Ex Parte Burlew

Patent Trial and Appeal BoardSep 27, 2012

11764596 (P.T.A.B. Sep. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte BARBARA BURLEW ____________________ Appeal 2010-005718 Application 11/764,596 Technology Center 3700 ____________________ Before EDWARD A. BROWN, CHARLES N. GREENHUT, and WILLIAM V. SAINDON, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005718 Application 11/764,596 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 1 and 3-16. (App. Br. 2). We have jurisdiction over this appeal under 35 U.S.C. Â§ 6(b). We affirm. THE CLAIMED SUBJECT MATTER Independent claim 1, reproduced below, is representative of the appealed subject matter. 1. A device comprising: a handle; a snuffer head sized and dimensioned and having materials appropriate to receive an end of a candle to snuff out a flame; a gas conduit gaseously coupling the handle and the head, such that the snuffer head generally points in a direction different from the conduit; and a suction mechanism and a smoke filter, coupled to the gas conduit and housed within the handle, wherein the suction mechanism pulls a gas from the head and through the smoke filter. THE REJECTIONS The appealed claims stand rejected as follows: 1. Claims 1, 3-13, 15, and 16 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Valentine (US 2007/0231756 A1; pub. Oct. 4, 2007), Harrison (US 6,267,581 B1; iss. Jul. 31, 2001), Roberts (US 2007/0137484 A1; pub. Jun. 21, 2007), and Johnson (US 5,085,231; iss. Feb. 4, 1992).1 1 Claim 2 has been cancelled. Appeal 2010-005718 Application 11/764,596 3 2. Claim 14 is rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Valentine, Harrison, Roberts, Johnson, and Touya (US 4,924,548; iss. May 15, 1990). ANALYSIS Claims 1, 3-13, 15, and 16 â€“ Valentine, Harrison, Roberts, and Johnson Appellant argues claims 1-13, 15, and 16 as a group. (App. Br. 4-6). We select claim 1 as representative of the grouping; claims 2-13, 15, and 16 stand or fall with claim 1. See 37 C.F.R. Â§ 41.37(c)(1)(vii) (2011). The Examiner found Valentine discloses a device comprising a handle 18, a snuffer head 20, and a gas conduit 30 coupling the handle 18 and head 20, where the snuffer head 20 generally points in a direction different from the conduit. (Ans. 3-4; see Examiner's annotations to Fig. 1 of Valentine at Ans. 4). The Examiner found Valentine's device does not include "a snuffer head sized and dimensioned and having materials appropriate to receive an end of a candle to snuff out a flame," as claimed. (Ans. 12). The Examiner found Harrison discloses a housing 24 formed upon an end of the handle member 12. (Ans. 4). Harrison describes, "[a]s per conventional snuffers, the housing 24 is sized and configured to be axially positioned atop a candle flame to extinguish the same." (Ans. 4) (emphasis omitted) (see also Harrison col. 3, ll. 22-24, Fig. 1). The Examiner found Roberts discloses a device including a head 40 that generally points in a direction different from a gas conduit 41. (Ans. 6) (citing Roberts Fig. 4). The Examiner found Johnson discloses a device including a head 24 that generally points in a direction different from a gas conduit 26. (Ans. 6- 7) (citing Johnson Fig. 3). Appeal 2010-005718 Application 11/764,596 4 The Examiner concluded that to provide additional means for directing the flow of smoke into Valentine's inlet, it would have been obvious to one of ordinary skill in the art to modify the smoke inlet to include a head member arranged to generally point in a different direction from the conduit, in view of Harrison, Roberts, and Johnson. (Ans. 7, 13). The Examiner further concluded that to provide additional means for directing the flow of smoke into the inlet of Valentine, and to also permit the head to act as a conventional snuffer to extinguish the flame, it would have been obvious, in view of Harrison, to modify Valentine's smoke inlet to extend in a different direction from the conduit, and to be sized and dimensioned to extinguish the flame of a candle. (Ans. 7, 13). Appellant contends that neither Johnson nor Roberts utilizes a snuffer head, and one of ordinary skill in the art would not have looked to either reference for modifying Valentine's device with a snuffer head. (App. Br. 5; see also Reply Br. 5). Appellant also contends that Johnson and Roberts are not capable of operating in the same manner, and do not include substantially the same elements, as Appellant's invention. (Reply Br. 6-7). Based on the Examiner's findings for Valentine, and the Examiner's conclusion that the combined teachings of Valentine and Harrison would result in a device comprising each of the features of claim 1, as discussed supra, it appears the Examiner determined that the combination of Valentine and Harrison alone is sufficient to support the conclusion of obviousness, and relied on Roberts and Johnson for providing teachings cumulative to those of Valentine and Harrison. For example, as noted supra, the Examiner found both Valentine and Harrison disclose candle snuffer devices with fluid Appeal 2010-005718 Application 11/764,596 5 passages, and relied on Harrison for its teaching of a snuffer head sized and configured to extinguish a candle flame. Appellant also contends that one of ordinary skill in the art would expect the Johnson and Roberts designs could potentially impede the device's proper functioning. (Reply Br. 4). "[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review." In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983); In re Keller, 642 F.2d 413, 425 (CCPA 1981) ("The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . ."). Appellant has provided no persuasive reason or evidence as to why one of ordinary skill in the art would lack sufficient knowledge and skill to be able to modify the Valentine device and compensate for any alleged loss of suction and effectiveness resulting from its modification, such as by increasing the capacity of the motor and fan. Appellant also contends that "[e]ven if the Valentine's opening 26 is structurally capable of receiving a small candle, the device lacks the equivalent functionality of applicant's invention because the device is not suitable for coming into direct contact with a flame in order to smother the flame." (App. Br. 5) (emphasis added). We disagree. Valentine discloses operation of the candle extinguishing device 10 where the fan is turned on to draw air, etc., into the passage 30, and then turned off once the flame is extinguished. (See Valentine para. [0012]). Valentine also discloses that: The candle extinguishing device 10 may also be operated as follows: use the device 10 to extinguish the flame, then draws soot, smoke etc. from a smoldering wick into the barrel 14 to the filter 38, Appeal 2010-005718 Application 11/764,596 6 also cooling the wick. The device 10 can perform two functions (1) extinguishing the flame and (2) removing most of the soot and smoke. (Valentine para. [0012]) (emphasis added). Valentine discloses that the device 10 is used to extinguish the flame, then drawing smoke, etc. from the wick into the barrel 14. In light of this disclosure, it is reasonable to find that Valentine's device 10 is capable of coming into direct contact with a flame to extinguish it. Appellant further contends that Valentine's suction mechanism/smoke inlet already performs a similar function (i.e., to extinguish a candle flame) to Harrison's snuffer head. (App. Br. 5; Reply Br. 4-5). Appellant contends that Valentine and Harrison supposedly already provide a complete solution to the problem at hand, and so one of ordinary skill in the art would not be motivated to combine their teachings. (App. Br. 6; Reply Br. 4-5). Appellant has not provided any persuasive argument or evidence that this combination would compromise the effectiveness of Valentine's device. (Reply Br. 4-5). While we agree with Appellant that the respective candle extinguishing devices disclosed by Valentine and Harrison can each extinguish a candle flame and reduce resulting smoke, we agree with the Examiner that combining the teachings of Valentine and Harrison would result in a candle extinguishing device that provides improved, not redundant, operation. The Harrison housing would contain smoke once the flame is extinguished, and provide additional means for directing the flow of the smoke into the inlet, thereby allowing the contained smoke to be drawn efficiently through the gas conduit. (See Ans. 15). Appellant has not apprised us of any error in the Examiner's finding that Harrison establishes a reasonable expectation that a snuffer device would benefit from the addition Appeal 2010-005718 Application 11/764,596 7 of a conical or bell-shaped head, sized and configured to extinguish a candle flame, and communicating with a fluid conduit. (Ans. 14). Appellant also contends that "Harrison is devoid of any teaching, suggestion, or motivation to combine the use of a snuffer head with the miniature vacuum of Valentine, and the Examiner has failed to adequately address this point." (Reply Br. 6). This argument is foreclosed by KSR, in which the Supreme Court rejected the rigid requirement of a teaching, suggestion or motivation to combine known elements in order to establish obviousness. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007). In view of the above, we sustain the rejection of claims 1, 3-13, 15, and 16. Claim 14 â€“ Valentine, Harrison, Roberts, Johnson, and Touya Claim 14 depends from claim 1. Appellant relies on the dependency of claim 14 from claim 1 for patentability. However, as we find no deficiency in the Examiner's rejection of claim 1, we sustain the rejection of claim 1 for similar reasons. DECISION The Examiner's decision rejecting claims 1 and 3-16 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(1)(iv). AFFIRMED mls