Ex Parte Meadows et al

Patent Trial and Appeal Board

May 9, 2016

11985352 (P.T.A.B. May. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111985,352 11/14/2007
29150 7590 05/11/2016
LEE & HA YES, PLLC
601 W. RIVERSIDE A VENUE
SUITE 1400
SPOKANE, WA 99201
FIRST NAMED INVENTOR
Charles Meadows
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P035-0004US 7004
EXAMINER
SORKIN, DAVID L
ART UNIT PAPER NUMBER
1774
NOTIFICATION DATE DELIVERY MODE
05/11/2016 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):
lhpto@leehayes.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES MEADOWS, JAY R. HARP,
MICHAEL A. RYAN, and STEVEN D. WELCH
Appeal2015-000049
Application 11/985,352
Technology Center 1700
Before KAREN M. HASTINGS, CHRISTOPHER L. OGDEN, and
BRIAND. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal 1 under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 4, 8, 13, 17-19, and 22-25. We have
jurisdiction. 35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, the real party in interest is Parker-Hannifin
Corporation. Appeal Br. 3.
Appeal2015-000049
Application 11/985,352
STATEMENT OF CASE
Appellants describe the present invention as an assembly where a
nonabrasive magnetic mixing bar is situated in a bag which, optionally, may
be disposable. Appeal Br. 3; Spec. 4. Claims 1 and 13, reproduced below,
are the only independent claims on appeal and are illustrative of the claimed
subject matter:
1. An assembly for mixing fluids with a magnetic-mixing
bar, the assembly comprising:
a flexible bag comprising front, rear, two-side, top, and
bottom, flexible sheets sealed together at their peripheries
forming a sealed compartment, wherein the bottom sheet is
substantially flat; and
a magnetic-mixing bar disposed in the flexible bag,
wherein the magnetic-mixing bar is encapsulated in a
nonabrasive material so as to prevent scratching or deterioration
of the flexible bag when the magnetic-mixing bar is in direct
contact with the flexible bag and spinning, said material
comprising molded silicone, thermoplastic elastomer or
composite,
wherein the flexible bag comprises (i) an input port located
on at least one of a top and side portion of the bag, (ii) an output
port located on at least one of a side and bottom portion of the
bag spaced apart in a lengthwise axial direction from the input
port at a substantially opposite end of the bag from the input port,
and (iii) stems extending from each port away from the sealed
compartment.
13. A mixing system, comprising:
a flexible bag comprising front, rear, two-side, top, and bottom
flexible sheets sealed together forming a sealed compartment, and
wherein the bottom sheet is substantially flat and configured to rest
flat on a top surface of a magnetic mixer, the bottom sheet having
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Application 11/985,352
seals positioned towards a perimeter of the sheet, and away from its
center; and
a magnetic-mixing bar, that aligns itself in a center of a top
surface of the magnetic mixer, disposed in the flexible bag, wherein
the magnetic-mixing bar is encapsulated in a nonabrasive material so
as to prevent scratching or deterioration of the flexible bag when the
magnetic-mixing bar is in direct contact with the flexible bag and
spinning, said material comprising molded silicone, thermoplastic
elastomer or composite; and
wherein the flexible bag comprises (i) an input port located on
at least one of a top and side portion of the bag, (ii) an output port
located on at least one of a side and bottom portion of the bag spaced
apart in a lengthwise axial direction from the input port at a
substantially opposite end of the bag from the input port, and (iii)
stems extending from each port away from the sealed compartment.
Appeal Br. 21-22 (Claims Appendix).2
REFERENCES
The Examiner relied upon the prior art below in rejecting the claims
on appeal:
Terentiev
Stogsdill
Cadogan
Goodwin
US 2002/0145940 Al
US 6,464,387B1
US 2004/0062140 A 1
US 2004/0190372 Al
REJECTIONS
Oct. 10, 2002
Oct. 15, 2002
Apr. 1, 2004
Sept. 30, 2004
The Examiner has withdrawn the rejection under 35 U.S.C. § 112 i-f 1.
Ans. 5. The Examiner maintains the following rejections:
2 In this opinion, we refer to the Final Office Action appealed from, filed
February 5, 2014 ("Final Act."), the Appeal Brief filed June 27, 2014
("Appeal Br."), the Examiner's Answer filed July 28, 2014 ("Ans."), and the
Reply Brief filed September 22, 2014 ("Reply Br.").
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Application 11/985,352
Rejection 1. The Examiner rejected claims 1, 4, 8, 13, 17-19, 22, and
24 under 35 U.S.C. § 102(b) or, in the alternative, under 35 U.S.C. § 103 as
unpatentable over Terentiev. Ans. 2.
Rejection 2. The Examiner rejected claims 1, 4, 8, 13, 17-19, 22, and
24 under 35 U.S.C. § 103 as unpatentable over Terentiev in view of
Goodwin. Id. at 3.
Rejection 3. The Examiner rejected claims 1, 4, 8, 13, 17-19, 22, and
24 under 35 U.S.C. § 103 as unpatentable over Terentiev in view of
Stogsdill. Id. at 4.
Rejection 4. The Examiner rejected claims 1, 4, 8, 13, 17-19, 22, and
24 under 35 U.S.C. § 103 as unpatentable over Terentiev in view of
Goodwin and further in view of Stogsdill. Id.
Rejection 5. The Examiner rejected claims 23 and 25 under 35 U.S.C.
§ 103 as unpatentable over Terentiev in view of Cadogan. Id. at 5.
Rejection 6. The Examiner rejected claims 23 and 25 under 35 U.S.C.
§ 103 as unpatentable over Terentiev in view Goodwin and further in view
ofCadogan. Id.
Rejection 7. The Examiner rejected claims 23 and 25 under 35 U.S.C.
§ 103 as unpatentable over Terentiev in view Goodwin and Stogsdill and
further in view of Cadogan. Id.
ANALYSIS
Rejection 1 (Anticipation): The Examiner first rejects claims 1, 4, 8,
13, 17-19, 22, and 24 as anticipated by Terentiev. Appellants argue that
"Tarentiev [sic] does not teach ... an assembly ... that includes a 'flexible
bag comprising front, rear, two-sides, top, and bottom, [sic] flexible sheets
sealed together at their peripheries forming a sealed compartment' as recited
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Application 11/985,352
in each claim." Appeal Br. 9. To assess this argument, construction of the
recited language of independent claims 1 and 13 is required.
The Examiner asserts that the "flexible bag comprising ... "recitation
is product-by-process language. Ans. 6. While this may be true of the
"sealed together at their peripheries" portion of the recitation, the remainder
of the recitation is structural. Claims 1 and 13 each require a bag comprising
the recited structural elements.
We also note that claim 1 recites a "flexible bag comprising front,
rear, two-sides, top, and bottom, [sic] flexible sheets sealed together at their
peripheries forming a sealed compartment" while claim 13 includes
precisely the same recitation but omits the comma after the word bottom.
The comma difference does not distinguish the scope of the two claims in
this instance. Claim 1 and claim 13 each refer to "the bottom sheet" without
antecedent basis other than the "flexible bag comprising ... " recitation.
Therefore, we construe claim 1 and 13 as each requiring a flexible bag
comprising a front sheet, a rear sheet, first and second side sheets, a top
sheet, and a bottom sheet.
To establish a prima facie case of anticipation under§ 102, the
Examiner must show that all elements arranged as specified in a claims are
disclosed within the four comers of a reference, either expressly or
inherently, in a manner enabling one skilled in the art to practice an
embodiment of the claimed invention without undue experimentation.
ClearValue, Inc. v. Pearl River Polymers, Inc., 668 F.3d 1340, 1344 (Fed.
Cir. 2012). Here, the Examiner has not shown by a preponderance of the
evidence that the four comers of Terentiev disclose a flexible bag with the
six required sheets. Accordingly, we do not sustain the Examiner's rejection
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of claims 1, 4, 8, 13, 17-19, 22, and 24 under 35 U.S.C. § 102(b) as
unpatentable over Terentiev.
Rejections 1 (Obviousness), 3, and 5: As explained below, our
affirmance of Rejections 2, 4, 6, and 7 is dispositive for all claims on appeal
(claims 1, 4, 8, 13, 17-19, 22, and 24). Thus, we need not reach a
determination as to the propriety of Rejection 1 with respect to obviousness,
Rejection 3, or Rejection 5. Cf Beloit Corp. v. Valmet Oy, 742 F.2d 1421,
1423 (Fed. Cir. 1984) (holding that United States Internal Trade Commission
was "at perfect liberty to reach a ... determination on a single dispositive
issue").
Rejection 2: The Examiner rejects claims 1, 4, 8, 13, 17-19, 22, and
24 as obvious over Terentiev in view of Goodwin. Appellants agree that for
all obviousness rejections, the claims stand together for purposes of appeal.
Appeal Br. 5. We therefore focus on claim 1. Claims 4, 8, 13, 17-19, 22,
and 24 stand or fall with claim 1.
The Examiner relies on T erentiev as a primary reference with
Goodwin providing "further evidence of the knowledge in the art to make
bags comprising a front, rear, two-side, top and bottom, flexible sheets
sealed together at their peripheries forming a sealed compartment." Final
Act. 3--4. We review the rejection for error based upon the issues identified
by Appellants and in light of the arguments and evidence produced thereon.
Cf Ex parte Frye, No. 2009-006013, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
Appellants argue that neither Terentiev nor Goodwin suggest a system
that utilizes a mixing bar that comes in direct contact with the flexible bag
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during operation. Appeal Br. 8. To assess this argument, we begin by
construing the language of claim 1 relating to this argument.
Claim 1 recites a magnetic-mixing bar "wherein the magnetic-mixing
bar is encapsulated in a nonabrasive material so as to prevent scratching or
deterioration of the flexible bag when the magnetic-mixing bar is in direct
contact with the flexible bag and spinning." Appeal Br. 21 (Claims
Appendix) (emphasis added). The emphasized language only serves to
restrict, structurally, how the magnetic-mixing bar is encapsulated: the
encapsulation must be in a nonabrasive material capable of preventing
scratching or deterioration in the recited circumstance. Because the
emphasized language only serves to modify the encapsulation, it does not
require that the overall structure operate with the mixing bar in direct contact
with the flexible bag and spinning.
The mixing-bar's encapsulation is defined functionally. While a
patent applicant may recite features structurally or functionally, "choosing to
define an element functionally, i.e., by what it does, carries with it a risk."
In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). In particular, where
there is reason to believe that prior art structure is inherently capable of
performing the claimed function, the burden shifts to the applicant to show
that the claimed function patentably distinguishes the claimed structure from
the prior art structure. See id.; In re Hallman, 655 F.2d 212, 215 (CCPA
1981) (affirming rejections where applicant failed to show that prior art
structures were not inherently capable of functioning as claimed invention).
Here, the Examiner explains that the Terentiev mixing-bar is
encapsulated in a nonabrasive material. Final Act. 3; Terentiev i-fi-16, 70.
Appellants do not dispute this point and do dispute that the encapsulation of
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Application 11/985,352
Terentiev is inherently capable of preventing "scratching or deterioration of
the flexible bag when the magnetic-mixing bar is in direct contact with the
flexible bag and spinning." Thus, Appellants' arguments do not distinguish
claim 1 's recitation from the prior art structure.
In the alternative, even if claim 1 required a mixing-bar to contact the
bag while spinning, Terentiev teaches this. Ans. 3. Terentiev explains that
in prior devices, the rotating magnetic bar was positioned in the bottom
portion of the agitator vessel and that "torque on the stirring magnetic bar"
created an "axial thrust force tending to drive the bar into contact with the
bottom wall of the vessel." Terentiev i1i16-7. Therefore, Appellants' fail to
establish reversible error even if this alternative claim construction were
proper.
As a separate argument, although not mentioned in Appellants'
response to Ground 2 (Appeal Br. 10-13), Appellants also twice state that
"given the description of the combined disclosures in their entirety, there is
no disclosure of a 'flexible bag comprising front, rear, two-side, top, and
bottom, flexible sheets sealed together at their [respective] peripheries."
Appeal Br. 18-19. The Examiner, however, explains how Goodwin meets
this element. Final Act. 3--4. Goodwin explains that its "body 80 comprises
a two-dimensional pillow style bag .... " Goodwin i134. The body 80
comprises three or more panels. Id. at i135. Goodwin explains "that body
80 can be manufactured to have virtually any desired size, shape, and
configuration." Id. at i139. It is "desirable" that a bottom sheet of body 80
rest flat on the mixer floor. Id. at i1 40 ("body 80 is uniformly supported by
floor 30"). Appellants provide no argument or reasoning as to how
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Goodwin fails to meet this element. Thus, Appellants fail to show reversible
error in this regard.
We therefore sustain the Examiner's second rejection.
Rejection 4. In the fourth rejection, the Examiner rejected claims 1,
4, 8, 13, 17-19, 22, and 24 as obvious over Terentiev in view of Goodwin
and further in view of Stogsdill. We sustain this rejection for the same
reasons explained above with regard to the Examiner's second rejection.
We also add that even if claim 1 required the magnetic-mixing bar to
have direct contact while spinning, Stogsdill teaches this element. Final Act.
4--5. Stogsdill explains: "As the stirrer rotates, liquid is impelled through
the channel and downward through the cavity, creating a vortex above the
stirrer and causing the stirrer to float off the bottom of the container and
hover as it rotates." Stogsdill Abstract. Thus, it is the spinning motion of
the stirrer that causes it to rise and some spinning occurs while the stirrer is
still in contact with the vessel. Appellants therefore fail to show reversible
error even under this alternative claim construction.
Rejection 6. The Examiner rejected claims 23 and 25 as obvious over
Terentiev in view Goodwin and further in view of Cadogan. The Examiner
explains that Cadogan teaches baffles. Final Act. 5. Appellants do not
dispute this point and instead rely upon arguments addressed above. Appeal
Br. 18-19. We therefore sustain this rejection for the same reasons we
sustain the Examiner's second rejection.
Rejection 7. The Examiner rejected claims 23 and 25 as obvious over
Terentiev in view Goodwin and Stogsdill and further in view of Cadogan.
Final Act. 5. Appellants again rely upon arguments addressed above.
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Appeal Br. 19-20. We sustain this rejection for the same reasons we sustain
the Examiner's fourth rejection.
Again, because our affirmance of Rejections 2, 4, 6, and 7 is
dispositive for all claims on appeal (claims 1, 4, 8, 13, 17-19, 22, and 24),
we need not reach a determination as to the propriety of Rejection 1 with
respect to obviousness, Rejection 3, or Rejection 5.
DECISION
For the above reasons, we reverse the Examiner's rejection of claims
1, 4, 8, 13, 17-19, 22, and 24 as anticipated by Terentiev. We affirm the
Examiner's §103 rejections which are based on Terentiev in view of
Goodwin for all claims on appeal.
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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