Ex Parte Torell

Patent Trial and Appeal BoardSep 19, 2018

13015627 (P.T.A.B. Sep. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/015,627 01/28/2011 27367 7590 09/21/2018 WESTMAN CHAMPLIN & KOEHLER, P.A. SUITE 1400 900 SECOND A VENUE SOUTH MINNEAPOLIS, MN 55402 FIRST NAMED INVENTOR Bruce D. Torell 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. IA97.12-0003 2981 EXAMINER RIEGELMAN, MICHAEL A ART UNIT PAPER NUMBER 3654 NOTIFICATION DATE DELIVERY MODE 09/21/2018 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): docketing@wck.com tsorbel@wck.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRUCE D. TORELL Appeal2017-008415 Application 13/015,627 Technology Center 3600 Before CHARLES N. GREENHUT, LYNNE H. BROWNE, and PAUL J. KORNICZKY, Administrative Patent Judges. KORNICZKY, Administrative Patent Judge. DECISION ON APPEAL Appeal2017-008415 Application 13/015,627 STATEMENT OF THE CASE Pursuant to 35 U.S.C. Â§ 134(a), Appellant Bruce D. Torell 1 appeals from the Examiner's decision, as set forth in the Non-Final Office Action dated June 9, 2016 ("Non-Final Act."), rejecting claims 1-9. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. THE CLAIMED SUBJECT MATTER The claims are directed to a lubrication pump. Claim 1, the only independent claim on appeal, is reproduced below with disputed limitations italicized for emphasis: 1. A handheld apparatus for delivering a lubricating oil in a lower unit of an I/0 drive, through a hole in a housing of the lower unit, the apparatus comprising: an oil container having a neck portion and a main body, the main body defined by a main body wall for containing the lubricating oil, the main body wall being sufficiently thick to withstand pressure ofup to 30 pounds per square inch; a pumping mechanism attached to the oil container, the pumping mechanism comprising a pumping component comprising a plunger housing and an air moving plunger movable within the plunger housing, and an outer sleeve positioned within the container wherein the plunger housing is positioned within the outer sleeve, the plunger housing having an air valve disposed at a distal end thereof for expelling air into the outer sleeve, the air being moved by the plunger, and wherein the outer sleeve includes at least one air hole positioned above an oil level in the container such that when the air is expelled through the air valve, the air enters the container through the air hole above the oil level; 1 Appellant identify Leaders Manufacturing, Inc. as the real party in interest. Appeal Brief, dated February 8, 2017 ("Appeal Br."), at 3. 2 Appeal2017-008415 Application 13/015,627 an oil delivery mechanism compnsmg a flexible hose attached to an outlet of the container, the outlet positioned proximate a bottom of the container and a hand operable nozzle attached to the hose at another end, the nozzle comprising a frusto-conical tip for engaging the hole of the lower unit housing; and wherein the pumping mechanism is capable of pumping the lubricating oil out the container through the outlet of the container and through the hand operable nozzle to deliver the lubricating oil into the lower unit of the 1/0 drive. REFERENCES In rejecting the claims on appeal, the Examiner relied upon the following prior art: Brandt Ehnts Leuenberger Ellison Barnett Powell us 1,557,650 us 2,058,219 us 4,756,481 us 4,930,664 US 6,595,392 B2 US 7,581,662 B2 REJECTIONS Oct. 20, 1925 Oct. 20, 1936 July 12, 1988 June 5, 1990 July 22, 2003 Sept. 1, 2009 The Examiner made the following rejections: 1. Claims 1-9 stand rejected under 35 U.S.C. Â§ 112, second paragraph, as being indefinite 2. Claims 1, 2, 5, and 6 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Powell, Ellison, Leuenberger, and Ehnts. 3. Claims 3 and 4 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Powell, Ellison, Ehnts, and Barnett. 4. Claims 7-9 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Powell, Ellison, Leuenberger, Ehnts, and Barnett. Appellant seeks our review of these rejections. 3 Appeal2017-008415 Application 13/015,627 DISCUSSION Rejection 1: Claims 1-9 as Being Indefinite In the Office Action of June 9, 2016, the Examiner rejected claims 1- 9, as filed on April 2 8, 2016, as being indefinite. On December 8, 2016, Appellant submitted an Amendment containing amended claims purporting to overcome the Examiner's indefiniteness rejection. See Applicant Argument/Remarks, dated December 8, 2016. On December 9, 2016, without permitting the Examiner to enter the amended claims, Appellant filed a Notice of Appeal. An Appeal Brief, filed on February 8, 2017, did not address the rejection under 35 U.S.C. Â§ 112 and included a Claims Appendix with the claims as listed in the Amendment of December 8, 2016. No office actions were issued between the claim amendment of December 8, 2016 and the Appeal Brief of February 8, 2017. In the Examiner's Answer, dated March 22, 2017 ("Ans."), the Examiner indicated that "[t]he claim amendments filed 12/8/2016 have been entered." 2 Ans. 3. In the Answer, the Examiner maintained the rejection underÂ§ 112, second paragraph, and indicated the reasons why, even in light of the claim 2 For purposes of this Appeal, like Appellant and the Examiner, we will consider the claim amendments filed on December 8, 2016 to have been entered. Typically, "[a]ny amendment[] filed after the mailing date of a non-final Office action and on or before the date of notice of appeal will be treated by the Office as being filed prior to the notice of appeal and treated under 37 CPR 1.111." MPEP Â§ 1206(I); see also MPEP Â§Â§ 714.05, 714.18 (discussing action on amendments). MPEP 1204(II) specifically provides: If applicant files a reply under 37 CPR 1.111 in response to a second or subsequent non-final rejection and later files a notice of appeal before the Office considers the reply, or the reply is filed on the same day as the notice of appeal, the notice of appeal is defective and the Office will answer the reply under 37 CPR 4 Appeal2017-008415 Application 13/015,627 amendments of December 9, 2016, the rejection underÂ§ 112, second paragraph, had not been overcome. Ans. 3. Appellant elected not to file a reply brief. The absence of briefing pertaining to the maintainedÂ§ 112 rejection indicates that Appellant does not seek any further review of this rejection. 37 C.F.R. Â§Â§ 4I.37(c)(l)(iv), 41.40. Accordingly, we do not address the merits of the Examiner's indefiniteness rejection. The rejection of claims 1- 9 under 35 U.S.C. Â§ 112, second paragraph, is summarily sustained. Despite the unresolved issues related to claim clarity, we are able to address the issues raised by Appellant with regard to the prior-art rejections and do so below for the sake of completeness. Rejections 2-4: Claims 1-9 as Unpatentable Over the Cited Prior Art Appellant asserts that the Examiner's rejections in Rejections 2--4 are erroneous for several reasons. First, with respect to the rejections of claims 1-9 in Rejections 2--4, Appellant asserts that the Examiner erroneously finds that the devices in Powell, Ellison, Leuenberger, Barnett, Ehnts, and Brandt ("the cited prior art") can be used with oil because they are "'spray 1.111 in due course. Ordinarily, a notice of appeal would have been proper when at least one claim has been twice rejected. In this instance, however, since applicant has elected to request reconsideration of the rejection (or further examination) by filing a reply under 37 CPR 1.111 rather than directly appealing from the second non-final rejection, the notice of appeal is premature . . . Applicant must wait to file any appeal until the examiner considers the reply and the claims are rejected again. Once the Office action is mailed in response to the reply, applicant may file another notice of appeal under 3 7 CPR 41.31. 5 Appeal2017-008415 Application 13/015,627 dispensers"' which "are designed for water-based solutions or liquids having similar viscosities," and cannot deliver lubricating oil as recited in the claims. Appeal Br. 10 ( discussing Powell, Ellison, Leuenberger in Rejection 2), 14 (discussing Powell, Ellison, Leuenberger in Rejection 2); see id. at 16-18 (making same argument for Powell, Ellison, Ehnts, Barnett in Rejection 3); 20-21 (making same argument for Brandt in Rejection 4). According to Appellant, the "claimed invention is distinguished over the cited prior art in that the claimed device is specifically designed ... to 'deliver' the lubricating oil to the lower unit of the I/0 drive, which could not be 'sprayed' with any of the prior art devices." Id. at 10. Appellant's argument is unpersuasive for several reasons. Appellant's assertion that the devices disclosed in the cited prior art are limited to water- based liquids and cannot deliver oil is merely attorney argument unsupported by factual evidence such as disclosure in the references. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (lawyer arguments and conclusory statements which are unsupported by factual evidence are entitled to little probative value). It also does not address the Examiner's position "that lubricating oil is not being claimed and that any system capable of delivering a fluid such as water to an I/0 device would also be capable of delivering oil." Ans. 3--4; see id. at 5. In a related argument, Appellant asserts that "[a]s the [Powell] apparatus is only capable of spraying a low viscosity and/or waterbased fluid, the Examiner is in error in alleging that the device described in [Powell] could handle viscous oil such as an 80w90 oil as typically used in lubricating I/0 drives spray," and "that the [Powell] device would simply 6 Appeal2017-008415 Application 13/015,627 not operate with the lubricating oil of the claimed invention." Appeal Br. 12; see id. at 15, 18-19 (making the same argument for Ellison, Leuenberger, Barnett in Rejections 2-3); 22 (making the same argument for Powell, Ellison, Leuenberger, Brandt in Rejections 4). Appellant's argument is not persuasive because it is not commensurate with the scope of the claims which do not recite oil grades. See Ans. 5. Appellant's argument that "'spray dispensers"' in the cited prior art cannot deliver oil also ignores Appellant's own proposed definitions of "spray." Appellant asserts without support that: According to one dictionary definition, the definition of "spray" is "[W]ater or other liquid moving in a mass of dispersed droplets, as from a wave". The plain meaning of "spray" is thus "water or other liquid broken up into minute droplets and blown, ejected into, or falling through the air". Additionally, the accepted meaning of "spray" is limited to "fine particles", "to sprinkle" or to "scatter"[.] Appeal Br. 11-12. Assuming that Appellant's definitions are accurate, oil is an "other liquid" and, thus, would be encompassed by the definition of "spray." Second, with respect to the rejections of claims 1-9 in Rejections 2--4, Appellant asserts that the cited prior art do not have an "oil delivery mechanism" and "pumping mechanism" that do not mix air and oil as recited in the claims. Appeal Br. 11, 14 (Rejection 2), 17 (same argument for Rejection 3), 21 (same argument for Rejection 4). According to Appellant, [ t ]he claimed device delivers oil and is purposefully constructed with the claimed pump mechanism and delivery mechanism so as to specifically avoid entraining air in the oil. The oil is not mixed with air, which is a necessary result of the claimed 7 Appeal2017-008415 Application 13/015,627 construction. See paragraph [0016] of the Specification. The devices of the '662 patent, the '664 patent and the '481 patent are each designed to spray a liquid. Spraying thus requires entraining air in the liquid or fluid used with each respective device. Thus, these devices are distinct in construction and function Id. at 11. Appellant also asserts that [T]he claimed invention does not spray oil. The claimed invention delivers oil. More specifically, as discussed in paragraph [0016] of the present application, the construction of the pump and the delivery mechanism specifically avoid entraining air in the oil. The present invention is distinguished from disclosures limited to "spraying" or "sprayers" as the present invention specifically avoids adding any air into the lubricating oil in the process of "delivery". It is for this reason that the claim language includes the term "delivery" with respect to the lubricating oil. Id. at 14. As the Examiner correctly finds, the "oil delivery mechanism" and "pumping mechanism" recited in claim 1 do not provide any structure to avoid entraining air in the oil. Ans. 4--5. Thus, Appellant's "arguments fail from the outset because ... they are not based on limitations appearing in the claims." In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Furthermore, the pressurization method described in both the Specification and Powell do not mix air with oil. Appellant's paragraph 22 of the Specification describes how the device avoids mixing air with oil: As can be seen from the illustration in FIG. 2, along with illustration in FIG. 1, the air holes 40 are positioned near the top of the container 12 above the oil level in the container. Consequently, when the plunger 24 is pushed up and down in the housing 28 and air is pushed through the air valve 30, the air is not mixed in with the oil. The air flows into the container 12 via 8 Appeal2017-008415 Application 13/015,627 the air holes 40. Thereby the container 12 is pressurized without mixing air with the oil. Similarly, referring to Figure 1 of Powell, Powell discloses that air holes 59 are located near the top of container 10 above the oil level in the container. Powell 3:28-53, Fig. 1. When Powell's pumping handle 31 is reciprocated up and down, the container is pressurized. Id. Like Appellant's device, Powell's pressurized air is located above the oil and, thus, is not mixed in with the oil. Third, with respect to the rejection of claims 1, 2, 5, and 6 in Rejection 2, Appellant asserts that [T]here is no disclosure in [Ehnts] that would render it obvious to combine the teachings of [Powell], [Ellison], and [Leuenberger] with a nozzle that dispenses small amounts of grease, and does not spray grease, onto a pinpointed area of a bearing. As such, [Ehnts] patent fails to provide teachings to over come the failure of the combination of [Powell], [Ellison], and [Leuenberger] to meet the claimed invention." Appeal Br. 15. Appellant also asserts that the Examiner's combination of Powell and Ehnts "only comes into existence once [Appellant's] disclosure has been reviewed." Appeal Br. 14. Contrary to Appellant's argument, an express teaching or motivation in the references is not required. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007). Instead, the Examiner need only articulate a reason to combine the references with some rational underpinning to support the legal conclusion of obviousness. Id. Here, the Examiner reasons that it would have been obvious to one having ordinary skill in the art to use Ehnts' nozzle in Powell's system "in order create a seal between the nozzle and external tank with an opening of varied dimensions" (Non-Final Act. 6) and 9 Appeal2017-008415 Application 13/015,627 "to facilitate connection of the pump to the I/0 device" (Ans. 7). Appellant does not address the Examiner's articulated reasoning for combining Powell and Ehnts, and, thus, does not identify error by the Examiner. Similarly, Appellant does not persuasively identify any knowledge relied upon by the Examiner that was gleaned only from Appellant's disclosure and that was not otherwise within the level of ordinary skill at the time of the invention, thereby obviating Appellant's assertion of hindsight. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Thus, Appellant does not apprise us of error. Fourth, with respect to the rejections of claims 3 and 4 in Rejection 3, Appellant asserts that "the combination of [Powell] and [Leuenberger] cannot be made in view of the disclosures of each," and "the combination only comes into existence once [Appellant's] disclosure has been reviewed." Appeal Br. 17. The Examiner, however, finds that "Powell discloses the outlet positioned proximate the top, not the bottom, of the container" and "Leuenberger teaches a similar pump where the outlet is positioned proximate the bottom of the container." Non-Final Act. 6. The Examiner determines that it would have been obvious to one having ordinary skill in the art "to provide the outlet described by Leuenberger to the system disclosed by Powell in order to eliminate the need for internal piping, connecting the outlet to the contained liquid, within the container." Id. Appellant does not persuasively identify any knowledge relied upon by the Examiner that was gleaned only from Appellant's disclosure and that was not otherwise within the level of ordinary skill at the time of the invention, thereby obviating Appellant's assertion of hindsight. See McLaughlin, 443 F.2d at 1395). Thus, Appellant does not apprise us of error. 10 Appeal2017-008415 Application 13/015,627 Fifth, with respect to Rejection 3, Appellant's assert that the rejection of claims 7-9 is erroneous because Brandt does not disclose "a handle for both pumping and as a grip for carrying the container" as recited in claims 7-9. In response to Appellant's argument, the Examiner explains that Brandt's handle 16 "may be used for pumping when locking elements 17 are in [a] disengaged position," and "[w]hen elements [17] are in the locked position and 17 is engaged with 18[,] the handle may be used to carry the system." Ans. 8-9. Appellant does not address the Examiner's explanation and, thus, does not identify error. For the reasons discussed above, the rejections of claims 1-9 under 35 USCÂ§ 103(a) are sustained. DECISION For the above reasons, the Examiner's rejection of claims 1-9 under 35 U.S.C. Â§ 112, second paragraph is AFFIRMED. The Examiner's rejections of claims 1-9 under 35 U.S.C. Â§ 103(a) 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). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 11