Ex Parte Tien et al

Patent Trial and Appeal BoardApr 5, 2016

12525796 (P.T.A.B. Apr. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/525,796 10/28/2009 60951 7590 04/07/2016 WPAT, PC INTELLECTUAL PROPERTY ATTORNEYS 2301 Dupont Dr. Suite 510 Irvine, CA 92612 FIRST NAMED INVENTOR Linsheng Walter Tien 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. 23107-001 1469 EXAMINER SORKIN, DAVID L ART UNIT PAPER NUMBER 1774 NOTIFICATION DATE DELIVERY MODE 04/07/2016 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): inbox@wpatca.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LINS HENG WALTER TIEN, NICK J. MANE SIS, and GENE H. HUANG Appeal2014-008656 Application 12/525,796 Technology Center 1700 Before TERRY J. OWENS, JEFFREY T. SMITH, and A VEL YN M. ROSS, Administrative Patent Judges. ROSS, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants2 appeal under 35 U.S.C. Â§ 134 from a rejection of claims 1, 5, 7-9, 12-14, and 16. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 In our opinion below, we refer to the, the Final Office Action appealed from, filed September 10, 2013 (Final Act.),, the Appeal Brief filed March 10, 2014 (Appeal Br.), the Examiner's Answer filed June 9, 2014 (Ans.), and the Reply Brief filed August 6, 2014 (Reply Br.). 2 Appellants identify the real party in interest as the co-inventors Linsheng Walter Tein, Nick Manesis, and Gene Huang. Appeal2014-008656 Application 12/525,796 STATEMENT OF CASE The claims are directed to magnetic stirring systems "that have more efficient mixing and reduce or prevent 'spin out' of magnetic stirring elements." Spec. 2. "[T]he present magnetic stirring devices provide improved stirring efficiency and improved stability of magnetic stirring elements by improving the magnetic field coverage and/ or the magnetic field/strength compared to existing magnetic stirring elements/systems [and] .... stirring efficiency is improved by having improved torque in the contemplated stirring plate and/ or stirring element." Id. at 3. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A magnetic stirrer system, comprising: a container; a magnetic stirring element adapted to be disposed within the container, wherein the stirring element is free from rotatable attachment to the container; a housing; an electric motor disposed within the housing; a container-contacting surface coupled to the housing, wherein the surface is capable of supporting the container comprising a composition therein; and at least two actuatable driver magnets adapted to drive the magnetic stirring element and are disposed within the housing and coupled to the electric motor such that the electric motor is adapted to continuously spin the at least two actuatable driver magnets about a vertical rotational axis, and the at least two driver magnets are spaced apart from, and positioned below, the container-contacting surface; wherein each of the at least two driver magnets have a direction of magnetism that parallel with the vertical rotation axis; wherein a first driver magnet of the at least two driver magnets has a south pole disposed above a north pole, and a second driver magnet of the at least two driver magnets has a south pole disposed below a north pole; 2 Appeal2014-008656 Application 12/525,796 wherein the first driver magnet 1s disposed directly adjacent to the second driver magnet; wherein the at least two actuatable driver magnets have terminal ends distal from the vertical rotation axis such that during rotation, the terminal ends define a periphery of an imaginary rotation circle on the container-contacting surface, and the rotation circle having the vertical rotation axis as its center, and the circle comprises an area, a radius, and a diameter; wherein the at least two actuatable driver magnets, when at rest and not rotating, and not affected by other magnets outside of the housing, produces a magnetic field having field lines penetrating through at least part of the imaginary rotation circle in a direction substantially perpendicular to a plane of the rotation circle; wherein the area of rotation circle penetrated by field lines in a direction substantially perpendicular to the plane, while the at least two driver magnets are at rest, is defined as magnetic field coverage area; wherein the area of rotation circle not penetrated by field lines in a direction substantially perpendicular to the plane, while the at least two driver magnets are at rest, is defined as void space; and wherein the magnetic field coverage area is equal to or more than 50% of the rotation circle area. Amendment filed August 23, 2013. 3 REJECTIONS The Examiner made the following rejections: A. Claims 1, 5, 7-9, 12-14, and 16 stand rejected under 35 U.S.C Â§ 112 first paragraph as failing to comply with the written description requirement. Final Act. 2. 3 The claims recited by Appellants in the Claims Appendix to the Appeal Brief have not been entered. The claims on appeal appear in the Amendment filed August 23, 2013. 3 Appeal2014-008656 Application 12/525,796 B. Claims 1, 5, 7-9, 12-14, and 16 stand rejected under 35 U.S.C Â§ 103(a) as being unpatentable over Karkos et al. 4 in view of Rosinger5. Id. at 4. Appellant provides no substantive argument as to the separate patentability of claims 5, 7-9, 12-14, and 16------depending from claim 1- therefore, we focus our discussion below on the rejections of pending claim 1 to resolve the issues on appeal. See Appeal Br. 4--7. OPINION Rejection A - Written Description The Examiner rejects claims 1, 5, 7-9, 12-14, and 16 as failing to comply with the written description requirement. Final Act. 2. Specifically, the Examiner finds that the limitations of pending claim 1, i.e., "'the stirring element is free from rotatable attachment to the container' is considered new matter" and "[t]he concept of 'rotatable attachment to the container' is not a concept described in the originally filed application." Id. Appellants counter by arguing for un-entered claim 1 and explaining that "the un-entered claim amendment submitted after final has addressed this issue by redefining the stirring element being independent of a free from fixation to the container." Appeal Br. 7. Appellants in the Reply Brief present arguments addressing the proper claims on appeal. Reply Br. 4--5. All arguments not specifically and timely raised in the principal Appeal Brief are considered waived absent a showing of good cause. In re Hyatt, 211F.3d1367, 1373 (Fed. Cir. 2000) (noting that an argument not 4 Karkos, Jr. et al., US 6,095,667, issued August 1, 2000 (hereinafter "Karkos"). 5 Rosinger, US 2,350,534, issued June 6, 1944 (hereinafter "Rosinger"). 4 Appeal2014-008656 Application 12/525,796 first raised in the brief to the Board is waived on appeal); E'x parte Nakashima, 93 USPQ2d 1834 (BPAI 2010) (informative) (explaining that arguments and evidence not timely presented in the principal Brief will not be considered when filed in a Reply Brief, absent a showing of good cause explaining why the argument could not have been presented in the Principal Brief); Exparte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative) ("Properly interpreted, the Rules do not require the Board to take up a belated argument that has not been addressed by the Examiner, absent a showing of good cause."); 37 C.F.R. Â§ 41.41(b)(2). Appellants' arguments in the Appeal Brief are directed to the un- entered amendment. Appeal Br. 7. Appellants presents arguments directed to the proper claims on appeal for the first time in the Reply Brief. Appellants have failed to identify good cause for presenting these arguments in the Reply Brief. Because these arguments are untimely, we will not reach arguments presented for the first time in a reply brief in the absence of good cause. 37 C.F.R. Â§ 41.41(b)(2). Accordingly, we find no reversible error in the Examiner's rejection of claims 1, 5, 7-9, 12-14, and 16 as failing to comply with the written description requirement. Rejection B - Obviousness The Examiner rejects claims 1, 5, 7-9, 12-14, and 16 as obvious in light of the combination of Karkos in view of Rosinger. Final Act. 3. The Examiner finds that Karkos teaches all limitations of the pending claims except that "the magnetic stirring element of Karkos is rotatably attached to the container" as opposed to being "free from fixation to the container." Id. (emphasis added). But, the Examiner finds that Rosinger supplies this 5 Appeal2014-008656 Application 12/525,796 missing feature as Rosinger "explains the 'main novelty of my operating device is, that the operating element inside the container or the like, is free to move and not connected to any other part or element, as a rule, and will have no mechanical construction to support or guide it."' Id. 3--4. The Examiner also concludes that one skilled in the art would have reason to combine Karkos and Rosinger to "achieve the advantage of automatic alignment" taught by Rosinger. Id. at 4. Appellants argue the elements "the stirring element is independent of and free from fixation to the container" and "wherein the first driver magnet is disposed directly adjacent to the second driver magnet" are not found in Karkos as modified by Rosinger. Appeal Br. 4. Appellants also argue that the combination of Karkos and Rosinger "would have rendered Karkos unsatisfactory as an ice/frozen drinks blender, and would have changed its principle of operation" because the free impeller will misalign. Id. In response, the Examiner notes with respect to Appellants' first argument, that the disputed language "the stirring element is independent of and free from fixation to the container," does not appear in pending claim 1 and the limitation "wherein the first driver magnet is disposed directly adjacent to the second driver magnet" is clearly present in Figure 6 of Karkos. Ans. 4--5. Further, the Examiner criticizes Appellants' reading of Karkos' purpose as a juicer, to blend frozen drinks and/or process food as too narrow. The Examiner finds that Karkos is "related to "a magnetic drive to transmit rotational motion from a motive source into an enclosed space without direct mechanical connection." Id. at 5 (emphasis added). Appellants do not respond to the Examiner's arguments regarding the presence in Karkos of the limitation "wherein the first driver magnet is 6 Appeal2014-008656 Application 12/525,796 disposed directly adjacent to the second driver magnet." Reply Br. 6-7. Instead, Appellants press that there is no reason to combine the Karkos device with free-moving stirring element of Ro singer as one skilled in the art "would [not] perceive any advantage of having a free-resting blade in the kitchen blender, because it simply would not work as intended to blend ice, fruit, and vegetable" because "a common mixing bar would easily lose its alignment if there are large solid particles (ice, fruit, vegetable) in the beaker." Id. at 7. The first question is whether Appellants have identified a reversible error in the Examiner's finding that the limitations of claim 1 are taught or suggested by the combination of Karkos in view of Rosinger. Appellants have not persuaded us of reversible error. The test for obviousness is not whether the claimed invention is expressly suggested in any one or all of the references, but 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). One of ordinary skill can use his or her ordinary skill, creativity, and common sense to make the necessary adjustments and further modifications to result in a properly functioning device. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) ("a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ"). Furthermore, "if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill." See id. at 41 7. 7 Appeal2014-008656 Application 12/525,796 For the reasons expressed by the Examiner (Final 3--4 and Ans. 4--5), we find that one of skill in the art would have understood the combined teachings of Karkos and Rosinger to teach or suggest the system of appealed claim 1. Appellants offer little to rebut the Examiner's findings---only that "the stirring element is independent of and free from fixation to the container" and "wherein the first driver magnet is disposed directly adjacent to the second driver magnet" are missing from the recited combination. Appeal Br. 4. The first purportedly missing limitation is not present in pending claim 1, and the second, as the Examiner finds, is present in Karkos. See Karkos Fig. 6; Ans. 4--5. Appellants do not dispute these findings. The second question is whether Appellants have identified a reversible error in the Examiner's determination that the proposed combination of Karkos and Rosinger does not change Karkos' principle of operation. Having evaluated the evidence of record, we find no reversible error in the Examiner's position. Combinations of prior art that change the "basic principles under which the [prior art] was designed to operate" may not support a conclusion of obviousness. In re Ratti, 270 F.2d 810, 813 (CCPA 1959). However, "[i]t is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements." In re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012) (citing In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en bane) (further citations omitted). As to Appellants' contention that the combination of Karkos and Rosinger changes Karkos' principle of operation, we disagree for the reasons set forth by the Examiner. Appellants reason that "if the entire assembly of 8 Appeal2014-008656 Application 12/525,796 the drive plate and impeller were free from attachment to the container, the impeller would encounter resistance from the load of ingredients, polarities of the drive magnet and drive plate would fail to align, and thus, would fail achieve its intended purpose as a food blender." Id. at 6. Therefore, according to Appellants, "the assembly of the impeller being rotatably mounted to the container is essential to achieving the intended purpose of the Karkos reference as a food blender." Id. Appellants fail to consider the sum of the teachings in both Karkos and Rosinger. Rosinger expressly teaches a stirring and mixing device "in which the stirrer proper will be represented by an element free of movement and preferably unconnected, but which will react to magnetic forces." Ro singer 1, 11. 1-10. Also taught is the use of the claimed stirring and mixing device "for various operations besides stirring or mixing, like grinding, pulverizing, etc .... " Id. at 11. 19- 21. (emphasis added). Ro singer further explains that: [ m ]y novel magnetic operating element may be shaped according to duty to be performed by it, and, as has been indicated, it may be used not only for stirring or mixing but also for grinding and other appropriate operations, and it may be made in larger or more powerful units for actual industrial work, and not only for laboratory purposes. Id. at 2, 11. 5-12. Thus, Rosinger teaches a freely-moving magnetic operating element useful (not only for laboratory operations but,) for large scale industrial work and more powerful applications that involve grinding and pulverizing. Given the above teachings, we concur with the Examiner that the skilled artisan, reading the collective teachings of Karkos and Rosinger, would have been led to modify the magnetic stirring system of Karkos to utilize the freely-moving magnetic operating element of Rosinger in light of 9 Appeal2014-008656 Application 12/525,796 the advantages of automatic alignment. See KSR, 550 U.S. at 417 ("[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill."). CONCLUSION The Examiner did not reversibly err in rejecting claims 1, 5, 7-9, 12- 14, and 16, under 35 U.S.C Â§ 112, i-f 1, as failing to satisfy the written description requirement. The Examiner did not reversibly err in rejecting claims 1, 5, 7-9, 12- 14, and 16, under 35 U.S.C Â§103(a), as being unpatentable over Karkos in view of Rosinger. DECISION For the above reasons, the Examiner's rejection of claims 1, 5, 7-9, 12-14, and 16 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv) (2009). AFFIRMED 10