Ex Parte Hensel

Patent Trial and Appeal Board

Aug 9, 2016

13306946 (P.T.A.B. Aug. 9, 2016)

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.
13/306,946 11/29/2011 Keith James Hensel BRE1140U 6280
33372 7590 08/09/2016
MICHAEL MOLINS
MOLINS & CO. PTY. LTD.
SUITE 6, LEVEL 1
88 MOUNTAIN STREET
ULTIMO NSW, 2007
AUSTRALIA
EXAMINER
HOANG, TU BA
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
08/09/2016 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 KEITH JAMES HENSEL
____________

Appeal 2014-006258
Application 13/306,946
Technology Center 3700
____________

Before STEFAN STAICOVICI, GEORGE R. HOSKINS, and
AMANDA F. WIEKER, Administrative Patent Judges.

HOSKINS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Keith James Hensel (“Appellant”)1 appeals under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 15–32 in this application.
Claims 1–14 have been canceled. Br. 2, 28 (Claims App.). The Board has
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).

1 The Appeal Brief identifies Breville Pty Limited as the real party in
interest. Br. 2.
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CLAIMED SUBJECT MATTER
Claim 15 is the sole independent claim on appeal, and it recites:
15. A citrus press device with a motor for rotating a citrus
reamer comprising:
a housing containing a motor for driving the reamer;
the arm being hinged to the housing at one end and having
a handle at a free end;
the arm supporting for movement toward the reamer, a
fruit dome that cooperates with the reamer;
the reamer having primary ribs, each rib having an apex,
the apex comprising an elevated projection;
the elevated projections spaced from and surrounding a
central pin that acts as a spacer between the reamer and the dome.
Br. 28 (Claims App.).
REJECTIONS ON APPEAL
Claim 31 stands rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite.
Claims 15–17 and 31 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over De Zarate (US 4,706,559, iss. Nov. 17, 1987), Reinecke
(US Des. 139,794, iss. Dec. 19, 1944), and Jakovicz (US 2,306,884, iss.
Dec. 29, 1942).
Claims 18–22 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over De Zarate, Reinecke, Jakovicz, and Ruck (US Des. 366,992, iss. Feb. 13,
1996).
Claims 23 and 27 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over De Zarate, Reinecke, Jakovicz, and Egana (US 6,155,164,
iss. Dec. 5, 2000).
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Claim 24 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
De Zarate, Reinecke, Jakovicz, Egana, and Matsumoto (US 4,530,277, iss.
July 23, 1985).
Claim 25 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
De Zarate, Reinecke, Jakovicz, and Matsumoto.
Claim 26 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
De Zarate, Reinecke, Jakovicz, and Elliott (US 1,933,621, iss. Nov. 7, 1933).
Claim 28 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
De Zarate, Reinecke, Jakovicz, and Hubrich (US 3,566,939, iss. Mar. 2,
1971).
Claim 29 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
De Zarate, Reinecke, Jakovicz, and Easley (US 438,069, iss. Oct. 7, 1890).
Claim 30 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
De Zarate, Reinecke, Jakovicz, and Crowe (US 1,995,670, iss. Mar. 26, 1935).
Claim 32 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
De Zarate, Reinecke, Jakovicz, and Preston (US Des. 89,652, iss. Apr. 18,
1933).
ANALYSIS
A. Indefiniteness—Claim 31
In rejecting claim 31 as indefinite, the Examiner determines “it [is]
unclear if [Appellant] intends to claim parts of the device, or the method
steps associated with the device” where the claim recites “a switch that is
depressed when a main shaft of the motor is depressed.” Final Act. 2.
Appellant does not address the § 112 rejection in the Appeal Brief. See, e.g.,
Br. 26. We, therefore, summarily sustain the rejection of claim 31 as
indefinite.
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B. Obviousness over De Zarate, Reinecke, and Jakovicz—
Claims 15–17 and 31
In rejecting independent claim 15, the Examiner finds De Zarate
discloses a motor-driven rotating reamer (extractor head 25) and a
cooperating fruit dome (cap 33) for pressing a citrus. Final Act. 3 (citing
De Zarate, Fig. 1). The Examiner also finds De Zarate has, as claimed, a
central pin (protuberance 26) that acts as a spacer between reamer 25 and
dome 33. Id. The Examiner finds De Zarate’s reamer 25 lacks the claimed
“ribs, each rib having an apex . . . comprising an elevated projection.” Id.
The Examiner cites Reinecke as disclosing a reamer having ribs, with
each rib having an apex comprising an elevated projection. Id. (citing
Reinecke, Figs. 1–3). The Examiner determines it would have been obvious
to incorporate Reinecke’s ribs in De Zarate’s reamer 25, “thereby yielding a
protuberance (i.e. central pin) surrounded by ribs and at a higher elevation
than the ribs.” Id. at 4. The stated reasoning for this combination is to
provide De Zarate’s reamer 25 “with portions formed to grip the fruit section
and prevent undue slipping during use of the device (col. 4, ln. 50–70 of
Jakovicz).” Id. (emphasis added).2 The Examiner further cites Jakovicz as
“show[ing] surrounding the central axis of the reamer with ribs (as seen in
Jakovicz’s Figure 2).” Ans. 12, 15.
Appellant argues the Examiner’s proffered reason for modifying
De Zarate—prevention of undue slipping during use of reamer 25—is not a
rational underpinning for the modification. Br. 12, 15–17. Appellant
contends Reinecke “is a design patent that provides little or no teaching in

2 We, like the Examiner and Appellant, cite to Jakovicz by specifying one
of the four columns therein, and corresponding line numbers.
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regards to any operation of the reamer.” Id. at 16. Appellant further
contends De Zarate’s device extracts juice from a fruit section by pressing
the fruit section between dome 33 and rotating reamer 25, whereas Jakovicz
discloses “a fruit press juicer, which does not suggest inclusion of a rotating
reamer.” Id. at 12. Based on this difference in operation, Appellant
contends Jakovicz’s teaching of “rib-like parts being formed to grip the cut
edge of the fruit section and prevent undue slipping thereof” (Jakovicz,
4:65–67) fails to provide a rational basis for modifying De Zarate’s rotating
reamer 25 to include the claimed ribs. Br. 12, 15–16.
We are persuaded that prevention of undue slipping between
De Zarate’s rotating reamer 25 and the fruit section during use, in light of
Reinecke and Jakovicz, is not a rational basis for modifying De Zarate’s
reamer to include ribs. Reinecke discloses six ribs on a mound in a “fruit
juicer.” Reinecke, claim, Figs. 1–3. Nonetheless, Reinecke does not suggest
that the ribs function to prevent undue slipping between Reinecke’s ribbed
mound and the fruit section. Indeed, a person of ordinary skill in the art
would understand Reinecke functions to extract juice by relative rotation
between the ribbed mound and the fruit section, in order for the ribs to assist
in juice extraction. Accordingly, such relative rotation would involve some
slippage between the ribbed mound and the fruit section.
Jakovicz discloses two different kinds of rib structures. The first are
radial ribs 19 disposed on top of funnel member 17, which function to
support fruit receiving member 20 thereon, and form spaces 21 to permit
juice passing through openings 22 in member 20 to flow down to spout 18.
Jakovicz, Figs. 2, 4, 5, and 2:14–19, 2:29–34. The second are annular
ribs 24 disposed on top of member 20, “to provide a gripping surface for the
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pulp of the fruit operated upon so that the fruit section will not slip relatively
thereto.” Id. at Figs. 1, 7, and 2:38–47. Thus, when reciting “rib-like parts”
at column 4, lines 50–70 (cited by the Examiner), Jakovicz is referring to
annular ribs 24, not radial ribs 19.
It is not clear how the structure of Jakovicz’s annular ribs 24 would
lead a person of ordinary skill in the art to modify De Zarate’s rotating
reamer 25 to include Reinecke’s radial ribs to prevent undue slipping
between reamer 25 and fruit during use. Jakovicz’s annular ribs 24 grip the
outer edges of the fruit section as plunger 27 presses the fruit section into
member 20, thereby providing a complete expressing of juice from the fruit
section. Jakovicz, 1:15–20, 2:38–56. That is a markedly different juicing
operation than De Zarate’s rotating of reamer 25 within the fruit section, as
the fruit section is pressed on to reamer 25 by cap 33. De Zarate, 2:11–33.
Due to the differences in structure and function between De Zarate and
Jakovicz, we determine the Examiner errs in determining it would have been
obvious to modify De Zarate’s rotating reamer 25 to include Reinecke’s ribs,
in light of Jakovicz, to prevent undue slipping between reamer and fruit
during use of De Zarate’s device.
Thus, we do not sustain the Examiner’s rejection of claim 15 as
unpatentable over De Zarate, Reinecke, and Jakovicz. The Examiner’s
additional consideration of dependent claims 16, 17, and 31 does not cure the
deficiency noted as to claim 15. Final Act. 3–4.
Moreover, Appellant argues for the patentability of claim 16 separately
from its parent claim 15, on the basis that “the Examiner has failed to identify
any suggestion that [Reinecke’s] elevated projections each comprise a spike”
as recited in claim 16. Br. 13. The Examiner maintains the apical projections
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of Reinecke’s ribs each comprise a “spike” as recited in claim 16. Ans. 13–
14. We are persuaded of Examiner error. The apical projections in Reinecke
are too rounded and smooth to be considered a “spike.” See Reinecke,
Figs. 2–3; Spec. Figs. 6(a)–6(b) (illustrating spike projections 245); Webster’s
New World Dictionary of American English (3rd College Ed., © 1988, Ed.
Victoria Neufeldt), 1291 (defining “spike” as “1 a long, heavy nail” or “2 a
sharp-pointed part or projection . . .”).
Appellant also argues for the patentability of claim 31 separately from
its parent claim 15, on the basis that the Examiner’s findings in support of
obviousness fail to consider claim 31 as a whole. Br. 14. The Examiner, due
to the indefiniteness rejection of claim 31, states: “For the purposes of
examining, examiner looked to the positive structural features of the claim.”
Final Act. 2; Ans. 14, 15–16. The Examiner then finds De Zarate discloses
“multiple switches associated with the activation of the citrus press
(switches 3, 34).” Final Act. 3. We are persuaded of Examiner error.
Claim 31 recites, in part, “a switch that is depressed when a main shaft of the
motor is depressed.” Neither of De Zarate’s switches 3 or 34 functions in that
manner. De Zarate, 2:57–61 and 3:46–48 (switch 3), 2:43–47 and 4:43–46
(switch 34). The Examiner’s indefiniteness rejection of claim 31 is not a
license to ignore claim language in the obviousness rejection.
For the foregoing reasons, we do not sustain the Examiner’s rejection of
claims 15–17 and 31 as unpatentable over De Zarate, Reinecke, and Jakovicz.3

3 Appellant also argues for the patentability of claim 17 separately from its
parent claim 15. Br. 13. Given the noted deficiency as to claim 15, we need
not explain why we are not persuaded by Appellant’s argument.
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C. Obviousness over De Zarate, Reinecke, Jakovicz, and Ruck—
Claims 18–22
The Examiner’s consideration of claims 18–22 in light of De Zarate,
Reinecke, Jakovicz, and Ruck does not cure the deficiency noted supra as to
the common parent independent claim 15. Final Act. 4–5.
Moreover, Appellant argues the Examiner additionally errs “by relying
on mere conclusory statements” as to obviousness of the dependent claims,
and submits there is no evidence to support the “obvious engineering design
choice’” rationale set forth by the Examiner. Br. 19–20. The Examiner
pertinently finds Ruck’s Figure 4 discloses the “compound profile” recited in
claims 18–20 and 22, and the “secondary ribs” recited in claim 21. Final
Act. 4. The Examiner determines it would have been obvious to use such
structures in De Zarate’s reamer 25, as already modified in view of the other
references, for the reason that “Ruck demonstrates[] the particular shape of the
ribs on the reamer is a matter of obvious engineering design choice.” Id. at 4–
5; Ans. 18. We are persuaded of Examiner error. The Examiner’s bare
“obvious engineering design choice” rationale for obviousness, in the
rejection presently on appeal, amounts to the “mere identification in the prior
art of each [claim] element,” without an explanation of the reason(s)
motivating a person of ordinary skill in the art to combine the references in the
manner claimed. In re Kahn, 441 F.3d 977, 986 (Fed. Cir. 2006). Such a
rejection does not establish obviousness. Id.
For the foregoing reasons, we do not sustain the Examiner’s rejection of
claims 18–22 as unpatentable over De Zarate, Reinecke, Jakovicz, and Ruck.
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D. Obviousness over De Zarate, Reinecke, Jakovicz, and Elliott—
Claim 26
The Examiner’s consideration of claim 26 in light of De Zarate,
Reinecke, Jakovicz, and Elliott does not cure the deficiency noted supra as to
the parent independent claim 15. Final Act. 7.
Moreover, Appellant argues the Examiner additionally errs in finding
Elliott discloses the “quadrilateral hinge” recited in claim 26. Br. 21–22. The
Examiner finds “Elliott teaches a fruit juice extractor with a quadrilateral
hinge design (as seen in Figs.).” Final Act. 7; Ans. 18. We are persuaded of
Examiner error. Appellant’s Specification shows and describes a quadrilateral
hinge as comprising three arms connected to the juicer housing by four
pivoting linkages. Spec. 11:29–34, Figs. 12–14. Elliott discloses nothing of
the kind. Elliott, Figs. 1, 2, and 1:50–64. Further, the Examiner does not
explain how, even under a broadest reasonable construction, Elliott might be
found to disclose a quadrilateral hinge. Final Act. 7; Ans. 18.
For the foregoing reasons, we do not sustain the Examiner’s rejection of
claim 26 as unpatentable over De Zarate, Reinecke, Jakovicz, and Elliott.
E. Other Obviousness Rejections
The Examiner’s consideration of claim 23–25,4 27–30, and 32 in light
of De Zarate, Reinecke, Jakovicz, and one or more of Egana, Matsumoto,
Hubrich, Easley, Crowe, and Preston, does not cure the deficiency noted supra
as to the parent independent claim 15. Final Act. 5–9. Therefore, we do not
sustain the obviousness rejections of these claims.

4 Appellant also argues for the patentability of claim 23 separately from its
parent claim 15. Br. 20. Given the noted deficiency as to claim 15, we need
not explain why we are not persuaded by Appellant’s argument.
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F. New Ground of Rejection—35 U.S.C. § 103(a)—Claim 15
We enter a new ground of rejection of claim 15 as being unpatentable,
under 35 U.S.C. § 103(a), over De Zarate and Reinecke.
De Zarate discloses a citrus press device comprising housing 1, 16,
and 20 containing motor 2 for driving reamer 25. De Zarate, Fig. 1.
De Zarate also discloses arm 30 hinged to housing component 16, 20 at one
end and having handle 31 at a free end, with arm 30 supporting dome 33 for
movement toward reamer 25 for cooperating with reamer 25. Id. De Zarate
further discloses central pin 26 acting as a spacer between reamer 25 and
dome 33. Id. Furthermore, although De Zarate’s reamer 25 has “appropriate
longitudinal grooves to facilitate squeezing” of the fruit between reamer 25
and dome 33 (see id. at 2:13–18, 4:17–24), De Zarate’s reamer 25 does not
have, as claimed, “primary ribs, each rib having an apex, the apex
comprising an elevated projection” with “the elevated projections spaced
from and surrounding” central pin 26.
Reinecke discloses an ornamental design for a “fruit juicer.”
Reinecke, claim, Figs. 1–3. Reinecke does not describe, in writing, how its
fruit juicer works. Nonetheless, we find a person of ordinary skill in the art
would understand the central mound of Reinecke’s fruit juicer is a reamer
structure, that operates by relative rotation between the reamer mound and a
fruit section pressed down on to the reamer mound. Such relative rotation
may be achieved by using the handle at the bottom of Reinecke’s fruit juicer,
and/or by twisting the fruit section by hand on top of the reamer mound. We
further find a person of ordinary skill in the art would understand the six
radial ribs on Reinecke’s reamer mound operate to enhance extraction of
juice from the fruit section by the reamer. See In re Jacoby, 309 F.2d 513,
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516 (CCPA 1962) (“Those skilled in the radiator art must be presumed to
know something about radiators apart from what the references disclose.”).
It would have been obvious to a person of ordinary skill in the art at
the time of Appellant’s invention to incorporate Reinecke’s radial reamer
ribs in De Zarate’s reamer 25, to aid the extraction of juice from the fruit
section performed by De Zarate’s reamer 25. A person of ordinary skill in
the art would understand both De Zarate and Reinecke concern rotational
reamer structures, and Reinecke’s radial ribs would aid the juice extraction
performed by De Zarate’s reamer 25, just as they aid the juice extraction
performed by Reinecke’s reamer structure. A person of ordinary skill in the
art would have known either to retain the “longitudinal grooves” in
reamer 25 (De Zarate, 2:13–18, 4:17–24) when adding the ribs to provide
two kinds of juice extraction structures and thereby increase extraction
efficiency, or to replace the longitudinal grooves with the ribs as the
predictable substitution of one element for another known in the field. See,
e.g., KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (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) (citing U.S. v. Adams, 383 U.S.
39, 40 (1966)).
Further, a person of ordinary skill in the art would have known to
retain De Zarate’s central pin 26 when adding the ribs, to maintain its
function of centering the fruit section on reamer 25. De Zarate, 4:17–23.
This would lead to the apical protrusions of Reinecke’s radial ribs, when
added to De Zarate’s reamer 25, being “spaced from and surrounding”
central pin 26, as recited in claim 15. In this way, the combination of
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De Zarate with Reinecke would have predictably led to the invention recited
in claim 15.
With respect to claims 16–32, although we decline to reject every
claim under our discretionary authority under 37 C.F.R. § 41.50(b), we
emphasize that our decision does not mean the remaining claims are
patentable. Rather, we merely leave the patentability determination of these
claims to the Examiner. See MPEP § 1213.02.
DECISION
The Examiner’s rejection of claim 31 as indefinite under 35 U.S.C.
§ 112, second paragraph, is affirmed.
The Examiner’s various rejections of claims 15–32 as unpatentable
under 35 U.S.C. § 103(a) are each reversed.
For the reasons discussed above, we enter a NEW GROUND OF
REJECTION of claim 15 pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b)
provides “[a] new ground of rejection pursuant to this paragraph shall not be
considered final for judicial review.” Section 41.50(b) also provides that
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. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .
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37 C.F.R. § 41.50(b)(1)–(2). 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)(1)(iv).
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)