Ex Parte Spangler

Patent Trial and Appeal Board

Aug 24, 2016

13176596 (P.T.A.B. Aug. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/176,596 07/05/2011
81325 7590 08/26/2016
Peter B. Scull
HAMILTON DESANCTIS & CHA LLP
225 Union Boulevard, Ste. 150
Financial Plaza at Union Square
LAKEWOOD, CO 80228
FIRST NAMED INVENTOR
Steven D. Spangler
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.
SSS0.00103US 4841
EXAMINER
HWU,DAVISD
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
08/26/2016 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):
pscull@hdciplaw.com
pbsteam@hdciplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN D. SP ANGLER
Appeal2014-008014
Application 13/176,596
Technology Center 3700
Before: CHARLES N. GREENHUT, ANNETTE R. REIMERS, and
MARK A. GEIER, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner's Final
rejection of claims 1-27. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal2014-008014
Application 13/176,596
CLAIMED SUBJECT MATTER
The claims are directed to an apparatus and method for a solid catalyst
and fluid dynamic eruption reaction. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1 An apparatus for an eruption reaction involving a catalytic solid
and an eruptible fluid, the apparatus comprising:
a substantially cylindrical body portion for holding a
catalytic solid, the body portion having a mouth at a first end and
a fluid egress opening at a second end;
wherein the body portion is adapted to be coupled to the
mouth of a container of an eruptible fluid; and
a trigger mechanism operatively connectable to the body
portion, the trigger mechanism being operatively disposed
transversely relative to the substantially cylindrical body portion,
and being configured to alternately retain and release the
catalytic solid relative to the body portion;
wherein in being configured to retain, the trigger
mechanism provides in operation a body portion that sufficiently
blocks the passageway so that the solid may not pass out of the
cylindrical body portion or thence into the container of an
eruptible fluid; and
wherein the trigger mechanism being operatively movable
transversely to release the catalytic solid.
REJECTIONS
Claims 1, 2, 11-13, 17, 18, 20, and 22-25 are rejected under 35
U.S.C. § 102(b) as being anticipated by Bullock (US 2,281,229, issued April
28, 1942). App. Br. 5.
Claims 3-10, 14--19, 21, 26, and 27 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Bullock. App. Br. 5
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OPINION
In rejecting independent claim 1, the Examiner relies on Bullock in a
manner consistent with the line of cases represented by In re Schreiber, 128
F.3d 1473, 1477-78 (Fed. Cir. 1997) (holding an oil can may be used to
reject a popcorn dispenser because claims directed to an apparatus must be
distinguished from the prior art in terms of structure rather than function).
Although it is true that a prior art reference must provide an enabling
disclosure to anticipate, it need not be enabling for the same purpose of
Appellant. See App. Br. 8. A prior art disclosure is sufficiently enabling if
one can make the device disclosed therein, even if used for a different
purpose than Appellant. See In re Gleave, 560 F.3d 1331, 1334-36, 1338;
see also In re Schoenwald, 964 F.2d 1122, 1124 (Fed. Cir. 1992). If that
prior-art device is structurally the same as a claimed apparatus, it may
nevertheless be anticipatory. See, e.g., Catalina Marketing Intern. v.
Coolsavings.com, 289 F.3d 801, 809-810 (Fed. Cir. 2002) (discussing a
hypothetical example). Where, as here, functional or use-type limitations are
used to define the scope of an apparatus claim the relevant inquiry is what
those recitations indicate about the structure of the claimed apparatus. As the
PTO is not in a position to obtain and test every apparatus's suitability for a
particular purpose, it has been held that "where the Patent Office has reason
to believe that a functional limitation asserted to be critical for establishing
novelty in the claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to require the
applicant to prove that the subject matter shown to be in the prior art does
not possess the characteristic relied on." In re Swinehart, 439 F.2d 210, 213
(CCP A 1971 ). Thus, the absence of an actual disclosure within Bullock of
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Application 13/176,596
Appellant's particular intention for the claimed apparatus is not dispositive.
App. Br. 6-7. The issue is correctly framed as involving inherency. App. Br.
9-12.
The Examiner correctly determines that in considering the structural
implication of the phrases "for an eruption reaction involving a catalytic
solid;" "for holding a catalytic solid;" "configured to alternately retain and
release the catalytic solid relative to the body portion;" and "provides in
operation a body portion that sufficiently blocks the passageway so that the
[catalytic] solid may not pass out of the cylindrical body portion;" one must
consider the size and shape of the catalytic solid itself because this an
unclaimed element used to define the claimed structure. App. Br. 3; see also
Ans. 4. As the Examiner also points out, the claim never indicates that the
claimed apparatus, or any element thereof, is "for"; "configured to ... retain
and release;" or "blocks" any particular size or shape of catalytic solid. App.
Br. 2. We therefore agree with the Examiner that some catalytic solid, such
as Mentos® crumbled to a suitable size and shape, must necessarily be able
to be held and reacted within Bullok's nozzle, with valve 8 functioning as
the recited "trigger mechanism." Ans. 3; see also, e.g., Geneva
Pharmaceuticals v. GlaxoSmithKline, 349 F.3d 1373, 1376 (Fed. Cir. 2003)
(Broadly construing a claim element, an amount of clavulanic acid, defined
in terms of its interaction with unclaimed and broadly defined subject
matter, bacteria.).
We recognize that "configured to" may imply the presence of some
particular structure for the purpose or function that follows. Here the claim
expressly defines how the trigger mechanism is configured to retain the
catalytic solid: "blocks the passageway so that the solid may not pass out of
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Application 13/176,596
the cylindrical body portion." Ceasing to do so is the implied mechanism for
release. Appellant does not contest that catalytic solid could be released by
Bullock's valve. Rather, Appellant contends that the valve 8 is stated to have
only two open positions, one of which aligns hole 12 for a stream, the other
aligns hole 13 for a mist spray, and therefore is not configured to retain
anything. App. Br. 7, 11; see also Reply Br. 2-3. The Examiner has a more
reasonable understanding of Bullock based on the Figures: "A user simply
has to move the element 8 so that the solid section is aligned with the
passage 2, and drop a catalytic solid into opening 14 in which it will be
retained by element 8 until it is moved to match hole 12 or 13 with the
passage 2, thereby releasing the solid." Ans. 4. Although this particular
function is not expressly discussed by Bullock, we agree with the Examiner
that, by virtue of the solid material between openings 12 and 13, Bullock's
valve is in fact inherently capable of performing the functions recited in
essentially the same way as Appellant's trigger mechanism, and is therefore
reasonably considered configured to retain material from passage there
through. Appellant does not apprise us as to why the solid space discussed
by the Examiner could not operate to retain a solid catalyst. In Appellant's
own preferred embodiment even a partial closure, such as by rod or
toothpick 110 is sufficiently "configured to" retain a catalyst. Spec. 7-8,
Figs. 1, 2. We are not apprised of any reason one skilled in the art would not
consider Bullock's valve 8 similarly configured. Patentability of an
apparatus cannot be premised on the particular intent of the designer.
For the foregoing reasons, we affirm the rejection of claim 1.
Appellant reiterates arguments addressed above concerning claim 1
and does not address with particularity the rejections of claims 2, 3, 6-8, and
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Application 13/176,596
22 as set forth by the Examiner. App. Br. 13, 18, 25, 27, and 28. Merely
pointing out what a claim recites is not considered a separate argument for
patentability under 37 C.F.R. § 41.37(c)(iv).
Appellant does not contest the obviousness of incorporating threads
into Bullock's hose valve as required by claims 3 and 6. See Final Act. 3.
The presence of thread is, by definition according to the term "thereby" in
claim 4, what makes the mouth "adapted to be coupled to an externally
threaded mouth of an eruptible fluid container." As with claim 1, Bullock's
lack of a container, a structure not forming part of the claimed subject
matter, does not apprise us error in the Examiner's rejection. See App. Br.
26.
Appellant points out the further definitions of the catalytic solid and
eruptible fluid in claims 11 and 12, respectively. App. Br. 14. Appellant also
points out the definition of the eruptible fluid container as a "soda bottle" in
claims 5 and 9. However, for the same reasons discussed with respect to
claim 1, we are not apprised as to how further defining the intended use of
the claimed apparatus as involving, in particular, "candy," "soda," or a "soda
bottle," further limits the structure of the claimed apparatus itself so as to
distinguish over Bullock. Accordingly, we also sustain the rejection of
claims 5, 9, 11 and 12.
Regarding claim 10, we agree with Appellant that "[a] projectile is a
completely discrete apparatus that finds nothing similar in Bullock." App.
Br. 29. Thus, the Examiner's reasoning that "it would have been a matter of
user choice to have disposed a projectile on the device since the pressurized
fluid released by the opening 38 would propel the projectile" (Final Act. 3)
lacks any factual support or rational underpinnings. "[R ]rejections on
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Application 13/176,596
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness." In re Kahn,
441F.3d977, 988 (Fed. Cir. 2006), cited with approval in KSR Int'!. v.
Teleflex, 550 U.S. 398, 418 (2007). Accordingly we do not sustain the
rejection of claim 10.
Regarding claim 13, we agree with Appellant that, in a claim directed
to an apparatus, one skilled in the art would not reasonably consider a
human hand an element of that apparatus, particularly a "removable closure
member adapted to provide for pre-loading the body portion with a catalytic
solid." App. Br. 15. Accordingly, we do not sustain the rejection of claim 13
on the basis set forth by the Examiner.
Regarding claim 21, Appellant correctly argues that the Examiner has
established neither the existence of the claim elements in the prior art nor
articulated any reason for their incorporation into Bullock's nozzle. App. Br.
38. The Examiner states only that "[t]he use of a string to activate the valve
would have been a matter of design choice." Final Act. 3. The Examiner has
not "articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness." In re Kahn, 441 F.3d at 977. Accordingly,
we do not sustain the rejection of claim 21.
Regarding the rejection of claim 23, we are unable to ascertain why
Appellant believes Bullock's cap 6 does not provide "one or more
alternative apertures for fluid egress" according to claim 23. It would seem
to provide at least one alternative to not having it in place. Appellant's
arguments do not address with particularity the claim language or the
function of cap 6. Accordingly, we sustain the rejection of claim 23.
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Regarding claims 24 and 25, Appellant contends that Bullock's hose
connection 3 is not the recited "sleeve" or "color" portion because a hose is
not the same as a fluid container. App. Br. 19, 20. For reasons similar to
those discussed regarding claim 1, although connection 3 is depicted as
coupled to a hose 4, we are not apprised of what structural distinction is
introduced by the language "for insertion in a corresponding fluid
container." Connection 3 is depicted with barbs or similar structure that is
insertable into a container having an appropriately sized opening. This
makes connection 3 reasonably regarded as "for insertion in a corresponding
fluid container" even if this intended use is not expressly depicted in
Bullock.
Regarding claim 26, and claim 27 depending therefrom, Appellant
correctly argues that the Examiner has established neither the existence of
the claim elements in the prior art nor articulated any reason for their
incorporation into Bullock's nozzle. App. Br. 30. The Examiner states only
that "[t]he inclusion of a slidable external sleeve as recited in claim 26
would have been a matter of design choice since the apparatus will still
operate properly with such an addition." Final Act. 3. The Examiner has not
"articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." In re Kahn, 441 F.3d at 977. Accordingly, we
do not sustain the rejection of claims 26 and 27.
Turning to claim 14, the fact that "[t]he [Bullock] apparatus can be
coupled to the mouth of a container of eruptible liquid to form a system as
recited" (Final Act. 3) is of less relevance, as claim 14, unlike claim 1, is
directed to a combination that actually includes a container. A statement that
Bullock's nozzle could be coupled to a container does not demonstrate that it
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would have been obvious to do so. See MPEP § 2143.01(111). Thus, with
regard to the subject matter of claim 14, the Examiner has not "articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441 F.3d at 977. Accordingly, we do not sustain
the rejection of claim 14 and those claims depending therefrom.
The Examiner does not provide a separate analysis of method claim
17. If a prior art device, in its normal and usual operation, would necessarily
perform the method claimed, then the method claimed will be considered to
be unpatentable over the prior art device. In re King, 801 F.2d 1324, 1326-
27 (Fed. Cir. 1986). However, the steps of a process patent are not
necessarily taught or suggested by an apparatus which might have been able
to carry out those steps. While, as discussed above, an apparatus claim may
be unpatentable over a prior device of like construction that is capable of
performing the same function; it is otherwise with a process claim. The mere
possession of an apparatus does not teach or suggest all the possible
processes to which it may be adapted. See Carnegie Steel Co v. Cambria
Iron Co 185 U.S. 403, 424--5 (1902). As the Examiner has not articulated
any reasoning with rational underpinnings as to why the method of claim 17
would have been obvious, we do not sustain the Examiner's rejection of
claim 17 and claims 18-20 depending therefrom.
DECISION
The Examiner's rejection of claims 1-9, 11, 12, and 22-25 is
affirmed.
The Examiner's rejection of claims 10, 13-21, 26, and 27 is reversed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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