Ex Parte Ringeisen et alDownload PDFPatent Trial and Appeal BoardJul 13, 201612700759 (P.T.A.B. Jul. 13, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121700,759 02/05/2010 26384 7590 07114/2016 NAVAL RESEARCH LABORATORY AS SOCIA TE COUNSEL (PA TENTS) CODE 1008.2 4555 OVERLOOK A VENUE, S.W. WASHINGTON, DC 20375-5320 FIRST NAMED INVENTOR Bradley R. Ringeisen 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. 99745-US2 8545 EXAMINER WIEST, ANTHONY D ART UNIT PAPER NUMBER 3617 MAILDATE DELIVERY MODE 07/14/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRADLEY R. RINGEISEN, PETER K. WU, BARRY J. SP ARGO, JUSTIN C. BIFFINGER, and LISA A. FITZGERALD Appeal2014-007992 Application 12/700,759 Technology Center 3600 Before JOHN C. KERINS, STEP AN ST AI CO VICI, and LEE L. STEPINA, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Bradley R. Ringeisen et al. (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner's final decision rejecting claims 1-5, 8, and 12- 14. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We AFFIRM. Appeal2014-007992 Application 12/700,759 THE INVENTION Appellants' invention relates to buoyancy-controlled devices. Claim 1, the sole independent claim, is representative of the claimed invention and is reproduced below: 1. A device comprising: a chamber having a gas inlet, a gas source coupled to the gas inlet, a gas vent, and a liquid vent; and a float and a weight coupled to the chamber; wherein the gas source comprises a gas-producing microbe within the gas source; wherein the float has a lower density than the chamber; wherein the weight has a higher density than the chamber; wherein the aggregate density of the chamber, the float, and the weight is greater than the density of the chamber; and wherein the gas inlet, the gas vent, the liquid vent, the float, and the weight are positioned on the chamber such that: when the chamber is filled with and submerged in a liquid in which the chamber is neutrally- buoyant, the chamber is oriented to place the gas vent below the gas inlet; and when a gas is introduced through the gas inlet into the chamber that is filled with the liquid, the chamber pivots to raise the gas vent until a portion of the gas escapes from the chamber through only the gas vent. 2 Appeal2014-007992 Application 12/700,759 THE REJECTIONS The Examiner has rejected: (i) Claims 1, 4, 12, and 13 under 35 U.S.C. § 103(a) as being unpatentable over Asaro (US 1,659,129, issued Feb. 14, 1928) and Demaray (US 4,270,381, issued June 2, 1981); (ii) Claims 2, 3, 8, and 14 under 35 U.S.C. § 103(a) as being unpatentable over Asaro, Demaray, and Appellants' own disclosure (Spec. iTiT 19-20); and (iii) Claim 5 under 35 U.S.C. § 103(a) as being unpatentable over Asaro, Demaray, and Strickland (US 4,082,063, issued. Apr. 4, 1978). ANALYSIS Claims 1, 4, 12, and 13--0bviousness--Asaro/Demaray Claim 1 recites, in part, that a gas source comprises a gas-producing microbe within the gas source. The Examiner finds that Asaro discloses most of the limitations of claim 1, with the exception of a gas source being a gas-producing microbe, as claimed. Final Act. 2-3 (citing Asaro, 11. 31-35; Figs. 1and3). The Examiner relies on Demaray as "teach[ing] a gas source (Fig. 2, # 10, sample container) that contains a gas producing microbe (Fig. 2, # 1, microbial sample)." Id. at 3. The Examiner concludes that "[i]t would have been obvious to one of ordinary skill in the art to substitute the gas source of Asaro with a known gas producing microbial source as disclosed by Demaray," because "[s]ubstituting various microbial agents can vary the gas production rate/volume and alter the length of the repetitive dive cycles of the chemical fish [of Asaro]." Id. 3 Appeal2014-007992 Application 12/700,759 Appellants argue that "Demaray is nonanalogous art," in that "Demaray is not pertinent to Asaro because a person of ordinary skill seeking to solve the problem of floating and sinking the toy of Asaro would not look to the microbial gas sources in the measuring instrument of Demaray." Appeal Br. 3--4. Appellants assert that "us[ing] []microbes in a toy could lead to unintended health consequences," and that "[t]he incorporation of a thermostatically regulated water bath is far too complicated for the simple toy of Asaro," because "[ w ]ithout thermal control, the results of the combination would be unpredictable." Id. at 4. Appellants thus maintain that because the references are in nonanalogous arts, "there is no rationale supporting the conclusion of obviousness and a prima facie case has not been made." Id. Further, in reply to certain points raised by the Examiner, Appellants assert that "there is no evidence of record of a bathtub with a regulated temperature as described in Demaray," and moreover that a regulated bath, as called for in Demaray, "would have the ability to maintain a temperature (Demaray, col. 6, 11. 21-25), rather than merely controlling the initial temperature." Reply Br. 1. Appellants argue that, "[t]here is no teaching that the yeast would produce gas just by placing it in bath water," and that there is no evidence of record as to whether an amount of bread dough (for yeast fermentation) that could practicably be included in the toy fish "would produce enough gas at a comfortable bath temperature to provide the entertainment value sought by Asaro." Id. at 2. We are not persuaded that Demaray is non-analogous art. Although Demaray is not in Appellants' field of endeavor, Appellants have not established that Demaray is not reasonably pertinent to a problem with 4 Appeal2014-007992 Application 12/700,759 which Appellants were faced, the second prong of the non-analogous art test. See In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986). First, we note that Appellants improperly cite to Asaro, and the problems faced by Asaro, instead of problems faced by Appellants in the current application, as the baseline for assessing whether Demaray should be regarded as non- analogous art. Second, even considering the problems faced by Appellants, the Examiner has the better position. The Examiner responds in general that Demaray is not non-analogous art, because "[ o ]ne looking to modify the dive cycles of the toy fish of Asaro would look to other potential gas sources such as the microbial sources of yeast as disclosed by Demaray to achieve the desired functionality." Ans. 2. As to the purported health and safety issues attendant to the use of microbe in the form of a yeast preparation as taught by Demaray, the Examiner points out that, "yeast as a microbial gas producing source is safely used in household baking and fermentation processes," and that yeast is readily available "to replace the gas source of tartaric acid and sodium bicarbonate chemical capsules used in the toy fish of Asaro." Id. at 3. Appellants do not explain persuasively why the Demaray yeast would be more dangerous in some way than the acid and base compositions disclosed by Asaro. The Examiner is correct once more in responding to Appellants' further argument directed to the complexity of the thermal control in Demaray, and assertion that results would be unpredictable were such thermal control not employed, by noting that the toy fish of Asaro "would likely be used in a child's bath which would have a regulated water temperature," likely for a shorter period of time than the instrument in Demaray is operated. Id. 5 Appeal2014-007992 Application 12/700,759 Appellants' arguments presented in the Reply Brief appear to be directed to the attempt to establish that Demaray is non-analogous art. However, to the extent that they are presented as reasons why it would not have been obvious to modify Asaro as proposed by the Examiner, they are also unpersuasive. The use of yeast in liquid (water) is well known as evidenced by the use of such in brewing (see Demaray, col. 1, 11. 15-22), and Appellants do not adequately explain why water entering the pin pricks of Asaro (see Asaro, 11. 31-33 and 55-56) would not cause a yeast mixture of the type disclosed in Demaray to produce gas. Moreover, Appellants' claims do not require a particular length of time for generating the gas and a child's bath should remain at a particular temperature for a sufficient time to produce bubbles in the fish of Asaro. Whether such time is sufficient to provide the entertainment value sought by Asaro, the Examiner is not required to establish beyond all doubt that the proposed combination would be successful. In re Kubin, 561F.3d1351, 1360 (Fed. Cir. 2009) ("[O]bviousness does not require absolute predictability of success"). It is sufficient that a person of ordinary skill in the art would have made the combination with a reasonable expectation of success. In re Drage, 695 F.3d 1334, 1338 (Fed. Cir. 2012). The Examiner's position that microbial gas sources are known and the gas output of the microbial sources can be determined and controlled is an adequate basis for a reasonable expectation that the modified fish of Asaro would produce bubbles and provide buoyancy. As such, the Examiner correctly concludes that "[i]t would have been obvious to one of ordinary skill in the art to substitute the gas source of Asaro with a known gas producing microbial source as disclosed by Demaray." Final Act. 3; see also KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 6 Appeal2014-007992 Application 12/700,759 398, 416 (2007) ("The Court recognized that when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result."). Accordingly, for the foregoing reasons, we sustain the rejection of claims 1, 4, 12, and 13 as being unpatentable over Asaro and Demaray. Claims 2, 3, 8, and 14--Asaro/Demaray/Appellants' Own Disclosure Claim 5--Asaro/Demaray/Strickland Appellants' argue only that "there is no rationale to combine Asaro and Demaray." Appeal Br. 4. For the reasons discussed above, with respect to claim 1, we find that the Examiner's substitution of one element for another known element with predictable results is sufficient rationale. Accordingly, for the same reasons discussed supra, the rejection of claims 2, 3, 8, and 14, and the rejection of claim 5 is sustained. DECISION The rejections of claims 1-5, 8, and 12-14 under 35 U.S.C. § 103(a) are affirmed. 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)(l )(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation