Ex Parte Allis

Patent Trial and Appeal Board

Feb 29, 2016

12502453 (P.T.A.B. Feb. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/502,453 07/14/2009
2352 7590 03/01/2016
OSTROLENK FABER LLP
1180 A VENUE OF THE AMERICAS
NEW YORK, NY 10036-8403
FIRST NAMED INVENTOR
Anthony Allis
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.
P/4463-26 (Vl4594) 6245
EXAMINER
PRICE, CRAIG JAMES
ART UNIT PAPER NUMBER
3753
MAILDATE DELIVERY MODE
03/01/2016 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 ANTHONY ALLIS
Appeal2013-010347
Application 12/502,453
Technology Center 3700
Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
MARK A. GEIER, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Anthony Allis (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner's decision to reject under 35 U.S.C. § 103(a) claims 2-5 as
unpatentable over Hughes (US 849,843; iss. Apr. 9, 1907), Bluteau (US
7,232,519 B2; iss. June 19, 2007), and Muskalla (US 3,467,135; iss. Sept.
1 The Examiner has withdrawn the rejection of claims 2-5 under 35 U.S.C.
§ 112, first paragraph, for failing to comply with the enablement requirement.
See Advisory Act. 2 (mailed Oct. 24, 2012). In addition, the Examiner has
withdrawn the rejection of claim 2 under 35 U.S.C. § 112, second paragraph,
for indefiniteness. Id.
Appeal2013-010347
Application 12/502,453
16, 1969). Claims 1 and 6 have been canceled. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to "a siphon for siphoning water
from an aquarium into a bucket." Spec. para. 6; Figs. 1, 2. Claims 2 and 3
are independent.
Claim 2 is illustrative of the claimed subject matter and recites:
2. A siphon for siphoning water from an aquarium into a bucket,
compnsmg:
a siphon tube having a first end for insertion into a tank and
a second end for insertion into the bucket;
magnet means for releasably attaching the siphon tube to
the tank;
magnet means for releasably attaching the siphon tube to
the bucket; and
magnet means for closing the second end of the siphon tube
when the water in the bucket reaches a predetermined level.
ANALYSIS
Claim 2
The Examiner finds that Hughes "disclose[ s] all of the features of the
claimed invention although [it is silent as to] the claimed magnet means."
Final Act. 5; Ans. 3. The Examiner also finds that "Bluteau discloses a
fluid handling system for a fish tank which teaches the use of a pair of
magnets (12, 14) for releasably attaching a device to the wall of the tank"
and concludes:
[i]t would have been obvious to one of ordinary skill in the art at
the time the invention was made to substitute a pair of magnets
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Application 12/502,453
as taught by Bluteau et al. for the mechanical connection device
(33-35) and the square cover and washer of the device as Hughes
et al. to have magnet means for releasably attaching the siphon
tube to the tank and magnet means for releasably attaching the
siphon tube to the bucket, wherein one of the magnets of the first
pair is mounted on the aquarium while the other is mounted on
the hose, and one of the magnets of the second pair is mounted
on the bucket while the other is mounted on the hose, in order to
have a device which can be removed from installation more
quickly for maintenance purposes and to avoid introducing hands
or other foreign objects, such as metal particles which may fall
off the of threaded device 33, 34 of Hughes et al., into the eco
system of the tank (Bluteau et al., Col. 2, Lns. 58-61 ).
Final Act. 5---6; Ans. 3--4. The Examiner further finds "[Hughes] and
Bluteau ... disclose[] all of the features of the claimed invention although
[they are silent as to] magnetic means for closing the second end of the
siphon tube when the water in the bucket reaches a predetermined level,"
and the Examiner relies on Muskalla for teaching this limitation. Final Act.
6-7; 1A1ns. 4-5. The Examiner concludes that it \~1ould have been obvious to
substitute a magnetic valve as taught by Muskalla for the valve of the
device resulting from the combined teachings of Hughes and Bluteau "as
the device would perform as equally as well and in order to have a small
inexpensive valve for shutting off the flow of gravity fed liquids once a
desired level has been reached (Muskalla, Col. 1, Lns. 34-36)." Final Act.
7; Ans. 5.
Appellant contends that
Bluteau merely teaches magnets for attaching a powerhead to a
tank. There is no teaching or suggestion in Bluteau of using
magnetic means to releasably attach a siphon to a tank, or using
magnetic means to releasable [sic] attach the siphon to a bucket
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Application 12/502,453
or magnetic means for closing the second end of the siphon tube
when the water in the bucket reaches a predetermined level.
Br. 4. Appellant further contends that "Muskalla merely teaches a magnetic
float valve but does not teach or suggest combining the float valve with the
other elements defined in claim 2." Id.
Appellant's arguments are not persuasive. Appellant has not
presented evidence or persuasive arguments to apprise us of error regarding
the Examiner's findings or conclusions relative to the combined teachings
of Hughes, Bluteau, and Muskalla. Appellant merely refers to limitations
of claim 2 and asserts that Bluteau and Muskalla do not teach or suggest
those limitations. See id. Merely reciting the language of the claims and
asserting that the cited prior art references do not disclose each claim
limitation is insufficient to apprise us of Examiner error. See 37 C.F.R. §
41.37(c)(l)(iv) (2015) ("A statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
claim."); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e
hold that the Board reasonably interpreted Rule 41.37 to require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art."). As such, Appellant's arguments regarding the
teachings of the references do not apprise us of Examiner error.
Further, to the extent Appellant is arguing that the cited references fail
to provide a reason for the Examiner's proposed combination (see Br. 4), we
consider Appellant's argument to be a rigid application of the teaching,
suggestion or motivation ("TSM") test, a practice which was rejected by the
Supreme Court inKSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007).
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Application 12/502,453
The proper inquiry is whether the Examiner has articulated adequate
reasoning based on a rational underpinning to explain why a person of
ordinary skill in the art would have been led to combine the teachings of the
cited art as applied in the rejection. See KSR, 550 U.S. at 418 (stating that
"rejections on 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"
(quoting In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006))). Further, the
reason to modify the reference may often prompt a person of ordinary skill
in the art to do what the inventor has done, but for a different purpose or to
solve a different problem. It is not necessary that the prior art suggest the
combination to achieve the same advantage or result discovered by an
applicant. See In re Kahn, 441 F.3d at 987.
In this case, the Examiner has provided articulated reasoning with a
rational underpinning for combining the teachings of Hughes and Bluteau,
namely
to have a device which can be removed from installation more
quickly for maintenance purposes and to avoid introducing hands
or other foreign objects, such as metal particles which may fall
off ... of threaded device of threaded device 33, 34 of Hughes et
al. into the eco system of the tank.
Final Act. 6; Ans. 4 (both citing Bluteau, col. 2, 11. 58---61 ). The Examiner
has similarly articulated reasoning with a rational underpinning for
modifying the device resulting from the combined teachings of Hughes and
Bluteau to include the magnetic valve of Muskalla, namely "to have a small
inexpensive valve for shutting off the flow of gravity fed liquids once a
desired level has been reached." Final Act. 7; Ans. 5 (both citing Muskalla,
col. 1, 11. 34--36). Thus, we are not persuaded of error in the Examiner's
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Application 12/502,453
reasons for the combination of Hughes, Bluteau, and Muskalla.
Accordingly, for the foregoing reasons, we sustain the Examiner's
rejection of independent claim 2 as unpatentable over Hughes, Bluteau, and
Muskalla.
Claim 3
Appellant presents arguments for independent claim 3 separate from
those presented for independent claim 2. See Br. 4--5. However, like
Appellant's arguments directed to claim 2, Appellant has not presented
evidence or persuasive arguments to apprise us of error regarding the
Examiner's findings or conclusions relative to the combined teachings of
Hughes, Bluteau, and Muskalla. Similar to that discussed above for claim 2,
Appellant merely refers to limitations of claim 3, asserts that Bluteau and
Muskalla do not teach or suggest those limitations, and asserts that the
Examiner fails to provide articulated reasoning because the rejection fails to
identify precise teachings in Bluteau and Muskalla regarding the
combination of the references. As discussed above in reference to claim 2,
these arguments are not persuasive. Accordingly, for reasons similar to
those discussed above, we likewise sustain the Examiner's rejection of
independent claim 3 as unpatentable over Hughes, Bluteau, and Muskalla.
Claim 4
Appellant presents arguments for dependent claim 4 separate from
those presented for independent claims 2 and 3. See Br. 5---6. Specifically,
Appellant asserts that "Muskalla ... does not disclose or suggest a float
valve cooperating with a magnetic element outside of the valve, let alone a
magnetic element located in the siphon." Id. at 6.
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In response to Appellant's argument, the Examiner states:
Muskalla discloses magnetic float valve ( 1 and 7, Col. 1, Ins 66-
71 ), where the float 1 having a magnetic bar 7, rises to the level
of the fluid until the magnetic attraction between part 7 and 2
(which is considered as being outside of the valve, occurs, then
the valve is closed shut by the magnetic attraction (Col. 2, Ins.
12-27) and therefore the rejection must be maintained.
Ans. 7 (emphasis added); see also Muskalla, Figs. 1, 2.
Appellant does not respond to the foregoing Examiner's finding, and as
discussed above, merely reciting the language of the claims and asserting
that the cited prior art references do not disclose each claim limitation is
insufficient. See 37 C.F.R. § 41.37(c)(l)(iv) (2015); see also In re Lovin,
652 F.3d at 1357. Thus, Appellant has not apprised us of error in the
Examiner's rejection, and we sustain the Examiner's rejection of dependent
claim 4 as unpatentable over Hughes, Bluteau, and Muskalla.
Claim 5
Appellant presents arguments for dependent claim 5 separate from
those presented for claims 2, 3, and 4. See Br. 6. Appellant argues:
Id.
With respect to Bluteau, there is no teaching or suggestion in
Bluteau of using a first pair of magnets to releasably attach a
siphon to a tank, or using a second pair of magnets to releasable
[sic] attach the siphon to a bucket. Similarly, there is no teaching
or suggestion in Muskalla of using a first pair of magnets to
releasably attach a siphon to a tank, or using a second pair of
magnets to releasable [sic] attach the siphon to a bucket.
Appellant's argument for claim 5 is similar to that presented for
claims 2 and 3, namely that the Examiner fails to provide articulated
reasoning because the rejection fails to identify precise teachings in Bluteau
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Application 12/502,453
and Muskalla regarding the combination of the references. As discussed
above in reference to claims 2 and 3, this argument is not persuasive. See
KSR, 550 U.S. at 418 (stating that an obviousness analysis "need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ"). For reasons similar to
those discussed above for claims 2 and 3, Appellant has not apprised us of
error in the Examiner's rejection of claim 5. Accordingly, we sustain the
Examiner's rejection of dependent claim 5 as unpatentable over Hughes,
Bluteau, and Muskalla.
DECISION
We AFFIRM the decision of the Examiner to reject claims 2-5.
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
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