Ex Parte Minard et al

Patent Trials and Appeals Board

Sep 26, 2014

12091215 - (D) (P.T.A.B. Sep. 26, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JAMES J. MINARD and MARK E. BUSH
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Appeal 2012-007097
Application 12/091,215
Technology Center 3700
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Before: JENNIFER D. BAHR, LYNNE H. BROWNE, and
MICHAEL L. WOODS, Administrative Patent Judges.

BROWNE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
James J. Minard and Mark E. Bush (Appellants) appeal under
35 U.S.C. § 134 from the Examiner’s decision rejecting claims 19–22,
24–32, 35, and 36 under 35 U.S.C. § 103(a) as unpatentable over Tentler
(US 5,033,644, iss. July 23, 1991) and Namery (US 3,974,681, iss. August
17, 1976). Claims 23, 33, and 34 are indicated to be allowable. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

Appeal 2012-007097
Application 12/091,215
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CLAIMED SUBJECT MATTER
The claims are directed to a concentrate system. Claims 19 and 29 are
independent. Claim 19 reproduced below, is illustrative of the claimed
subject matter:
19. A concentrate system comprising:
a fluid conduit, wherein concentrate flows from a
concentrate container to a pump along the fluid conduit; and
an ultrasonic sensor that generates ultrasonic waves to
detect the concentrate in the fluid conduit and to detect when an
amount of the concentrate in the fluid conduit is below a
threshold value, wherein the ultrasonic sensor is located
between the concentrate container and the pump.

OPINION
Claims 19–22, 24– 26, 28–32, and 351
Appellants argue claims 19–22, 24–26, 28–32, and 35 together. See
Appeal Br. 3–4; Reply Br. 2. We select independent claim 19 as the
illustrative claim, and claims 20–22, 24, 27–32, and 35 stand or fall with
claim 19. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner finds that Tentler discloses a system as recited in claim
1, including, in pertinent part, flow sensors 71 and 72 between the fluid
source and the pump. Ans. 4. However, the Examiner also finds that
“Tentler is silent about using an ultra-sonic flow detector.” Id. The
Examiner finds that “Namery shows an ultra-sonic flow detector 11 and 13

1 In the Appeal Brief, Appellants argue claims 26 and 36 separately stating
that “[c]laims 26 and 36 recite that a locking ring secures an adapter plate to
a pump head;” however, claim 27, not claim 26, recites this limitation.
Appeal Br. 4. The Reply Brief correctly refers to claims 27 and 36. Reply
Br. 2. Thus, we understand Appellants to be arguing claims 27 and 36
separately and to include claim 26 with claims 19–22, 24, 25, and 28–32.
Appeal 2012-007097
Application 12/091,215
3
mounted on wings 28 and 24 and secured to conduit 25 by locking ring 88.”
Id. The Examiner concludes that it would have been obvious “to replace the
flow meter in the device of Tentler with an ultra-sonic flow meter to detect
air bubbles in the feed tube . . . as taught by Namery.” Id. at 4–5.
According to the Examiner, the use of ultrasonic sensors in Tentler’s device
would provide a more reliable, less flow intrusive and less expensive manner
to control the flow of fluid through the device. Id. at 5; see Namery, col. 4,
ll. 57–60 (disclosing ultrasonic and small error probability); col. 5, ll. 4-6,
10, 11 (disclosing low cost and rugged sensor head).
Appellants argue that “[a] main purpose of Tentler is how the sensors
71 and 72 operate. Modifying . . . sensors 71 and 72 to be ultrasonic sensors
would completely change how Tentler functions.” Appeal Br. 3. Appellants
further argue that “[it] is impermissible to modify a base reference in a
manner that changes how the base reference functions.” Id.
We note that Appellants’ assertion that how sensors 71 and 72 operate
is a main purpose of Tentler, is simply attorney argument, unsupported by
evidence. An attorney’s arguments in a brief cannot take the place of
evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Further, the
Examiner determines that although “[t]he device of Namery does not control
the flow in the same manner as the device of Tentler,” “the ultrasonic sensor
of Namery can be employed to provide a control signal to any type of flow
controller.” Ans. 5 (citing, Namery, col. 9, ll. 1626). The Examiner further
explains that “[m]odifying the device of Tentler by substituting the
mechanical sensors with ultrasonic sensors would not change the operation
of the device, [as] the sensor would continue to monitor the flow and when
the preset conditions are sensed by the sensors, an actuator would be
activated to control the flow.” Id. Appellants do not identify, nor do we
Appeal 2012-007097
Application 12/091,215
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discern, any evidence that Tentler’s device would not operate equally as well
with ultrasonic sensors as it does with mechanical sensors. Thus, Appellants
do not apprise us of error.
Appellants note that “Namery relates to a bubble detector used to
detect air bubbles in intravenous feeding tubes to prevent air embolisms . . .
The device has a very high threshold and small probability error due to the
seriousness of air embolisms on the health of a patient.” Appeal Br. 3.
Appellants further note that “Tentler relates to a syrup system and does not
require this type of sensitivity.” Id., see also Reply Br. 1. Appellant argues
that “[o]ne skilled in the art would not consider an expensive high sensitivity
medical device when modifying a syrup system, which does not require such
a high level of sensitivity.” Appeal Br. 3. Appellants’ assertion that one
skilled in the art would not consider the teachings of Namery is also simply
attorney’s argument, unsupported by evidence. Appellants do not point to
any evidence in the record indicating that a person skilled in the art would
not consider the increased precision afforded by the higher sensitivity flow
sensor to be desirable. Further, Appellants do not point to any evidence
showing that an ultrasonic flow sensor would be more expensive than that of
Tentler. Moreover, in any event,“[t]he fact that the motivating benefit
comes at the expense of another benefit, … should not nullify its use as a
basis to modify the disclosure of one reference with the teachings of another.
Instead, the benefits, both lost and gained, should be weighed against one
another.” Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8
(Fed. Cir. 2000). As discussed supra, such argument cannot take the place
of evidence and does not apprise us of error.
Appeal 2012-007097
Application 12/091,215
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For these reasons, we sustain the Examiner’s decision rejecting
independent claim 19, and claims 20–22, 24–26, 28–32, and 35 which fall
therewith.
Claims 27 and 36
Appellants note that “[c]laims 2[7] and 36 recite that a locking ring
secures an adapter plate to a pump head. The Examiner states that the metal
hinge 88 of Namery is a locking ring. As shown in Figure 10, the metal
hinge 88 is substantially u-shaped.” Appeal Br. 4. Appellants argue that
“[t]he metal hinge 88 is not a ring as claimed.” Id., see also Reply Br. 2
(“the metal arcuate element 88 is not a locking ring.”).
In response to this argument, the Examiner finds that “the device of
Namery shows a cylindrical sensor surrounded by a holding element 88
defining a cylindrical opening with a band having the thickness of the
holding element forming a ring.” Ans. 5. However, the Examiner does not
identify what elements in Namery are being referred to as a cylindrical
sensor and cylindrical opening. Furthermore, it is not readily apparent what
elements in Namery the Examiner is referring to as Namery does not use this
terminology.
Namery describes element 88 as both an arcuate spring (e.g., Namery,
col. 9, l. 62) as shown in figure 8 and a metal hinge (Namery, col. 10, ll. 40–
41) as shown in figure 10. Neither description, nor its corresponding figure,
supports the Examiner’s finding that element 88 is “a holding element 88
defining a cylindrical opening with a band having the thickness of the
holding element forming a ring” (Reply Br. 2). Thus, Appellants’ argument
is persuasive.
For this reason, we do not sustain the Examiner’s decision rejecting
claims 27 and 36.
Appeal 2012-007097
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DECISION
The Examiner’s decision rejecting claims 19–22, 24, 25, 27–32, and
35 is AFFIRMED.
The Examiner’s decision rejecting claims 27 and 36 is REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART
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