Ex Parte Tomlinson

Patent Trial and Appeal Board

Mar 4, 2019

15061849 (P.T.A.B. Mar. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/061,849 03/04/2016
65552 7590
HARVEYS. KAUGET
Burr & Forman, LLP
201 North Franklin Street
SUITE 3200
TAMPA, FL 33602
03/06/2019
FIRST NAMED INVENTOR
Michael Tomlinson
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.
0026093. 0000004 4153
EXAMINER
BUECHNER,PATRICKM
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
03/06/2019 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):
HKAUGET@BURR.COM
rcorbett@burr.com
ccook@burr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL TOMLINSON
Appeal2018-004703
Application 15/061,849
Technology Center 3700
Before WILLIAM A. CAPP, LEE L. STEPINA, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1---6 as unpatentable under 35 U.S.C. § 103 over Riis (US
5,242,092, iss. Sept. 7, 1993), Butruille (US 2007/0257224 Al, pub. Nov. 8,
2007), and Dancy (US 3,640,276, iss. Feb. 8, 1972). We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Micro Matic USA, Inc., is the Applicant and real party in interest. Appeal
Br. 3.
Appeal2018-004703
Application 15/061,849
THE INVENTION
Appellant's invention relates to liquid dispensing containers.
Spec. ,r 2. 2 Claim 1, reproduced below, is illustrative of the subject matter
on appeal.
1. An apparatus for dispensing a liquid from a container,
the apparatus comprising:
a valve that controls flow of the liquid through an opening
in the container; and
a downtube disposed in the liquid in the container, and
coupled to the valve;
wherein the downtube is configured to accommodate flow
of the liquid and pass the liquid to the valve; and
wherein the downtube is made of an electrically conductive
plastic material.
OPINION
Unpatentability of Claims 1-6
over Riis, Butruille, and Dancy
Appellant argues claims 1-6 as a group. Appeal Br. 9-14. We select
claim 1 as representative. See 37 C.F.R. § 4I.37(c)(l)(iv).
Claim 1
The Examiner finds that Riis discloses all of the elements of claim 1
except for the downtube being made of an electrically conductive plastic
material. Final Action 2-3. The Examiner relies on Butruille as disclosing
electrically conductive plastic valve components. Id. at 3. The Examiner
concludes that it would have been obvious to a person of ordinary skill in the
art at the time of the invention to make the valve of Riis with electrically
conductive plastic material, as taught by Butruille. Id. According to the
2 Citations to Appellant's Specification are to the Substitute Specification
filed April 13, 2016.
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Application 15/061,849
Examiner, a person of ordinary skill in the art would have done this to
dissipate the buildup of static charge when storing and transporting
combustible liquids. 3 Id.
The Examiner further finds that Dancy teaches the use of plastic
tubing that is impregnated with conductive material to pass electrical static
charges to ground. Id. The Examiner concludes that it would have been
obvious to a person of ordinary skill in the art at the time the invention was
made to make Riis' downtube out of an electrically conductive plastic
material as taught by Dancy. Id. The Examiner's rationale is that Butruille
and Dancy recognize the same problem, namely, dissipating electrical
discharge to prevent explosions. Id. Butruille incorporates electrically
conductive plastic material into fluid container valve components. Id.
Dancy incorporates electrically conductive plastic material into fluid
conduits. Id. The Examiner reasons that it would it have been obvious, in
view of the teachings of Dancy, to incorporate electrically conductive plastic
material into a downtube, to achieve a similar purpose as with Butruille' s
valve. 4 Id.
In traverse, Appellant first argues that Dancy is non-analogous art.
Appeal Br. 2---6. Appellant argues that Dancy transports air from a hospital's
air supply. Appeal Br. 4. Appellant differentiates between tubing that
transports gaseous fluids and tubing that transports liquids. Id. "The
Examiner cannot remove the tubing 104 from the context of Dancy to
contend that ... the tubing could theoretically be used to transport a liquid."
3 Appellant's claim 4 contains a limitation directed to a valve made of
electrically conductive plastic material. Claims App.
4 See note 3 supra.
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Application 15/061,849
Id. Appellant concludes that Dancy is not from the same field of endeavor
as the claimed invention. Id. at 5.
Appellant also argues that Dancy is not reasonably pertinent to the
problem facing the inventor. Appeal Br. 5---6. Appellant argues that Dancy
is directed to an adjustable automatic pressure regulating system for
intravenous and intra-arterial injections. Id. at 6. "A reference seeking to
control the pressure used for blood transfusions is not reasonably pertinent to
the problem of dissipating static charge in a container that holds flammable
liquids." Id. 5
In response, the Examiner states that Dancy is analogous art by reason
of being either: (1) in the same field of endeavor; or (2) reasonably pertinent
to the particular problem to which Appellant is concerned. Ans. 5. The
Examiner considers the similarity in structure and function of Dancy to place
it within the same field of endeavor as Appellant's invention. Id. at 6 ("both
are tubes that transmit fluids, while preventing arcing and/or explosions").
Further, the Examiner notes that, since Dancy's tube is impregnated with
conducting material to pass electrical static charges to ground, Dancy
addresses "exactly the same problem" with which Appellant is concerned.
5 Appellant also argues that the prior art fails to disclose "all" of the claimed
elements. Appeal Br. 9. This argument is without merit and ignores the fact
that the Examiner's rejection is based on a combination of references that,
together, teach all of the claim elements. In particular, Appellant's argument
that the Examiner does not contend that it would have been obvious to
modify riser pipe 8 of Riis to be made from the electrically conductive
plastic material (Appeal Br. 10) overlooks the plain language of the
rejection. Final Action 3 ("[I]t would have been obvious ... to construct the
down tube (riser pipe 8) of Riis from electrically conductive plastic, as
taught by Dancy.").
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Application 15/061,849
In reply, Appellant argues that, because Appellant's invention
transports liquid and Dancy transports air, the two are not functionally
similar for purposes of an analogous art analysis. Reply Br. 3.
A reference qualifies as prior art for an obviousness determination
when it is analogous to the claimed invention. Innovention Toys, LLC. v.
MGA Ent., Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011). Two separate tests
define the scope of analogous art: ( 1) whether the art is from the same field
of endeavor, regardless of the problem addressed, and (2) if the reference is
not within the field of the inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). The "field of
endeavor" test asks if the structure and function of the prior art is such that it
would be considered by a person of ordinary skill in the art because of
similarity to the structure and function of the claimed invention as disclosed
in the application. Id. at 1325-26. "A reference is reasonably pertinent
if ... it is one which, because of the matter with which it deals, logically
would have commended itself to an inventor's attention in considering his
problem." In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). "If a reference
disclosure has the same purpose as the claimed invention, the reference
relates to the same problem, and that fact supports use of that reference in an
obviousness rejection." Id. Whether a prior art reference is "analogous" is a
question of fact. Id. at 658.
Appellant has the better argument with respect to the field of endeavor
test. Although there is similarity in the structure and function of Dancy' s
conduit vis-a-vis Appellant's downtube. This similarity relates to an isolated
component of each system. Dancy' s overall invention is directed to
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Appeal2018-004703
Application 15/061,849
transferring human blood under pressure in a hospital setting. Dancy, col. 1,
11. 29--40. In contrast, Appellant's invention is directed to a dispensing
container for use with volatile liquids. Spec. ,r,r 2---6. These represent two
diverse fields of endeavor.
When it comes to the "reasonably pertinent to the particular problem"
test, the Examiner has the better position. Here, the particular problem is
static electricity buildup in a conduit for fluid flow, where the buildup of
static electricity can ignite a volatile substance. Appellant's liquid versus air
argument is not persuasive. Whether the fluid under consideration is in a
gaseous or a liquid state is of little consequence to the analysis. The key
consideration is that fluid flow through the conduit, whether gas or liquid,
causes static electrical buildup with consequent potential for ignition of a
volatile fluid ( whether gas or liquid). We think a person of ordinary skill in
the art, faced with the problem of static electrical buildup caused by fluid
flow through a conduit, would look to situations from other fields of
endeavor where a similar problem is faced. Dancy teaches that:
Conduit 104 is preferably plastic tubing impregnated with a
conducting material to pass any electrical static charges to
ground. This is standard tubing used in all operating room
equipment to prevent electrical discharges which potentially
might cause an explosion.
Dancy, col. 8, 11. 20-25. We agree with the Examiner that the foregoing
teaching is reasonably pertinent to the problem facing Appellant with the
instant invention.
Appellant next challenges the sufficiency of the Examiner's rationale
for making the proposed combination. Appeal Br. 6-8. Appellant
characterizes the Examiner's rationale as "over-generalized." Reply Br. 1.
Appellant criticizes the Examiner's rationale as falling short of the
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Application 15/061,849
"articulated reason with some rationale underpinning" required by KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). More particularly, Appellant
argues that there is no indication that Riis is known to suffer from a risk of
explosion. Appeal Br. 13 ("Riis ... is completely silent with respect to
dissipating electrical charge."). Appellant further argues that Butruille
suggests only making the valve body (not a conduit) from an electrically
conductive material. Reply Br. 7.
In response, the Examiner states that rationale for utilizing electrically
conductive plastic tubing to prevent electrical discharge that may cause
explosion is identified in Dancy and that a rationale for generally using
electrically conductive plastic material to dissipate sparking when
storing/transporting combustible liquids in a container is identified in the
teachings of Butruille. Ans. 7.
In reply, Appellant argues that there is no indication that Riis suffers
from a risk of explosion. Reply Br. 6.
Riis is noticeably silent regarding using the containers disclosed
therein for transporting liquids that may cause an explosion if
exposed to static charge buildup. The Examiner's proposed
rationale for combining the references amounts to a solution
looking for a problem. There is simply no indication in Riis
that suffers from the risk of explosion due to static charge
buildup that would motivate one skilled in the art to make the
combination proposed by the Examiner.
Id. at 7.
Appellant's arguments are not persuasive. The mere fact that Riis is
silent about static charge buildup does not negate that a person of ordinary
skill in the art would be motivated to improve Riis upon recognizing the
potential for explosion. Here, the underlying problem is already recognized
in the art. Butruille explicitly teaches that electrostatic charges must be
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Application 15/061,849
avoided for safety reasons when transporting and storing combustible,
flammable, liquids. Butruille ,r 4. Butruille addresses this problem through
use of a valve body made of electrically conductive plastic material, which is
"appropriately grounded." 6 Id. ,r,r 8-10. Although, Butruille dissipates
static charge through a valve component, it is considered as containing a
broader overall teaching that it is beneficial to dissipate static charge through
use of a component comprised of an electrically conductive plastic material.
There is no explicit teaching in Butruille regarding a "downtube."
However, Riis explicitly discloses riser pipe 8 proximate valve 12. Riis,
col. 4, 11. 1-11, Fig. 1. A person of ordinary skill in the art looking to
dissipate static charge in Riis would naturally look to teachings where static
charge is dissipated through an existing component. This would naturally
lead the person of ordinary skill in the art to Butruille and Dancy. Butruille
arguably suggests dissipating the charge through a valve component. 7
However, Dancy would suggest to a person of ordinary skill in the art that
static charge can be dissipated through a conduit made of electrically
conductive plastic material either in addition to or, in lieu of, making valve
components of such material. 8 It is well settled that 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.
KSR, 550 U.S. at 417. Here, a person of ordinary skill in the art would
recognize that incorporating electrically conductive plastic material in a
6 See note 3 supra.
7 Ibid.
8 Ibid.
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Application 15/061,849
conduit to prevent static discharge would have broad application beyond
hospital air supply systems. Appellant presents no evidence that adopting
such technique to dispensing containers requires more than ordinary skill.
In considering whether it would have been obvious to combine Dancy
with the teachings of Riis and Butruille, we are mindful that obviousness
"does not require that the motivation be the best option, only that it be a
suitable option from which the prior art did not teach away." Par Pharm.,
Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197-98 (Fed. Cir. 2014) (citation
omitted); see also DyStar Textilfarben GmbH & Co, v. C.H. Patrick Co.,
464 F.3d 1356, 1368 (Fed. Cir. 2006) (explaining that the desire to enhance
commercial opportunities by improving a product or process is universal and
even common-sensical). We express no opinion as to whether using
electrically conductive plastic material in the riser tube of Riis is the best
option, only that it is an obvious option in view of the teachings of Dancy.
Otherwise, a motivation to combine can be found in "any need or problem
known in the field of endeavor at the time of the invention and addressed by
the patent." KSR, 550 U.S. at 420. "[T]he analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." Id. at 418.
Under the circumstances, the Examiner has stated a sufficient
rationale to support the instant rejection. Final Action 3; Ans. 7. In view of
the foregoing discussion, we determine the Examiner's findings of fact are
supported by a preponderance of the evidence and that the Examiner's legal
conclusion ofunpatentability is well-founded. Accordingly, we sustain the
Examiner's unpatentability rejection of claims 1---6.
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DECISION
The decision of the Examiner to reject claims 1-6 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).
AFFIRMED
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