Ex Parte Klein

Board of Patent Appeals and Interferences

Mar 29, 2010

10200747 (B.P.A.I. Mar. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_________________

Ex parte ARNOLD GREGORY KLEIN

Appellant
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Appeal 2009-005721
Application 10/200,747
Technology Center 1700
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Decided: March 29, 2010
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Before FRED E. MCKELVEY, Senior Administrative Patent Judge, SALLY
GARDNER LANE and SALLY C. MEDLEY, Administrative Patent
Judges.

LANE, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE
The appeal, under 35 U.S.C. § 134(a), is from a Final Rejection of
Kein’s claims 21-25, 29, and 30. The appealed rejections of claims 21-25,
29, and 30 were made in the Decision of the previous appeal in this
application. (See Appeal No. 2007-1489, mailed June 7, 2007 (“Prior
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Decision”)). Claims 1-20 were canceled before the previous appeal and
claims 26-28 were withdrawn by Klein. (App. Br. 4). We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
The real party-in-interest is said to be appellant Arnold G. Klein.
(App. Br. 4).
Klein’s application is directed to a device for mixing and storing sugar
water for nectar-type bird and butterfly feeders. (Spec. 1)
The rejections rely on the following prior art references:
Name Number Date
Roberts 580,899 April 20, 1897
O’Connor 1,523,136 January 13, 1925
Greenspan 2,787,268 April 2, 1957
Kirkman 2,985,333 May 23, 1961
De Santo 3,221,917 December 7, 1965

The following grounds of rejection are appealed:
o Claims 21, 22, and 30 under 35 U.S.C. § 103(a) over Roberts
and the prior art discussed in Klein’s specification;
o Claims 21, 22, and 30 under 35 U.S.C. § 103(a) over O’Connor
and the prior art discussed in Klein’s specification;
o Claims 21, 22, and 30 under 35 U.S.C. § 103(a) over Kirkman
and the prior art discussed in Klein’s specification;
o Claims 21-25, and 29 under 35 U.S.C. § 103(a) over Greenspan
and the prior art discussed in Klein’s specification: and
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o Claims 21and 29 under 35 U.S.C. § 103(a) over De Santo and
the prior art discussed in Klein’s specification1.
Klein argues for the patentability of claims 23, 24, and 25 as a group but
argues for the separate patentability of the other claims. We focus on claims
21, 22, 23, and 29 in our review. 37 C.F.R. § 41.37(c)(vii) (2009).
II. FINDINGS OF FACT
1. Klein’s claim 21 recites:
A convenience nectar mixing device for use in
preparation of sugar-water for feeding humming birds, orioles,
or butterflies, said device comprising:
a container that is adapted to receive water,
receiving means fixed to said container, and
a divider movably held by said receiving means for
forming a compartment within said container,
wherein said compartment has a volume that is
proportionately less than a volume of said container, by a ratio
established for the formulation of sugar-water nectar for
hummingbirds, orioles or butterflies,
wherein said compartment is adapted to receive sugar,
and
wherein removal of said divider from said receiving
means allows mixing of said sugar and water to occur to
provide said sugar-water nectar.

(App. Br. 33, Claims App’x).

1 Klein lists claims 21-25 and 29 as being rejected over De Santo and the
prior art discussed in his specification (App. Br. 6), but both the Prior
Decision (p. 12) and the Examiner’s Answer (p. 11) indicate that only claims
21 and 29 were rejected over De Santo. Thus, we have not considered
Klein’s arguments relating to the rejection of claims 22-25 over De Santo
(see App. Br. 20).
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(The following Findings of Fact are repeated from those in the Prior
Decision. Klein does not dispute these Findings of Fact.)
2. The subject matter claimed is illustrated in the figures
(below):

3. Figures 1-4 illustrate a container having a removable divider
capable of providing separate compartments for sugar and water placed into
the compartments such that, when the sugar and water are combined by
removing the divider, the appropriate mixture for feeding either
hummingbirds, orioles, or butterflies results.
4. Figures 5-7 illustrate a divider that may be used as a lid for the
container and which may have a pouring hole (at figures 6-7).
5. In describing the invention, Klein states that the container is
divided to give a sugar to water ratio of 4: 1 for hummingbirds, 6:1 for
orioles and 9:1 for butterflies.
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6. No other ratios are described.
7. Each of the references relied upon by the Examiner teaches a
container which has a divider such that at least two compartments are
formed within the container for the purpose of keeping two or more things
separated.
a. Roberts teaches a container, in particular a drawer for
keeping accounts, which has removable partitions for forming
compartments for the purpose of keeping statement and account cards
separated. (Roberts at 1:7- 13).
b. O'Connor teaches a container, in particular a tool tray,
with removable dividers that may be placed in the tray for forming
compartments for the purpose of keeping tools and other construction
items (e.g., bolts, nuts) separated. (O'Connor at 1:8-20).
c. Kirkman teaches a container, in particular a cabinet
drawer, with removable dividers that may be placed in the drawer for
forming compartments for the purpose of keeping small household
articles (e.g., hardware, cosmetics, and paperclips) separated.
(Kirkman at 1:20-30).
d. Greenspan teaches a container, in particular a blood
plasma bottle, containing a divider for forming separate compartments
and which has a removable plug. The divider is placed in the bottle for
the purpose of keeping dried plasma and sterile water separated.
(Greenspan at 2:12-25).
e. De Santo teaches a container, in particular a fluid
container, containing a divider for forming separate compartments for
the purpose of keeping hair treating fluids (e.g., dyes and hydrogen
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peroxide) separated. (De Santo at 1:42-5 1). The divider is capable of
being opened or closed. (De Santo at 1:52-61).
8. Roberts, O'Connor and Kirkman specifically teach that the
container can be divided into compartments of varying sizes. (Roberts
at 1:44-47; O'Connor at 1:17-2 1 ; Kirkman at 1:3 1-37).
9. None of the references specifically discloses a ratio of 4:1, 6:1,
or 9:1.
10. Klein’s specification states:
At the present time, the currently recommended sugar to water
proportions are:
Hummingbird Feeder Nectar - 1 part table sugar to 4
parts water
Oriole Feeder Nectar - 1 part table sugar to 6 parts water
Butterfly Feeder Nectar - 1 part table sugar to 9 part
water[.]

(Specification at 2, bold type omitted).
Issue
Would a nectar mixing device as claimed have been obvious to those
in the art from the prior knowledge that nectars are made by mixing different
ratios of sugar to water and the prior art teachings of devices with removable
dividers that can separate ingredients into various ratios?
Analysis
Klein tells us in his specification it was known that hummingbirds
require a nectar with water:sugar in a 4:1 ratio, orioles require nectar with a
ratio of 6:1, and butterflies require a nectar with a ratio of 9:1.2 Each of

2 Klein argues that because these recipes are generally “known principles”
they should not be used to support an obviousness rejection because “[most
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Robertson, O’Connor, Kirkman, Greenspan, and De Santo teach a device
with a container having a movable divider held in place by a “receiving
means,” such as slots, grooves, or threads, which could be used to divide
ingredients in specified ratios. Those of skill in the art would have had
reason to use the known ratios with the available containers having movable
dividers to achieve the correct proportions of water and sugar and to mix the
ingredients for different nectars. (See Prior Decision 9-11).
Klein’s main argument is that the prior art references are not
“analogous art” to the claimed device. (App. Br. 6). The Supreme Court
has explained that “[w]hen a work is available in one field of endeavor,
design incentives and other market forces can prompt variations of it, either
in the same field or a different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely bars its patentability.” KSR
Int’l v. Teleflex Inc., 550 U.S. 398, 417 (2007) (emphasis added). Thus, if a
person of ordinary skill would have recognized that something used to
improve similar devices would improve the claimed device, the application
is obvious, unless it is beyond his or her skill. Id.
The Federal Circuit evaluated what was asserted to be “non-analogous
art” in In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed.
Cir. 2007), where claims to a treadmill were held to be obvious over prior art
teaching fold-up beds. The court explained that “[i]f reasonably pertinent to

patentable inventions] employ known principles.” (Reply Br. 7 (citing
Lindemann Maschinenfabrik v. American Hoist & Derrick Co., 730 F.2d
1452, 1462 (Fed. Cir. 1984)). Lindemann does not hold that known
principles cannot be considered in determining obviousness, but that
employing a known principle “does not in itself establish that the invention
would have been obvious” (id. (emphasis added)).
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the problem addressed by [the appellant], [the disputed prior art] may serve
as analogous art.” Id. The court relied on In re Clay, 966 F.2d 656, 659
(Fed. Cir. 1992), for the principle that “[a] reference is reasonably pertinent
if, even though it may be in a different field from that of the inventor's
endeavor, it is one which, because of the matter with which it deals,
logically would have commended itself to an inventor's attention in
considering his problem.” In ICON, the court determined that the problem
addressed by the claimed treadmill was not the idea of a treadmill, but of
making a treadmill with a folding mechanism and a means for retaining the
mechanism in the folded position. Id. Thus, the mechanism of the fold-up
bed was reasonably pertinent.
Also pertinent is the Supreme Court's observation concerning the
relevance of the prior art in connection with the Scoggin patent involved in
Graham v. John Deere Co., 383 U.S. 1, 35 (1966). An argument was made
that a Livingston patent "is not in the pertinent prior art because it relates to
liquid containers having spouts rather than pump sprayers." The Supreme
Court's response was that the problems confronting Scoggin and the
insecticide industry were not insecticide problems: they were mechanical
closure problems. It is true that the Livingstone patent had a pouring spout.
Closure devices in such a closely related art as pouring spouts for liquid
containers are at the very least pertinent references.
In the instant case the problem Klein addressed was not of making a
nectar feeder, which is clearly in the prior art, but of making a nectar feeder
with a movable divider to prepare different ratios of sugar and water for
different animals. (See Spec. 2: “There is clearly a need for a device to
simplify the mixing of sugar and water to arrive at the correct sugar to water
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proportion for hummingbird, oriole and butterfly nectar feeders.”). Thus,
the prior art was properly relied upon by the Examiner because it is
reasonably pertinent to the problem addressed by Klein.
Klein argues that each prior art reference fails to disclose specific
limitations of the claims. Klein must do more than argue that references
alone do not render the claimed device obvious. “Non-obviousness cannot
be established by attacking references individually where the rejection is
based upon the teachings of a combination of references.” In re Merck &
Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Klein must persuade us
that those of ordinary skill in the art would not have been able to adapt these
prior art devices to contain the recited ratios of water and sugar, achieving
the claimed mixing device.
Klein argues that Roberts, O’Connor, and Kirkman do not teach “a
container that is adapted to receive water” or “a compartment . . . adapted to
receive sugar,” as claimed. (App. Br. 11, 13, 15, and 25; Reply Br. 4). The
prior art containers can accept water and sugar by simply pouring them into
the compartments. In contrast to Klein’s assertion (App. Br. 25 and 29-30),
the claims do not require that the container or divider form a “seal.”3 Thus,
the broadest reasonable interpretation of the claim encompasses containers
and dividers that hold water and sugar, even if only briefly. See In re
American Academy of Sci. Tech Center, 367 F.3d 1359, 1364 (Fed. Cir.
2004). (“During examination, ‘claims ... are to be given their broadest
reasonable interpretation consistent with the specification, and ... claim

3 Nor do Klein’s claims require that the container allow for microwaving or
refrigeration. (See App. Br. 25; Reply Br. 5).
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language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.’”).
Similarly, Klein argues that the devices of Greenspan and De Santo
cannot receive sugar and do not have the same divider as the claimed device.
(App. Br. 17, 19-20, and 25; Reply Br. 4). The Examiner found that these
elements were present in the prior art and Klein has not provided sufficient
evidence, only unsupported argument, to persuade us otherwise. See In re
Schulze, 346 F.2d 600, 602 (CCPA 1965) (“Argument in the brief does not
take the place of evidence in the record.”).
Klein argues that the elements recited in the dependent claims are not
taught in the prior art. When the broadest reasonable interpretations of these
claim terms are considered, see American Academy,, 367 F.3d at 1364, we
agree with the Examiner’s findings that structures within the scope of the
claims are taught by the prior art. See American Permahedge Inc. v.
Barcana, Inc., 105 F.3d 1441, 1444 (Fed. Cir. 1997) (“Claims not the
specification embodiments, define the scope of protection.”).
Specifically, Klein argues that dependent claim 22 requires the
“receiving means” of the device be “at least one set of rails.” (App. Br. 13
and 15). Klein does not point to, and we do not find, a definition of “rails”
in his specification. Thus, because the grooves, slots, and threads taught in
the prior art (see e.g., O’Connor, Fig. 1, element 7) are formations in the
surface that guide an insert to the proper place, we are persuaded that they
are “rails” within the scope of Klein’s claim.
Additionally, Klein argues that a “receiving means” that can be “fixed
to said container for receiving said divider as a lid,” as in claim 23, is not
taught. (App. Br. 18 and 20). Greenspan teaches a cap (36), which fits into
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threads, allowing the cap to act as a divider, depicted in Figure 2 at position
26, or as a lid, depicted in Figure 2 at position 18.
In regard to claim 29, Klein argues that a “handle and a pouring
spout” are not taught in the prior art. (App. Br. 20). These terms are not
limited to a specific type or shape of handle and pouring spout, or to a
handle that cannot be removed, in Klein’s specification. Thus, we are not
persuaded that DeSanto does not teach a handle and spout in Figure 3 at
elements 42 and 20, respectively.
Finally, Klein argues that the ratios of sugar and water recited in claim
30 are not taught in the prior art (App. Br. 11, 13, and 15), but Klein admits
in his specification that the recited ratios were known to those in the art.
(See Spec. 2).
Klein does not direct us to evidence persuading us that these features
are not taught in the art. Accordingly, we are not persuaded that the
Examiner’s prima facie case for the obviousness of the claimed devices is in
error.
To the extent that Klein attempts to rebut the prima facie case for the
obviousness of the claimed device by arguing that no similar product had
been developed, even though the problem of nectar preparation was long
standing (App. Br. 26-27), we are not persuaded. “[Federal Circuit]
precedent requires that the applicant submit actual evidence of long-felt
need, as opposed to argument,” In re Kahn, 441 F.3d 977, 990 (Fed. Cir.
2006), but Klein does not provide evidence. (See App. Br. 27 (“Because, at
the time this patent application was made, there were no nectar
preparation/storage devices in the prior art, the applicant had no information
about whether others have tried and failed to solve this problem.”)).
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Conclusion
The claimed nectar mixing device would have been obvious given that
those of skill in the art knew that nectars are made by mixing different ratios
of sugar to water and given that prior art devices with removable dividers
capable of separating ingredients into various ratios were known. Thus,
Klein has not persuaded us that the rejections under 35 U.S.C. § 103(a) were
made in error or that there are secondary considerations to rebut the
rejections.
III. ORDER
Upon consideration of the record and for the reasons given,
the rejection of claims 21, 22, and 30 under 35 U.S.C. § 103(a) over
Roberts and the prior art discussed in Klein’s specification is AFFIRMED;
the rejection of claims 21, 22, and 30 under 35 U.S.C. § 103(a) over
O’Connor and the prior art discussed in Klein’s specification is
AFFIRMED;
the rejection of claims 21, 22, and 30 under 35 U.S.C. § 103(a) over
Kirkman and the prior art discussed in Klein’s specification is AFFIRMED;
the rejection of claims 21-25, and 29 under 35 U.S.C. § 103(a) over
Greenspan and the prior art discussed in Klein’s specification is
AFFIRMED: and
the rejection of claims 21and 29 under 35 U.S.C. § 103(a) over
De Santo and the prior art discussed in Klein’s specification is AFFIRMED.
It is FURTHER ORDERED that no time period for taking any
subsequent action in connection with this appeal may be extended under
37 C.F.R. § 1.136(a).
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AFFIRMED
ak

Arnold G. Klein
P.O. Box 724
Sandia Park, NM 87047