Ex Parte Ringeisen et al

Patent Trial and Appeal Board

Jul 13, 2016

12700759 (P.T.A.B. Jul. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121700,759 02/05/2010
26384 7590 07114/2016
NAVAL RESEARCH LABORATORY
AS SOCIA TE COUNSEL (PA TENTS)
CODE 1008.2
4555 OVERLOOK A VENUE, S.W.
WASHINGTON, DC 20375-5320
FIRST NAMED INVENTOR
Bradley R. Ringeisen
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.
99745-US2 8545
EXAMINER
WIEST, ANTHONY D
ART UNIT PAPER NUMBER
3617
MAILDATE DELIVERY MODE
07/14/2016 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 BRADLEY R. RINGEISEN, PETER K. WU,
BARRY J. SP ARGO, JUSTIN C. BIFFINGER, and
LISA A. FITZGERALD
Appeal2014-007992
Application 12/700,759
Technology Center 3600
Before JOHN C. KERINS, STEP AN ST AI CO VICI, and LEE L. STEPINA,
Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Bradley R. Ringeisen et al. (Appellants) appeal under 35 U.S.C.
§ 134(a) from the Examiner's final decision rejecting claims 1-5, 8, and 12-
14. We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal2014-007992
Application 12/700,759
THE INVENTION
Appellants' invention relates to buoyancy-controlled devices.
Claim 1, the sole independent claim, is representative of the claimed
invention and is reproduced below:
1. A device comprising:
a chamber having a gas inlet, a gas source coupled to the
gas inlet, a gas vent, and a liquid vent; and
a float and a weight coupled to the chamber;
wherein the gas source comprises a gas-producing
microbe within the gas source;
wherein the float has a lower density than the
chamber;
wherein the weight has a higher density than the
chamber;
wherein the aggregate density of the chamber, the
float, and the weight is greater than the density of the chamber;
and
wherein the gas inlet, the gas vent, the liquid vent,
the float, and the weight are positioned on the chamber such
that:
when the chamber is filled with and
submerged in a liquid in which the chamber is neutrally-
buoyant, the chamber is oriented to place the gas vent below the
gas inlet; and
when a gas is introduced through the gas
inlet into the chamber that is filled with the liquid, the chamber
pivots to raise the gas vent until a portion of the gas escapes
from the chamber through only the gas vent.
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Appeal2014-007992
Application 12/700,759
THE REJECTIONS
The Examiner has rejected:
(i) Claims 1, 4, 12, and 13 under 35 U.S.C. § 103(a) as being
unpatentable over Asaro (US 1,659,129, issued Feb. 14, 1928) and Demaray
(US 4,270,381, issued June 2, 1981);
(ii) Claims 2, 3, 8, and 14 under 35 U.S.C. § 103(a) as being
unpatentable over Asaro, Demaray, and Appellants' own disclosure (Spec.
iTiT 19-20); and
(iii) Claim 5 under 35 U.S.C. § 103(a) as being unpatentable over
Asaro, Demaray, and Strickland (US 4,082,063, issued. Apr. 4, 1978).
ANALYSIS
Claims 1, 4, 12, and 13--0bviousness--Asaro/Demaray
Claim 1 recites, in part, that a gas source comprises a gas-producing
microbe within the gas source.
The Examiner finds that Asaro discloses most of the limitations of
claim 1, with the exception of a gas source being a gas-producing microbe,
as claimed. Final Act. 2-3 (citing Asaro, 11. 31-35; Figs. 1and3). The
Examiner relies on Demaray as "teach[ing] a gas source (Fig. 2, # 10, sample
container) that contains a gas producing microbe (Fig. 2, # 1, microbial
sample)." Id. at 3. The Examiner concludes that "[i]t would have been
obvious to one of ordinary skill in the art to substitute the gas source of
Asaro with a known gas producing microbial source as disclosed by
Demaray," because "[s]ubstituting various microbial agents can vary the gas
production rate/volume and alter the length of the repetitive dive cycles of
the chemical fish [of Asaro]." Id.
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Appeal2014-007992
Application 12/700,759
Appellants argue that "Demaray is nonanalogous art," in that
"Demaray is not pertinent to Asaro because a person of ordinary skill
seeking to solve the problem of floating and sinking the toy of Asaro would
not look to the microbial gas sources in the measuring instrument of
Demaray." Appeal Br. 3--4. Appellants assert that "us[ing] []microbes in a
toy could lead to unintended health consequences," and that "[t]he
incorporation of a thermostatically regulated water bath is far too
complicated for the simple toy of Asaro," because "[ w ]ithout thermal
control, the results of the combination would be unpredictable." Id. at 4.
Appellants thus maintain that because the references are in nonanalogous
arts, "there is no rationale supporting the conclusion of obviousness and a
prima facie case has not been made." Id.
Further, in reply to certain points raised by the Examiner, Appellants
assert that "there is no evidence of record of a bathtub with a regulated
temperature as described in Demaray," and moreover that a regulated bath,
as called for in Demaray, "would have the ability to maintain a temperature
(Demaray, col. 6, 11. 21-25), rather than merely controlling the initial
temperature." Reply Br. 1. Appellants argue that, "[t]here is no teaching
that the yeast would produce gas just by placing it in bath water," and that
there is no evidence of record as to whether an amount of bread dough (for
yeast fermentation) that could practicably be included in the toy fish "would
produce enough gas at a comfortable bath temperature to provide the
entertainment value sought by Asaro." Id. at 2.
We are not persuaded that Demaray is non-analogous art. Although
Demaray is not in Appellants' field of endeavor, Appellants have not
established that Demaray is not reasonably pertinent to a problem with
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Appeal2014-007992
Application 12/700,759
which Appellants were faced, the second prong of the non-analogous art test.
See In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986). First, we note that
Appellants improperly cite to Asaro, and the problems faced by Asaro,
instead of problems faced by Appellants in the current application, as the
baseline for assessing whether Demaray should be regarded as non-
analogous art.
Second, even considering the problems faced by Appellants, the
Examiner has the better position. The Examiner responds in general that
Demaray is not non-analogous art, because "[ o ]ne looking to modify the
dive cycles of the toy fish of Asaro would look to other potential gas sources
such as the microbial sources of yeast as disclosed by Demaray to achieve
the desired functionality." Ans. 2. As to the purported health and safety
issues attendant to the use of microbe in the form of a yeast preparation as
taught by Demaray, the Examiner points out that, "yeast as a microbial gas
producing source is safely used in household baking and fermentation
processes," and that yeast is readily available "to replace the gas source of
tartaric acid and sodium bicarbonate chemical capsules used in the toy fish
of Asaro." Id. at 3. Appellants do not explain persuasively why the
Demaray yeast would be more dangerous in some way than the acid and
base compositions disclosed by Asaro. The Examiner is correct once more
in responding to Appellants' further argument directed to the complexity of
the thermal control in Demaray, and assertion that results would be
unpredictable were such thermal control not employed, by noting that the
toy fish of Asaro "would likely be used in a child's bath which would have a
regulated water temperature," likely for a shorter period of time than the
instrument in Demaray is operated. Id.
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Appeal2014-007992
Application 12/700,759
Appellants' arguments presented in the Reply Brief appear to be
directed to the attempt to establish that Demaray is non-analogous art.
However, to the extent that they are presented as reasons why it would not
have been obvious to modify Asaro as proposed by the Examiner, they are
also unpersuasive. The use of yeast in liquid (water) is well known as
evidenced by the use of such in brewing (see Demaray, col. 1, 11. 15-22),
and Appellants do not adequately explain why water entering the pin pricks
of Asaro (see Asaro, 11. 31-33 and 55-56) would not cause a yeast mixture
of the type disclosed in Demaray to produce gas. Moreover, Appellants'
claims do not require a particular length of time for generating the gas and a
child's bath should remain at a particular temperature for a sufficient time to
produce bubbles in the fish of Asaro. Whether such time is sufficient to
provide the entertainment value sought by Asaro, the Examiner is not
required to establish beyond all doubt that the proposed combination would
be successful. In re Kubin, 561F.3d1351, 1360 (Fed. Cir. 2009)
("[O]bviousness does not require absolute predictability of success"). It is
sufficient that a person of ordinary skill in the art would have made the
combination with a reasonable expectation of success. In re Drage, 695
F.3d 1334, 1338 (Fed. Cir. 2012). The Examiner's position that microbial
gas sources are known and the gas output of the microbial sources can be
determined and controlled is an adequate basis for a reasonable expectation
that the modified fish of Asaro would produce bubbles and provide
buoyancy. As such, the Examiner correctly concludes that "[i]t would have
been obvious to one of ordinary skill in the art to substitute the gas source of
Asaro with a known gas producing microbial source as disclosed by
Demaray." Final Act. 3; see also KSR Int'! Co. v. Teleflex, Inc., 550 U.S.
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Appeal2014-007992
Application 12/700,759
398, 416 (2007) ("The Court recognized that when a patent claims a
structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.").
Accordingly, for the foregoing reasons, we sustain the rejection of
claims 1, 4, 12, and 13 as being unpatentable over Asaro and Demaray.
Claims 2, 3, 8, and 14--Asaro/Demaray/Appellants' Own Disclosure
Claim 5--Asaro/Demaray/Strickland
Appellants' argue only that "there is no rationale to combine Asaro
and Demaray." Appeal Br. 4. For the reasons discussed above, with respect
to claim 1, we find that the Examiner's substitution of one element for
another known element with predictable results is sufficient rationale.
Accordingly, for the same reasons discussed supra, the rejection of claims 2,
3, 8, and 14, and the rejection of claim 5 is sustained.
DECISION
The rejections of claims 1-5, 8, and 12-14 under 35 U.S.C. § 103(a)
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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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