Ex Parte BarishDownload PDFPatent Trial and Appeal BoardDec 30, 201412292211 (P.T.A.B. Dec. 30, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 12/292,211 11/13/2008 Benjamin J. Barish 45081 3580 67801 7590 12/30/2014 MARTIN D. MOYNIHAN d/b/a PRTSI, INC. P.O. BOX 16446 ARLINGTON, VA 22215 EXAMINER HYLINSKI, ALYSSA MARIE ART UNIT PAPER NUMBER 3711 MAIL DATE DELIVERY MODE 12/30/2014 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 BENJAMIN J. BARISH ____________ Appeal 2012-003993 Application 12/292,211 Technology Center 3700 ____________ Before: MICHAEL W. KIM, PATRICK R. SCANLON, and WILLIAM A. CAPP, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Final rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. Appeal 2012-003993 Application 12/292,211 - 2 - THE INVENTION Appellant’s invention relates to devices that use a stream of air to blow bubbles from soapy water. Spec. 1. Claim 1, reproduced below, with paragraph indentation added, is illustrative of the subject matter on appeal. 1. A bubble-producing device, comprising: a container for receiving a quantity of a bubble-forming liquid to a desired liquid level in the container, a bubble-forming loop moveable within said container to a lower position below said desired liquid level so as to be submerged in the liquid when received within the container, or to an upper position emerged from said liquid; and a controlled gas supply system including a source of pressurized gas remotely located from said container and bubble-forming loop, a flexible supply line connecting said remotely-located source of pressurized gas to said container, and a control device proximal to said remotely-located source of pressurized gas for controlling the introduction of pressurized gas from said source into said container effective: (a) first to move said bubble-forming loop from its lower position submerged in said bubble-forming liquid, to its upper position emerged from said bubble-forming liquid; and then (b) to discharge gas through the bubble-forming loop and thereby to produce a bubble therein. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: Span Kalish La Fata Johnson Kelley US 3,604,144 US 3,775,898 US 3,925,923 US 5,701,879 US 2006/0094324 A1 Sep 14, 1971 Dec 4, 1973 Dec 16, 1975 Dec 30, 1997 May 4, 2006 Appeal 2012-003993 Application 12/292,211 - 3 - The following rejections are before us for review: 1. Claims 1–5 and 13–17 are rejected under 35 U.S.C. § 103(a), as being unpatentable over La Fata and Johnson. 2. Claims 6, 7, 15, 18, and 19 are rejected under 35 U.S.C. § 103(a) as being unpatentable over La Fata, Johnson, Span and Kelley. 3. Claims 6, 8, 15, and 18–20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over La Fata, Johnson, Kalish, and Kelley. 4. Claims 9–12 are rejected under 35 U.S.C. § 103(a) as being unpatentable over La Fata, Johnson and Kalish. OPINION Unpatentability of Claims 1–5 and 13–17 over La Fata and Johnson Claims 1 and 2 The Examiner finds that La Fata discloses all of the elements of claim 1 except for using a flexible supply line and spacing the pump from the container sufficiently for it to be considered “remote.” Ans. 4, 5. The Examiner relies on Johnson as disclosing the flexible supply line and remote spacing limitations. Id. 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 achieve the claimed invention as such merely requires substituting one known means of operation for another for the predictable result of forming a manually controlled gas supply system. Id. Appellant traverses the Examiner’s rejection by first arguing that Johnson’s pressure chamber 16 is not remotely located from its manual pump 25. App. Br. 9. In response, the Examiner states that the term Appeal 2012-003993 Application 12/292,211 - 4 - “remote” merely requires the components to be spaced apart. Ans. 9. In reply, Appellant argues that the Examiner’s construction of “remote” is unreasonable. Reply Br. 2. We think the Examiner’s position is correct. During examination of a patent application, pending claims are given their broadest reasonable construction consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). “Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). Appellant has not directed us to any language in the specification that would restrict the meaning of “remote” to anything other than its plain and ordinary meaning. In Johnson, the hand pump is separated from the bubble-fluid container and bubble forming loop by stock 11 that contains pressure tube 17. Fig. 1, 2:3–8. Such separation is sufficient for the components to be considered “remote” to each other under the broadest reasonable construction of remote. Appellant next argues that element 17 of Johnson is not a “flexible supply line” as claimed. App. Br. 10. The Examiner responds stating that the curved lines for element 17 depicted in Johnson’s Figures indicates that the line is flexible. Ans. 9. We think that the Examiner’s observation is sufficient to shift the burden of persuasion onto Appellant. In re Spada, 911 F.2d 705, 708 (Fed.Cir.1990) (citation omitted) (“[W]hen the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.”). Appellant merely argues that element 17 is “probably” a rigid tube, but even if made of flexible material, it would be rendered rigid by the stock. Reply Appeal 2012-003993 Application 12/292,211 - 5 - Br. 3, 4. This is insufficient to carry Appellant’s burden. Appellant’s claim is directed to the flexibility of the supply line itself, not to that of any adjacent or surrounding structure. Appellant also argues that a skilled artisan would not combine La Fata and Johnson as doing so would reverse the direction of discharge of the bubbles. Reply Br. 2. This argument is not persuasive. Combining the teachings of references does not require combining their specific structures. See In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). A person of ordinary skill in the art would have been able to adapt Johnson’s teaching of separating the air pump and the liquid container without being limited to directing the discharge of the bubbles in the same direction shown in Johnson’s figures. We sustain the Examiner’s rejection of claims 1 and 2.1 Claims 3 and 13 Claim 3 depends from claim 2 and adds a limitation directed to a storage tank for pressurized gas. Clms. App’x. Claim 13 is an independent claim that differs in scope from independent claim 1 primarily in its inclusion of a storage tank limitation. Id. The Examiner relies on element 16 of Johnson as meeting this limitation. Ans. 5. Appellant argues that element 16 is merely a transit path for pressurized gas and not a storage tank, because it stores nothing. App. Br. 11, 13; Reply Br. 4–5. Johnson discloses that pressure chamber 16 is adapted to receive and store a supply of air at elevated pressure levels. Col. 2:9–11. Pressurized air flows between the valve plunger 22 and the valve manifold 21 into pressure 1 Appellant does not argue for the patentability of claim 2 separate from claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Appeal 2012-003993 Application 12/292,211 - 6 - chamber 16 thereby pressuring the air in chamber 16. Id. at 2:49–52. The pressurized air in chamber 16 flows through opening 19 into the barrel 12 upon the unsealing of air exit opening 19. Id. at 2:62–65. Based on the foregoing passages of Johnson, we find that the Examiner’s position is supported by a preponderance of the evidence and we sustain the Examiner’s rejection of claim 3. Claim 4 Claim 4 depends from claim 1 and adds a limitation directed to the use of a control devices with two members. Clms. App’x. One control device member moves the bubble-forming loop to submerge the loop in the soapy water and then causes it to emerge above the soapy water. The second control device member produces gas discharge through the loop. Id. The Examiner finds that La Fata discloses a manually actuated pump 15 with a manually-operable member configured to introduce gas into the container effective to manually control both moving the bubble forming loop from its lower position to its upper position and to discharge gas through the bubble forming loop to produce a bubble. Ans. 4–5. In traversing the rejection, Appellant merely recites the manual control limitations of claim 4 and then argues in a conclusory manner that the Examiner has not shown that the limitations are present in La Fata and Johnson. App. Br. 12. Appellant’s argument is insufficient. Statements in an appeal brief that merely point out what a claim recites are not considered to present an argument for separate patentability of the claim. 37 C.F.R. § 41.37(c)(1)(vii). Rule 41.37 requires more than recitation of the claim Appeal 2012-003993 Application 12/292,211 - 7 - elements and a naked assertion that the elements are not found in the prior art. See In re Lovin, 652 F.3d 1349 (Fed. Cir. 2011). In any event, with respect to the first member, La Fata discloses a shuttle 31 that is capable of traveling within cylinder 30 for raising and lowering dip ring 27 into and out of soapy water. La Fata, 3:18–28, Fig. 7– 10. With respect to a second member, La Fata also discloses a manual piston/cylinder pump that generates air pressure which is then directed through a loop to blow bubbles. Id., Fig. 3–5. In sum, Appellant’s argument is deficient under Rule 41.37. We also find that the Examiner’s findings of fact are sufficient to support the rejection by a preponderance of the evidence. We sustain the Examiner’s rejection of claim 4. Claim 5 Claim 5 depends from claim 1 and adds a limitation directed to a cylinder with a grooved inner surface that facilitates discharge of the pressurized gas upon displacement of the piston. Clms. App’x. The Examiner observes that the groove in the cylinder is a mere change in shape that amounts to no more than an obvious design choice. Ans. 6, 11. We disagree. Appellant’s piston and grooved cylinder operate in a cooperative fashion so as to function as a valve. See Figs. 1 and 3. Pressurized gas is released to inflate bubbles when the piston moves upward in response to pressurization of the cylinder by the pump, i.e., a valve open position. Id. The groove in the inner surface of the cylinder allows the pressurized gas to circumvent the piston wall when the piston is moved to its raised, valve Appeal 2012-003993 Application 12/292,211 - 8 - open, position. The piston is spring biased to return to a valve closed position when the gas pressure is released. Id., Spec. 8:4–13. Appellant’s invention uses a manual pump, such as a squeeze bulb, to generate pressurized gas to raise and lower the piston. Spec. 4:4–10. In contrast, La Fata uses a piston/cylinder combination as a pump means to pressurize gas, not as a valve to selectively release gas. La Fata, Figs. 3–5. Similarly, Johnson also uses a piston/cylinder combination as a pump means to pressurize gas, not as a valve. Johnson, Col. 2:20–39; Figs. 1–3. Johnson’s release valve 18 is not incorporated into its piston/cylinder air pump 14, but rather is mounted within pressure chamber 16. Id. at 2:7–9. Thus, there is no “shape” of any kind incorporated into Johnson’s cylinder wall that permits the piston/cylinder pump to function as a valve. The Examiner identifies no structure of any shape disposed in the cylinder wall of the recited art that allows the piston/cylinder configuration to function as a gas discharge valve as claimed in claim 5. Thus, there is no identified structure that could satisfy the claim limitation by merely changing its shape in an obvious manner. We do not sustain the Examiner’s rejection of claim 5. Claims 14–17 Claims 14–17 depend, directly or indirectly, from claim 13. Appellant does not argue for the separate patentability of claim 14 apart from arguments advanced with respect to claim 13. In that regard, claim 14 falls with claim 13. Appellant argues claims 15–17 as a sub-group. App. Br. 13. We select claim 15 as representative. Claim 15 depends directly from claim 13 and adds a limitation directed to a plurality of bubble-forming loops. Clms. App’x. The Appeal 2012-003993 Application 12/292,211 - 9 - Examiner rejected this claim under In re Harza, 274 F.2d 669 (CCPA 1960), as constituting nothing more than a mere duplication of parts. Appellant argues that the claimed feature involves a totally different concept from that of either La Fata or Johnson and, therefore, a person of ordinary skill in the art would not be motivated by either La Fata or Johnson to achieve the claimed invention. We agree with the Examiner that claim 15 entails nothing more than the mere duplication of parts. The Examiner’s reliance on Harza is appropriate to the facts presented. We sustain the rejection of claims 14–17 over La Fata and Johnson. Unpatentability of Claims 6, 7, 16, 18, and 19 over La Fata, Johnson, Span, and Kelley Appellant argues these claims together. App. Br. 13–14. We select claim 6 as representative. Claim 6 depends from claim 1 and adds a limitation directed to dividing the bubble forming liquid container into a plurality of sections each with its own loop that can be dipped into the liquid. Clms. App’x. The Examiner finds that Span discloses a bubble producing device with a plurality of bubble forming loops. Ans. 6. According to the Examiner, it would have been obvious to one of ordinary skill in the art to use a plurality of loops and a plurality of liquid containers in order to create interesting and more complex bubble configurations. Ans. 6. In traversing the Examiner’s rejection, Appellant argues that a person of ordinary skill in the art would not combine Span and/or Kelley with La Fata and Johnson based on specific structure recited in such references that Appellant implies render them patentably distinguishable from the claimed Appeal 2012-003993 Application 12/292,211 - 10 - invention. App. Br. 13. Appellant’s argument is conclusory in nature and is unaccompanied by any supporting evidence or technical reasoning, The language of claim 6 is quite broad and is satisfied by any apparatus that satisfies claim 1 and also uses a plurality of loops each with its own liquid container. Span discloses a bubble blowing toy with a plurality of loops. See Span Figs. 3–5; col. 2:22–54. Appellant provides no persuasive argument or technical reasoning to overcome the Examiner’s conclusion that person of ordinary skill in the art would have found it obvious to use a plurality of loops and liquid containers by combining the teachings of La Fata and Johnson with that of Span of Kelley. We sustain the Examiner’s rejection of claims 6, 7, 16, 18, and 19 over La Fata, Johnson, Span, and Kelley. Unpatentability of Claims 6, 8, 15, and 18–20 over La Fata, Johnson, Kalish, and Kelley In this ground of rejection, the Examiner relies on La Fata and Johnson for the same features cited against claim 1. Ans. 7. The Examiner relies on Kalish as disclosing a plurality of loops that can each be moved between a lower position in bubble forming liquid and a raised position emerged from the liquid. Id. The Examiner also finds, and Appellant does not dispute, that Kalish’s loops are arranged in an annular array. Id. 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 adopt the teachings of Kalish to La Fata to create a greater number of bubbles. In traversing the rejection of claims 6, 8, 15, and 18–20 over La Fata, Johnson, Kalish, and Kelley, Appellant relies on the same arguments that we have previously considered and found unpersuasive with respect to claims 1 Appeal 2012-003993 Application 12/292,211 - 11 - and 13 respectively. App. Br. 14. Appellant also argues, in conclusory fashion, that there is no motivation to combine these four references absent hindsight. Appellant’s conclusory argument does not persuade us that the Examiner erred in rejecting this claims. We sustain the rejection of claims 6, 8, 15, and 18–20 over La Fata, Johnson, Kalish, and Kelley. Unpatentability of Claims 9–12 over La Fata, Johnson, and Kalish Appellant argues claims 9–12 as a group. App. Br. 15.2 We select independent claim 9 as representative. In this ground of rejection, the Examiner relies on La Fata and Johnson for the same features cited against claim 1. Ans. 7–8. The Examiner relies on Kalish as disclosing a plurality of loops that can each be moved between a lower position in bubble forming liquid and a raised position emerged from the liquid. Ans. 8. The Examiner also finds, and Appellant does not dispute, that Kalish’s loops are arranged in an annular array. Id. 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 adopt the teachings of Kalish to La Fata to create a greater number of bubbles. Id. The Examiner also concludes that adding a plurality of loops to La Fata entails nothing more than mere duplication of parts. In traversing the rejection of claim 9 over La Fata, Johnson, and Kalish, Appellant argues that the doctrine of duplication of parts should not be applied to the instant claims. Appellant also contends, in conclusory 2 We do not consider the paragraph regarding claims 10–12 on page 15 of the Appeal Brief to constitute a separate argument for patentability. Lovin, supra. Appeal 2012-003993 Application 12/292,211 - 12 - fashion, that claim 9 is drawn to a different concept from the recited references. Appellant’s conclusory argument regarding a “different concept” is not persuasive. App. Br. 13. La Fata uses a single bubble forming loop. Kalish uses a plurality of loops in an annular array. La Fata and Kalish both use air pressure in conjunction with a mechanism to raise and lower a loop into soapy water. La Fata and Kalish both use the same supply of air for raising and lowering the loop(s) to also inflate the soap bubbles. Appellant does not articulate how its concept differs, in a patentably distinct manner, from the prior art. We also agree with the Examiner that claim 9 entails nothing more than a mere duplication of parts. The Examiner’s reliance on Harza is appropriate to the facts presented. We sustain the rejection of claims 9–12 over La Fata, Johnson, and Kalish. Appeal 2012-003993 Application 12/292,211 - 13 - DECISION 1. The decision of the Examiner to reject claims 1–4 and 13–17 over La Fata and Johnson is AFFIRMED. 2. The decision of the Examiner to reject claim 5 over La Fata and Johnson is REVERSED. 3. The decision of the Examiner to reject claims 6, 7, 15, 18, and 19 over La Fata, Johnson, Span and Kelley is AFFIRMED. 4. The decision of the Examiner to reject claims 6, 8, 15, and 18–20 over La Fata, Johnson, Kalish, and Kelley is AFFIRMED. 5. The decision of the Examiner to reject claims 9–12 over La Fata, Johnson, and Kalish 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-IN-PART rvb Copy with citationCopy as parenthetical citation