Ex Parte Farrell

Board of Patent Appeals and Interferences

Mar 29, 2012

11046468 (B.P.A.I. Mar. 29, 2012)

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.
11/046,468 01/28/2005 Patrick L. Farrell 3283 2233
7590 03/30/2012
WALTER A. HACKLER, Ph.D.
PATENT LAW OFFICE
SUITE B
2372 S.E. BRISTOL STREET
NEWPORT BEACH, CA 92660-0755
EXAMINER
COOLEY, CHARLES E
ART UNIT PAPER NUMBER
1774
MAIL DATE DELIVERY MODE
03/30/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PATRICK L. FARRELL
____________

Appeal 2011-002741
Application 11/046,468
Technology Center 1700
____________

Before BRADLEY R. GARRIS, MARK NAGUMO, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 3 and 11. We have jurisdiction under 35 U.S.C.
§ 6.
We AFFIRM.
Appellant claims a magnetic aerator 50 comprising: a pair of parallel
spaced apart submergible liquid agitating blades 54, 56 having a gap there-
between and insertable into a hand held beverage container; a magnet 64, 66
disposed within each of the blades; and a stem 30 fixed to the blades and
Appeal 2011-002741
Application 11/046,468

2
enabling manual agitation and aeration of the liquid by rotating the stem and
thereby passing liquid through the blade gap (claims 3, 11; Fig. 4).
Representative claim 3 reads as follows:
3. A magnetic aerator comprising:

a pair of parallel spaced apart submergible liquid agitating blades
having a gap therebetween and insertable into a hand held beverage
container;

a magnet disposed within each of the blades, each magnet introducing
a magnetic field into a liquid disposed in the container, the magnets being of
opposite polarity; and

a rotatable stem fixed to the blades and enabling manual agitation and
aeration of the liquid by passing liquid through the blade gap proximate a
surface of the liquid by rotation of the stem.

The references listed below are relied upon by the Examiner as
evidence of anticipation:
Bornstein 1,489,057 Apr. 1, 1924
Rosinger 2,350,534 Jun. 6, 1944
Hammond, Jr. 2,542,329 Feb. 20, 1951
Worth 3,384,353 May 21, 1968
Kennedy 5,429,402 Jul. 4, 1995

Under 35 U.S.C. § 102(b), the Examiner rejects:
claims 3 and 11 as anticipated by any one of Rosinger, Worth,
Bornstein, Kennedy, or Hammond (Fig. 3); and
claim 3 as anticipated by Hammond (Fig. 1).
Appeal 2011-002741
Application 11/046,468

3
For the reasons given by the Examiner in the Answer, we sustain the
§ 102 rejections based on Rosinger, Worth, Bornstein, and Hammond. The
following comments are added for emphasis.
"To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently." In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Moreover,
"where the Patent [and Trademark] 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."

Id. at 1478 quoting In re Swinehart, 439 F.2d 210, 213 (CCPA 1971).
Although Appellant is correct that the Rosinger, Worth, Bornstein,
and Hammond references do not explicitly disclose the functional limitations
of claims 3 and 11 (Br. 8-13), the Examiner has provided this record with
persuasive reasons for believing that these functional limitations are inherent
characteristics of the respective devices disclosed in these references. That
is, the Examiner has given a convincing rationale that the prior art devices
are inherently capable of performing the functions recited in claims 3 and 11
based on the structural correspondence between these devices and the
claimed magnetic aerator. In this way, the Examiner has shifted to
Appellant the burden of proving that the prior art devices do not inherently
possess this capability. Appellant has not provided this record with any such
proof.
Appeal 2011-002741
Application 11/046,468

4
We cannot sustain the § 102 rejection based on Kennedy.
As correctly argued by Appellant, the blades (i.e., fingers) of
Kennedy's "broom-like device" (col. 1, l. 44) are not sized to be "insertable
into a hand held beverage container" as required by claims 3 and 11 (Br. 12).
The Examiner has given no reason for believing that the device of Kennedy
is inherently capable of performing this claim function. Furthermore,
contrary to the Examiner's position (Ans. 13), the limitation defined by this
claim function is not somehow negated by the fact that the claims do not
recite the container itself as part of the claimed invention.
The decision of the Examiner 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).
AFFIRMED

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