Gelinas, Mariel

Patent Trials and Appeals Board

Feb 24, 2020

15058952 - (D) (P.T.A.B. Feb. 24, 2020)

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.
15/058,952 03/02/2016 Mariel Gelinas SK11774 2476
44088 7590 02/24/2020
KAUFHOLD DIX PATENT LAW
P. O. BOX 89626
SIOUX FALLS, SD 57109
EXAMINER
CASTRIOTTA, JENNIFER
ART UNIT PAPER NUMBER
3733
NOTIFICATION DATE DELIVERY MODE
02/24/2020 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):
jason@kaufholdlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARIEL GELINAS
Appeal 2019-004495
Application 15/058,952
Technology Center 3700
Before MURRIEL E. CRAWFORD, PHILIP J. HOFFMANN, and
BRADLEY B. BAYAT, Administrative Patent Judges.
BAYAT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3 and 5, which are all the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as the applicant, Mariel
Gelinas. Appeal Br. 2.
Appeal 2019-004495
Application 15/058,952

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CLAIMED SUBJECT MATTER
The claims are directed to a spill inhibiting container system.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A spill inhibiting container system comprising:
a bottle having a neck, said neck having an inner surface,
said neck having a threaded outer surface, said bottle being
configured to contain a liquid;
a plug being removably positioned within said neck
wherein said plug is configured to inhibit the liquid from
escaping said bottle when said bottle is carried in air
transportation;
an opening extending through said plug; and
a cap, said cap being removably, replaceably, and
threadedly couplable to said bottle when said plug is positioned
within said neck wherein said cap is configured to inhibit the
liquid from escaping said bottle through said opening during air
travel.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Morgan US 2,115,035 Apr. 26, 1938
Seldon US 4,480,424 Nov. 6, 1984

REJECTION
Claims 1–3 and 5 are rejected under 35 U.S.C. § 103 as unpatentable
over Morgan and Seldon.
OPINION
Appellant argues all pending claims together. Appeal Br. 4–8. We
select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv).
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The Examiner found Morgan teaches the claimed bottle, neck, and
plug, but fails to teach the claimed cap, which the Examiner finds is taught
by Seldon. Final Act. 2–3. The Examiner reasoned it “would have been
obvious to one skilled in the art at the time of filing to modify the container
system of Morgan with the teachings of a cap of Seldon in order to prevent
undesired and premature opening of the container (Col. 3, Ln,. 34-38).” Id.
at 4.
Appellant argues “there is nothing within the collective teaching of
the references to suggest combining these two features into a single device.”
Appeal Br. 4–5.
We disagree with Appellant. First, to the extent that the Appellant is
arguing that the combination of references must be suggested by some
teaching, suggestion, or motivation within the combined references
themselves, this is no longer the law in view of the Supreme Court’s holding
in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Second, the
Examiner has cited to a portion of Seldon, which discloses “a lead foil
capsule 56 is placed over the neck 24 of the bottle to prevent undesired and
premature opening of the hermetic seal.” Seldon 3:34–38. Thus, Seldon
discloses a reason to place a “capsule” that corresponds to the claimed
“cap,” over “nib 14” of “disc 12,” which corresponds to the claimed plug.
See generally id., 3:1–38.
The key to supporting any prima facie conclusion of obviousness
under 35 U.S.C. § 103 is the clear articulation of the reason why the claimed
invention would have been obvious. The Federal Circuit has stated that
“rejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some
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rational underpinning to support the legal conclusion of obviousness.” In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550
U.S. at 418. Here, the Examiner articulated reasoning with some rational
underpinning to support why an artisan would make the combination as
claimed. The reasoning comes from the references themselves, which is
why we are not persuaded by Appellant’s argument of “impermissible
hindsight,” alleging that the Examiner’s rationale to combine references “is
merely a conclusory statement of obviousness based upon speculation
(rather than evidence).” Appeal Br. 5–6.
Appellant argues “that interpreting Seldon as teaching a cap is
unreasonably strained” because, “Seldon provides only for a one time use
lead foil covering which does cover the bottle opening, but is not equivalent
to a cap that is removably and replaceably couplable to a bottle.” Appeal
Br. 5 (emphasis added).
Again, we disagree with Appellant because, as found by the
Examiner, Seldon discloses, in addition to a lead foil cap, “a screw-on type
cap may also be employed since the same is to be employed as a secondary
and not a primary closure member.” Seldon 3:42–44 (cited at Final Act. 3).
Claim 1 recites “a plug . . . configured to inhibit the liquid from
escaping said bottle when said bottle is carried in air transportation,” and “a
cap . . . configured to inhibit the liquid from escaping said bottle through
said opening during air travel.” The Examiner correctly identified these as
intended use limitations (Answer 4), and found that Morgan’s device, as
modified by Seldon’s cap, would be capable of performing the claimed
function (Final Act. 4). Appellant has not provided sufficient evidence or
technical reasoning to persuade us that this finding is in error; instead,
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Appellant merely contends, without evidence, that the claimed device
“provides a superior result within the context of this type of use.” Appeal
Br. 7.
Because the proposed device, from the combination of Morgan and
Seldon, is capable of inhibiting liquid from escaping during air travel, and
we discern no structure in the claimed device particular to preventing liquid
from escaping where the device is used during air travel, we agree with the
Examiner that the “air transportation” and “air travel” aspects of the claim
do not materially change the obviousness inquiry. See, e.g., In re Schreiber,
128 F.3d 1473, 1477–78 (Fed. Cir. 1997) (claims directed to an apparatus
must be distinguished from the prior art in terms of structure rather than
function); see also In re Swinehart, 439 F.2d 210, 213 (CCPA 1971)
(“[W]here the Patent Office has reason to believe that a functional limitation
asserted to be critical for establishing novelty in the claimed subject matter
may, in fact, be an inherent characteristic of the prior art, it possesses the
authority to require the applicant to prove that the subject matter shown to be
in the prior art does not possess the characteristic relied on.”).
For the above reasons, the Appellant has not shown error in the
Examiner’s rejection of claim 1. Therefore, we sustain the rejection of
claim 1 as obvious over Morgan and Seldon, and claims 2, 3, and 5, which
fall with claim 1.
CONCLUSION
The Examiner’s rejection of claims 1–3 and 5 under 35 U.S.C. § 103
as unpatentable over Morgan and Seldon is AFFIRMED.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5 103 Morgan, Seldon 1–3, 5

TIME PERIOD FOR RESPONSE
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