14056533 - (D) (P.T.A.B. Nov. 17, 2020)

Pedro Encinas

Patent Trials and Appeals BoardNov 17, 2020

14056533 - (D) (P.T.A.B. Nov. 17, 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. 14/056,533 10/17/2013 Pedro Encinas PHCA1205-001 8473 26948 7590 11/17/2020 VENJURIS, P.C. 1938 E. OSBORN RD PHOENIX, AZ 85016-7234 EXAMINER NEWAY, BLAINE GIRMA ART UNIT PAPER NUMBER 3735 NOTIFICATION DATE DELIVERY MODE 11/17/2020 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): docketing@venjuris.com vclmdocket@venjuris.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte PEDRO ENCINAS ____________ Appeal 2020-001875 Application 14/056,533 Technology Center 3700 ____________ Before: CHARLES N. GREENHUT, WILLIAM A. CAPP, and JILL D. HILL, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final rejection of claims 1–8. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appeal 2020-001875 Application 14/056,533 2 THE INVENTION Appellant’s invention is a portable cooler. Spec. ¶ 1. Claim 1, reproduced below, with emphasis added, is illustrative of the subject matter on appeal. 1. A portable cooler apparatus comprising: a. a container; b. a lid with an inside and an outside; c. a bidirectional telescoping member with a first end and a second end; d. a tray with an inner surface and an outer surface; e. wherein the container holds liquid wherein the depth of the liquid is vertically movable within the container; f. wherein the first end of the bidirectional telescoping member is coupled to the inner surface of the tray such that the tray adjusts in a bi-directionally vertical manner within the container based on the level of the liquid in the container; g. wherein the second end of the bidirectional telescoping member is coupled to the inside of the lid; and h. wherein the lid if removably coupled to the container such that the ray and lid fit within the container. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: NAME REFERENCE DATE Morgan US 4,424,687 Jan 10, 1984 Donley US 5,402,810 Apr. 4, 1995 Kaposi US D473,751 S Apr. 29, 2003 Harris US 7,690,523 B2 Apr. 6, 2010 Appeal 2020-001875 Application 14/056,533 3 The following rejections are before us for review: 1. Claims 1–7 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Harris, Donley, and Kaposi. 2. Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Harris, Donley, Kaposi, and Morgan. OPINION Unpatentability of Claims 1–7 over Harris, Donley, and Kaposi In the Final Action, the Examiner concedes that Harris and Donley fail to disclose a lid with a telescoping member attached thereto that adjusts in a vertical manner based on the level of liquid in the container. Final Act. 3–4. The Examiner relies on Donley as disclosing a non-telescoping handle member attached to a lid. Id. at 3. The Examiner finds that Kaposi discloses a telescoping handle member. Id. at 4. The Examiner further determines that Harris’s device, as modified to include Donley’s handle attachment and Kaposi’s telescoping member would be capable of adjustment based on the level of fluid in the container. Id. Appellant argues: This use and function of the device in Harris is in direct contrast to the Appellant's invention where the bidirectional telescoping member coupled to the tray is made to move vertically in the container based on the liquid level. The Appellant's device does not engage the walls, but rather moves up and down without manual manipulation to keep the tray in contact with the liquid level when not manually removed. Appeal Br. 11. Kaposi discloses a steamer basket. Kaposi, claim, Figs. 1–7. Kaposi’s base is perforated with holes that allow fluid to pass. Id. Fig. 5. Appeal 2020-001875 Application 14/056,533 4 Based on the existence of these holes, we can reasonably infer that Kaposi’s steamer basket is not able to float on the surface of a body of fluid. Id. Figs. 5–7. Kaposi has a telescoping handle. Id. compare Figs. 1, 2, 4, 6. The Figures depict the handle in either a fully extended or a fully collapsed configuration. Id. Kaposi is a design patent that discloses and depicts “an ornamental design.” Id. claim. There is no disclosure regarding the mechanical utility and function of the steamer basket and handle as an apparatus. In particular and contrary to the Examiner’s finding, there is no disclosure in Kaposi regarding any mechanism, means, or similar capability for the handle to maintain itself in an intermediate length configuration on any basis, much less based on the level of liquid in the container. The Examiner makes no findings regarding the teachings of Harris and/or Donley that overcome this deficiency. Furthermore, the Examiner provides neither evidence nor persuasive technical reasoning as to how or why a person of ordinary skill in the art would have modified the prior art to impart an intermediate vertical adjustment capability to a handle based on the fluid level in a cooler. See Appeal Br. 11. Where the Examiner determines a functionally recited characteristic of the claimed subject matter to be an inherent characteristic of the prior art, the Examiner must explain with evidence or technical reasoning the basis for that determination. See MPEP § 2112 (citing, inter alia, In re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990)). Here, it is not clear from the record before us precisely what structure from the Examiner’s proposed combination of the teachings of Harris, Donley, and Kaposi the Examiner is relying on as providing the capability for vertical adjustment recited in limitation f of claim 1. See Final Act. 4. The Examiner does not identify any structure, and no such structure Appeal 2020-001875 Application 14/056,533 5 is apparent to us, in either of Harris or Donley, even with “manual[]” assistance. See Id. We can envisage perhaps two ways by which a telescoping member could be adjusted based on the level of fluid in the container. One way would be that the dry food carrying tray is water impermeable and buoyant such that it could float on the surface of the fluid and forces attendant upon such buoyancy could maintain the telescoping member in a partially extended state. Harris, Donley, and Kaposi all disclose perforated trays that cannot float. A second way to adjust the telescoping member would be to impart some type of locking mechanism that could hold the tray at an intermediate extension length and do so with sufficient force to overcome the combined weight of the tray and its contents. We reiterate that there is no evidence in the record before us to support the Examiner’s finding that Kaposi’s telescoping member is somehow “capable” of vertical adjustment, for example, by somehow maintaining itself at a partially extended length. “[T]he precise language of 35 U.S.C. § 102 that ‘(a) person shall be entitled to a patent unless,’ concerning novelty and unobviousness, clearly places a burden of proof on the Patent Office which requires it to produce the factual basis for its rejection of an application under sections 102 and 103.” In re Warner 379 F.2d 1011, 1016 (CCPA 1967). Here, the Examiner did not carry this burden. We do not sustain the rejection of claim 1 on the grounds set forth by the Examiner. Claims 2–7 depend from claim 1. Claims App. These claims are infected with the same infirmity as found with respect to claim 1 and fall therewith. Appeal 2020-001875 Application 14/056,533 6 Unpatentability of Claim 8 over Harris, Donley, Kaposi, and Morgan Claim 8 depends from claim 1. Claims App. In rejecting claim 8, the Examiner relies on the same erroneous finding of fact regarding the prior art’s alleged capability to adjust vertically that caused us not to sustain the rejection of claim 1. This deficiency is not cured by any finding of fact or reasoning regarding the Morgan reference. Final Act. 5. For the same reason detailed above with respect to claim 1, we do not sustain the rejection of claim 8. CONCLUSION Claims Rejected § Reference(s) Affirmed Reversed 1-7 103 Harris, Donley, Kaposi 1-7 8 103 Harris, Donley, Kaposi, Morgan 8 Overall Outcome 1-8 REVERSED