Numan ZeidanDownload PDFPatent Trials and Appeals BoardDec 20, 20212021003567 (P.T.A.B. Dec. 20, 2021) Copy Citation 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. 15/649,812 07/14/2017 Numan Zeidan ZEID001-2 7428 7590 12/20/2021 William C. Milks, III 950 N. San Antonio Road #11A Los Altos, CA 94022 EXAMINER COLLINS, RAVEN ART UNIT PAPER NUMBER 3735 MAIL DATE DELIVERY MODE 12/20/2021 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 PATENT TRIAL AND APPEAL BOARD Ex parte NUMAN ZEIDAN Appeal 2021-003567 Application 15/649,812 Technology Center 3700 Before DANIEL S. SONG, CHARLES N. GREENHUT, and WILLIAM A. CAPP, Administrative Patent Judges. GREENHUT, 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 1–17. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Numan Zeidan. Appeal Br. 1. Appeal 2021-003567 Application 15/649,812 2 CLAIMED SUBJECT MATTER The claims are directed to a cup collar. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A cup collar[2] for a beverage cup, comprising: a beverage cup having an opening at a lip of the cup, a portion of the cup proximate the opening at the lip of the cup provided on the interior of the cup with one or more graduated markings to indicate one or more levels, respectively, to which to selectively fill the cup with a beverage to accommodate addition of an additive to the beverage, wherein each graduated marking comprises a line on the interior of the cup substantially spanning the inner circumference of the cup, each graduated marking having a first end and a second end and an alphanumeric character positioned between the first and second ends to label the graduated marking to indicate the level to which to fill the cup with the beverage by selection of one of the labeled graduated markings to accommodate the addition of the additive to the beverage. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Bittner US 6,736,538 B2 May 18, 2004 Nathanson US 9,398,775 B2 July 26, 2016 Monahan US 2009/0294318 A1 Dec. 3, 2009 Tharp US 2012/0324997 A1 Dec. 27, 2012 REJECTIONS Claims 1–8 and 11–15 are rejected under 35 U.S.C. § 103 as being unpatentable over Bittner, Monahan, and Nathanson. Final Act. 3. 2 It is not clear how claim 1 is directed to a “collar” for a cup as the body of the claim appears to be directed to the cup. Appeal 2021-003567 Application 15/649,812 3 Claims 9, 10, 16, 173 are rejected under 35 U.S.C. § 103 as being unpatentable over Bittner, Monahan, Nathenson, and Tharp. Final Act. 6. OPINION Initially, Appellant is reminded that in the rules of practice before the Board 37 C.F.R. § 41.37(c)(1)(iv) states: “Each ground of rejection contested by appellant must be argued under a separate heading . . . Under each heading identifying the ground of rejection being contested, any claim(s) argued separately or as a subgroup shall be argued under a separate subheading that identifies the claim(s) by number.” Despite this defect in Appellant’s briefing, we will proceed to render a decision on the merits according to our best understanding of what Appellant intended to argue. See MPEP § 1205.03. Appellant begins by summarizing the rejection, the references, some case law and the claim language, without specifically addressing the Examiner’s position. Appeal Br. 7–13. Such remarks are noted but are not regarded as arguments according to 37 C.F.R. § 41.37(c)(1)(iv) (“The arguments shall explain why the examiner erred as to each ground of rejection contested by appellant.”). The claimed invention Appellant’s claimed invention is directed to placing markings on a cup intended to be filled with a beverage, such as coffee, in order to make it easier for the person consuming the beverage to communicate to the person filling the cup how much empty space should be left in the cup to allow for 3 Claims 16 and 17 appear to have been inadvertently omitted from the rejection statement. Final Act. 6–7 Appeal 2021-003567 Application 15/649,812 4 an additive, such as milk. According to the Specification, this helps obviate the need to spill out some of the beverage to create space for the additive, thereby conserving water. Spec. 7–9. Claims 1, 6, and 11 The Examiner found Bittner to disclose the basic subject matter of claims 1, 6 and 11 including a cup with an interior marking or markings to indicate a level to which to fill with one or more beverages or additives to a beverage. Final Act. 3. The Examiner relied on Monahan to demonstrate it was known to place multiple markings “on the interior”4 and “proximate the opening at the lip of the cup.” Id. The Examiner relied on Nathanson for providing markings “substantially spanning the inner circumference” of the cup and labeled with an “alphanumeric character positioned between [its] first and second ends.” Id. Where Appellant begins to specifically address claims 1, 6, and 11, Appellant begins by summarizing Bittner and pointing out Bittner lacks subject matter for which it was never cited by the Examiner. Appeal Br. 13– 15. Such remarks do not address the Examiner’s position as required by § 41.37(c)(1)(iv) supra. “Non-obviousness cannot be shown by attacking references individually when the rejection is predicated upon the teachings of a combination of references.” See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). 4 The Examiner also cites Bittner and Nathanson for teaching “interior” markings. However, it is not apparent what evidence the Examiner relies on in support of these findings. This issue is not raised by Appellant and these findings are, in any case, cumulative to the finding of interior markings clearly disclosed in Monahan. Appeal 2021-003567 Application 15/649,812 5 It is clear that Bittner provides “one or more markings 24 . . . used during measuring to indicate the specified amount of a particular ingredient.” Col. 2, ll. 57–59. Although the terms “level,” “fill,” and “volume” may not have been used (Appeal Br. 15; Reply Br. 13), the phrase “during measuring” would have made it clear to the skilled artisan that such line or lines were intended as instructions indicating the volume to which the cup should be filled by a particular component or ingredient. Bittner’s indication that there may be multiple lines indicates that the beverage such as “the Coffee and Fruit Coolatta® drinks offered by Dunkin’ Donuts” (col. 1, ll. 18–19) may be comprised of more than one component. Any subsequently added component is reasonably regarded as an “additive.” Although the markings in Bittner may be intended for the preparer of the beverage as opposed to the consumer to add the final ingredient, Appellant does not apprise us of how this intention is included in any of claims 1, 6,5 and 11, and if it were, what patentable significance it would have. If a structural distinction is somehow implicit with regard to this use, it would appear to be the location of the mark being “proximate the opening at the lip of the cup” to allow for the consumer of the beverage to add the final ingredients. However, that language is already positively recited in claims 1 and 11 and the Examiner relies on Monahan rather than Bittner to address that language. Appellant does not take issue with the Examiner’s reasoning for incorporating Monahan’s teachings. Final Act. 4. Rather, Appellant argues 5 Although claim 6 is directed to a method, the language associated with filling the cup, “whereby the cup is to be filled . . .”, as with claims 1 and 11, relates to an intended use for the cup as opposed to manipulative step required to practice the claimed method. Appeal 2021-003567 Application 15/649,812 6 that Monahan discloses a bucket not a cup. Appeal Br. 16; Reply Br 14. The Examiner disputes this characterization (Ans. 8) but it is ultimately not critical to the rejection because obviousness is not a matter of bodily incorporation but is considered in light of the reference teachings as a whole. One skilled in the art would understand that Monahan’s teachings regarding marking a volumetric measurement container would be applicable to cups as well as buckets because those devices are similar in both structure and function. Appellant further argues that the claimed subject matter is distinguishable from Monahan because Monahan measures the contents of the material already contained in the bucket as opposed to material intended to be added to the container. Appeal Br. 16; Reply Br 15–16. First, this is not correct. Monahan clearly contemplates using the graduated container to “ascertain the quantity of the contents within the cavity 32 by utilizing the volume indicators 40 on the side wall 24” “[a]s the contents are being introduced into the cavity 32.” Para. 29 (emphasis added). Second, an artisan must be presumed to know something about the art apart from what the references disclose. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962). The use of container graduations to measure liquids being added to the container and discontinue adding when a certain measurement is reached must be considered within that knowledge. In re Sovish, 769 F. 2d 738, 743 (Fed. Cir. 1985) (“This argument presumes stupidity rather than skill.”). Appellant’s similar argument regarding Nathanson (Appeal Br. 20; Reply Br. 17–18) is unpersuasive for similar reasons. Nathanson clearly considers using the markings to guide filling the container. Col. 14, ll. 37–39. Appellant’s final argument concerning claim 6, specifically, is that none of Bittner, Monahan, and Nathanson mention conserving water, or water in general. Appeal Br. 15, 17, 20; Reply Br 20. “Water” is used in Appeal 2021-003567 Application 15/649,812 7 claims 6 and 11 predominately to define the nature of the beverage intended to be placed in the cup. Appellant does not identify any structural distinction this creates in terms of defining the cup itself, in particular such that it would be distinguishable from a cup such as that of Bittner, intended to hold Coffee and Fruit Coolatta® drinks, which we also understand to be “water-based.” Claim 6 recites the limitation “thereby conserving water.” First, because “conserving water” is introduced by the term “thereby” this would appear to be the result of the process as opposed to a manipulative step in the process itself. It is noted that it is somewhat questionable how this result is achieved simply by performing the only other manipulative steps in the process of claim 6: providing a beverage cup and marking its interior. As discussed above, water is recited only with regard to the intended contents of the cup and no manipulation of water is actually required by the steps recited in claim 6. In any case, although new uses of known processes may be patentable, newly discovered results of known processes directed to the same purpose are not patentable because such results are inherent. Bristol- Myers Squibb Co. v. Ben Venue Laboratories, Inc. 246 F.3d 1368, 1376- 1377 (Fed. Cir. 2001). Here, the process of providing the cup and providing markings on it would have been obvious in view of Bittner, Monohan, and Nathanson, as detailed by the Examiner. Final Act. 3–4. The ability to measure ingredients to a line on the cup so as not to cause the beverage to overflow the cup when subsequent ingredients are added, as described in Bittner, above, would seem to lead to the same result of conserving the water-based beverage, and thus “thereby conserving water” to the same extent. Appeal 2021-003567 Application 15/649,812 8 Claim 9 Appellant argues claim 9 by pointing out that Nathanson is entirely transparent and Monahan has a translucent portion whereas claim 9 requires the cup to be “entirely opaque.” Appeal Br. 17, 20; Reply Br 20. These arguments do not address the Examiner’s position which relies on Tharp as demonstrating it was well-known to select between translucent and opaque materials for use in measuring cups. Final Act. 6–7 (citing Tharp para. 28). Claims 7 and 8 Appellant’s argument concerning claims 7 and 8 amounts to merely quoting the claim language and asserting the prior art does not disclose such subject matter. Appeal Br. 21; Reply Br. 21. 37 C.F.R. § 41.37(c)(1)(iv) requires “more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.” See In re Lovin 652 F.3d 1349, 1357 (Fed. Cir. 2011). The Examiner reasonably found Bittner to disclose filling the cup with a water-based beverage (as we understand coffee and fruit-based drinks to typically be) by disclosing its mixing blade, implies that additives, regarded as any second ingredient, is added thereto. Final Act. 4. Appellant has not raised any specific issues associated with the Examiner’s findings or construction of the claims. Thus, the Examiner’s position with regard to claims 7 and 8 stands uncontroverted. CONCLUSION The Examiner’s rejections are AFFIRMED. Appeal 2021-003567 Application 15/649,812 9 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–8, 11–15 103 Bittner, Monahan, Nathanson 1–8, 11–15 9, 10, 16, 17 103 Bittner, Monahan, Nathenson, Tharp 9, 10, 16, 17 Overall Outcome 1–17 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). 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