Ex Parte KleinDownload PDFBoard of Patent Appeals and InterferencesMar 29, 201010200747 (B.P.A.I. Mar. 29, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE _________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES _________________ Ex parte ARNOLD GREGORY KLEIN Appellant _________________ Appeal 2009-005721 Application 10/200,747 Technology Center 1700 _________________ Decided: March 29, 2010 _________________ 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 Appeal 2009-005721 Application 10/200,747 2 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 Claims 1-20 were canceled before the previous appeal and claims 26-28 were withdrawn by Klein.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 Appeal 2009-005721 Application 10/200,747 3 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). Appeal 2009-005721 Application 10/200,747 4 (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. Appeal 2009-005721 Application 10/200,747 5 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 Appeal 2009-005721 Application 10/200,747 6 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 Appeal 2009-005721 Application 10/200,747 7 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)). Appeal 2009-005721 Application 10/200,747 8 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 Appeal 2009-005721 Application 10/200,747 9 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). Appeal 2009-005721 Application 10/200,747 10 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 Appeal 2009-005721 Application 10/200,747 11 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.”)). Appeal 2009-005721 Application 10/200,747 12 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). Appeal 2009-005721 Application 10/200,747 13 AFFIRMED ak Arnold G. Klein P.O. Box 724 Sandia Park, NM 87047 Copy with citationCopy as parenthetical citation