Ex Parte Asbury et al

Patent Trial and Appeal Board

Sep 19, 2017

13628902 (P.T.A.B. Sep. 19, 2017)

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.
13/628,902 09/27/2012 Neal Asbury 1-41766 6679
43935 7590 09/21/2017
Shumaker, Loop & Kendrick, LLP
1000 Jackson Street
Toledo, OH 43604-5573
EXAMINER
ASMELASH, BINIAM B
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
09/21/2017 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):
tlopez @ slk-law. com
dmiller@slk-law.com
cgolupski@ slk-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NEAL ASBURY and DONG UN KIM
(Applicant: GREENFIELD WORLD TRADE, INC.)
Appeal 2016-004327
Application 13/628,902
Technology Center 3700
Before EDWARD A. BROWN, WILLIAM A. CAPP, and
SEAN P. O’HANLON, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Neal Asbury and Dong Un Kim (Appellants)1 appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision rejecting claims 1—4, 6—16, and 18—
20 under 35 U.S.C. § 103(a) as unpatentable over Kim (US 2009/0049998
Al, published Feb. 26, 2009) and Mendes (US 7,086,328 Bl, issued Aug. 8,
2006). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 The Appeal Brief identifies Greenfield World Trade, Inc., as the real party
in interest. Appeal Br. 1.
Appeal 2016-004327
Application 13/628,902
CLAIMED SUBJECT MATTER
Claims 1,10, and 16 are independent. Claim 1 illustrates the claimed
subject matter, and reads:
1. A vertical juice extractor for extracting juice from a food,
comprising:
a bowl;
filter apparatus including a filter frame and at least one
filter screen disposed in the bowl, wherein the filter screen has a
plurality of filter openings and each filter opening has a first
diameter adjacent an inside of the filter apparatus and a second
diameter adjacent an outside of the filter apparatus and wherein
the first diameter is smaller than the second diameter; and
an auger disposed in the filter apparatus,
wherein the filter apparatus has a plurality of ribs
vertically disposed on an inner surface of the filter apparatus, and
wherein the auger includes a blade originating at a first end
of the auger disposed spirally around an outer surface of the
auger a plurality of ribs disposed on a second end of the auger.
Appeal Br. 16 (Claims App.).
ANALYSIS
Appellants argue the patentability of claims 1—4, 6—16, and 18—20 as a
group. Appeal Br. 8—15. We select claim 1 as representative, and the
remaining claims of the group stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv).
As to claim 1, the Examiner finds that Kim discloses a vertical juice
extractor comprising a filter apparatus 300 including a filter screen 320
having a plurality of openings, but does not disclose that “each filter opening
has a first diameter adjacent an inside of the filter apparatus and a second
diameter adjacent an outside of the filter apparatus and wherein the first
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Application 13/628,902
diameter is smaller than the second diameter.” Final Act. 2, 5. The
Examiner finds that Mendes discloses a filter 21, 49 with slits 22, 50 of
increasing diameter from the inside to the outside to facilitate juice passing,
self cleaning, etc. Id. at 5. The Examiner concludes that it would have been
obvious in view of Mendes to design the filter holes in Kim with increasing
diameter from the inside to the outside of the filter, because this provides an
expanded flow channel through the filter, allowing easy cleaning and fast
flow. Id. The Examiner determines that this modification would have been
within the ability of one of ordinary skill in the art based on the teachings of
Mendes. Id.
Appellants contend that the Examiner’s rationale for modifying Kim
in view of Mendes is improperly based on Appellants’ disclosure. Appeal
Br. 8—9. In that regard, Appellants contend that the Examiner has not
identified any disclosure in Mendes, Kim, or elsewhere, of “changing
diameter through an opening/slit in order to facilitate or enhance juice flow.”
Id. at 10. Appellants contend that the Examiner misapplies the concept of
inherency. Id. at 14 (citing In re Rijckaert, 9F.3d 1531, 1534 (Fed. Cir.
1993)); see also Reply Br. 2-A.
We are not persuaded. Mendes describes that the “perforating tube
(21) [has] multiple transverse slits (22) of increasing diameter from inside to
outside,” and “slits (50) of this tube [49 have] an increasing diameter from
inside to outside of the tube.” Mendes, col. 7,11. 55—56, col. 8,11. 13—14,
Figs. 4, 11. Mendes further describes that “[t]he juice is filtered by the slits
(22) which by its configuration is self cleaning, passing through a chamber
(11) formed by the juice collector (25) and the peeler (23).” Id. at 5:17—19
(emphasis added). We understand this description in Mendes to mean that
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Application 13/628,902
slits 22 have a configuration making them “self cleaning.” This description
supports the Examiner’s finding that Mendes discloses slits 22, 50 of
increasing diameter from the inside to the outside of the filter to facilitate
self cleaning. Final Act. 5.
The Examiner reasons that modifying the filter holes of Kim to have
the claimed opening structure would allow easy cleaning or self cleaning.
Final Act. 5. This reasoning is supported by Mendes’ disclosure that the
slits of increasing diameter from the inside to the outside of the filter
facilitate self cleaning, and is not based on Appellants’ disclosure.2 Thus,
the Examiner has articulated a sufficient reason with a rational underpinning
to combine the teachings of Kim and Mendes to produce the claimed vertical
juice extractor. Appellants have not apprised us of error in the Examiner’s
finding, or in the Examiner’s rationale of incorporating Mendes’ self
cleaning feature in Kim.
Even if Mendes does not explicitly describe that “changing diameter
through an opening/slit in order to facilitate or enhance juice flow,” the
reason to modify a prior art reference may often prompt a person of ordinary
skill in the art to do what the inventors have done, but for a different purpose
or to solve a different problem; it is not necessary that the prior art suggest
the modification to achieve the same advantage or result discovered by an
applicant. See, e.g., In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006); In re
Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) (citing In re Dillon, 919 F.2d
688, 693 (Fed. Cir. 1990) (en banc) (“Although the motivation to combine
2 See In re Cree, 818 F.3d 694, 702, n.3 (Fed. Cir. 2016) (Appellant’s
hindsight argument is of no moment where the Examiner provides a
sufficient, non-hindsight reason to combine the references).
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Application 13/628,902
here differs from that of the applicant, the motivation in the prior art to
combine the references does not have to be identical to that of the applicant
to establish obviousness.”)).
Further, Appellants do not explain persuasively why the “self
cleaning” feature that Mendes discloses is provided by the opening
configuration in the perforated tube would not “facilitate or enhance juice
flow” through the perforated tube, at least some cases, in the combination.
The Examiner has provided a detailed explanation as to how a channel with
an increasing diameter from the inside to an outside of a filter can provide
advantageous juice flow through the filter, which is associated with self
cleaning. Ans. 7. The Examiner’s analysis appears to be credible. We have
considered Appellants’ position. Reply Br. 4—5. As persons of scientific
competence in the fields in which they work, examiners are responsible for
making findings, informed by their scientific knowledge, as to the meaning
of prior art references to persons of ordinary skill in the art and the
motivation those references would provide to such persons. Absent legal
error or contrary factual evidence, those findings can establish a prima facie
case of obviousness. In re Berg, 320 F.3d 1310, 1315 (Fed. Cir. 2003).
Even if Mendes does not explicitly describe such enhanced juice flow, an
artisan must be presumed to know something about the art apart from what
the reference discloses {see In re Jacoby, 309 F.2d 513, 516 (CCPA 1962),
and the Examiner’s analysis can rely on the inferences and creative steps
that a person of ordinary skill in the art would employ (KSR Int 7 Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007)).
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Appellants also contend that:
there is no way one skilled in the art would separate the
perforating tube 49 having the transverse slits 50 from the piston
48, as the piston 48 and cutting edge appear necessary for the
self-cleaning aspect of the Mendes device. One skilled in the art
would not expect incorporation of the transverse slits 50 into the
juice extractor of Kim to necessarily provide a self cleaning
function alone.
Appeal Br. 11 (emphasis added).
This contention is not persuasive. Mendes describes:
The piston (48) contains a cutting edge which projects
itself out of the tube (49) at the end of the opening cycle of the
peelers, so that it totally cleans the interior of this tube which
contains a plurality transverse slits (50) which have increasing
diameters from inside to outside, in a manner to facilitate the self
cleaning.
Mendes, 6:36-41 (emphasis added). We understand this description to mean
that the cutting edge of piston 48 “facilitates” the “self cleaning,” that is, the
self cleaning of transverse slits 50. We note an ordinary meaning of
“facilitate” is “to make easier: help bring about.” Merriam-Webster’s
Collegiate® Dictionary 447 (11th ed. 2003). Consistent with this ordinary
meaning of “facilitate,” and the noted description in Mendes, we understand
that piston 48 “makes easier” the self cleaning of the transverse slits of the
filter. We are not persuaded by Appellants’ contentions that piston 48 and
its cutting edge are necessary to provide any self cleaning of Mendes’
perforated tube.
Appellants contend that the Examiner has not explained how Mendes’
tube 49 and piston 48 could be separated and function independently (with
regard to facilitating self cleaning), or how piston 48 could be engineered to
work with Kim’s strain net 320. Appeal Br. 13—14. To the extent
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Appellants are contending that the structures of Kim and Mendes must be
physically combinable with each other, “[i]t is well-established that a
determination of obviousness based on teachings from multiple references
does not require an actual, physical substitution of elements.” In re Mouttet,
686 F.3d 1322, 1332 (Fed. Cir. 2012); In re Sneed, 710 F.2d 1544, 1550
(Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references
be physically combinable to render obvious the invention under review.”
(citation omitted)). We are not persuaded that the Examiner’s combination,
without such bodily incorporation of Mendes’ piston 48, would be unable to
meet the claim limitations.
Appellants also contend that the slits in Mendes’ perforated tube and
the strain net of Kim encounter different materials and perform different
functions. Appeal Br. 11. Particularly, Appellants contend that Kim’s strain
net 320 separates liquid juice from solid draff, whereas transverse slits 50 of
Mendez only encounter juice. Id. at 12.
Even if Mendes does not describe separating liquid juice from solid
draff, it appears that Mendes’ perforated tube would be exposed to some
amount of solid material during operation based on Mendes’ disclosure that
the cutting edge of piston 48 “totally cleans the interior of this tube.” See
Mendes 6:36—38. Further, Appellants do not provide any persuasive reason
why modifying the openings in Kim’s strain net 320 to have an opening
structure, as taught by Mendes, would prevent the modified stain net 320
from separating liquid juice from solid draff.
For these reasons, we sustain the rejection of claim 1 as unpatentable
over Kim and Mendes. Claims 2-4, 6—16, and 18—20 fall with claim 1.
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DECISION
The Examiner’s decision to reject claims 1—4, 6—16, and 18—20 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended according to 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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