Ex Parte Warner

Patent Trial and Appeal BoardNov 15, 2012

11369644 (P.T.A.B. Nov. 15, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte DEAN C. WARNER ____________________ Appeal 2010-010685 Application 11/369,644 Technology Center 3700 ____________________ Before: JENNIFER D. BAHR, SCOTT E. KAMHOLZ, and WILLIAM A. CAPP, Administrative Patent Judges. KAMHOLZ, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-010685 Application 11/369,644 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final decision to reject claims 1-6 under 35 U.S.C. 103(a) for unpatentability over Dowis (US 3,794,952; iss. Feb. 26, 1974) and Funke (US 4,191,437; iss. Mar. 4, 1980). We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. THE CLAIMED SUBJECT MATTER The claimed subject matter is directed to a rotatable coffee maker. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A coffee maker comprising: a bottom of the coffee maker adapted to be placed onto and be supported by a surface; three or more wheel assemblies mounted onto the bottom of the coffee maker; wherein the wheel assemblies are mounted on an imaginary circle on the bottom of the coffee maker and the wheel assemblies are fixed such that an axis of rotation of each wheel assembly is substantially perpendicular to the imaginary circle such that the coffee maker may move in only a circular direction. ANALYSIS Appellant argues claims 1-5 as a group. We, therefore, select claim 1 as representative and decide the appeal with respect to all claims in this group on the basis of claim 1 alone; see 37 C.F.R. § 41.37(c)(1)(vii) (2011). Appellant argues claim 6 separately. Appeal 2010-010685 Application 11/369,644 3 1. Claims 1-5 The Examiner found that Dowis discloses all limitations recited in claim 1, including “a “coffee maker (20) comprising a bottom (see proximate lead line 12),” except the requirement that the wheel assemblies be “fixed.” Ans. 6. The Examiner found that Dowis instead discloses “rotating assemblies.” Id. The Examiner further found that Funke discloses a rotating device, operating in a manner similar to Dowis, that may have either fixed wheel assemblies or “rolling bearing assemblies.” Ans. 8. The Examiner concluded that it would have been obvious to modify Dowis to include Funke’s fixed roller bearings as a “mere substitution of functional equivalents to allow rotation of the device.” Id. Appellant argues that (a) Dowis and Funke fail to disclose all elements of claim 1; (b) the rejection includes no rationale as to why it would have been obvious to modify a coffee maker to arrive at the claimed subject matter; (c) Funke teaches away from its combination with Dowis, and the combination would render the references unsatisfactory for their intended purposes; (d) Dowis and Funke are nonanalogous to the claimed subject matter; and (e) the claimed coffee maker “proceeds contrary to conventional wisdom.” Br. 4-12. We consider each of these arguments in turn. a. Whether Dowis and Funke disclose all elements of claim 1 Appellant argues that Dowis and Funke both fail to disclose “a coffee maker having a bottom with wheel assemblies mounted thereto” and that “both of the cited references relate to ‘lazy Susan’ assemblies.” Br. 4-5. Appellant asserts that “[o]verall, as has been acknowledged by the Examiner during prosecution of the application, Dowis does not include 1) wheel Appeal 2010-010685 Application 11/369,644 4 assemblies on a coffee maker, or 2) fixed wheel assemblies.” Br. 6. Appellant also alleges that Dowis and Funke individually fail to disclose certain claim features. Br. 5-7. Appellant’s arguments do not apprise us of error in the rejection because they are non-responsive to the rejection. The Examiner found that Dowis discloses a coffee maker having a bottom (proximate lead line 12; see Ans. 6) with wheel assemblies mounted thereto, as well as all other limitations of claim 1 except “fixed” wheel assemblies. We find nothing in the record to substantiate Appellant’s allegation of a concession by the Examiner that Dowis does not include wheel assemblies on a coffee maker. The Examiner made precisely such a finding, and Appellant has not identified any error in that finding. Consequently, all of Appellant’s arguments premised on this supposed concession by the Examiner are inapposite. Appellant’s arguments premised on Dowis’s failure to disclose “fixed” assemblies (see Br. 6) are similarly inapposite; the Examiner did acknowledge that Dowis lacks such a teaching and relied instead upon Funke for it. Appellant’s arguments premised on Funke’s failure to disclose a coffee maker (see Br. 7) are similarly non-responsive to the rejection because the Examiner did not rely on Funke for such teachings. b. Whether the rejection states a rationale for modification Appellant argues that the rejection lacked an “allegation or rationale as to why it would be obvious [to] modify a coffee maker to arrive at the subject claims.” Br. 8. We disagree. The Examiner explained that Funke discloses wheel assemblies similar to those in Dowis as well as fixed assemblies similar to Appeal 2010-010685 Application 11/369,644 5 those claimed and concluded that it would have been obvious to interchange them as functional equivalents. See Ans. 8. The Examiner thus found that it would have been obvious to substitute one element for another known in the field to reach the claimed subject matter. We find that the Examiner articulated reasoning with sufficient rational underpinning to show that the claimed subject matter would have been obvious over Dowis and Funke. Appellant has not identified error in that reasoning. c. Teaching away / unsatisfactory for intended purpose Appellant argues that (1) Funke teaches away from its combination with Dowis because it “expressly excludes the use of a center post” such as that disclosed in Dowis; and (2) Dowis would be rendered unsatisfactory for its intended purpose because the flange/skirt structure protecting the platform/base assemblage from foreign matter would be eliminated in favor of Funke’s wheel assemblies. Br. 9-11. These arguments do not apprise us of error because they are non- responsive to the rejection. Appellant’s first argument is defective because Funke was cited for the limited teaching that rolling bearing assemblies and wheel assemblies are functionally interchangeable. Whether Funke disfavors a center post is irrelevant to the question of whether one of ordinary skill would have considered it obvious, in view of Funke, to replace Dowis’s rolling bearing assemblies with wheel assemblies. Appellant’s second argument is defective because it presupposes that Dowis’s flange/skirt assembly would have to be eliminated in order to replace balls with wheels; a preponderance of evidence in the record before us does not establish that such elimination would have been necessary to modify Dowis in the manner set forth by the Examiner. Appeal 2010-010685 Application 11/369,644 6 d. Whether Dowis and Funke are nonanalogous Appellant argues that Dowis and Funke are not analogous to the claimed subject matter because they concern “lazy Susan” mechanisms, are not classified with the subject Application, they “shar[e] no similarities with any prior art coffee maker,” and there are “significant differences” between them and the claimed subject matter. Br. 11. Appellant’s arguments do not identify error in the rejection. The simple mechanical nature of the claimed subject matter justifies searching a broad spectrum of art which includes areas of technology in which one of ordinary skill would be aware that similar problems exist. Appellant frames the problem faced at the time of invention in the “Background” section of the Specification as follows: Although it is generally simple to lift and move a coffee maker, this is still an inconvenience. There is a need for a coffee maker having easy access to multiple sides and different areas of the top of the coffee maker without requiring the coffee maker to be slid or translated with respect to the counter on which it sits. Specification, page 2, ll. 13-17. Appellant’s problem thus concerned making a coffee maker that is readily accessible from multiple sides without having to slide it around. The “spin-in-place” structures disclosed in Dowis and Funke provide such accessibility. We agree with the Examiner that they are analogous to the claimed subject matter. Just as an inventor considering a hinge and latch mechanism for portable computers would naturally look to references employing other “housings, hinges, latches, springs, etc.,” so a person of ordinary skill in the art considering how to create a coffee maker that is accessible from multiple sides without sliding would consider references describing lazy Susan-type Appeal 2010-010685 Application 11/369,644 7 assemblies, such as Dowis and Funke. See In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007). We agree with the Examiner that one having ordinary skill in the art of the presently claimed subject matter, confronting the problem Appellant has described, would have been aware that similar problems existed in the “lazy Susan” arts. e. Whether the claimed coffee maker “proceeds contrary to conventional wisdom.” Appellant argues that certain references cited in now-withdrawn rejections “established that the accepted wisdom in the art is that wheel assemblies on a coffee maker should allow for the linear transport of the coffee maker on a surface” and that the claimed coffee maker, which is limited to circular motion, proceeds contrary to this supposed “accepted wisdom.” Br. 12. In response, the Examiner notes that the references currently relied upon disclose circular motion of a coffee maker. Ans. 15- 16. Appellant’s argument does not apprise us of error in the rejection because Appellant has not explained why Dowis and Funke are any less representative of the “accepted wisdom” in the art than are the other references Appellant identifies. The totality of the prior art of record in this case does not point to “linear transport” as “accepted wisdom” in the design of coffee makers, because some references allegedly disclose linear motion, while others disclose circular motion. We agree with the Examiner that Dowis and Funke are relevant to the claimed subject matter; whether certain other references are inconsistent with the claimed subject matter is irrelevant to the question of whether Dowis and Funke would have made the claimed subject matter obvious. Appeal 2010-010685 Application 11/369,644 8 For these reasons, Appellant has not apprised us of error, and we sustain the rejection of claims 1-5. 2. Claim 6 The Examiner’s grounds of rejection do not address claim 6 with particularity. Appellant argues that neither Funke nor Dowis disclose rotation limiters. Br. 13. In response, the Examiner finds that “Funke discloses rotation limiters or downwardly depending flanges (14b) which receives axle (14c) for wheel (14d)” and that the “flanges and axle hold[] the wheel in place.” Ans. 16. A preponderance of the evidence in the record presently before us does not support the Examiner’s finding that the flanges 14b and axle 14c are “rotation limiters.” At most, Funke’s depending flanges 14b and axle 14c help to confine rotation of shelf 14 to a circle that corresponds to track 12b. Nothing in Funke indicates that the flanges or axle do anything to limit rotation about that circle. We consequently do not sustain this rejection. DECISION For the above reasons, the Examiner’s rejection of claims 1-5 is AFFIRMED, and the Examiner’s rejection of claim 6 is REVERSED. 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 Klh