Ex Parte Manion

Patent Trial and Appeal BoardNov 27, 2013

12180515 (P.T.A.B. Nov. 27, 2013)

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. 12/180,515 07/25/2008 Patrick R Manion 53603 1190 23994 7590 11/27/2013 Hartman Titus PLC 7114 E. Stetson Drive Suite 205 Scottsdale, AZ 85251 EXAMINER PEZZUTO, ROBERT ERIC ART UNIT PAPER NUMBER 3671 MAIL DATE DELIVERY MODE 11/27/2013 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 PATRICK R. MANION ____________ Appeal 2012-000480 Application 12/180,515 Technology Center 3600 ____________ Before MICHAEL L. HOELTER, ANNETTE R. REIMERS and FRANCES L. IPPOLITO, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-000480 Application 12/180,515 2 STATEMENT OF THE CASE Patrick R. Manion (Appellant) appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1-14 under 35 U.S.C. § 103(a) as unpatentable over Bricher (U.S. 3,917,350; iss. Nov. 4, 1975) and Harrop (U.S. 6,530,768 B1; iss. Mar. 11, 2003). We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER The claimed subject matter relates to an ice resurfacing machine that “applies ultrasonic frequency vibration to the ice cutting blade.” Spec. p. 3, para. [0011]; figs. 1, 9. Claims 1, 10 and 12 are independent. Claim 1 is illustrative of the claimed subject matter on appeal and recites: 1. An ice resurfacing machine for smoothing an ice surface of an ice rink, having an ice shaving blade, positioned to remove a top layer of the ice surface as the machine moves across the ice surface, that vibrates with ultrasonic vibrations. ANALYSIS Independent claim 1 recites an ice resurfacing machine including “an ice shaving blade . . . that vibrates with ultrasonic vibrations.” App. Br., Clms. App’x. Independent claim 10 recites a method of resurfacing ice including the step of “dragging an ultrasonically vibrating ice shaving blade across the surface.” Id. Independent claim 12 recites a kit for improving the ice shaving operation of an ice resurfacing machine including “at least one ultrasonic transducer adapted to be coupled to and induce vibrations in an ice shaving blade in the machine.” Id. The Examiner found that Bricher Appeal 2012-000480 Application 12/180,515 3 discloses the limitations of the claims except Bricher “fails to show the blade vibrating at ultrasonic speeds.” Ans. 5. The Examiner further found that Harrop teaches that it is well known in the cutting art to vibrate blade 14 at ultrasonic speeds. Harrop discloses a machine (figures 1-3) having a plurality of blades 14 and piezo-electric transducers (column 4, lines 5-8), the transducers driven by a ultrasonic generator (column 4, lines 8 and 9). Further, Harrop discloses each blade vibrating at an ultrasonic speed (column 3, lines 14-16). Id. The Examiner concluded that “it would have been obvious to one having ordinary skill in the art at the time of the invention to provide the machine of Bricher with the teaching of Harrop in order to provide an ice resurfacing machine that could be more effectively and efficiently employed.” Id. In addition, the Examiner took the position that the [E]xaminer simply employs the [Harrop] reference to teach that it is known to vibrate cutting blades at these speeds and that the benefits of such is well known and that to vibrate the blade of Bricher at these speeds would be obvious as well as the resultant benefits and effects. Ans. 7 (emphasis omitted); see also Final Rej. 4. Appellant contends that “there is no rational underpinning to connect the two references [Bricher and Harrop] and arrive at the claimed invention.” App. Br. 5. Specifically, Appellant contends that the [E]xaminer’s legal conclusion that “it would have been obvious to one having ordinary skill in the art at the time of the invention to provide the machine of Bricher with the teaching of Harrop in order to provide an ice resurfacing machine that could be more effectively and efficiently employed” is without basis in the record. Appeal 2012-000480 Application 12/180,515 4 App. Br. 10. Appellant’s arguments are persuasive. First, we agree with Appellant that “the [E]xaminer has not cited [to] a single reference in the Harrop text to support [the] assertion” that “Harrop teaches [that] the ‘benefits of [ultrasonic cutting] are well known.’” Reply Br. 4. Further, the Examiner has failed to establish by a preponderance of the evidence how modifying the blade of Bricher’s ice resurfacing device with vibration at ultrasonic speeds, as taught by Harrop, would provide more effective and efficient employment of Bricher’s ice resurfacing device. The Examiner’s finding simply states a conclusion without providing the necessary “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). Accordingly, we are constrained to reverse the Examiner’s obviousness rejection of independent claims 1, 10 and 12 and their respective dependent claims over Bricher and Harrop. DECISION We REVERSE the decision of the Examiner to reject claims 1-14. REVERSED hh