package a beverage concentrate in Tripp’s reservoir designed for a beverage
in non-concentrate form. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
In light of the above, we cannot sustain the Examiner’s rejection of
independent claim 1, or of claims 2-7 which depend therefrom, as obvious
over Tripp and Hechler.

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Application 10/926,109

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CONCLUSIONS
Appellant has not shown that the Examiner erred in rejecting claims
1-7 under the judicially created doctrine of obviousness-type double
patenting, and that rejection is affirmed.
The Examiner has not shown that the subject matter of Appellant’s
claims 1-7 would have been obvious over Tripp and Hechler, and therefore
the Section 103 rejection is reversed.

DECISION
The decision of the Examiner to reject claims 1-7 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

mls

JAMES D IVEY
3025 TOTTERDELL STREET
OAKLAND, CA 94611-1742