Ex Parte Olson et al

Patent Trial and Appeal Board

Jun 9, 2016

12572487 (P.T.A.B. Jun. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/572,487 10/02/2009
32692 7590 06/13/2016
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
Judd D. Olson
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.
65728US002 3999
EXAMINER
KURTZ, BENJAMIN M
ART UNIT PAPER NUMBER
1778
NOTIFICATION DATE DELIVERY MODE
06/13/2016 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUDD D. OLSON, SEAN C. MCGREEVY,
KENT E. LAGESON, KEVIN E. KINZER, PAUL J. COBIAN,
THOMAS HERDTLE, and BENJAMIN P. WILLIAMS 1
Appeal2014-008294
Application 12/572,487
Technology Center 1700
Before MARK NAGUMO, CHRISTOPHER M. KAISER, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
1 The Real Party in Interest is identified as 3M Innovative Properties
Company. (Appeal Brief, filed 29 February 2014 ("Br."), 3.)
Appeal2014-008294
Application 12/572,487
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection2 of
claims 1--4, 7-15, 17-20, 22-25, and 27. 3 We have jurisdiction under 35
U.S.C. § 6(b). We affirm.
OPINION
A. Introduction4
The subject matter on appeal relates to a "low profile water treatment
cartridge" used in "a water treatment device for filling at least one bottle
with treated tap water." (Spec. 1, 11. 7-8; 2, 11. 16.) Figure 5 of the '487
Specification (Id. at 2, 11. 18-20) is reproduced below:
{Fig. 5 of the '487 Specification illustrates a perspective view of a
water treatment cartridge}
2 Final Office Action mailed 30 September 2013 ("Final Rejection"; cited as
"FR.").
3 Claims 5-6, 16, 21, and 26 have been cancelled. (Br. 20-25.)
4 Application 12/572,487, Water Treatment Cartridge, filed 02 October
2009. We refer to the '" 487 Specification," which we cite as "Spec."
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Application 12/572,487
Figure 5 illustrates "treatment cartridge 8" which "includes a tray
member 52, water treatment material 54 arranged within the tray member
52, and an optional water distribution plate 56 arranged in the tray member
52 adjacent the treatment material 54." (Spec. 10, 11. 28-30.) "The water
distribution plate 56 is arranged in the tray member 52 to define a water
treatment chamber 60 between the tray member 52 and the water distribution
plate 56 that contains the treatment material 54." (Id. at 11, 4-6.) "The
water distribution plate 56 contains a plurality of water distribution openings
62 that allow untreated water to pass through the water distribution plate 56
into the water treatment chamber 60." (Id. at 11, 6-8.) "The optional water
distribution plate 56 includes opposed upper 64 and lower 66 surfaces. The
lower surface 66 includes a plurality of rib portions 68 for maintaining the
water distribution plate 56 in spaced relation from the treatment material
54." (Id. at 11, 19-20.) Knob 74 serves as a handle. (Id. at 12, 15-16.)
Independent claim 1 reads:
1. A water treatment cartridge, comprising:
a) a support structure; and
b) a water treatment material comprising at least one of woven, knitted
and nonwoven material arranged in combination with the support
structure;
wherein the water treatment material has a transverse cross sectional
area and an average height, and wherein the ratio of the
transverse cross-sectional surface area of the water treatment
material to the average height of the water treatment material is
at least about 10 inches;
wherein the support structure comprises a tray member and a water
distribution plate comprising an upper surface that is planar
from a location proximate a center of the water distribution plate
to an outermost perimeter of the water distribution plate;
wherein the water distribution plate is separably mounted on the tray
member to define a water treatment chamber between the tray
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Application 12/572,487
member and the water distribution plate, the tray member
including at least one treated water drain opening.
Independent claim 19 reads:
19. A water treatment cartridge, comprising:
a) a tray member containing at least one filtered water drain
openmg;
b) a water distribution plate separably mounted on the tray member
to define a water treatment chamber between the tray member
and the water distribution plate, the water distribution plate
comprising a single handle and a plurality of water distribution
openings extending across the water distribution plate from a
location generally proximate the handle to a location generally
proximate a perimeter of the water distribution plate and
allowing unfiltered water to pass through the water distribution
plate into the water treatment chamber; and
c) nonwoven treatment material comprising activated carbon
arranged in the water treatment chamber;
wherein the water treatment cartridge is configured to establish an
unobstructed flow path from the water treatment material to the
filtered water drain opening;
wherein a ratio of the transverse cross-sectional surface area of the
water treatment material to an average height of the water
treatment material is at least about 10 inches, wherein the water
treatment material has a flow rate of at least about 0.5 gallon per
minute (gpm) at% inch of water pressure head, and wherein the
water treatment cartridge passes NSF Standard 42 for a capacity
of at least about 40 gallons.
Independent claim 25 reads:
25. A water treatment cartridge, comprising:
a support structure; and
a water treatment material comprising at least one of woven, knitted
and non-woven material arranged in combination with the support
structure;
wherein the support structure comprises a tray member and a water
distribution plate comprising a panel having an upper surface and a
central handle projecting from the upper surface, the upper surface
being planar from the handle to an outermost perimeter of the water
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Application 12/572,487
distribution plate, and further wherein a plurality of water distribution
openings are formed through a thickness of the panel between the
handle and the outermost perimeter.
Independent claim 27 reads:
27. A water treatment cartridge, comprising:
a tray member including a bottom wall and a plurality of vanes
projecting from the bottom wall;
a water treatment material comprising at least one of woven, knitted
and non-woven material arranged in combination with the tray
member;
a water distribution plate separably mounted on the tray member, the
water distribution plate comprising a panel, a single handle, a
plurality of ribs, and a rim, the panel defining opposing, upper
and lower surfaces and an outermost perimeter, wherein the
handle is centrally located along the panel and projects from the
upper surface, and further wherein the rim projects from the
lower surface at the outermost perimeter, and even further
wherein the upper surface is planar from the handle to the
outermost perimeter, the water distribution plate defining a
plurality of water distribution openings through a thickness of
the panel bet\,'1/een the handle and the outermost perimeter, and
even further wherein the ribs project from the lower surface;
wherein upon final assembly, the water treatment material is lodged
between the rim and the bottom wall, and is in simultaneous
contact with the ribs and the vanes;
wherein the water treatment cartridge is configured to be placed directly
under a faucet to allow untreated water to flow through the water
distribution openings along an entirety of the upper surface.
(Claims Appendix, Br. 20, 22-23, 24-25 (emphases added).)
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The Examiner maintains the following grounds of rejection: 5
A. Claims 1,6 2, 4, 7, 14, 15, 17, 18, 23, and 24 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over
Browning.7
Al. Claims 3, 19, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Browning and Koslow. 8
A2. Claim 22 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Browning and Shalev. 9
A3. Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Browning and Dick. 10
A4. Claims 10-13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Browning, Dick, and Hengsperger. 11
B. Claims 1--4, 7, 14, 15, 17-18, 19, 20, and 22-25 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over
Hengsperger and Shalev.
Bl. Claims 8-13 and 27 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hengsperger, Shalev, and Dick.
5 Examiner's Answer mailed 27 May 2014 ("Ans.").
6 Independent claims are hereinafter denoted in bold.
7 George Browning et al., Coffee Maker, U.S. Patent No. 2,069,939 (issued
February 9, 1937).
8 Evan E. Koslow & Stephen P. Ruda, Collapsible Filter, U.S. Patent No.
6,103,116 (issued August 15, 2000).
9 Amnon Shalev, Method and Apparatus for Filtering Water, U.S. Patent
No. 5,240,620 (issued August 31, 1993).
10 Herbert L. Dick et al., Apparatus for the Purification of Water, U.S. Patent
No. 2,389,185 (issued November 20, 1945).
11 Steve L. Hengsperger et al, Filter Housingfor a Drinking Water Pitcher,
U.S. Patent Application Publication No. 2006/0163148 Al (published July
27, 2006).
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B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Rejection A: Claim 1 Based on Browning12
With regard to the obviousness rejection of claim 1 based on
Browning, the dispositive issue is whether the Examiner has shown that "a
water distribution plate comprising an upper surface that is planar from a
location proximate a center of the water distribution plate to an outermost
perimeter of the water distribution plate" is present in or would have been
obvious in view of the teachings in Browning.
The reference Browning discloses a vacuum type coffee maker.
Figures 3 and 4 of Browning are reproduced below.
{Fig. 3 of Browning illustrates
the operation of the apparatus
when water moves downward
into pot 6 from chamber 12}
{Fig. 4 of Browning illustrates
the operation of the apparatus
when water moves upward from
pot 6 into chamber 12}
As illustrated in Figure 4, when Browning's coffee maker is in
operation, the "water passes up through the tube 21 and is discharged into a
chamber 45 between the bottom 14 and the plate 26" which is below plate
25. (Browning, 1, 1. 6; 2, 11. 25-30.) The water "then passes through the
12 Claims 2, 4, 7, 14, 15, 17, 18, 23, and 24 stand or fall with claim 1 with
regard to the rejection based on Browning. (Br. 8.)
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perforations 32 in the plate 26 into the area 44 causing the upper plate 25 to
move into the position shown in Fig. 4[.]" (Id. at 2, 11. 32-34.) Filter paper
28, located between upper plate 25 and lower plate 26, may "mov[ e] upward
against the lower surface of the upper plate [25] so that the water can pass
upward past the edges of the filter paper and the upper plate at a relatively
rapid speed." (Id. at 2, 11. 30-35.) "When the full amount of water has been
displaced from the pot 6 into the chamber 12," "the condensation of the
vapors in the pot causes the water to be drawn back into the pot" as
illustrated in Figure 3. (Id. at 2, 11. 34--45.)
Browning discloses that the "side walls of the cylindrical portion 13
are stepped inwardly ... to provide annular ledges 23 and 24" on which
"[u]pper and lower perforated plates 25 and 26 respectively seat." (Id. at 1,
11. 4-8.) The "upper surface 29 and lower surface 31 of the lower plate 26
are each concave" which "allows the water passing upward through the pipe
21 and through perforations 32 in the lower plate 26 to be distributed over
the entire lower surface of the filter paper since the filter paper will be
moved upward by the rush of water, against the lower face of the upper plate
25 as shown in Figure 4." (Id. at 1, 11. 16-27.) Browning discloses that the
upper plate 25 is preferably "capable of a small amount of vertical
movement ... as between the position shown in Figs. 3 and 4 in order to
permit the upwardly surging water to pass along the outer edges of this plate
into chamber 12." (Id. at 1, 11. 39--44.)
Appellants argue that "the upstanding annular side walls 3 5 represent
a distinct deviation from" the claimed upper surface "that is planar from a
location proximate a center of the plate to an outermost perimeter thereof."
(Br. 9 (emphases in original).) Appellants reason that because "Browning
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requires upstanding annular side walls 35 [to] project[] from an upper
surface" of upper plate 25, a skilled artisan would not have found the
claimed planar upper surface obvious. (Id.)
The Examiner, on the other hand, finds that a skilled artisan would
have had the knowledge to modify upper plate 25 so that it is planar from the
center to "an outermost perimeter." (Ans. 21.) The Examiner also finds that
the only part in upper plate 25 that "can be considered [as a water]
distribution plate" as claimed is the part "that actually distributes fluid
[which] is the portion with the holes." (Id.)
On balance, we are not persuaded by Appellants' argument that "[t]he
outermost perimeter of Browning's plate 35 [sic, 25] cannot be said to end
short of side wall 35." (See Reply 2; see also Br. 9.) 13 Appellants do not
cite to evidence in the record in support of this argument. Appellants do not
point us to the '487 Specification for a definition (and we found none) of the
term "outermost perimeter." Appellants also do not dispute the Examiner's
findings, in particular, that "a person of ordinary skill can implement a
predictable variation" of upper plate 25 taught in Browning to arrive at the
claimed planar upper surface. (See Ans. 21; Reply 2; see also KSR Int 'l Co.
v. Teleflex Inc., 550 U.S. 398, 417 (2007).)
Furthermore, Appellants do not explain how their argument is
consistent with certain broad disclosures in the '487 Specification and with
claim 11. The Specification provides that "the water distribution plate may
be ... permanently affixed to the tray member" which includes "a side wall
extending upwardly from [a] perimeter" of a bottom wall of the tray
member. (' 487 Spec., 3, 11. 22-24, 27-28.) Claim 11 recites that "when the
13 Reply Brief filed 28 July 2014 ("Reply").
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water distribution plate is operationally positioned in the tray member, the
tray member includes a rim portion that extends upwardly beyond the water
distribution plate, whereby the water distribution plate and rim combine to
form an pre-treatment collection zone." (Br. 21.) These disclosures indicate
that the '487 Specification does not necessarily require a perimeter of the
upper surface of the water distribution plate to be free of additional
structures. We are not persuaded that harmful error has been shown here.
Rejection Al: Claim 19 Based on Browning & Koslow14
With regard to the rejection of claim 19 based on Browning and
Koslow, Appellants argue that Browning's "lower plate 26 presents a
distinct obstruction to the flow path from ... filter paper 28 to the water
draining opening 15" and therefore cannot be combined with the teachings
of Koslow to meet the limitation of "an unobstructed flow path" recited in
claim 19. (Br. 11 (emphasis in original).)
Appellants, however, do not dispute the Examiner's conclusion that a
skilled artisan would have found claim 19 reciting "an unobstructed flow
path" obvious, based on Browning's teaching that flow may pass through
perforation 32 (included on plate 26) without obstruction. (See Br. 11; see
also Ans. 22.) No harmful error has been shown with regard to the
Examiner's findings here.
Rejection B: Claim 1 Based on Hengsperger & Shalev15
The Examiner rejects claim 1 under section 103 alternatively based on
Hengsperger and Shalev. The dispositive issue here is whether the
14 Claims 3 and 20 stand or fall with claim 19 with regard to the rejection
based on Browning and Koslow. (Br. 10.)
15 Claims 2--4, 7, 14, 15, 17, 18, 20, and 22-24 stand or fall with claim 1
with regard to the rejection based on Hengsperger & Shalev. (BR. 13.)
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Examiner has shown that "a water distribution plate comprising an upper
surface that is planar ... " is present in or would have been obvious in view
of these references.
The Examiner finds that, based on filter 100 taught in Hengsperger
["for a drinking water pitcher," Hengsperger ii 36] (Figure 1 of Hengsperger
reproduced below) and a filter device illustrated in Figure 8 of Shalev
(reproduced below), a skilled artisan would have found claim 1 obvious.
(FR. 10.)
{Fig. 1 of Hengsperger illustrates "a
close up section view" of filter 100,
see Hengsperger ii 24}
Hengsperger discloses:
{Fig. 8 of Shalev illustrates a
section view of filter apparatus
30}
The filter includes a filter housing, which itself includes an upper
housing portion 110 and a lower housing portion 120. The filter
also includes a filter media 130 housed in between the upper and
lower housing portions. The upper housing portion 110 includes
a necked down inlet port 112 in an upper surface thereof to
increase water flow through rate. The upper housing portion also
includes an upper housing chamber 114 to trap air to provide
substantially uniform pressure across the filter media. The
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Id.
embodiment shown in FIG. 1 illustrates two upper housing
chambers 114.
Shalev discloses filter apparatus 30 which includes "an enclosure 80
configured to define a cavity 82[.]" (Shalev, 3, 11. 16-17.) Shalev discloses
that filter apparatus 30 also includes:
the exit spout 44 which communicates with the cavity 82 and a
reduced aperture 45 within the exit spout 44. Filter media 52 is
accommodated within the cavity 82 which is covered by a cap
86 defining the entrance spout 32. The cap 86 also defines an
annular rim 87 that is closely received in the cavity 82.
(Id. at 3, 11. 17-24.) Shalev discloses that "[t]he entrance spout 32 defines a
plurality of radially extending ribs 88 which terminate at their lower end in
vanes 90 that extend radially over the cap 86." (Id. at 3, 11. 34-36.)
Based on the collective teachings of these references, the Examiner
finds that a skilled artisan would have had the knowledge and skill to use
"cap 86" in Shalev in place of "upper housing 11 O" in Hengsperger to arrive
at the claimed water treatment cartridge with a planar upper surface at issue.
(FR. at 10-11.)
Appellants, on the other hand, argue that the Examiner committed
multiple errors here. Appellants first argue that "cap 86" of Shalev does not
disclose a planar upper surface because "vanes 90" which are shown "as
projecting upwardly from cap 86" would "render[] the upper surface of the
cap 86 as not being 'planar' as claimed." (Br. 13-14 (emphasis in original).)
The Examiner responds that "cap 86" includes a planar upper surface
over which "vanes 90 [] extend radially" so as to "direct the flow of water
therefrom over slots 91 defined in the cap 86." (Ans. 23 (citing Shalev, 3, 11.
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36-39).) Appellants do not dispute the Examiner's finding that the
geometry of cap 86 (which includes a planar upper surface) is not changed
by the fact that cap 86 may be connected to vanes 90. (Ans. 23; see Reply
3--4.) Appellants do not dispute that it is within a skilled artisan's ability to
arrive at the claimed planar upper surface based on the combined teachings
of the references. See KSR, 550 U.S. at 417 ("[I]f a technique has been used
to improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his or her
skill."). Appellants also do not explain how their argument is consistent
with the disclosure in the '487 Specification that the water distribution plate
and tray member "may be permanently joined to form a single unit" and that
"the tray member may include a rim portion that extends upwardly beyond
the water distribution plate . . . . The rim may include an outwardly
extending annular lip portion for supporting the treatment cartridge in the
housing unit." (See id. at 4, 11. 3-7; 12, 11. 8-9.) We are therefore not
persuaded that harmful error has been shown in the Examiner's findings
here.
Appellants next argue that modifying upper housing 110 in
Hengsperger using cap 86 of Shalev would render Hengsperger' s filter
housing 100 "unfit for its intended purpose." (Br. 14.) More specifically,
Appellants argue that by replacing upper housing 110 with cap 86, the
necked down inlet port 112 which includes a check valve would be
eliminated. (Id.) Although Appellants acknowledge that Hengsperger
"effectively requires that at least the necked down inlet port 112 or the
chamber region 114 be included" in filter housing 100, Appellants argue that
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the optional inlet port "dictates that Hengsperger cannot be modified to
provide the planar upper surface as claimed." (Id. at 15 (emphasis added).)
Hengsperger teaches three features "that contribute to [] faster water
pour," one of which is the necked down inlet port. (Hengsperger iii! 39, 40.)
With regard to these features, Hengsperger states that "it may be possible to
provide only one or two of these features and still achieve an improved
water flow rate over previous filters using the filter housing according to
embodiments of the present invention." (Id. iJ 51.) Appellants agree that the
necked down inlet port is an optional feature in Hengsperger. (See Reply 4
(stating that the disclosure in Hengsperger shows that "the necked down
inlet and/or air chamber features must be present").) Appellants do not
explain why the possible elimination of an optional feature renders
Hengsperger's apparatus unfit for its intended purpose, and we are
accordingly not persuaded that the Examiner committed harmful error in this
aspect of the obviousness analysis.
Rejection B: Claims 19 & 25 Based on Hengsperger & Shalev
With regard to the rejection of claim 19 based on Hengsperger and
Shalev, Appellants argue that the rejection is in error because the limitation
of a "water distribution plate comprising ... a plurality of water distribution
openings" is not found in the filter apparatus disclosed in Hengsperger. (Br.
15-16.) Appellants argue that the rejection of claim 25 is in error for the
same reason and also because "Hengsperger clearly does not include any
openings between the handle 118 and a perimeter of the upper housing
portion/water distribution plate 11 O" illustrated in Figure 6 of the '487
Specification. (Id. at 17.)
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"Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references. . . . [The reference] must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellants in this case do not address the collective teachings of
Hengsperger and Shalev which form the basis for the obviousness rejections
of these claims. Appellants do not dispute the Examiner's finding that a
skilled artisan would have had the knowledge and the skill to modify the
filter housing in Hengsperger based on "slots 91" included in cap 86
illustrated in Shalev to arrive at the apparatus recited in claim 19. (FR. 16;
Ans. 25-26.) Appellants do not dispute the Examiner's finding that a skilled
artisan would have had the knowledge and the skill "to use the distribution
plate of Shalev in place of the plate of Hengsperger because the openings
distribute water throughout the filter media" to arrive at the apparatus recited
in claim 25. (FR. 16; Ans. 25-26 (providing a diagram showing the
modification).) We are accordingly not persuaded that harmful error has
been shown in the obviousness analysis of claim 19 or claim 25.
Rejection Bl: Claim 27 Based on Hengsperger, Shalev, & Dick16
With regard to the obviousness rejection of claim 27 based on
Hengsperger, Shalev, and Dick, Appellants repeat the argument that a skilled
artisan would not have modified upper housing 110 in Hengsperger with the
cap 86 in Shalev to arrive at "a water distribution plate [having an] upper
surface [that] is planar .... " (Br. 18.) Based on our discussion related to
16 Claims 8-13 stand or fall with claim 27 with regard to the obviousness
rejection based on Hengsperger, Shalev, and Dick. (Br. 17.)
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this aspect of the obviousness analysis of claim 1, supra, we do not find that
harmful error has been shown in the Examiner's findings here.
Appellants next argue that the Examiner erred in analyzing the
limitation of "water distribution plate comprising a plurality of ribs [that] ...
project from [a] lower surface" of the water distribution plate recited in
claim 27. (Br. 17.) Appellants do not dispute the Examiner's finding that
Dick discloses "corrugation or projecting portions 17" in a water purification
apparatus (see FR. 17 (citing Dick at 1, 11. 55-56)). Appellants, however,
argue that "it is impossible" to modify the filter housing in Hengsperger to
arrive at the limitation at issue because neither Hensgsperger nor Shalev
teaches a lower surface having a plurality of ribs and also because
"Hengsperger' s upper housing portion 110 includes no lower surface from
which to extend such ribs." (Br. at 18.)
"Combining the teachings of references does not involve an ability to
combine their specific structures." In re Nievelt, 482 F.2d 965, 968 (CCPA
1973). Appellants in this case do not explain why it is beyond a skilled
artisan's knowledge to "implement a predictable variation" based on the
collective teachings in the prior art references to arrive at the claimed
apparatus having the rib portions on a lower surface of a water distribution
plate. See KSR, 550 U.S. at 417. Appellants provide no reason and point to
no evidence in the record supporting the contention that a skilled artisan
would have found it impossible to modify the water filtration apparatus in
Hengsperger in such a way as to render claim 27 obvious. "Attorneys'
argument is no substitute for evidence." Johnston v. IVAC Corp., 885 F.2d
1574, 1581 (Fed. Cir. 1989). No harmful error has been shown in the
Examiner's findings here.
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Rejection A3: Claims 8 & 9 Based on Browning & Dick17
Appellants' arguments with regard to claims 8 contain similar flaws as
those for claim 27. Appellants argue that upper plate 25 of Browning "does
not include the downwardly projecting rib portions" (Br. 12), without
explaining why it is beyond a skilled artisan's knowledge to "implement a
predictable variation" based on teachings of the upper plate in Browning and
the "projecting portions" in Dick to arrive at the claimed apparatus. (See
Ans. 20 citing Dick, 1, 1. 56; see also KSR, 550 U.S. at 417.) Although not
clearly stated, to the extent that Appellants assert that the inclusion of the
"rib portions" in Browning's coffee maker may result in a higher probability
for filter paper 28 in the coffee maker to tear (Br. 12; see also Reply 3),
there is no requirement that the product of a combination of teachings must
be optimal or better than the known structure in the prior art reference. See
In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) ("[C]ase law does not
require that a particular combination must be the preferred, or the most
desirable, combination described in the prior art in order to provide the
motivation for the current invention."). Appellants do not dispute the
Examiner's finding that a skilled artisan would have had the knowledge to
use the rib portions in Dick for "adequate drainage" in Browning's coffee
maker (see FR. 17 (citing Dick at 1, 11. 55-60); see also Br. 12; Reply 3),
and, accordingly, we are not persuaded that the Examiner erred harmfully in
this aspect of the obviousness analysis.
Remaining Arguments
Appellants argue that the rejection of claim 22 based on Browning
and Shalev (Rejection A2) and the rejections of claims claim 10-13 based
17 Appellants do not provide separate arguments for claim 9. (Br. 12.)
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on Browning, Hengsperger, and Dick (Rejection A4) should be reversed "by
virtue of their dependency" from claim 1. (Br. 12.) Appellants have not
provided arguments separate from those for claim 1, and we are not
persuaded for the reasons discussed with respect to claims 1 from which
these claims depend. In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
("[W]e hold that the Board reasonably interpreted Rule 41.37 to require
more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
not found in the prior art.").
C. Order
It is ORDERED that the rejection of claims 1--4, 7-15, 17-18, 19, 20,
22-25, and 27 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended 35 C.F.R. § 1.136.
AFFIRMED
18