Ex Parte Tien et al

Patent Trial and Appeal Board

Apr 5, 2016

12525796 (P.T.A.B. Apr. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/525,796 10/28/2009
60951 7590 04/07/2016
WPAT, PC
INTELLECTUAL PROPERTY ATTORNEYS
2301 Dupont Dr. Suite 510
Irvine, CA 92612
FIRST NAMED INVENTOR
Linsheng Walter Tien
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.
23107-001 1469
EXAMINER
SORKIN, DAVID L
ART UNIT PAPER NUMBER
1774
NOTIFICATION DATE DELIVERY MODE
04/07/2016 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):
inbox@wpatca.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LINS HENG WALTER TIEN, NICK J. MANE SIS,
and GENE H. HUANG
Appeal2014-008656
Application 12/525,796
Technology Center 1700
Before TERRY J. OWENS, JEFFREY T. SMITH, and A VEL YN M. ROSS,
Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134 from a rejection of claims
1, 5, 7-9, 12-14, and 16. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In our opinion below, we refer to the, the Final Office Action appealed
from, filed September 10, 2013 (Final Act.),, the Appeal Brief filed March
10, 2014 (Appeal Br.), the Examiner's Answer filed June 9, 2014 (Ans.),
and the Reply Brief filed August 6, 2014 (Reply Br.).
2 Appellants identify the real party in interest as the co-inventors Linsheng
Walter Tein, Nick Manesis, and Gene Huang.
Appeal2014-008656
Application 12/525,796
STATEMENT OF CASE
The claims are directed to magnetic stirring systems "that have more
efficient mixing and reduce or prevent 'spin out' of magnetic stirring
elements." Spec. 2. "[T]he present magnetic stirring devices provide
improved stirring efficiency and improved stability of magnetic stirring
elements by improving the magnetic field coverage and/ or the magnetic
field/strength compared to existing magnetic stirring elements/systems [and]
.... stirring efficiency is improved by having improved torque in the
contemplated stirring plate and/ or stirring element." Id. at 3. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A magnetic stirrer system, comprising:
a container;
a magnetic stirring element adapted to be disposed within
the container, wherein the stirring element is free from rotatable
attachment to the container;
a housing;
an electric motor disposed within the housing;
a container-contacting surface coupled to the housing,
wherein the surface is capable of supporting the container
comprising a composition therein; and
at least two actuatable driver magnets adapted to drive the
magnetic stirring element and are disposed within the housing
and coupled to the electric motor such that the electric motor is
adapted to continuously spin the at least two actuatable driver
magnets about a vertical rotational axis, and the at least two
driver magnets are spaced apart from, and positioned below, the
container-contacting surface;
wherein each of the at least two driver magnets have a
direction of magnetism that parallel with the vertical rotation
axis;
wherein a first driver magnet of the at least two driver
magnets has a south pole disposed above a north pole, and a
second driver magnet of the at least two driver magnets has a
south pole disposed below a north pole;
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Application 12/525,796
wherein the first driver magnet 1s disposed directly
adjacent to the second driver magnet;
wherein the at least two actuatable driver magnets have
terminal ends distal from the vertical rotation axis such that
during rotation, the terminal ends define a periphery of an
imaginary rotation circle on the container-contacting surface,
and the rotation circle having the vertical rotation axis as its
center, and the circle comprises an area, a radius, and a diameter;
wherein the at least two actuatable driver magnets, when
at rest and not rotating, and not affected by other magnets outside
of the housing, produces a magnetic field having field lines
penetrating through at least part of the imaginary rotation circle
in a direction substantially perpendicular to a plane of the
rotation circle;
wherein the area of rotation circle penetrated by field lines
in a direction substantially perpendicular to the plane, while the
at least two driver magnets are at rest, is defined as magnetic field
coverage area;
wherein the area of rotation circle not penetrated by field
lines in a direction substantially perpendicular to the plane, while
the at least two driver magnets are at rest, is defined as void
space; and
wherein the magnetic field coverage area is equal to or
more than 50% of the rotation circle area.
Amendment filed August 23, 2013. 3
REJECTIONS
The Examiner made the following rejections:
A. Claims 1, 5, 7-9, 12-14, and 16 stand rejected under 35
U.S.C § 112 first paragraph as failing to comply with the
written description requirement. Final Act. 2.
3 The claims recited by Appellants in the Claims Appendix to the Appeal
Brief have not been entered. The claims on appeal appear in the
Amendment filed August 23, 2013.
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Application 12/525,796
B. Claims 1, 5, 7-9, 12-14, and 16 stand rejected under 35
U.S.C § 103(a) as being unpatentable over Karkos et al. 4 in
view of Rosinger5. Id. at 4.
Appellant provides no substantive argument as to the separate
patentability of claims 5, 7-9, 12-14, and 16------depending from claim 1-
therefore, we focus our discussion below on the rejections of pending claim
1 to resolve the issues on appeal. See Appeal Br. 4--7.
OPINION
Rejection A - Written Description
The Examiner rejects claims 1, 5, 7-9, 12-14, and 16 as failing to
comply with the written description requirement. Final Act. 2. Specifically,
the Examiner finds that the limitations of pending claim 1, i.e., "'the stirring
element is free from rotatable attachment to the container' is considered new
matter" and "[t]he concept of 'rotatable attachment to the container' is not a
concept described in the originally filed application." Id.
Appellants counter by arguing for un-entered claim 1 and explaining
that "the un-entered claim amendment submitted after final has addressed
this issue by redefining the stirring element being independent of a free from
fixation to the container." Appeal Br. 7. Appellants in the Reply Brief
present arguments addressing the proper claims on appeal. Reply Br. 4--5.
All arguments not specifically and timely raised in the principal
Appeal Brief are considered waived absent a showing of good cause. In re
Hyatt, 211F.3d1367, 1373 (Fed. Cir. 2000) (noting that an argument not
4 Karkos, Jr. et al., US 6,095,667, issued August 1, 2000 (hereinafter
"Karkos").
5 Rosinger, US 2,350,534, issued June 6, 1944 (hereinafter "Rosinger").
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Application 12/525,796
first raised in the brief to the Board is waived on appeal); E'x parte
Nakashima, 93 USPQ2d 1834 (BPAI 2010) (informative) (explaining that
arguments and evidence not timely presented in the principal Brief will not
be considered when filed in a Reply Brief, absent a showing of good cause
explaining why the argument could not have been presented in the Principal
Brief); Exparte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative)
("Properly interpreted, the Rules do not require the Board to take up a
belated argument that has not been addressed by the Examiner, absent a
showing of good cause."); 37 C.F.R. § 41.41(b)(2).
Appellants' arguments in the Appeal Brief are directed to the un-
entered amendment. Appeal Br. 7. Appellants presents arguments directed
to the proper claims on appeal for the first time in the Reply Brief.
Appellants have failed to identify good cause for presenting these arguments
in the Reply Brief. Because these arguments are untimely, we will not reach
arguments presented for the first time in a reply brief in the absence of good
cause. 37 C.F.R. § 41.41(b)(2). Accordingly, we find no reversible error in
the Examiner's rejection of claims 1, 5, 7-9, 12-14, and 16 as failing to
comply with the written description requirement.
Rejection B - Obviousness
The Examiner rejects claims 1, 5, 7-9, 12-14, and 16 as obvious in
light of the combination of Karkos in view of Rosinger. Final Act. 3. The
Examiner finds that Karkos teaches all limitations of the pending claims
except that "the magnetic stirring element of Karkos is rotatably attached to
the container" as opposed to being "free from fixation to the container." Id.
(emphasis added). But, the Examiner finds that Rosinger supplies this
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missing feature as Rosinger "explains the 'main novelty of my operating
device is, that the operating element inside the container or the like, is free to
move and not connected to any other part or element, as a rule, and will have
no mechanical construction to support or guide it."' Id. 3--4. The Examiner
also concludes that one skilled in the art would have reason to combine
Karkos and Rosinger to "achieve the advantage of automatic alignment"
taught by Rosinger. Id. at 4.
Appellants argue the elements "the stirring element is independent of
and free from fixation to the container" and "wherein the first driver magnet
is disposed directly adjacent to the second driver magnet" are not found in
Karkos as modified by Rosinger. Appeal Br. 4. Appellants also argue that
the combination of Karkos and Rosinger "would have rendered Karkos
unsatisfactory as an ice/frozen drinks blender, and would have changed its
principle of operation" because the free impeller will misalign. Id.
In response, the Examiner notes with respect to Appellants' first
argument, that the disputed language "the stirring element is independent of
and free from fixation to the container," does not appear in pending claim 1
and the limitation "wherein the first driver magnet is disposed directly
adjacent to the second driver magnet" is clearly present in Figure 6 of
Karkos. Ans. 4--5. Further, the Examiner criticizes Appellants' reading of
Karkos' purpose as a juicer, to blend frozen drinks and/or process food as
too narrow. The Examiner finds that Karkos is "related to "a magnetic drive
to transmit rotational motion from a motive source into an enclosed space
without direct mechanical connection." Id. at 5 (emphasis added).
Appellants do not respond to the Examiner's arguments regarding the
presence in Karkos of the limitation "wherein the first driver magnet is
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Application 12/525,796
disposed directly adjacent to the second driver magnet." Reply Br. 6-7.
Instead, Appellants press that there is no reason to combine the Karkos
device with free-moving stirring element of Ro singer as one skilled in the art
"would [not] perceive any advantage of having a free-resting blade in the
kitchen blender, because it simply would not work as intended to blend ice,
fruit, and vegetable" because "a common mixing bar would easily lose its
alignment if there are large solid particles (ice, fruit, vegetable) in the
beaker." Id. at 7.
The first question is whether Appellants have identified a reversible
error in the Examiner's finding that the limitations of claim 1 are taught or
suggested by the combination of Karkos in view of Rosinger. Appellants
have not persuaded us of reversible error.
The test for obviousness is not whether the claimed invention is
expressly suggested in any one or all of the references, but whether the
claimed subject matter would have been obvious to those of ordinary skill in
the art in light of the combined teachings of those references. See In re
Keller, 642 F.2d 413, 425 (CCPA 1981). One of ordinary skill can use his
or her ordinary skill, creativity, and common sense to make the necessary
adjustments and further modifications to result in a properly functioning
device. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) ("a
court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ"). Furthermore, "if 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." See id. at 41 7.
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For the reasons expressed by the Examiner (Final 3--4 and Ans. 4--5),
we find that one of skill in the art would have understood the combined
teachings of Karkos and Rosinger to teach or suggest the system of appealed
claim 1. Appellants offer little to rebut the Examiner's findings---only that
"the stirring element is independent of and free from fixation to the
container" and "wherein the first driver magnet is disposed directly adjacent
to the second driver magnet" are missing from the recited combination.
Appeal Br. 4. The first purportedly missing limitation is not present in
pending claim 1, and the second, as the Examiner finds, is present in Karkos.
See Karkos Fig. 6; Ans. 4--5. Appellants do not dispute these findings.
The second question is whether Appellants have identified a
reversible error in the Examiner's determination that the proposed
combination of Karkos and Rosinger does not change Karkos' principle of
operation. Having evaluated the evidence of record, we find no reversible
error in the Examiner's position.
Combinations of prior art that change the "basic principles under
which the [prior art] was designed to operate" may not support a conclusion
of obviousness. In re Ratti, 270 F.2d 810, 813 (CCPA 1959). However, "[i]t
is well-established that a determination of obviousness based on teachings
from multiple references does not require an actual, physical substitution of
elements." In re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012) (citing In re
Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en bane) (further citations
omitted).
As to Appellants' contention that the combination of Karkos and
Rosinger changes Karkos' principle of operation, we disagree for the reasons
set forth by the Examiner. Appellants reason that "if the entire assembly of
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the drive plate and impeller were free from attachment to the container, the
impeller would encounter resistance from the load of ingredients, polarities
of the drive magnet and drive plate would fail to align, and thus, would fail
achieve its intended purpose as a food blender." Id. at 6. Therefore,
according to Appellants, "the assembly of the impeller being rotatably
mounted to the container is essential to achieving the intended purpose of
the Karkos reference as a food blender." Id. Appellants fail to consider the
sum of the teachings in both Karkos and Rosinger. Rosinger expressly
teaches a stirring and mixing device "in which the stirrer proper will be
represented by an element free of movement and preferably unconnected,
but which will react to magnetic forces." Ro singer 1, 11. 1-10. Also taught
is the use of the claimed stirring and mixing device "for various operations
besides stirring or mixing, like grinding, pulverizing, etc .... " Id. at 11. 19-
21. (emphasis added). Ro singer further explains that:
[ m ]y novel magnetic operating element may be shaped according
to duty to be performed by it, and, as has been indicated, it may
be used not only for stirring or mixing but also for grinding and
other appropriate operations, and it may be made in larger or
more powerful units for actual industrial work, and not only for
laboratory purposes.
Id. at 2, 11. 5-12. Thus, Rosinger teaches a freely-moving magnetic
operating element useful (not only for laboratory operations but,) for large
scale industrial work and more powerful applications that involve grinding
and pulverizing.
Given the above teachings, we concur with the Examiner that the
skilled artisan, reading the collective teachings of Karkos and Rosinger,
would have been led to modify the magnetic stirring system of Karkos to
utilize the freely-moving magnetic operating element of Rosinger in light of
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the advantages of automatic alignment. 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.").
CONCLUSION
The Examiner did not reversibly err in rejecting claims 1, 5, 7-9, 12-
14, and 16, under 35 U.S.C § 112, i-f 1, as failing to satisfy the written
description requirement.
The Examiner did not reversibly err in rejecting claims 1, 5, 7-9, 12-
14, and 16, under 35 U.S.C §103(a), as being unpatentable over Karkos in
view of Rosinger.
DECISION
For the above reasons, the Examiner's rejection of claims 1, 5, 7-9,
12-14, and 16 is 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)(l )(iv) (2009).
AFFIRMED
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