Ex Parte Stephens

Patent Trial and Appeal BoardOct 9, 2012

10874060 (P.T.A.B. Oct. 9, 2012)

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. 10/874,060 06/22/2004 Peter Stephens 488-P-003A 6566 7277 7590 10/10/2012 Miskin & Tsui-Yip LLP 1350 Broadway, Suite 802 NEW YORK, NY 10018 EXAMINER MILLER, BENA B ART UNIT PAPER NUMBER 3725 MAIL DATE DELIVERY MODE 10/10/2012 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 PETER STEPHENS ____________________ Appeal 2010-009444 Application 10/874,060 Technology Center 3700 ____________________ Before: WILLIAM V. SAINDON, JAMES P. CALVE, and SCOTT E. KAMHOLZ, Administrative Patent Judges. KAMHOLZ, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-009444 Application 10/874,060 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-10 and 12-39. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. THE CLAIMED SUBJECT MATTER The claims are directed to devices for levitating a ball. Spec., para. [0002]. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A device comprising: a hollow ball made of paper, said ball having an outer surface, at least one generally semi-circular shaped planar fin extending from said outer surface; and a base comprising means for generating laminar air flow to levitate said ball in mid-air, which imparts non-linear motion to said ball as air strikes said fin. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Park McLain Simon Lemelson Goldfarb Cheng Lin US 2,897,607 US 2,903,817 US 2,911,745 US 3,115,343 US 4,045,906 US 5,314,368 US 6,382,808 B1 Aug. 4, 1959 Sep. 15, 1959 Nov. 10, 1959 Dec. 24, 1963 Sep. 6, 1977 May 24, 1994 May 7, 2002 Appeal 2010-009444 Application 10/874,060 3 REJECTIONS Appellant seeks our review of the following rejections: Rejection 1: Claims 1-5, 9, 21-23, 30, 34, 35, and 38 under 35 U.S.C. § 103(a) for unpatentability over Park. Ans. 3-5. Rejection 2: Claims 1-5, 7, 9, 16-18, 21-23, 34, 35, and 38 under 35 U.S.C. § 103(a) for unpatentability over Cheng. Ans. 5-7. Rejection 3: Claim 6 under 35 U.S.C. § 103(a) for unpatentability over Park or Cheng, either in view of Goldfarb. Ans. 7. Rejection 4: Claims 1, 2, 4, 5, 8, 9, and 35 under 35 U.S.C. § 103(a) for unpatentability over McLain in view of either Park or Cheng. Ans. 8-9. Rejection 5: Claims 12-15, 24, 26-29, 31-33, 36, 37, and 39 under 35 U.S.C. § 103(a) for unpatentability over Park or Cheng, either in view of Lin. Ans. 9. Rejection 6: Claim 10 under 35 U.S.C. § 103(a) for unpatentability over Park or Cheng, either in view of Simon. Ans. 9-10. Rejection 7: Claim 10 under 35 U.S.C. § 103(a) for unpatentability over McLain in view of Simon. Ans. 10. Rejection 8: Claims 19 and 20 under 35 U.S.C. § 103(a) for unpatentability over Cheng in view of Lemelson. Ans. 10-11. Rejection 9: Claim 25 under 35 U.S.C. § 103(a) for unpatentability over Park or Cheng, either in view of Goldfarb, and either in further view of Lin. Ans. 11. ANALYSIS 1. Rejection 1 (obviousness over Park) Appellant argues claims 1-5, 9, 21-23, 30, 34, 35, and 38 as a group; we select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Appeal 2010-009444 Application 10/874,060 4 The Examiner found that Park discloses all limitations of claim 1 except that the ball is made of paper, and that it would have been obvious to make the ball from paper because Park discloses that the ball is of a lightweight material. Ans. 4. Appellant argues that Park fails to disclose (a) “laminar air flow” and (b) “at least one generally semi-circular shaped planar fin.” App. Br. 18-21, 37-38. We consider each of these arguments in turn. (a) “Laminar air flow” Appellant identifies “means for generating laminar air flow to levitate said ball in mid-air, which imparts non-linear motion to said ball as air strikes said fin” as a means-plus-function limitation in claim 1. App. Br. 8. Appellant cites Specification, page 4, line 13 to page 5, line 8, especially page 5, lines 4-6, and Figure 1, elements 9 and 10 as the structure, material, or acts corresponding to the claimed function. Id. Appellant expressly confirms that “means for generating laminar air flow to levitate said ball in mid-air, which imparts non-linear motion to said ball as air strikes said fin” corresponds to laminar flow duct 9 and laminar flow baffles 10. Reply Br. 5. The Examiner found that Park’s elements 75, 76, and 78 or 48 meet this limitation because these structures “act as a baffle to direct the air in a smooth orderly movement, i.e., ‘laminar air flow.’ ” Ans. 4. Appellant does not challenge the Examiner’s finding that Park’s elements 75, 76, and 78 or 48 meet the recited means; rather, Appellant argues that Park does not disclose “laminar air flow” because the airflow lines in Park’s Figure 10 “show that the airflow is turbulent” and that the turbulence is “a consequence of the multitude of air holes 85 that perforate Appeal 2010-009444 Application 10/874,060 5 the globe of Park (extending radially and divergently outward from the concave outer shell of the globe.” App. Br. 19; Decl. of P. Stephens 4. The Examiner finds in response that Park imparts laminar flow to the satellite as air leaves apertures 85 and that the airflow lines in Park’s Figure 10 are similar to those in Appellant’s Figure 1, from which the natural inference is that Park’s air flow is similarly laminar. Ans. 11-12. Appellant argues in reply that comparison of Park’s Figure 10 with Appellant’s Figure 1 makes it “clear” that “comparable lines are not similar” and that the air flow passing through apertures 85 is divergent. Reply Br. 4-5. We find Appellant’s arguments unconvincing. A means-plus-function element is met by a prior-art reference when that reference discloses the corresponding structure or equivalents thereof that are capable of performing the recited function. Here, the Examiner found that Park’s elements 75, 76, and 78 or 48 correspond to the Appellant’s disclosed structure or are equivalent structure capable of generating laminar air flow. Appellant challenges the Examiner’s conclusion that Park’s structure is capable of the recited function. We agree with the Examiner that Park’s elements 75, 76, and 78 or 48 act as a laminar flow duct and laminar flow baffles that correspond to the recited means. We further agree with the Examiner that it is fair to infer from the similarity between the air flow lines in Park and those in Appellant’s Figure 1 that the structures of the two devices function in the same way, i.e., that Park’s air flow is of a laminar nature similar to Appellant’s. Contrary to Appellant’s assertion, we see no indication in Park’s Figure 10 that air passing through any of apertures 85 is divergent. Further, the only divergence apparent in Park’s Figure 10 is that of the air as it passes around satellite 93. Appeal 2010-009444 Application 10/874,060 6 Appellant’s Figure 1 shows the same divergence around ball 2.1 Appellant unequivocally states that the air flow provided to ball 2 is laminar, e.g., Spec. para. [0023]. It was not unreasonable for the Examiner to infer that Park, with its similar pattern of flow lines, also provides laminar air flow to its satellite.2 (b) “At least one generally semi-circular shaped planar fin” The Examiner found that Park’s element 97 meets the recited “at least one generally semi-circular shaped planar fin.” Ans. 4. Appellant argues that “Park does not disclose a ‘generally semi-circular shaped planar fin’ as can be best seen in Figs. 12, 13, and 14. The fins 97 and the fins 97a are not ‘generally semi-circular shaped planar.’ ” App. Br. 21, 38. The Examiner reiterates the finding in response. Ans. 12. Appellant replies that “each of the cited patents teach a curved, three dimensional fin -- a teaching directly contrary to the recitations of the claims.” Reply Br. 12. We find Appellant’s arguments unconvincing. On appeal, Appellant must identify an error in the Examiner’s rejection. The argument presented in the Appeal Brief does little more than simply dispute the Examiner’s finding without explaining why the Examiner’s finding is in error. Merely disputing the Examiner’s finding does not constitute an identification of error. The argument presented in the Reply Brief is contradicted by Park’s Figure 14 and the relevant passage from Park’s specification at column 4, 1 The divergent flow lines shown in Appellant’s Figure 1 were omitted from the portion of this figure reproduced at Reply Brief 4. 2 Appellant also argues that Park’s satellite is maintained in position by magnetic attraction and the air flow. App. Br. 19-20. We fail to see in this argument any relevance to the rejection. Appeal 2010-009444 Application 10/874,060 7 lines 5-9 (“in Figure 14, … the ball 95a … includes … a plurality of fins 97a…. the fins are substantially straight”). For these reasons, Appellant has not identified error in the rejection. 2. Rejection 2 (obviousness over Cheng) The Examiner finds, inter alia, that Cheng discloses that the ball may have curved wings which would inherently have a semi-circular shape because the wings would include a planar portion that would attach to “curvature shape” of ball 12. Ans. 6. Appellant argues in response that Cheng does not include a drawing of the wings and is entirely silent as to the shape of the wings, so that a semi-circular wing shape is not inherent in Cheng. App. Br. 26-27, 38-39. The Examiner maintains that Cheng’s wings would inherently have a semi-circular shape. Ans. 13. We cannot sustain the rejection, because the Examiner has not adequately explained why Cheng’s wings are inherently semi-circular. A rejection based on inherency must be supported with evidence or reasoning tending to show that the undisclosed feature is necessarily present in the reference. The Examiner has not established that Cheng’s curved wing is necessarily semi-circular in shape simply because it would attach to a “curvature shape” of ball 12. We therefore perceive no basis for the Examiner’s finding of inherency. 3. Rejection 3 (obviousness over Park or Cheng, in view of Goldfarb) Appellant’s arguments concerning this rejection are the same as those for Rejections 1 and 2. App. Br. 40. Appellant has not identified error in the rejection with respect to Park, for reasons similar to those given above with respect to Rejection 1. We cannot sustain the rejection with respect to Cheng for reasons similar to those given above with respect to Rejection 2. Appeal 2010-009444 Application 10/874,060 8 Appellant’s arguments concerning Goldfarb’s failure to disclose “laminar air flow” or “at least one generally semi-circular shaped planar fin” are non- responsive to the rejection, because the Examiner did not rely on Goldfarb for those teachings. 4. Rejection 4 (obviousness over McLain in view of Park or Cheng) Appellant argues claims 1, 2, 4, 5, 8, 9, and 35 as a group; we select claim 1 as representative. The Examiner found that McLain discloses all elements of claim 1 (including that the “means for generating laminar air flow” is met by McLain’s elements 29 and 30) except that the ball is made of paper and includes at least one generally semi-circular shaped planar fin. Ans. 8. The Examiner further found that it would have been obvious to make the ball from paper in view of Park’s disclosure that its satellite is made of a lightweight material, and that it would have been obvious to provide the ball with fins in view of Park’s disclosure that fins provide rotative movement. Ans. 4-5. Appellant argues that McLain fails to disclose (a) “laminar air flow” and (b) “at least one generally semi-circular shaped planar fin.” App. Br. 29-30, 41. We consider each of these arguments in turn. (a) “Laminar air flow” Appellant argues that McLain does not disclose “laminar air flow” because its configuration “in which air passes through a pair of vertically inwardly tapered restricting nozzles” has the result that “air flow, upon exiting the nozzles, expands and is not laminar air flow.” App. Br. 29, 41. The Examiner explains in response that McLain teaches that the air discharged will “[‘]strike or impinge the object in a direct line with the center of the object.’ ” Ans. 14 (quoting McLain, col. 2, ll. 59-63). Appeal 2010-009444 Application 10/874,060 9 We find Appellant’s argument unconvincing. We agree with the Examiner that the combination of McLain’s nozzles 29 and 30 meet the laminar flow duct and laminar flow baffles that correspond to the claimed “means for generating laminar air flow.” We further agree that McLain’s nozzles 29 and 30 function in the same way as the recited means. Appellant has stressed throughout the briefing of this Appeal that laminar air flow is characterized by parallel lines of flow. McLain’s Figure 2 shows parallel lines of flow. Appellant’s assertion that air emerging from tapering nozzles will expand and be non-laminar is unsupported by objective evidence of record and appears to contradict the plain meaning of McLain’s Figure 2 and the passage from McLain’s specification that the Examiner cited. To the extent that Appellant argues that slanted walls, such as the walls of element 30 in McLain, create non-laminar flow, we find that argument unconvincing in view of Appellant’s own Figure 1, in which the slanted walls of element 30 do not disturb laminar flow 11. (b) “At least one generally semi-circular shaped planar fin” Appellant’s argument that McLain does not teach this feature is non- responsive to the rejection, because the Examiner did not rely on McLain for this teaching. Appellant has not identified error in the Examiner’s finding that Park discloses this limitation, for reasons given supra at 6. For these reasons, Appellant has not convinced us that the Examiner erred in making this rejection. 5. Rejection 5 (obviousness over Park or Cheng, in view of Lin) Appellant argues claims 12-15, 24, 26-29, 31-33, 36, 37, and 39 as a group; we select claim 26 as representative. Appeal 2010-009444 Application 10/874,060 10 Appellant’s arguments concerning this rejection are the same as those for Rejections 1 and 2. App. Br. 42. Appellant has not identified error in the Examiner’s rejection with respect to Park, for reasons similar to those given above with respect to Rejection 1. We cannot sustain the rejection with respect to Cheng for reasons similar to those given above with respect to Rejection 2. Appellant’s arguments concerning Lin’s failure to disclose “laminar air flow” or “at least one generally semi-circular shaped planar fin” are non-responsive to the rejection, because the Examiner did not rely on Lin for those teachings. 6. Rejection 6 (obviousness over Park or Cheng, in view of Simon) Appellant’s arguments concerning this rejection are similar to those for Rejections 1 and 2. App. Br. 43. Appellant has not identified error in the Examiner’s rejection with respect to Park, for reasons similar to those given above with respect to Rejection 1. We cannot sustain the rejection with respect to Cheng for reasons similar to those given above with respect to Rejection 2. 7. Rejection 7 (obviousness over McLain in view of Simon) Appellant’s arguments concerning this rejection are similar to those for Rejection 4. App. Br. 44. Appellant has not identified error in the Examiner’s rejection with respect to McLain, for reasons similar to those given above with respect to Rejection 4. Appellant as not argued why it would not have been obvious to modify McLain to employ Simon’s balloon as the ball. Appellant’s arguments with respect to Cheng (App. Br. 44-45) are irrelevant to this rejection. Appeal 2010-009444 Application 10/874,060 11 8. Rejection 8 (obviousness over Cheng in view of Lin) We cannot sustain this rejection for reasons similar to those given above with respect to Rejection 2. The Examiner has not established that Cheng inherently discloses “at least one generally semi-circular shaped planar fin.” Lin does not remedy this deficiency. 9. Rejection 9 (obviousness over Park or Cheng, in view of Goldfarb and Lin) Appellant’s arguments concerning this rejection are similar to those for Rejections 1 and 2. App. Br. 40. Appellant has not identified error in the Examiner’s rejection with respect to Park, for reasons similar to those given above with respect to Rejection 1. We cannot sustain the rejection with respect to Cheng for reasons similar to those given above with respect to Rejection 2. Appellant’s arguments concerning Goldfarb’s and Lin’s failure to disclose “laminar air flow” or “at least one generally semi-circular shaped planar fin” are non-responsive to the rejection, because the Examiner did not rely on Goldfarb or Lin for those teachings. DECISION The rejection of claims 1-5, 9, 21-23, 30, 34, 35, and 38 under 35 U.S.C. § 103(a) for unpatentability over Park is AFFIRMED. The rejection of claims 1-5, 7, 9, 16-18, 21-23, 34, 35, and 38 under 35 U.S.C. § 103(a) for unpatentability over Cheng is REVERSED. The rejection of claim 6 under 35 U.S.C. § 103(a) for unpatentability over Park or Cheng, either in view of Goldfarb is AFFIRMED as to Park and REVERSED as to Cheng. Appeal 2010-009444 Application 10/874,060 12 The rejection of claims 1, 2, 4, 5, 8, 9, and 35 under 35 U.S.C. § 103(a) for unpatentability over McLain in view of either Park or Cheng is AFFIRMED as to Park and REVERSED as to Cheng. The rejection of claims 12-15, 24, 26-29, 31-33, 36, 37, and 39 under 35 U.S.C. § 103(a) for unpatentability over Park or Cheng, either in view of Lin is AFFIRMED as to Park and REVERSED as to Cheng. The rejection of claim 10 under 35 U.S.C. § 103(a) for unpatentability over Park or Cheng, either in view of Simon is AFFIRMED as to Park and REVERSED as to Cheng. The rejection of claim 10 under 35 U.S.C. § 103(a) for unpatentability over McLain in view of Simon is AFFIRMED. The rejection of claims 19 and 20 under 35 U.S.C. § 103(a) for unpatentability over Cheng in view of Lemelson is REVERSED. The rejection of claim 25 under 35 U.S.C. § 103(a) for unpatentability over Park or Cheng, either in view of Goldfarb, and either in further view of Lin is AFFIRMED as to Park and REVERSED as to Cheng. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART hh