Scott Cooper

Patent Trials and Appeals Board

Nov 19, 2020

2020000848 (P.T.A.B. Nov. 19, 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.
13/897,782 05/20/2013 Scott Cooper 19217 US 8974
27081 7590 11/19/2020
O-I Glass, Inc.
Attn: Stephen L. Scharf
One Michael Owens Way
Plaza One - Legal Department
Perrysburg, OH 43551-2999
EXAMINER
XU, XIAOYUN
ART UNIT PAPER NUMBER
1797
MAIL DATE DELIVERY MODE
11/19/2020 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 SCOTT COOPER
____________

Appeal 2020-000848
Application 13/897,782
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1, 5–10, 23, 25–27, 31, 32, and 36–42.2
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to the “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Owens-Illinois, Inc. as the real party in
interest. Appeal Brief filed August 30, 2019 (“Appeal Br.”) at 3.
2 Final Office Action entered February 11, 2019 (“Final Act.”) at 1.
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CLAIMED SUBJECT MATTER
Appellant claims a package. Appeal Br. 4–6. Independent claims 1
and 40 illustrate the subject matter on appeal, and read as follows:
1. A package that includes:
a glass or plastic beverage container,
a beverage dispensably disposed within said container,
said beverage comprising a known chemical compound that has
not been added to said beverage for purposes of identification
or authentication,
a closure for said container, and
an indicator carried by said container, said closure, or
both said container and said closure,
wherein, when said indicator is exposed to a sample of
said beverage, said indicator indicates that said beverage is
authentic by producing a response that can be visually observed
by a person without using a separate instrument, and
wherein said indicator is either:
(i) permanently attached to said container and can only
be exposed to a sample of said beverage by removing the
sample of said beverage from said container or
(ii) removably carried by said container, said closure, or
both said container and said closure and can only be exposed
to a sample of said beverage by removing said indicator from
said container or said closure.

40. A package that includes:
a glass or plastic beverage container,
a beverage dispensably disposed within said container,
a closure for said container, and
an indicator carried on top of said closure,
wherein, when said indicator is exposed to a sample of
said beverage, said indicator produces a visually observable
response,
wherein, said indicator can be exposed to a sample of
said beverage without removing the sample from said container,
and
wherein said indicator is permanently attached to said
closure and can only be exposed to a sample of said beverage
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by removing said closure from said container, inverting said
closure, and inserting said closure back into said container.

Appeal Br. 32, 36 (Claims Appendix) (emphasis and spacing added).
REJECTIONS
The Examiner maintains the following rejections in the Examiner’s
Answer entered September 13, 2019 (“Ans.”):
I. Claims 1, 5–10, 23, 25–27, 31, 32, 36–39, and 413 under
35 U.S.C. § 112(b) as being indefinite for failing to particularly point out
and distinctly claim the subject matter that the inventor regards as the
invention; and
II. Claims 1, 5–10, 23, 25–27, 31, 32, and 36–424 under 35 U.S.C.
§ 103 as unpatentable over Green5 in view of Hood6 and Shiells.7

FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we reverse the Examiner’s rejection of
claims 1, 5–10, 23, 25–27, 31, 32, 36–39, and 41 under 35 U.S.C. § 112(b)
for the reasons set forth in the Appeal Brief and below, and we affirm the

3 The Examiner withdrew the rejection of claims 40 and 42 under 35 U.S.C.
§ 112(b) in the Answer. Ans. 6.
4 Although the Examiner does not list claims 41 and 42 in the heading for
this rejection (Final Act. 4), the Examiner addresses these claims in the body
of the rejection. Final Act. 10–11. We, therefore, treat the omission of
claims 41 and 42 from the heading of the rejection under § 103 as an
inadvertent typographical error.
5 Green, US 2006/0035288 A1; published February 16, 2006.
6 Hood, US 2011/0050431 A1; published March 3, 2011.
7 Emma Shiells, Fingerprinting Red Wine, Chem. Sci. Blog, 1–3 (November
26, 2010).
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Examiner’s rejection of claims 1, 5–10, 23, 25–27, 31, 32, and 36–42 under
35 U.S.C. § 103 for the reasons set forth in the Final Action, the Answer,
and below.
We review appealed rejections for reversible error based on the
arguments and evidence the Appellant provides for each issue the Appellant
identifies. 37 C.F.R. § 41.37(c)(1)(iv) (2018); Ex parte Frye, 94 USPQ2d
1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung,
637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner
had failed to make a prima facie case, “it has long been the Board’s practice
to require an applicant to identify the alleged error in the examiner’s
rejections”)).
Rejection I
We first address the Examiner’s rejection of claim 1, 5–10, 23, 25–27,
31, 32, 36–39, and 41 under 35 U.S.C. § 112(b) as being indefinite.
The Examiner finds that “Appellant’s Specification does not describe
any limiting characteristics or features of an ‘authentic’ product that
distinguish it from a ‘counterfeit’ product,” and “does not describe []
predetermined chemical compounds that are known to be associated with a
given (authentic) product.” Final Act. 3. The Examiner determines that
“due to the lack of disclosure in Appellant’s Specification of a limiting
distinction between an ‘authentic’ product and a ‘counterfeit’ product, one of
ordinary skill in the art would be unable to determine the meaning of an
‘authentic or counterfeit’ ‘product’ as recited in claim 1,” and “because the
nature of an ‘authentic’ product is unclear, one of ordinary skill in the art
would also be unable to determine if a ‘predetermined chemical compound’
is ‘known to be associated with an authentic product,’ as also recited in
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claim 1.” Final Act. 4. The Examiner concludes that “[c]laim 1 is therefore
of indefinite scope.” Id.
As Appellant points out, however, this reasoning by the Examiner in
the Final Action is based “substantially verbatim” on a new ground of
rejection set forth in our Decision entered February 12, 2018, despite the fact
that Appellant amended claim 1 in response to the Decision “to remove all
reference to ‘an authentic or counterfeit’ product and to ‘a predetermined
chemical compound that is known to be associated with an authentic
product.’” Appeal Br. 9. The Examiner’s findings and reasoning set forth
above for determining that claim 1 is indefinite, therefore, do not address the
current language of claim 1, and, consequently, do not establish that one of
ordinary skill in the art would be unable to determine the meets and bounds
of claim 1 as currently written.
The Examiner further determines that “[c]laim 1 recites ‘said
beverage comprising a known chemical compound that has not been added
to said beverage for purposes of identification or authentication’ without
specifically defining the relation between the known compound and the
indicator that renders the claim unclear and indefinite.” Final Act. 4.
During prosecution of patent applications, “the PTO must give claims
their broadest reasonable construction consistent with the specification. . . .
Therefore, we look to the specification to see if it provides a definition for
claim terms, but otherwise apply a broad interpretation.” In re ICON Health
& Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). As Appellant points
out, Appellant’s Specification describes a relationship between an
“indicator” and a “known chemical compound” as recited in claim 1,
explaining that “the indicator 40 may be configured to detect the presence of
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certain chemical compounds that are known to be associated with authentic
products” or to detect “the presence of a certain substance or chemical
compound that is known to be associated with a counterfeit product.”
Appeal Br. 15 (citing Spec. ¶¶ 22, 23).
The Specification further explains that the indicator may establish the
authenticity of a wine or liquor product by revealing whether or not
“signature” chemical compounds (known chemical compounds) are present
in the wine or liquor. Spec. ¶ 38. The Specification indicates that
exemplary “signature” chemical compounds (known chemical compounds)
include flavor compounds, such as alcohol or phenol compounds, and a
suitable enzyme (indicator) for detecting the presence of alcohol is alcohol
oxidase, while a suitable enzyme (indicator) for detecting the presence of
phenol compounds is tyrosinase. Id.
In view of this description provided in Appellant’s Specification of a
relationship between an “indicator” and a “known chemical compound” as
recited in claim 1, the Examiner does not adequately show or explain why
one of ordinary skill in the art would find the scope of claim 1 to be unclear.
Amgen, Inc. v. Chugai Pharm. Co., Ltd., 927 F.2d 1200, 1217 (Fed. Cir.
1991) (A claim is considered indefinite under 35 U.S.C. § 112, second
paragraph, if it does not reasonably apprise those skilled in the art of its
scope).
We, accordingly, do not sustain the Examiner’s rejection of claim 1
under 35 U.S.C. § 112(b) as being indefinite. Because the Examiner’s
indefiniteness rejection addresses claim 1 only, we also do not sustain the
Examiner’s rejection of the remaining claims subject to this rejection.

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Rejection II
We turn now to the Examiner’s rejection of claims 1, 5–10, 23, 25–27,
31, 32, and 36–42 under 35 U.S.C. § 103 as unpatentable over Green in view
of Hood and Shiells.
Appellant presents arguments directed to independent claims 1 and
40, and also separately argues each of claims 8, 9, 10, and 27, which depend
from claim 1. We, therefore, select claim 1 as representative of claims 1, 5–
7, 23, 25, 26, 31, 32, and 36–39, select claim 40 as representative of claims
40–42, and separately address each of claims 8, 9, 10, and 27. 37 C.F.R.
§ 41.37(c)(1)(iv).
Claims 1, 5–7, 23, 25, 26, 31, 32, and 36–39
The Examiner finds that Green discloses a bottle having a closure
(beverage container) that contains liquor (beverage) including a known
chemical compound “targeted by an indicator.” Final Act. 4–5 (citing Green
¶¶ 4, 16, 23). The Examiner finds that Green discloses that the indicator is
disposed on a test strip, and when the test strip is exposed to a sample of the
liquor, the indicator reveals whether the beverage is authentic by producing
a color that can be visually observed by a person without using a separate
instrument. Final Act. 5 (citing Green ¶¶ 40, 41). The Examiner finds that
Green discloses that the test strip (indicator) can be exposed to a sample of
the liquor by removing a sample of the liquor from the bottle (beverage
container). Final Act. 5 (citing Green ¶ 40, Fig. 3).
The Examiner finds that Green does not disclose that the test strip
(indicator) is either permanently attached to the bottle (beverage container),
or is removably carried by the bottle (beverage container), the closure, or
both the bottle (beverage container) and the closure, and can only be
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exposed to a sample of liquor (beverage) by removing the test strip
(indicator) from the bottle (beverage container) or closure. Final Act. 5.
The Examiner determines, however, that one of ordinary skill in the
art would have recognized that attaching a test strip (indicator) permanently
or removably to Green’s bottle (beverage container) would permit
convenient on-site testing of liquor contained in the bottle. Final Act. 5.
The Examiner finds that Hood discloses a beverage container including a
sensor (indicator) that is either permanently attached to the beverage
container, or removably carried by the base of the beverage container, which
“could only be exposed to a sample of the beverage by removing the sensor
from the base of the container.” Final Act. 5; see also Ans. 18. Hood
discloses and illustrates several embodiments in which a sensor is located in
a particular region of the beverage container, and Hood also more broadly
discloses that the sensor “may be coextensive with the vessel body, such as
when the sensor 110 is embedded or attached in parallel with the walls or
base of the vessel.” Hood ¶ 32. Hood further discloses that the sensor “may
be present in or on other parts of the vessel body, including a side, lid,
attached straw, top, bottom, or side region.” Hood ¶ 32.
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to removably attach the test strip (indicator)
disclosed in Green to Green’s bottle (beverage container) and/or to the
closure of the bottle (beverage container) to permit on-site testing of liquor
(beverage) contained in the bottle (beverage container), and to expose the
test strip (indicator) to a sample of the liquor (beverage) by removing the test
strip (indicator) from the bottle (beverage container) or closure. Final Act.
5.
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Appellant argues that Hood discloses beverage container l00 including
a vessel body configured to hold beverage 105, and sensor 110, 400
associated with the vessel body and configured to detect a substance in a
fluid associated with container 100. Appeal Br. 19. Appellant argues,
referring to Hood’s Figures 1, 4, and 6, that “[i]n all of the embodiments of
Hood—in which the sensor is either permanently attached or removable
from the container 100—the sensor 110, 400 is located in a region of the
vessel body where the sensor 110, 400 would inherently and necessarily be
exposed to a beverage fluid contained within the vessel body during an
individual’s normal use of the container 100.” Appeal Br. 20. Appellant
argues that, consequently, “the sensor of Hood would inherently and
necessarily be exposed to a beverage fluid contained within the vessel body
during an individual’s normal use of the container 100 without removing a
sample of the beverage from the container 100 and without removing the
sensor from the container 100,” contrary to the requirements of claim 1.
Appeal Br. 20 (emphasis omitted); Reply Br. 6.
Appellant’s arguments do not identify reversible error in the
Examiner’s rejection because the arguments are narrowly focused on
particular exemplary embodiments disclosed in Hood, and do not address the
obviousness rejection as set forth by the Examiner. Appellant does not
dispute the Examiner’s determination that Green discloses a beverage
container comprising a liquid, and use of a test strip external to the container
to authenticate the liquid. Compare Final Act. 4–5, with Appeal Br. 17–23;
Green ¶¶ 38–45 (Example 1). The Examiner relies on Hood to establish that
it was known to persons of ordinary skill in the art to removably attach test
sensors (i.e. test strips) to various locations on liquid containers, including
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external to the container (e.g. attached to a straw). Hood ¶ 32.
In view of these disclosures in Green and Hood, one of ordinary skill
in the art reasonably would have understood that a test sensor could be
removably attached to various portions of a beverage container, including
the side, lid, or base of the container, and also would have understood that
the sensor could be removably or permanently attached to either the inside
surface or outside surface of the side, lid, or base. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007) (An obviousness analysis “need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for [an examiner] can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.”); see also In re
Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]t is proper to take into account
not only specific teachings of the reference but also the inferences which one
skilled in the art would reasonably be expected to draw therefrom.”).
One of ordinary skill in the art would have further understood that to
expose a sample of a beverage included in the drinking vessel to a sensor
permanently attached to the outside surface of the side, lid, or base of the
drinking vessel, a sample of the beverage would need to be removed from
the drinking vessel. And if the sensor were removably attached to the
outside surface of the side, lid, or base of the drinking vessel, the sensor
could be removed from the side, lid, or base of the drinking vessel to expose
the sensor to a sample of a beverage included in the drinking vessel, if a
sample of the beverage was not removed from the drinking vessel, or if the
sensor was contained in packaging that required removal before use of the
sensor.
Appellant argues that “[t]here is simply no reason why an ordinarily
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skilled artisan having knowledge of Green and Hood would be motivated to
modify or combine the teachings thereof in such a manner so as to arrive at
the package of claim 1” because if one of ordinary skill in the art “were to
modify the teachings of Green with those of Hood,” the artisan would
modify Green’s product packaging to include a sensor strategically located
in a region of the packaging where the sensor would inherently and
necessarily be exposed to the liquid or food product contained within the
packaging during an individual’s normal use or consumption of the liquid or
food product, so that the sensor “would inherently and necessarily be
exposed to the liquid or food product without removing a sample of the
liquid or food product from the product packaging and without removing the
sensor from the product packaging.” Appeal Br. 21; Reply Br. 6.
Appellant’s arguments are not persuasive for the reasons set forth
above. Example 1 of Green describes a beverage container comprising a
liquid, and use of a test strip external to the container to authenticate the
liquid. Hood evidences that it was known to persons of ordinary skill in the
art to removably attach test sensors (i.e. test strips) to various locations on
liquid containers, including external to the container (e.g. attached to a
straw). Hood ¶ 32. One of ordinary skill in the art would have recognized
that under certain circumstances it would be desirable to test a beverage to
confirm its authenticity as disclosed in Green using a sensor as disclosed in
Hood without the necessity of an individual consuming the beverage in order
to perform the test. Consequently, one of ordinary skill in the art seeking to
determine the authenticity of a beverage contained in a bottle (beverage
container) using a test strip including an indicator as disclosed in Green
reasonably would have been led to removably or permanently attach the test
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strip (indicator) to the outer surface of the bottle’s side, lid (closure), or base
as suggested by Hood, so that a sample of the beverage could be tested on
site without an individual having to consume the beverage to perform the
test. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (“[T]he test for
combining references is not what the individual references themselves
suggest but rather what the combination of disclosures taken as a whole
would suggest to one of ordinary skill in the art.”).
Appellant argues that “the Examiner’s proposed modification would
necessarily render the sensor of Hood unsatisfactory for its intended purpose
and/or change the principle of operation of the sensor” because if Hood’s
sensor were permanently attached to a beverage container so that the sensor
could only be exposed to a sample of the beverage by removing the sample
from the container, Hood’s sensor would no longer inherently and
necessarily be exposed to the beverage during an individual’s normal use of
the container. Appeal Br. 22. Appellant argues that if Hood’s sensor were
removably carried by a beverage container and/or container closure, and
could only be exposed to a beverage sample by removing the sensor from
the container or the closure, then Hood’s sensor would no longer inherently
and necessarily be exposed to the beverage during an individual’s normal
use of the container. Id.
Appellant’s arguments do not identify reversible error in the
Examiner’s rejection, however, because the arguments do not address the
rejection as actually presented by the Examiner. As discussed above, the
Examiner’s proposed combination of Green and Hood is not based on
modification of Hood’s sensor as Appellant’s arguments imply. Rather, the
Examiner determines that it would have been obvious to modify Green’s
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bottle (beverage container), and/or the closure of the bottle, to removably
attach Green’s test strip (indicator) to the bottle or closure, as suggested by
Hood, to permit on-site testing of liquor contained in the bottle. Final Act.
5.
We, accordingly, sustain the Examiner’s rejection of claims 1, 5–7,
23, 25, 26, 31, 32, and 36–39 under 35 U.S.C. § 103.
Claim 8
Claim 8 depends from claim 1 and recites that “said indicator is
removably carried by said container, said closure, or both said container and
said closure, and wherein said indicator can only be exposed to a sample of
said beverage by removing said indicator from said container or said
closure.”
Similar to the argument discussed above for claim 1, Appellant argues
that if Hood’s sensor were removably carried by a beverage container and/or
container closure, and could only be exposed to a beverage sample by
removing the sensor from the container or the closure, then Hood’s sensor
would no longer inherently and necessarily be exposed to the beverage
during an individual’s normal use of the container. Appeal Br. 23–24.
Appellant argues that “such a modification would necessarily render the
sensor of Hood unsatisfactory for its intended purpose and/or change the
principle of operation of the sensor.” Appeal Br. 24.
Appellant’s arguments do not identify reversible error in the
Examiner’s rejection of claim 8 because the rejection presented by the
Examiner is not based on modification of Hood’s sensor, as Appellant’s
arguments imply. Final Act. 5, 7. Rather, the Examiner proposes
modifying Green’s bottle (beverage container) to removably attach Green’s
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test strip (indicator) to the bottle, as suggested by Hood, to permit on-site
testing of liquor contained in the bottle. Final Act. 5, 7.
We, accordingly, sustain the Examiner’s rejection of claim 8 under
35 U.S.C. § 103.
Claim 9
Claim 9 depends from claim 1 and recites that “said indicator is
permanently attached to an external surface of said container, and wherein a
sample of said beverage must be removed from said container to expose said
indicator to the sample of said beverage.”
Similar to the argument discussed above for claim 1, Appellant argues
that if Hood’s sensor were permanently attached to a beverage container so
that the sensor could only be exposed to a sample of the beverage by
removing the sample from the container, Hood’s sensor would no longer
inherently and necessarily be exposed to the beverage during an individual’s
normal use of the container. Appeal Br. 24. Appellant argues that “such a
modification would necessarily render the sensor of Hood unsatisfactory for
its intended purpose and/or change the principle of operation of the sensor.”
Appeal Br. 24–25.
Appellant’s arguments do not identify reversible error in the
Examiner’s rejection of claim 9 because the rejection presented by the
Examiner is not based on modification of Hood’s sensor, as Appellant’s
arguments imply. Final Act. 5, 7. Rather, the Examiner proposes modifying
Green’s bottle (beverage container) to permanently attach Green’s test strip
(indicator) to the bottle, as suggested by Hood, to permit on-site testing of
liquor contained in the bottle. Final Act. 5, 7; see also Ans. 22.
We, accordingly, sustain the Examiner’s rejection of claim 9 under
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35 U.S.C. § 103.
Claim 10
Claim 10 depends from claim 1 and recites that “said container is of
one-piece integrally formed glass, said indicator is in the form of a sol-gel
coating formed on an external surface of said container, and wherein a
sample of said beverage must be removed from said container to expose said
indicator to the sample of said beverage.”
The Examiner finds that although Green discloses an indicator
disposed on a test strip for determining the authenticity of liquor including a
known chemical compound targeted by the indicator, Green does not
disclose that the indicator is in the form of a sol-gel coating. Final Act. 5, 7.
The Examiner finds, however, that Hood discloses an indicator in the form
of a sol-gel coating, and concludes that it would have been obvious to one of
ordinary skill in the art to permanently attach an indicator in the form of a
sol-gel coating as disclosed in Hood to Green’s bottle (beverage container)
and/or to the closure of the bottle as further disclosed in Hood, to permit on-
site testing of liquor contained in the bottle. Final Act. 7 (citing Hood ¶¶ 45,
77; Fig. 6).
Appellant argues that if Hood’s sensor was in the form of a sol-gel
coating formed on an external surface of Hood’s beverage container, such
that a sample of a beverage disposed within the container would have to be
removed from the container to expose the sensor to the sample, Hood’s
sensor would no longer inherently and necessarily be exposed to the
beverage during an individual’s normal use of the container. Appeal Br. 25.
Appellant argues that “such a modification would necessarily render the
sensor of Hood unsatisfactory for its intended purpose and/or change the
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principle of operation of the sensor.” Id.
Appellant’s arguments do not identify reversible error in the
Examiner’s rejection, however, because the arguments again do not address
the rejection as actually presented by the Examiner. As discussed above, the
Examiner’s proposed combination of Green and Hood is not based on
modifying the position of Hood’s sensor as Appellant’s arguments imply.
Rather, the Examiner proposes modifying Green’s bottle (beverage
container), and/or the closure of the bottle, to permanently attach an
indicator in the form of a sol-gel coating to the bottle or closure as disclosed
in Hood, to permit on-site testing of liquor contained in the bottle.
Because Appellant’s arguments do not identify reversible error in the
Examiner’s rejection of claim 10 under 35 U.S.C. § 103, we sustain the
rejection.
Claim 27
Claim 27 depends from claim 1 and recites that “said indicator is
carried on top of said closure, and wherein said indicator can be exposed to a
sample of said beverage by removing said closure from said container,
inverting said closure, and inserting said closure back into said container,
without removing the sample from said container.”
The Examiner finds that Green discloses determining the authenticity
of bottled liquor containing a known chemical compound targeted by an
indicator using a dip stick analysis. Final Act. 4–5, 8–9 (citing Green ¶¶ 16,
20, 40, 41; Fig. 3). The Examiner finds that one of ordinary skill in the art
would have understood that a dip stick analysis as disclosed in Green could
be performed by either contacting liquor inside Green’s bottle with the dip
stick, or pouring a sample of liquor from the bottle into a test container, and
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contacting the liquor with the dip stick while the liquor is in the test
container. Ans. 24. The Examiner finds that one of ordinary skill in the art
would have understood that a dip stick as disclosed in Green, therefore,
could be used in such a manner that it would only be in contact with liquor
when a test is actually being performed on the liquor. Id. The Examiner
finds that Green’s disclosure of a dip stick analysis, in view of Hood’s
disclosure of disposing a sensor on the lid of a beverage container, would
have suggested attaching a dip stick to the outside surface of the closure (lid)
of Green’s bottle, to allow the dip stick to contact liquor inside the bottle
only when testing the liquor. Id.
The Examiner further determines that exposing an indicator to a
beverage sample by removing the closure from the container, inverting the
closure, and inserting the closure back into the container as recited in claim
27 is a design choice that would provide one way of exposing a sample of
liquor to Green’s test strip or dip stick attached to the outside surface of the
cover (lid) of Green’s bottle as suggested by Hood.
Appellant argues that neither Green nor Hood discloses or suggests an
indicator carried on top of a closure for a container. Appeal Br. 26.
Appellant argues that Hood’s sensor is intentionally located in a region of a
beverage container vessel body where the sensor will inherently and
necessarily be exposed to a beverage fluid contained within the vessel body
during an individual’s normal use of the container, without the individual
having to remove the sensor from the container. Id. Appellant argues that
“based upon the teachings of Hood, an ordinarily skilled artisan would
understand that, when the sensor of Hood is carried on top of a lid for the
container, the lid does not need to be removed from the container—let alone
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removed, inverted, and re-inserted back into the container—in order for the
sensor to be exposed to the beverage fluid in the container.” Id.
Appellant’s arguments do not identify reversible error in the
Examiner’s rejection, for reasons that follow.
One of ordinary skill in the art would have understood that when
disposing a sensor on the lid of a beverage container as disclosed in Hood,
the sensor could have been placed on either the inside surface of the lid or on
the outside surface of the lid. As the Examiner finds, one of ordinary skill in
the art would have understood that attaching a test strip or dip stick as
disclosed in Green to the outside surface of the closure (lid) of Green’s
bottle as suggested by Hood would prevent the test strip or dip stick from
being exposed to liquor inside the bottle until the test strip or dip stick is
actually used to test the liquor, providing a reason that would have led one of
the ordinary skill in the art to modify Green’s bottle in this manner. Ans. 24.
One of ordinary skill in the art would have further understood that a
test strip or dip stick attached to the outside surface of the closure (lid) of
Green’s bottle as suggested by Hood could be exposed to liquor in the bottle
by removing the closure (lid) from the bottle and pouring liquor from the
bottle onto the test strip or dip stick, or by removing the closure (lid) from
the bottle, inverting the closure (lid), placing it back on the bottle, and
tipping the bottle as recited in claim 27, such that exposing a sample of
liquor to the test strip or dip stick using either approach would have been
obvious to one of ordinary skill in the art.
Appellant argues that “the Examiner’s reliance on ‘design choice’ as a
rationale for modifying the prior art reference of Hood is improper because
the Examiner’s proposed modification of Hood would necessarily alter the
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function of the sensor of Hood because the sensor would no longer
inherently and necessarily be exposed to the beverage contained within the
vessel body during an individual’s normal use of the container.” Appeal Br.
26–27.
As discussed above, however, the Examiner’s rationale for rejecting
claim 27 is not based solely on design choice, and is not based on
modification of Hood’s sensor. Rather, the Examiner relies on Hood for
suggesting modification of Green’s bottle and test strip. Nonetheless, it is
well-established that reliance on design choice to support a conclusion of
obviousness may be appropriate where the applicant does not “set forth any
reasons why the differences between the claimed invention and the prior art
would result in a different function or give unexpected results.” In re Chu,
66 F.3d 292, 298–99 (Fed. Cir. 1995); see also In re Kuhle, 526 F.2d 553,
555 (CCPA 1975) (“Use of such means of electrical connection in lieu of
those used in the references solves no stated problem and would be an
obvious matter of design choice within the skill in the art.” (emphasis added)
(citations omitted)).
Appellant’s arguments do not direct us to any disclosure in
Appellant’s Specification, or to any other objective evidence, demonstrating
that an indicator carried on top of a container closure as recited in claim 27
that can be exposed to a sample of a beverage disposed in the container by
removing the closure from the container, inverting the closure, and inserting
the closure back into the container, without removing the sample from the
container, would function differently from, or produce unexpected results
relative to, a sensor disposed on the lid of a beverage container as disclosed
in Hood. Consequently, Appellant’s arguments do not identify reversible
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error in the Examiner’s reliance on design choice to support the Examiner’s
conclusion of obvious.
We, accordingly, sustain the Examiner’s rejection of claim 27 under
35 U.S.C. § 103.
Claims 40–42
To address the rejection of claim 40, Appellant presents arguments
that are substantially the same as the arguments that Appellant presents for
claim 27, discussed above. Appeal Br. 27–30; Reply Br. 7. Because
Appellant’s arguments for claim 27 do not identify reversible error in the
Examiner’s rejection of claim 27 for the reasons discussed above,
Appellant’s arguments also do not identify reversible error in the Examiner’s
rejection of claim 40 for the same reasons. We, accordingly, sustain the
Examiner’s rejection of claims 40–42 under 35 U.S.C. § 103.
CONCLUSION

Claims

35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1, 5–10, 23,
25–27, 31,
32, 36–39,
41
112(b) Indefiniteness 1, 5–10, 23,
25–27, 31,
32, 36–39,
41
1, 5–10, 23,
25–27, 31,
32, 36–42
103 Green, Hood,
Shiells
1, 5–10, 23,
25–27, 31,
32, 36–42

Overall
Outcome
1, 5–10, 23,
25–27, 31,
32, 36–42

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Application 13/897,782

21
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED