Mark Bradley

Patent Trials and Appeals Board

Dec 10, 2020

2020002270 (P.T.A.B. Dec. 10, 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.
14/818,230 08/04/2015 Mark Anthony Bradley 3116 2892
82318 7590 12/10/2020
Brian R. Galvin
Galvin Patent Law LLC
2916 NW Bucklin Hill Road
Suite 485
Silverdale, WA 98383
EXAMINER
PERREAULT, ANDREW D
ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
12/10/2020 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):
USPTO@GALVINPATENTLAW.COM
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARK ANTHONY BRADLEY
____________

Appeal 2020-002270
Application 14/818,2301
Technology Center 3700
____________

Before BIBHU R. MOHANTY, PHILIP J. HOFFMANN, and
BRUCE T. WIEDER, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1, 2, 4, 6, 10–13, and 15–20. 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 Mark
Anthony Bradley. (Appeal Br. 2.)
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CLAIMED SUBJECT MATTER
Appellant’s “invention relates to containers that are used to contain
fluids that need to be dispensed in controlled quantities. In particular, the
present invention relates to a container closure, which can be readily and
securely fastened to dispensing containers, bottles and the like.” (Spec. ¶ 2.)
Claim 1 is the sole independent claim on appeal. It recites (some
paragraphing added):
1. A container and closure combination, for the containment
of fluids and extraction therefrom by way of an extraction tube,
the container comprising
a closed volume with an opening, the closure being
configured to close the opening of the container,
wherein the closure is provided with an aperture,
wherein the container and closure have mating portions
therebetween, which mating portions have mutually
corresponding contours, and
wherein the closure, upon fitment to the container
opening, cannot be removed therefrom,
the aperture of the closure comprising a unitary elastic
unidirectional valve member;
wherein the valve can operate in:
first, closed condition, to prevent a flow of fluid
from the container; and,
a second, operational condition, with an extraction
tube sealingly engaged with respect to the valve, to permit
an extraction of fluid from the container through the tube.

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REJECTION
Claims 1, 2, 4, 6, 10–13, and 15–202 are rejected under 35 U.S.C.
§ 103 as unpatentable in view of Breakstone (US 2,579,724, iss.
Dec. 25, 1951) and Barriac (US 5,360,127, iss. Nov. 1, 1994).

ANALYSIS
Obviousness is a legal conclusion involving a determination of
underlying facts.
Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the obviousness
or nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of the subject
matter sought to be patented.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v.
John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966)).
With regard to the scope and content of the prior art, the Examiner
finds that “Breakstone discloses a container and closure (figs 1-4, 11, 12, 16)
capable of being configured to operate with a corresponding dispensing
apparatus,” a “closed volume with opening,” an “aperture,” a “valve . . .
capable of operating in multiple positions as shown in figs 2, 3.” (Final
Action 5.) The Examiner also finds that “Applicant admits that [it] is
already known in the art to provide closures that ‘cannot be removed.’
Nevertheless, Barriac discloses [a closure that] ‘cannot be removed.’” (Id.)

2 Claim 14 was withdrawn by the Examiner. (See Final Action 4.)
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Additionally, the Examiner determines that “it would have been obvious . . .
to modify Breakstone in view of Barriac (by providing the structure to
permit the function of ‘cannot be removed’) to prevent two elements from
being removed from one another as to prevent undesired access to
potentially harmful yet desired items contained therein.” (Id. at 5–6.)
Appellant argues that the Examiner has failed to present a prima facie
case of obviousness. In particular, Appellant argues that the Examiner has
not presented a motivation to make the claimed combination and has
“provided no articulated reasoning, no reasoning at all, concerning the
claims as a whole.” (Appeal Br. 4–5.) Moreover, Appellant argues, “[t]he
Examiner actually misstated the solution provided by the claimed invention”
because the invention “is to provide a non-removable closure that prevents
access to potentially harmful content, while simultaneously allowing easy
dispensing of that content using suitable equipment.” (Appeal Br. 4 n.1.)
We do not find this argument persuasive. “Under the correct analysis,
any need or problem known in the field of endeavor at the time of invention
and addressed by the patent can provide a reason for combining the elements
in the manner claimed.” KSR Int’l Co., 550 U.S. at 420.
Here, the Examiner has provided a reason to combine Breakstone and
the non-removable closure feature of Barriac. (See, e.g., Final Action 5–6
(“to prevent undesired access to potentially harmful yet desired items
contained therein”).) Appellant does not persuasively argue why
“prevent[ing] undesired access to potentially harmful yet desired items
contained therein” (id. at 6) does not provide a sufficient reason to combine
the prior art elements in the manner claimed.

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Additionally, we agree with the Examiner that Appellant has merely
“restated the Office’s motivation for combination and Appellant has
provided another similar motivation for combination of the references in
Appellant’s own words.” (Answer 5.) Regardless, “the law does not require
that the references be combined for the reasons contemplated by the
inventor.” In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992).
The USPTO carries its procedural burden of establishing a prima facie
case when its rejection satisfies the requirements of 35 U.S.C. § 132 by
notifying the applicant of the reasons for rejection, “together with such
information and references as may be useful in judging of the propriety of
continuing the prosecution of [the] application.” In re Jung, 637 F.3d 1356,
1362 (Fed. Cir. 2011) (brackets in original) (quoting 35 U.S.C. § 132(a)). In
view of the above, we do not agree that the Examiner failed to notify
Appellant of the reasons for the rejection or failed to establish a prima facie
case.
Appellant also argues “that the two references cannot be combined
because they teach away from each other on precisely the issue cited by the
examiner for combining them, to wit: the issue of removable versus non-
removable closure.” (Appeal Br. 5.)
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994). “Under the proper legal standard, a reference will teach
away when it suggests that the developments flowing from its disclosures
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are unlikely to produce the objective of the applicant’s invention.” Syntex
(U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005).
Breakstone discloses “[a] valved closure plug for insertion into the
neck of a bottle.” (Breakstone, col. 4, ll. 5–6; see also id. Title.) Barriac
discloses “[a] non-removable closure assembly for connecting a manually
actuated liquid dispenser to a container.” (Barriac, col. 4, ll. 14–15; see also
id. Title.)
Appellant does not persuade us that Breakstone suggests that
modifying its disclosed device to include a non-removable cap is unlikely to
produce the objective of Appellant’s invention. Indeed, the discussion in
Breakstone regarding a removable cap appears only in the description of a
preferred embodiment (see, e.g., Breakstone, col. 1, ll. 5–9, col. 3, ll. 34–46),
whereas the claimed invention (in this case, the unnumbered paragraph
following the language “[w]hat I consider new and desire to secure by
Letters Patent is:” (id., col. 4, ll. 3–4)) describes a valved closure plug to be
inserted into the neck of a bottle, and is silent on the nature of the cap (see
id., col. 4, ll. 5–28). It follows that we also do not find persuasive
Appellant’s argument that modifying Breakstone to include a non-removable
cap would change the principle of operation of Breakstone and “would
render Breakstone inoperable for its intended purpose.” (See Appeal Br. 6.)
Therefore, we do not find Appellant’s teaching away argument persuasive of
error.
Appellant also argues that “neither Breakstone nor Barriac,
individually or in combination, teach or suggest a closure comprising a
unitary elastic valve member, or a unidirectional (one-way) valve, as
required by claim 1.” (Id.)
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We do not find this argument persuasive. We agree with the
Examiner’s findings that
Breakstone discloses a unitary elastic unidirectional valve
at 14/16. Breakstone states “The metal cap 12 has a rubber
insert 14 which is secured to the inside of the cap and which has
a projecting portion 16 which extends within the neck of the
bottle 11 and fits tightly therein[]” (Breakstone col. 2: 10-13) and
therefore Breakstone discloses that the unidirectional valve is
elastic as rubber is a known elastic material. Breakstone even
further states “The insert 14 is provided with an aligning circular
opening 19 which extends only partly through the projecting
portion 16, the opening 19 terminating in a self-closing valve
comprising straight line cut or slit 21 extending through the
remainder of the portion 16 and through the portion 17”
(Breakstone col. 2:17-24) of which the valve 14/16 is [a]
common type of diaphragm check valve using the flexing rubber
diaphragm positioned to create a normally-closed valve.

(Answer 9.)
Appellant argues that the Examiner has taken improper judicial notice.
(Appeal Br. 7–8.) Specifically, Appellant argues that the Examiner’s
determination that “it would have been obvious . . . to modify Breakstone in
view of Barriac (by providing the structure to permit the function of ‘cannot
be removed’) to prevent two elements from being removed from one another
as to prevent undesired access to potentially harmful yet desired items
contained therein” (id. at 7 (emphasis omitted) (quoting Final Action 6)), is
improper because the Examiner failed to “provide documentary evidence of
[this] fact.” (Id. at 8.)
We do not find this argument persuasive. As noted above,
obviousness is a legal conclusion involving a determination of underlying
facts. KSR Int’l Co., 550 U.S. at 406. “Under the correct analysis, any need
or problem known in the field of endeavor at the time of invention and
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addressed by the patent can provide a reason for combining the elements in
the manner claimed.” Id. at 420. And “[i]f a person of ordinary skill can
implement a predictable variation, § 103 likely bars its patentability.” Id.
at 417. Nonetheless, “‘there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.’” Id.
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Here, the need “to prevent undesired access to potentially harmful yet
desired items” in a container such as that of Breakstone’s provides a reason,
as articulated by the Examiner, for combining Breakstone with the non-
removable cap of Barriac. (See Final Action 5–6.) Moreover, Appellant has
presented no persuasive evidence as to why this is not a predictable variation
that could be implemented by a person of ordinary skill. Therefore, we do
not find Appellant’s argument that the Examiner has improperly taken
judicial notice to be persuasive of error.
Claims 2, 4, 6, 10–13, and 15–20 are not separately argued and fall
with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION
The Examiner’s rejection of claims 1, 2, 4, 6, 10–13, and 15–20 under
35 U.S.C. § 103 is affirmed.
Specifically:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4, 6,
10–13,
15–20
103 Breakstone, Barriac 1, 2, 4, 6,
10–13, 15–
20

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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