Ex Parte Mathews et al

Patent Trial and Appeal Board

Jun 1, 2016

13551664 (P.T.A.B. Jun. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/551,664 07/18/2012 GARLAND MATHEWS
26389 7590 06/03/2016
CHRISTENSEN O'CONNOR JOHNSON KINDNESS PLLC
1201 THIRD A VENUE
SUITE 3600
SEATTLE, WA 98101-3029
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.
JBTPT144743 5007
EXAMINER
ATKISSON, JIANYING CUI
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
06/03/2016 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):
efiling@cojk.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARLAND MATHEWS, MICHAEL L. SUTER,
MARK R. JACKSON, KEVIN G. SOCHA, JOSE D. MILLA,
and GREGORY W. SCHRADER
Appeal2014-004535
Application 13/551,664
Technology Center 3700
Before JOHN C. KERINS, WILLIAM A. CAPP, and
GEORGE R. HOSKINS, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 26, 28-31, and 33-38 under 35 U.S.C. § 112, second
paragraph, as indefinite and/or missing essential matter, claims 31, 33, and
34 as unpatentable under 35 U.S.C. § 103(a) over Schrader (US
2006/0037494 Al, pub. Feb. 23, 2006) and Shinn (US 3,678,881, iss. July
25, 1972), and claims 26, 28-30, and 35-38 as unpatentable over Schrader,
Shinn, and Robinet (US 4,937,558, iss. June 26, 1990). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal2014-004535
Application 13/551,664
THE INVENTION
Appellants' invention relates to detecting an undesired material
release into a juice stream during the processing of juice from citrus fruit.
Spec. i-fi-f 12-13. Claim 31, reproduced below, is illustrative of the subject
matter on appeal.
31. A method of citrus juice processing comprising:
operating a plurality of citrus juice extractors each
comprising at least one citrus juice output having a flow of
juice therethrough and wherein at least one of the plurality of
citrus juice extractors upon a malfunction causes an undesired
material release along with the flow of citrus juice into the at
least one citrus juice output; and
detecting the undesired material release using at least one
undesired material release detector coupled to the at least one
citrus juice output, the at least one undesired material release
detector comprising
a housing coupled inline with the at least one juice
output,
a filter within the housing for permitting juice to flow
therethrough and for impeding the undesired material
release, and
at least one pressure sensor for sensing at least one
pressure change associated with the filter.
OPINION
Indefiniteness
Claims 26 and 28-30
The Examiner rejects claims 26, 28-31, and 33-38 as indefinite for
failing to particularly point out and distinctly claim the subject matter that
the inventor regards as the invention and as being incomplete for omitting
essential structural cooperative relationships of elements. Ans. 2. In
particular, the Examiner states that it is not clear how at least one detector is
associated with a plurality of extractors. Id. at 3. For purposes of
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illustration, the Examiner describes a hypothetical example of a system with
three detectors and five extractors and inquires how three detectors would be
coupled to five extractors with or without multiple extractors sharing a
single detector. Id. Similarly, with respect to claim 31, the Examiner states
that it is unclear how detection can be ensured if only one detector is
included in the system and it is coupled to less than all of the extractors in
the system. Id.
Appellants argue that a person of ordinary skill in the art would
recognize that no essential elements are unclaimed. Appeal Br. 10.
Appellants direct our attention of Figure 1 as illustrating an arrangement
where a single detector is coupled to a plurality of juice extractors. Id.
In response, the Examiner acknowledges that a configuration of one
detector to one juice extractor and a configuration of one detector to all juice
extractors would have a clear cooperative structural relationship between the
detectors and extractors. Ans. 10. However, the Examiner points out that
the claim reads on potential embodiments where it would be unclear as to
the structural relationship between at least one detector and a plurality of
juice extractors. Id. at 10-11.
Section 2172.01 of the Manual of Patent Examining Procedure
provides, in pertinent part, as follows:
a claim which fails to interrelate essential elements of the
invention as defined by applicant( s) in the specification may be
rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112,
second paragraph, for failure to point out and distinctly claim
the invention. See In re Venezia, 530 F.2d 956, 189 USPQ 149
(CCPA 1976); In re Collier, 397 F.2d 1003, 158 USPQ 266
(CCPA 1968). But see Ex parte Nolden, 149 USPQ 378, 380
(Bd. Pat. App. 1965) ("[I]t is not essential to a patentable
combination that there be interdependency between the
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Application 13/551,664
elements of the claimed device or that all the elements operate
concurrently toward the desired result"); Ex parte Huber, 148
USPQ 447, 448--49 (Bd. Pat. App. 1965) (A claim does not
necessarily fail to comply with 35 U.S.C. 112, second
paragraph where the various elements do not function
simultaneously, are not directly functionally related, do not
directly intercooperate, and/or serve independent purposes.).
MPEP § 2172.01 (9th ed., Rev. 11.2013, Nov. 2015). 35 U.S.C. § 112 places
the burden of precise claim drafting on the applicant. See In re Morris, 127
F.3d 1048, 1056-57 (Fed. Cir. 1997).
[A] patent must be precise enough to afford clear notice of what
is claimed, thereby" 'appris[ing] the public of what is still open
to them,' ... "in a manner that avoids "[a] zone of uncertainty
which enterprise and experimentation may enter only at the risk
of infringement claims [.]"
Nautilus, Inc. v. Biosig Instruments, Inc. 134 S.Ct. 2120, 2123 (2014) (cit.
omitted). We agree with the Examiner that claim 26 is unclear in terms of
the structural relationship between the claimed "at least one ... detector"
and the claimed "plurality of ... extractors." Claims 1A..pp.
We sustain the Examiner's Section 112 indefiniteness rejection of
independent claim 26 and claims 28-30 that depend therefrom.
Claims 31, 33, and 34
Independent claim 31 contains language concerning the coupling of
"at least one undesired material release detector" to "at least one citrus juice
output" that is substantially similar to the language that we considered in
connection with the Section 112 rejection previously discussed. Claims
App. In traversing the Section 112 rejection of claims 31, 33, and 34,
Appellants rely on the same arguments that we previously considered and
rejected with respect to claim 26. Appeal Br. 10. For essentially the same
reasons that we articulate above with respect to claim 26, we sustain the
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rejection of independent claim 31 and claims 33 and 34 that depend
therefrom.
Claims 35-38
In the final rejection, the Examiner states that:
it is not clear how the housing is structurally related to the
plurality of citrus juice processing extractors, whether all the
output[s] share the same housing or the housing [is] only
coupled to one of the plurality of outputs. If so, it is not clear
how the detection can be ensured when the extractor( s) not
coupled to the housing has (have) malfunction.
Final Action 3.
Appellants traverse the rejection by arguing that "if there is only one
detector it can be coupled to any citrus juice output. Moreover, since each
extractor 'upon a malfunction causes the undesired material release ... into
the at least one citrus juice output,' it is clear how the undesired material
release detector detects a malfunction." Appeal Br. 10.
In response; the Examiner reiterates that the corresponding
relationship between "a housing" and the "plurality [of] outputs of the
plurality of extractors" is not clear. Ans. 12. The Examiner states that is
unclear which of the one or more outputs contemplated by the claim
language "at least one juice output" corresponds to one housing. Id. In
response to Appellants' argument regarding a detector in claim 35, the
Examiner observes that claim 35 does not claim a "detector" per se. Id. The
Examiner concludes by stating:
when there are multiple extractors each with at least one output
and just one housing, and according to appellants' argument
above, one of the output[ s] can be chosen to be coupled to the
housing, it is not clear how the rest of the outputs where
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Id.
no such housing is connected for catching the passing of
undesirable material can detect the passing of undesirable
material.
In reply, Appellants argue that
while a "detector" is not recited in the body of independent
Claim 3 5, independent Claim 3 5 is directed to a method of
making an undesired material release detector for detecting an
undesired material release from a plurality of associated citrus
juice processing extractors each comprising at least one citrus
juice output having a flow of citrus juice therethrough and that
upon a malfunction causes the undesired material release along
with the flow of citrus juice into the at least one citrus juice
output.
Reply Br. 2-3 (citing the preamble of claim 35).
After reviewing claim 35, we are persuaded that the Examiner is
correct in determining that claim 35 is indefinite for essentially the same
reasons that we articulate above in connection with claim 26. Accordingly,
'lie sustain the Examiner's Section 112 indefiniteness rejection of claim 35
and of claims 36-38 that depend therefrom.
Unpatentability of Claims 31, 33, and 34
over Schrader and Shinn
Appellants argue claims 31, 33, and 34 as a group. Appeal Br. 11-14.
We select claim 31 as representative. See 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv)
(2015).
The Examiner finds that Schrader discloses every limitation of
claim 31 except for detecting an undesired release. Final Action 4--5. The
Examiner relies on Shinn as disclosing detection of an undesired release. Id.
at 5. The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art at the time of the invention to include Shinn' s
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" " ,..J " ,..J " " C' 1 ,..J ' " " LJ A ,..J" contammatwn uetectmg uevice m ~c11rauer s jUiCe extractor. 1u. J-\.CCorumg
to the Examiner, a person of ordinary skill in the art would have done this to
warn an operator to take appropriate action to avoid damage. Id.
Appellants traverse the rejection by arguing that Shinn discloses a
device for bypassing a small portion of the supply fluid flow through a filter.
Appeal Br. 12. Appellants also argue that Shinn is non-analogous art. Id.
In that regard, Appellants argue that Shinn is not in the same field of their
endeavor, which Appellants characterize as the field of citrus juice
processing extractors. Id. at 12-13. In addition, Appellants argue that Shinn
does not address the problem with which the inventors were faced, which
Appellants characterize as a malfunction of a juice extractor. Id. at 13.
Appellants also argue that a person of ordinary skill in the art would
not have combined Schrader with Shinn to achieve the claimed invention.
Id. Appellants argue that Shinn has been available for nearly 40 years and,
during that time, no one has used Shinn's teaching to address the problem of
malfunctioning citrus juice processing devices. Id. Finally, Appellants
argue that the Examiner engaged in impermissible hindsight in finding a
motivation to combine Schrader and Shinn. Id. at 13-14.
In response, the Examiner defends the use of Shinn as analogous art
by directing our attention to paragraph 8 of Appellants' Specification which
characterizes an undesired material release as contaminating the products
produced by juice extractor equipment. Ans. 13. The Examiner states that
Shinn solves the same or similar problem of detecting contamination in the
flow by capturing contaminating particles with a dimension greater than the
filter hole dimensions. Id. at 14 (citing Shinn, col. 2, 11. 67----69).
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vV e first address Appellants' argument that Shinn is used in bypassing
a portion of the fluid flow. It is well settled that it is not necessary for the
prior art to serve the same purpose as that disclosed in Appellants'
Specification in order to support the conclusion that the claimed subject
matter would have been obvious. See In re Linter, 458 F.2d 1013, 1016
(CCPA 1972). Whether used to detect contamination in the mainstream of a
fluid flow or within a by-pass thereof, Shinn discloses that it was known to
monitor and detect contamination in a fluid flow. See, e.g., Shinn, col. 3,
11. 1-15.
Turning now to the issue of analogous art, a reference qualifies as
prior art for an obviousness determination when it is analogous to the
claimed invention. See Innovention Toys, LLC. v. MGA Entertainment, Inc.,
637 F.3d 1314, 1321 (Fed. Cir. 2011). Two separate tests define the scope
of analogous art: (1) whether the art is from the same field of endeavor,
regardless of the problem addressed, and (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved. In re
Bigio, 381 F.3d 1320, 1325 (Fed.Cir. 2004). The "field of endeavor" test
asks if the structure and function of the prior art is such that it would be
considered by a person of ordinary skill in the art because of similarity to the
structure and function of the claimed invention as disclosed in the
application. Id. at 1325-26. "A reference is reasonably pertinent if ... it is
one which, because of the matter with which it deals, logically would have
commended itself to an inventor's attention in considering his problem." In
re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). "If a reference disclosure has
the same purpose as the claimed invention, the reference relates to the same
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Application 13/551,664
problem, and that fact supports use of that reference in an obviousness
rejection." Id. Whether a prior art reference is "analogous" is a question of
fact. Id. at 658.
We reject Appellants' argument that Shinn is non-analogous art. Both
Shinn and Appellants' invention are directed to detecting the presence of
contaminant particles in a flow of fluid. We reject Appellants' contention
that the "field of endeavor" is limited to Appellants' particular product
application, namely, juice extraction and processing. Shinn is analogous art
under either prong of the test enunciated in Bigio and Clay.
With respect to Appellants' hindsight argument, we disagree that the
Examiner engaged in impermissible hindsight. Armed with the teachings of
Schrader and Shinn, a person of ordinary skill in the art would have been
able to achieve a juice extraction apparatus with a particle contamination
detection capability as claimed. A person of ordinary skill in the art would
have been able to see that the teachings of Schrader and Shinn disclose
detecting contamination in a fruit juice extractor as claimed and would have
been able to perceive the benefit of doing so, using only foresight.
Finally, with respect to Appellants' argument that Shinn is almost 40
years old, we note that Appellants' argument is not accompanied by any
evidence that the fruit juice industry recognized a long-felt need for an
improved method of dealing with filter failure and resulting particle
contamination. Absent a showing of a long-felt need or the failure of others,
the mere passage of time without the claimed invention is not evidence of
nonobviousness. Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d
1317, 1324-25 (Fed. Cir. 2004).
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In view of the foregoing discussion, we determine the Examiner's
findings of fact are supported by a preponderance of the evidence and the
Examiner's legal conclusion of unpatentability is well-founded.
Accordingly, we sustain the Examiner's unpatentability rejection of claims
31, 33, and 34.
Unpatentability of Claims 26, 28-30, and 35-38
over Schrader, Shinn, and Robinet
Appellants argue claims 26, 28-30, and 35-38 as a group. Appeal
Br. 14--17. We select independent claim 26 as representative. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2015).
Appellants traverse the rejection, in part, by relying on the same
arguments that we previously considered and found unpersuasive in
connection with rejection of claim 31. Appeal Br. 15. We find those same
arguments equally unpersuasive here.
Appellants next argue that Robinet is non-analogous art. Appeal
Br. 16. Appellants argue that Robinet is not in the same field of endeavor,
neither is it pertinent to the problem faced by the inventors. Id. As with
claim 31, Appellants characterize the field of endeavor as citrus juice
processing and the problem as determining a malfunction in citrus juice
processing extractors. Id. Appellants characterize Robinet as dealing with
additives injected into a pipeline carrying petroleum, gas, or some other
chemical product. Id. at 15-16. Appellants contend that a skilled artisan
would recognize that detection of undesired material release in a juice
extractor is different from detecting additives in a chemical product.
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In response, the Examiner points to the following as common features
between the juice malfunction detection of Appellants' invention and the
additive detection in petroleum flow in Robinet:
(a) both deal with the problem of flow;
(b) both detect additives to the flow; and
( c) the additive causes flow stoppage.
Ans. 14--15. The Examiner concludes that, because Appellants and Robinet
are addressing similar flow problems, Robinet is analogous art. Id. at 15.
The Examiner adds that, since Robinet addresses detection of flow
conditions by detecting the position of a piston, Robinet is pertinent to the
problem of detecting flow contamination that results in clogging and the
movement of a filter plate. Id.
In addition, the Examiner points to Parkinson (US 3,442,248, iss.
May 6, 1969) as evidence that a person of ordinary skill in the art would
have known that a pressure differential attributable to a clogged filter plate
can cause a filter plate to move. Ans. 8; Final Action 8. We note that
Parkinson also discloses that it was known to use magnetic systems to
trigger generation of a signal indicating a clogged flow condition.
Parkinson, col. 1, 11. 40-72. 1
1 Although Parkinson is not cited as applied art in the Examiner's rejection,
we note that the Examiner has used Parkinson as evidence of background
knowledge that would have been known by a person of ordinary skill in the
art. This is an acceptable use of Parkinson. See Randall v Rea, 733 F.3d
1355, 1362-63 (Fed. Cir. 2013) (approving of the use of non-applied art as
evidence of the background knowledge of a person of ordinary skill in the
art).
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\Ve agree with the Examiner that Robinet is analogous art as it is
directed to monitoring and detecting abnormal flow conditions in a fluid
flow system. Ans. 14--15. 2
In view of the foregoing discussion, we determine the Examiner's
findings of fact are supported by a preponderance of the evidence and the
Examiner's legal conclusion of unpatentability is well-founded.
Accordingly, we sustain the Examiner's unpatentability rejection of
claims 26, 28-30, and 35-38.
DECISION
The decision of the Examiner to reject claims 26, 28-31, and 33-38 is
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)(l )(iv).
AFFIRMED
2 We do not agree with the Examiner's finding that Robinet discloses that a
petroleum pipeline additive is akin to a contaminant that causes a flow
stoppage. Ans. 15. Nevertheless, this is harmless error as Shinn is also
relied on as disclosing contaminant flow stoppage. Final Action 7. Robinet,
nevertheless, is useful for teaching that it was known to use a magnet in
conjunction with a movable piston to generate a signal that indicates the
presence of an abnormal flow condition.
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