UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. Jackel International Limited and Mayborn USA, Inc.

Transcription

1 Petition for Inter Partes Review of U.S. Patent No. 8,695,841 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Jackel International Limited and Mayborn USA, Inc. Petitioners v. Admar International, Inc. Patent Owner U.S. Patent No. 8,695,841 Filing Date: June 9, 2010 Issue Date: April 15, 2014 Title: No-Spill Drinking Cup Apparatus PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,695,841 Inter Partes Review No

2 TABLE OF CONTENTS I. MANDATORY NOTICES UNDER 37 C.F.R 42.8(a)(1)... 1 A. Real Party-In-Interest Under 37 C.F.R. 42.8(b)(1)... 1 B. Related Matters under 37 C.F.R. 42.8(b)(2)... 1 C. Lead and Back-Up Counsel Under 37 C.F.R. 42.8(b)(3)... 1 D. Service Information... 2 E. Power of Attorney... 2 II. PAYMENT OF FEES 37 C.F.R III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R AND A. Grounds for Standing Under 37 C.F.R (a)... 3 B. Challenge Under 37 C.F.R (b) and Requested Relief... 3 C. Requirements for Inter Partes Review 37 C.F.R (c)... 7 IV. TECHNOLOGY BACKGROUND RELEVANT TO THE 841 PATENT... 7 A. Spill Proof Cups... 7 B. Flexible Membrane Valves... 8 C. Air Vents... 8 V. DESCRIPTION OF THE CLAIMED SUBJECT MATTER... 9 A. Specification of the 841 Patent... 9 B. The Claims of the 841 Patent... 9 VI. CLAIM CONSTRUCTION UNDER 37 C.F.R (B)(3) A. opening and hole ii

3 B. blocking element C. barrier VII. THE CHALLENGED CLAIMS OF THE 841 PATENT ARE UNPATENTABLE A. GROUND 1 Claims 1, 2, 5-9, and Are Obvious Over Raymond In View Of Mutti Overview of Raymond Overview of Mutti Independent Claim 1 Is Obvious Over Raymond in view of Mutti a. Claim 1(a): a no-spill drinking apparatus b. Claim 1(b): said no-spill drinking apparatus comprising a cap, said cap further comprising a spout c. Claim 1(c): said cap comprising a valve, said valve comprising a flexible material and an opening d. Claim 1(d): said apparatus comprising a blocking element next to said opening e. Claim 1(e): wherein said opening rests against said blocking element when the user is not drinking from said spout f. Claim 1(f): wherein said flexible material moves when the user sucks through said spout to drink from said spout, causing said opening and said blocking element to separate g. Claim 1(g): a barrier, said barrier blocking said flexible material from iii

4 moving beyond a maximum distance after said flexible material moves when the user sucks through said spout to drink from said spout Independent Claim 8 Is Obvious Over Raymond in View of Mutti a. Claim 8(a)-8(d), and 8(g) b. Claim 8(e): wherein said valve comprises a closed position in which said opening rests against said blocking element when the user is not drinking from said spout c. Claim 8(f): wherein said valve comprises an open position in which said flexible material moves when the user sucks through said spout to drink from said spout, causing said opening and said blocking element to separate d. Claim 8(h): a post, wherein the relative position of said post and said opening changes when the user sucks through said spout to drink from said spout e. Claim 8(i): wherein said post extends into and through said opening in said closed position and said open position of said valve Dependent Claims 2, 5-7, 9, a. Claims 2 and 9: wherein said flexible material comprises a center area and sidewalls, and wherein said center area is of a greater thickness than said sidewalls b. Claim 5 and 12: wherein said opening is a hole iv

5 c. Claim 6 and 13: wherein said apparatus further comprises a valve holder, said valve holder being separable from said cap and being dimensioned to fit snugly into said cap d. Claim 7 and 14: wherein said spout of said cap is soft, and wherein said cap further comprises a hard section for attachment to a cup B. GROUND 2 Claims 3-4 and Are Obvious Over Raymond and Mutti, further in view of Belanger Overview of Belanger Claims 3-4 and Are Obvious Over Raymond and Mutti, Further in view of Belanger C. GROUND 3 Claims 1-14 Are Obvious Over Mutti in View of Kano and Suffa Overview of Kano Overview of Suffa Independent Claim 1 Is Obvious Over Mutti in view of Kano and Suffa a. Claim 1(a): a no-spill drinking apparatus b. Claim 1(b): said no-spill drinking apparatus comprising a cap, said cap further comprising a spout c. Claim 1(c): said cap comprising a valve, said valve comprising a flexible material and an opening d. Claim 1(d): said apparatus comprising a blocking element next to said opening v

6 e. Claim 1(e): wherein said opening rests against said blocking element when the user is not drinking from said spout f. Claim 1(f): wherein said flexible material moves when the user sucks through said spout to drink from said spout, causing said opening and said blocking element to separate g. Claim 1(g): a barrier, said barrier blocking said flexible material from moving beyond a maximum distance after said flexible material moves when the user sucks through said spout to drink from said spout Independent Claim 8 Is Obvious Over Mutti in view of Kano and Suffa for Largely the Same Reasons a. Claim 8(a)-8(d), and 8(g) b. Claim 8(e): wherein said valve comprises a closed position in which said opening rests against said blocking element when the user is not drinking from said spout c. Claim 8(f): wherein said valve comprises an open position in which said flexible material moves when the user sucks through said spout to drink from said spout, causing said opening and said blocking element to separate d. Claim 8(h): a post, wherein the relative position of said post and said opening changes when the user sucks through said spout to drink from said spout vi

7 e. Claim 8(i): wherein said post extends into and through said opening in said closed position and said open position of said valve Dependent Claims a. Claims 2 and 9: wherein said flexible material comprises a center area and sidewalls, and wherein said center area is of a greater thickness than said sidewalls b. Claims 3-4 and 10-11: wherein said cap further comprises an air vent c. Claims 5 and 12: wherein said opening is a hole d. Claims 6 and 13: wherein said apparatus further comprises a valve holder, said valve holder being separable from said cap and being dimensioned to fit snugly into said cap e. Claims 7 and 14: wherein said spout of said cap is soft, and wherein said cap further comprises a hard section for attachment to a cup VIII. CONCLUSION vii

8 EXHIBITS Exhibit No Title of Document U.S. Patent No. 8,695,841 to Hakim ( the 841 patent or Hakim ) 1002 Declaration of Dr. Stuart Brown ( Brown ) U.S. Patent No. 5,747,083 to Jean-Louis Raymond et al. ( Raymond ) French Patent Document FR 1,191,181 to Leonardo Mutti and certified translation ( Mutti ) U.S. Patent No. 5,079,013 to Richard A. Belanger ( Belanger ) 1006 U.S. Patent No. 4,785,978 to Yuji Kano et al. ( Kano ) German Patent Document DE A1 to Udo Suffa and certified translation ( Suffa ) Excerpts from the Prosecution History of U.S. Patent No. 6,321,931. Plaintiffs Initial Disclosures in Luv n Care, Ltd. et al. v. Jackel Int l et al., ED. Tex. 2:14-cv Luv N Care Ltd. v. Koninklijke Philips NV, et al., Case No. 2:11-cv-512-RSP (July 9, 2013 claim construction order) and Luv N Care Ltd. v. Philips Elec. North Am. Corp., et al., (Fed. Cir. Dec. 11, 2014) (aff d) 1011 Hakim v. Cannon Avent Group, PLC, 2005 WL (W.D. La. May 4, 2005), 2005 WL (W.D. La. viii

9 May 4, 2005), and Hakim v. Cannon Avent Group, PLC, 479 F.3d 1313 (Fed. Cir. 2007) (aff d) 1012 Plaintiff s Motion to Stay in Luv n Care, Ltd. et al. v. Jackel Int l et al., ED. Tex. 2:14-cv (Dkt. 66) ix

10 Jackel International Limited and Mayborn USA, Inc. (collectively, Petitioners or Mayborn ) respectfully submit, pursuant to 35 U.S.C and 37 C.F.R. 42, this petition for Inter Partes Review of claims 1-14 of U.S. Patent No. 8,695,841 ( the 841 patent ). I. MANDATORY NOTICES UNDER 37 C.F.R 42.8(A)(1) A. Real Party-In-Interest Under 37 C.F.R. 42.8(b)(1) The Petitioners, Jackel International Limited and Mayborn USA, Inc., are the real parties-in-interest. Both companies are wholly-owned subsidiaries of Mayborn Group Limited. B. Related Matters under 37 C.F.R. 42.8(b)(2) The Petitioners are aware of two district court cases involving the 841 patent. The first is an action for declaratory judgment of non-infringement only that Mayborn filed on April 4, 2014: Mayborn USA, Inc. v. Luv n Care, Ltd. et al., D. Mass. 1:14-cv That action was voluntarily dismissed. The second is an infringement action filed by Luv n Care Ltd. and the Patent Owner on August 14, 2014: Luv n Care, Ltd. et al. v. Jackel Int l et al., ED. Tex. 2:14-cv The Petitioners are also aware that the Patent Owner filed a re-issue application concerning the 841 patent on or about January 23, 2015, which was assigned serial number 14/604,410. C. Lead and Back-Up Counsel Under 37 C.F.R. 42.8(b)(3) The Petitioners designate John S. Goetz, Reg. No. 54,867 as lead counsel. 1

11 Mr. Goetz is available for service at 3200 RBC Plaza, 60 South Sixth Street, Minneapolis, MN (T: ). The Petitioners designate Jane Du, Reg. No. 65,844 as backup counsel. She may be served at the same address. D. Service Information This Petition is being served by Federal Express to the attorney of record for the 841 patent at 1350 Avenue of the Americas, 3rd Floor, New York NY The Petition is also being served by Federal Express on the attorney of record in re-issue proceedings 14/604,410 at 120 South Riverside Plaza, Suite 2200, Chicago, Illinois The Petition is also being served by Federal Express on counsel of record in the Texas action identified above. The Petitioners may be served at the address above in Section I.C. The Petitioners also consent to electronic service by e mail at goetz@fr.com and IPR IP1@fr.com. E. Power of Attorney A power of attorney has been filed concurrently with this Petition in accordance with 37 C.F.R (b). II. PAYMENT OF FEES 37 C.F.R Mayborn authorizes charges to Deposit Account No for the fee set in 37 C.F.R (a) for this Petition and for any related additional fees. 2

12 III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R AND A. Grounds for Standing Under 37 C.F.R (a) The Petitioners certify that the 841 patent is available for inter partes review, and that the Petitioners are not barred or estopped from requesting this review on the below-identified grounds. The present petition is being filed within one year of the September 4, 2014 service of the complaint against Petitioners in the Eastern District of Texas action. B. Challenge Under 37 C.F.R (b) and Requested Relief The Petitioners respectfully request that the Board initiate inter partes review of all the 841 patent claims ( Challenged Claims ), and find those claims unpatentable. This Petition cites the following prior art references: Exhibit No Title of Document U.S. Patent No. 5,747,083 to Jean-Louis Raymond et al. ( Raymond ) French Patent Document FR 1,191,181 to Leonardo Mutti and certified translation ( Mutti ) U.S. Patent No. 5,079,013 to Richard A. Belanger ( Belanger ) 1006 U.S. Patent No. 4,785,978 to Yuji Kano et al. ( Kano ) 1007 German Patent Document DE A1 to Udo Suffa and certified translation ( Suffa ) Each of these references qualifies as prior art to the 841 patent claims under at 3

13 least 35 U.S.C 102(a), 102(b) or 102(e)(2) (pre AIA). The grounds on which this Petition is based are: Ground 841 patent Claims Basis for Challenge 1 1, 2, 5-9, Obvious over Raymond in view of Mutti under 35 U.S.C , 4, 10, 11 Obvious over Raymond in view of Mutti and Belanger under 35 U.S.C Obvious over Mutti in view of Kano and Suffa under 35 U.S.C. 103 The 841 patent issued on April 15, 2014 from application no. 12/797,061 (Ex (Hakim)), which was filed June 9, On its face, the 841 patent claims priority to a chain of continuations, continuation-in-part, and provisional applications, the earliest of which (60/056,218) was filed on August 21, Accordingly, August 21, 1997 represents the earliest possible priority date for the 841 patent. 1 1 Although all the prior art references relied upon in the present Petition pre-date the earliest possible priority date of the 841 patent (August 21, 1997), the Petitioners note that the Patent Owner has admitted that claims 1, 3, 5, 6, and 7 have priority date of August 21, 1998, while claims 8, 10, and have a priority date of March 18, See Ex (Plaintiff s Initial Disclosures), p. 4

14 Mutti (French Patent FR 1,191,181, Ex. 1004) qualifies as prior art at least under 35 U.S.C. 102(b). Mutti issued on April 6, 1959, more than one year before the earliest effective filing date of the Challenged Claims, and thus is prior art at least under 35 U.S.C. 102(b). Although Mutti was cited by the applicant in an Information Disclosure Statement during prosecution of the application that issued as the 841 patent, it was not applied in a rejection or otherwise discussed. 2 Kano (U.S. Patent No. 4,785,978, Ex. 1006) qualifies as prior art at least under 35 U.S.C. 102(b). Kano issued on November 22, 1988, more than one year before the earliest effective filing date of the Challenged Claims, and thus is prior art at least under 35 U.S.C. 102(b). 20. Because claims 2 and 4 both depend upon claim 1, these claims thus have an August 21, 1998 priority date. Because claims 9 and 11 both depend upon claim 8, these claims have a March 18, 1999 priority date. 2 A related patent, Mutti IT (Italian Patent No ), was applied in a non-final rejection during prosecution of the 841 patent. However, Mutti IT differs from Mutti in that the bottle in Mutti IT does not have a cap or a hard cup, whereas the Mutti bottle has a cap and a hard cup. Moreover, neither Mutti nor Mutti IT was considered by the examiner in view of Raymond, Belanger, Kano, or Suffa, as proposed by the Petitioner herein. 5

15 Raymond (U.S. 5,747,083, Ex. 1003) qualifies as prior art at least under 35 U.S.C. 102(e). Raymond was filed on April 14, 1995, which is before the earliest effective filing date of the Challenged Claims, and thus is prior art at least under 35 U.S.C. 102(e). Suffa (German Patent DE A1, Ex. 1007) qualifies as prior art at least under 35 U.S.C. 102(b). Suffa issued on October 5, 1995, more than one year before the earliest effective filing date of the Challenged Claims, and thus is prior art at least under 35 U.S.C. 102(b). Although Suffa was cited by the applicant in an Information Disclosure Statement during prosecution of the application that issued as the 841 patent, it was not applied in a rejection or otherwise discussed. Belanger (U.S. 5,079,013, Ex. 1005) qualifies as prior art at least under 35 U.S.C. 102(b). Belanger issued on January 7, 1992, more than one year before the earliest effective filing date of the Challenged Claims, and thus is prior art at least under 35 U.S.C. 102(b). Although Belanger was cited by the applicant in an Information Disclosure Statement during prosecution of the application that issued as the 841 patent, it was not applied in a rejection or otherwise discussed. A detailed explanation of why each challenged claim is unpatentable under the statutory grounds identified above is provided in Section VII below. Additional explanation and support for each ground of rejection is set forth in 6

16 Exhibit 1002, the Declaration of Dr. Stuart Brown ( Brown ), referenced throughout this Petition. In addition, this Petition and the associated Brown Declaration cite additional prior art materials for purposes of providing a technology background and describing the state of the art at the time of the alleged invention. These materials are further discussed in the accompanying declaration from Mr. Brown C. Requirements for Inter Partes Review 37 C.F.R (c) Inter partes review of claims 1-14 should be instituted because this Petition establishes a reasonable likelihood that the Petitioner will prevail with respect to at least one claim. See 35 U.S.C. 314(a). Each limitation of each Challenged Claim is disclosed or suggested by the prior art. IV. TECHNOLOGY BACKGROUND RELEVANT TO THE 841 PATENT The accompanying Brown Declaration provides a technology background and describes the state of the art at the time of the alleged invention. See Ex (Brown), This section will provide a summary of that description. A. Spill Proof Cups As explicitly acknowledged in the background of the section of the 841 patent, no-spill cup assemblies are well-known in the art and have existed well before the priority date of the 841 patent. See Ex (Hakim), 1:39-39; Ex (Brown), 9. Examples of such spill-proof cups include Belcastro (U.S. 7

17 Patent 5,890,620), Belanger (U.S. Patent 5,079,013), and Morano (U.S. Patent 5,542,670). See Ex (Brown), 10. B. Flexible Membrane Valves Flexible membrane valves have likewise been used in fluid flow control devices for many years, well before the priority date of the 841 patent. See Ex (Brown), 11. For example, Gross (U.S. Patent 3,508,576) described a pneumatic check valve in 1967 using a flexible membrane, Venable (U.S. Patent 3,674,183) described a slit membrane dispensing device that deforms and opens given pressure on one side of the membrane, and Drobish (U.S. Patent 4,728,006) presented a slit membrane valve in 1984 with a concave shape that inverted to a convex shape to dispense liquid and was self-sealing. Id. Moreover, Morano (U.S. Patent 5,542,670) applied slit membrane valves to a covered drinking cup in See Ex (Brown), 12. C. Air Vents The use of air vents to replace air in liquid dispensing containers is also not a new concept in either industry or spill proof cups. See Ex (Brown), 13. Using backfilling with gas to prevent the development of a vacuum within a closed container when dispensing liquids is a simple engineering concept. Id. For example, Ranalletta (U.S. Patent 5,183,184) in 1991 described an air vent to relieve pressure in a liquid dispenser, with the air vent as part of the dispenser cap, 8

18 and Morano (U.S. Patent 5,542,670) similarly provided a slit-membrane air vent within the cap of the covered drinking in See Ex (Brown), 14. V. DESCRIPTION OF THE CLAIMED SUBJECT MATTER A. Specification of the 841 Patent The 841 patent describes a no-spill cup assembly with an improved valve mechanism to prevent liquid from flowing out of the cup when not desired. See Ex ( 841 patent), 1: The 841 patent takes an existing no-spill cup assembly, which the Patent Owner admits is well known in the art, and puts in an improved valve with a secure protection against undesirable spilling or leakage. Id., 1: No-spill cups with a cap, spout, and air vent were well-known in the art at the priority date of the 841 patent. See Ex (Brown), 16. Similarly, pressure valves made with flexible material for dispensing liquids were well known in the art at the priority date of the 841 patent. See id., 11. B. The Claims of the 841 Patent The two independent claims of the 841 patent purport to recite a no-spill drinking apparatus with a particular valve arrangement and valve closing mechanism. Claim 1 recites: 1. An apparatus, comprising: (a) a no-spill drinking apparatus; (b) said no-spill drinking apparatus comprising a cap, said cap further comprising a spout; 9

19 (c) said cap comprising a valve, said valve comprising a flexible material and an opening; (d) said apparatus comprising a blocking element next to said opening; (e) wherein said opening rests against said blocking element when the user is not drinking from said spout; (f) wherein said flexible material moves when the user sucks through said spout to drink from said spout, causing said opening and said blocking element to separate; and, (g) a barrier, said barrier blocking said flexible material from moving beyond a maximum distance after said flexible material moves when the user sucks through said spout to drink from said spout. Claim 8 adds the structure of a post that extends through the opening: 8. An apparatus, comprising: (a) a no-spill drinking apparatus; (b) said no-spill drinking apparatus comprising a cap, said cap further comprising a spout; (c) said cap comprising a valve, said valve comprising a flexible material and an opening; (d) said apparatus comprising a blocking element next to said opening; (e) wherein said valve comprises a closed position in which said opening rests against said blocking element when the user is not drinking from said spout; 10

20 (f) wherein said valve comprises an open position in which said flexible material moves when the user sucks through said spout to drink from said spout, causing said opening and said blocking element to separate; (g) a barrier, said barrier blocking said flexible material from moving beyond a maximum distance after said flexible material moves when the user sucks through said spout to drink from said spout; and, (h) a post, wherein the relative position of said post and said opening changes when the user sucks through said spout to drink from said spout; (i) and wherein said post extends into and through said opening in said closed position and said open position of said valve. Additionally, minor known aspects are distributed amongst the dependent claims. VI. CLAIM CONSTRUCTION UNDER 37 C.F.R (B)(3) For the purposes of inter partes review only, Petitioner understands that the terms of the challenged claims are to be given their broadest reasonable interpretation as understood by one of ordinary skill in the art in view of the specification and file history of the 841 patent in accordance with 37 C.F.R (b) and 104(b) (3). The Federal Circuit has recognized that the broadest reasonable construction standard used in this proceeding is fundamentally different from the claim construction that applies in litigation. In re Swanson,

21 F.3d 1368, (Fed. Cir. 2008). As such, Petitioner offers no position on the proper claim construction for any purpose outside the instant inter partes review, including for purposes of litigation. A. opening and hole The term opening, which appears in every 841 patent claim, should be construed as a self-sealing opening in the flexible valve material that closes when suction is not applied. Similarly, the term hole, which appears in claims 5 and 12 of the 841 patent, should be construed as a self-sealing hole in the flexible valve material that closes when suction is not applied. See Ex (Brown), 25. These understandings are the broadest reasonable constructions in light of (1) LNC s disclaimer during the prosecution of related U.S. Patent No. 6,321,931 (the 931 patent ), (2) the numerous courts that have construed the term as such, see Ex (Luv N Care Ltd. v. Koninklijke Philips NV, et al., Case No. 2:11-cv- 512-RSP (July 9, 2013 claim construction order) and Luv N Care Ltd. v. Philips Elec. North Am. Corp., et al., (Fed. Cir. Dec. 11, 2014) (aff d)); see also Ex (Hakim v. Cannon Avent Group, PLC, 2005 WL (W.D. La. May 4, 2005), 2005 WL (W.D. La. May 4, 2005), and Hakim v. Cannon Avent Group, PLC, 495 F.3d 1313 (Fed. Cir. 2007) (aff d)), (3) LNC s failure to properly rescind that disclaimer during the prosecution of the 841 patent, and 12

22 (4) LNC s tacit admission of such failure, as evidenced by the recent re-issue application, which LNC admitted was to to put to rest any question of meeting all of the requirements for rescission of the disclaimer in the ancestor 931 patent. Ex (Plaintiff s Motion for Stay), p. 1. Further, this interpretation is consistent with the 841 patent specification. Ex ( 841 patent), Abstract, 2:16-21; 8:27-34; 8:58-9:7; 10:41-43; and 11: This interpretation is further consistent with the understanding a person of ordinary skill in the art would have for this term in light of the relevant facts. See Ex (Brown), 26. B. blocking element The term blocking element, which appears in every 841 patent claim, should be construed as a stationary structure that seals against fluid flow. LNC has previously agreed that this term means a structure that seals against fluid flow (Ex (Philips Claim Construction Order), p. 8), but given that the only disclosed blocking element embodiments are fixed, immovable structures, the broadest reasonable interpretation must make clear that the claimed blocking element is stationary. See Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) (explaining that the specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term. ) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); see also Ormco Corp. v. Align Tech., Inc., 13

23 498 F.3d 1307, (Fed. Cir. 2007) (construing claims to include a limitation where doing so most naturally aligns with the patent s description of the invention (quotation marks omitted)). In addition, the 841 patent defines the blocking element of the valve assembly as something that seals off and blocks the flow of fluid through the valve. See Ex ( 841 patent), 7: Finally, this interpretation is consistent with the 841 patent specification and with the understanding of a person having ordinary skill in the art. See Ex (Brown), 28; Ex ( 841 patent), 7:9-12; 7:12-14; FIGS. 6, 15. C. barrier The term barrier, which appears in every 841 patent claim, should be construed as a restraining structure that prevents over-extension of the valve during fluid flow. The 841 patent does not discuss this term in detail; instead, it describes it as a shield that prevents the valve from over-extension or damage. See Ex ( 841 patent), 9:8-18. This interpretation is consistent with the understanding of a person having ordinary skill in the art. See Ex (Brown),

24 VII. THE CHALLENGED CLAIMS OF THE 841 PATENT ARE UNPATENTABLE A. GROUND 1 Claims 1, 2, 5-9, and Are Obvious Over Raymond In View Of Mutti The alleged inventions of claims 1, 2, 5-9, and are obvious over Raymond in view of Mutti, rendering the claims unpatentable under 35 U.S.C Overview of Raymond Raymond is a U.S. Patent issued on May 5, 1998 and describes a feeding bottle that simulates breast feeding by requiring the infant to make sucking and pressure exertions and suppressing ingestion of air. Ex (Raymond), 1: The feeding bottle is designed to not spill, even in an upside-down position. Id., 3: The feeding bottle includes a check valve (5), which allows liquid food to flow at a negative pressure when the infant is sucking on the bottle teat. Id., 4: The check valve (5) is formed by two circular membranes (6) and (7) where one is applied against the other. Id. The upper membrane (7) is made of a flexible rubber or another flexible and elastic, easily deformable synthetic elastomer, and includes an opening (11). Id., 5:7-13. FIG. 5 shows the feeding bottle in the closed, or non-dispensing position, where the check valve s lower membrane (6) acts to block the opening (11); whereas FIG. 6 shows when the valve is in the open, or dispensing position, and the opening in the flexible membrane (6) rises up off the blocking element and is prevented from 15

25 overextending by the barrier element (26): See Ex (Brown), Overview of Mutti Mutti is a French patent issued on October 16, 1959 that describes a no-spill baby bottle with a self-regulating valve. Ex (Mutti), p. 1; FIG. 6. The selfregulating valve allows liquid food to flow at a negative pressure when the infant is sucking on the bottle teat. Id. The valve membrane is made of an elastic material and is annular in shape. Id., p. 2; FIG. 4. In the absence of negative pressure, the membrane surrounds and comes into contact with a guide (15) to prevent the flow of liquid out of the bottle. Id., pp FIG. 6 from Mutti shows the bottle and teat with a cross-section of a self-regulating valve in a closed position that holds the liquid inside the bottle when not in use: 16

26 See Ex (Brown), 41. An air inlet valve at the opposite end of the bottle allows air to enter the bottle in proportion to the liquid being sucked out. See Ex (Mutti), pp. 4-5; Ex (Brown), Independent Claim 1 Is Obvious Over Raymond in view of Mutti a. Claim 1(a): a no-spill drinking apparatus Raymond discloses a no-spill drinking apparatus because it is designed to not leak even in its upside-down position. Ex (Raymond), 3: Accordingly, Raymond discloses a no-spill drinking apparatus, as recited in the claim. Ex (Brown), 31 b. Claim 1(b): said no-spill drinking apparatus comprising a cap, said cap further comprising a spout The feeding bottle in Raymond has a cap described as a clamping ring 27 17

27 of a classic, conventional concept which is fastened by screwing onto the open end of the body 1. Ex (Raymond), 6: Raymond also has a spout described as a traditional teat that includes a nipple piece 15 furnished with perforations 18 and a body 16 in the shape of a bulb. Id., 5: As shown in FIG. 2, the feeding bottle includes a cap (27) and a spout (15): Accordingly, Raymond discloses said no-spill drinking apparatus comprising a cap, said cap further comprising a spout, as recited in the claim. See Ex (Brown), 32. c. Claim 1(c): said cap comprising a valve, said valve comprising a flexible material and an opening The cap in Raymond includes a valve that has an upper membrane 7 [] 18

28 made of flexible rubber or another flexible and elastic, easily deformable synthetic elastomer. Ex (Raymond), 5:7-9. The flexible upper membrane (7) includes an opening in the form of [b]ores 11 [that] are disposed at a distance of its center part occupied by said bump. Id., 5: As shown in FIG. 6, the valve is made of flexible material in the upper membrane (7) with at least one opening (11): See Ex (Brown), 33. Although Raymond discloses bores that are not self-sealing, like a slit, Mutti discloses a slit in Figures 10 and 11: Ex (Mutti), FIGS As those of skill would readily understand from 19

29 Mutti s slit disclosures, these membranes self-seal thus strengthening the seal against fluid flow. See Ex (Brown), 69. Those of skill in the art would have been motivated to use a self-sealing opening like that in Mutti for exactly this reason. Id. Accordingly, Raymond and Mutti teach said cap comprising a valve, said valve comprising a flexible material and an opening, as recited in the claim. d. Claim 1(d): said apparatus comprising a blocking element next to said opening The valve in Raymond is formed by two circular membranes 6, 7 where one is applied against the other. Ex (Raymond), 4: The lower membrane (6) is made of a rigid, non-deformable material (for example a rigid plastic material). Id., 4:66-5:3. As discussed above, the flexible upper membrane (7) includes at least one opening (11). See VII.A.3.c, supra. As shown in FIG. 5, the two circular membranes are applied to each other such that the lower membrane (6) functions as the blocking element next to the opening (11) in the upper membrane (7): 20

30 Blocking element (6) next to the opening (11) Accordingly, Raymond discloses said apparatus comprising a blocking element next to said opening, as recited in the claim. See Ex (Brown), 34. e. Claim 1(e): wherein said opening rests against said blocking element when the user is not drinking from said spout Raymond s FIG. 5 shows the feeding bottle valve in the rest state. Ex. 1003, (Raymond), 6: Therefore, the opening (11) rests against the blocking lower membrane (6) when the user is not drinking from the spout. See VII.A.3.d, supra. See Ex (Brown), 35. Accordingly, Raymond discloses wherein said opening rests against said blocking element when the user is not drinking from said spout, as recited in the claim. f. Claim 1(f): wherein said flexible material moves when the user sucks through said spout to drink from said spout, causing said opening and said blocking element to separate When the chamber F is in a state of negative pressure, the flexible 21

31 membrane (7) lifts up off the lower membrane (6). Ex (Raymond), 6: As shown in FIG. 6, when the user sucks through the spout to drink, the flexible material (7) lifts off the blocking element (6), causing the opening (11) and the blocking element (6) to separate: Accordingly, Raymond discloses wherein said flexible material moves when the user sucks through said spout to drink from said spout, causing said opening and said blocking element to separate, as recited in the claim. See Ex (Brown), 35. g. Claim 1(g): a barrier, said barrier blocking said flexible material from moving beyond a maximum distance after said flexible material moves when the user sucks through said spout to drink from said spout The base of the core (14) controls the maximum movement of the valve. Ex. 22

32 1003 (Raymond), 6:1-2. When the valve is at rest, a slight space is provided between the base of the core 14 of the teat and the flexible membrane 7 of the intermediate check valve (FIG. 5), in order to allow the lifting up of the latter when the chamber F is in a state of negative pressure (FIG. 6). Id., 6: As shown in FIG. 6, the base of the core (14) functions as a barrier to block the flexible membrane from moving beyond a maximum distance when the user sucks through the spout to drink: Accordingly, Raymond discloses a barrier, said barrier blocking said flexible material from moving beyond a maximum distance after said flexible material moves when the user sucks through said spout to drink from said spout, as recited in the claim. See Ex (Brown),

33 4. Independent Claim 8 Is Obvious Over Raymond in View of Mutti a. Claim 8(a)-8(d), and 8(g) Claim elements 8(a) through 8(d), and 8(g) are identical to claim elements 1(a) through 1(d), and 1(g), thus the claim 1 analysis in Section VII.A.3 above applies with equal force to these claim 8 elements. b. Claim 8(e): wherein said valve comprises a closed position in which said opening rests against said blocking element when the user is not drinking from said spout Raymond discloses a valve where, in the closed position, the opening rests against the blocking element when the user is not drinking from the spout. See Section VII.A.3.e, supra. c. Claim 8(f): wherein said valve comprises an open position in which said flexible material moves when the user sucks through said spout to drink from said spout, causing said opening and said blocking element to separate Raymond discloses a valve where in the open position, the flexible material moves when the user sucks through the spout to drink, causing the opening and blocking element to separate. See VII.A.3.f, supra. d. Claim 8(h): a post, wherein the relative position of said post and said opening changes when the user sucks through said spout to drink from said spout Raymond does not disclose a post, but Mutti discloses a post where the relative position of the post and the opening changes when the user sucks through 24

34 the spout to drink. As shown in FIG. 5 and 6, the guide (15) is in the shape of a post. The relative position of the post and the opening in the membrane changes because [a]s a result of sucking on the teat 30, a negative pressure is set up in the said teat through the hole 31, and the elastic membrane 22 undergoes a deformation (as is shown with broken lines in Figs. 1 and 5) in the direction of the arrows F. The change in relative position of the opening and post occurs when the edge of the axial aperture 24 moves away from the guide 15. Ex (Mutti), p. 4; Ex (Brown), 52. In addition, it would have been an obvious design choice to those of skill in the art at the time of the invention to use the Mutti post disclosure in the Raymond valve design. As those of skill in the art would understand from Mutti s post disclosure, the post acts as a guide to help facilitate the proper positioning of the flexible membrane valve during operation of the valve. See Ex (Brown), 71. This guiding action of the post would have provided a motivation to those of skill in art to use the Mutti post in Raymond s valve design to further control and guide the flexible membrane valve during repeated operation of the valve, thus improving its duration and function. Id. Accordingly, Raymond in combination with Mutti discloses a post, wherein the relative position of said post and said opening changes when the user sucks through said spout to drink from said spout, as recited in the claim. 25

35 Moreover, one of skill in the art would have been motivated to modify the valve assembly in the feeding bottle of Raymond to include a post for guiding the valve during operation as taught by Mutti. See Ex (Brown), 72. The combination amounts to the use of a known technique to improve similar devices in the same way. See KSR v. Teleflex, 550 U.S. 398, 417 (2007); MPEP 2143 I(C). The Raymond apparatus and Mutti apparatus are both devices that are designed to be no-spill containers with a cap and valve to control the discharging of liquid, and those of skill would have been motivated to combine them in this predictable way leading the predictable result of a better guided valve function in Raymond. See Ex (Brown), 72. e. Claim 8(i): wherein said post extends into and through said opening in said closed position and said open position of said valve Mutti FIG. 5 shows the valve in the open position and FIG. 1 shows the Mutti valve in the closed position; both show the post, or guide (15) extending into and through the opening in the membrane (22). Ex (Mutti), FIGS. 1, 5. It would have been an obvious design choice to those of skill at the time to utilize the Mutti post disclosure in the Raymond valve design for the reasons noted above. See Ex (Brown), 73. Accordingly, Raymond in combination with Mutti discloses wherein said post extends into and through said opening in said closed position and said open position of said valve, as recited in the claim. 26

36 5. Dependent Claims 2, 5-7, 9, a. Claims 2 and 9: wherein said flexible material comprises a center area and sidewalls, and wherein said center area is of a greater thickness than said sidewalls As seen in Raymond s FIG. 6, the flexible membrane 7 has a thicker center than sidewalls. See Ex (Brown), 38. Accordingly, Raymond discloses a flexible material comprises a center area and sidewalls, and wherein said center area is of a greater thickness than said sidewalls of the claim. b. Claim 5 and 12: wherein said opening is a hole Raymond s flexible membrane has openings described as bores (11). See Section VII.A.3.c, supra. Although Raymond discloses bores that are not selfsealing, like a slit, Mutti discloses slits in Figures 10 and 11: Ex (Mutti), FIGS As those of skill would readily understand from Mutti s slit disclosures, these membranes self-seal thus strengthening the seal against fluid flow. See Ex (Brown), 69. Those of skill in the art would have been motivated to use a self-sealing opening like that in Mutti for exactly this reason. Id. Accordingly, Raymond and Mutti teach said cap comprising a valve, 27

37 said valve comprising a flexible material and an opening, as recited in the claim. c. Claim 6 and 13: wherein said apparatus further comprises a valve holder, said valve holder being separable from said cap and being dimensioned to fit snugly into said cap Raymond s upper (7) and lower (6) valve membranes are held together between the sealing flange (17) of the teat and the opening (1b) of the cylindrical container. Ex (Raymond), 1:57-61; 5: The sealing flange (17), valve membranes (6, 7) and the opening (1b) of the container are then snugly secured by means of a clamping ring 27 of a classic, conventional concept which is fastened by screwing into the open end of the body 1. Id., 6: The clamping ring can also be separated from the individual elements of the valve, as shown in FIG. 1. Id., FIG. 1; see also Ex (Brown), 39. Accordingly, Raymond discloses an apparatus as claimed in claim 1, wherein said apparatus further comprises a valve holder, said valve holder being separable from said cap and being dimensioned to fit snugly into said cap, as recited in the claim. d. Claim 7 and 14: wherein said spout of said cap is soft, and wherein said cap further comprises a hard section for attachment to a cup. The spout (13) of the feeding bottle in Raymond takes the shape of a traditional teat, i.e., it includes a nipple piece 15 furnished with perforations 18. Ex (Raymond), 5: The outer casing 13 is made of a flexible material which has an elasticity and a sufficient rigidity to return to its normal shape when 28

38 the effort of crushing, to which it is subjected, disappears. Id., 5: In addition, the cap or clamping ring (27) comprises a hard section for attachment to the cup because it is fastened by screwing onto the open end of the body 1, furnished with an additional outer threading 28. Id., 6: To the extent that Raymond does not explicitly describe the cap as including a hard section, it would have been an obvious design choice to make the threaded portion of the cap hard to ensure a secure connection once it is screwed onto the mouthpiece of the bottle. See Ex (Brown), 57. Accordingly, Raymond discloses an apparatus as claimed in claim 1, wherein said spout of said cap is soft, and wherein said cap further comprises a hard section for attachment to a cup, as recited in the claim. * * * In sum, in light of the Raymond disclosure in view of Mutti as understood by one of skill in the art at the time of the alleged inventions, claims 1, 2, 5-9, of the 841 patent would have been obvious and are thus unpatentable. B. GROUND 2 Claims 3-4 and Are Obvious Over Raymond and Mutti, further in view of Belanger 1. Overview of Belanger Belanger is a U.S. patent that issued on January 7, 1992 that describes a dripless liquid feeding container suitable for babies and toddlers. Ex (Belanger), 1:6-12; FIGS Liquid is removed from the dripless container by 29

39 either sipping or sucking through an outlet controlled by a valve system incorporated within the container s sealing lid. Id., 2: As the liquid is removed by the user sucking on the liquid outlet in the drinking spout, an air inlet located within the container s sealing lid allows air to flow into the container during the sipping to result in equalization of the interior and exterior pressure. Id., 2: The dripless container is designed to not spill its liquid contents during non-use. Id., 2:67-3:2. FIG. 2 from Belanger shows a sectional view of the dripless container: See Ex (Brown), Claims 3-4 and Are Obvious Over Raymond and Mutti, Further in view of Belanger As discussed above, Raymond in view of Mutti disclose the drinking apparatus of claims 1, 2, 8, and 9. Dependent claims 3-4 and merely add an air vent to the cap. These claims are rendered obvious by Raymond and Mutti as 30

40 explained above, further in view of Belanger. As discussed above, Raymond discloses a no-spill drinking apparatus with a cap. See Section VII.A.3.b, supra. As shown in FIG. 3, Raymond also discloses an air inlet check valve (2) located in the body of the bottle that permits air to enter the bottle. Ex (Raymond), 6:34-46; FIG 3. However, the purpose of the air inlet in Raymond is to maintain neutral pressure of the liquid nutrient bag that is suspended inside the bottle rather than to maintain equilibrium of the liquid itself. Id., 6: Therefore, for the Raymond configuration, the air vent must be located on the side of the bottle for the invention to work. See Ex (Brown), 76. Also discussed above, Raymond in view of Mutti discloses a no-spill drinking apparatus with a cap and a post as part of the valve mechanism. As with Raymond, Mutti also discloses an air vent in the body of the no-spill container. However, Mutti was filed in 1958, and at that time, high precision processes such as thermoplastic injection molding used to produce low cost plastic components was not yet available. Ex (Brown), 76. Such a process would have made incorporating both the drinking valve and air vent into the cap very easy, which would reduce assembly and manufacturing costs. Id. Belanger teaches dripless feeding containers with vented lids by means of air holes, in order to provide an adequate sucking or sipping liquid flow. Ex. 31

41 1005, (Belanger), 2:9-11. The air inlet control valve means, allows for ready inflow of air automatically into said liquid housing means (id., 5:8-13), and structurally can be either ball valves, needle valves, flat-handled valves, etc. or a simple pin hole type air inlet vent hole (id., 11:3-13). Further, the air inlet control valve described in Belanger does not spill either in use or non-use, in all spatial orientations and movements, inside or outside the mouth, from either the liquid outlet control valve means 26 or 28, the air inlet control valve means Id., 11: As shown in FIG. 2, the air vent (14A) is built into the cap (24) of the drinking apparatus: Ex (Brown), 77. Given that Raymond, Mutti, and Belanger all disclose no-spill drinking apparatuses, and that both Raymond and Mutti disclose an air vent on the side of the bottle, one of ordinary skill in the art motivated to use the feeding bottle without a bag insert and desiring a low cost manufacturing solution would find it 32

42 an obvious and simple design choice to move the air vent to the cap. Ex (Brown), 78. Accordingly, Raymond and Mutti further in view of Belanger teaches the claimed apparatus, wherein said cap further comprises an air vent, as recited in the dependent claims 3-4 and * * * In sum, in light of the Raymond disclosure in view of Mutti and Belanger, as understood by one of skill in the art at the time of the alleged inventions, claims 3-4, and of the 841 patent would have been obvious and are thus unpatentable. C. GROUND 3 Claims 1-14 Are Obvious Over Mutti in View of Kano and Suffa The alleged inventions of claims 1-14 are also obvious over Mutti in view of Kano and Suffa, rendering the claims unpatentable under 35 U.S.C Mutti, Kano, and Suffa all qualify as prior art under 35 U.S.C. 102(b) (Pre-AIA) because each of these references was published more than one year before the 841 patent application was filed. 1. Overview of Kano Kano, a U.S. patent that issued on November 22, 1988, describes a container closure with an automatic opening-closing mechanism mounted to the mouth-neck portion of a container for liquids. Ex (Kano), Col. 1; FIG. 2. The automatic 33

43 opening-closing mechanism has a centrally-formed air introduction hole and a plurality of liquid discharge ports formed around the air introduction hole. Id., Col. 2. The mechanism has a first valve member used to permit liquid discharge when the pressure in the container is increased by compressing the container, the first valve member being formed of a flexible material and being annular in shape. Id. There is also a second valve member adapted to open the air introduction hole when negative pressure is created in the container by the container elastically returning to its original shape from its pressed state. Id. FIG. 2 from Kano shows a sectional view of the container closure with the first and second valve members in a closed state: 2. Overview of Suffa Suffa is a German patent issued on May 10, 1995 that describes a cap for a 34

44 liquid dispensing apparatus. Ex (Suffa), Abstract. The cap comprises a sealing element that remains in the closed or sealed position when not dispensing. Id. While in the closed position, Suffa s sealing element prevents leakage. Id., Col. 2, 1. Suffa teaches that its sealing element 2 is concave in design and positioned directly below the opening 19. Id., Col. 4, 2. The sealing element 2 is shown in FIG. 5 below in its closed, or sealed position: When in the open, or dispensing position, the sealing element 2 is forced outward against its curvature, lifting off of the support disk 17. Id., Col. 4, 6. As a result of the sealing element lifting up and off of the support disk, flow passages 24 are opened up, allowing product to flow around support disk 17 and exit through central dispensing opening 23. Id., Col. 4, 6. The apparatus taught by Suffa is shown in its open, or dispensing position in FIG. 4 below: 35

45 While in the open or dispensing position, lower support surface 13 and additional support surface 14 act to form a retaining flange, or barrier element, to prevent the sealing element 2 from overextending on the top side. Id., Col. 3, 3 ( The top side of sealing element 2 abuts against support surface 13 and additional support surface 14, encompassing the latter and engaging in a crotch 15 that is formed between additional support surface 14 and latching arm 10. In this embodiment example, support surface 13 and additional support surface 14 together form the retaining flange for sealing element 2 (on the top side) ). 3. Independent Claim 1 Is Obvious Over Mutti in view of Kano and Suffa a. Claim 1(a): a no-spill drinking apparatus Mutti discloses a no-spill drinking apparatus because Mutti discloses a selfregulating valve which is particularly applicable to feeding bottles for infants. Ex (Mutti), p. 1. As shown in FIG. 6, a feeding bottle filled with liquid does not 36

46 spill its contents when the valve is in a closed position. See id., FIG. 6; see also Ex (Brown), 43. Accordingly, Mutti discloses a no-spill drinking apparatus, as recited in the claim. b. Claim 1(b): said no-spill drinking apparatus comprising a cap, said cap further comprising a spout As shown in FIG. 6, the feeding bottle is connected to a cap (14b) and a spout (30). Ex (Mutti), FIG. 6. The body of the valve comprises an outer part 14b which is screwed onto the mouthpiece 11, and on the outside, there is fitted over the aperture 11 of the feeding bottle 10 a teat 30 of a conventional, known type, the end of which has a hole 31 which allows the nutritive food to pass through as a result of the functioning of the valve. Id., pp. 4-5; see also Ex (Brown), 44. Accordingly, Mutti discloses said no-spill drinking apparatus comprising a cap, said cap further comprising a spout, as recited in the claim. c. Claim 1(c): said cap comprising a valve, said valve comprising a flexible material and an opening As shown in FIGS. 6 and 7, the cap (14b) has a valve membrane (22) with an opening that the guide (15) projects through. See Ex (Mutti), FIGS The membrane [is] made of elastic material, means for holding the said membrane made of elastic material in position in relation to the body of the valve. Id., p. 2. In addition, the membrane 22 has, axially, an aperture 24 which, in the absence of negative pressure, surrounds the guide 15 and comes lightly into contact 37

47 with the latter as a result of the shoulder 19. Id., p. 4. The aperture in the valve membrane can be clearly seen in FIG. 4. Id., FIG. 4; see also Ex (Brown), 45. In addition, Mutti discloses an embodiment where the aperture is a slit in Figures 10 and 11: Ex (Mutti), FIGS ; see also Ex (Brown), 46. Accordingly, Mutti discloses said cap comprising a valve, said valve comprising a flexible material and an opening, as recited in the claim. d. Claim 1(d): said apparatus comprising a blocking element next to said opening As shown in FIGS. 5 and 6, the valve membrane (22) is located next to the guide (15), which acts to block the opening in the membrane. See Ex (Mutti), FIGS. 5-6, 8. The guide 15 has a shoulder at 19, and the membrane 22 has, axially, an aperture 24 which, in the absence of negative pressure, surrounds the guide 15 and comes lightly into contact with the latter as a result of the shoulder 19. Id., pp. 3-4; see also Ex (Brown), 47. Accordingly, Mutti discloses said apparatus comprising a blocking element next to said opening, as 38

48 recited in the claim. e. Claim 1(e): wherein said opening rests against said blocking element when the user is not drinking from said spout As shown in FIGS. 5 and 6, the valve membrane (22) rests against the guide (15), which acts to block the opening in the membrane when the user is not drinking from the spout. Ex (Mutti), FIGS The guide 15 has a shoulder at 19, and the membrane 22 has, axially, an aperture 24 which, in the absence of negative pressure, surrounds the guide 15 and comes lightly into contact with the latter as a result of the shoulder 19. Id., pp. 3-4; see also Ex (Brown), 48. Accordingly, Mutti discloses wherein said opening rests against said blocking element when the user is not drinking from said spout, as recited in the claim. f. Claim 1(f): wherein said flexible material moves when the user sucks through said spout to drink from said spout, causing said opening and said blocking element to separate As a result of sucking on the teat 30, a negative pressure is set up in the said teat through the hole 31, and the elastic membrane 22 undergoes a deformation (as is shown with broken lines in Figs. 1 and 5) in the direction of the arrows F. Ex (Mutti), p. 4. The deformation or separation of the elastic membrane exists when the edge of the axial aperture 24 moves away from the guide 15 and, in particular, from the shoulder 19, and this allows the nutritive fluid 39

49 to flow out. Id. The separation of the elastic membrane (22) from the blocking guide (15) is shown in FIG. 5: Blocking element (15) Flexible material (22) separating from the blocking element (15) See Ex (Brown), 49. Accordingly, Mutti discloses wherein said flexible material moves when the user sucks through said spout to drink from said spout, causing said opening and said blocking element to separate, as recited in the claim. g. Claim 1(g): a barrier, said barrier blocking said flexible material from moving beyond a maximum distance after said flexible material moves when the user sucks through said spout to drink from said spout As just explained, Mutti discloses a valve made of flexible material that moves when a user sucks through the spout of the drinking apparatus. Mutti also discloses that the flexible material is held in position peripherally against the shoulder 20 and is fixed by a stop ring 23 to which pressure is applied, on the other side, by the shoulder 21. Ex (Mutti), p. 4. As such, Mutti includes the 40

50 claimed barrier blocking the flexible material from moving beyond a maximum distance, because it is being held by a stop ring and the shoulder. See Ex (Brown), 50. But even if this structure is not a barrier, Kano teaches a barrier blocking said flexible material from moving beyond a maximum distance after said flexible material moves. See Ex (Brown), 81. Specifically, Kano teaches a closure for containers with an automatic opening-closing mechanism where the annular surface between the first annular step 16 and the second annular step 18 in the inside surface of the top wall 8 abuts with the outer circumferential edge portion of the first valve member 26. Ex (Kano), Abstract; 5:2-6. Moreover, [i]t is critical that the first valve member should be formed of a flexible material. Id., 3: As shown in FIG. 2, the flexible material (26) is held inside the top wall (8) between the first annular step (16) and the second annular step (18): 41

51 Top wall (8) Flexible material (26) See Ex (Brown), 82. When the container (56) is in use and the pressure inside the container is increased, the inner circumferential edge portion of the first valve member 26 is elastically bent and moved away from the outer circumferential surface 38 of the central projecting portion of the plug member 24. Ex (Kano), 5: As shown in FIG. 5, when the container is in use, the flexible material (26) elastically bends away a maximum distance until blocked by the inside of the top wall (8) acting as a barrier: 42

52 Flexible material (26) moving a maximum distance Top wall barrier (8) See Ex (Brown), 83. Accordingly, Mutti in view of Kano teaches a barrier, said barrier blocking said flexible material from moving beyond a maximum distance after said flexible material moves when the user sucks through said spout to drink from said spout, as recited in the claim. One of skill in the art would have been motivated to modify the valve assembly in the feeding bottle of Mutti to include a barrier that blocks the flexible material from moving beyond a maximum distance when the bottle is in use. The addition of a barrier is taught by similar no-spill containers for holding liquids with 43

53 a similar valve construction. See Ex (Brown), 85. Such a combination amounts to the use of a known technique to improve similar devices in the same way. See KSR v. Teleflex, 550 U.S. 398, 417 (2007); MPEP 2143 I(C). As described above, Kano teaches a container closure provided with an automatic opening-closing mechanism, which is a similar device to the feeding bottle taught by Mutti because both devices are designed to be no-spill containers with a cap and valve to control the discharging of liquid. See Ex (Mutti), pp. 3-5; Kano, 1:6-10. The valve assembly is also alike because in Mutti, the valve is made of elastic material, it has an aperture, which surrounds the guide 15 and comes lightly into contact with the latter when the bottle is not in use. See Ex (Mutti), p. 4. Whereas, in Kano, the valve should be formed of a flexible material, is of a flat annular plate shape, with a circular opening 44 [] formed at its central part, and the diameter of the circular opening 44 is set at a value greater than the maximum outside diameter of the upper end of the truncated conical circumferential surface 38 of the central projecting portion 30 in the plug member 24 but smaller than the maximum outside diameter of its lower end. Ex (Kano), 3: Moreover, as discussed above, the annular valve moves away from the blocking element in the same way. In Mutti, separation of the valve from the blocking element occurs when the edge of the axial aperture 24 moves away from the guide 15, and in Kano, separation occurs when the the inner 44

54 circumferential edge portion of the first valve member 26 is elastically bent and moved away from the outer circumferential surface 38 of the central projecting portion of the plug member 24. Ex (Mutti), p. 4; Ex (Kano), 5:24-27; Ex (Brown), 86. One of skill in the art would have been motivated to modify Mutti to add a barrier element in the same way as in Kano, by adding a short length of wall a distance away from the inner circumferential edge of the flexible material, to block the edge from moving beyond a maximum distance. See Ex (Brown), 87. One of skill in the art would have known at the time that adding a barrier element to Mutti will prevent overextension of the flexible membrane and prevent the flexible membrane from damage in the same way that the inside wall of the container closure avoids overextension of the first valve member. Id. The results of such a combination would have been predictable because the use of barriers to prevent overextension of flexible valves were well known to those of skill in the art. Id. In addition, Mutti in view of Suffa teaches a barrier blocking the flexible material from moving beyond a maximum distance after the flexible material moves when the user sucks through the spout to drink. See Ex (Brown), 88. As discussed above, Mutti discloses a valve made of flexible material that moves when a user sucks through the spout of the drinking apparatus. See Section 45

55 VII.A.3.f, supra. Suffa teaches a container closure cap with a readily deformable sealing element equipped with slits for dispensing liquids, wherein [i]n the dispensing position, [] the sealing element is forced outward against its curvature, the slits are forced open allowing the product to be dispensed, and when closed, the sealing element is returned to the position [] in which the slits abut directly against one another. Ex (Suffa), Col. 1, 2. As shown in FIG. 3, the deformable sealing element (2) rests against the support element 17 in the closed state and the top side of the sealing element 2 abuts against support surface 13 and additional support surface 14 : Id., Col. 3, 7. In this configuration, the support surface 13 and additional support surface 14 together form the retaining flange for sealing element 2 (on the top side). Id. When the container is in use and the pressure inside the closure cap is increased, sealing element 2 is forced outward against its concave curvature and is lifted off of support disk 17. Id., Col. 4, 6. In that position, the concave shape of sealing element 2 is flattened substantially in the dispensing position, with a tendency toward leveling off, however the sealing element 2 does not curve 46

56 outward beyond opening 19. Id. The retaining flange therefore acts as a barrier to block the sealing element, or flexible material, from moving beyond a maximum distance when the valve is in the dispensing position. As shown in FIG. 4, the lower support surface (13) and the additional support surface (14) together form the retaining flange, or barrier, to prevent the flexible material (2) from extending beyond a maximum distance when the valve is in the dispensing position: See Ex (Brown), 89. Accordingly, Mutti in view of Suffa teaches a barrier, said barrier blocking said flexible material from moving beyond a maximum distance after said flexible material moves when the user sucks through said spout to drink from said spout, as recited in the claim. One of skill in the art would have been motivated to modify the valve assembly in the feeding bottle of Mutti to include a barrier that blocks the flexible material from moving beyond a maximum distance when the bottle is in use. The 47

57 addition of a barrier is taught by similar no-spill containers for holding liquids with a similar valve construction. See Ex (Brown), 91. Such a combination amounts to the use of a known technique to improve similar devices in the same way. See KSR v. Teleflex, 550 U.S. 398, 417 (2007); MPEP 2143 I(C). As described above, Suffa teaches a closure cap with a readily deformable sealing element which forms a dispensing opening, which is a similar device to the feeding bottle taught by Mutti because both devices are designed to be no-spill containers with a cap and valve to control the discharging of liquid. Ex (Suffa), Abstract. Although Suffa relates generally to a squeeze bottle, which the patent indicates is particularly useful for liquid soaps and shower gels, common sense and logic dictate that such a device could also be used as a drinking apparatus. One of skill in the art would have been motivated to modify Mutti to add a barrier element in the same way as in Suffa, by adding a short length of wall a distance away from the outer periphery of the flexible material, to block the flexible material from moving beyond a maximum distance. See Ex (Brown), 92. One of skill in the art would know that adding a barrier element to Mutti will prevent overextension of the flexible membrane and prevent the flexible membrane from damage in the same way that the retaining flange prevents overextension of the deformable sealing element. See Ex (Brown), 93. The results of such a 48

58 combination would have been predictable because the use of barriers to prevent overextension of flexible valves for fluid dispension were well known to those of skill in the art. Id. Thus, such a modification amounts merely to combining prior art elements according to known methods to yield predictable results. 4. Independent Claim 8 Is Obvious Over Mutti in view of Kano and Suffa for Largely the Same Reasons a. Claim 8(a)-8(d), and 8(g) Claim elements 8(a) through 8(d), and 8(g) are identical to claim elements 1(a) through 1(d), and 1(g), and the thus that claim 1 analysis above applies with equal force to these claim 8 elements. b. Claim 8(e): wherein said valve comprises a closed position in which said opening rests against said blocking element when the user is not drinking from said spout Mutti discloses a valve where in the closed position, the opening rests against the blocking element when the user is not drinking from the spout. See VII.C.3.e, supra. c. Claim 8(f): wherein said valve comprises an open position in which said flexible material moves when the user sucks through said spout to drink from said spout, causing said opening and said blocking element to separate Mutti discloses a valve where in the open position, the flexible material moves when the user sucks through the spout to drink, causing the opening and blocking element to separate. See VII.C.3.f, supra. 49

59 d. Claim 8(h): a post, wherein the relative position of said post and said opening changes when the user sucks through said spout to drink from said spout Mutti discloses a post where the relative position of the post and the opening changes when the user sucks through the spout to drink. As shown in FIG. 5 and 6, the guide (15) is in the shape of a post. The relative position of the post and the opening in the membrane changes because [a]s a result of sucking on the teat 30, a negative pressure is set up in the said teat through the hole 31, and the elastic membrane 22 undergoes a deformation (as is shown with broken lines in Figs. 1 and 5) in the direction of the arrows F. See VII.C.4.d supra. The change in relative position of the opening and post occurs when the edge of the axial aperture 24 moves away from the guide 15. Ex (Mutti), 4:20-21; see also Ex (Brown), 70. Accordingly, Mutti discloses a post, wherein the relative position of said post and said opening changes when the user sucks through said spout to drink from said spout, as recited in the claim. e. Claim 8(i): wherein said post extends into and through said opening in said closed position and said open position of said valve Mutti FIG. 5 shows the valve in the open position and FIG. 1 shows the Mutti valve in the closed position; both show the post, or guide (15) extending into and through the opening in the membrane (22). Ex (Mutti), FIGS. 1, 5. See Ex (Brown), 73. Accordingly, Mutti discloses wherein said post extends 50

60 into and through said opening in said closed position and said open position of said valve, as recited in the claim. 5. Dependent Claims a. Claims 2 and 9: wherein said flexible material comprises a center area and sidewalls, and wherein said center area is of a greater thickness than said sidewalls Mutti in view of Suffa teaches an apparatus as claimed in claim 1 where the flexible material includes a center area and sidewalls, and where the center area is of a greater thickness than the sidewalls. See Ex (Brown), 94. Suffa describes a sealing element 2 that is designed as concave and located below the opening 19. Ex (Suffa), Col. 4, 2. Located at both ends of the sealing element and extending approximately at a right angle alpha to the dispensing direction of the concave shape, a seating flange 20 is formed on sealing element 2. Id. As shown in FIG. 3, the concave portion of the sealing element 2 is proportionately made of a thicker material than the seating flanges (20), or sidewalls: 51

61 See Ex (Brown), 95. While it is true that drawings in a patent need not illustrate the full scope of the invention, Arlington Indus., Inc. v. Bridgeport Fittings, Inc., 632 F.3d 1245, (Fed. Cir. 2011), and patent coverage is not necessarily limited to those inventions that look like the ones in the figures, MBO Lab., Inc. v. Becton, Dickinson & Co., 474 F.3d 1324, 1333 (Fed. Cir. 2007), it is significant that each and every figure in Suffa depicts the concave center portion of the sealing element to be of a greater thickness than the sidewalls. See CVI/Beta Ventures, Inc. v. Tura LP, 112 F.3d 1146, 1153 (Fed. Cir. 1997) (concluding that the patent drawings highly relevant to understanding claims); see also Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (holding that the specification is highly relevant to claim construction analysis). Indeed, every figure in which the sealing element and sidewalls are shown support the conclusion that Suffa discloses an apparatus wherein the 52

62 flexible sealing element includes a center area and sidewalls, where the center area is of greater thickness than the sidewalls. Id., FIGS. 1, 3-5. Accordingly, Mutti in view of Suffa teaches an apparatus as claimed in claim 1, wherein said flexible material comprises a center area and sidewalls, and wherein said center area is of a greater thickness than said sidewalls, as recited in the claim. b. Claims 3-4 and 10-11: wherein said cap further comprises an air vent. As discussed above, Mutti discloses a feeding bottle with a cap. As shown in FIG. 1, Mutti also discloses an air inlet valve that permits air to penetrate through the orifices at the opposite end of the bottle (188) from the spout. Ex (Mutti), 5:7-18; FIG 1. However, although this design was reasonable in 1958, modern manufacturing technology available in 1998 such as injection molding now allows high volume production of plastic components at a lower cost. See Ex (Brown), 96. Injection molding now allows for placing both valves in the cap, which eliminates the need to make a bottle with a hole in the bottom, and therefore reduces the overall cost of production. Id. Kano teaches a closure for containers where the atmospheric air comes into the container 56 through the pour opening 14 of the outside closure member 4 and the air-introduction hole 36 of the plug member 24. Ex (Kano), 5: The pour opening is formed in the outside closure member covering the automatic 53

63 opening-closing mechanism in this container closure. Id., 1: As shown in FIG. 6, the pour opening (14), which also functions as an air vent, is located in the cap: Air vent See Ex (Brown), 97. Given that both Mutti and Kano disclose flexible valves for use in dispensing liquids from a container, and that Mutti discloses an air vent at the end of the bottle, one of ordinary skill in the art motivated to utilize injection molding to reduce manufacturing costs would find it an obvious choice to move the air vent to the cap. See Ex (Brown), 98. Accordingly, Mutti in view of Kano teaches an apparatus as claimed in 54

64 claim 1, wherein said cap further comprises an air vent, as recited in the claim. Furthermore, Mutti in view of Suffa teaches an apparatus as claimed in claim 1, where the cap comprises an air vent. According to Suffa, when the valve or sealing element 2 returns to its closed position and as a result of the negative pressure that is then present in closure cap 4, the peripheral region of sealing element 2 is raised, resulting in air passages 25. Ex (Suffa), Col. 4, 7. As shown in FIG. 5, when negative pressure is present in the closure cap (4), air vents down through the peripheral regions of sealing element (2) in the cap: Air Vent See Ex (Brown), 96. Accordingly, Suffa teaches an apparatus as claimed in claim 1, wherein said cap further comprises an air vent, as recited in the claim. c. Claims 5 and 12: wherein said opening is a hole The valve membrane in Mutti has an aperture 24 which, in the absence of 55

65 negative pressure, surrounds the guide 15 and comes lightly into contact with the latter as a result of the shoulder 19. Ex (Mutti), FIG. 4; see also Ex (Brown), 100. Accordingly, Mutti discloses an apparatus as claimed in claim 1, wherein said opening is a hole, as recited in the claim. d. Claims 6 and 13: wherein said apparatus further comprises a valve holder, said valve holder being separable from said cap and being dimensioned to fit snugly into said cap. Mutti discloses an apparatus as claimed in claim 1 with a valve holder that is separable from the cap and dimensioned to fit snugly into the cap. In Mutti, the flexible membrane is held in position peripherally against the shoulder 20, and is fixed by a stop ring 23. Ex (Mutti), p. 4. As shown in FIGS. 2-5, the stop ring (23) functioning as the valve holder is separable from the cap (14) and fits snugly into the cap: Cap (14) See Ex (Brown), 55. Valve holder (23) 56