Ex Parte Tomlinson

Patent Trial and Appeal BoardMar 4, 2019

15061849 (P.T.A.B. Mar. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 15/061,849 03/04/2016 65552 7590 HARVEYS. KAUGET Burr & Forman, LLP 201 North Franklin Street SUITE 3200 TAMPA, FL 33602 03/06/2019 FIRST NAMED INVENTOR Michael Tomlinson 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. 0026093. 0000004 4153 EXAMINER BUECHNER,PATRICKM ART UNIT PAPER NUMBER 3754 NOTIFICATION DATE DELIVERY MODE 03/06/2019 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): HKAUGET@BURR.COM rcorbett@burr.com ccook@burr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL TOMLINSON Appeal2018-004703 Application 15/061,849 Technology Center 3700 Before WILLIAM A. CAPP, LEE L. STEPINA, and ALYSSA A. FINAMORE, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. Â§ 134(a) of the final rejection of claims 1---6 as unpatentable under 35 U.S.C. Â§ 103 over Riis (US 5,242,092, iss. Sept. 7, 1993), Butruille (US 2007/0257224 Al, pub. Nov. 8, 2007), and Dancy (US 3,640,276, iss. Feb. 8, 1972). We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. 1 Micro Matic USA, Inc., is the Applicant and real party in interest. Appeal Br. 3. Appeal2018-004703 Application 15/061,849 THE INVENTION Appellant's invention relates to liquid dispensing containers. Spec. ,r 2. 2 Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. An apparatus for dispensing a liquid from a container, the apparatus comprising: a valve that controls flow of the liquid through an opening in the container; and a downtube disposed in the liquid in the container, and coupled to the valve; wherein the downtube is configured to accommodate flow of the liquid and pass the liquid to the valve; and wherein the downtube is made of an electrically conductive plastic material. OPINION Unpatentability of Claims 1-6 over Riis, Butruille, and Dancy Appellant argues claims 1-6 as a group. Appeal Br. 9-14. We select claim 1 as representative. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). Claim 1 The Examiner finds that Riis discloses all of the elements of claim 1 except for the downtube being made of an electrically conductive plastic material. Final Action 2-3. The Examiner relies on Butruille as disclosing electrically conductive plastic valve components. Id. at 3. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time of the invention to make the valve of Riis with electrically conductive plastic material, as taught by Butruille. Id. According to the 2 Citations to Appellant's Specification are to the Substitute Specification filed April 13, 2016. 2 Appeal2018-004703 Application 15/061,849 Examiner, a person of ordinary skill in the art would have done this to dissipate the buildup of static charge when storing and transporting combustible liquids. 3 Id. The Examiner further finds that Dancy teaches the use of plastic tubing that is impregnated with conductive material to pass electrical static charges to ground. Id. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time the invention was made to make Riis' downtube out of an electrically conductive plastic material as taught by Dancy. Id. The Examiner's rationale is that Butruille and Dancy recognize the same problem, namely, dissipating electrical discharge to prevent explosions. Id. Butruille incorporates electrically conductive plastic material into fluid container valve components. Id. Dancy incorporates electrically conductive plastic material into fluid conduits. Id. The Examiner reasons that it would it have been obvious, in view of the teachings of Dancy, to incorporate electrically conductive plastic material into a downtube, to achieve a similar purpose as with Butruille' s valve. 4 Id. In traverse, Appellant first argues that Dancy is non-analogous art. Appeal Br. 2---6. Appellant argues that Dancy transports air from a hospital's air supply. Appeal Br. 4. Appellant differentiates between tubing that transports gaseous fluids and tubing that transports liquids. Id. "The Examiner cannot remove the tubing 104 from the context of Dancy to contend that ... the tubing could theoretically be used to transport a liquid." 3 Appellant's claim 4 contains a limitation directed to a valve made of electrically conductive plastic material. Claims App. 4 See note 3 supra. 3 Appeal2018-004703 Application 15/061,849 Id. Appellant concludes that Dancy is not from the same field of endeavor as the claimed invention. Id. at 5. Appellant also argues that Dancy is not reasonably pertinent to the problem facing the inventor. Appeal Br. 5---6. Appellant argues that Dancy is directed to an adjustable automatic pressure regulating system for intravenous and intra-arterial injections. Id. at 6. "A reference seeking to control the pressure used for blood transfusions is not reasonably pertinent to the problem of dissipating static charge in a container that holds flammable liquids." Id. 5 In response, the Examiner states that Dancy is analogous art by reason of being either: (1) in the same field of endeavor; or (2) reasonably pertinent to the particular problem to which Appellant is concerned. Ans. 5. The Examiner considers the similarity in structure and function of Dancy to place it within the same field of endeavor as Appellant's invention. Id. at 6 ("both are tubes that transmit fluids, while preventing arcing and/or explosions"). Further, the Examiner notes that, since Dancy's tube is impregnated with conducting material to pass electrical static charges to ground, Dancy addresses "exactly the same problem" with which Appellant is concerned. 5 Appellant also argues that the prior art fails to disclose "all" of the claimed elements. Appeal Br. 9. This argument is without merit and ignores the fact that the Examiner's rejection is based on a combination of references that, together, teach all of the claim elements. In particular, Appellant's argument that the Examiner does not contend that it would have been obvious to modify riser pipe 8 of Riis to be made from the electrically conductive plastic material (Appeal Br. 10) overlooks the plain language of the rejection. Final Action 3 ("[I]t would have been obvious ... to construct the down tube (riser pipe 8) of Riis from electrically conductive plastic, as taught by Dancy."). 4 Appeal2018-004703 Application 15/061,849 In reply, Appellant argues that, because Appellant's invention transports liquid and Dancy transports air, the two are not functionally similar for purposes of an analogous art analysis. Reply Br. 3. A reference qualifies as prior art for an obviousness determination when it is analogous to the claimed invention. Innovention Toys, LLC. v. MGA Ent., Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011). Two separate tests define the scope of analogous 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 reasonably pertinent to the particular problem with which the inventor is involved. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). The "field of endeavor" test asks if the structure and function of the prior art is such that it would be considered by a person of ordinary skill in the art because of similarity to the structure and function of the claimed invention as disclosed in the application. Id. at 1325-26. "A reference is reasonably pertinent if ... it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering his problem." In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). "If a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection." Id. Whether a prior art reference is "analogous" is a question of fact. Id. at 658. Appellant has the better argument with respect to the field of endeavor test. Although there is similarity in the structure and function of Dancy' s conduit vis-a-vis Appellant's downtube. This similarity relates to an isolated component of each system. Dancy' s overall invention is directed to 5 Appeal2018-004703 Application 15/061,849 transferring human blood under pressure in a hospital setting. Dancy, col. 1, 11. 29--40. In contrast, Appellant's invention is directed to a dispensing container for use with volatile liquids. Spec. ,r,r 2---6. These represent two diverse fields of endeavor. When it comes to the "reasonably pertinent to the particular problem" test, the Examiner has the better position. Here, the particular problem is static electricity buildup in a conduit for fluid flow, where the buildup of static electricity can ignite a volatile substance. Appellant's liquid versus air argument is not persuasive. Whether the fluid under consideration is in a gaseous or a liquid state is of little consequence to the analysis. The key consideration is that fluid flow through the conduit, whether gas or liquid, causes static electrical buildup with consequent potential for ignition of a volatile fluid ( whether gas or liquid). We think a person of ordinary skill in the art, faced with the problem of static electrical buildup caused by fluid flow through a conduit, would look to situations from other fields of endeavor where a similar problem is faced. Dancy teaches that: Conduit 104 is preferably plastic tubing impregnated with a conducting material to pass any electrical static charges to ground. This is standard tubing used in all operating room equipment to prevent electrical discharges which potentially might cause an explosion. Dancy, col. 8, 11. 20-25. We agree with the Examiner that the foregoing teaching is reasonably pertinent to the problem facing Appellant with the instant invention. Appellant next challenges the sufficiency of the Examiner's rationale for making the proposed combination. Appeal Br. 6-8. Appellant characterizes the Examiner's rationale as "over-generalized." Reply Br. 1. Appellant criticizes the Examiner's rationale as falling short of the 6 Appeal2018-004703 Application 15/061,849 "articulated reason with some rationale underpinning" required by KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). More particularly, Appellant argues that there is no indication that Riis is known to suffer from a risk of explosion. Appeal Br. 13 ("Riis ... is completely silent with respect to dissipating electrical charge."). Appellant further argues that Butruille suggests only making the valve body (not a conduit) from an electrically conductive material. Reply Br. 7. In response, the Examiner states that rationale for utilizing electrically conductive plastic tubing to prevent electrical discharge that may cause explosion is identified in Dancy and that a rationale for generally using electrically conductive plastic material to dissipate sparking when storing/transporting combustible liquids in a container is identified in the teachings of Butruille. Ans. 7. In reply, Appellant argues that there is no indication that Riis suffers from a risk of explosion. Reply Br. 6. Riis is noticeably silent regarding using the containers disclosed therein for transporting liquids that may cause an explosion if exposed to static charge buildup. The Examiner's proposed rationale for combining the references amounts to a solution looking for a problem. There is simply no indication in Riis that suffers from the risk of explosion due to static charge buildup that would motivate one skilled in the art to make the combination proposed by the Examiner. Id. at 7. Appellant's arguments are not persuasive. The mere fact that Riis is silent about static charge buildup does not negate that a person of ordinary skill in the art would be motivated to improve Riis upon recognizing the potential for explosion. Here, the underlying problem is already recognized in the art. Butruille explicitly teaches that electrostatic charges must be 7 Appeal2018-004703 Application 15/061,849 avoided for safety reasons when transporting and storing combustible, flammable, liquids. Butruille ,r 4. Butruille addresses this problem through use of a valve body made of electrically conductive plastic material, which is "appropriately grounded." 6 Id. ,r,r 8-10. Although, Butruille dissipates static charge through a valve component, it is considered as containing a broader overall teaching that it is beneficial to dissipate static charge through use of a component comprised of an electrically conductive plastic material. There is no explicit teaching in Butruille regarding a "downtube." However, Riis explicitly discloses riser pipe 8 proximate valve 12. Riis, col. 4, 11. 1-11, Fig. 1. A person of ordinary skill in the art looking to dissipate static charge in Riis would naturally look to teachings where static charge is dissipated through an existing component. This would naturally lead the person of ordinary skill in the art to Butruille and Dancy. Butruille arguably suggests dissipating the charge through a valve component. 7 However, Dancy would suggest to a person of ordinary skill in the art that static charge can be dissipated through a conduit made of electrically conductive plastic material either in addition to or, in lieu of, making valve components of such material. 8 It is well settled that 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. KSR, 550 U.S. at 417. Here, a person of ordinary skill in the art would recognize that incorporating electrically conductive plastic material in a 6 See note 3 supra. 7 Ibid. 8 Ibid. 8 Appeal2018-004703 Application 15/061,849 conduit to prevent static discharge would have broad application beyond hospital air supply systems. Appellant presents no evidence that adopting such technique to dispensing containers requires more than ordinary skill. In considering whether it would have been obvious to combine Dancy with the teachings of Riis and Butruille, we are mindful that obviousness "does not require that the motivation be the best option, only that it be a suitable option from which the prior art did not teach away." Par Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197-98 (Fed. Cir. 2014) (citation omitted); see also DyStar Textilfarben GmbH & Co, v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (explaining that the desire to enhance commercial opportunities by improving a product or process is universal and even common-sensical). We express no opinion as to whether using electrically conductive plastic material in the riser tube of Riis is the best option, only that it is an obvious option in view of the teachings of Dancy. Otherwise, a motivation to combine can be found in "any need or problem known in the field of endeavor at the time of the invention and addressed by the patent." KSR, 550 U.S. at 420. "[T]he 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. Under the circumstances, the Examiner has stated a sufficient rationale to support the instant rejection. Final Action 3; Ans. 7. In view of the foregoing discussion, we determine the Examiner's findings of fact are supported by a preponderance of the evidence and that the Examiner's legal conclusion ofunpatentability is well-founded. Accordingly, we sustain the Examiner's unpatentability rejection of claims 1---6. 9 Appeal2018-004703 Application 15/061,849 DECISION The decision of the Examiner to reject claims 1-6 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). AFFIRMED 10