Ex Parte Warner

Patent Trial and Appeal Board

Nov 15, 2012

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

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DEAN C. WARNER
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Appeal 2010-010685
Application 11/369,644
Technology Center 3700
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Before: JENNIFER D. BAHR, SCOTT E. KAMHOLZ, and
WILLIAM A. CAPP, Administrative Patent Judges.

KAMHOLZ, Administrative Patent Judge.

DECISION ON APPEAL

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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.

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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
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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
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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.
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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
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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.
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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

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