Ex Parte Amato et al

Patent Trial and Appeal Board

Jan 31, 2013

10534124 (P.T.A.B. Jan. 31, 2013)

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.
10/534,124 11/18/2005 Tony Amato 745691-39 2453
22204 7590 01/31/2013
NIXON PEABODY, LLP
401 9TH STREET, NW
SUITE 900
WASHINGTON, DC 20004-2128
EXAMINER
GORDON, BRYAN P
ART UNIT PAPER NUMBER
2837
MAIL DATE DELIVERY MODE
01/31/2013 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 TONY AMATO and MICHAEL JOHN CRANE
1

____________

Appeal 2010-007350
Application 10/534,124
Technology Center 2800
____________

Before DENISE M. POTHIER, BARBARA A. BENOIT, and
JAMES B. ARPIN, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-9. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
INVENTION
Appellants’ invention relates to apparatus for applying ultrasonic
energy to sewage slurry. See generally Abstract; Spec. 1:3-15. Claim 1 is

1
Sonico Ltd. is the real party in interest.
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Application 10/534,124

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representative and is reproduced below with the key disputed limitation
emphasized:
1. Sewage slurry ultrasonic apparatus for applying ultrasonic energy
to sewage slurry, the apparatus comprising:
an applicator having an outwardly facing surface;
an extender which extends from the outwardly facing surface;
and
at least one booster at the end of the extender remote from the
applicator for boosting ultrasonic energy applied thereto to cause
the applicator to oscillate,
wherein the applicator, extender and booster are integrally
formed.
The Examiner relies on the following as evidence of unpatentability:
Kreuter
Ehlert
US 4,013,552
US 5,110,403
Mar. 22, 1977
May 5, 1992
THE REJECTION
The Examiner rejected claims 1-9 under 35 U.S.C. § 103(a) as
unpatentable over Kreuter and Ehlert. Ans. 3-7.
2

OBVIOUSNESS REJECTION OVER KREUTER AND EHLERT
Regarding representative claim 1, the Examiner finds that Kreuter
teaches a sewage slurry ultrasonic apparatus comprising an applicator having
an outwardly facing surface and an extender which extends from the
outwardly facing surface. Ans. 5 (referring to Kreuter’s Figure 4(a)
depicting an electroacoustic horn and nozzle). The Examiner finds,
however, that Kreuter does not teach or suggest at least one booster, but that
Ehlert teaches this limitation. Id. at 5-6 (referring to Ehlert’s Figure 6

2
Throughout this opinion, we refer to (1) the Appeal Brief (App. Br.) filed
November 23, 2009; (2) the Examiner’s Answer (Ans.) mailed February 3,
2010; and (3) the Reply Brief (Reply Br.) filed April 5, 2010.
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depicting booster 601). Further, the Examiner finds that it would have been
obvious to combine Ehlert’s booster with Kreuter’s apparatus to achieve an
applicator, an extender, and a booster which are integrally formed. Id. at 6.
Appellants do not contest that Kreuter and Ehlert teach or suggest the
components of Appellants’ apparatus, but argue instead that neither Kreuter
nor Ehlert, alone or in combination, teaches or suggests that the components
are arranged, such that “the applicator, extender and booster are integrally
formed.” App. Br. 4 (emphasis added).
ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Kreuter and Ehlert, collectively, would have taught or suggested that
“the applicator, extender and booster are integrally formed”?
ANALYSIS
1. The Prima Facie Case.
Based on the record before us, we find no error in the Examiner’s
rejection of representative claim 1 which calls for, in pertinent part, that “the
applicator, extender and booster are integrally formed” (emphasis added).
Initially, Appellants argue that the Examiner improperly relies on a decision
by the U.S. Supreme Court, Howard v. Detroit Stove Works, 150 U.S. 164,
170 (1893), to demonstrate that it is obvious to make multiple components
integral. App. Br. 5-6; Reply Br. 5-6. Appellants correctly argue that there
are no per se rules for obviousness. App. Br. 5 (citing In re Ochiai, 71 F.3d
1565, 1570 (Fed. Cir. 1995)).
3
Instead, the Examiner bears the initial burden

3
We note that Appellants cite an opinion by the Board of Patent Appeals
and Interferences (BPAI) in support of this proposition. App. Br. 6 (citing
Ex Parte Muench, Appeal No. 2001-0114 (BPAI 2002)). This opinion,
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of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). The Examiner may satisfy this burden by
showing that some objective teaching in the art or knowledge generally
available to one of ordinary skill in the art teaches or suggests the claimed
limitations. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). Nevertheless,
once established, the burden shifts to Appellants to rebut the prima facie
case. Oetiker, 977 F.2d at 1445. Here, we find that the Examiner has met
the burden of establishing a prima facie case and that Appellants have not
sufficiently rebutted that case.
As noted above, the Examiner has demonstrated that Kreuter and
Ehlert collectively teach or suggest the applicator, the extender, and the
booster of the claimed invention. Ans. 5-6. Appellants do not contest this.
App. Br. 4. Appellants instead seek to distinguish the claimed invention
over the applied art solely because Appellants’ claim 1 recites that these
components are “integrally formed.” Id.
In the Advisory Action, the Examiner finds that “it is widely held that
forming a device integrally would provide obvious cost advantages since it
would be cheap to produce the device from one structure instead of combing
multiple ones together.” Advisory Action 3 (Sept. 21, 2009). Thus, the
Examiner finds that knowledge generally available to one of ordinary skill in
the art teaches or suggests the claimed limitation. Further, it was known at
the time of the invention that it was advantageous to make portions of
ultrasonic horns integral, rather than separate. Id. (citing Ehlert, col. 12, ll.
23-31 (“The use of the term ‘integral part’ with respect to any feature or

however, was not written for publication and is not binding precedent on the
Patent Trial and Appeal Board.
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component of the high efficiency ultrasonic rotary horn of the present
invention means that such feature or component is formed from the same
piece of material as the horn so that there are no structural discontinuities . .
. .” (emphases added))). Therefore, we find that the Examiner has not relied
solely on an improper per se rule of obviousness in rejecting claim 1 and
that the Examiner has established a prima facie case for obviousness based
on knowledge generally available to persons of ordinary skill in the relevant
art.
Appellants argue that the integral formation of their apparatus is not
taught or suggested by Kreuter or Ehlert and that, in fact, each reference
teaches an apparatus formed of separate components. App. Br. 7.
Moreover, Appellants argue that Kreuter’s apparatus “could not even be
formed integrally because of it complex construction, with internal
passageway P and the profiled nozzles N.” Id. (citing Kreuter, Fig. 4(c)
(depicting an embodiment with a spiral nozzle)). Further, Appellants argue
that the complex construction of Kreuter’s apparatus would not suggest the
cost advantages of integral formation found by the Examiner. Id. at 8-9
(citing Kreuter, Fig. 4(c)).
In response to these arguments, we note that, although Kreuter and
Ehlert describe embodiments in which the components of their apparatus are
separate, their teachings are not limited to such embodiments. A reference is
evaluated for all that it teaches and is not limited to its specific
embodiments. In re Bode, 550 F.2d 656, 661 (CCPA 1977); see also In re
Mills, 470 F.2d 649, 651 (CCPA 1972) (“All the disclosures in a reference
must be evaluated, including nonpreferred embodiments, and a reference is
not limited to the disclosure of specific working examples.” (citations
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omitted)). Appellants fail to demonstrate that Kreuter proscribes integral
formation, and Ehlert makes clear that features and components of its
apparatus may be formed as “integral parts.” See Ehlert, col. 12, ll. 23-31.
As the U.S. Supreme Court explained in KSR Int’l Co. v. Teleflex Inc., “[i]f a
person of ordinary skill can implement a predictable variation, § 103 likely
bars its patentability.” 550 U.S. 398, 417 (2007). Here, based on the
teachings of Ehlert, we find that a person of ordinary skill in the relevant art
would know that the features or components of an ultrasonic horn could be
formed integrally or separately, or by some combination of both. Moreover,
such teachings are applicable to the combination of Kreuter and Ehlert.
Further, contrary to Appellants’ arguments, the Examiner relies on the less
complicated embodiment depicted in Kreuter’s Figure 4(a), rather than the
more complicated embodiment of Figure 4(c), as teaching or suggesting the
applicator and extender of Appellants’ apparatus. Ans. 5; Final Rej. 3. For
the foregoing reasons, we find Appellants’ arguments unpersuasive.
2. Secondary Considerations.
Appellants further argue that the results of the integral formation of
the applicator, the extender, and the booster are unexpected. App. Br. 5-6.
In particular, Appellants argue that their integral design provided “benefits
in terms of longevity and reduced servicing requirements which significantly
outweighed the loss of design and operational flexibility associated with
forming the components integrally.” Id. at 6. Nevertheless, Appellants
provide no evidence in support of these alleged secondary considerations.
Id.; see also MPEP § 716.01(c). It is well settled that arguments of counsel
cannot take the place of factually supported objective evidence. See, e.g., In
re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d
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699, 705 (Fed. Cir. 1984); see also MPEP § 716.01(c)(II) (“Examples of
attorney statements which are not evidence and which must be supported by
appropriate affidavit or declaration include statements regarding unexpected
results . . .”).
4

Assuming arguendo, however, that Appellants’ apparatus achieves the
asserted beneficial results; Appellants still fail to demonstrate that these
benefits have the required nexus to the argued limitation. See Huang, 100
F.3d at 140 (holding that the proponent must offer proof “that the sales were
a direct result of the unique characteristics of the claimed invention”
(emphasis added)). The Examiner finds that “[i]t would have been expected
that if the ultrasonic horn was made from one piece instead of multiple parts
there would be no discontinuities between the parts which would lead to less
chance that the ultrasonic horn would fail when it is vibrated.” Ans. 8.
Although Appellants argue that such a finding should be made by one of
ordinary skill in the art (Reply Br. 4-5), that there are other reasons for
forming the apparatus out of separate components (App. Br. 5-6), and that
Appellants’ components are formed integrally for a different reason (id. at
6); Appellants do not contest that the Examiner states a reason for integrally
forming the applicator, the extender, and the booster. As the Supreme Court
explained in KSR, “[u]nder the correct analysis, any need or problem known
in the field of endeavor at the time of invention and addressed by the patent
can provide a reason for combining the elements in the manner claimed.”
550 U.S. at 420 (emphasis added). Therefore, we are not persuaded that
Appellants’ arguments regarding secondary considerations rebut the prima

4
See MPEP § 716.01 concerning the timely submission of evidence
concerning secondary considerations.
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facie case of obviousness (see MPEP § 2145), and we find that the reason
stated by the Examiner for forming the apparatus’s components integrally,
although different from Appellants’ reason, is sufficient to support the
conclusion of obviousness.
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of independent claim 1 and of dependent claims 2-9 not
separately argued with particularity. See App. Br. 10.

CONCLUSION
The Examiner did not err in rejecting claims 1-9 under § 103.

DECISION
The Examiner’s decision rejecting claims 1-9 is affirmed.
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

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