Ex Parte Hensel

Patent Trial and Appeal Board

Nov 22, 2016

13306897 (P.T.A.B. Nov. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/306,897 11129/2011
33372 7590 11/22/2016
MICHAEL MOLINS
MOLINS & CO. PTY. LTD.
SUITE 6, LEVEL 1
88 MOUNTAIN STREET
ULTIMO NSW, 2007
AUSTRALIA
FIRST NAMED INVENTOR
Keith James Hensel
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. CONFIRMATION NO.
BRE1139U 7942
EXAMINER
HOANG, TUBA
ART UNIT PAPER NUMBER
3742
MAILDATE DELIVERY MODE
11/22/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEITH JAMES HENSEL
Appeal2013-010777
Application 13/306,897
Technology Center 3700
Before MICHAEL L. HOELTER, LYNNE H. BROWNE, and
ERIC C. JESCHKE, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Keith James Hensel (Appellant) appeals under 35 U.S.C. § 134 from
the rejection of claims 1-8. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
Appeal2013-010777
Application 13/306,897
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A motorised citrus press having two switches for safety
purposes compnsmg:
a housing containing a motor for driving a rotating reamer;
the housing having attached to it an actuating arm;
the arm being hinged to the housing at one end and having
a handle at a free end;
the arm supporting for movement toward the reamer, a
fruit dome, having a path toward the reamer;
the movement of the arm causing an activation of a first
switch that is associated with the motor;
the reamer being mechanically associated with a second
switch such that pressure on the reamer activates the second
switch;
the motor receiving electrical power for the reamer only
when both the first and second switches cooperate.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hurst
Elliott
De Zarate
Capdevila
Seul
us 1,838,626
us 1,933,621
us 4,706,559
us 4,716,823
US 2003/0179645 Al
Dec. 29, 1931
Nov. 7, 1933
Nov. 17, 1987
Jan. 5, 1988
Sept. 25, 2003
REJECTIONS
I. Claims 1-3 and 5 stand rejected under 35 U.S.C § 103(a) as
unpatentable over De Zarate and Seul.
II. Claim 4 stands rejected under 35 U.S.C § 103(a) as
unpatentable over De Zarate, Seul, and Capdevila.
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III. Claim 6 stands rejected under 35 U.S.C § 103(a) as
unpatentable over De Zarate, Seul, and Elliott.
IV. Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over De Zarate, Seul, and Hurst.
DISCUSSION
Rejection I
Claims 1 and 2
Claim 2 depends from independent claim 1. Appellant does not
present separate arguments for the patentability of claim 2. See Appeal Br.
16. Accordingly, claim 2 stands or falls with claim 1.
The Examiner finds that De Zarate discloses all of the limitations of
claim 1 except for "the motor receiving electrical power for the reamer only
when both the first and second switches cooperate." Final Act. 3. In
particular, the Examiner finds that De Zarate discloses "a first switch that is
associated with the motor (micro-switch 34); the first switch is only
activated when the fruit dome has traveled at least to an intermediate
waypoint along the path toward the reamer." Id. at 2, Ans. 3--4 (citation
omitted). The Examiner finds that "De Zarate teaches the reamer being
mechanically associated with a second switch (micro-switch 39) such that
pressure on the reamer activates the second switch." Final Act. 2-3, Ans. 4
(citing col. 3, 11. 1-5). The Examiner notes that De Zarate's second switch is
an alternative to its first switch. In addition, the Examiner finds that "Seul
teaches an electric mixer that describes two switches cooperating to rotate
the motor, i.e. provide electrical power." Final Act. 3, Ans. 4 (citing i-f 5).
Based on these findings, the Examiner determines that it would have been
obvious "to include the feature of multiple, cooperating switches as taught
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by Seul, in order to provide for increased user safety during operation."
Final Act. 3, Ans. 4.
Appellant contends that "[ t ]he Examiner has merely dissected a
claimed invention into discrete features for consideration, without
considering the claims as a whole - including limitations imposed on the
switches by the language of Claim 1 when read as a whole." Appeal Br. 7;
see also Reply Br. 2. In support of this contention, Appellant argues that
"[ t ]he scope and content of De Zarate is limited to two distinct juice
extractor embodiments that each use a single mechanically-activated
switch." Id. However, this fact is not in contention. Rather, the Examiner
finds that De Zarate discloses alternative switches as discussed supra.
Moreover, "in many cases a person of ordinary skill will be able to fit the
teachings of multiple patents together like pieces of a puzzle" and, "[a]
person of ordinary skill is also a person of ordinary creativity, not an
automaton." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). Thus,
Appellant's argument is unconvincing.
Appellant further contends that "[t]he scope and content of Seu! is
limited, contrary to the examiners conclusion, to an electric mixer using only
a single mechanically-activated switch." Appeal Br. 8. In support of this
contention, Appellant argues that "it would be understood that the scope and
content of this teaching would be limited to a single mechanically-activated
switch (5) used with a conventional power 'on' switch (10)." Id. However,
claim 1 does not preclude the second switch from being a "power 'on"'
switch. Thus, Appellant does not apprise us of error.
Next, Appellant contends that Seul is nonanalogous art. See Appeal
Br. 9. In support of this contention, Appellant argues that:
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Application 13/306,897
Id.
Seu! is not from the field of endeavor pertaining to citrus presses
or motorised citrus presses, and teaches an electric mixer that
operates very differently to [] motorised citrus presses, Seu!
would not have commended itself to an inventor's attention in
considering [] a safely problem that is particular to motorised
citrus presses. Accordingly, Seu! does not address the same or
similar problem and is therefore not "reasonably pertinent."
Responding to this argument, the Examiner notes that "Seul explicitly
states that the application is for fruit [which] further undermines applicant's
argument." Ans. 9 (citing Seul, Abstract). Based on this fact, the Examiner
determines that Seul is in the same field of endeavor as the instant invention.
See id.
The Specification states that "[t]he invention pertains to juicers and
more particularly to a citrus juicer with improvements that contribute to ease
of use and juicing efficiency." Spec. 1. However, we are not persuaded that
simply because the Specification states that the invention pertains to juicers,
juicers and only juicers is the field of endeavor. Rather, those who are
knowledgeable about juicers likely have knowledge of other appliances for
processing fruit, such as blenders and mixers. Accordingly, we agree with
the Examiner that the field of endeavor is "kitchen appliances used to create
juice." Ans. 9. Thus, Appellant's argument that Seul is not in the same field
of endeavor as the instant invention is unconvincing. Accordingly, Seul
qualifies as analogous art under the first test defining the scope of analogous
prior art.
Further, as noted by Appellant:
Two separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of
the problem addressed and, (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is
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Application 13/306,897
reasonably pertinent to the particular problem with which the
inventor is involved.[]
Appeal Br. 8 (citing In re Klein, 647 F.3d 1343 (Fed. Cir. 2011); In re Bigio,
381F.3d1320, 1325 (Fed. Cir. 2004)). As quoted supra, based on the fact
that Seul is not a juicer, Appellant argues that Seul is not reasonably
pertinent to a problem with which the inventor was involved. See id. at 9.
However, Appellant does not explain why Seul is not pertinent to a problem
with which the inventor was involved.
Seul provides a safety switch in addition to a power switch. See, e.g.,
Seul i-f 26. Thus, Seul is pertinent to safety-related problems. The instant
invention is also concerned with problems related to safety. Thus, Seul is
pertinent to a problem with which Appellant is involved and, as such,
qualifies as analogous art under the second test defining the scope of
analogous prior art.
Appellant also argues that "the substantial differences in structure,
function and problem solved between Seu! and the claims at issue clearly
establish that this reference is non-analogous art." Appeal Br. 10. However,
as discussed supra, "substantial differences" is not one of the tests for
determining the scope of analogous art. Accordingly, Appellant's argument
1s unconvmcmg.
Next, Appellant argues that "[t]he Examiner has not provided
evidence of any such teaching, suggestion or motivation- other than based
on hindsight derived from the present application - to motivate a person of
ordinary skill in the art at the time of the invention to increase user safety
during operation." Appeal Br. 10. This argument is foreclosed by KSR, in
which the Court rejected the rigid requirement of a teaching or suggestion or
motivation to combine known elements in order to show obviousness. KSR,
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550 U.S. at 415. The Court noted that an obviousness analysis "need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ." Id. at 418. 1
Further, to the extent that Appellant is arguing that the Examiner fails to
articulate reasons for the proposed modification, Appellant's argument is
unconvincing, because the Examiner reasons that it would have been
obvious "to include the feature of multiple, cooperating switches as taught
by Seul, in order to provide for increased user safety during operation."
Final Act. 3.
In addition, Appellant argues that "Seul does not include any one of
the claimed features: actuating arm supporting a fruit dome and hinged to a
housing; a motorised rotating reamer; first switch mechanically actuated by
movement of the arm, second switch mechanically actuated by pressure
applied to the reamer." Appeal Br. 10. Although Appellant is correct, this is
not indicative of error as the rejection lies on De Zarate, not Seul, to meet
these limitations of claim 1.
Appellant further argues that the rejection is improper because "(a) a
person of ordinary skill in the art would not have a reasonable expectation of
success in making the claimed device; and (b) the Examiner applied
impermissible hindsight reasoning to make the combination. " 2 Appeal Br.
1 Appellant cites several cases that predate KSR (e.g., In re Vaeck,
20 U.S.P.Q.2d 1438, 1442 (Fed. Cir. 1991)) (Appeal Br. 10). In the interest
of brevity, we do not address each of the obviousness arguments based on
these cases, as such arguments are foreclosed by KSR.
2 Appellant repeatedly argues that the rejection relies upon impermissible
hindsight. See e.g., Appeal Br 13-15; Reply Br. 1. In the interest of brevity,
we respond to all instances of this argument infra.
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12. However, with respect to argument (a), switches are electronic devices
whose performance characteristics can be determined by those skilled in the
art. Appellant provides no evidence or persuasive argument that this is not
the case or that the results of the proposed combination are not reasonably
predictable. Absolute predictability that the modification will be successful
is not required, all that is required is a reasonable expectation of success.
See In re O'Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988). Furthermore,
with respect to argument (b ), Appellant does not identify any knowledge
relied upon by the Examiner that was gleaned only from Appellant's
disclosure and that was not otherwise within the level of ordinary skill at the
tirne of the invention. Thus, Appellant's assertion of hindsight is not
persuasive. See ln re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Next, Appellant argues that "De Zarate teaches away from the
claimed invention by showing only alternative embodiments (one teaching a
preferred citrus press and the other a 'simplified' citrus press), each
compnsmg only a single mechanically activated safety switches." Appeal
Br. 13. Appellant's argument is unconvincing because "teaching away"
requires that the reference "criticize, discredit, or otherwise discourage" the
use of other alternatives. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004). Appellant identifies no such teaching. Thus, Appellant does not
apprise us of error.
Appellant further contends that:
De Zarate and Seu!, even if combined, would only teach use of a
single mechanically operated safety switch in combination with
a conventional user activated power on switch - not a first
switch activated by movement of the arm; and second switch
activated by pressure on the reamer; wherein the motor is
powered only when both the first and second switches cooperate
according to the invention defined by Claim 1.
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Appeal Br. 13, 15.
Appellant's argument is not responsive to the rejection as articulated
by the Examiner. The rejection does not propose replacing De Zarate's
second switch with Seul's second switch. See Final Act. 2-3. Rather, the
rejection proposes using both of De Zarate's switches at the same time based
on Seul's teachings of a switch (Seul's safety switch 5, which will not
operate except in cooperation with Seul' s off switch 11 ). See id.; see also
Seul i-f 26. Thus, Appellant does not apprise us of error.
In addition, Appellant argues that:
The present inventor discovered ergonomic and safety issues for
citrus presses (Spec, page 10 line 32 - page 11 line 3). Therefore,
the knowledge that the problem even existed, let alone the
solution to it, was not "within the level of ordinary skill in the art
at the time the claimed invention was made."
Appeal Br. 14; see also Reply Br. 2. However, it is not necessary for the
prior art to serve the same purpose as that disclosed in Appellant's
Specification in order to support the conclusion that the claimed subject
matter would have been obvious. See KSR, 550 U.S. at 419 ("In determining
whether the subject matter of a patent claim is obvious, neither the particular
motivation nor the avowed purpose of the [Appellant] controls."); see also
In re Linter, 458 F.2d 1013, 1016 (CCPA 1972).
Appellant also argues that "[t]he Examiner, by relying on mere
conclusory statements that De Zarate and Seu! would be combined without
out any evidence on how such a modification could even be implemented,
has not established a prima facie case of obviousness against Claim 1."
Appeal Br. 15 (emphasis omitted). However, "it 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)
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(citation omitted). The relevant inquiry is whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. See In re Keller, 642 F.2d
413, 425 (CCPA 1981). "Combining the teachings of references does not
involve an ability to combine their specific structures." In re Nievelt,
482 F.2d 965, 968 (CCPA 1973). Thus, Appellant does not apprise us of
error.
In the Reply Brief, Appellant for the first time and not in response to
an argument raised in the Answer, argues that "[ t ]he Examiner has made no
meaningful findings regarding the level of ordinary skill in the art" and that
"'built-in' two stage or two step protection that does not require any user
input other than using the device is nowhere seen in any of the art of
record." Reply Br. 1, 2. In accordance with 37 C.F.R. § 41.41 (b)(2),
lacking a showing of good cause, we do not consider arguments raised in the
Reply Brief which are not responsive to an argument raised in the Answer.
For these reasons, we sustain the Examiner's dec1s10n rejecting claim
1, and claim 2, which falls therewith. As some of our reasoning differs from
the Examiner's, we designate our affirmance as a new ground of rejection
under 37 C.F.R. § 41.50(b).
Claim 3
The Examiner finds that in De Zarate "the first switch is only
activated when the fruit dome has traveled at least to an intermediate
waypoint along the path toward the reamer (as shown in Fig. 1, activation
occurs as cap 33 moves towards extractor head 25)." Final Act. 2.
Appellant argues that De Zarate does not support the Examiner's
finding. See Appeal Br. 16. We agree. With regard to the activation of
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Application 13/306,897
microswitch 34, De Zarate merely states "[t]here is a micro-switch 34 on the
fixed arm 29 designed to activate the motor and provided with a push button
worked by the cam 35 of the lever arm 30." De Zarate 4:43--46 (emphasis
and dashes omitted). De Zarate does not describe when micro-switch 34 is
activated nor is it readily apparent from Figure 1 when activation occurs.
Accordingly, the Examiner's finding is speculative and not supported by a
preponderance of the evidence.
For this reason, we do not sustain the Examiner's decision rejecting
claim 3.
Claim 5
Claim 5 is subject to a new ground of rejection under 35 U.S.C. § 112,
second paragraph, discussed infra. Having determined that claim 5 is
indefinite, we cannot sustain the rejection of this claim under 35 U.S.C.
§ 103(a) because to do so would require speculation as to the scope of the
claims. See In re Steele, 305 F.2d 859, 862---63 (CCPA 1962) (Holding that
the Board erred in affirming a rejection of indefinite claims under 35 U.S.C.
§ 103(a)).
Rejection II
The Examiner determines that De Zarate and Seul "fail to teach: a
portion of the arm contacts a cam surface on a switch actuator link, the
switch actuator link acting to activate or deactivate the first switch." Final
Act. 3. The Examiner finds that "Capdevila teaches a juice extractor for
industrial use that comprises a switch actuator link that activates a switch
(circular cam 21 with an angular notch that, by means of a connecting device
22 closes or opens the circuit with a button 23 on microswitch 24; col. 3, ln.
10-20)." Id. Based on this finding, the Examiner reasons that it would have
been obvious "to include the features of Capdevila, in order to provide for
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more precise control of the reamer/extractor, thereby insuring a more
responsive fruit and/or citrus press." Id.
Appellant argues that "[t]he cam 35 of De Zarate (see Fig. 1) is not a
cam according to Claim 4. In consideration of the claim as a whole, the
location of the cam surface is defined as being on a switch actuator link.
The cam 3 5 of De Zarate is on the actuating arm - not a switch actuator
link." Appeal Br. 17 (emphasis omitted).
Appellant's argument is not responsive to the rejection as articulated
by the Examiner, which relies on Capdevila, not De Zarate, to meet the
limitations at issue. Accordingly, Appellant does not apprise us of error.
We sustain the Examiner's decision rejecting claim 4. As claim 4
depends from claim 1, which we have designated as a new ground of
rejection, was also designate our affirmance of the rejection of claim 4 as a
new ground of rejection.
Re} ection III
The Examiner determines that De Zarate and Seul "fail to teach: a
collapsible quadrilateral hinge." Final Act. 4. The Examiner finds that
"Elliott teaches a fruit juice extractor with a collapsible quadrilateral hinge
(arm members 22, 23 connected via hinge 28 form quadrilateral shape)." Id.
Based on this finding, the Examiner reasons that it would have been obvious
"to modify De Zarate and Seul to include the features of Elliott, in order to
provide for greater flexibility of the arm/handle during use." Id.
Appellant contends that Elliott does not teach a quadrilateral hinge.
See Appeal Br. 18. In support of this contention, Appellant argues that
"'quadrilateral hinge' is a term or art. A quadrilateral shape is a closed
shape defined by four sides or edges - not a pair of hinged arm members."
Id. Responding to this argument, the Examiner repeats the finding that
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"Elliott teaches a fruit juice extractor with a collapsible quadrilateral hinge
(arm members 22, 23 connected via hinge 2 8 form quadrilateral shape)."
Ans. 12.
It is unclear how Elliott's arms 22 and 23, together with hinge 28,
form a collapsible quadrilateral shape. Thus, Appellant's argument is
convmcmg.
We do not sustain the Examiner's decision rejecting claim 6.
Rejection IV
Appellant does not contest the rejection of claims 7 and 8. See,
generally, Appeal Br. Accordingly, we summarily sustain the Examiner's
decision rejecting claims 7 and 8.
New Ground of Re} ection
Claim 5 is rejected under 35 U.S.C. § 112, second paragraph as being
indefinite. Claim 5 requires a "first switch [that] only cooperates with the
first switch to cause rotation of the reamer when the path of the dome is
generally linear." Appeal Br. 22. It is unclear how the first switch can
cooperate with itself.
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DECISION
We enter a NEW GROUND OF REJECTION for claim 5 under
35 U.S.C. § 112, second paragraph.
The Examiner's rejections of claims 1, 2, 4, 7, and 8 are AFFIRMED
and designated a NEW GROUND OF REJECTION.
The Examiner's rejections of claims 3, 5, and 6 are REVERSED.
This decision contains new grounds 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
[A ]ppellant, 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, [A ]ppellant 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.
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Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
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