Ex Parte Fern

Patent Trial and Appeal Board

Aug 22, 2016

13106480 (P.T.A.B. Aug. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/106,480 05/12/2011 Steven J. Fern
86056 7590 08/24/2016
Cuenot, Forsythe & Kim, LLC
5425 Park Central Court
Suite 111
Naples, FL 34109
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.
7049-0002 5370
EXAMINER
SHEARER, DANIEL R
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
08/24/2016 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):
sakptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED S'I'A'fES P ATE1'-l'f AND 'TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN J. FERN
Appeal2014-005049
Application 13/106,4801
Technology Center 3700
Before STEFAN STAICOVICI, GEORGE R. HOSKINS, and
LEE L. STEPINA, Administrative Patent Judges.
ST AI CO VICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Steven J. Fem (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner's final decision rejecting claims 1-20. We have jurisdiction over
this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM-IN-PART and enter a NEW GROUND of REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
According to Appellant, the real party in interest is the inventor, Dr.
Steven J. Fem. Br. 3 (filed Sept. 19, 2013).
Appeal2014-005049
Application 13/106,480
INVENTION
Appellant's invention relates to "a device for dispensing of lubricating
jelly." Spec. ,-r 6.
Claims 1, 9, and 20 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. An automatic lubricant dispenser comprising:
a top component comprising at its front end a dispensing
component, the dispensing component comprising a dispensing
valve for dispensing the lubricant,
a base for supporting the dispenser on a flat surface, and
a middle component connecting the top component to the
base, wherein the front portion of the top component extends
away from the middle of the front portion of the middle
component at least 5 cm.
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 1--4, 9-11, 13-16, 18, and 19
under 35 U.S.C. § 103(a) as being unpatentable over Mazursky
(US 2004/0226962 Al, pub. Nov. 18, 2004).
II. The Examiner rejected claims 5, 17, and 20 under 35 U.S.C.
§ 103(a) as being unpatentable over Mazursky and Binderbauer
(US 4,921,131, iss. May 1, 1990).
III. The Examiner rejected claims 5 and 6 under 35 U.S.C. § 103(a)
as being unpatentable over Mazursky and Nowak (US
2003/0071066 Al, pub. Apr. 17, 2003).
IV. The Examiner rejected claim 7 under 35 U.S.C. § 103(a) as
being unpatentable over Mazursky, Binderbauer or Nowak, and
Zaima (US 2011/0011886 Al, pub. Jan. 20, 2011).
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Application 13/106,480
V. The Examiner rejected claim 7 under 35 U.S.C. § 103(a) as
being unpatentable over Mazursky, Binderbauer or Nowak, and
DeLine (US 2009/0048706 Al, pub. Feb. 19, 2009).
VI. The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as
being unpatentable over Mazursky and Zaima or DeLine.
VII. The Examiner rejected claim 12 under 35 U.S.C. § 103(a) as
being unpatentable over Mazursky and Poitras (US 3,952,918,
iss. Apr. 27, 1976).
ANALYSIS
Rejection I
Claims 1--4, 9, 11, 13-16, 18, and 19
The Examiner finds that Mazursky discloses most of the limitations of
independent claims 1 and 9, but "fails to disclose that the front portion of the
top component extends away from the middle of the front portion of the
middle component at least 5 [cm]," as per claim 1, and "the height of the
middle component is at least 15 cm," as per claim 9. Final Act. 2
(transmitted Apr. 23, 2013). However, because the Examiner finds that
Mazursky' s dispenser exhibits a similar shape as the claimed automatic
lubricant dispenser, the Examiner then concludes that:
It would have been obvious to one having ordinary
skill in the art at the time the invention was made
to have scaled the device of Mazursky such that
the length of the front portion of the top
component was at least 15 cm, [and] the height of
the middle component was at least 15 cm ... to
achieve a desired fluid capacity or footprint size,
especially since it has been held that, where the
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Application 13/106,480
only difference between the prior art and the
claims was a recitation of relative dimensions of
the claimed device and a device having the
claimed relative dimensions would not perform
differently than the prior art device, the claimed
device was not patentably distinct from the prior
art device.
Id. at 3 (citing MPEP § 2144.04).
Appellant argues that in contrast to the Examiner's position,2 "the
relevant dimension in this case causes the claimed device to perform
differently than the Mazursky device." Br. 9. According to Appellant, "the
distance between the front portion of the top component from the middle of
the front portion of the middle component in the claimed device reduces the
likelihood that a user's hand might contaminate the middle of the front
portion of the middle component" and this is "an advantage not disclosed in
Mazursky." Id.
We are not persuaded by Appellant's argument as Mazursky
specifically discloses that a purpose of its dispenser is "to obtain soap
without touching the dispenser." Mazursky i-f 4 (emphasis added). As such,
Mazursky' s dispenser functions in the same manner as the claimed
dispenser, that is, dispensing fluid without touching the dispenser. See Spec.
i-f 22. Accordingly, as the dispenser of Mazursky has a similar shape and
function as the claimed dispenser, we agree with the Examiner that a person
2 Appellant understands that the Examiner's position relies on Gardner
v. TEC Systems, Inc., 725 F.2d 1338 (Fed. Cir. 1984), which according to
Appellant, holds "that a difference in a dimension of an element can make a
claimed device patentable over the prior art device if the difference causes
the claimed device to perform differently than the prior art device." Br. 8-9.
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Application 13/106,480
of ordinary skill in the art would have readily determined its dimensions
such that a user will be able to dispense fluid without touching the dispenser.
We also do not agree with Appellant's argument that the Examiner's
reliance on Figure 1 of Mazursky is in error. See Br. 9. Although we
appreciate that Mazursky does not indicate that Figure 1 is drawn to scale,
and thus, cannot be relied upon to define precise proportions of elements,
nonetheless, that does not mean, "that things patent drawings show clearly
are to be disregarded." In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972). A
drawing teaches all that it reasonably discloses and suggests to a person of
ordinary skill in the art. In re Aslanian, 590 F.2d 911, 914 (CCPA 1979). In
this case, we agree with the Examiner that "the drawings are being relied
upon to show the shape of the device, [and] not 'precise proportions' as
argued[, by the Appellant]." Ans. 11.
Lastly, Appellant argues that, "the [E]xaminer's conclusion that
[A]ppellant's recited dimensions would have been an obvious design choice
depending on the desired fluid capacity is not supported by any evidence."
Br. 9. According to Appellant, the Examiner's reasoning for modifying the
automatic liquid dispenser of Mazursky lacks rational underpinnings,
because a lubricant dispenser could clearly be
made with very small or very large fluid capacities
without having "a middle component connecting
the top component to the base, wherein the front
portion of the top component extends away from
the middle of the front portion of the middle
component at least 5 cm." For example, such a
device could be made with a huge reservoir
contained within a column at the back of the
device - without the need to expand the distance
between the front portion of the top component
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Application 13/106,480
from the middle of the front portion of the middle
component.
Id. at 10.
The Supreme Court approved of the principle in Sakraida v. Ag Pro,
Inc., 425 U.S. 273, 282 (1976) that "when a patent 'simply arranges old
elements with each performing the same function it had been known to
perform' and yields no more than one would expect from such an
arrangement, the combination is obvious." KSR Int 'l Co. v. Teleflex, Inc.,
550 U.S. 398, 417 (2007). This principle applies when the old elements in
the prior art perform the same function as the now claimed structures. See In
re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (use of claimed feature solves no
stated problem and presents no unexpected result and "would be an obvious
matter of design choice within the skill of the art"). In this case, because the
dimensions of Appellant's claimed automatic lubricant dispenser perform the
same function and provide the same advantage, namely, to dispense fluid
without touching the dispenser, we are not persuaded that the Examiner's
design choice rationale is in error. Moreover, we agree with the Examiner
that merely because Appellant has set forth an alternate manner in which "to
achieve a desired fluid capacity [or footprint size,]" does not establish error
in the Examiner's reasoning. See Ans. 12.
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103(a) of claims 1 and 9 as being unpatentable over
Mazursky.
With respect to the rejection of claims 13 and 15, Appellant argues
that Mazursky fails to disclose a lubricant volume controller, as per claim
13, or that the amount of lubricant dispensed per activation is between 2-10
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Application 13/106,480
ml, as per claim 15. Br. 10. We are not persuaded by Appellant's
arguments because as the Examiner correctly finds, Mazursky specifically
discloses "a user control ... to select the amount of liquid to be dispensed."
Ans. 12 (citing Mazursky i-f 27). We further agree with the Examiner that it
would have been obvious to a person of ordinary skill in the art "to have
adjusted the amount of lubricant dispensed by Mazursky to be between 2-10
mL depending on the type of material dispensed and the specific application
for the material." Final Act. 3. Moreover, we note that Appellant has not
shown "that the [claimed] range is critical" or that it "achieves unexpected
results." See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). We
thus, likewise sustain the rejection of claims 13 and 15 as unpatentable over
Mazursky.
As to the rejection of claim 16, Appellant argues that Mazursky's
Figure 2 "shows dispensing spigot 38 protruding from the top component"
and not "recessed in an opening or bore on the underside of the front portion
of the top component." Br. 10; see also id. at 18 (Claims App.). We are not
persuaded by Appellant's argument because claim 16 requires that "the
dispensing valve" is recessed in an opening or a bore, whereas element 38 is
not a dispensing valve, but rather a dispensing spigot. See Ans. 12; see also
Mazursky i-f 25. We thus, agree with the Examiner that Mazursky's
dispensing valve 36 is recessed in an opening in the top component (upper
portion 20). See Ans. 12; see also Mazursky, Fig. 2. Hence, we also sustain
the rejection of claim 16.
Lastly, in regards to the rejection of claims 2--4, 11, 14, 18, and 19,
Appellant relies on the arguments presented supra in the rejection of claims
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1 and 9, from which these claims depend. See Br. 10. Therefore, for the
same reasons as discussed above, we also sustain the rejection of claims 2--4,
11, 14, 18, and 19 as being unpatentable over Mazursky.
Rejections II, III, and VII
Claims 5, 6, 12, and 17
Appellant relies on the arguments presented supra in the rejection of
claims 1 and 9, from which these claims depend. See Br. 11, 15. Therefore,
for the same reasons as discussed above, we sustain the rejections under
35 U.S.C. § 103(a) of claims 5 and 17 as being unpatentable over Mazursky
and Binderbauer; of claims 5 and 6 as being unpatentable over Mazursky
and Nowak; and of claim 12 as being unpatentable over Mazursky and
Poitras.
Rejections IV-VI
In addition to the arguments presented supra in the rejection of claims
1 and 9 (see Br. 12-15), which were not persuasive, Appellant further
argues that, "although Zaima mentions that the device's main housing can be
made of an anti-microbial material" (see id. at 12) and "DeLine indicates
that a handle of the fuel dispenser may contain an anti-microbial material"
(see id. at 14), the prior art applied by the Examiner in these rejections fails
to disclose that the anti-microbial material is applied to a "contamination
guard," as per claim 7, or "the front portion of the middle component," as
per claim 8. Thus, according to Appellant, the Examiner's reasoning to
combine the teachings of Mazursky, Binderbauer, Nowak, Zaima, and
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Application 13/106,480
DeLine in various combinations, as per Rejections IV-VI, is based on
impermissible hindsight because "the [E]xaminer appears to have
impermissibly used [A ]ppellant' s own specification - not the prior art - to
find rationale for supporting the rejection[s]." Br. 12.
Appellant's argument appears to be holding the Examiner to the old
teaching, suggestion, or motivation ("TSM") standard where there must be
some suggestion or motivation, either in the references themselves or in the
knowledge generally available to one of ordinary skill in the art, to modify
the reference or to combine reference teachings; such a standard is not
required. KSR, 550 U.S. at 415 ("We begin by rejecting the rigid
[application and requirement of a TSM to combine known elements in order
to show obviousness]"). The proper inquiry is whether the Examiner has
articulated adequate reasoning based on a rational underpinning to explain
why a person of ordinary skill in the art would have been led to combine the
teachings ofMazursky, Binderbauer, Nowak, Zaima, and DeLine in the
various combinations of Rejections IV-VI.
In this case, the Examiner is correct that Zaima and DeLine disclose
the general use "of an anti-microbial material" "on various components of
dispensers to prevent the growth of contaminating organisms." Ans. 12; see
also Final Act. 6 (citing Zaima i-f 31 ), id. at 7-8 (citing DeLine i-f 60).
Although we appreciate that Zaima and DeLine do not disclose the claimed
locations, nonetheless, in light of Mazursky's teaching of dispensing fluid
without touching the dispenser to avoid contamination (see Mazursky i-f 4),
we agree with the Examiner that it would have been obvious for a person of
ordinary skill in the art to provide an anti-microbial material, as taught by
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either Zaima or DeLine, "on any component of [the] dispenser [of
Mazursky] where it would be desired to prevent the growth of contaminating
organisms." Ans. 12-13. Therefore, because the Examiner states adequate
reasoning for the modification of Mazursky's automatic liquid dispenser
with the anti-microbial material of Zaima or DeLine, that we determine is
supported by sufficient facts, we are not persuaded that the Examiner relied
on impermissible hindsight, as Appellant urges, but rather on the knowledge
of those skilled in the art at the time of the invention.
In conclusion, for the foregoing reasons, we sustain the rejections
under 35 U.S.C. § 103(a) of claim 7 as being unpatentable over Mazursky,
Binderbauer or Nowak, and Zaima or DeLine, and of claim 8 as being
unpatentable over Mazursky and Zaima or DeLine.
Claims 10 and 20
We shall not sustain the Examiner's rejections under 35 U.S.C.
§ 103(a) of claim 10 as being unpatentable over Mazursky and of claim 20
as being unpatentable over Mazursky and Binderbauer. See Final Act. 2-5.
For the reasons expressed below, claims 10 and 20 are indefinite for failing
to particularly point out and distinctly claim the invention. Therefore, the
prior art rejections must fall because they necessarily are based on
speculative assumptions as to the meaning of the claims. See In re Steele,
305 F.2d 859, 862---63 (CCPA 1962). It should be understood, however, that
our decision in this regard is based solely on the indefiniteness of the
claimed subject matter, and does not reflect on the adequacy of the prior art
evidence applied in support of the rejections.
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Application 13/106,480
NEW GROUND OF REJECTION
We make the following new ground of rejection pursuant to
37 C.F.R. § 41.50(b).
Claims 10 and 20 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
Each of claims 10 and 20 requires, inter alia, a "top component [that]
has a spout-like shape." Br. 17, 19 (Claims App.). It is well settled that
"even if a claim term's definition can be reduced to words, the claim is still
indefinite if a person of ordinary skill in the art cannot translate the
definition into meaningfully precise claim scope." Haliburton Energy
Services, Inc. v. M-I LLC, 514 F.3d 1244, 1251 (Fed. Cir. 2008). Although
patentees are allowed to claim their inventions broadly, they must do so in a
way that distinctly identifies the boundaries of their claims. Id. at 1253.
Appellant has not identified, nor could we find, description in the
Specification that clearly sets forth the metes and bounds of the phrase
"spout-like," as called for by claims 10 and 20. Appellant's Specification
describes top component as "hav[ing] a spout-like shape." Spec. i-f 16. An
ordinary and customary meaning of the term "spout" is "a pipe, tube, or
liplike projection through or by which a liquid is discharged, poured, or
conveyed." http://www.dictionary.com/browse/spout (last visited August
13, 2016). As such, in light of the Specification and the ordinary and
customary meaning of the term "spout," a wide variety of shapes can be
considered "spout-like" as the term includes any shape that includes a pipe,
tube, or projection from which liquid is discharged. Accordingly, the term
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"spout-like" lacks sufficient precision so that one endeavoring to evaluate
the possibility of infringing the claims could not determine the metes and
bounds thereof.
In light of the above, we conclude that claims 10 and 20 are indefinite
for failing to particularly point out and distinctly claim the invention.
SUMMARY
The Examiner's decision to reject claims 1-20 is affirmed as to claims
1-9 and 11-19 and reversed as to claims 10 and 20.
We enter a new ground of rejection of claims 10 and 20 under 35 U.S.C.
§ 112, second paragraph, as being indefinite.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the Examiner, in which event the prosecution will be
remanded to the Examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
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Application 13/106,480
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
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