Ex Parte Burnham et al

Patent Trial and Appeal BoardOct 24, 2018

13771553 (P.T.A.B. Oct. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/771,553 02/20/2013 22446 7590 10/26/2018 ICE MILLER LLP ONE AMERICAN SQUARE, SUITE 2900 INDIANAPOLIS, IN 46282-0200 FIRST NAMED INVENTOR Matthew Burnham UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. P02250-US-Ol (32421.0014) CONFIRMATION NO. 1678 EXAMINER BALLMAN, CHRISTOPHER D ART UNIT PAPER NUMBER 3753 NOTIFICATION DATE DELIVERY MODE 10/26/2018 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): IPDOCKET@ICEMILLER.COM CHIIPDOCKET@ICEMILLER.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MATTHEW BURNHAM, ANDY SMITH, and AMY BACKHUS Appeal2017-004558 Application 13/771,553 1 Technology Center 3700 Before LYNNE H. BROWNE, MICHELLE R. OSINSKI, and ERIC C. JESCHKE, Administrative Patent Judges. JESCHKE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Matthew Burnham et al. ("Appellants") seek review under 35 U.S.C. Â§ 134(a) of the Examiner's decision, as set forth in the Final Office Action dated November 25, 2015 ("Final Act."), and as further explained in the Advisory Action dated May 24, 2016 ("Adv. Act."), rejecting claims 1-23. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm in part. 1 Appellants identify Nyloncraft, Inc. as the real party in interest. Br. 4. Appeal2017-004558 Application 13/771,553 BACKGROUND The disclosed subject matter "generally relates to check valves and, more particularly, to high mass flow check valve aspirators." Spec. ,r 2. Claims 1 and 11 are independent. Claim 1 is reproduced below: 1. A check valve aspirator comprising: a venturi pipe having a converging section including a converging wall extending from a converging inlet and terminating at a converging outlet, and a diverging section including a diverging wall starting at a diverging inlet and terminating at a diverging outlet, the converging outlet in fluid communication with the diverging inlet; a throat disposed between the converging section and the diverging section such that the converging wall is circumferentially spaced apart from the diverging wall where the converging wall terminates at the converging outlet and the diverging wall starts at the diverging inlet, wherein a diameter of the throat is greater than a diameter of the converging outlet and a diameter of the diverging inlet; and a venturi check valve bowl in fluid communication with the throat. REJECTI0NS 2 1. Claims 1 and 11 stand rejected under 35 U.S.C. Â§ 102(b) as anticipated by Kloosterman (US 5,291,916, issued Mar. 8, 1994). 2 The Examiner rejected claims 8 and 18 under 35 U.S.C. Â§ 112, second paragraph, as failing to particularly point out and distinctly claim the subject matter regarded as the invention. See Final Act. 2. In the Advisory Action, the Examiner stated that Appellants had overcome this rejection. See Adv. Act. 1. 2 Appeal2017-004558 Application 13/771,553 2. Claims 2-9, 12-19, and 21-23 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Kloosterman. 3. Claims 10 and 20 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Kloosterman and Goetzke (US 5,328,094, issued July 12, 1994). DISCUSSION Rejection 1 - Claims 1 and 11 Appellants do not present any arguments addressing this rejection. See Br. 14. Thus, we summarily sustain. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) ("If an appellant fails to present arguments on a particular issue----or, more broadly, on a particular rejection-the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection."). Rejection 2- Claims 2-9, 12-19, and 21-23 A. Claim 21 Claim 21 depends directly from claim 1 ( addressed above). Appellants do not present any arguments for claim 21. See Br. 20. Thus, we summarily sustain the rejection of claim 21. See Frye, 94 USPQ2d at 1075. B. Claims 2-9, 12-19, 22, and 23 The claims in this group depend from either claim 1 or claim 11, and include at least one numerical range ( open- or closed-ended) for either: ( 1) a dimension of a recited structure ( or between recited structures) (see claims 7-9 and 17-19) or (2) a ratio of one dimension to another dimension (see claims 2---6, 12-16, 22, and 23). See Br. 23-27 (Claims App.). For these claims, the Examiner acknowledged that Kloosterman does not disclose any 3 Appeal2017-004558 Application 13/771,553 of the recited numerical ranges, but stated that it would have been obvious to one of ordinary skill in the art at the time of the invention to have modified the structures in Kloosterman to have had dimensions or ratios of dimensions within the claimed ranges "for the purpose of creating the desired fluid flow profile, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art." See, e.g., Final Act. 5---6 (addressing claim 2, and citing MPEP Â§ 2144.05(II)). As to the Examiner's repeated statement that "'it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art,"' Appellants "acknowledge[] that this is a basic tenet of patent law" but argue that "this is only the case when one of ordinary skill in the art would recognize the variable that needs to be optimized." Br. 15. In support, Appellants quote from a discussion in the MPEP, which characterized the decision in In re Antonie, 559 F.2d 618 (CCPA 1977), as holding that a "particular parameter must first be recognized as a result- effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation." MPEP Â§ 2144.05(II)(B) (9th ed., Rev. 08.2017, Jan. 2018), quoted at Br. 15. 3 We agree with Appellants that the record here does not show that the prior art recognized any of the specific claimed dimensions or the specific ratios of dimensions as result-effective variables-i.e., "variable[s] which 3 Appellants mistaken attribute the quotation to the decision in In re Antonie rather than the MPEP 's discussion of that decision. 4 Appeal2017-004558 Application 13/771,553 achieve[] a recognized result" (MPEP Â§ 2144.05(II)(B) ). See Br. 15 ("The specific dimensions and ranges of claims 2-9, 12-19, and 22-23 provide results that would not be recognized by one of ordinary skill in the art as something to be optimized."). Such recognition is necessary to support a rejection based on routine optimization. See Antonie, 559 F .2d at 620 ("The PTO and the minority appear to argue that it would always be obvious for one of ordinary skill in the art to try varying every parameter of a system in order to optimize the effectiveness of the system even if there is no evidence in the record that the prior art recognized that particular parameter affected the result." (emphasis added)); In re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012) (discussing how the general rule from In re Aller, 220 F.2d 454, 456 (CCPA 1955), "is limited to cases in which the optimized variable is a 'result-effective variable[]' In re Antonie, 559 F .2d 618, 620 ( CCP A 1977)"); see also Br. 17 ( arguing that "Kloosterman makes no reference to any ratios or particular dimensions"). In the Answer, the Examiner states: "As the dimensions of a fluid flow path are directly responsible for the desired flow pattern, Kloosterman does rely on the dimensions and ratios of its parts to achieve the desired outcome." Ans. 16. The Examiner also states that "it is well known in the art to manipulate the dimensions of a venturi to achieve different flow characteristics" and that, "[ t ]herefore, it would have been obvious for one of ordinary skill to manipulate the ratios to achieve a different flow characteristic as required by the claims." Id. at 15-16. The Examiner has not adequately explained, however, why one seeking to "achieve different flow characteristics" (id. at 16) would necessarily adjust the specific claimed dimensions or the specific ratios of 5 Appeal2017-004558 Application 13/771,553 dimensions recited and arrive at the claimed inventions. See In re Stepan Co., 868 F.3d 1342, 1346 (Fed. Cir. 2017) (reversing a rejection based on routine optimization because the rejection failed to explain why it would have been routine optimization to arrive at the claimed invention). For these reasons, we do not sustain the rejection of claims 2-9, 12- 19, 22 and 23. Rejection 3 - Claims 10 and 20 Claim 10 depends from claim 8 and claim 20 depends from claim 18. Br. 25, 27 (Claims App.). The Examiner's added reliance on Goetzke does not remedy the deficiencies in the rejection based on Kloosterman, discussed above (see Rejection 2 Â§ B). Thus, for the same reasons discussed above, we do not sustain the rejection of claims 10 and 20. DECISION We affirm the decision to reject claims 1, 11, and 21, and we reverse the decision to reject claims 2-10 and 12-20, 22, and 23. 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)(l). See 37 C.F.R. Â§ 1.136(a)(l)(iv); 37 C.F.R. Â§ 4I.50(f). AFFIRMED-IN-PART 6