Ex Parte Barish

Patent Trial and Appeal Board

Dec 30, 2014

12292211 (P.T.A.B. Dec. 30, 2014)

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.
12/292,211 11/13/2008 Benjamin J. Barish 45081 3580
67801 7590 12/30/2014
MARTIN D. MOYNIHAN d/b/a PRTSI, INC.
P.O. BOX 16446
ARLINGTON, VA 22215
EXAMINER
HYLINSKI, ALYSSA MARIE
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
12/30/2014 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 BENJAMIN J. BARISH
____________

Appeal 2012-003993
Application 12/292,211
Technology Center 3700
____________

Before: MICHAEL W. KIM, PATRICK R. SCANLON, and
WILLIAM A. CAPP, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Appellant seeks our review under 35 U.S.C. § 134 of the Final
rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
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THE INVENTION
Appellant’s invention relates to devices that use a stream of air to
blow bubbles from soapy water. Spec. 1. Claim 1, reproduced below, with
paragraph indentation added, is illustrative of the subject matter on appeal.
1. A bubble-producing device, comprising:
a container for receiving a quantity of a bubble-forming liquid to
a desired liquid level in the container,
a bubble-forming loop moveable within said container to a lower
position below said desired liquid level so as to be submerged in the
liquid when received within the container, or to an upper position
emerged from said liquid; and
a controlled gas supply system including
a source of pressurized gas remotely located from said
container and bubble-forming loop,
a flexible supply line connecting said remotely-located source
of pressurized gas to said container, and
a control device proximal to said remotely-located source of
pressurized gas for controlling the introduction of pressurized
gas from said source into said container effective:
(a) first to move said bubble-forming loop from its lower
position submerged in said bubble-forming liquid, to its
upper position emerged from said bubble-forming liquid;
and then
(b) to discharge gas through the bubble-forming loop and
thereby to produce a bubble therein.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Span
Kalish
La Fata
Johnson
Kelley
US 3,604,144
US 3,775,898
US 3,925,923
US 5,701,879
US 2006/0094324 A1
Sep 14, 1971
Dec 4, 1973
Dec 16, 1975
Dec 30, 1997
May 4, 2006
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The following rejections are before us for review:
1. Claims 1–5 and 13–17 are rejected under 35 U.S.C. § 103(a), as
being unpatentable over La Fata and Johnson.
2. Claims 6, 7, 15, 18, and 19 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over La Fata, Johnson, Span and Kelley.
3. Claims 6, 8, 15, and 18–20 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over La Fata, Johnson, Kalish, and Kelley.
4. Claims 9–12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over La Fata, Johnson and Kalish.
OPINION
Unpatentability of Claims 1–5 and 13–17
over La Fata and Johnson
Claims 1 and 2
The Examiner finds that La Fata discloses all of the elements of
claim 1 except for using a flexible supply line and spacing the pump from
the container sufficiently for it to be considered “remote.” Ans. 4, 5. The
Examiner relies on Johnson as disclosing the flexible supply line and remote
spacing limitations. Id. 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
achieve the claimed invention as such merely requires substituting one
known means of operation for another for the predictable result of forming a
manually controlled gas supply system. Id.
Appellant traverses the Examiner’s rejection by first arguing that
Johnson’s pressure chamber 16 is not remotely located from its manual
pump 25. App. Br. 9. In response, the Examiner states that the term
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“remote” merely requires the components to be spaced apart. Ans. 9. In
reply, Appellant argues that the Examiner’s construction of “remote” is
unreasonable. Reply Br. 2.
We think the Examiner’s position is correct. During examination of a
patent application, pending claims are given their broadest reasonable
construction consistent with the specification. In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). “Therefore, we look to the
specification to see if it provides a definition for claim terms, but otherwise
apply a broad interpretation.” In re ICON Health and Fitness, Inc., 496 F.3d
1374, 1379 (Fed. Cir. 2007). Appellant has not directed us to any language
in the specification that would restrict the meaning of “remote” to anything
other than its plain and ordinary meaning. In Johnson, the hand pump is
separated from the bubble-fluid container and bubble forming loop by
stock 11 that contains pressure tube 17. Fig. 1, 2:3–8. Such separation is
sufficient for the components to be considered “remote” to each other under
the broadest reasonable construction of remote.
Appellant next argues that element 17 of Johnson is not a “flexible
supply line” as claimed. App. Br. 10. The Examiner responds stating that
the curved lines for element 17 depicted in Johnson’s Figures indicates that
the line is flexible. Ans. 9. We think that the Examiner’s observation is
sufficient to shift the burden of persuasion onto Appellant. In re Spada, 911
F.2d 705, 708 (Fed.Cir.1990) (citation omitted) (“[W]hen the PTO shows
sound basis for believing that the products of the applicant and the prior art
are the same, the applicant has the burden of showing that they are not.”).
Appellant merely argues that element 17 is “probably” a rigid tube, but even
if made of flexible material, it would be rendered rigid by the stock. Reply
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Br. 3, 4. This is insufficient to carry Appellant’s burden. Appellant’s claim
is directed to the flexibility of the supply line itself, not to that of any
adjacent or surrounding structure.
Appellant also argues that a skilled artisan would not combine La Fata
and Johnson as doing so would reverse the direction of discharge of the
bubbles. Reply Br. 2. This argument is not persuasive. Combining the
teachings of references does not require combining their specific structures.
See In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). A person of ordinary
skill in the art would have been able to adapt Johnson’s teaching of
separating the air pump and the liquid container without being limited to
directing the discharge of the bubbles in the same direction shown in
Johnson’s figures.
We sustain the Examiner’s rejection of claims 1 and 2.1
Claims 3 and 13
Claim 3 depends from claim 2 and adds a limitation directed to a
storage tank for pressurized gas. Clms. App’x. Claim 13 is an independent
claim that differs in scope from independent claim 1 primarily in its
inclusion of a storage tank limitation. Id. The Examiner relies on
element 16 of Johnson as meeting this limitation. Ans. 5. Appellant argues
that element 16 is merely a transit path for pressurized gas and not a storage
tank, because it stores nothing. App. Br. 11, 13; Reply Br. 4–5.
Johnson discloses that pressure chamber 16 is adapted to receive and
store a supply of air at elevated pressure levels. Col. 2:9–11. Pressurized air
flows between the valve plunger 22 and the valve manifold 21 into pressure

1 Appellant does not argue for the patentability of claim 2 separate from
claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
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chamber 16 thereby pressuring the air in chamber 16. Id. at 2:49–52. The
pressurized air in chamber 16 flows through opening 19 into the barrel 12
upon the unsealing of air exit opening 19. Id. at 2:62–65. Based on the
foregoing passages of Johnson, we find that the Examiner’s position is
supported by a preponderance of the evidence and we sustain the Examiner’s
rejection of claim 3.
Claim 4
Claim 4 depends from claim 1 and adds a limitation directed to the
use of a control devices with two members. Clms. App’x. One control
device member moves the bubble-forming loop to submerge the loop in the
soapy water and then causes it to emerge above the soapy water. The second
control device member produces gas discharge through the loop. Id.
The Examiner finds that La Fata discloses a manually actuated
pump 15 with a manually-operable member configured to introduce gas into
the container effective to manually control both moving the bubble forming
loop from its lower position to its upper position and to discharge gas
through the bubble forming loop to produce a bubble. Ans. 4–5. In
traversing the rejection, Appellant merely recites the manual control
limitations of claim 4 and then argues in a conclusory manner that the
Examiner has not shown that the limitations are present in La Fata and
Johnson. App. Br. 12.
Appellant’s argument is insufficient. Statements in an appeal brief
that merely point out what a claim recites are not considered to present an
argument for separate patentability of the claim. 37 C.F.R.
§ 41.37(c)(1)(vii). Rule 41.37 requires more than recitation of the claim
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elements and a naked assertion that the elements are not found in the prior
art. See In re Lovin, 652 F.3d 1349 (Fed. Cir. 2011).
In any event, with respect to the first member, La Fata discloses a
shuttle 31 that is capable of traveling within cylinder 30 for raising and
lowering dip ring 27 into and out of soapy water. La Fata, 3:18–28, Fig. 7–
10. With respect to a second member, La Fata also discloses a manual
piston/cylinder pump that generates air pressure which is then directed
through a loop to blow bubbles. Id., Fig. 3–5.
In sum, Appellant’s argument is deficient under Rule 41.37. We also
find that the Examiner’s findings of fact are sufficient to support the
rejection by a preponderance of the evidence. We sustain the Examiner’s
rejection of claim 4.
Claim 5
Claim 5 depends from claim 1 and adds a limitation directed to a
cylinder with a grooved inner surface that facilitates discharge of the
pressurized gas upon displacement of the piston. Clms. App’x. The
Examiner observes that the groove in the cylinder is a mere change in shape
that amounts to no more than an obvious design choice. Ans. 6, 11. We
disagree.
Appellant’s piston and grooved cylinder operate in a cooperative
fashion so as to function as a valve. See Figs. 1 and 3. Pressurized gas is
released to inflate bubbles when the piston moves upward in response to
pressurization of the cylinder by the pump, i.e., a valve open position. Id.
The groove in the inner surface of the cylinder allows the pressurized gas to
circumvent the piston wall when the piston is moved to its raised, valve
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open, position. The piston is spring biased to return to a valve closed
position when the gas pressure is released. Id., Spec. 8:4–13.
Appellant’s invention uses a manual pump, such as a squeeze bulb, to
generate pressurized gas to raise and lower the piston. Spec. 4:4–10. In
contrast, La Fata uses a piston/cylinder combination as a pump means to
pressurize gas, not as a valve to selectively release gas. La Fata, Figs. 3–5.
Similarly, Johnson also uses a piston/cylinder combination as a pump means
to pressurize gas, not as a valve. Johnson, Col. 2:20–39; Figs. 1–3.
Johnson’s release valve 18 is not incorporated into its piston/cylinder air
pump 14, but rather is mounted within pressure chamber 16. Id. at 2:7–9.
Thus, there is no “shape” of any kind incorporated into Johnson’s cylinder
wall that permits the piston/cylinder pump to function as a valve.
The Examiner identifies no structure of any shape disposed in the
cylinder wall of the recited art that allows the piston/cylinder configuration
to function as a gas discharge valve as claimed in claim 5. Thus, there is no
identified structure that could satisfy the claim limitation by merely
changing its shape in an obvious manner. We do not sustain the Examiner’s
rejection of claim 5.
Claims 14–17
Claims 14–17 depend, directly or indirectly, from claim 13.
Appellant does not argue for the separate patentability of claim 14 apart
from arguments advanced with respect to claim 13. In that regard, claim 14
falls with claim 13. Appellant argues claims 15–17 as a sub-group. App.
Br. 13. We select claim 15 as representative.
Claim 15 depends directly from claim 13 and adds a limitation
directed to a plurality of bubble-forming loops. Clms. App’x. The
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Examiner rejected this claim under In re Harza, 274 F.2d 669 (CCPA 1960),
as constituting nothing more than a mere duplication of parts. Appellant
argues that the claimed feature involves a totally different concept from that
of either La Fata or Johnson and, therefore, a person of ordinary skill in the
art would not be motivated by either La Fata or Johnson to achieve the
claimed invention.
We agree with the Examiner that claim 15 entails nothing more than
the mere duplication of parts. The Examiner’s reliance on Harza is
appropriate to the facts presented. We sustain the rejection of claims 14–17
over La Fata and Johnson.
Unpatentability of Claims 6, 7, 16, 18, and 19 over
La Fata, Johnson, Span, and Kelley
Appellant argues these claims together. App. Br. 13–14. We select
claim 6 as representative. Claim 6 depends from claim 1 and adds a
limitation directed to dividing the bubble forming liquid container into a
plurality of sections each with its own loop that can be dipped into the
liquid. Clms. App’x. The Examiner finds that Span discloses a bubble
producing device with a plurality of bubble forming loops. Ans. 6.
According to the Examiner, it would have been obvious to one of ordinary
skill in the art to use a plurality of loops and a plurality of liquid containers
in order to create interesting and more complex bubble configurations.
Ans. 6.
In traversing the Examiner’s rejection, Appellant argues that a person
of ordinary skill in the art would not combine Span and/or Kelley with La
Fata and Johnson based on specific structure recited in such references that
Appellant implies render them patentably distinguishable from the claimed
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invention. App. Br. 13. Appellant’s argument is conclusory in nature and is
unaccompanied by any supporting evidence or technical reasoning,
The language of claim 6 is quite broad and is satisfied by any
apparatus that satisfies claim 1 and also uses a plurality of loops each with
its own liquid container. Span discloses a bubble blowing toy with a
plurality of loops. See Span Figs. 3–5; col. 2:22–54. Appellant provides no
persuasive argument or technical reasoning to overcome the Examiner’s
conclusion that person of ordinary skill in the art would have found it
obvious to use a plurality of loops and liquid containers by combining the
teachings of La Fata and Johnson with that of Span of Kelley.
We sustain the Examiner’s rejection of claims 6, 7, 16, 18, and 19
over La Fata, Johnson, Span, and Kelley.
Unpatentability of Claims 6, 8, 15, and 18–20 over
La Fata, Johnson, Kalish, and Kelley
In this ground of rejection, the Examiner relies on La Fata and
Johnson for the same features cited against claim 1. Ans. 7. The Examiner
relies on Kalish as disclosing a plurality of loops that can each be moved
between a lower position in bubble forming liquid and a raised position
emerged from the liquid. Id. The Examiner also finds, and Appellant does
not dispute, that Kalish’s loops are arranged in an annular array. Id. 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 adopt the teachings of Kalish to
La Fata to create a greater number of bubbles.
In traversing the rejection of claims 6, 8, 15, and 18–20 over La Fata,
Johnson, Kalish, and Kelley, Appellant relies on the same arguments that we
have previously considered and found unpersuasive with respect to claims 1
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and 13 respectively. App. Br. 14. Appellant also argues, in conclusory
fashion, that there is no motivation to combine these four references absent
hindsight.
Appellant’s conclusory argument does not persuade us that the
Examiner erred in rejecting this claims. We sustain the rejection of
claims 6, 8, 15, and 18–20 over La Fata, Johnson, Kalish, and Kelley.
Unpatentability of Claims 9–12 over
La Fata, Johnson, and Kalish
Appellant argues claims 9–12 as a group. App. Br. 15.2 We select
independent claim 9 as representative. In this ground of rejection, the
Examiner relies on La Fata and Johnson for the same features cited against
claim 1. Ans. 7–8. The Examiner relies on Kalish as disclosing a plurality
of loops that can each be moved between a lower position in bubble forming
liquid and a raised position emerged from the liquid. Ans. 8. The Examiner
also finds, and Appellant does not dispute, that Kalish’s loops are arranged
in an annular array. Id. 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
adopt the teachings of Kalish to La Fata to create a greater number of
bubbles. Id. The Examiner also concludes that adding a plurality of loops to
La Fata entails nothing more than mere duplication of parts.
In traversing the rejection of claim 9 over La Fata, Johnson, and
Kalish, Appellant argues that the doctrine of duplication of parts should not
be applied to the instant claims. Appellant also contends, in conclusory

2 We do not consider the paragraph regarding claims 10–12 on page 15 of
the Appeal Brief to constitute a separate argument for patentability. Lovin,
supra.
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fashion, that claim 9 is drawn to a different concept from the recited
references.
Appellant’s conclusory argument regarding a “different concept” is
not persuasive. App. Br. 13. La Fata uses a single bubble forming loop.
Kalish uses a plurality of loops in an annular array. La Fata and Kalish both
use air pressure in conjunction with a mechanism to raise and lower a loop
into soapy water. La Fata and Kalish both use the same supply of air for
raising and lowering the loop(s) to also inflate the soap bubbles. Appellant
does not articulate how its concept differs, in a patentably distinct manner,
from the prior art.
We also agree with the Examiner that claim 9 entails nothing more
than a mere duplication of parts. The Examiner’s reliance on Harza is
appropriate to the facts presented. We sustain the rejection of claims 9–12
over La Fata, Johnson, and Kalish.

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DECISION
1. The decision of the Examiner to reject claims 1–4 and 13–17 over
La Fata and Johnson is AFFIRMED.
2. The decision of the Examiner to reject claim 5 over La Fata and
Johnson is REVERSED.
3. The decision of the Examiner to reject claims 6, 7, 15, 18, and 19
over La Fata, Johnson, Span and Kelley is AFFIRMED.
4. The decision of the Examiner to reject claims 6, 8, 15, and 18–20
over La Fata, Johnson, Kalish, and Kelley is AFFIRMED.
5. The decision of the Examiner to reject claims 9–12 over La Fata,
Johnson, and Kalish 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)(1)(iv).

AFFIRMED-IN-PART

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