UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`MUNCHKIN, INC. AND TOYS “R” US, INC.
`Petitioners
`
`v.
`
`LUV N’ CARE, LTD.
`Patent Owner
`__________________
`
`CASE IPR2013-00072
`Patent D617,465
`___________________
`
`Before SALLY C. MEDLEY, JENNIFER S. BISK, and MICHAEL J.
`FITZPATRICK, Administrative Patent Judges.
`
`LUV N’ CARE, LTD.’S RESPONSE TO THE BOARD’S DECISION
`TO INSTITUTE INTER PARTES REVIEW
`
`Morris E. Cohen (Reg. No. 39,947)
`Lee A. Goldberg (Reg. No. 38,894)
`GOLDBERG COHEN LLP
`1350 Avenue of the Americas, 4th Fl.
`New York, New York, 10019
`Tel: (646) 380-2087
`Fax: (646) 514-2123
`MCohen@GoldbergCohen.com
`LGoldberg@GoldbergCohen.com
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`MUNCHKIN, INC. AND TOYS “R” US, INC.
`Petitioners
`
`v.
`
`LUV N’ CARE, LTD.
`Patent Owner
`__________________
`
`CASE IPR2013-00072
`Patent D617,465
`___________________
`
`Before SALLY C. MEDLEY, JENNIFER S. BISK, and MICHAEL J.
`FITZPATRICK, Administrative Patent Judges.
`
`LUV N’ CARE, LTD.’S RESPONSE TO THE BOARD’S DECISION
`TO INSTITUTE INTER PARTES REVIEW
`
`Morris E. Cohen (Reg. No. 39,947)
`Lee A. Goldberg (Reg. No. 38,894)
`GOLDBERG COHEN LLP
`1350 Avenue of the Americas, 4th Fl.
`New York, New York, 10019
`Tel: (646) 380-2087
`Fax: (646) 514-2123
`MCohen@GoldbergCohen.com
`LGoldberg@GoldbergCohen.com
`
`
`
`IPR2013-00072
`D617,465
`
`Receipt is acknowledged of the Decision of April 25, 2013 in the present inter
`
`partes review of U.S. Patent No. D617,465 (“the ‘465 patent” or “the patent-at-issue”),
`
`which ‘465 patent was filed as U.S. Serial No. 29/292,909 (“the ‘909 application” or
`
`“the patent application”).
`
`In response to the Decision, each of the issues raised therein is addressed below.
`
`Reconsideration and further examination of the application are respectfully requested.
`
`The Commissioner is hereby authorized to debit any and all amounts deemed required
`
`from Deposit Account No. 50-5393.
`
`Discussion of Amended Claim / Amended Drawings
`
`I.
`
`Issue of Continuity
`
`In the Office Action, a priority issue was raised as to the continuity of the ‘465
`
`patent with respect to its parent. Further thereto, a motion to amend has been filed,
`
`including amended drawings. It is submitted that the amended drawings fully address
`
`all of the continuity objections.
`
`As acknowledged in the Office Action, the ‘465 patent is a continuation of
`
`Serial No. 10/536,106 (“the ‘106 application” or “the parent application”). The
`
`disclosure of the ‘106 application was fully incorporated by reference in the present
`
`- 2 -
`
`
`
`IPR2013-00072
`D617,465
`
`‘465 patent, as part of the specification originally filed in the ‘909 application. See,
`
`‘909 Original Specification filed October 31, 2007 at p.1.
`
`Accordingly, the patentee has amended the drawings herein, so as to conform
`
`the drawings in the ‘465 patent to those of its parent application.
`
`As shown in the attached amended drawings, the patentee has taken the figures
`
`from the issued ‘465 patent and digitally conformed them to various figures in the
`
`parent ‘106 application. As such, the present amendments are believed to address all
`
`of the objections raised by the Patent Office on page 7 of the Decision. In particular:
`
`i.
`
`The overall perimeter shape of the spout has been amended to match the
`
`‘race-track’ shape in Figure 8E of the ‘106 application, including
`
`structure and relative sizes.1
`
`ii.
`
`In addition, the slits in the spout tip and vent have been added to the
`
`figures. Those slits have been included in dotted outline, as they are
`
`unclaimed subject matter.
`
`1 The additional edges around the perimeter of Figure 8E are not shown in
`the attached replacement figures, since they are not visible due to the attachment of
`the lid to the screw ring.
`
`- 3 -
`
`
`
`IPR2013-00072
`D617,465
`
`In addition, the claim has been narrowed very slightly. Specifically: (1) the
`
`minor notches on the spout portion have been added to the claim (by using solid,
`
`instead of broken lines); and (2) a raised rim around the air vent has been added. Both
`
`of these features are shown in the figures of the ‘106 application. An embodiment
`
`with notches, for example, is shown in Figure 10(b) of the ‘106 application, and an
`
`embodiment with the raised rim is shown in Figure 11(d).
`
`An illustration of the amended drawings in comparison to various figures, in
`
`whole or cropped, from the ‘106 application (labeled “Original Fig.”) is set forth in
`
`the Patent Owner’s Motion to Amend concurrently filed on today’s date. As shown
`
`by the examples therein, the currently amended figures are consistent with the figures
`
`of the ‘106 application.2
`
`As a result, in view of the above, it is submitted that continuity is present
`
`between the ‘106 application and the present patent, such that the patentee is entitled
`
`2 The patentee notes that these amendments are not intended as an
`admission that the ‘465 patent was not previously entitled to priority. As further
`discussed below, the patentee believes that priority was present in view of the
`drawings and the statements in the written description in the parent. The present
`drawings have been amended without prejudice, however, to conform them to
`particular figures as discussed above, so as to expedite favorable action and an
`allowance.
`
`- 4 -
`
`
`
`IPR2013-00072
`D617,465
`
`to the priority benefit of the ‘106 application’s filing date. Recognition of that
`
`continuity and priority are respectfully requested.
`
`II.
`
`Rejections Over Prior Art
`
`Based on the loss of continuity, the Office Action had rejected the ‘465 patent
`
`as follows:
`
`(1)
`
`(2)
`
`as being obvious under 35 U.S.C. §102(b) over Hakim U.S. Pub.
`2007/0221604 (“Hakim ‘604”);
`
`as being obvious under 35 U.S.C. §102(b) over Hakim U.S. Pat. No.
`6,994,225 (“Hakim ‘225”);
`
`In view of the amendments herein to address the continuity issues, it is
`
`submitted that the present application is entitled to the August 5, 2003 filing date of
`
`the ‘106 parent application. As a result, withdrawal of the rejections is respectfully
`
`requested.
`
`In particular, the present application claims the priority of Hakim ‘604 (Hakim
`
`‘604 being the same as the ‘106 parent). As a result, the 2007 publication of Hakim
`
`‘604 and the Hakim ‘225 patent are not prior art.
`
`Accordingly, with the elimination of all of the primary references, it is
`
`respectfully submitted that the present patent is fully valid and patentable.
`
`- 5 -
`
`
`
`IPR2013-00072
`D617,465
`
`Discussion of Initial Claim and Drawings
`
`Should the motion to amend be granted, it is submitted that the amended claim
`
`is patentable as set forth above.
`
`In the alternative, should leave to amend not be granted, the Patent Owner
`
`respectfully submits that the ‘465 patent claim remains patentable as originally issued.
`
`In particular, two objections were raised by the Patent Office on page 7 of the
`
`Decision. An objection was raised with respect to the oval shaped spout tip of the
`
`‘465 patent, and to the absence of slits in the spout tip and vent.
`
`With respect to the oval shaped tip, the parent ‘106 application discloses in the
`
`written description that the spout tip can be oval shaped. See e.g., col. 12 lines 45 -
`
`51 (“in the preferred embodiment of the spout, the tube is in the shape of an oval when
`
`viewed from the top. Thus, the valve of the nipple preferably has an upper cylindrical
`
`section, and the valve of the spout preferably has an upper tubular section with an oval
`
`shape. Alternately, another shape may be provided if desired”).
`
`With respect to the three slits, the Patent Owner notes that they were unclaimed
`
`subject matter. As a result, it is submitted that their lack of inclusion does not affect
`
`the drawings or the claim. In addition, the specification of the parent ‘106 application
`
`- 6 -
`
`
`
`IPR2013-00072
`D617,465
`
`indicates that the application is not limited to any particular type of opening. See e.g.,
`
`col. 8 lines 13 - 15 (“Any other type of opening can also be used, including any
`
`combination of holes, slits, or so forth”).
`
`As such, since the issued drawings of the ‘465 patent were supported by the
`
`specification of the parent ‘106 application, it is submitted that they were entitled to
`
`the priority of that parent.
`
`Conclusion
`
`In view of the foregoing amendments and remarks, reconsideration of the patent
`
`and favorable action are respectfully requested.
`
`Dated: July 25, 2013
`
`Respectfully submitted,
`
`/Morris E. Cohen/
`
`Morris E. Cohen (Reg. No. 39,947)
`Lee A. Goldberg (Reg. No. 38,894)
`GOLDBERG COHEN LLP
`1350 Avenue of the Americas, 4th Fl.
`New York, New York, 10019
`Tel: (646) 380-2087
`Fax: (646) 514-2123
`MCohen@GoldbergCohen.com
`LGoldberg@GoldbergCohen.com
`
`- 7 -
`
`
`
`IPR2013-00072
`D617,465
`
`CERTIFICATE OF SERVICE
`In connection with the above-referenced reexamination proceeding, I hereby
`certify that on July 25, 2013 the foregoing Luv n’ care, Ltd.’s Response to the
`Board’s Decision to Institute Inter Partes Review is being served on the following
`counsel for the third party requesters in this matter via First Class Mail and electronic
`mail:
`
`Dane A. Baltich
`ALSTON & BIRD LLP
`Bank of America Plaza
`101 South Tryon Street, Suite 4000
`Charlotte, North Carolina 28280-4000
`dane.baltich@alston.com
`
`Dated: July 25, 2013
`
`Respectfully submitted,
`
`/Morris E. Cohen/
`
`Morris E. Cohen (Reg. No. 39,947)
`Lee A. Goldberg (Reg. No. 38,894)
`GOLDBERG COHEN LLP
`1350 Avenue of the Americas, 4th Fl.
`New York, New York, 10019
`Tel: (646) 380-2087
`Fax: (646) 514-2123
`MCohen@GoldbergCohen.com
`LGoldberg@GoldbergCohen.com
`
`- 8 -
`
`
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