10998213 (B.P.A.I. Jan. 10, 2012)

Ex Parte Tolbert

Board of Patent Appeals and InterferencesJan 10, 2012

10998213 (B.P.A.I. Jan. 10, 2012)

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. 10/998,213 11/26/2004 Barry Tolbert 51774/DRK/T558 2438 23363 7590 01/10/2012 CHRISTIE, PARKER & HALE, LLP PO BOX 29001 Glendale, CA 91209-9001 EXAMINER WILLIAMS, STEPHANIE ELAINE ART UNIT PAPER NUMBER 3754 MAIL DATE DELIVERY MODE 01/10/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte BARRY TOLBERT ____________________ Appeal 2010-000342 Application 10/998,213 Technology Center 3700 ____________________ Before: JENNIFER D. BAHR, JOHN C. KERINS, and KEN B. BARRETT, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-000342 Application 10/998,213 2 STATEMENT OF THE CASE Barry Tolbert (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s rejection of claims 1-16, 25-30, and 35-38. Claims 1, 6-8, 14, and 16 stand rejected under 35 U.S.C. § 102(b) as anticipated by Doughty (US 3,958,359, iss. May 25, 1976). Claims 1, 3-5, 9-12, 251-30, 35, and 36 stand rejected under 35 U.S.C. § 102(b) as anticipated by Gentry (US 3,312,373, iss. Apr. 4, 1967). Claim 2 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Doughty and Purvis (US 6,471,059 B2, iss. Oct. 29, 2002). Claim 15 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Doughty and Coffee (US 6,301,901 B1, iss. Oct. 16, 2001). Claims 13 and 37 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Gentry and Kawai (US 5,228,314, iss. Jul. 20, 1993). Claims 25 and 26 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Gentry and Purvis. Claims 1, 4, and 25 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Brangle (US D452,120 S, iss. Dec. 18, 2001). Claim 38 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Doughty and Brangle. The Examiner withdrew the rejection of claim 38 under 35 U.S.C. § 112, first paragraph. Ans. 3. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Although the Examiner inadvertently omitted claim 25 from the statement of rejection (Fin. Rej. mailed Jun. 2, 2008, at 4), the inclusion of claims 26- 30, 35, and 36 depending from claim 25 was also a finding of anticipation of claim 25. See Ormco Corp. v. Align Tech., 498 F.3d 1307, 1319 (Fed. Cir. 2007) (when a dependent claim is “found to have been obvious, the broader claims . . . must also have been obvious”). The Examiner corrected this error (Ans. 4), which Appellant acknowledged (App. Br. 11). See Ans. 11 (characterizing the omission as a “minor informality”). Appeal 2010-000342 Application 10/998,213 3 THE INVENTION The claims are directed to a portable liquid carrier and cooler having the exterior appearance of a rock. Spec. 1:3-5. Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A beverage container and dispenser having the exterior appearance of a rock, comprising: a base portion having an exterior having fissures, surface irregularities and textures that give the base portion the appearance of a rock, and an inner cavity; a liquid outlet that is in liquid communication with the inner cavity for dispensing liquid from the beverage container and dispenser; and a lid that fits over the inner cavity and completes the appearance of the rock when engaged with the base portion. OPINION All of Appellant’s arguments contesting the Examiner’s rejections are directed to features that relate to the appearance of the beverage container and have no mechanical function, and thus are not persuasive. Features that relate to “ornamentation only and have no mechanical function whatsoever” cannot be relied upon for patentability of a claim in a utility patent application. In re Seid, 161 F.2d 229, 231 (CCPA 1947). We have considered Appellant’s assertions that the limitation “having the exterior appearance of a rock” has functional aspects (Reply Br. 4-5) or “important utility” (App. Br. 9-10), but we do not find them convincing. The limitations in claims 1 and 25 directed to the appearance of a rock and the limitations in claim 38 directed to the indentation and indentation arms having the appearance of a rock fissure in no way depend on the beverage container and dispenser, and the beverage container and dispenser do not depend on the appearance limitations. Cf. In re Ngai, 367 F.3d 1336, 1339 Appeal 2010-000342 Application 10/998,213 4 (Fed. Cir. 2004) (stating that “[w]here the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability”; finding no functional relationship where the printed matter in no way depends on the substrate and the substrate in no way depends on the printed matter; and holding claimed subject matter anticipated where such printed matter was the only difference between the claimed subject matter and the prior art). The features in Appellant’s claims directed to appearance of a rock or a rock fissure are “‘useful and intelligible only to the human mind.’” See In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (quoting In re Bernhart, 417 F.2d 1395, 1399 (CCPA 1969)) (distinguishing such claim limitations from claim limitations defining functional characteristics). They do not exploit or interrelate with any other structural elements of the underlying beverage container and dispenser. Accordingly, we do not find that the appearance limitations at issue are functionally related to the beverage container and dispenser so as to patentably distinguish the subject matter of Appellant’s claims from the applied prior art. For the above reasons, Appellant’s arguments are not persuasive of any error in the Examiner’s rejections. We therefore sustain the rejections. DECISION For the above reasons, the Examiner’s decision rejecting claims 1-16, 25-30, and 35-38 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). AFFIRMED nlk