Joel Dean. Genaw

Patent Trials and Appeals Board

Nov 25, 2019

14272576 - (D) (P.T.A.B. Nov. 25, 2019)

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.
14/272,576 05/08/2014 Joel Dean GENAW JR. 13113-US-NP 2493
74475 7590 11/25/2019
Societe des Produits Nestlé S.A.
Attn: Patent Department
One Checkerboard Square
St. Louis, MO 63164
EXAMINER
KIM, BRYAN
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
11/25/2019 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):
Lori.Bowen@purina.nestle.com
gary.lobel@us.nestle.com
patentdepartment@rd.nestle.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOEL DEAN GENAW, JR.
Appeal 2019-002587
Application 14/272,576
Technology Center 1700
BEFORE JEFFREY B. ROBERTSON, GEORGE C. BEST, and
MICHAEL G. McMANUS, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 2, 6, 10, 11, and 21. Appeal Br. 5.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 This Decision includes citations to the following documents: Specification
filed May 8, 2014 (“Spec.”); Final Office Action mailed October 21, 2016
(“Final Act.”); Appeal Brief filed March 20, 2017 (“Appeal Br.”); and
Examiner’s Answer mailed July 14, 2017 (“Ans.”).
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Nestec S.A.
Appeal Br. 1.
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CLAIMED SUBJECT MATTER
Appellant states the invention relates to containers for storing
consumable products. Spec. ¶ 1. Claim 1, reproduced below, is illustrative
of the claimed subject matter (Appeal Br. 27, Claims Appendix):
1. A flexible package, comprising:
a body defining an interior configured to house a
consumable product, the body comprising:
a bottom surface comprising a centrally-located, vertical
axis that is substantially perpendicular to the bottom surface,
a top surface having an outlet,
a front surface having a lower straight portion extending
upwardly from the bottom surface, an upper straight portion
extending downwardly from the top surface, and a curved portion
extending from the lower straight portion to the upper straight
portion, the curved portion being substantially convex with
respect to the vertical axis,
a back surface having a lower straight portion extending
upwardly from the bottom surface, an upper straight portion
extending downwardly from the top surface, and a curved portion
extending from the lower straight portion to the upper straight
portion, the curved portion of the back surface being opposed to
the front surface and substantially concave with respect to the
vertical axis,
a pair of opposing side surfaces extending from the front
surface to the back surface, and
wherein the sides surfaces have a width extending between
the front surface and the back surface, and the front surface and
the back surface each have a width extending between side
surfaces,
wherein the width of the front surface and the width of the
back surface is greater than the width of the side surfaces,
wherein the lower straight portion of the front surface and
the lower straight portion of the back surface are tapered relative
to one another from the bottom surface to the curved portions and
the curved portion of the front surface and the curved portion of
the back surface are tapered relative to one another from the
lower straight portions to the upper straight portions such that the
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front surface and the back surface are tapered relative to one
another from the bottom surface to at least the upper straight
portion of the front surface and the upper straight portion of the
back surface, and
wherein the top surface is angled relative to the vertical
axis at an angle ranging from about 5° to about 45° in a way that
the outlet of the top surface is angled relative to the vertical axis
and laterally offset from the vertical axis.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Sharon et al.
hereinafter “Sharon”
US 4,832,213 May 23, 1989
Hunt D 296,666 July 12, 1988
Cheng US 2002/0148806 A1 October 17, 2002
Willows et al.
hereinafter “Willow”
US 2005/0258201 A1 November 24, 2005
Clark US 2009/0178997 A1 July 16, 2009
REJECTIONS
1. The Examiner rejected claims 1, 2, 6, 11, and 21 under 35 U.S.C.
§ 103 as obvious over Willows, Clark, Hunt, and Sharon. Final Act.
2–6.
2. The Examiner rejected claim 10 under 35 U.S.C. § 103 as obvious
over Willows, Clark, Hunt, Sharon, and Cheng. Id. at 6.
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Rejection 1
Appellant does not present separate arguments with respect to the
claims on appeal. See Appeal Br. 25. We select claim 1 as representative
for disposition of this rejection. 37 C.F.R. § 41.37(c)(1)(iv).
OPINION
The Examiner’s Rejection
The Examiner found Willows discloses a bottle having the limitations
recited in claim 1, with the exception of the top surface being angled from
5°–45°, the front and back surfaces having a lower straight portion extending
upwardly from the bottom surface, an upper straight portion extending
downwardly from the top surface, and a curved portion extending from the
lower straight portion to the upper straight portion, the curved portion being
convex and concave, respectively, in relation to the vertical axis, and the
front and back surfaces being tapered relative to one another. Final Act. 3–
4. The Examiner found Clark discloses top surfaces having angles similar to
between 20–80° and that having an angled top surface facilitates dispensing
fluid from the bottle. Id. at 4. As a result, the Examiner determined it would
have been obvious to have applied the angles in Clark to the bottle disclosed
in Willows. Id. The Examiner determined also that because the bottle is
intended to be clipped onto a belt in Willows, it would have been obvious to
have angled the bottle top surface away from the wearer to prevent the cap
from getting caught in clothes and to prevent droplets/leaks from staining
clothes. Id. at 4–5. The Examiner found Hunt discloses bottles shaped with
the lower straight portions, upper straight portions, and curved portions and
Sharon discloses bottles shaped such that the front and back walls are
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tapered upwards relative to each other. Id. at 5. The Examiner determined
that it would have been obvious as a matter of design choice and also having
a tapered bottle would have been obvious in case the bottle is used by a
toddler/child such that the bottle can be easily grabbed by small hands while
the additional bottom volume affords sufficient capacity for a single feeding.
Id.
Appellant’s Contentions
Appellant argues the Examiner has not provided sufficient rationale
for why one of ordinary skill in the art would have combined the prior art to
arrive at the presently claimed invention. Appeal Br. 16, 24–25. Appellant
argues the bottle of Willows is formed to mate with a specific retaining
device, and there is no reason to modify the Willows bottle when doing so
may compromise the particular mating mechanism. Id. at 18, 24. Appellant
argues Willows discloses a “low profile” bottle, which teaches away from
the angles for the top surface disclose in Clark. Id. at 17, 19–20. Appellant
argues the shape of the flexible packaging recited in claim 1 is significant
because it is particularly shaped for a child’s grasp. Id. at 21. Appellant
argues Willows does not disclose a back surface that is substantially
concave. Id. at 21–22. Appellant argues Willows teaches away from
modifications that would result in a lower center of gravity and as a result
one of ordinary skill in the art would not have modified Willows to have
tapered walls as in the bottle of Sharon. Id. at 23. Appellant argues one of
ordinary skill in the art would not have modified the bottle of Willows to
have additional stability against falling over because the bottle of Willows is
intended to be carried. Id. Appellant contends there is no disclosure in
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Willows that indicates it would be desirable to make the bottle easily
grasped by a child. Id. at 23–24.
Issue
The dispositive issue is:
Has Appellant identified reversible error in the Examiner’s
determination that the flexible package having a top surface angle ranging
from about 5° to about 45° relative to the vertical axis, a “substantially
concave” back surface, and front surface and back surfaces tapered relative
to one another as recited in claim 1 would have been obvious over Willows,
Clark, Hunt, and Sharon?
Discussion
We are not persuaded by Appellant’s arguments that the bottle of
Willows is formed to mate with a specific retaining device, and there is no
reason to modify Willows’s bottle when doing so may compromise the
particular mating mechanism and that Willows teaches away from bottles
having angled top surfaces in the range recited in claim 1. As the Examiner
points out, Willows discloses the top surface of the bottle may be angled.
Ans. 7 (citing Willows Figs. 93, and 103–111). Thus, we are also not
persuaded by Appellant’s argument that by disclosing a bottle having a “low
profile,” angling a portion of the bottle away from the bottle would destroy
the intended purpose of the bottle sitting close to a user’s body. Appeal Br.
19–20; see Willows ¶ 34. As a result, Appellant has not adequately
explained why the flattened cross section of the “low profile” bottles
disclosed in the preferred embodiment of Willows would teach away from
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formulating bottles having a top surface with angles in the range of from
about 5° to about 45° relative to the vertical axis as recited in claim 1.
Regarding bottles shaped with the lower straight portions, upper
straight portions, and curved portions as recited in claim 1, we are not
persuaded by Appellant’s argument the Examiner did not provide any
reasoning to combine Willows and Hunt, and the particular shape of the
claimed invention is significant for a child’s grasp. Appeal Br. 21 (citing
Spec. ¶¶ 9, 41). We agree with the Examiner, that it is unclear from the
portions of the Specification referenced by Appellant how the claimed shape
is significant with respect to a child’s grasp. In addition to Hunt, Willows
discloses the bottle body “include[s] desirable contours . . . to enable the
user to easily grasp and to hold the bottle.” Willows, ¶ 173. Also, Sharon
discloses bottles having curved shapes and tapering to permit gripping the
bottle. Sharon, col. 1, ll. 23–27. Thus, we are not persuaded by Appellant’s
argument that the particular significance of the shape for a child’s grasp is
sufficient to outweigh the Examiner’s position that it would have been
obvious to use the lower straight portions, upper straight portions, and
curved portions disclosed in Hunt in the bottle of Willows.
We are also not persuaded by Appellant’s argument that Willows does
not disclose a bottle having a back surface that is “substantially concave.”
In particular, Appellant contends Willows discloses a back surface with two
portions that are convex to the vertical axis. Appeal Br. 21–22. However,
as the Examiner points out in the Answer, claim 1 recites the back surface is
“substantially” concave, which broadens the scope of the claim such that the
back surface “comprises a majority concave portion.” Ans. 8. The
Examiner found Willows discloses outer portions adjacent to the side walls
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that are concave, and points out that Willows is modified with Hunt to have
a concave portion. Id. (citing Willows, Fig. 2).
Initially, we agree with and adopt the Examiner’s interpretation of
“substantially concave.” The plain language of claim 1 only requires the
majority of the back surface of the package to be concave.3 Willows
discloses the outer portions, or shoulders are concave. Willows ¶ 176, Fig.
2. Accordingly, we are not persuaded by Appellant’s argument.
As to Appellant’s arguments that Willows teaches away from tapering
the walls and the Examiner’s modification would render the bottle of
Willows inoperable (Appeal Br. 23), we agree with the Examiner that
Appellant has not provided sufficient details to support these arguments
(Ans. 9). That is, it is unclear to us how having a low perceived weight
would teach away from tapering the walls of the bottle in Willows as
disclosed in Sharon when Willows discloses the bottle may have a number
of forms and shapes (Willows ¶ 176), and Appellant has not provided any
evidence that one of ordinary skill in the art would not have been capable of
providing the modified shape with a feature or features that removably but
securely mate with the retaining device as disclosed in Willows. Id. In

3 As to the terms “convex” and “concave,” for the purposes of this appeal,
we adopt the Examiner’s discussion of Figures 2–5 of Willows in the Final
Action, page 2, where the Examiner stated the figures show “the front
surface (left side) is curved towards the central vertical axis, particularly at
the upper end of the surface, and is therefore construed to be convex with
respect to the central vertical axis” and “[t]he back surface (right side) is
curved away from the central vertical axis, particularly at the upper and
lower ends of the surface, and is therefore construed to be concave with
respect to the central vertical axis.” The Examiner’s explanation of Willows
is consistent with the way Appellant uses the terms “convex” and “concave”
in the instant application. See Spec. ¶ 69; Figs. 1, 2.
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addition, Appellant’s position regarding the perception of a user is not based
on any factual evidence and it is well settled that arguments of counsel
cannot take the place of factually supported objective evidence. In re
Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996).
We are not persuaded by Appellant’s arguments there is no reason to
modify the bottle of Willows to have additional stability against falling over,
because the bottle of Willows is intended to be carried and there is nothing
in Willows suggesting the desirability of the bottle to be easily grasped by
children. Appeal Br. 23. As the Examiner points out, the modifications
would provide Willows with advantages recognized by the art, and Willows
discloses a bottle that would be capable of being placed on a surface. Ans. 9
(citing Willows, Fig. 1). In addition and contrary to Appellant’s argument
(Appeal Br. 24), Willows does not limit its disclosure to sports applications,
but rather is broadly directed to the application of affixing a bottle to a
retaining device. Willows ¶¶ 141, 203. As a result, and absent evidence to
the contrary, we do not agree with Appellant (Appeal Br. 24) that the
modifications to the bottle of Willows would compromise the way the bottle
of Willows engages the retaining device, particularly because Willows, as
discussed above, discloses the bottle may have a number of forms and
shapes. Willows ¶ 176.
Indeed, Appellant’s arguments appear to be directed to Willows
individually rather than the combination of prior art as a whole. In re Keller,
642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986). Accordingly, and for all the reasons as herein
expressed above, we do not agree with Appellant’s argument that the
Examiner’s rejection is based on improper hindsight. See Ans. 9–10.
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Rejection 2
Appellant does not provide any additional arguments with respect to
claim 10, the subject of Rejection 2, and dependent from claim 1. See
Appeal Br. 25. Accordingly, we affirm the Examiner’s rejection of claim 10
for similar reasons as discussed for Rejection 1.
CONCLUSION
The Examiner’s rejection of claims 1, 2, 6, 10, 11, and 21 under
35 U.S.C. § 103(a) is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 6, 11,
21
103 Willows, Clark,
Hunt, Sharon
1, 2, 6, 11,
21

10 103 Willows, Clark,
Hunt, Sharon,
Cheng
10
Overall
Outcome
1, 2, 6, 10,
11, 21

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