Ex Parte Kilduff et al

Patent Trial and Appeal Board

Aug 31, 2017

14156360 (P.T.A.B. Aug. 31, 2017)

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.
14/156,360 01/15/2014 Edward H. Kilduff DLP3C2 5343
23684 7590
Thomas J. Brindisi
1613 Sunshine Avenue
Key West, EL 33040
09/05/2017 EXAMINER
LAROSE, RENEE MARIE
ART UNIT PAPER NUMBER
3667
NOTIFICATION DATE DELIVERY MODE
09/05/2017 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):
brindisi @ aol.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD H. KILDUFF, CHI MING TSE,
GARETH BROWN, and CHI FAI CHEUNG
Appeal 2016-004941
Application 14/156,360
Technology Center 36001
Before LINDA E. HORNER, THOMAS F. SMEGAL, and
ERIC C. JESCHKE, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Edward H. Kilduff et al. (“Appellants”)2 3seek review under 35 U.S.C.
§ 134(a) of the Examiner’s decision, as set forth in the Final Office Action
dated May 4, 2015 (“Final Act.”), rejecting claims 1—25. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm in part?
1 This Application was originally assigned to Art Unit 3742, but is
now assigned to Art Unit 3667.
2 Appellants identify Enrico Dalla Piazza as the real party in interest.
Appeal Br. 2.
3 This appeal is related to (1) Appeal 2016-001941 in Application
12/069,374 and (2) Appeal 2016-004904 in Application 13/648,520.
Appeal 2016-004941
Application 14/156,360
BACKGROUND
The disclosed subject matter “relates to devices used to spin items
centrifugally, and more particularly, to a pivotally-leveraged manual
centrifugal drive such as for use in drying items such as leafy vegetables and
other food items.” Spec. 12. Claims 1, 13, and 20 are independent. Claim
1 is reproduced below:
1. A device for use with food items, comprising:
an assembly including a bowl and a lid
formed to mate with the bowl, the lid defining a
handle axis of rotation, the bowl defining a holding
area;
a handle mechanism pivotally coupled to the
lid and rotatable about the handle axis of rotation;
an inner member rotatable about an inner
member axis of rotation to spin food items, if any,
in the holding area, the inner member axis of
rotation being non-parallel with and spaced apart
from the handle axis of rotation; and
a drive-train configured to rotate the inner
member and including a slidable member, the
slidable member being movable along at least a
portion of the lid when the handle mechanism is
rotated about the handle axis of rotation.
2
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Application 14/156,360
REJECTIONS4
1. Claims 1—12 and 20-25 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Bull (US 5,562,025, issued Oct. 8, 1996) and David
(US 4,374,574, issued Feb. 22, 1983). Final Act. 2^1, 6-8.5
2. Claims 13—19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bull. Final Act. 4—6.
DISCUSSION
Rejection 1 — Claims 1—12 and 20—25
In the Final Office Action, the Examiner relied on Bull for various
aspects of independent claims 1 and 20, but stated that Bull “does not
specifically teach the basket axis of rotation being non-parallel with and
spaced apart from the handle axis of rotation.” Final Act. 2—3 (claim 1), 6—7
(claim 20). The Examiner found, however, that “David teaches a grinding
tool that utilizes a handle that moves on an axis that is non-parallel with the
axis of rotation (movement of lever 13 on side of housing 1 imparts
clockwise rotation, Col 3, lines 55 — 60).” Id. at 3, 7. For both independent
claims, the Examiner concluded that it would have been obvious to modify
4 In the Final Office Action, the Examiner stated: “With respect to the
[§] 112 objections, since the prosecution of the case was re-opened, allowing
arguments to be re-addressed, Supervisor, Henry Yuen asked that all [§] 112
and drawing objections be placed on the record and Examiner complied with
the guidelines. These rejections are therefore Final.” Final Act. 2. To the
extent this statement was a rejection of claims 1—25 under 35 U.S.C. § 112,
first paragraph, the Examiner now withdraws that rejection. See Ans. 4.
5 Although the Examiner separates the discussion of this Rejection
into two groups of claims, both groups are rejected on the same basis. See
Final Act. 2-4 (claims 1—12), 6—8 (claims 20-25). We address these two
groups of claims together.
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Application 14/156,360
Bull to include the relied-upon features of David “since it is well known in
the art to use the torque produced by a lever to drive a wheel (See Col 2,
lines 20 — 30 in David).” Id. at 3, 7.
In the Answer, the Examiner replaces the original reasoning statement
for modifying Bull with the teachings of David (as set forth in the prior
sentence). The Examiner states that, in Bull, “[t]he knob [38] and the gear
housing are placed onto the top of the bowl. . ., giving a user an awkward
and bulky design to store” and that, “[o]nce stored, the knob does not lock,
so it gets moved around causing possible breakage of the knob and gear
parts.” Ans. 5. According to the Examiner, “it would have been obvious to
one skilled in the art to improve the Bull design to overcome these issues,
and improve the product so that it is more robust and user friendly.” Id. The
Examiner states that “[a]n inventor using Bull may wish as an improvement
for the user to only have to use one hand when spinning the colander” and
that “[o]ne may do that by looking at items that require only one hand to
operate,” such as the device in David. Id. According to the Examiner, lever
13 in David
shows usefulness in two ways 1) it allows the user a one handed
pumping action and 2) a flat handle removes the bulk of the knob
and gear housing thus flatten[ing] the top of the bowl (all
components are tucked way) giving ease to storing and less
bulk[,] alleviating the damage concern.
Id. at 6. The Examiner also states:
The Examiner uses David for what it teaches about one
handed flat handle with a gear moving member to turn the gear,
thus giv[ing] a pivotal movement between the extended position
and the down position. David clearly demonstrates that handle —
the handle being on the side of the housing does not preclude a
person having ordinary skill in the art to place the same type of
handle on the top or a bottom of a housing. The elements of a
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Application 14/156,360
handle orientated for a direction of pivotal movement ... is
achieved by the element(s) used in the combination.
Id. at 7—8.
As an initial matter, we set forth our understanding of the modified
device proposed by the Examiner. We understand the Examiner to propose
modifying the embodiment of, for example, Figure 3 of Bull by
(1) removing handle 42 and knob 38 and (2) providing structures similar to
lever 13, rack 12, pin 14, pins 16, and leaf spring 17 of the embodiment of
Figures 1 and 2 of David to drive pinion gear teeth 34 of Bull.6 Although
the Examiner discusses the possibility of providing structure such as lever 13
of David “on the top or a bottom of a housing” (Ans. 7—8), we understand
the modified device as proposed in the Final Office Action to include lever
13 on the side of salad spinner 10 from Bull and thus, in essentially the
orientation shown in Figures 1 and 2 of David.
Addressing the revised reasoning statements in the Answer,
Appellants argue that “the cited motivations — ‘one-handed operation,’
‘never having to hold the bowl down,’ ‘more robust and user-friendly,’ less
‘awkward and bulky design’ etc. — seem a post hoc selection of advantages.”
Reply Br. 2.
Rejections based on obviousness must be supported by “some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006),
cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). Although we do not necessarily agree with the entirety of
6 Although the Answer supports this understanding of the modified
device (Ans. 5—8), the Final Office Action indicates that the modified device
retains handle 42 and knob 38 of Bull. See Final Act. 2—3, 6—7.
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Application 14/156,360
Appellants’ characterization of the revised reasoning statements, we agree
that the Examiner has not provided adequate articulated reasoning to
combine the relied-upon aspects of Bull and David to support the conclusion
of obviousness of independent claims 1 and 20.
First, it is unclear how a user could operate the modified device with
one hand. The cited embodiment of David provides the benefit of one-
handed operation because of the overall size of the device, which allows
using the “encircling grip of the user’s hand” to hold housing 1 while
operating lever 13. David, col. 2,11. 25—27, Fig. 1. In other words, the mere
presence of lever 13 and rack 12 from David would not necessarily allow
one-handed operation in the modified device, even though that benefit is
present in the cited embodiment of David. Second, it is unclear how the
modified device—which would include lever 13 of David in the orientation
as shown in solid line in Figure 1 when not in use (see col. 3,11. 56—61)—
achieves a less awkward and bulky design than that shown in Bull.
We turn now to a potential alternative version of the modified device,
in which lever 13 is mounted on the top of salad spinner 10 from Bull. As
noted above, in the Answer, the Examiner discusses such a modification,
stating, “the handle being on the side of the housing does not preclude a
person having ordinary skill in the art to place the same type of handle on
the top or a bottom of a housing.” Ans. 8. To the extent the Examiner
proposes such a modification, we do not sustain Rejection 1 on that basis.
The Examiner does not articulate reasoning with rational underpinning to
modify the teachings of David to move lever 13 from the side of a rotated
structure (as taught, for example, in Figure 1 of David) to the top of a rotated
structure (as would be present in this alternative modified device). As noted
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Application 14/156,360
by Appellants, “side-mounting [of lever 13] is all that is described and
shown [in David].” Appeal Br. 17 n. 14. Further, the Examiner does not
explain how pinion gear 34 in Bull could be rotated by rack 12 from David if
lever 13 from David were mounted on top of salad spinner 10 in Bull.
For these reasons, we do not sustain the rejection of independent
claims 1 and 20 as unpatentable over Bull and David, and also do not sustain
the rejection of claims 2—12 (which depend from claim 1) and claims 21—25
(which depend from claim 20).
Rejection 2 — Claims 13 19
A. Claims 13, 17, and 18
For the claims in this group, Appellants argue the patentability of
independent claim 13 and do not separately argue claims 17 and 18, which
depend from claim 13. Appeal Br. 19—23. Thus, we address claim 13, with
claims 17 and 18 standing or falling with claim 13. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2014).
In the Final Office Action, the Examiner found that Bull discloses the
final clause of claim 13, stating:
Bull teaches the drive-train having a slidable member 43 (gear
teeth 34 connect via pins 56 to colander 14; Fig. 3), the drive
shaft having (top, bottom, and middle of gear teeth 34; Fig. 3),
the first gear mates with a second gear drivable connecting the
manually- operable handle to the first gear (second end of drive
shaft mates with teeth 50, i.e., second gear, on handle 42; Fig. 3)
causing rotation of colander in response to the handle mechanism
42 rotating about the handle axis (in opening 29) to move the
slidable member 43 relative to the apparatus.
Final Act. 5.
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Application 14/156,360
First, Appellants argue that Bull does not disclose a “drive-train”
including a “slidable member” as recited in the final clause of claim 13.
Appeal Br. 19. Appellants contend that “[p]lain meaning, the specification,
and the prosecution history dictate that the claimed ‘slidable member’
requires substantially linear — not pivotal or rotational — movement.” Id. As
to the Specification, Appellants note that paragraph 7 “describes that
‘downward and upward pivoting of the handle 24 produce forward and
backward motion of the rack 72”’ and state that, “as can be seen in Figs. 3,
6, and 7, the rack 72 is within the lid (aka centrifugal drive 20) and the tracks
77 on which the rack is described by the accompanying text as sliding are
depicted as linear such that the sliding must be linear as well.” Id. at 19—20.
As to prosecution history, Appellants contend to have “made clear
statements on the record, including in the pending Interference Request that”
“slidable member” (and similar language) should be limited in the manner
proposed. Id. at 20. Appellants also state that the claims in this Application
were copied from US Patent No. 8,353,474, “which issued from a
continuation of a parent application (S.N. 12/005,160) in which the Office
specifically rejected claims over the same combination of Bull and David as
here — but then withdrew that rejection when those claims were amended to
additionally recite a ‘slidable member’ or ‘slider.’” Appeal Br. 22.
Applying the proposed construction, Appellants argue that “central curved
section 43 is not ‘slidable’ as claimed” because “Bull’s entire handle 42
including its central curved section 43 is only capable of pivoting in an arc
and it cannot move linearly.” Id. at 20.
During examination, claims are given their broadest reasonable
interpretation consistent with the specification, reading the claim language in
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Application 14/156,360
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983). For the reasons
below, we do not agree with Appellants that the broadest reasonable
construction of “slidable member” requires “substantially linear” movement.
Appeal Br. 19.
As to the claim language, the limitation at issue recites that, during
operation, certain structures “move the slidable member relative to the
apparatus,” but does not require that the “move[ment] . . . relative to the
apparatus” be substantially linear. See Ans. 9 (stating that “the features
upon which Appellants] rel[y] (i.e., slidable member requires substantially
linear movement) are not recited in the rejected claim(s)”).
Although the Specification does describe an embodiment with a
“slidable member” (i.e., rack 72) that moves linearly on tracks 77 (see Spec.
17; Figs. 3, 7), when construing a claim term, one should not import
narrower definitions for terms based on specific embodiments disclosed in
the specification. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
1993); see also Anchor Wall Sys., Inc. v. RockwoodRetaining Walls, Inc.,
340 F.3d 1298, 1306-07 (Fed. Cir. 2003) (stating that “the mere fact that the
patent drawings depict a particular embodiment of the patent does not
operate to limit the claims to that specific configuration”).
We also do not view the prosecution history as limiting “slidable
member” in the manner proposed. The statements identified indicate that
Appellants have previously argued (in the record of this same Application)
that “slidable member” (and similar language) should be limited as now
proposed. See Suggestion of an Interference, at 15 (filed January 14, 2014)
(“The recited substantially linear movement of the slidable member (slider)
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Application 14/156,360
is inherent in the term ‘slidable member’ (‘slider’) as used in both
applications.”); Response to Office Action Dated February 24, 2014, at 4
(filed March 19, 2014) (“A member that simply pivots without any linear
motion cannot be deemed a slidable member without contravening the plain
meanings of those words.”). The fact that Appellants have previously
argued for the same narrowed construction for “slidable member,” however,
does not demonstrate support for that construction.
Further, the discussion regarding US Patent No. 8,353,474 and US
Application No. 12/005,160 does not support construing “slidable member”
in the context of the instant application as requiring substantially linear
movement. As an initial matter, Appellants have not shown that, even in the
context of those prosecution histories and specifications, the examiners
viewed “slidable member” or “slider” as requiring substantially linear
movement. Moreover, as to Application No. 12/005,160 specifically,
neither Appellants’ argument nor the record there support the assertion that
the addition of “slidable member” or “slider” were the reason the claims
were determined to be patentable over Bull and David. Indeed, the
amendments prior to issuance added more language than merely “slidable
member” and “slider.” See Amendment, at 2—13 (filed April 20, 2011, in
Application No. 12/005,160). And, in the one instance in which “slidable
member” was added, the limitation explicitly recited a “drive system include
a slidable member linearly movable away from and movable towards”
certain other structures. Id. at 6 (emphasis added).
Finally, Appellants state that the “[p]lain meaning” supports the
proposed construction of “slidable member” (Appeal Br. 19), but do not
identify the alleged plain meaning.
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For the reasons above, although we agree with Appellants that curved
section 43 in Bull pivots rather than moving linearly during operation
(Appeal Br. 20), we are not apprised of error because “slidable member” in
claim 13 does not require substantially linear movement.
Second, Appellants contend that “the appealed [Office AJction does
not address the secondary considerations in favor of patentability here.”
Appeal Br. 22. Appellants argue that “‘salad spinners’ had been on the
market for many years, but designs able to generate adequately rapid
spinning had shortcomings including a lack of stability in holding in place
and securing moving parts against undesired motion.” Id. at 22—23
(footnotes omitted) (citing Spec. 13). According to Appellants, the “present
spinner . . . addressed these long-felt needs, providing a stable platform
suited to staying in place during use but without undesirably unsecured
moving external parts such as a corded pull-handle.” Id. at 23. Appellants
state that “Bull issued in the mid-nineties, and there is no evidence of any
intervening inventions solving” the issues discussed by Appellants. Id.
We are not apprised of error here because Appellants provide only
attorney argument, rather than evidence. See In re Kahn, 441 F.3d 977, 990
(Fed. Cir. 2006) (stating that Federal Circuit precedent “requires that the
applicant submit actual evidence of long-felt need, as opposed to
argument”). Moreover, “[a]bsent a showing of long-felt need or the failure
of others, the mere passage of time without the claimed invention is not
evidence of nonobviousness.” Id. at 990-91 (quoting Iron Grip Barbell Co.
v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004)).
For these reasons, we sustain the rejection of claim 13 as unpatentable
over Bull. Claims 17 and 18 fall with claim 13.
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B. Claims 14—16 and 19
Claims 14—16 and 19 each recite some level of “linear” movement by
the “slidable member.” See Appeal Br. V-iii (claim 14 reciting that “the
slidable member reciprocates linearly”; claim 15 reciting “linear movement
of the slidable member”; claim 16 reciting that “the slidable member is
linearly movable away from” certain structure), V-iv (claim 19 reciting
“substantially linear movement of the slidable member”). For each of these
claims, the Examiner relies on central curved section 43 in Bull as the
“slidable member.” Final Act. 5—6.
Appellants argue that “[t]he dependent claim rejections do cite Bull’s
handle 42 and/or parts thereof (curved section 43, knob 38) as moving
linearly, however, so it is clear at least that Bull's disclosure has been
misunderstood.” Appeal Br. 21. As noted above, we agree with Appellants
that curved section 43 in Bull pivots rather than moving linearly during
operation. Thus, we do not sustain the rejection of claims 14—16 and 19.
DECISION
We reverse the decision to reject claims 1—12, 14—16, and 19—25
under 35 U.S.C. § 103(a), and we affirm the decision to reject claims 13, 17,
and 18 under 35 U.S.C. § 103(a).
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-IN-PART
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