Ex Parte Taufer

Patent Trial and Appeal Board

Jan 15, 2013

11650094 (P.T.A.B. Jan. 15, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte EDDIE L. TAUFER
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Appeal 2010-010115
Application 11/650,094
Technology Center 3700
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Before WILLIAM V. SAINDON, LYNNE H. BROWNE and
BARRY L. GROSSMAN, Administrative Patent Judges.

BROWNE, Administrative Patent Judge

DECISION ON APPEAL

Appeal 2010-010115
Application 11/650,094

2
STATEMENT OF THE CASE

Eddie L. Taufer (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision finally rejecting claims 1, 2, 5-11, 13 and 20-22.
Claims 14-19 are withdrawn from consideration. Claims 3, 4 and 12 are
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm-in-part.

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A container for simultaneously holding liquids
and foods to be consumed by a user comprising:
a first compartment for holding a liquid of
choice for consumption by said user, the first
compartment comprising spaced upper and lower
walls connected by a shell to define an enclosed
structure that includes a central cavity into which
the liquid of choice is held;
a second compartment for holding a food of
choice for consumption by said user, the second
compartment being adjacent to and connected with
the first compartment, wherein the second
compartment is defined by the upper wall and the
shell, with the upper wall defining a solid structure
that operates as a barrier so that the second
compartment is isolated from the first
compartment in order to keep the liquid from
entering the second compartment so that the food
of choice within the second compartment is kept
dry, and with the shell extending beyond the upper
wall in a direction opposite the first compartment
and continues to a terminating end, wherein the
second compartment defines a structure that
includes an upper cavity within the terminating
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end of the shell into which the food of choice is
held; and
a channel extending through the shell and
into the central cavity of the first compartment,
wherein the channel operates as a two-way passage
between the central cavity and environment
outside of the first compartment, so that a) through
which the liquid of choice is provided for filling of
the central cavity of the first compartment and b)
through which a user may consume the liquid of
choice contained in the central cavity.

THE REJECTIONS
1. Claims 1 and 20 stand rejected under 35 U.S.C. § 102(b) as anticipated
by Woollen (US 3,288,344, iss. Nov. 29, 1966).
2. Claim 21 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Woollen.
3. Claims 2 and 5 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Woollen and Rau (US 2004/0178203 A1, pub. Sep. 16, 2004).
4. Claims 6, 7, 11 and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Woollen, Rau and Rockhill (US 2005/0269336 A1,
pub. Dec. 8, 2005).
5. Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Woollen, Rau, Rockhill and Lloyd (US 2002/0110622, pub. Aug. 15,
2002).
6. Claims 9, 10 and 22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Woollen, Rau, Rockhill, Lloyd and Brody (US
5,388,712, iss. Feb. 14, 1995).

Appeal 2010-010115
Application 11/650,094

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OPINION
Claims 1, 2 and 5
As described by Appellant, “in Appellant's Claim 1, a channel
operates as a two-way passage that serves to both accommodate filling of the
central cavity of the container with liquid and through which a user
consumes the liquid contained in that central cavity.” App. Br. 11.
Appellant contends “the channel 18 in Woollen . . . does not and cannot
operate as Appellant's claimed channel operating as a two-way passage”
(Id.) because “the central channel 18 does not and can not operate as an
integral straw to consume any liquid” (App. Br. 12); “Woollen fails to
disclose the feature that its channel 18 is used for the purpose to fill a central
cavity with liquid” and fails to disclose “an opening at a second end (cone
shaped funnel 42 shown above in Appellant's fig. 1), which contains a larger
sized diameter at its terminating end in order to facilitate being filled with
liquid.” App. Br. 13.
Appellant’s argument is not convincing as it is not commensurate in
scope with claim 1. Claim 1 does not require that the channel operate as an
integral straw, nor does it require an opening at a second end of the two-way
passage with a larger sized diameter.
Appellant does not identify, nor do we discern, any error in the
Examiner’s findings that Woollen’s channel 18 is capable of operating in the
manner set forth in claim 1. Ans. 8. Accordingly, we adopt the Examiner’s
findings as our own.
For these reasons, we sustain the Examiner’s rejection of claim 1.
Claims 2 and 5 were rejected as unpatentable over the combined teachings
of Woollen and Rau; however, Appellant relies on the unpersuasive
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arguments set forth for claim 1. App. Br. 15. Accordingly, we sustain the
Examiner’s rejection of claims 2 and 5.
Claim 20
Appellant states “Appellant's channel 40 is defined by a first end
protruding through the outer surface of the shell 26 (near number 42 shown
in fig. 2) and a second end protruding through the inner surface of the shell
26 (near the number 24 shown in fig. 2).” App. Br. 15. Appellant contends
“Woollen, however, does not disclose this feature set forth in Claim 20.” Id.
In order to determine whether or not Woollen discloses a channel
“protruding” through the inner and outer surfaces of the shell, we must first
construe the claim terminology “protruding.” Appellants’ Specification does
not assign or suggest a particular definition of the term “protruding” or
otherwise indicate that this term is used in a manner other than its ordinary
and customary meaning. Therefore, in determining the ordinary and
customary meaning of the claim term “protruding” as viewed by a person of
ordinary skill in the art, it is appropriate to consult a general dictionary
definition of the word “protruding.” Comaper Corp. v. Antec, Inc., 596 F.3d
1343, 1348 (Fed. Cir. 2010). An ordinary and customary meaning of the
word “protruding” is “to jut out from the surrounding surface.”1
Woollen discloses a channel 18 that juts out from the side wall of the
inner cup 10. Woollen, fig. 2 and col. 2, ll. 17-19. However, the Examiner
does not identify, nor do we discern, any element that juts out from the side
wall of the outer cup 11. Accordingly, Woollen fails to describe a channel
“protruding through the outer surface of the shell” as required by claim 20.

1 Merriam-Webster.com, © 2012, accessed at http://www.merriam-
webster.com/dictionary/protruding (last visited January 3, 2013).
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For this reason, we do not sustain the Examiner’s rejection of claim
20.
Claim 21
Appellant states, “[t]he Examiner has asserted that it would have been
obvious to manufacture the container of Woollen in one-piece in order to
speed up the assembly process. Appellant strongly but respectfully
disagrees.” App. Br. 18. Arguing “it is explicitly described throughout
Woollen that its container is comprised of numerous separate components
that are assembled in order to be used . . .” because “the two-piece inner cup
and outer cup construction of Woollen is a requirement in order for the
device to be filled with liquid.” Id. Appellant further argues, “Woollen if
manufactured to be in one-piece would not operate to enable the user to
consume any liquid from the container when a user sucked upon the
terminating end of its channel 18 . . .” and “Woollen could not practically be
filled with liquid, due to the insufficient space created by the channel 18
formed between the inner cup 10 and outer cup 11.” App. Br. 19.
Appellant’s argument is not convincing because it mischaracterizes
Woollen’s description of separate components as a requirement. Appellant
has not identified, nor do we discern, any statement that Woollen requires
separate components. Rather, as correctly found by the Examiner, “Woollen
would still work if the components were manufactured out of a single piece
because the liquid could still be inserted into the bottom portion through the
channel (18).” Ans. 10.
For these reasons, we sustain the Examiner’s rejection of claim 21.
Claims 6-11, 13 and 22
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With respect to claim 6, Appellant states, “the Examiner has asserted
that Rockhill teaches that it is known in the art to manufacture an outlet on a
drinking device that is in the shape of a funnel that can be used for fill with
[sic] and consuming liquid.” App. Br. 20. Appellant argues, “the funnel
shape in Rockhill has no function and is merely provided for an ornamental
reason so as to pattern the shape of a racecar fueling tank, and there is no
capability or intention to ever be used as a means for filling of a container
with liquid (see Rockhill, par. 1, par. 5 (last sentence))” because “the funnel
shaped cap 16 is entirely removed in order to expose the interior of the
container 12 so that it can be filled with liquid . . .” Id. Appellant makes the
same argument for independent claims 11 and 22, which contain the same
feature. App. Br. 21, 23.
Appellant’s argument is convincing. The Examiner has not explained,
nor do we discern how Woollen could be modified to incorporate the funnel
of Rockhill in a manner that would render the claim obvious. Modification
of Woollen’s straw to include a funnel would not seem to result in the
claimed invention, as claims 6, 11, and 22 require that the funnel have a
passage therethrough connected to the channel.
For these reasons, we do not sustain the Examiner’s rejections of
claims 6, 7, 11 and 13 and of claim 22. See Ans. 5, 7. Claims 8-10 depend
from claim 6. The Examiner’s rejections of claim 8 (further in view of
Lloyd) and of claims 9 and 10 (further in view of Brody) do not cure the
deficiency identified above, and are likewise not sustained. See also App.
Br. 21 (“For [the above] reason, … Claim 6, and Claims 7 – 10 which
depend therefrom, [should] be reversed.”).

Appeal 2010-010115
Application 11/650,094

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DECISION
We affirm the Examiner’s rejection of claim 1 under 35 U.S.C. §
102(b).
We reverse the Examiner’s rejection of claim 20 under 35 U.S.C. §
102(b).
We affirm the Examiner’s rejection of claims 2, 5 and 21 under 35
U.S.C. § 103(a).
We reverse the Examiner’s rejection of claims 6-11, 13 and 22 under
35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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