Ex Parte Stephens

Patent Trial and Appeal Board

Oct 9, 2012

10874060 (P.T.A.B. Oct. 9, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/874,060 06/22/2004 Peter Stephens 488-P-003A 6566
7277 7590 10/10/2012
Miskin & Tsui-Yip LLP
1350 Broadway, Suite 802
NEW YORK, NY 10018
EXAMINER
MILLER, BENA B
ART UNIT PAPER NUMBER
3725
MAIL DATE DELIVERY MODE
10/10/2012 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 PETER STEPHENS
____________________

Appeal 2010-009444
Application 10/874,060
Technology Center 3700
____________________

Before: WILLIAM V. SAINDON, JAMES P. CALVE, and
SCOTT E. KAMHOLZ, Administrative Patent Judges.

KAMHOLZ, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/874,060

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
1-10 and 12-39. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

THE CLAIMED SUBJECT MATTER
The claims are directed to devices for levitating a ball. Spec., para.
[0002]. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A device comprising:
a hollow ball made of paper, said ball having an outer surface,
at least one generally semi-circular shaped planar fin
extending from said outer surface; and
a base comprising means for generating laminar air flow to
levitate said ball in mid-air, which imparts non-linear
motion to said ball as air strikes said fin.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Park
McLain
Simon
Lemelson
Goldfarb
Cheng
Lin
US 2,897,607
US 2,903,817
US 2,911,745
US 3,115,343
US 4,045,906
US 5,314,368
US 6,382,808 B1
Aug. 4, 1959
Sep. 15, 1959
Nov. 10, 1959
Dec. 24, 1963
Sep. 6, 1977
May 24, 1994
May 7, 2002

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REJECTIONS
Appellant seeks our review of the following rejections:
Rejection 1: Claims 1-5, 9, 21-23, 30, 34, 35, and 38 under 35 U.S.C.
§ 103(a) for unpatentability over Park. Ans. 3-5.
Rejection 2: Claims 1-5, 7, 9, 16-18, 21-23, 34, 35, and 38 under 35
U.S.C. § 103(a) for unpatentability over Cheng. Ans. 5-7.
Rejection 3: Claim 6 under 35 U.S.C. § 103(a) for unpatentability
over Park or Cheng, either in view of Goldfarb. Ans. 7.
Rejection 4: Claims 1, 2, 4, 5, 8, 9, and 35 under 35 U.S.C. § 103(a)
for unpatentability over McLain in view of either Park or Cheng. Ans. 8-9.
Rejection 5: Claims 12-15, 24, 26-29, 31-33, 36, 37, and 39 under 35
U.S.C. § 103(a) for unpatentability over Park or Cheng, either in view of
Lin. Ans. 9.
Rejection 6: Claim 10 under 35 U.S.C. § 103(a) for unpatentability
over Park or Cheng, either in view of Simon. Ans. 9-10.
Rejection 7: Claim 10 under 35 U.S.C. § 103(a) for unpatentability
over McLain in view of Simon. Ans. 10.
Rejection 8: Claims 19 and 20 under 35 U.S.C. § 103(a) for
unpatentability over Cheng in view of Lemelson. Ans. 10-11.
Rejection 9: Claim 25 under 35 U.S.C. § 103(a) for unpatentability
over Park or Cheng, either in view of Goldfarb, and either in further view of
Lin. Ans. 11.
ANALYSIS
1. Rejection 1 (obviousness over Park)
Appellant argues claims 1-5, 9, 21-23, 30, 34, 35, and 38 as a group;
we select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
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The Examiner found that Park discloses all limitations of claim 1
except that the ball is made of paper, and that it would have been obvious to
make the ball from paper because Park discloses that the ball is of a
lightweight material. Ans. 4. Appellant argues that Park fails to disclose (a)
“laminar air flow” and (b) “at least one generally semi-circular shaped
planar fin.” App. Br. 18-21, 37-38. We consider each of these arguments in
turn.
(a) “Laminar air flow”
Appellant identifies “means for generating laminar air flow to levitate
said ball in mid-air, which imparts non-linear motion to said ball as air
strikes said fin” as a means-plus-function limitation in claim 1. App. Br. 8.
Appellant cites Specification, page 4, line 13 to page 5, line 8, especially
page 5, lines 4-6, and Figure 1, elements 9 and 10 as the structure, material,
or acts corresponding to the claimed function. Id. Appellant expressly
confirms that “means for generating laminar air flow to levitate said ball in
mid-air, which imparts non-linear motion to said ball as air strikes said fin”
corresponds to laminar flow duct 9 and laminar flow baffles 10.
Reply Br. 5.
The Examiner found that Park’s elements 75, 76, and 78 or 48 meet
this limitation because these structures “act as a baffle to direct the air in a
smooth orderly movement, i.e., ‘laminar air flow.’ ” Ans. 4.
Appellant does not challenge the Examiner’s finding that Park’s
elements 75, 76, and 78 or 48 meet the recited means; rather, Appellant
argues that Park does not disclose “laminar air flow” because the airflow
lines in Park’s Figure 10 “show that the airflow is turbulent” and that the
turbulence is “a consequence of the multitude of air holes 85 that perforate
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the globe of Park (extending radially and divergently outward from the
concave outer shell of the globe.” App. Br. 19; Decl. of P. Stephens 4. The
Examiner finds in response that Park imparts laminar flow to the satellite as
air leaves apertures 85 and that the airflow lines in Park’s Figure 10 are
similar to those in Appellant’s Figure 1, from which the natural inference is
that Park’s air flow is similarly laminar. Ans. 11-12. Appellant argues in
reply that comparison of Park’s Figure 10 with Appellant’s Figure 1 makes
it “clear” that “comparable lines are not similar” and that the air flow
passing through apertures 85 is divergent. Reply Br. 4-5.
We find Appellant’s arguments unconvincing. A means-plus-function
element is met by a prior-art reference when that reference discloses the
corresponding structure or equivalents thereof that are capable of performing
the recited function.
Here, the Examiner found that Park’s elements 75, 76, and 78 or 48
correspond to the Appellant’s disclosed structure or are equivalent structure
capable of generating laminar air flow. Appellant challenges the Examiner’s
conclusion that Park’s structure is capable of the recited function. We agree
with the Examiner that Park’s elements 75, 76, and 78 or 48 act as a laminar
flow duct and laminar flow baffles that correspond to the recited means. We
further agree with the Examiner that it is fair to infer from the similarity
between the air flow lines in Park and those in Appellant’s Figure 1 that the
structures of the two devices function in the same way, i.e., that Park’s air
flow is of a laminar nature similar to Appellant’s. Contrary to Appellant’s
assertion, we see no indication in Park’s Figure 10 that air passing through
any of apertures 85 is divergent. Further, the only divergence apparent in
Park’s Figure 10 is that of the air as it passes around satellite 93.
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Appellant’s Figure 1 shows the same divergence around ball 2.1 Appellant
unequivocally states that the air flow provided to ball 2 is laminar, e.g.,
Spec. para. [0023]. It was not unreasonable for the Examiner to infer that
Park, with its similar pattern of flow lines, also provides laminar air flow to
its satellite.2
(b) “At least one generally semi-circular shaped planar fin”
The Examiner found that Park’s element 97 meets the recited “at least
one generally semi-circular shaped planar fin.” Ans. 4. Appellant argues
that “Park does not disclose a ‘generally semi-circular shaped planar fin’ as
can be best seen in Figs. 12, 13, and 14. The fins 97 and the fins 97a are not
‘generally semi-circular shaped planar.’ ” App. Br. 21, 38. The Examiner
reiterates the finding in response. Ans. 12. Appellant replies that “each of
the cited patents teach a curved, three dimensional fin -- a teaching directly
contrary to the recitations of the claims.” Reply Br. 12.
We find Appellant’s arguments unconvincing. On appeal, Appellant
must identify an error in the Examiner’s rejection. The argument presented
in the Appeal Brief does little more than simply dispute the Examiner’s
finding without explaining why the Examiner’s finding is in error. Merely
disputing the Examiner’s finding does not constitute an identification of
error. The argument presented in the Reply Brief is contradicted by Park’s
Figure 14 and the relevant passage from Park’s specification at column 4,

1 The divergent flow lines shown in Appellant’s Figure 1 were omitted from
the portion of this figure reproduced at Reply Brief 4.
2 Appellant also argues that Park’s satellite is maintained in position by
magnetic attraction and the air flow. App. Br. 19-20. We fail to see in this
argument any relevance to the rejection.
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lines 5-9 (“in Figure 14, … the ball 95a … includes … a plurality of fins
97a…. the fins are substantially straight”).
For these reasons, Appellant has not identified error in the rejection.
2. Rejection 2 (obviousness over Cheng)
The Examiner finds, inter alia, that Cheng discloses that the ball may
have curved wings which would inherently have a semi-circular shape
because the wings would include a planar portion that would attach to
“curvature shape” of ball 12. Ans. 6. Appellant argues in response that
Cheng does not include a drawing of the wings and is entirely silent as to the
shape of the wings, so that a semi-circular wing shape is not inherent in
Cheng. App. Br. 26-27, 38-39. The Examiner maintains that Cheng’s wings
would inherently have a semi-circular shape. Ans. 13.
We cannot sustain the rejection, because the Examiner has not
adequately explained why Cheng’s wings are inherently semi-circular. A
rejection based on inherency must be supported with evidence or reasoning
tending to show that the undisclosed feature is necessarily present in the
reference. The Examiner has not established that Cheng’s curved wing is
necessarily semi-circular in shape simply because it would attach to a
“curvature shape” of ball 12. We therefore perceive no basis for the
Examiner’s finding of inherency.
3. Rejection 3 (obviousness over Park or Cheng, in view of Goldfarb)
Appellant’s arguments concerning this rejection are the same as those
for Rejections 1 and 2. App. Br. 40. Appellant has not identified error in
the rejection with respect to Park, for reasons similar to those given above
with respect to Rejection 1. We cannot sustain the rejection with respect to
Cheng for reasons similar to those given above with respect to Rejection 2.
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Appellant’s arguments concerning Goldfarb’s failure to disclose “laminar air
flow” or “at least one generally semi-circular shaped planar fin” are non-
responsive to the rejection, because the Examiner did not rely on Goldfarb
for those teachings.
4. Rejection 4 (obviousness over McLain in view of Park or Cheng)
Appellant argues claims 1, 2, 4, 5, 8, 9, and 35 as a group; we select
claim 1 as representative.
The Examiner found that McLain discloses all elements of claim 1
(including that the “means for generating laminar air flow” is met by
McLain’s elements 29 and 30) except that the ball is made of paper and
includes at least one generally semi-circular shaped planar fin. Ans. 8. The
Examiner further found that it would have been obvious to make the ball
from paper in view of Park’s disclosure that its satellite is made of a
lightweight material, and that it would have been obvious to provide the ball
with fins in view of Park’s disclosure that fins provide rotative movement.
Ans. 4-5. Appellant argues that McLain fails to disclose (a) “laminar air
flow” and (b) “at least one generally semi-circular shaped planar fin.” App.
Br. 29-30, 41. We consider each of these arguments in turn.
(a) “Laminar air flow”
Appellant argues that McLain does not disclose “laminar air flow”
because its configuration “in which air passes through a pair of vertically
inwardly tapered restricting nozzles” has the result that “air flow, upon
exiting the nozzles, expands and is not laminar air flow.” App. Br. 29, 41.
The Examiner explains in response that McLain teaches that the air
discharged will “[‘]strike or impinge the object in a direct line with the
center of the object.’ ” Ans. 14 (quoting McLain, col. 2, ll. 59-63).
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We find Appellant’s argument unconvincing. We agree with the
Examiner that the combination of McLain’s nozzles 29 and 30 meet the
laminar flow duct and laminar flow baffles that correspond to the claimed
“means for generating laminar air flow.” We further agree that McLain’s
nozzles 29 and 30 function in the same way as the recited means. Appellant
has stressed throughout the briefing of this Appeal that laminar air flow is
characterized by parallel lines of flow. McLain’s Figure 2 shows parallel
lines of flow. Appellant’s assertion that air emerging from tapering nozzles
will expand and be non-laminar is unsupported by objective evidence of
record and appears to contradict the plain meaning of McLain’s Figure 2 and
the passage from McLain’s specification that the Examiner cited. To the
extent that Appellant argues that slanted walls, such as the walls of element
30 in McLain, create non-laminar flow, we find that argument unconvincing
in view of Appellant’s own Figure 1, in which the slanted walls of element
30 do not disturb laminar flow 11.
(b) “At least one generally semi-circular shaped planar fin”
Appellant’s argument that McLain does not teach this feature is non-
responsive to the rejection, because the Examiner did not rely on McLain for
this teaching. Appellant has not identified error in the Examiner’s finding
that Park discloses this limitation, for reasons given supra at 6.
For these reasons, Appellant has not convinced us that the Examiner
erred in making this rejection.
5. Rejection 5 (obviousness over Park or Cheng, in view of Lin)
Appellant argues claims 12-15, 24, 26-29, 31-33, 36, 37, and 39 as a
group; we select claim 26 as representative.
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Appellant’s arguments concerning this rejection are the same as those
for Rejections 1 and 2. App. Br. 42. Appellant has not identified error in
the Examiner’s rejection with respect to Park, for reasons similar to those
given above with respect to Rejection 1. We cannot sustain the rejection
with respect to Cheng for reasons similar to those given above with respect
to Rejection 2. Appellant’s arguments concerning Lin’s failure to disclose
“laminar air flow” or “at least one generally semi-circular shaped planar fin”
are non-responsive to the rejection, because the Examiner did not rely on Lin
for those teachings.
6. Rejection 6 (obviousness over Park or Cheng, in view of Simon)
Appellant’s arguments concerning this rejection are similar to those
for Rejections 1 and 2. App. Br. 43. Appellant has not identified error in
the Examiner’s rejection with respect to Park, for reasons similar to those
given above with respect to Rejection 1. We cannot sustain the rejection
with respect to Cheng for reasons similar to those given above with respect
to Rejection 2.
7. Rejection 7 (obviousness over McLain in view of Simon)
Appellant’s arguments concerning this rejection are similar to those
for Rejection 4. App. Br. 44. Appellant has not identified error in the
Examiner’s rejection with respect to McLain, for reasons similar to those
given above with respect to Rejection 4. Appellant as not argued why it
would not have been obvious to modify McLain to employ Simon’s balloon
as the ball. Appellant’s arguments with respect to Cheng (App. Br. 44-45)
are irrelevant to this rejection.

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8. Rejection 8 (obviousness over Cheng in view of Lin)
We cannot sustain this rejection for reasons similar to those given
above with respect to Rejection 2. The Examiner has not established that
Cheng inherently discloses “at least one generally semi-circular shaped
planar fin.” Lin does not remedy this deficiency.
9. Rejection 9 (obviousness over Park or Cheng, in view of Goldfarb
and Lin)
Appellant’s arguments concerning this rejection are similar to those
for Rejections 1 and 2. App. Br. 40. Appellant has not identified error in
the Examiner’s rejection with respect to Park, for reasons similar to those
given above with respect to Rejection 1. We cannot sustain the rejection
with respect to Cheng for reasons similar to those given above with respect
to Rejection 2. Appellant’s arguments concerning Goldfarb’s and Lin’s
failure to disclose “laminar air flow” or “at least one generally semi-circular
shaped planar fin” are non-responsive to the rejection, because the Examiner
did not rely on Goldfarb or Lin for those teachings.

DECISION
The rejection of claims 1-5, 9, 21-23, 30, 34, 35, and 38 under 35
U.S.C. § 103(a) for unpatentability over Park is AFFIRMED.
The rejection of claims 1-5, 7, 9, 16-18, 21-23, 34, 35, and 38 under
35 U.S.C. § 103(a) for unpatentability over Cheng is REVERSED.
The rejection of claim 6 under 35 U.S.C. § 103(a) for unpatentability
over Park or Cheng, either in view of Goldfarb is AFFIRMED as to Park and
REVERSED as to Cheng.
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The rejection of claims 1, 2, 4, 5, 8, 9, and 35 under 35 U.S.C. §
103(a) for unpatentability over McLain in view of either Park or Cheng is
AFFIRMED as to Park and REVERSED as to Cheng.
The rejection of claims 12-15, 24, 26-29, 31-33, 36, 37, and 39 under
35 U.S.C. § 103(a) for unpatentability over Park or Cheng, either in view of
Lin is AFFIRMED as to Park and REVERSED as to Cheng.
The rejection of claim 10 under 35 U.S.C. § 103(a) for unpatentability
over Park or Cheng, either in view of Simon is AFFIRMED as to Park and
REVERSED as to Cheng.
The rejection of claim 10 under 35 U.S.C. § 103(a) for unpatentability
over McLain in view of Simon is AFFIRMED.
The rejection of claims 19 and 20 under 35 U.S.C. § 103(a) for
unpatentability over Cheng in view of Lemelson is REVERSED.
The rejection of claim 25 under 35 U.S.C. § 103(a) for unpatentability
over Park or Cheng, either in view of Goldfarb, and either in further view of
Lin is AFFIRMED as to Park and REVERSED as to Cheng.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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