Ex Parte Miller et al

Patent Trial and Appeal Board

Dec 31, 2013

11821485 (P.T.A.B. Dec. 31, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/821,485 06/25/2007 Brent A. Miller VIT.P0024C 7269
7590 01/02/2014
Edward G. Greive
Renner, Kenner, Greive, Bobak, Taylor & Weber
Fourth Floor, First National Tower
Akron, OH 44308-1456
EXAMINER
COOLEY, CHARLES E
ART UNIT PAPER NUMBER
1774
MAIL DATE DELIVERY MODE
01/02/2014 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 BRENT A. MILLER,
RICHARD D. BOOZER, and
MICHAEL D. ANTON
____________

Appeal 2012-012353
Application 11/821,485
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, LINDA M. GAUDETTE, and
DONNA M. PRAISS, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1-11, 13-15, 17-19, 22, 23, 25-33, and 62-81. We have
jurisdiction under 35 U.S.C. § 6. An oral hearing was held on December 19,
2013.

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STATEMENT OF THE CASE
Claim 1 is representative of the subject matter on appeal and is set
forth below:
1. A container for a blender comprising a bottom surface that is at
least partially sloped, the bottom surface having a periphery defining only
one line of symmetry and at least five sides on the periphery of the bottom
surface, and a single blade assembly for chopping and blending foods
extending from the bottom surface and rotatable about a vertical axis at the
center of the blade assembly, the vertical axis located on the line of
symmetry, wherein the vertical axis is not centered relative to the bottom
surface.

THE REJECTIONS
1. Claims 1-11, 13-15, 17-19, 22, 23, 25-33, and 62-81 are
rejected as being indefinite under 35 U.S.C. § 112, second paragraph.
2. Claims 1-11, 13-15, 17-19, 22, 23, 25-33, and 62-76 are rejected as
being anticipated under 35 U.S.C. § 102(b) by Walter et al. (US 3,837,587,
Patented Sep. 24, 1974).
3. Claims 1-11, 13-15, 17-19, 22, 23, 25-33, and 62-76 are rejected as
being obvious under 35 U.S.C. § 103 over Hobbs (US Des. 163,177,
patented May 1, 1951) in view of Lawson (WO 96/15706, issued May 30,
1996).
4. Claims 1-11, 13-15, 17-19, 22, 23, 25-33, and 62-76 are rejected as
being obvious under 35 U.S.C. § 103 over Grimes (US Des. 227,535,
patented Jul. 3, 1973) in view of Lawson.

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ANALYSIS
Rejection 1
It is the Examiner’s basic position that the provisional application
upon which Appellants claim domestic priority for the instant Specification
does not support the curved area 27 of Figures 3 and 4 consisting of the
curved area 27 and generally flat walls 33.1 Ans. 7-10.
The Examiner also states:
The instant disclosure shows Figure 4 as including seven walls
(labeled respectively as 27, 33, 33, 35, 36, 37, and 38). Although this
seven wall configuration is not explicitly supported by the provisional
application, the instant specification and claims disclose seven
possible "side surfaces", "side walls" or "sides" (i.e., whatever
Appellant decides to refer to them in any given claim). Therefore, it is
unclear which particular wall of the seven walls the many subtlety
differently worded claims are specifically referring to, rendering the
scope of the claims at least utterly confusing if not outright indefinite
and ambiguous.
Ans. 11.
Hence, it appears that the Examiner’s 35 U.S.C. § 112, second
paragraph rejection is based upon the premise that if there is no support in
the provisional application (as alleged by the Examiner), then certain aspects
of the claims pointed out by the Examiner are indefinite.
However, as stated by Appellants (on page 12 of the Brief and on
page 4 of the Reply Brief), this is a flawed analysis for a 35 U.S.C. § 112,
second paragraph rejection.

1 The Examiner relies on the position taken by the PTO in reexaminations
of related patents. Ans. 9-11. However, our focus is on the rejections and
application before us in this appeal.
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The issue of whether there is support in the provisional application for
the subject matter now being claimed should have been raised under a
35 U.S.C. § 112, first paragraph rejection (written description requirement).
For example, the question as to whether a specification provides an adequate
written description may arise in a new or amended claim wherein a claim
limitation has been added or removed, or a claim to entitlement of an earlier
priority date or effective filing date under 35 U.S.C. §119, §120, or §365(c).
Most typically, as examples, the issue will arise in the context of
determining whether new or amended claims are supported by the
description of the invention in the application as filed (see, e.g., In re
Wright, 866 F.2d 422 (Fed. Cir. 1989), or whether a claimed invention is
entitled to the benefit of an earlier priority date or effective filing date under
35 U.S.C. §119, §120, or §365(c) (see, e.g., New Railhead Mfg. L.L.C. v.
Vermeer Mfg. Co., 298 F.3d 1290 (Fed. Cir. 2002); Tronzo v. Biomet, Inc.,
156 F.3d 1154 (Fed. Cir. 1998); Fiers v. Revel, 984 F.2d 1164 (Fed. Cir.
1993); In re Ziegler, 992 F.2d 1197, 1200 (Fed. Cir. 1993)).
We cannot find in the Examiner’s position a proper analysis for a
35 U.S.C. § 112, second paragraph rejection. Such an analysis requires an
objective determination of whether a person of ordinary skill in the art
would have understood the subject matter of the claimed invention as it is
described in the instant specification. In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997).
In view of the above, we reverse Rejection 1.

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Rejection 2
Issue: Did the Examiner err in determining that Walter discloses a container
with a “bottom surface having a periphery defining only one line of
symmetry and at least five sides”? We answer this question in the
affirmative and REVERSE.
We refer to pages 12-19 of the Answer regarding the Examiner’s
stated anticipation rejection. Therein, the Examiner relies upon Figure 1 and
col. 12, ll. 8-15 for the aspect of the claims pertaining to a container with a
“bottom surface having a periphery defining only one line of symmetry and
at least five sides.” Ans. 12-16.
It is Appellants’ position, inter alia, that Walter discloses a
rectangular bottom surface having multiple lines of symmetry, and that it is
the outer side walls, rather than the bottom surface, that has as many as eight
sides. Br. 14-16. Reply Br. 5-6.
Hence, it is disputed as to whether Walters discloses the aspect of the
claims pertaining to “a bottom surface having a periphery defining only one
line of symmetry and at least five sides.”
In reply to Appellants’ argument, the Examiner provides two
illustrations on pages 45 and 46 of the Answer, along with an explanation on
pages 47-48 of the Answer. Therein, the Examiner reiterates the teaching in
Walter’s disclosure found in column 12, lines 8-15 that one-third of each of
the side walls are grained and roughened and “preformed inwardly” to
facilitate gripping. As stated supra, Appellants submit that this evinces that
it is the outer walls that are preformed inwardly, which is not the same shape
as the bottom surface periphery of the container disclosed in Walter.
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On the other hand, the Examiner’s annotated illustration on page 45 of
the Answer shows that the Examiner interprets Walter’s Figure 2 as showing
that the interior geometry of the bottom wall is as shown in the Examiner’s
blown-up portion of Figure 2 of a lower bottom edge of the hand-grip
portion of container 28 of Walter, near numeral 200. The Examiner does not
point to any written disclosure in Walter supporting his interpretation of
Walter’s Figure 2 in this regard, i.e., that this portion of Figure 2 shows that
because the side walls are “preformed inwardly”, then, the container has a
bottom surface with inner sidewalls having such a shape, creating “a bottom
surface having a periphery defining only one line of symmetry and at least
five sides.” Drawings and pictures can anticipate claims if they clearly show
the structure which is claimed. In re Mraz, 455 F.2d 1069 (CCPA 1972).
However, in the instant case, there is uncertainty as to what Walter’s
drawings clearly show in this regard. As discussed, supra, as pointed out by
Appellants, side walls that are “preformed inwardly” could mean that the
outer sidewalls have this shape and not the inner side walls. Walter’s figures
as relied upon by the Examiner do not clearly show what is disclosed in this
regard.
We thus reverse Rejection 2.

Rejection 3
We refer to pages 21-33 of the Answer regarding the Examiner’s
stated rejection. Basically, the Examiner relies upon Hobbs for teaching a
design of a container showing a bottom surface having a periphery defining
only one line of symmetry and having five corners. Ans. 21-22. The
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Examiner relies upon Lawson for teaching the other aspects recited in the
claims. Ans. 23-32. Then, the Examiner concludes:
It would have been obvious to a person of ordinary skill in the art at
the time of the invention to have provided the container of Hobbs with
a single blade assembly with blades and a hub extending from the
bottom surface and rotatable about a vertical axis at the center of the
blade assembly, the vertical axis being located on a line of symmetry
and not centered relative to the bottom surface, wherein a first side
wall of the bottom surface is positioned closer to the vertical axis than
the corners, wherein a first side on the bottom surface is closer
to the vertical axis than a corner of the bottom surface that is opposite
the side as taught by LAWSON for the purposes of converting the
container of Hobbs into a bladed blender container that can function
as a mixer, blender, or liquidizer and that prevents undesirable
cavitation (see the abstract and p. 1, lines 10-11, p. 4, lines 10-15, p. 5,
lines 10-11 and 16-18,; p. 7, lines 10-12, and p. 8, lines 1-3).
Furthermore, it would have been obvious to a person of ordinary skill
in the art at the time of the invention to have provided the container of
Hobbs with an at least partially sloped bottom surface that is sloped
downwardly from a side wall toward the blade assembly as taught by
Lawson for the purpose of improving the aesthetics of the container
and to aid in cleaning the container (Lawson at p. 5, lines 1-5) or for
directing the substances in the container into the blade assembly (as
seen in Figs. 1 and 2 of Lawson).
Ans. 33.
Appellants submit that the combination lacks sufficient motivation to
support a conclusion of obviousness for the reasons discussed on pages 17-
21 of the Brief and on pages 8-11 of the Reply Brief.
In reply to this argument, the Examiner states on page 51 of the
Answer that:
Lawson also states that "the resulting flow is constrained by the
adjacent container side wall." Thus Lawson teaches that the position
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of a baffle (of wall) closer to the impeller and the side wall can create
the critical Archimedean screw function by forming a sleeve around
the impeller. This would motivate a person skilled in the art of blender
containers to evaluate internal container configurations in connection
with an impeller-type mixing element to avoid cavitation through an
Archimedean screw type of flow.
Grimes and Hobbs provide such configurations that would make
effective sleeves around a blade assembly.
Establishing a prima facie case of obviousness of an invention
comprising a combination of known elements requires “an apparent reason
to combine the known elements in the fashion claimed.” KSR Int’l. Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007).
To summarize, the Examiner’s stated reasons for the combination are:
(1) for the purposes of converting the container of Hobbs into a bladed
blender container that can function as a mixer, blender, or liquidizer
and that prevents undesirable cavitation.

Ans. 33;
(2) Furthermore, it would have been obvious to a person of ordinary skill
in the art at the time of the invention to have provided the container of
Hobbs with an at least partially sloped bottom surface that is sloped
downwardly from a side wall toward the blade assembly as taught by
Lawson for the purpose of improving the aesthetics of the container
and to aid in cleaning the container (Lawson at p. 5, lines 1-5) or for
directing the substances in the container into the blade assembly (as
seen in Figs. 1 and 2 of Lawson).
Ans. 33; and
(3) Lawson also states that "the resulting flow is constrained by the
adjacent container side wall." Thus Lawson teaches that the position
of a baffle (of wall) closer to the impeller and the side wall can create
the critical Archimedean screw function by forming a sleeve around
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the impeller. This would motivate a person skilled in the art of blender
containers to evaluate internal container configurations in connection
with an impeller-type mixing element to avoid cavitation through an
Archimedean screw type of flow.
Grimes and Hobbs provide such configurations that would make
effective sleeves around a blade assembly.
Ans. 51.

Hobbs is directed to an ornamental design for a pitcher or the like.
See Figures 1, 2, and 3 of Hobbs. The Examiner’s above-stated reasons for
combination do not amply address why one skilled in the art would have
chosen the specific design of a pitcher as set forth in Hobbs to arrive at
Appellants’ claimed subject matter, other than the fact that the shape “so
happens to read on Appellants’ claims” as stated by Appellants on page 9 of
the Reply Brief. Then, to make the further modifications to the design of the
pitcher of Hobbs, as proposed by the Examiner in the stated rejection, so as
to convert the pitcher design of Hobbs into a blender, appears formulated
based upon hindsight, rather than suggested, by the applied art. Such an
approach causes us to conclude that the Examiner’s rejection is improperly
based upon improper hindsight reasoning. See W.L. Gore & Assocs. v.
Garlock, Inc., 721 F.2d 1551, 1553 (Fed. Cir. 1983), cert. denied, 469 U.S.
851 (1984) (“To imbue one of ordinary skill in the art with knowledge of the
invention in suit, when no prior art reference or references of record convey
or suggest that knowledge, is to fall victim to the insidious effect of a
hindsight syndrome wherein that which only the inventor taught is used
against its teacher.”).
In view of the above, we reverse Rejection 3.
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Rejection 4
We reverse Rejection 4 for the same reasons that we reverse Rejection
3 because the Examiner’s stated reasons for combination and proposed
modifications do not support a conclusion of obviousness for the reasons
stated with regard to Rejection 3, supra. Like Hobbs, Grimes is directed to a
design of a pitcher.

CONCLUSIONS OF LAW AND DECISION
Each rejection is reversed.

REVERSED

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