Ex Parte Goodwin et al

Patent Trial and Appeal Board

Jun 19, 2017

13038062 (P.T.A.B. Jun. 19, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/038,062 03/01/2011 Randy M. GOODWIN 54936.004359 8096
143845 7590
ULMER & BERNE LLP
ATTN: DIANE BELL
600 VINE STREET
SUITE 2800
CINCINNATI, OH 45202
06/21/2017 EXAMINER
VALVIS, ALEXANDER M
ART UNIT PAPER NUMBER
3752
NOTIFICATION DATE DELIVERY MODE
06/21/2017 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):
ipdocketing@ulmer.com
dgordon @ ulmer.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RANDY M. GOODWIN,
PAUL HAVLOVITZ, PAUL HSU, and JAY F. PERKINS
Appeal 2015-003589
Application 13/038,062
Technology Center 3700
Before CHARLES N. GREENHUT, ERIC C. JESCHKE, and
ARTHUR M. PESLAK, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Randy M. Goodwin et al. (“Appellants”) seek review under 35 U.S.C.
§ 134(a) of the Examiner’s decision, as set forth in the Final Office Action
dated March 6, 2014 (“Final Act.”), rejecting claims 1—16 under 35 U.S.C.
§ 103(a) as unpatentable over Ketcham (US 6,749,133 Bl, issued June 15,
2004) and Merchlewitz (US 4,933,569, issued June 12, 1990). We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm, designating the affirmance as a new ground of rejection
pursuant to our authority under 37 C.F.R. § 41.50(b).
Appeal 2015-003589
Application 13/038,062
BACKGROUND
The disclosed subject matter “relates to a sprayer, and more
particularly to a hose-end sprayer that can dispense ready-to-use liquid
products, such as fertilizer compositions or pesticide (e.g., herbicides,
fungicides, and insecticides) compositions.” Spec. 11. Claim 1, the sole
independent claim, is reproduced below, with emphasis added:
1. A sprayer comprising:
a container defining an interior compartment
for containing a substance liquid;
a housing coupled with the container, having:
a grip portion;
a main chamber having a substance
liquid inlet, a carrier liquid inlet, and an
outlet; and
a carrier liquid receiving port;
a nozzle in selective fluid communication
with the outlet of the main chamber; and
a pivot switch on the exterior of the housing
for selecting a fluid flow condition for the main
chamber, wherein the pivot switch is operatively
coupled to a pivot arm to translate movement of the
pivot switch to the main chamber and the pivot arm
is pivotally connected to a pivot axis, the pivot axis
being located below the main chamber within the
housing;
wherein the grip portion is positioned such
that the grip portion lies below the nozzle and above
the carrier liquid receiving port.
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Application 13/038,062
DISCUSSION
Appellants argue the patentability of claim 1 and do not separately
argue claims 2—16, which depend from claim 1. Appeal Br. 4—9. Thus, we
address claim 1, with claims 2—16 standing or falling with claim 1. See 37
C.F.R. § 41.37(c)(l)(iv) (2014). The Examiner found that Ketcham
discloses various limitations in claim 1 but that “Ketcham fails to teach the
pivot arm is pivotally connected to a pivot axis, the pivot axis located below
the main chamber within the housing” as recited in the limitation shown
with emphasis above. Final Act. 2. The Examiner found, however, that:
Merchlewitz teaches a sprayer comprising a sprayer with
a pivot switch 40 is operatively connected to a pivot arm 47 to
translate the movement of the pivot switch to the main chamber
(50, 23 etc.) and the pivot arm is pivotally connected to a pivot
axis (lower 47) being located below the main chamber within the
housing.
Id. at 3 (discussing reference numerals shown in Figs. 3, 8). According to
the Examiner:
[i]t would have been obvious to one of ordinary skill in the art at
the time of the invention to adjust the pivot axis to be below the
main chamber as taught by Merchlewitz to the structure of
Ketcham because the connection being below the central portion
will be more durable.
Id.
Appellants disagree with the reasoning articulated by the Examiner,
and argue that “there is no reason why a skilled artisan would even attempt
to combine” Ketcham and Merchlewitz. Appeal Br. 8. Appellants assert
that “the Office fails to provide any scientific rationale or evidence to
support its assertion” (id.)—i.e., that “the connection being below the central
portion will be more durable” (Final Act. 3).
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Application 13/038,062
The Examiner responds that “one of ordinary skill in the art would
easily be able to discern that the small teeth of Ketcham would not be as
structurally strong as the large arms of Merchlewitz” and that “[t]his may be
done by a simple calculation finding the moment of inertia, which would be
the only defining difference in finding the bending normal stress of the
system.” Ans. 7—8. The Examiner then discusses certain purported
structural characteristics of the relevant structures in Ketcham and
Merchlewitz. See id. at 8—9.
Appellants reply that the Examiner “fails to consider that
Merchlewitz’s switch has a complicated cross section and is not
‘substantially rectangular’ (as alleged).” Reply Br. 9. Relying on Figure 4
of Merchlewitz, Appellants argue that “the switch is not of a straight
rectangular cross section (e.g., the lower portion of switch 40 has a ‘u’
shaped structure (u-shaped notch 42 and tongs 47) that straddles the
reciprocating piston (46)” (citing Merchlewitz, col. 3,11. 3—10) and
therefore, the Examiner’s “moment of inertia formula does not apply, as the
formula posited . . . would not be accurate for Merchlewitz’s shape.” Id.
Appellants also contend that “a different moment of inertia formula would
be applied for the gear tooth shape used by Ketcham” because “stress
calculations for gear teeth are based on American Gear Manufacturers
Association (AGMA) formulas derived from the Lewis-Buckingham
formulas, which take into account certain factors and the loading profile of
gears, which is different from a simple beam.” Id. at 11.
Rejections based on obviousness must be supported by “some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006),
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Application 13/038,062
cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). We agree with Appellants that the Examiner has not provided
adequate articulated reasoning to combine the relied-upon aspects of
Ketcham and Merchlewitz to support the conclusion of obviousness of claim
1. The reasoning provided—that “the connection being below the central
portion will be more durable” (Final Act. 3)—does not support the
conclusion of obviousness because, for the reasons stated by Appellants as
set forth above, the structural analysis provided does not sufficiently support
the Examiner’s position.
As to the Examiner’s reliance, in the alternative, on “design choice”
as the articulated reasoning (Ans. 9), we agree with Appellants (Reply Br.
11) that this relies on knowledge gleaned only from the Specification and
not shown to be otherwise within the level of ordinary skill at the time of the
invention. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Although we do not sustain the rejection on the basis of either of the
Examiner’s two alternative rationales, we reach the same conclusion as to
claim 1. We modify the reasoning as follows. At the time of the invention,
it would have been obvious to one of ordinary skill in the art to substitute the
pivot switch of Merchlewitz (see, e.g., element 40 of Figs. 3, 8) for the
rotating knob actuator of Ketcham (see, e.g., element 604 of Figs. 6B, 6D,
6F)1 within the valve body assembly of Ketcham. This modification would
substitute one known actuating element for another known in the field, and
would yield the predictable result of continuing to allow sliding action of
insert 600 in Ketcham. See Ketcham, col. 8,11. 9—10; Merchlewitz, col. 3,11.
1 Knob actuator 604 in Ketcham is not identified in the figures but is
described in the written description. See Ketcham, col. 7,1. 62 — col. 8,1. 14.
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Application 13/038,062
6—8, 32-46; KSR, 550 U.S. at 416 (“[W]hen a patent claims a structure
already known in the prior art that is altered by the mere substitution of one
element for another known in the field, the combination must do more than
yield a predictable result.”).
We turn now to Appellants’ arguments regarding the proposed
modification.2 First, Appellants state that the proposed “modification
changes Ketcham’s switch mechanism from one type (i.e., rack and pinion)
to another, completely different type (i.e., a slotted pivot switch)” and argue
that “the proposed modification materially alters the operation of. . .
Ketcham.” Appeal Br. 6. Appellants contend that because “Ketcham’s
sprayer has three operational positions for its switch” whereas
“Merchlewitz’s sprayer has only two operational positions (open and
closed),” the Examiner’s “ hypothetical combination would result in
Ketcham only having two operational positions and thus lose one of its
required positions.” Id. According to Appellants, “[Replacement of
Ketcham’s mixture adjustment design with the Merchlewitz design would
eliminate the mixing capability disclosed by Ketcham, a core feature of the
Ketcham design.” Id. at 7.
We are not apprised of error based on this argument because it does
not address the rejection as articulated. As stated by the Examiner, in the
proposed modification, the “connection means of Merchlewitz’s switch is
being combined with Ketcham and not the operational functionality.” Ans.
2 Although we modify the Examiner’s reasoning, we understand the
Examiner to propose the same modification set forth above. See Final Act.
3; Ans. 6—7; see also Appeal Br. 6 (stating that “[t]he Office proposes
combining Merchlewitz’s switch [as depicted in Figure 8] into Ketcham’s
spraying apparatus”).
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Application 13/038,062
6 (stating also that the proposed modification “merely changes the
connection of the switch to the main body and does not cease the ability to
perform the functionality as disclosed by Ketcham”).
Second, Appellants contend that, “[e]ven assuming a skilled artisan
would have sought to include Ketcham’s third position with Merchlewitz’s
switch, it would not be possible” because “Merchlewitz’s switch is designed
to only pivot between two positions since, as disclosed in Merchlewitz, the
switch only supports a single fluid stream through its device.” Appeal Br. 7
(citing Merchlewitz, col. 2, lines 54—56). Appellants argue that “unlike
Ketcham’s device that permits mixing, Merchlewitz’s device, and in
particular, its reciprocating piston does not support mixing a product stream
and a carrier stream.” Id. Thus, according to Appellants, the “proposed
combination would improperly change the operation and design of
Merchlewitz’s device and result in a non-working sprayer.” Id. Appellants
argue that the Examiner “fails to provide any non-conclusory technical
reasoning regarding how this modification would be accomplished in the
resulting system.” Reply Br. 4.
We are not apprised of error based on this argument. Although
Appellants are correct that Merchlewitz discloses its pivot switch being used
in two operation positions—open and closed (see Merchlewitz, col. 3,11. 32—
39)—Appellants have not provided sufficient evidence or technical
reasoning to show error in the Examiner’s position that the pivot switch
from Merchlewitz could be used, in the context of the modified device, to
provide the three operational positions disclosed in Ketcham. See Ans. 6
(stating that the “connection means of Merchlewitz’s switch is being
combined with Ketcham and not the operational functionality” and that “one
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Application 13/038,062
of ordinary skill in the art would easily be able to configure any switch to
have a plurality of positions”); id. at 7 (“Merchlewitz’s switch performs the
identical function of translating the main chamber as performed by Ketcham.
The Examiner asserts that using the switch of [Merchlewitz] would equally
translate the main chamber of Ketcham.”). Appellants have not shown that
this proposed modification would have been beyond the level of ordinary
skill in the art. See KSR, 550 U.S. at 418 (stating that the obviousness
analysis “can take account of the inferences and creative steps that a person
of ordinary skill in the art would employ”).
Third, Appellants argue that “the proposed modification . . . requires
significant structural modifications to[] Ketcham” (Appeal Br. 6) and that
certain aspects of the proposed modification “amount to substantial
reconstruction and redesign of Ketcham’s elements” that “would require
additional steps in the manufacturing of Ketcham’s device, such as creating
the cavity and the additional machining which would entail additional
equipment in the assembly line process for Ketcham’s device, as well as
increase its complexity” (id. at 7—8 (discussing Final Act. 6)). See also
Reply Br. 6 (arguing that “Ketcham’s main chamber would need to be
extensively modified to accommodate Merchlewitz’s switch”). According
to Appellants, the proposed modification is improper because it involves
“significant structural alterations.” Appeal Br. 8.
The Examiner responds that “no significant modification would be
necessary at all” in that “Merchlewitz teaches simply that the pivot switch
40 which is pivotally mounted to the main body, mechanically engages with
the valve body by a friction fit and detent elements 44” and, “[t]hus, an
appropriately sized switch would be able to fit on any valve body portion
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Application 13/038,062
(sized appropriate) due to the frictional pads and the snap engaging design.”
Ans. 6. The Examiner also states that “[o]ne of ordinary skill in the art
would be able to apply a standard switch as taught by Merchlewitz by using
fundamental engineering practices that would not go beyond the scope of
engineering expediency.” Id. at 7.
Appellants reply that “regardless of the difficulty level of engineering
the asserted combination, there are substantial manufacturing changes that
would be required to implement the alleged combination—changes that
improperly alter the principle of operation of Ketcham.” Reply Br. 7.
We are not apprised of error based on these arguments. Appellants
have not provided sufficient evidence or technical reasoning to support that
the proposed modifications would have been beyond the level of ordinary
skill in the art. See KSR, 550 U.S. at 418. Moreover, Appellants have not
demonstrated that, for example, the alleged additional manufacturing steps
or equipment—even if assumed to exist—would have undermined the
reason to combine. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157,
1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous
advantages and disadvantages, and this does not necessarily obviate
motivation to combine”).
Further, Appellants have not demonstrated that modifying Ketcham as
proposed would change the basic principle under which Ketcham operates:
altering the stage of “product mixing” by sliding insert 600 within the
surrounding structure (see Ketcham, col. 7,1. 62 — col. 8,1. 14). Cf. In re
Ratti, 270 F.2d 810, 813 (CCPA 1959) (stating that the proposed
modification would “require a substantial reconstruction and redesign of the
elements shown in [the prior art] as well as a change in the basic principles
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Application 13/038,062
under which the [prior art] was designed to operate”). Appellants also have
not demonstrated that modifying Ketcham as proposed would render
Ketcham unsatisfactory for its intended purpose of providing various stages
of product mixing (see Ketcham, col. 7,1. 62 — col. 8,1. 14). See Reply Br. 7
(citing MPEP § 2143.01(V)); cf. In re Gordon, 733 F.2d 900, 902 (Fed. Cir.
1984) (reversing a rejection because modifying the prior art by turning a
filter upside down would render it incapable of filtering, and thus, inoperable
for its intended purpose).
As to the argument that “Ketcham’s valve body is configured with a
set of gear teeth on its exterior that mate with the gear teeth of Ketcham’s
switch” but “Ketcham’s valve body . . . has no structural elements to mate
with Merchlewitz’s switch since Merchlewitz’s switch employs a different
configuration (i.ea pivot switch)” (Reply Br. 3), we note that “[t]he test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981); see also Reply Br. 6
(“Merchlewitz’s switch is simply not physically compatible with Ketcham’s
valve body as presently configured.”).
Fourth, Appellants argue that “Ketcham and Merchlewitz are directed
to completely different devices having distinct operating mechanisms” and
that, “[a]s such, a skilled artisan would not look to such divergent systems
for combination.” Appeal Br. 8. In support, Appellants argue that “each of
the references addresses a different problem in the art.” Id. (citing Ketcham,
col. 3,11. 31—34 and Merchlewitz, col. 1,11. 10-30). We are not apprised of
error based on this argument, however, because Appellants have not shown
that the differences between the references undermine the factual findings or
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Application 13/038,062
reasoning relied on to support the conclusion of obviousness. See KSR, 550
U.S. at 420 (“[Fjamiliar items may have obvious uses beyond their primary
purposes, and in many cases a person of ordinary skill will be able to fit the
teachings of multiple patents together like pieces of a puzzle.”).
Fifth, Appellants argue that the Examiner’s positions “appear to be
strongly based on impermissible hindsight” and that the Examiner “has used
the claims as the starting point in its obviousness analysis, and then pieced
together the prior art in its attempt to render the claims obvious.” Reply Br.
12. We view this as asserting insufficient reasoning to combine the cited
references. See In re Cree, Inc., 818 F.3d 694, 702 n.3 (Fed. Cir. 2016)
(viewing an “impermissible hindsight” argument as “essentially a
repackaging of the argument that there was insufficient evidence of a
motivation to combine the references”). In light of the modified reasoning
provided above, we need not address this argument further.
For the reasons above, we sustain the rejection of claim 1. Because
the reasoning provided differs from the reasoning articulated by the
Examiner, we designate our affirmance as a new ground of rejection under
37 C.F.R. § 41.50(b) to provide Appellants with a full and fair opportunity
to respond to the rejection, as modified. Claims 2—16 fall with claim 1.
DECISION
We affirm the decision to reject claims 1—16, designating the
affirmance as a new ground of rejection pursuant to our authority under
37 C.F.R. §41.50(b).
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Application 13/038,062
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED: 37 C.F.R, $ 41.50(b)
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