Ex Parte Spigelman et al

Patent Trial and Appeal Board

Jun 12, 2013

11762499 (P.T.A.B. Jun. 12, 2013)

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.
11/762,499 06/13/2007 Alan Spigelman 15059-000001 1903
27572 7590 06/13/2013
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
EXAMINER
MAI, TRI M
ART UNIT PAPER NUMBER
3781
MAIL DATE DELIVERY MODE
06/13/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ALAN SPIGELMAN and RONALD J. GOLDSTONE
____________

Appeal 2011-005565
Application 11/762,499
Technology Center 3700
____________

Before WILLIAM V. SAINDON, SCOTT A. DANIELS, and JILL D.
HILL, Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Alan Spigelman and Ronald J. Goldstone (Appellants) appeal under
35 U.S.C. § 134 from a final rejection of claims 1-15. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to “a beverage container that may
be personalized to uniquely associate the beverage container with a
particular person. A method for marking a beverage container is also
provided.” Spec, para. [0001]. Claim 1 illustrates some of the subject
matter on appeal and is reproduced below.
1. A method for personally identifying a disposable drink
container, the method comprising:
providing a plastic bottle having an externally threaded
spout and a sidewall, the sidewall including an array of at least
sixteen raised projections; and
pressing on a plurality of the raised projections to
substantially permanently deform the plurality of raised
projections in a pattern that corresponds to at least one
alphanumeric character.
EVIDENCE
The Examiner relies on the following evidence:
Crosby US 3,365,068 Jan. 23, 1968
Avery US 3,965,598 Jun. 20, 1976
Miller US 4,019,638 Apr. 26, 1977
Harjes US 6,206,229 B1 Mar. 27, 2001
Ma US 2003/0010744 A1 Jan. 16, 2003
Dischler US 6,564,934 B1 May 20, 2003
Headen US 2004/0026355 A1 Feb. 12, 2004

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REJECTIONS
Claims 1-7 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Harjes and Avery (Ans. 4); claims 1-7 stand rejected under 35 U.S.C. §
103(a) as unpatentable over Ma, Avery, and Dischler or Headen (Ans. 6);
claims 8-15 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Ma
and Miller or Crosby, or in the alternative, over Ma and Miller or Crosby,
and Dischler or Headen (Ans. 7).1
ANALYSIS
Rejection of Claims 1-7 over Harjes and Avery
Claim 1
The Examiner finds that Harjes teaches a patch with plural depressible
buttons 5 that serve as visual indicators, and that the patch can be applied to
water bottles. Ans. 4 (quoting Harjes, col. 2, ll. 44-46). The Examiner
therefore finds that Harjes teaches all of the limitations of claim 1 except for
the bottle being plastic and there being at least 16 raised projections. The
Examiner finds that Avery teaches an identification card that is printed or
written on gummed paper (or on an adhesive-backed sticker), which can be
affixed to objects. Ans. 4-5 (citing Avery, col. 1, ll. 15-16 and col. 2, ll. 60-
65). The Examiner also finds that Avery teaches plural projections that can
be deformed in a pattern corresponding to an alphanumeric character. Ans.
5 (citing Avery, col. 4, ll. 8-11). The Examiner concludes that it would have
been obvious to one of ordinary skill in the art at the time of the invention to
provide a patch with at least 16 projections on Harjes’ bottle to facilitate
deformation of the projections corresponding to at least one alphanumeric

1 Claims 16-20 have been indicated as allowed. Fin. Rej. 3.
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character to provide visual identification. Ans. 5. The Examiner further
finds that Harjes teaches that depressible buttons can be used as visual
indicators and Avery teaches deformation of a plurality of projections
providing alphanumeric information, and that one skilled in the art would
understand that, instead of using depressible buttons to provide information
regarding a number of times a container has been used, such depressible
buttons can be used to convey information via alphanumeric characters as
taught by Avery. Ans. 9.
Appellants argue that Avery is non-analogous art because Avery is
directed to a luggage tag rather than a beverage container, which is not in the
same field of endeavor as the inventor’s. App. Br. 9-10. Appellants also
argue that, because Avery teaches formation of a luggage tag via removal of
a cover from a base, it is not reasonably pertinent to the problem with which
the inventors were involved, which Appellants define as “the non-
destructive marking of a disposable bottle.” App. Br. 10; Reply Br. 2-3.
The Examiner appears to be defining the problem with which the
inventors were involved more broadly as the marking of an article to convey
information about that article, which is addressed by both Harjes and Avery.
Ans. 9. We decline to limit the problem with which the inventors were
involved to the narrow problem defined by the Appellants. Further, we
agree with the Examiner’s finding that Avery is directed to visual
identification of objects other than luggage. Ans. 9. Although Avery
discusses use of its invention as a luggage tag, it is more broadly directed to
identification indicia for use with objects. See Avery, col. 2, ll. 53-58. We
therefore are not persuaded by Appellants’ arguments regarding Harjes and
Avery being non-analogous art.
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Appellants also argue that Avery does not teach “pressing on a
plurality of raised . . . projections,” “but rather the removal of a coating.”
App. Br. 10-11; Reply Br. 3-4. We note that the Examiner found pressing
on a raised projection to be taught by Harjes rather than Avery. Ans. 9.
Appellants further argue that the Examiner failed to provide an
articulated reasoning with rational underpinning to combine Harjes with
Avery, because “the affixing of the luggage tag of Avery to the container of
Harjes would not provide a plastic bottle having a sidewall that includes an
array of projections, let alone an array of deformable projections.” App. Br.
11. We note, however, that the Examiner’s articulated reasoning was that
one skilled in the art would understand that, instead of using Harjes’
depressible buttons to provide information regarding a number of times a
container has been used, an array of Harjes’ depressible buttons can be used
to convey information via alphanumeric characters as taught by Avery.
Absent any explanation of why Avery would not teach using Harjes’
depressible buttons to convey information via alphanumeric characters, we
are not persuaded that the Examiner’s articulated reasoning lacks a rational
underpinning.
For the reasons set forth above, we sustain the rejection of claim 1
over Harjes and Avery. Appellants do not advance any separate argument
regarding claims 2 and 7. We therefore sustain the rejection of claims 2 and
7, which we select to fall with claim 1.
Claim 3
Claim 3 recites the array of projections being “segregated into a
plurality of sub-arrays” that are spaced apart. The Examiner concludes that
segregation into sub-arrays would have been obvious to one of ordinary skill
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in the art for writing alphanumeric characters, because writing alphanumeric
characters normally comprises separating spaces, making it common sense
to provide separating spaces in the combination of Harjes and Avery to
separate different letters. Ans. 5. Appellants merely state that neither Harjes
nor Avery employs sub-arrays. See App. Br. 12. This does not address the
Examiner’s articulated rejection, however, and we therefore sustain the
rejection of claim 3.
Claims 4-6
Claims 4-6 are directed to the extension of the array around the
perimeter of the bottle sidewall. The Examiner concludes that varying the
amount of bottle perimeter covered by the array would have been obvious to
one of ordinary skill in the art to provide the desired size necessary for the
information to be conveyed. Ans. 5. Appellants again merely state what the
references teach but do not address the Examiner’s obviousness conclusion,
and we therefore sustain the rejection of claims 4-6.
Rejection of Claims 1-7 over Ma, Avery, and Dischler or Headen
The Examiner finds that Ma teaches all of the claim limitations except
for “pressing on a plurality of the raised projections to substantially
permanently deform” the projections in a pattern corresponding to an
alphanumeric character. Ans. 6. The Examiner finds that Avery teaches
providing raised projections and the deformation thereof in a pattern
corresponding to an alphanumeric character, and that Dischler and Headen
teach protrusions being pressed for permanent deformation. Id. The
Examiner concludes that “to use the arrays of Ma for alphanumeric
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messages would have been obvious by pressing on the protrusions as taught
by either Dischler or Headen.” Id.
Appellants argue that the Examiner failed to provide an articulated
reasoning with rational underpinning for combining Ma with Avery. App.
Br. 19. The only reasoning provided by the Examiner is that “one of
ordinary skill in the art would recognize the concept from Avery where the
plurality of deformable projections can be used to convey alphanumeric
characters.” Ans. 11.
Even if it would have been obvious to manipulate Ma’s projections to
create alphanumeric characters as taught by Avery, the Examiner has not
explained how Ma’s protrusions would be permanently deformed by
pressing as taught by Dischler and Headen. The protrusions of Ma are
designed to not be permanently deformable upon pressing. While there may
be some reason to modify this feature of Ma, the Examiner has not explained
how Dischler or Headen demonstrate as much. Dischler and Headen simply
show deformable projections. Just because deformable projections are
known in the art does not provide an explanation as to why it would have
been obvious to modify a given projection to be deformable. We therefore
do not sustain this rejection.
Rejection of Claims 8-15
The Examiner finds that Ma teaches all of the limitations of claim 8,
except for “a male protrusion that extends from the top member away from
the threaded spout, the male protrusion being configured to be used to
permanently deform individual ones of the raised projections.” Ans. 7. We
note that “the top member” is part of a lid that is removably coupled to a cap
that is threaded to a spout of a drink container. Clms. App’x. The Examiner
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finds that Miller and Crosby each teach providing a closure with a
protrusion. Ans. 7. The Examiner concludes that it would have been
obvious to one of ordinary skill in the art at the time of the invention to
provide the protrusion of either Miller or Crosby to enable easy storage of
the container. Ans. 8.
Appellants argue that Ma, Crosby, and Miller disclose only
conventional bottle caps, rather than the lid recited in claim 8. App. Br. 23;
Reply Br. 8. Indeed, the disclosures of Crosby and Miller that provide a
protrusion are caps that thread to the bottle spout rather than lids removably
coupled to caps. See Crosby, Figs. 1-4; Miller, Figs. 1-3. The Examiner
does not address Appellants’ arguments regarding the references failing to
teach a lid with a protrusion thereon. We therefore do not sustain the
rejection of claims 8-15.
DECISION
We AFFIRM the rejection of claims 1-7 under 35 U.S.C. § 103(a) as
unpatentable over Harjes and Avery.
We REVERSE the rejection of claims 1-7 under 35 U.S.C. § 103(a) as
unpatentable over Ma, Avery, and Dischler or Headen.
We REVERSE the rejection of claims 8-15 under 35 U.S.C. § 103(a)
as unpatentable over Ma and Miller or Crosby, or in the alternative over Ma
and Miller or Crosby, and Dischler or Headen.
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).
AFFIRMED-IN-PART

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