Ex Parte Hassell

Patent Trial and Appeal Board

Nov 26, 2018

14837938 (P.T.A.B. Nov. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/837,938 08/27/2015
26231 7590 11/28/2018
FISH & RICHARDSON P.C. (DA)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
James Clyde Hassell
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.
38136-0088001 8384
EXAMINER
MERCADO, ALEXANDER A
ART UNIT PAPER NUMBER
2856
NOTIFICATION DATE DELIVERY MODE
11/28/2018 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):
P ATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex JAMES CLYDE HASSELL
Appeal2018-008029
Application 14/837,938
Technology Center 2800
Before BEYERL YA. FRANKLIN, KAREN M. HASTINGS, and
MONTE T. SQUIRE, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner's Final decision rejecting claims 1-3, 5-22, and 26 under 35
U.S.C. § 103(a) over the combined prior art of at least Welker 865 (US
4,459,865 issued Jul. 17, 1984), Harris (US 2011/0061451 Al, published
Mar. 17, 2011), and Urich (US 6,706,020 Bl issued Mar. 16, 2004) 2 ; and
claims 23 and 25 under 35 U.S.C.§ 103(a) over the combined prior art of at
least Welker 865 and Harris.
1 Appellant is the Applicant, Saudia Arabian Oil Company, which is also the
real party in interest (Appeal Br. 1 ).
2 While the Examiner applies additional references to various dependent
claims (see Final Act. 12-16), Appellant only presents arguments directed to
features of independent claims 1 and 20, as well as dependent claim 26 and
dependent claim 9 (generally Br. 9, 10).
Appeal2018-008029
Application 14/837,938
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Independent claim 1 below is illustrative of the subject matter on
appeal ( emphasis added):
1. A fluid sampling container comprising:
a sealed outer body configured to hold a sample multi-phase fluid
obtained from a multiphase fluid stream;
an inlet line attached to the outer body, wherein the sample multi-
phase fluid flows into the sealed outer body through the inlet line;
a piston assembly positioned within the sealed outer body, the piston
assembly sealed to inner walls of the outer body to define a sample volume
in which the sample multi-phase fluid is contained;
a shear mixer positioned within the sealed outer body, the shear mixer
comprising a rotor and a stator arranged to define a fluid passage and
rotatable relative to each other, the rotor comprising a rotary shear blade
configured to shear the sample multi-phase fluid flowing through
the fluid passage, the shear mixer configured to shear the sample multi-
phase fluid such that a homogeneity of multiple phases in the sample multi-
phase fluid remains substantially constant over time;
a controller attached to the piston assembly, the controller configured
to control the shear mixer during transportation to shear the sample multi-
phase fluid to maintain the homogeneity of the sample during a duration of
the transportation; and
a drive shaft to rotate the rotary shear blade, the drive shaft passing
through the piston assembly and extending outside the outer body, wherein
the controller is attached to a portion of the drive shaft outside the outer
body.
Independent claim 20, directed to a method of mixing a sample, and
independent claim 23, directed to a fluid container, each contain similar
limitations to claim 1 ( Claims Appendix, Appeal Br. 19-21 ).
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Application 14/837,938
ANALYSIS
Upon consideration of the evidence on this record and each of
Appellant's contentions, we find that the preponderance of evidence
supports the Examiner's conclusion that the subject matter of Appellant's
claims is unpatentable over the applied prior art. We sustain the Examiner's
§ 103(a) rejections essentially for the reasons set out by the Examiner in the
Final Action and the Answer. We add the following primarily for emphasis.
It has been established that "the [obviousness] 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." KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398,418 (2007). Likewise, it is also well settled that a
reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in the art would have reasonably been
expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264---65 (Fed.
Cir. 1992).
Appellant first argues that Harris does not teach a controller attached
to a portion of the drive shaft outside the outer body as recited in claims 1,
20, 23 and 26 ( claim 26 dependent from claim 1 states "attached to an end of
the portion of the drive shaft") (Appeal Br. 6, 7, 12, 13; Reply Br. 1, 2).
Appellant's arguments are not persuasive of reversible error. The
Examiner explains that, contrary to the Appellant's position, Harris does
indeed teach or suggest a controller attached to a drive shaft within the
meaning of the claims interpreted in light of Appellant's Specification. The
Examiner states:
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Application 14/837,938
According to Merriam-Webster dictionary, the plain
meaning of controller is defined as "a device or piece of
equipment used to operate a machine, vehicle, or system".
Furthermore, Appellant's specification describes the controller
as being implemented as firmware, hardware, software, or
combinations of them ([0039] of the publication of the instant
application). Harris discloses a drive shaft (20) extending
outside an outer body (10) (Figure 2).
The drive shaft is attached to a viscometer such as a Fann
Model 50, Ametek Chandler Model 550 or a Grace Model
M5600 [0013, 0048]. The aforementioned viscometers are used
to operate Harris' drive shaft outside of the outer body, thus
meeting the claim limitation of "the controller is attached to a
portion of the drive shaft outside the outer body". Furthermore,
the aforementioned viscometers inherently include their own
controllers to operate, utilizing hardware and software (See
Section 4 of the Fann Model 50 Instruction Manual provided to
the Appellant 28 August 2017). As the viscometer is attached to
Harris' drive shaft, the controllers are also attached, via
electrical and mechanical means, to the drive shaft thus
meeting the instant claim limitations.
Appellant also argues the ability of a controller to operate
Harris' axial shaft is unreasonably broad because the claim
requires not only an attachment of the controller to the shaft but
also that the controller be attached to a portion of the shaft that
is outside the body (Appeal Brief, Page 7, lines 6 - 10).
Examiner respectfully disagrees. To operate Harris drive shaft,
the controller must be attached to a portion of the shaft that is
outside the body (Figure 2). Harris discloses no other
connection to the drive shaft. As such, any controller must be
attached to a portion of the shaft that is outside the body.
Appellant also argues the plain meaning of attach is "to
make fast ( as by tying or gluing)" ( Appeal Brief, Page 7, line
11 ). Examiner notes the Appellant's specification discusses
firmware and software as also being controllers ([0039] of the
publication of the instant application). As such, the
specification describes a much broader definition of the term
attach, as software and firmware cannot be "made fast ( as by
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Appeal2018-008029
Application 14/837,938
tying or gluing)" to a portion of the drive shaft that is outside of
the body.
Ans. 2, 3.
Notably, Appellant's Specification appears to be devoid of the word
"attached"; rather, it states "[a] controller 246 is connected to the drive shaft
218" (Spec. ,r 35). Appellant's Specification states the "controller can be
implemented as a computer system .... The controller can be implemented
as firmware, hardware, software, or combination of them" (Spec. 39).
Appellant has thus not shown reversible error in the Examiner's
determination that one of ordinary skill would have readily inferred that the
claim language in dispute encompasses Harris' viscometer controller that
must be connected to the drive shaft to operate, as explained by the
Examiner (see, e.g., Ans. 2, 3). KSR Int'!, 550 U.S. at 418; see also id. at
421 ("A person of ordinary skill is also a person of ordinary creativity, not
an automaton."); Ball Aerosol & Specialty Container, Inc. v. Limited
Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (Under the flexible inquiry
set forth by the Supreme Court, the PTO must take account of "the
inferences and creative steps," as well as routine steps, that an ordinary
artisan would employ.).
Appellant has also not directed our attention to any persuasive
reasoning or credible evidence to establish that the Examiner's claim
interpretation is unreasonable, nor to any portion of the Specification that
limits the definition of "attached to a portion of the drive shaft" to exclude
the type of viscometer control in Harris as pointed out by the Examiner. In
re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (If
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Application 14/837,938
the specification does not provide a definition for claim terms, the broadest
reasonable interpretation consistent with the Specification is applied.).
Appellant also argues that since the principle of operation of Welker' s
vortex mixer is axial movement along a shaft versus the rotary blade
movement about a shaft of Harris, one of ordinary skill would not have
combined the features of Harris with Welker as proposed by the Examiner
(Appeal Br. 7-9; Reply Br. 3-5). This argument is not persuasive of error in
the Examiner's reasonable position that one of ordinary skill, using no more
than ordinary creativity, would have used a known alternative mixing
mechanism as exemplified in Harris with a shaft extending outside the
sealed body and viscometer controller for the known predictable benefit of
fluid sample accuracy (e.g., Final Act. 4; Ans. 3, 4). In re Keller, 642 F.2d
413,425 (CCPA 1981) ("The test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the structure of the
primary reference .... Rather, the test is what the combined teachings of
[those] references would have suggested to those of ordinary skill in the
art."); In re Nievelt, 482 F.2d 965,968 (CCPA 1973) ("Combining the
teachings of references does not involve an ability to combine their specific
structures."). Appellant also does not dispute the Examiner's finding that
Urich further exemplifies a controller used to control a mixer to maintain
homogeneity of a sample multi-phase fluid (Final Act. 5; Appeal Br.; Reply
Br. generally)
With respect to method claims 20 and 21, Appellant argues that
merely because the mixer of, for example, Welker may be capable of mixing
during transportation of the fluid does not teach or suggest that the mixer is
actually operated "during transportation" as recited in claim 20 (Appeal Br.
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11; Reply Br. 6, 7). This argument is not persuasive of reversible error. As
pointed out by the Examiner, one of ordinary skill in the art would have
reasonably inferred and appreciated from the applied prior art the advantage
of maintaining the fluid samples homogeneity by mixing during
transportation (see, e.g., Ans. 5).
With respect to dependent claim 9, Appellant has not shown error in
the Examiner's determination that a magnetic ring would have been an
obvious shape for the magnet of Welker with "the benefit of the ability to
place a tracker anywhere around the circumference of the piston to indicate
its position" (Ans. 5; Appeal Br. 1 O; Reply Br. 7). Appellant has also not
shown that using a ring shape for the magnet is significant (i.e., critical) to
their invention, such that it is not merely an obvious change in shape under
In re Dailey, 357 F.2d 669 (CCPA 1966).
Accordingly, we affirm the Examiner's prior art rejections of the
claims under 35 U.S.C. § 103(a) for the reasons given above and presented
by the Examiner.
DECISION
The Examiner's§ 103(a) rejections are 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)(l).
AFFIRMED
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