Ex Parte Suzuki

Patent Trials and Appeals Board

Jun 11, 2019

14113981 - (D) (P.T.A.B. Jun. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/113,981 10/25/2013 Y oshihiro Suzuki
97379 7590 06/13/2019
Rankin, Hill & Clark LLP
23755 Lorain Road, Suite 200
North Olmsted, OH 44070
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
PRZ-37425 1911
EXAMINER
SMALLEY, JAMES N
ART UNIT PAPER NUMBER
3733
NOTIFICATION DATE DELIVERY MODE
06/13/2019 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):
ishihara@rankinhill.com
97379@rankinhill.com
shea@rankinhill.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOSHIHIRO SUZUKI1
Appeal2018-007680
Application 14/113,981
Technology Center 3700
Before JOHN C. KERINS, DANIELS. SONG, and
MICHAEL L. HOELTER, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Office Action ("Final Act.") rejecting claims 15, 16, and 18-29 in the
present application. App. Br. 5. We have jurisdiction under 35 U.S.C.
§§ 6(b) and 134(a).
We AFFIRM.
1 Referred to as "Appellant" herein. The Appellant identifies the real party
in interest as FRESH CO., LTD. Appeal Brief ("App. Br.") 3.
Appeal2018-007680
Application 14/113,981
The claimed invention is directed to a bottle cap that houses a
powdered raw material. Abstract. Representative independent claim 15
reads as follows:
15. A bottle cap housing a housed material, the bottle cap
compnsmg:
an inner cylinder portion having a cylindrical housing
portion of which one end face is closed and the other end face is
open and which is inserted into an opening portion of the bottle;
an outer cylinder portion having an outer cylinder portion
body into which the housing portion is inserted, of which one
end portion is screwed into the inner cylinder portion and the
other end portion is inserted into the opening portion of the
bottle and which is screwed into the opening portion of the
bottle; and
a bottom lid portion which closes the opening of the
housing portion and is detachably fitted to an end portion of an
opening side,
wherein the end portion of the opening side of the
housing portion is projected from the other end portion of the
outer cylinder portion body,
wherein the housing portion is driven by screwing the
inner cylinder portion to an opening direction with respect to
the outer cylinder portion body, the bottom lid portion is pulled
out from the opening of the housing portion by the other end
portion of the outer cylinder portion body, and thus, the housed
material in the housing portion is dropped into the bottle,
wherein the housed material comprises powdered raw
material,
wherein using a multi-functional powder property
measuring instrument multitester, when the powdered raw
material is dropped onto a watch glass from a powder falling
point, and a dropped mass and a mass on the watch glass are
measured, a degree of dispersion which is obtained from the
following formula (1) is equal to or higher than 9% and equal to
or lower than 22%,
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Application 14/113,981
degree of dispersion [%] = ( dropped mass - mass on the
watch glass) / the dropped mass x 100 ( 1 ), and
wherein a degree of compaction of the powdered raw
material which is calculated by the following formula (2) is
equal to or higher than 40% and equal to or lower than 50%,
degree of compaction [%] = ( compact bulk density -
loose bulk density)/ compact bulk density x 100 (2).
App. Br. 20-21 (Claims App'x).
ANALYSIS
Only those arguments actually made by the Appellant have been
considered in this Decision. Arguments that the Appellant could have made
but chose not to make have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(l)(iv); In re Jung, 637 F.3d 1356, 1365-
66 (Fed. Cir. 2011); Ex parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010
(precedential) ).
The Examiner rejects all of the claims on appeal under pre-AIA
35 U.S.C. § 103(a) as obvious over Makita (JP 2007-069952, pub. Mar. 22,
2007 ( reference to English translation of record)) in view of Suzuki (US
2011/0204060 Al, pub. Aug. 25, 2011), as evidenced by Blondeel et al. (US
2009/0263556 Al, pub. Oct. 22, 2009) and/or Chung et al. (US
2008/0260909 Al, pub. Oct. 23, 2008). Final Act. 2.
The Examiner finds that Makita discloses the claimed bottle cap
structure, and relies on Suzuki for disclosing a similar bottle cap having
powdered material that is mixed with a fluid in a bottle. Final Act. 2. The
Examiner notes that these references do not disclose that the powdered raw
material has the claimed "degree of dispersion, degree of compaction,
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Application 14/113,981
particle diameter, uniformity, and loose and compact bulk densities." Final
Act. 2. The Examiner points out that
it has been held to be within the general skill of a worker in the
art to select a known material on the basis of its suitability for
the intended use as a matter of obvious design choice. Further,
a change in size is generally recognized as being within the
level of ordinary skill in the art. Yet further, it has been held
that where the general conditions of a claim are disclosed in the
prior art, discovering the optimum or workable ranges involves
only routine skill in the art. Yet further, applicant has not cited
any criticality to the claimed powdered raw material.
Final Act. 2-3 (internal citations omitted).
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to have modified Makita to include a selected
powdered raw material via design choice, and "to provide a suitable mixing
component for fluid within a bottle upon which the cap is disposed." Final
Act. 3. In further support of the obviousness conclusion, the Examiner cites
to Blondeel as showing that it is "known to vary the particle size to affect
solubility," and to Chung as showing that it is "known to vary particle size to
avoid clumping." Final Act. 3 ( citing Blondeel ,-J 298; Chung ,-J,-J 16, 17).
We agree with the Examiner's conclusion as to obviousness, and address the
Appellant's arguments below.
The Appellant argues that the "[ c ]laimed degree of dispersion and
degree of compaction of the powdered raw material are NOT mere selection
of a known material on the basis of its suitability for the intended use,"
because"[ e Jven [ifJ the same material is used, a degree of dispersion and a
degree of compaction of the powdered raw material could be varied." App.
Br. 11-12 ( emphasis omitted). The Appellant's argument does not address
the rejection at hand, which is that it would have been obvious to one of
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Application 14/113,981
ordinary skill in the art to select the powdered raw material so that it is
suitable for its intended purpose of being filled into a cap, and dispensed
therefrom so as to disperse within the liquid in the bottle without clumping,
resulting in the selection of selected powdered raw material having the
claimed degree of dispersion and degree of compaction. As explained in the
Examiner's Answer, "[the] Examiner has provided evidence (in at least the
Blondeel and/or Chung references,[)] that it was known and desirable in the
Prior Art to configure powders which are intended to be dispensed into a
liquid for mixing, to affect - and ultimately optimize - their dissolvability."
Ans. 3.
The Appellant also argues that "a degree of dispersion and a degree of
compaction of a powdered raw material are NOT mere change in size ....
For example, the degree of dispersion and the degree of compaction can be
adjusted by adjusting the distribution of the particle diameters, rather than
only the particle diameter." App. Br. 12 ( emphasis omitted). The
Appellant's argument is unpersuasive. The claims do not limit the manner
in which the recited dispersion and compaction is attained. As such, while
distribution of particle diameters may be the basis in which to attain the
recited dispersion and compaction, this does not mean that changing particle
diameters cannot be a basis for achieving such dispersion and compaction.
Moreover, we find merit in the Examiner's response that "varying the
particle size is essentially a change in the size." Ans. 3.
The Appellant also argues that "a degree of dispersion and a degree of
compaction of a powdered raw material, are NOT disclosed in the cited
art," including Blondeel and Chung, which
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Application 14/113,981
only teach adjusting the average particle size or diameter to
improve the dispersion in liquid. Blondeel and Chung,
however, do NOT teach or suggest anything about the degree of
dispersion obtained from the claimed formula [for] ... degree
of dispersion . . . which is [ sic, has] nothing to do with
dispersion in liquid.
App. Br. 12-13.
Accordingly, the Appellant argues that "the claimed ranges of a
degree of dispersion and a degree of compaction are NOT the optimum or
workable ranges which involve only routine skill in the art," and that the
prior art does not recognize that "a degree of dispersion and a degree of
compaction of a powdered raw material as [] result-effective variables," and
thus, that "there would have been no motivation for one skilled in the art to
optimize a degree of dispersion and a degree of compaction of a powdered
raw material." App. Br. 13-14.
This argument is unpersuasive. As the Examiner finds, the prior art
"teaches the same physical apparatus ( a cap which carries a product to be
dispensed into a liquid)." Ans. 4. We agree with the Examiner's assessment
that the "Appellant's concern with these measurements is ultimately about
solubility, and a 'good drinking feeling'." Ans. 5. The claimed invention
essentially recites the results of measurements attained using a known,
commercially available, measurement device2 for a powdered raw material
2 Based on our understanding of the Specification, which describes
dispersion measurements being conducted using a commercially available
"multi-functional powder property measuring instrument multi-tester," the
dispersion measurements appear to be performed in air instead of liquid. See
Spec. ,-J 474 (identifying "[M]odel: MT-1001, manufactured by Seishin
Enterprise Co.").
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Application 14/113,981
having the desired dispersion and compaction characteristics as observed
through routine experimentation. See Spec. ,i,i 50-52, 474, Tables 1, 2.
The fact that an acceptable powdered raw material has a certain given
property when measured using certain commercially available equipment
does not indicate anything novel or unobvious as to the resultant
measurements. Moreover, just because the term "degree of dispersion" is
not used in the cited art does not mean that a person of ordinary skill in the
art would not consider the degree to which a powdered raw material will
disperse, especially when dispersal of the powdered raw material is the
intended manner in which the powdered raw material is to be used. In that
regard, we also agree with the Examiner that Blondeel and Chung establish
that "it was known to vary parameters of dissolved powders (including
particle diameter) in order to promote good solubility." Ans. 5.
The Appellant further argues that "the Examiner fails to provide any
evidence showing that clumping is related to compaction, and none of the
cited art teaches that clumping is related to compaction," but, instead, that
relationship has been "improperly gleaned from Applicant's own
[S Jpecification and thus an exercise of impermissible hindsight." App. Br.
15 ( citing Spec. ,i 16). However, it is evident from the record that the
Appellant has determined the level of compaction required to facilitate
filling of the caps with the limited types of powdered raw materials
disclosed, while also allowing for desired dispersion in water to avoid
"clumping." Such determination is not inventive. Moreover, this argument
is simply not credible as it is common knowledge and experience that
compaction of any powder (e.g., flour, pancake mix, cocoa, protein powder,
etc.) impacts the ease with which that powder disperses. Thus, we agree
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Application 14/113,981
with the Examiner that the claimed invention identifies, via routine
experimentation, the recited degree of dispersion and compaction of a
powdered raw material suitable for its intended use. Ans. 4.
According to the Appellant, the claimed ranges of a degree of
dispersion and a degree of compaction of the powdered raw material are
critical in that they allow for dispersion "without being aggregated and being
lumped in the liquid," and filling of a cap with such powdered raw material
"without being scattered to the outside of the bottle cap." App. Br. 15
( citing Spec. ,i 50, Tables 1, 2). The Appellant also argues that the recited
degree of compaction suppresses fluidity of the powdered raw material so as
to improve the fillability of the cap bottle cap, while also allowing liquid to
"easily penetrate into the inside of a mass of the powdered raw material," so
as to "suppress a generation of lumps of the powdered raw material in the
liquid." App. Br. 15 ( citing Spec. ,i 16). However, all of this merely
establishes that there is a range of compaction that is suitable for filling of a
powdered raw material in a bottle cap, and a range of dispersion of the
powdered raw material in an unspecified liquid that avoids clumping.
The Appellant further argues that the submitted declaration and the
Specification "show that the powdered raw material having a degree of
dispersion of 9-22% and a degree of compaction of 40-50% provides
unexpected results" because such powdered raw material is "superior in
both dispersibility in liquid and fillability in a bottle cap." App. Br. 16
( citing Deel. of Mutsushika 2). The Appellant argues that such powdered
raw material is "superior in both the suppression of a fluidity of the
powdered raw material and the penetration of a liquid into the inside of
the powdered raw material, which result in further improvement of the
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fillability and dispersibility of the powdered raw material." App. Br. 17
( citing Spec. ,i 16). We are not persuaded that unexpected results have been
demonstrated.
A party asserting unexpected results as evidence of nonobviousness
has the burden of proving that the results are unexpected. In re Geisler, 116
F.3d 1465, 1469-70 (Fed. Cir. 1997); see also In re Mayne, 104 F.3d 1339,
1344 (Fed. Cir. 1997). "[I]t is not enough to show that results are obtained
which differ from those obtained in the prior art: that difference must be
shown to be an unexpected difference." In re Klosak, 455 F.2d 1077, 1080
(CCPA 1972). Moreover,
even though applicant's modification results in great
improvement and utility over the prior art, it may still not be
patentable if the modification was within the capabilities of one
skilled in the art, unless the claimed ranges "produce a new and
unexpected result which is different in kind and not merely in
degree from the results of the prior art."
In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996) (citations omitted).
As the Examiner responds, the Appellant
has failed to provide any evidence of unexpected results.
Nowhere in the Specification is there any description or
discussion of what should have been expected, and how the
Appellant's actual results were different and thus unexpected.
Appellant's own Tables I and II simply show that Appellant
varied particle diameters (which thus affect the degree of
compaction and degree of dispersion) until they arrived at the
ranges which resulted in the best "drinking feeling". Nowhere
in the Specification is there any discussion of how this was
unexpected.
Ans. 8.
At best, the Appellant's arguments and declaration evidence establish
that the powdered raw materials having the claimed range of dispersion and
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Application 14/113,981
compaction attained superior results as compared to materials out of the
range. However, establishment of superior results, by itself, does not
establish unexpected results, which requires the evidence to establish what
would have been expected, and that the attained results are beyond that
expectation.
The Appellant argues that
there would have been NO normal expectation because the
cited art does NOT contain any teachings regarding a degree of
dispersion and a degree of compaction. The advantages of the
claimed invention are completely unexpected from the cited art
because the cited art does NOT contain any teachings regarding
a degree of dispersion and a degree of compaction, and thus
NOT contain any teachings that a degree of dispersion and a
degree of compaction are related to dispersibility in liquid and
fillability in a bottle cap.
App. Br. 17.
However, we agree with the Examiner that this argument
unpersuasive because it "amounts to the assertion that the results were
unexpected, simply because they do not use the Appellant's specialized
test," and that the Appellant has not presented "what would have been
expected of the prior art." Ans. 8.
In summary, we agree with the Examiner that the prior art establishes
that "it was known to configure a powder in order to affect solubility for a
desired result," and that the Appellant has simply used a commercially
available instrument to measure property ranges of the powdered raw
material that attain the desired degree of dispersion and compaction via
routine experimentation, "which results in an optimal solubility in order to
provide a 'good drinking feeling'." Ans. 6-7. Thus, we affirm the
Examiner's rejection of claim 15. The Appellant relies on dependency on
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Application 14/113,981
claim 15 to assert patentability of claims 16 and 18-29. App. Br. 18.
Accordingly, these dependent claims fall with claim 15.
DECISION
The Examiner's rejection of claims 15, 16, and 18-29 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED
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