Ex Parte Rice et al

Patent Trial and Appeal Board

Mar 31, 2014

12495123 (P.T.A.B. Mar. 31, 2014)

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. 12/495,123 06/30/2009 Robert M. Rice PA-3572-UAA;67097-750PUS2 2261 54549 7590 04/01/2014 CARLSON, GASKEY & OLDS/PRATT & WHITNEY c/o CPA Global P.O. Box 52050 Minneapolis, MN 55402 EXAMINER SALONE, BAYAN ART UNIT PAPER NUMBER 3726 MAIL DATE DELIVERY MODE 04/01/2014 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 ROBERT M. RICE, WILLIAM J. WELCH and DAVID G. DIAMOS ____________ Appeal 2012-004456 Application 12/495,123 Technology Center 3700 ____________ Before LYNNE H. BROWNE, ANNETTE R. REIMERS and BRANDON J. WARNER, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-004456 Application 12/495,123 2 STATEMENT OF THE CASE1 Robert M. Rice et al. (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner’s decision to reject under 35 U.S.C. § 103(a): (1) claims 1, 2, 4-6 and 8 as unpatentable over York (US 6,675,437 B1; iss. Jan. 13, 2004) and Messmer (US 3,548,272; iss. Dec. 15, 1970); (2) claim 3 as unpatentable over York and Flood (US 2002/0001255 A1; pub. Jan. 3, 2002); (3) claim 7 as unpatentable over York, Messmer and Lee (KR1998- 017193; pub. Jun. 5, 1998)2; (4) claim 9 as unpatentable over York, Flood, 1 In the Final Rejection (mailed November 22, 2010), the Examiner rejected claim 9 under 35 U.S.C. § 112, first paragraph, for lack of written description. See Final Rej. 2. In the Response after the Final Rejection (mailed January 24, 2011), Appellants addressed the 112 rejection. In the Advisory Action (mailed February 9, 2011), the Examiner failed to address Appellants’ arguments regarding the 112 rejection. In the Appeal Brief (filed June 16, 2011), Appellants state that “[s]ince the Examiner no longer references the prior rejection, Applicant[s] assume[] the rejection has been withdrawn.” App. Br. 4. The Examiner did not address the 112 rejection in the Examiner’s Answer (mailed September 26, 2011). Because the Examiner failed to address the 112 rejection in the Examiner’s Answer, we conclude that the Examiner has withdrawn the rejection of claim 9 under 35 U.S.C. § 112, first paragraph, for lack of enablement. 2 In the Notice of Appeal (filed March 22, 2011), Appellants state that “Applicant[s] hereby appeal[] the final rejection of November 22, 2010.” In the Appeal Brief (filed June 16, 2011), Appellants identify only rejections (1), (2), (4) and (5) as the “Grounds of Rejection to be Reviewed on Appeal.” App. Br. 4. Further, Appellants only present arguments directed to rejections (1), (2), (4) and (5). App. Br. 4-7. The Examiner repeated all the rejections (1)-(5) in the Answer, thus clearly indicating that rejection (3) has not been withdrawn. Ans. 8-9. Appellants do not address rejection (3) in the Reply Brief (filed February 1, 2012). See Reply Br., generally. As Appellants do not address rejection (3) in the Appeal Brief or in the Reply Brief, Appellants have waived any argument of error, and we summarily sustain the rejection of claim 7 under 35 U.S.C. § 103(a) as unpatentable Appeal 2012-004456 Application 12/495,123 3 Fanourgiakis (US 2007/0089766 A1; pub. Apr. 26, 2007) and Gohl (US 5,490,046; iss. Feb. 6, 1996); and (5) claim 10 as unpatentable over Shaw (US 5,490,646; iss. Feb. 13, 1996). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The claimed subject matter relates to “manufacture of various wash unit[s].” Spec. para. [0002]; figs. 1A, 1B, 2A. Claims 1, 33 and 10 are independent. Claim 1 is illustrative of the claimed subject matter and recites: 1. A method of manufacturing a wash unit comprising the steps of: providing a framework housing controls; securing a wash unit to the framework; securing a water treatment assembly to the framework; and securing an enclosure to the framework about the wash unit and water treatment assembly; and providing a pendant connected to the controls by a cable and configured to be movable from the integrated wash unit to a location remote from both the framework and an object to be cleaned. over York, Messmer and Lee. See In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (holding that the Board did not err in sustaining a rejection under 35 U.S.C. § 112, second paragraph, when the applicant failed to contest the rejection on appeal); MPEP § 1205.02, 8th ed., Rev. 8, July 2010 (“if a ground of rejection stated by the examiner is not addressed in the appellant’s brief, that ground of rejection will be summarily sustained by the Board.”). 3 We note that claim 3 recites “securing an enclosure to the framework about the wash unit and water treatment assembly., and the wash unit . . .” App. Br. 9, Clms. App’x. We consider the addition of the period referenced above to be a typographical error. Appeal 2012-004456 Application 12/495,123 4 ANALYSIS Obviousness over York and Messmer Claims 1, 2, 4-6 and 8 Appellants do not present additional arguments for dependent claims 2, 4-6 and 8 separate from those directed against the rejection of independent claim 1. App. Br. 5; see also Reply Br. 1. Accordingly, Appellants have argued claims 1, 2, 4-6 and 8 as a group for purposes of the rejection of those claims under § 103(a). Claim 1 is representative of the group and is selected for review, with claims 2, 4-6 and 8 standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Independent claim 1 calls for a method of manufacturing a wash unit including the step of “providing a pendant connected to the controls by a cable and configured to be movable from the integrated wash unit to a location remote from both the framework and an object to be cleaned.”4 App. Br. 9, Clms. App’x. The Examiner found that York discloses the limitations of claim 1, except that “York does not disclose providing a pendant connected to the controls by a cable and configured to be movable 4 In the Summary of Claimed Subject Matter section of the Appeal Brief, Appellants cite to the Specification at page 8, lines 16-18 (para. [0034]), to support this limitation of claim 1. We note that page 8, lines 16-18 (para. [0034]), of Appellants’ Specification states that “[t]he pendant 50 can be brought to the turbine engine by the operator for remote operation of the integrated wash unit 12, which may be arranged at the aircraft site but away from the turbine engine.” In other words, when the pendant 50 is brought to (near) the turbine engine, the integrated wash unit 12, while at the aircraft site, is away from (remote of) the turbine engine. This written description does not appear to support the limitation of a pendant “configured to be movable from the integrated wash unit to a location remote from both the framework and an object to be cleaned,” as required by claim 1 (emphasis added). Appeal 2012-004456 Application 12/495,123 5 from the integrated wash unit to a location remote from both the framework and an object to be cleaned.” Ans. 4-5. The Examiner found that “Messmer discloses providing a pendant (36) having a control panel, connected to a cable and configured to be movable (the cable is retractable as it is attached to a rewinding wheel (42)) (Col. 3, Lines 55-75, Fig. 3).” Id. at 5. The Examiner concluded that [i]t would have been obvious to one of ordinary skill in the art at the time of invention to use the pendant control connected to a retractable cable as disclosed by Messmer with the wash unit of York to provide a movable controller easily accessible to workers, located outside of the wash unit. Id. Appellants contend that there is no reason to have a pendant that is capable of being moved to a location remote from the object to be cleaned in York. York relates to carpet cleaning, which requires an operator to be at the site of the object to be cleaned. There is no reason to provide controls at a different location from the operator cleaning the carpet. App. Br. 5; see also Reply Br. 1. Appellants’ arguments are not persuasive. An attorney’s arguments in a brief cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). At the outset, we note that the purpose of a pendant is to allow the operator to remotely control/operate the unit/equipment. See Spec. para. [0034]; see also Messmer, col. 3, ll. 56-60. We agree with the Examiner’s reasoning that although York does not disclose a pendant controller, in the event the cleaning equipment malfunctions it would be beneficial to have a quick Appeal 2012-004456 Application 12/495,123 6 and easy means of accessing the equipment controls in order to shut down the equipment. A pendant controller located externally of the wash unit would be closer to the operator and allow the operator to quickly shut down malfunctioning equipment. The examiner made no mention that the pendant control would be remote from where the worker is located or where the object (i.e. carpet) is being cleaned. The examiner simply points out that having the controls located externally of the wash unit is beneficial. Obviously an external control located outside of the wash unit would be closer to the worker and therefore more accessible. Ans. 11. Appellants have not provided any persuasive evidence or arguments to the contrary. Accordingly, for the foregoing reasons, the Examiner’s rejection of claim 1 and claims 2, 4-6 and 8, which fall with claim 1, as unpatentable over York and Messmer is sustained. Obviousness over York and Flood Claim 3 Claim 3 calls for the framework of the wash unit to include a skid. App. Br. 9, Clms. App’x. The Examiner found that York discloses the limitations of claim 3, except that “York does not disclose providing a skid or the wash unit and water treatment securing steps include supporting the wash unit and water treatment assembly on the skid.” Ans. 7-8. The Examiner found that “Flood . . . discloses mounting components of a system on a frame (10) on a skid (163) permitting the components to be readily detached from the plant (10), for the benefit of easily removing the components to perform routine maintenance and repair (Page 5, Par. 0075).” Id. at 8. The Examiner concluded that “[i]t would have been obvious to one Appeal 2012-004456 Application 12/495,123 7 of ordinary skill in the art at the time of invention to securely mount the wash unit and water treatment assembly on a skid provided with the framework, for the benefit of easily removing the components to perform routine maintenance and repair.” Id. Appellants contend that [a] skid serves absolutely no purpose in York, which has a wash unit integrated with a truck. In fact, York teaches entirely away from separate wash units at column 3, lines 47-65, which states that portable units have poor reliability and durability, often self-destruct and have insufficient thermal energy output. . . . . . . . . . . a skilled worker would not provide a skid in the York arrangement because there would be no need or benefit and, in fact, doing so would be detrimental to the performance and reliability of the wash unit according to York. York desires a carpet cleaning vehicle that integrates the cleaning unit with the vehicle’s powertrain. The Examiner’s arguments are contrary to the York disclosure and would completely destroy the benefits sought by York. . . . York clearly argues that portable units are undesired. Moreover, there is nothing to indicate that routine maintenance and repair could not be carried out on the vehicle similar to maintenance of the vehicle itself, and, thus there would be no benefit. App. Br. 6. Appellants’ arguments are not persuasive because simply identifying that there are differences between two references is insufficient to establish that such references “teach away” from any combination thereof. See In re Beattie, 974 F.2d 1309, 1312-13 (Fed. Cir. 1992). In addition, to teach away, a reference must actually criticize, discredit, or otherwise discourage Appeal 2012-004456 Application 12/495,123 8 the claimed solution. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (prior art does not teach away from claimed subject matter merely by disclosing a different solution to a similar problem unless the prior art also criticizes, discredits, or otherwise discourages the solution claimed). In this case, we agree with the Examiner that “York discloses two types of cleaning equipment (‘integral’ or ‘direct drive’ and ‘slide-in’ or stand alone) and the deficiencies of each type of equipment.” Ans. 12 (citing York, col. 3, ll. 1-5). York does not in any way criticize, discredit, or otherwise discourage the use of a skid, as taught by Flood, for easy detachment of the wash unit components. See Ans. 8 (citing Flood, para. [0075]). To the contrary, York discloses (1) “[a]ccording to the present invention, a transportable cleaning system is disclosed” (York, col. 6, ll. 9-10) (emphasis added); (2) “[a] washing plant 10 is mounted on a support, such as a vehicle or trailer”5 (York, col. 8, ll. 41-42) (emphasis added); and (3) “[a]s illustrated in FIG. 2, a washing plant 110 is mounted on a truck 112. The truck 112 shown has a large cargo bay 114 for storing, protecting, and conveying washing equipment to and from the cleaning site” (York, col. 11, ll. 62-65; fig. 2) (emphasis added). As such, we agree with the Examiner’s finding that, similar to the subject invention, modifying the truck 112 of York with a skid would accommodate secure mounting of the washing plant 110 onto the truck 112. See Ans. 8. Therefore, we find that the disclosures of York and Flood do not 5 We note that Appellants’ Specification describes that “[a]s illustrated in the Figures, the integrated wash unit 12 packages compactly many components that can be transported easily on anyone of a truck (custom box shown in Figure la, standard box shown in Figure 1b), trailer (Figure 1c). . . .” Spec. para. [0024]; figs. 1A-1C. Appeal 2012-004456 Application 12/495,123 9 teach away from Appellants’ claimed invention. In addition, Appellants have not apprised us of error regarding the Examiner’s stated reasoning or conclusion of obviousness for York and Flood. An attorney’s arguments in a brief cannot take the place of evidence. Appellants further contend that “[u]se of a skid would also require a lift truck to be on-site. For example, a lift truck would need to be at the location where a carpet is cleaned to remove the unit from the truck. This presents significant logistical issues as well as significant expense.” Reply Br. 1. Appellants’ arguments are not persuasive. If there are tradeoffs involved regarding features, costs, manufacturability, or the like, such things do not necessarily prevent the proposed combination. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“[A] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.”) (citation omitted); Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”). Accordingly, for the foregoing reasons, the Examiner’s rejection of claim 3 as unpatentable over York and Flood is sustained. Obviousness over York, Flood, Fanourgiakis and Gohl Claim 9 Claim 9 depends from claim 3 and calls for “the step of securing movable spotlights to the framework, the spotlights configured to illuminate Appeal 2012-004456 Application 12/495,123 10 a work area having an object to be cleaned.” App. Br. 10, Clms. App’x. Appellants contend that “[t]he Examiner ignores that the York cleaning occurs indoors. Spotlights on the framework with the wash unit in a vehicle (and outside of the house having the work area) would do nothing to illuminate the cleaning operation.” App. Br. 7. Appellants further contend that [t]he wash unit [of York] is located in the truck, which is parked in the driveway of the carpet cleaning site or out on the street. Having spotlights on the carpet cleaning unit, which is located on the vehicle, does the operator no good when in a poorly illuminated room of a house or a commercial building. Reply Br. 2. Appellants’ arguments are not persuasive. First, York merely cites carpet cleaning in a household as an example. See York, col. 1, ll. 23-30. Second, York does not state that the carpet cleaning “occurs indoors” (i.e., in a room of a house or a commercial building), as suggested by Appellants. See York, generally. Based on York’s disclosure, it is reasonable that York’s portable washing system could be used to clean carpets in areas other than indoors (e.g., in cars). As such, we agree with the Examiner that “[in] the instance where cleaning operations are taking place in a poorly illuminated area, an additional lighting source [secured to the framework of York] would be beneficial to ensure cleaning procedures are carried out successfully. Mounting movable spotlights to the vehicle of York provides additional lighting needed in such [an] instance[].” Ans. 13 (emphasis omitted). Accordingly, for the foregoing reasons, the Examiner’s rejection of Appeal 2012-004456 Application 12/495,123 11 claim 9 as unpatentable over York, Flood, Fanourgiakis and Gohl is sustained. Obviousness over Shaw Claim 10 Claim 10 calls for a method of manufacturing a wash unit including the step of “providing a framework housing controls including a computer processor programmed to provide gas turbine engine operation and maintenance data.” App. Br. 11, Clms. App’x. The Examiner found that although Shaw does not explicitly disclose the computer processor is programmed to provide gas turbine engine operation and maintenance data, Shaw does disclose the machine (20) is powered by a gas turbine engine (122) (Col. 4, Lines 3-8, Fig. 7). The [E]xaminer takes official notice that computer processors are known for monitoring the operations and performance of the tools and machines that execute the commands provided by said computer processors. Logically the computer processor of Shaw has the same capabilities. Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention that the computer processor of Shaw is programmed to provide gas turbine engine operation and maintenance data, since the wash unit of Shaw is powered by a gas turbine engine, allowing the processor to monitor the strength of the power source and alert operators of any problems concerning the functionality of the wash unit. Ans. 13; see also id. at 10. Appellants contend that “[t]he Examiner argues the capability or possibility of the Shaw device having the claimed processor simply because Shaw includes a turbine engine in one embodiment. . . . The Appeal 2012-004456 Application 12/495,123 12 Examiner’s statement that ‘logically the computer processor of Shaw has the same capabilities’ is nowhere supported.”6 App. Br. 7. Appellants further contend that “the Examiner responds that the Examiner takes ‘official notice.’ This is not a position sufficient to rebut the Appellant[s]’ position. In any event, it is inappropriate for an Examiner to take a position that something is ‘known’ in an answer to an appeal brief.”7 Reply Br. 2. Appellants’ arguments are not persuasive. At the outset, we note that Appellants have not rebutted the Examiner’s findings or conclusions that computer processors are known for monitoring the operations and performance of the tools and machines that execute the commands provided by the computer processors. See App. Br., generally; Reply Br. 2. We see no reason to disagree with the Examiner. Moreover, we agree with the Examiner that [i]t would have been obvious to one of ordinary skill in the art at the time of invention that the computer processor of Shaw is programmed to provide gas turbine engine operation and maintenance data, since the wash unit of Shaw is powered by a gas turbine engine, allowing the processor to monitor the strength of the power source and alert operators of any problems concerning the functionality of the wash unit. Ans. 10, 13. Appellants have not provided any persuasive evidence or arguments to the contrary. 6 We note that the Examiner first took official notice in the Advisory Action. Adv. Act. 4. Appellants did not traverse the taking of official notice in the Appeal Brief. See App. Br., generally. 7 See footnote 6 above. Appeal 2012-004456 Application 12/495,123 13 Accordingly, for the foregoing reasons, the Examiner’s rejection of claim 10 as unpatentable over Shaw is sustained. DECISION We AFFIRM the decision of the Examiner to reject claims 1, 2, 4-6 and 8 as unpatentable over York and Messmer. We AFFIRM the decision of the Examiner to reject claim 3 as unpatentable over York and Flood. We AFFIRM the decision of the Examiner to reject claim 7 as unpatentable over York, Flood and Lee. We AFFIRM the decision of the Examiner to reject claim 9 as unpatentable over York, Flood, Fanourgiakis and Gohl. We AFFIRM the decision of the Examiner to reject claim 10 as unpatentable over Shaw. 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 llw