Ex Parte Mori

Patent Trials and Appeals Board

Mar 13, 2019

13819637 - (D) (P.T.A.B. Mar. 13, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/819,637 02/27/2013
29157 7590
K&L Gates LLP-Chicago
P.O. Box 1135
CHICAGO, IL 60690
03/15/2019
FIRST NAMED INVENTOR
Peter Mori
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.
3712036-01789 1413
EXAMINER
CALVETTI, FREDERICK F
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
03/15/2019 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):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER MORI
Appeal2017-006876
Application 13/819,637
Technology Center 3700
Before MICHELLE R. OSINSKI, JEREMY M. PLENZLER, and
GEORGE R. HOSKINS, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Peter Mori (Appellant) 1 appeals under 35 U.S.C. § 134(a) from the
Examiner's decision rejecting claims 1-16. An oral hearing was held on
February 14, 2019. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies the real party in interest as Nestec S.A. Appeal Br. 2.
2 The record includes a transcript of the oral hearing ("Tr.").
Appeal2017-006876
Application 13/819,637
THE CLAIMED SUBJECT MATTER
Claims 1 and 16 are independent. Claim 1 is reproduced below.
1. A motorized beverage machine comprising:
an activation member that comprises a motor;
a brewing unit that comprises a first assembly and a
second assembly that cooperate together, each assembly defining
a part of a brewing chamber that is configured to contain an
ingredient capsule;
at least one of the first and second assemblies is a movable
assembly being (i) movable away from the other assembly of the
first and second assemblies into an open position within the
machine to form between the assemblies a passage through
which an ingredient capsule passes during an action selected
from the group consisting of insertion of the ingredient capsule
into the brewing unit, removal of the ingredient capsule from the
brewing unit, and combinations thereof, and (ii) movable to the
other assembly into a closed position to form the brewing
chamber; and
the motor is a low power motor configured to perform an
action selected from the group consisting of generating a
maximum torque of no more than 50 mNm, consuming a
maximum power of no more than 50 W, and combinations
thereof, to drive the movable assembly between the open and
closed positions.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Rolfes
Wilmer
Remo
Konya
Phillips
Takao
US 7,210,401 Bl
US 2010/0083775 Al
US 2010/0095852 Al
US 2010/0216246 Al
JPH0743772 (U)
JP2010519009 (A)
2
May 1, 2007
Apr. 8, 2010
Apr. 22, 2010
Aug.26,2010
Sept. 12, 1995
June 3, 2010
Appeal2017-006876
Application 13/819,637
THE REJECTIONS
I. Claims 1-16 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. Final Act. 2-3.
II. Claims 1-16 stand rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the enablement requirement. Id. at 3--4.
III. Claims 1-16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Rolfes, Wilmer, Konya, Takao, and Phillips. Id.
at 4--9.
IV. Claims 10-14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Rolfes, Wilmer, Konya, Takao, Phillips, and
Remo. Id. at 9.
OPINION
Rejection I
With respect to claims 1 and 16, the Examiner determines that the
recitation that the "motor is a low power motor" renders the claim indefinite
because there is "not definite structure to perform the function," it is unclear
if it is "a gear motor or a servo or low rpm or low consumption," and it is
unclear what the term "low" means. Final Act. 2.
In determining whether a claim is definite under 35 U.S.C. § 112,
second paragraph, "[t]he USPTO, in examining an application, is obliged to
test the claims for reasonable precision." In re Packard, 751 F.3d 1307,
1313 (Fed. Cir. 2014 ). "[A] claim is indefinite when it contains words or
phrases whose meaning is unclear." Id. at 1322 (citing MPEP § 2173.05(e));
see also Ex parte McAward, Appeal 2015-006416, 2017 WL 3669566, at *5
(PTAB Aug. 25, 2017) (precedential) (adopting the approach for assessing
indefiniteness approved by the Federal Circuit in Packard). Claims are not
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read in a vacuum and the decision on whether a claim is indefinite requires a
determination of whether those skilled in the art would have understood
what is claimed when the claim is read in light of the specification. See
Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1350 (Fed. Cir.
2010). During examination of a patent application, a claim is given its
broadest reasonable construction "in light of the specification as it would be
interpreted by one of ordinary skill in the art." In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citation omitted).
In light of the description in claims 1 and 16 that a low power motor is
configured to generate a maximum torque of no more than 50 mNm and/or
consume a maximum power of no more than 50 W (Appeal Br. 25, 27-28
(Claims App.)), which is consistent with the description in the Specification
(Spec. 5:5-8), we determine that the claims define the metes and bounds of a
low power motor with reasonable clarity. See Appeal Br. 19 ("a low power
motor is explicitly defined in the claims"). We thus do not sustain the
rejection of claims 1 and 16 as indefinite on this basis.
The Examiner next determines that the recitation of the phrase
"control unit" in claims 10-14 renders the claim indefinite because it is "not
a term of art and not definite structure" and "[ t ]here is no algorithm or
program[ m Jing [ or circuitry] described for the unit," and the "wherein clause
is directed to an intended result rather than structure." Final Act. 2. The
Examiner also states that the "[ t ]he phrase 'control unit' [ in claim 11]
appears to be a verbal construct for the purposes of this application." Id. To
the extent that the Examiner is suggesting that the claim is indefinite because
it is a means-plus-function limitation without the disclosure of the
corresponding structure, namely, the algorithm, to perform the control unit's
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recited function of being "programmed to control a drive action of the
motor" (Appeal Br. 26 (Claims App.)), we are not persuaded that claims 10-
14 are indefinite on that basis. Appellant explains that the Specification
describes the control unit as a printed circuit board with controller, optional
memory device, and other electronic components; and a control means for
controlling the drive action of the motor. Appeal Br. 20; Spec. 6:34--7:7.
Appellant further responds that the Specification describes the control unit
being configured to compare the variation of actual current consumption to
referential curves 40, 41 and this is done by software. Appeal Br. 20 ( citing
Spec. 16:31-35); Spec. 5:7-30, Fig. 5; see also Spec. 7:22-25 ("[T]he
circumstances under which the assemblies are moved to the open and/or
closed position can be monitored by monitoring the power consumption of
the motor."); id. at 19:8-15 ("When the measure of the current absorption
does match the two above mentioned curves 40, 41, in particular, when the
current consumption significantly exceeds the curve before reaching the
closed position ... a safety input [i.e., reducing, stopping, or reversing the
motor action] can be activated."). The Specification sufficiently describes
the structure, including the algorithm ( albeit in the form of prose) to perform
the control unit's function of controlling the drive action of the motor.
The Examiner indicates that Appellant "has asserted ... that their
recitations are structure and not section 112[(]f[)] language." Final Act. 3.
To the extent that the Examiner is taking the position that "[t]he scope of the
claims is broader than the scope of the specification" and "[ t ]his is pure
functional claiming" (id.), we determine the Specification to sufficiently
describe the structure to perform the control unit's function of controlling
the drive action of the motor as a circuit board with suitable programming as
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described above. We thus do not sustain the rejection of claims 10-14 as
indefinite on this basis.
The Examiner also determines that "[i]n claim 11, 'the measured
parameter' [on] each occasion lacks clear antecedent basis" and queries
whether "the parameter [is] electrical" and"[ w ]hat is an electrical
parameter." Final Act. 2. Despite the purported lack of clear antecedent
basis for "the measured parameter," we view one of ordinary skill in the art
as understanding it to refer to the "electrical parameter" recited as being
measured in the previous clause. Appeal Br. 26 (Claims App.). Appellant
also responds that "[ o ]ne of ordinary skill in the art, reading the entirety of
[ c ]laim 11 in light of the specification, would know that power can be
expressed [as] a function of voltage and current and that '[a]t least one
measured parameter may represent the current consumption of the motor."'
Appeal Br. 21 (quoting Spec. 10:31-32). We agree with Appellant, that the
claims when properly read in light of the Specification, define the metes and
bounds of the invention with reasonable clarity. We do not sustain the
rejection of claim 11 as indefinite on this basis.
With respect to claims 12 and 13, the Examiner determines that the
term "'safety input' is not a definite structure and a construct." Final Act. 2-
3. In light of the description in the Specification that "[t]he safety input may
involve the inversion of the motor action to move the movable assembly into
the open position or reducing or stopping the drive action of the motor"
(Appeal Br. 22 (quoting Spec. 9:20-23)) and the explicit recitation of this as
the safety input in claim 13, we determine that the claim defines the metes
and bounds of a safety input with reasonable certainty. We thus do not
sustain the rejection of claims 12 and 13 as indefinite on this basis.
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The Examiner also queries "[ w ]hat is 'abnormal' in claims 12 [ and]
14 ?" Final Act. 3. Appellant responds that:
The specification discloses that "[ t ]ypically, the vanat10n is
deemed abnormal when the measured parameter: exceeds a
level that is at least 20% above the set reference, in particular 30
or 40% thereabove such as 50% thereabove; and/or corresponds
to a resistance against closure caused by the presence of an
obstacle, in particular a human body part such as a finger,
inbetween the assemblies moving towards the closed position
and prior to reaching thereof, for example a resistance between
the assemblies of the brewing unit in the range from 50 to 200 N,
in particular from 75, 100 or 120 to 130 or 150 N.
Appeal Br. 22 (quoting Spec. 9:1-13). In light of the explicit recitation in
the claims themselves of when a variation is deemed abnormal, as well as
the description in the Specification identified by Appellant, we determine
that the claims define the metes and bounds of an abnormal variation with
reasonable certainty. We thus do not sustain any rejection of claims 12 and
14 as indefinite on this basis.
The Examiner also queries "[ w ]hat is the antecedent basis for 'the
normal evolution' in claim 14?" Final Act. 3. Although we agree that there
is lack of antecedent basis for the term "normal evolution," we do not
determine that the lack of antecedent basis renders the claim so ambiguous
as to be indefinite. As Appellant point outs, the Specification refers to:
[ a referential curve representing] the normal evolution of the
electrical parameter as a function of time corresponding to: a
mode in which the movable assembly is moved into a closed
position with an ingredient capsule inserted in the brewing
chamber (hereinafter the "Capsule closure mode"); and/or a
mode in which the movable assembly is moved into a closed
position with no capsule inserted in the brewing chamber
(hereinafter the "Empty closure mode").
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Appeal Br. 23 (quoting Spec. 9:27-37); Spec. Fig. 5. Accordingly, we do
not sustain any rejection of claim 14 as indefinite on this basis.
The Examiner also queries "[i]n claim 15[,] line 5, what is the
amendment of the term 'the'?" Final Act. 3. We do not see how deleting a
duplicate "the" or changing "such" to "the" when referring to "capsule" in
line 5 (Resp. to Non-Final Office Action and Request for Continued
Examination (RCE) (Feb. 11, 2016)) renders claim 15 indefinite. We do not
sustain any rejection of claim 15 as indefinite on this basis.
Claims 1 and 16 recite, in relevant part, that the motor is configured to
"generat[ e] a maximum torque of no more than 50 mN m" or "consum[ e] a
maximum power of no more than 50 W." Appeal Br. 25, 27-28 (Claims
App.). The Examiner indicates that "[t]he recitations 'no more than' include
zero," such that "[t]he claims are vague and indefinite." Final Act. 3.
Appellant responds that "[ o ]ne of skill in the art would know that a motor
will consume some power and generate some torque and would further
understand that a motor that generated no torque or consumed no power
would not be a motor." Reply Br. 10. We agree with Appellant that one of
ordinary skill in the art would understand the maximum torque generated
cannot be zero mNm and the maximum torque consumed cannot be zero W
because this would correspond only to a motor designed not to be utilized.
We do not sustain any rejection of claims 1 and 16 as indefinite on this
basis.
For these reasons, we do not sustain the rejection of claims 1-16
under 35 U.S.C. § 112, second paragraph, as being indefinite.
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Rejection II
The Examiner rejects claims 1-16 as failing to comply with the
enablement requirement because "[ t ]he claim( s) contain[] subject matter
which was not described in the specification in such a way as to enable one
skilled in the art to which it pertains ... to make and/or use the invention."
Final Act. 3. More particularly, the Examiner determines that the recitation
of the phrases "'configured to'; 'designed to'; 'arranged to'; and
'programmed to' ... are functional language in an apparatus claim and not
structure." Id. at 3--4. The Examiner further determines that "[t]he terms
generating, measure, consuming, comparing, provide, inverting, detecting
etc. are functional/intended use terms and not structure" and "are method
limitations in apparatus claims." Id. at 4. According to the Examiner, "[a]ll
these recitations encompass each and every and all control units and motors"
and "[ a ]n undue amount of experimentation would be necessary" as "[ n Jo
examples are provided," "[ n Jo algorithms are described," and"[ n Jo circuitry
is set forth in the specification." Id. The Examiner maintains that "[a]t
best[,] the specification appears to set forth that the motor is known[,] but
without particularity." Id.
"[T]o be enabling, the specification of a patent must teach those
skilled in the art how to make and use the full scope of the claimed invention
without 'undue experimentation."' In re Wright, 999 F.2d 1557, 1561 (Fed.
Cir. 1993) (quoting In re Vaeck, 947 F.2d 488,495 (Fed. Cir. 1991)). Our
reviewing court has set forth factors to be considered in determining whether
a disclosure satisfies the enablement requirement:
(1) the quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of
working examples, ( 4) the nature of the invention, ( 5) the state
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of the prior art, ( 6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth of
the claims.
In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). The Examiner has
pointed, in particular, to the factors of the quantity of experimentation
necessary, the amount of direction or guidance presented, the presence or
absence of working examples, and the breadth of the claims. Final Act. 3--4.
With respect to the following claim limitations that contain one or
more terms identified by the Examiner as problematic, namely, (i) "a
brewing chamber that is configured to contain an ingredient capsule"; (ii)
"motor configured to ... generat[ e] a maximum torque of no more than 50
mNm, consum[e] a maximum power ofno more than 50 W"; (iii) "a water
supply that is configured to supply heated water to the brewing chamber";
(iv) "the motor being arranged to move the assemblies from the open
position to the closed position to form the brewing chamber to contain the
ingredient capsule"; (v) "motor designed to ... generat[ e] a maximum
torque of no more than 50 mNm, consum[ e] a maximum power of no more
than 50 W" (Appeal Br. 25-28 (Claims App.)), we view a person of ordinary
skill in the art as knowing how to make and use the embodiments that give
rise to the recited structure. That is, the Examiner has not properly taken
into the account the knowledge of one of ordinary skill in the in art in
concluding that the claims are not enabled on the basis of the foregoing
language.
With respect to the following claim limitation that contains terms
identified by the Examiner, namely, "a control unit that is programmed to
control a drive action of the motor"; "is configured to measure at least one
electrical parameter ... , compare to a set reference ... ; and provide to the
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activation member an input resulting from comparing the evolution of the
measured parameter to the set reference"; and "detects the abnormal
variation in comparison to a referential curve representing the normal
evolution of the electrical parameter" or "detect[ s] a variation of the
measured parameter relative to the set reference which is abnormal" (Appeal
Br. 26-27 (Claims App.)), the Specification describes the control unit as "[a]
PCB [printed circuit board] with a controller and optional memory device
and/or other electronic components" Spec. 6:34--7:2. The Specification
further describes that the control unit "includes processor(s), memories and
programs enabling to provide appropriate inputs to and receive outputs from
the different activation means of the machine in particular, the pump, heater
and motor" (id. at 13: 11-15) and "[t]he input for the motor control may
involve the user-interface, the current absorption of the motor and a timer of
the control unit" (id. at 16:4--6). The Specification further describes that the
control unit "is configured for comparing the variation of the actual current
consumption to referential curves 40 and 41 [ representing typical curves for
power consumption and current consumption when there is a capsule in the
closed brewing chamber and when the brewing chamber is empty,
respectively] depending on the relevant mode the brewing unit is engaged
in" and "[s]uch configuration is obtained by software." Id. at 16:31-35. We
view the Specification as adequately disclosing a control unit comprising a
processor, memory, and associated electronic components that is
programmed to perform the algorithm of comparing actual current
consumption input to referential curves, such as those illustrated in Figure 5,
to determine how to drive the motor. The Examiner does not adequately
support the enablement rejection because the Examiner has not properly
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taken into the account the knowledge of one of ordinary skill in the art in
programming the control unit in accordance with the description in the
Specification.
Similarly, the following claim limitation that contains terms identified
by the Examiner, namely, the "power consumption measuring member for
detecting via the measured power consumption a presence of the capsule
between the first and second assemblies," refers to the programmed control
unit that is able to compare actual input of current (related to power) to
referential curves 40, 41 illustrated in Figure 5. See Spec. 16:7-10 ("As
illustrated in Figure 5, two different typical curves 40, 41 can be detected
over time, e.g., by measuring the power consumption of motor 3, for
example by measuring the current consumption of motor 3") and 18:34--19:4
("As illustrated in Fig. 5 by way of Example, the time needed for closing the
assemblies when no capsule is inserted into brewing unit 2, is slightly
shorter, approx. 0.5 sec, than when motor 3 has to overcome additional
forces caused by the presence of a capsule 3. Overall, closure can be
achieved within 2 or 2.5 sec, as illustrated with this particular embodiment
of the invention."). We view the Specification as adequately disclosing a
power consumption measuring member comprising a processor, memory,
and associated electronic components that is programmed to perform the
algorithm of comparing actual current consumption input to referential
curves, such as those illustrated in Figure 5, to detect the presence of a
capsule or not. The Examiner does not adequately support the enablement
rejection because the Examiner has not properly taken into the account the
knowledge of one of ordinary skill in the art in programming the control unit
in accordance with the description in the Specification.
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With respect to the following claim limitation that contains terms
identified by the Examiner, namely, the "safety input comprises inverting
the motor action to move the movable assembly into the open position or
reducing or stopping the drive action of the motor" (Appeal Br. 26-27
(Claims App.)), the Specification describes the same. Spec. 9:21-24. The
Specification also describes that the control means of the control unit can
"provide a safety input to the motor when an abnormal variation of the
measured parameter relative to the set reference is detected." Spec. 11 :34--
36. The Examiner has not properly taken into the account the knowledge of
one of ordinary skill in the art in programming the control unit in accordance
with the description in the Specification so as to adequately support the
enablement rejection.
For the foregoing reasons, we determine the Examiner did not
articulate sufficient findings or analysis to show that a person of ordinary
skill in the art would have been unable to make and use the claimed
invention without undue experimentation. See Wands, 858 F.2d at 737.
Accordingly, we do not sustain the Examiner's rejection of claims 1-16
under 35 U.S.C. § 112, first paragraph, as failing to comply with the
enablement requirement.
Rejection III
The Examiner finds that Rolfes discloses most of the limitations of
independent claims 1 and 16, including, among other things, an activation
member that comprises a motor. Final Act. 4--5, 8-9 (citing Rolfes 6:1-15
(Rolfes disclosing that "[t]he electronic controls sense an increase in power
consumption of the stalled gear motor 66 and shuts off the power.")). The
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Examiner acknowledges, however, that "[ t ]he claim differs in the expressed
motor parameters." Id. at 5.
Appellant acknowledges that "the use of motors that have wattages
and output torque consistent with the claims in the abstract is ... known."
Tr. 5:9--10. Appellant also acknowledges that "a person of ordinary skill in
the particular art would have understood how to select and configure the
motor that is claimed." Id. at 6:4--6. The Examiner finds that "[t]he
advantage [ of a low power motor] is space saving." Ans. 6. The Examiner
also determines that "[t]he torque and power for such motors [i.e., low
power motors] are known result effective variables." Id. The Examiner
reiterates that "[t]he characteristics of the low power motors are result
effective parameters having a recognized result and known since about
1959 ." Id. at 18. For example, the Examiner finds that"[ s ]maller inertia
would have been conventional at the time of the invention" (id.) and that
"[i]nertia and power load for a motor are recognized in the art" (id. at 19).
According to the Examiner, "[s]election based on recognized results and/or
result effective variables is not non obvious." Id. at 18; see also id. at 6 (the
Examiner determining that "[l]ow power motors have particular design
parameters such as power and torque which achieve a recognized result and
would not have been seen to be critical or produce any new or unexpected
results and would have been optimization at the time of the invention. The
workable ranges of these variables is characterized as routine
experimentation if not known in the coffee art by the applied references.").
We have considered Appellant's arguments relating to the teachings
of Wilmer, Konya, Takao, and Phillips (Appeal Br. 9) and whether Wilmer
and Konya are non-analogous art (id. at 10-11 ). We do not find these
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arguments persuasive of reversible error in that we do not rely on the
Examiner's findings with respect to Wilmer, Konya, Takao, and Phillips in
affirming the rejection, but on the Examiner's additional articulated
reasoning for selecting a low power motor in Rolfes (i) in order to save
space and/or (ii) based on the recognized results of smaller inertia and power
load. Ans. 6, 18. Appellant's arguments with respect to Wilmer, Konya,
Takao, and Phillips do not adequately explain why this additional articulated
reasoning lacks rational underpinnings. Appellant's arguments with respect
to Wilmer, Konya, Takao, and Phillips also do not address why the
Examiner's finding that torque and power for low power motors are result-
effective variables that one of ordinary skill in the art would have been led to
optimize (id.) is in error. 3 As such, the Examiner has provided a basis for
the rejection, which is unrebutted.
Appellant contends that "different uses of motors have different
requirements with respect to maximum torque and/or maximum power,"
thus making the substitution of one motor for another not necessarily
obvious. Appeal Br. 10 (citing Declaration Under 37 C.F.R. § 1.132 of Peter
Mori (Feb. 11, 2016) (hereinafter "Deel.")). Appellant contends that "[t]he
specific configuration of the motor provides several advantages when used
in beverage production machines," including simplified construction and
control and smaller inertia, and "[ t ]here is no evidence that the skilled artisan
3 See Tr. 8: 19--9:8 (Appellant acknowledging that the basis for the
Examiner's rejection relating to routine optimization was not addressed in
the briefs); see also In re Antonie, 559 F.2d 618,620 (CCPA 1977)
( supporting a conclusion of obviousness based on optimization of a variable
in cases where it has been shown that the parameter being optimized was
recognized in the art to be a result-effective variable).
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recognized that these advantages would have been obtained by the
modification [of] Rolfes ... as proposed by the Examiner[.]" Id. (italics
omitted).
Although we have considered the Declaration of Peter Mori, and we
have attributed some weight to the Declaration, we ultimately do not find it
to be a persuasive rebuttal to the Examiner's rejection. The Declaration
generally points out the diversity of motors, ranging from small motors
found in electric watches to large motors used for pumped-storage
applications. Deel. ,r,r 4---6. The Declaration also points out that one would
need to consider generally the mechanical power, torque requirements,
available voltage, output speed, operating temperature, size, communication
and control, accuracy, and environmental concerns, for example, when
selecting a motor. Id. ,r 7. Appellant, however, does not point out any
factual evidence in the Declaration regarding any specific concerns/factors
that one of ordinary skill in the art would recognize as needing to be
addressed in Rolfes when selecting a motor or optimizing motor parameters.
Appellant identifies nothing in Mr. Mori' s Declaration that would explain
why, contrary to the Examiner's position, one of ordinary skill in the art
would not have been led to select a low power motor for space saving in
Rolfes's beverage brewer. On this record, the Declaration has not directed
us to evidence to establish that a person of ordinary skill in the art would not
have been led to select a low power motor for Rolfes for space saving and/or
to optimize the motor parameters to achieve the recognized result of smaller
inertia and power load.
For the foregoing reasons, Appellant does not apprise us of error in
the Examiner's conclusion that the combination of Rolfes, Wilmer, Konya,
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Takao, and Phillips renders obvious the subject matter of independent claims
1 and 16. We sustain the rejection of claims 1 and 16 under 35 U.S.C.
§ 103(a) as unpatentable over Rolfes, Wilmer, Konya, Takao, and Phillips.
In addition to relying on the same arguments and reasoning we found
unpersuasive in connection with independent claims 1 and 16, Appellant
purports to present separate arguments as to why dependent claims 2, 3, 10-
14, and 15 are patentable. Appeal Br. 13-15. Such reasoning amounts to a
recitation of the claim elements and a naked assertion that the elements are
not in the prior art. See id. Such statements do not constitute a separate
argument for patentability of claims 2, 3, 10-14, and 15 pursuant to 37
C.F.R. § 4I.37(c)(l)(iv). See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011) (holding that the Board had reasonably interpreted the same language
in the prior rule under 37 C.F.R. § 4I.37(c)(l)(vii) as requiring "more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art."). Accordingly, we sustain the rejection of claims 2,
3, 10-14, and 15 under 35 U.S.C. § 103(a) as unpatentable over Rolfes,
Wilmer, Konya, Takao, and Phillips.
As to dependent claims 4--9, Appellant additionally argues that
"Rolfes discloses ... gears and a motor, but there is nothing in Rolfes to
suggest that the gears and a motor comprise a transmission." Appeal Br. 14
(italics omitted) ( citing Rolfes 5:30-6: 13). The Examiner responds that
"Rolfes teaches a transmission in [F]ig[s.] 11-16[,] col[.] 5---6 as a geared
motor[,] not unlike element 4 transmission means of [A]ppellant." Ans. 20.
The Specification supports that Appellant's disclosed transmission can
comprise "a gear assembly." Spec. 6:8-10. Appellant does not adequately
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Application 13/819,637
explain why Rolfes' s disclosure of gears does not support by a
preponderance of the evidence the Examiner's finding that Rolfes discloses
a transmission.
Accordingly, we sustain the rejection of claims 4--9 under 35 U.S.C.
§ 103(a) as unpatentable over Rolfes, Wilmer, Konya, Takao, and Phillips.
Re} ection IV
In contesting the additional obviousness rejection of dependent claims
10-14, Appellant relies on the same arguments and reasoning we found
unpersuasive in connection with Rejection III. Appeal Br. 16-17.
Accordingly, for the same reasons discussed above in connection with
Rejection III, we also sustain the rejection of claims 10-14 under 35 U.S.C.
§ 103(a) as unpatentable over Rolfes, Wilmer, Konya, Takao, Phillips, and
Remo.
DECISION
The Examiner's decision to reject claims 1-16 under 35 U.S.C. § 112,
second paragraph, as being indefinite is reversed.
The Examiner's decision to reject claims 1-16 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the enablement requirement is
reversed.
The Examiner's decision to reject claims 1-16 under 35 U.S.C.
§ 103(a) as unpatentable over Rolfes, Wilmer, Konya, Takao, and Phillips is
affirmed.
The Examiner's decision to reject claims 10-14 under 35 U.S.C.
§ 103(a) as unpatentable over Rolfes, Wilmer, Konya, Takao, Phillips, and
Remo is affirmed.
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Application 13/819,637
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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