Ex Parte Jones et alDownload PDFPatent Trial and Appeal BoardFeb 24, 201712282797 (P.T.A.B. Feb. 24, 2017) Copy Citation 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. 12/282,797 03/23/2009 Timothy S. Jones JD-651A-US 5121 24804 7590 02/28/2017 MICHAEL BEST & FRIEDRICH LLP (Diversey, Inc.) 100 E WISCONSIN AVE STE 3300 MILWAUKEE, WI 53202 EXAMINER LE, MINH Q ART UNIT PAPER NUMBER 3753 NOTIFICATION DATE DELIVERY MODE 02/28/2017 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): jd.patentsupport@diversey.com mkeipdocket@michaelbest.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TIMOTHY S. JONES, CHRISTOPHER F. LANG, SUSAN K. LEWIS, MICHAEL ROOSA, JEFFREY L. CRULL, MICHAEL MALONEY, THOMAS SUTRINA, and JONATHAN MICK Appeal 2015-005193 Application 12/282,797 Technology Center 3700 Before LINDA E. HORNER, LYNNE H. BROWNE, and THOMAS F. SMEGAL, Administrative Patent Judges. BROWNE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Timothy S. Jones et al. (Appellants) appeal under 35 U.S.C. § 134 from the rejection of claims 1-3, 6-11, 13-16, 18, 19, 21, 22, 25-32, and 53-56.1 We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part and designate our affirmance a new ground of rejection pursuant to our authority under 37 C.F.R. § 41.50(b). 1 Claim 17 is objected to. Final Act. 1. Claims 33-52 are withdrawn from consideration. Appeal Br. 36-38. Appeal 2015-005193 Application 12/282,797 CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A chemical dispensing apparatus comprising: a housing within which extends a fluid passageway adapted to receive a diluent from a diluent source, the housing defining an area accumulating diluent, the diluent exiting the area under force of gravity; a wheel coupled to the housing and in fluid communication with the area, the wheel driven by the gravitational force of diluent flowing from the area; a shaft coupled to the housing and the wheel, wherein the shaft is adapted to rotate with the wheel; and a pump coupled to the housing and the shaft, wherein the pump is in fluid communication with a reservoir containing a concentrated chemical and wherein the pump is actuated by rotation of the shaft to deliver concentrated chemical to diluent flowing from the area, wherein the diluent and the concentrated chemical are dispensed from the housing only by gravitational force, and wherein the wheel, the shaft, and the pump are located within and enclosed by the housing, and together with the housing define an integrated and portable unit. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Higgins US 340,313 Apr. 20, 1886 Goodman US 3,549,048 Dec. 22, 1970 Martin US 4,923,368 May 8, 1990 Ringer US 5,167,800 Dec. 1, 1992 Kaufman US 6,029,688 Feb. 29, 2000 Baarman US 6,798,080 B1 Sept. 28, 2004 2 Appeal 2015-005193 Application 12/282,797 REJECTIONS I. Claims 1-3, 6-11, 27-31, and 53-56 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. II. Claims 1-3, 6-11, 27-31, and 53-56 stand rejected under 35 U.S.C. § 112, second paragraph, as indefinite III. Claims 1-3, 6, 11, 13, 14, 19, 27-29, and 53-55 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Goodman and Martin.2 IV. Claims 7-10 and 15 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Goodman, Martin, and Kaufman.3 V. Claims 16 and 32 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Goodman, Martin, and Ringer. VI. Claim 18 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Goodman, Martin, Ringer, and Higgins. VII. Claims 21, 22, 25, and 26 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Goodman and Baarman. VIII. Claims 30 and 31 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Goodman, Martin, and Baarman. 2 The Examiner withdraws the rejection of claims 1-3, 6, 11, 27-29, and 53- 55 as unpatentable over Martin and Goodman. Ans. 23. We note that we do not consider the order in which prior art is applied in a rejection to be significant. See e.g., In re Bush, 296 F.2d 491, 496 (C.C.P.A. 1961). The rejection is based on the combined teachings of Goodman and Martin regardless of the order in which the references are applied. 3 The Examiner withdraws the rejection of claims 7-10 as unpatentable over Martin, Goodman, and Kaufman. Ans. 23. 3 Appeal 2015-005193 Application 12/282,797 DISCUSSION Rejection I Claims 1 and 27 The Examiner determines that independent claims 1 and 27 do not comply with the enablement requirement. See Final Act. 4.4 The Examiner explains that “there does not appear to be support in the originally filed application for the dispensing to be done ‘only’ by gravity.” Id. Noting that “[t]o satisfy the enablement requirement, a disclosure must contain sufficient information regarding the subject matter of the claims as to enable one skilled in the pertinent art to make and use the claimed invention without undue experimentation,” Appellants explain how the invention works. Appeal Br. 8 (citing MPEP § 2164; Spec. 70, 95; Figs. 1, 3). In view of this explanation, Appellants argue that “claims 1 and 27 comply with the enablement requirement.” Id. at 9. The standard for determining whether the specification meets the enablement requirement was cast in the Supreme Court decision of Minerals Separation v. Hyde, 242 U.S. 261, 270 (1916), which postured the question: Is the experimentation needed to practice the invention undue or unreasonable? That standard is still the one to be applied. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). Determining enablement is a question of law based on underlying factual findings. In re Vaeck, 947 F.2d 488, 495 (Fed. Cir. 1991). The determination that “undue experimentation” would have been needed to 4 The Examiner provides no separate basis for the rejection of dependent claims 2, 3, 6-11, 27-31, and 53-55. See Final Act. 4. Accordingly, we understand these claims to stand rejected because of their dependency from either claim 1 or claim 27. 4 Appeal 2015-005193 Application 12/282,797 make and use the claimed invention is not a single, simple factual determination. Rather, it is a conclusion that may be reached by weighing the following factual considerations: (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims. Wands, 858 F.2d at 737. The rejection does not allege undue experimentation, apply the factors enumerate in Wands, or apply other similar factors. Thus, the Examiner fails to set forth a prima facie case of lack of enablement. However, given the Examiner’s statement that “there does not appear to be support in the originally filed application for the dispensing to be done ‘only’ by gravity,” it appears that the Examiner intended to reject independent claims 1 and 27 as failing to comply with the written description requirement of § 112, first paragraph, and mistakenly referred to the enablement requirement. As noted supra, Appellants direct our attention to paragraphs 70 and 95 of the Specification as providing support for the claim limitation “wherein the diluent and the concentrated chemical are dispensed from the housing only by gravitational force” required by both claim 1 and claim 27. Appeal Br. 30, 35. Paragraph 70 states: The embodiments described above at least partially work under a different principle than the embodiments shown in Fig[s]. 6-9. The embodiments shown in Figs. 1-5 generally operate under a gravitational feed principle. In other words, concentrated chemicals 34 are delivered from a reservoir 32 of concentrated chemicals 34 to the diluent 16 via gravity. Further, gravity delivers the concentrated chemicals 34 to the rotary metering device 50. Then, rotation of the rotary metering device 5 Appeal 2015-005193 Application 12/282,797 50 allows a predetermined amount of chemical 34 to be dispensed. The embodiments illustrated in Figs. 6-9 operate via a pumping principle. In other words, a pump 62 is utilized to dispense the concentrated chemical 34 from a reservoir 34 of concentrated chemical 34. The pump is [sic] some embodiments can overcome gravitational forces, while the pump in other embodiments can work in conjunction with gravitational forces. For example, in some embodiments, the chemical reservoir or portions thereof may be positioned below the pump or the dispensing outlet of the concentrated chemicals. Accordingly, gravity must be overcome by the pump. In one particular example, the pump draws chemical from a dip tube positioned in a reservoir. However, in some embodiments, the pump may be positioned such that concentrated chemicals are delivered to the pump via gravitation feed and the pump must deliver the concentrated chemicals against the force of gravity to an outlet. Spec. 15-16. Thus, the Specification describes embodiments without a pump, where the diluent and chemical are dispensed only by gravitational force, embodiments with a pump, where the pump works with gravity to dispense the diluent and chemical, and embodiments with a pump, where the pump works against gravity to dispense the diluent and chemical. However, the Specification does not describe an embodiment with a pump, where the diluent and chemical are dispensed only by gravitational force, as called for in claims 1 and 27. See id. Thus, claims 1 and 27 contain subject matter which was not described in the Specification in such a way as to reasonably convey to one skilled in the relevant art that the inventors, at the time the application was filed, had possession of the claimed invention. For this reason, we sustain the Examiner’s decision rejecting claims 1 and 27 under 35 U.S.C. § 112, first paragraph. We likewise sustain the Examiner’s decision rejecting claims 2, 3, 6-11, 53, 55, and 56 (which depend from claim 1) and claims 28-31 and 54 (which depend from claim 6 Appeal 2015-005193 Application 12/282,797 27) under 35 U.S.C. § 112, first paragraph because of their dependency from either claim 1 or claim 27. As our findings and reasoning differs from the Examiner’s, we designate our affirmance a new ground of rejection to give Appellants a full and fair opportunity to react to this rejection. Claim 56 The Examiner further determines that claim 56 fails to comply with the enablement requirement because “the concentrated chemical cannot be delivered to the wheel prior to the introduction of the diluent to the wheel.” Final Act. 4. Although the Examiner explains his understanding of the device described in the Specification, the Examiner fails to explain why undue experimentation would be required in order to practice the invention as claimed or to apply the factors enumerated in Wands, or apply other similar factors. Thus, the Examiner again fails to set forth a prima facie case of lack of enablement. Accordingly, we do not sustain this separate decision rejecting claim 56 as failing to comply with the enablement requirement. Rejection II Reasoning that because “the diluent and/or the concentrated chemical [is] delivered to the top of the apparatus by a pump,... the energy that drives the pump contribute^] to the dispensing,” the Examiner determines that the term “only” in independent claims 1 and 27 is unclear. Final Act. 5. The Examiner’s reasoning, which is essentially the same as the reasoning discussed supra in the context of the rejection based on 35 U.S.C. § 112, first paragraph, is misplaced. The claim terminology “only”, although not supported by the original Specification, is clear on its face. For this reason, we do not sustain the Examiner’s decision rejecting claims 1 and 27, and their respective dependent claims, as being indefinite. 7 Appeal 2015-005193 Application 12/282,797 Rejection III The Examiner finds that Goodman discloses all of the limitations of claim 1 except for “the diluent exiting the area under force of gravity, the wheel driven by the gravitational force of diluent flowing from the area, and the diluent and the concentrated chemical are dispensed from the housing only by gravitational force.” Final Act. 6. The Examiner finds that Martin discloses “a water wheel turbine of a mechanically simple design which allow the efficient use of weight of water to turn the water wheel at optimum rate. The water wheel turbine may be coupled to a pump which pumps water from a reservoir.” Id. (citing Martin, Fig. 2). Based on these findings, the Examiner determines that it would have been obvious to modify the chemical dispensing apparatus of Goodman to have the turbine wheel design as disclosed by Martin as alternative for the wheel of Goodman to provide the apparatus that can be operated by gravitational force of diluent as taught by Martin in the event that the pressurized water (diluent) source is not available or when no need for pressurized water at the output for a particular application such as watering small yard or plant. Id. at 6-7. The Examiner explains that the proposed combination would result in a dispensing apparatus “wherein the diluent exiting the area under force of gravity, the wheel driven by the gravitational force of diluent flowing from the area, and the diluent and the concentrated chemical are dispensed from the housing only by gravitational force.” Id. at 7. Appellants contend that “[t]he Examiner’s proposed modification would render Goodman unsatisfactory for its intended purpose.” Appeal Br. 11. In support of this contention, Appellants note that: Goodman’s apparatus relies on the pressure of water from a source to mix liquid fertilizer with the pressurized water and to discharge the mixture at a sufficient velocity to spray the mixture. Goodman specifically teaches a “proportioning 8 Appeal 2015-005193 Application 12/282,797 apparatus under fluid pressure” where fluid is “moved along with the rapid flow though the passageway out through outlet 26” to a “dispensing hose or lawn sprinkler system at its outlet 26.” The pressure is necessary to provide “for application to ... crops or grass” through “a garden hose for a lawn sprinkler system or the like.” Id. at 11-12 (citing Goodman, 3:5^10). We note that Goodman describes its invention as “relating] to a chemical dispensing or proportionating apparatus under fluid pressure without a loss in effectiveness due to back pressure at the final dispensing outlet. Goodman 1:3-6 (emphasis added). Goodman further states that “[t]he present invention is even more closely related to the mixing and dispensing of insecticides, herbicides and fertilizers by the average home owner” and “[t]his invention also has as an object the provision of a simple, economical, and yet efficient, chemical proportionator and dispenser for use by the average person in dispensing insecticides, herbicides, fertilizers, or other chemicals with commonly available equipment such as the garden hose.” Goodman 1:6-8, 39^13. Thus, we understand the intended purpose of Goodman’s apparatus is to be the delivery of a mixture with sufficient pressure to allow for application of the mixture using a garden hose, a lawn sprinkler system, or a similar apparatus. Responding to Appellants’ argument, the Examiner states that the “proposed modification would not render Goodman unsatisfactory for its intended purpose because the modified] [apparatus would] still [be] able to discharge fluid under pressure (weight or gravitational force of diluent and concentrated chemical mixture) at the outlet to crops or grass.” Ans. 25. However, the Examiner’s conclusory statement fails to explain how the modified device would be able to provide the pressure required to deliver the 9 Appeal 2015-005193 Application 12/282,797 mixture using a garden hose, a lawn sprinkler system, or a similar apparatus. Appellants are correct that in Gordon’s system, gravity alone would not provide the required pressure. Thus, Appellants’ argument that the proposed modification would render Gordon unsatisfactory for its intended purpose is persuasive. For this reason, we do not sustain the Examiner’s decision rejecting claim 1, and claims 2, 3, 6, 11, 53, and 55, which depend therefrom. The Examiner’s rejection of claims 13 and 27 suffers from the same deficiency. Accordingly, we do not sustain the Examiner’s decision rejecting claims 13 and 27, and claims 14, 19, 28, 29, and 54, which depend from either claim 13 or claim 27. Rejection IV Claims 7-10 depend from claim 1 and claim 15 depends from claim 13. Appeal Br. 30-32. Kaufman does not cure the deficiency in the rejection of claims 1 and 13 discussed supra. Accordingly, we do not sustain the Examiner’s decision rejecting claims 7-10 and 15 for the same reason we do not sustain the Examiner’s decision rejecting claims 1 and 13. Rejection V Claim 16 depends from claim 13 and the rejection of independent claim 32 relies upon the same improper combination (i.e., Goodman and Martin) as the rejection of claim 1 discussed supra. Appeal Br. 32; see also Final Act. 24-25. Ringer does not cure the deficiency in the proposed combination of Goodman and Martin. Accordingly, we do not sustain the Examiner’s decision rejecting claims 16 and 32 for the same reason we do not sustain the Examiner’s decision rejecting claim 13. 10 Appeal 2015-005193 Application 12/282,797 Rejection VI Claim 18 depends from claim 13. Appeal Br. 32. Higgins does not cure the deficiency in the rejection of claim 13 discussed supra. Accordingly, we do not sustain the Examiner’s decision rejecting claim 18 for the same reason we do not sustain the Examiner’s decision rejecting claim 13. Rejection VII Appellants argue claims 21, 22, 25, and 26 together. See Appeal Br. 29. We select independent claim 21 as the representative claim, and claims 22, 25, and 26 stand or fall with claim 1. The Examiner finds that Goodman discloses all of the limitations of claim 21 except “a generator coupled to the shaft and adapted to rotate in response to rotation of the shaft, rotation of the generator produces electricity and a pump in electric[al] communication with the generator.” Final Act. 28. The Examiner finds that Baarman discloses a hydro-power generation system for use in conjunction with a water treatment system, the embodiments of the hydro-power system include an impeller (42) rotatably positioned in a housing (16). The impeller (wheel) is rotatably coupled with a generator (46). When water flows through the system and acts on the impeller causing rotation thereof. The rotation of the impeller results in the generation of electricity for the water treatment system by the generator (46). Id. Based on these findings, the Examiner determines that it would have been obvious to modify the chemical dispensing apparatus of Goodman to have the hydropower system with the wheel coupled to the generator to produce electricity to power the pump when water is flowing through the apparatus as disclosed by Baarman et al. to provide a chemical dispensing apparatus containing] an internal power supply that requires no external electrical power 11 Appeal 2015-005193 Application 12/282,797 source and can produce power to operate the chemical dispensing apparatus as taught by Baarman (Column 2, lines 19-22). Id. at 29. Contesting the rejection of independent claim 21, Appellants refer to their argument pertaining to independent claim 13. See Appeal Br. 28. For independent claim 13, Appellants essentially repeat the arguments contesting the rejection of independent claim 1 before presenting additional arguments. See Appeal Br. 18-19. We note that the arguments pertaining to claim 1, are not pertinent to this ground of rejection as they are directed to the combination of Goodman and Martin, and Martin is not relied upon to reject claim 21. See Final Act. 27-29. Noting that “Goodman is silent regarding an apparatus including a housing, a wheel, and a reservoir that define a portable unit movable to different positions relative to the diluent source,” Appellants argue that “Goodman instead teaches that the diluent source is connected to the apparatus 10, as the water source hose is connected to inlet 22 by a female hose coupling.” Appeal Br. 19 (citing Goodman 1:71-74). Based on this fact, Appellants argue that “Goodman teaches the opposite, or away, from claim 13, as the diluent source of Goodman has to be movable relative to the apparatus 10.” Id. We do not find Appellants’ argument to be persuasive. Claim 21 merely requires a housing, wheel and reservoir that define a portable unit. The rejection identifies Goodman’s housing 16 and the large bottle which contains the reservoir 12 as corresponding to the claimed housing,5 5 Although, the rejection refers to both Goodman’s reservoir 12 and housing 16 as corresponding to the claimed housing, we understand the rejection to rely on housing 16 and the large bottle that contains the reservoir 12 as 12 Appeal 2015-005193 Application 12/282,797 Goodman’s blades 68 as corresponding to the claimed wheel, and Goodman’s reservoir 12 as corresponding to the claimed reservoir. See Final Act. 27-28. As shown in Goodman’s Figures 1-3, these items define a unit that can be moved from one hose (i,e, diluent source) to another. Thus, Goodman discloses a unit that is portable “relative to the diluent source,” as required by claim 21. For these reasons, we sustain the Examiner’s decision rejecting claim 21, and claims 22, 25, and 26 which fall therewith. As our findings and reasoning differs from the Examiner’s we designate our affirmance a new ground of rejection. Rejection VIII Claims 30 and 31 depend from independent claim 27. Baarman does not cure the deficiencies in the rejection of claim 27 discussed supra. Accordingly, we do not sustain the Examiner’s decision rejecting claims 30 and 31 for the same reasons we do not sustain the Examiner’s decision rejecting claim 27. DECISION The Examiner’s rejection of claims 1-3, 6-11, 27-31, and 53-56 under 35 U.S.C. § 112, first paragraph is AFFIRMED and designated a NEW GROUND of REJECTION. The Examiner’s rejection of claims 1-3, 6-11, 27-31, and 53-56 under 35 U.S.C. § 112, second paragraph is REVERSED. The Examiner rejections of claims 1-3, 6-11, 13-16, 18, 19, 27-32, and 53-55 under 35 U.S.C. § 103(a) are REVERSED. corresponding to the claimed housing, as Goodman’s reservoir 12 cannot be cited for both the housing and the reservoir. 13 Appeal 2015-005193 Application 12/282,797 The Examiner’s rejection of claims 21, 22, 25, and 26 under 35 U.S.C. § 103(a) is AFFIRMED and designated a NEW GROUND of REJECTION. This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the Appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. AFFIRMED-IN-PART: 37 C.F.R, § 41,501b) 14 Copy with citationCopy as parenthetical citation