Ex Parte Vanek

Board of Patent Appeals and Interferences

May 13, 2008

10692402 (B.P.A.I. May. 13, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES A. VANEK
____________

Appeal 2008-1957
Application 10/692,402
Technology Center 1700
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Decided: May 13, 2008
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Before BRADLEY R. GARRIS, CATHERINE Q. TIMM, and
ROMULO H. DELMENDO, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
all pending claims (claims 1, 6-8, 11, and 13). (Final Office Action entered
March 14, 2006). We have jurisdiction under 35 U.S.C. § 6(b).
Appellant’s invention relates to a “mixing wand which is insertable
through a pour spout on a container of material to be mixed.” (Spec. 1, ll. 6-
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Application 10/692,402

7). “[The] collapsible mixing wand includes an elongate shaft having a
longitudinal axis therealong, a free end and a mixer attachment end; a mixer
assembly attached to the elongate shaft at the mixer attachment end thereof
by a fixing mechanism, for rotation relative to the longitudinal axis; wherein,
when the elongate shaft is rotated in a first direction, the mixer assembly
rotates to an extended condition; and when the elongate shaft rotates in a
second direction, the mixer assembly rotates to a substantially collapsed
condition.” (Spec. 2, ll. 2-7).
Representative claim 1 reads as follows:
Claim 1. A collapsible mixing wand comprising:

an elongate shaft having a longitudinal axis
therealong, a free end and a mixer attachment end;

a mixer assembly attached to said elongate shaft at
the mixer attachment end thereof by a fixing mechanism, for
rotation relative to said longitudinal axis, wherein said mixer
assembly includes a flexible polymer blade set having plural,
integrally formed blades, and wherein each blade has a twist
intermediate an attachment end which is attached to a blade set
hub and a free end;

wherein, when said elongate shaft is rotated in a
first direction, said mixer assembly rotates to an extended
condition; and when said elongate shaft rotates in a second
direction, said mixer assembly rotates to a substantially
collapsed condition.

The prior art relied upon by the Examiner to reject the claims on
appeal is:
Simmonds 3,223,389 Dec. 14, 1965
Stiffler 4,083,653 Apr. 11, 1978
McClean 4,872,764 Oct. 10, 1989
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Walls 6,419,385 B1 Jul. 16, 2002
The following rejections are before us for review:
Claims 1, 7, and 8 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Simmonds.
Claims 6, 11, and 13 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Simmonds in view of Stiffler and Walls.
Claims 6, 11, and 13 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Simmonds in view of McClean and Walls.

ISSUE
Has the Examiner made out a prima facie case of obviousness with
respect to the subject matter of claims 1, 6-8, 11, and 13, properly construing
the claims and taking into account all claim limitations?

FINDINGS OF FACT
1. Appellant’s Figs. 1-8 are reproduced below:

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Application 10/692,402

Figs. 1-5 depict a mixing wand 10 having a shaft 12, with a reduced
diameter portion 14 at one end, where “a pair of elongate blades 16,
18, referred to herein as a mixer assembly, are rotatably fixed” to the
other end 20 of shaft 12. (Spec. 3, ll. 11-18). Fig. 6 shows “a mixing
wand 30 [that] includes the features of mixing wand 10, and further
includes a second mixing assembly.” (Spec. 5, ll. 12-13). Fig. 7
depicts “a container 40 [with] a lid 42, having a pour spout 44” and
mixing wand 10 “with the blades thereof in a collapsed condition,
which allows the blades and shaft to fit through pour spout 44.”
(Spec. 5, ll. 19-21). Fig. 8 depicts using a power drill 46 attached to
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Application 10/692,402

wand 10 to mix contents of a container 40 with the container’s lid 42
in place. (Spec. 6, ll. 2-3).
2. Appellant’s Fig. 9 is reproduced below:

Fig. 9 depicts “a shaft 52 [having] a free end 54 and . . . a polymer
blade set 56 fixed to the other end.” (Spec. 6, ll. 13-14).
3. The only description in Appellant’s Specification of a flexible
polymer blade set having an integrally formed structure is as follows:
Another embodiment of the mixing wand of the invention is
depicted in Fig. 9 at 50. In this embodiment, a shaft 52 has a
free end 54 and has a polymer blade set 56 fixed to the other
end thereof. Blade set 56 is formed of PVC-type polymer as a
unitary, integrally formed structure. In this embodiment, the
blades 58,60,62 and 64, of the mixing assembly are formed with
a hub 65, and include a twist intermediate the hub and the free
ends thereof. As in the case of the first embodiment, when
shaft 52 is rotated in the direction of arrow 66, the blades
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Application 10/692,402

extend under centrifugal force and as a result of resistance from
the material being mixed. When shaft 52 is rotated in the
direction of arrow 68, the blades collapse to a relaxed position,
which is suitable for low speed mixing, and, when shaft rotation
is stopped, for entry and exit from the pour spout of a container.
[Emphasis added].

(Spec. 6, ll. 12-21).
4. Appellant’s Specification does not describe the embodiments of Figs.
1-8 as including a blade set made from a flexible polymer and having
“plural, integrally formed blades” (claim 1), as required by the claims.
(Spec. 1-14).
5. The Examiner found that Simmonds discloses “a blade set which is
integrally connected and formed fixedly to the hub 7 via a pin pivot point
which provides a pivotal rotation of the blade set 8,8 from the collapsed
condition, to a rotated condition, when operated in a rotation or counter
rotation of the shaft.” (Ans. 3, ll. 16-20).
6. Simmonds discloses a mixer having separately pivoted mixing
paddles (i.e., blades), with each paddle mounted in a slotted head formed at
the end of a shaft. (Col. 2, ll. 11-13; Fig. 1).

PRINCIPLES OF LAW
Adopted claim construction must be “reasonable in light of the totality
of the written description.” In re Baker Hughes, 215 F.3d 1297, 1303 (Fed.
Cir. 2000).

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Application 10/692,402

ANALYSIS
The Rejections of Claims 1, 7, and 8 Based on 35 U.S.C. § 103 Over
Simmonds.
The Examiner alleges that Simmonds discloses “a blade set which is
integrally connected and formed fixedly to the hub 7 via a pin pivot point
which provides a pivotal rotation of the blade set 8,8 from the collapsed
condition, to a rotated condition, when operated in a rotation or counter
rotation of the shaft.” (FF 5). According to the Examiner, the subject matter
of claims 1, 7, and 8 “is inclusive of all embodiments of appellant’s figures
1-9” and that, therefore, Simmonds “discloses all of the recited subject
matter as defined within the scope of the claims with the exception of the
blade set being a polymer blade set” (Ans. 3-5).
Appellant illustrates different embodiments of the invention in Figs.
1-9 of the Specification. (FF 1, 2). Appellant does not dispute that the prior
art describes the embodiments shown in Figs. 1-8. (Reply Br. 1, ll. 8-11).
Rather, Appellant’s main argument is that the claimed invention has been
limited to correspond to the embodiment of Fig. 9 in view of the claim
limitation “a flexible polymer blade set having plural, integrally formed
blades,” and thus the Examiner’s position is in error. (Reply Br. 1-3).
Specifically, Appellant argues that the Examiner’s finding of an “integrally
connected blade set” in the prior art is not the “integrally formed blade set”
recited in the claim, nor its equivalent. (Reply Br. 2, ll. 8-13).
We agree with Appellant.
Claim 1 requires “a flexible polymer blade set having plural,
integrally formed blades.” (Claim 1). In the Specification, the only
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description of a flexible polymer blade having an integrally formed structure
is in the discussion of Fig. 9:
Another embodiment of the mixing wand of the invention is
depicted in Fig. 9 at 50. In this embodiment, a shaft 52 has a
free end 54 and has a polymer blade set 56 fixed to the other
end thereof. Blade set 56 is formed of PVC-type polymer as a
unitary, integrally formed structure. In this embodiment, the
blades 58,60,62 and 64, of the mixing assembly are formed with
a hub 65, and include a twist intermediate the hub and the free
ends thereof. As in the case of the first embodiment, when
shaft 52 is rotated in the direction of arrow 66, the blades
extend under centrifugal force and as a result of resistance from
the material being mixed. When shaft 52 is rotated in the
direction of arrow 68, the blades collapse to a relaxed position,
which is suitable for low speed mixing, and, when shaft rotation
is stopped, for entry and exit from the pour spout of a container.
[Emphasis added].

(FF 3). This description reasonably informs one skilled in the relevant art
that the claim limitation in question (i.e., “a flexible polymer blade set
having plural, integrally formed blades”) requires a blade set that is made of
one piece, and thus, would not encompass the integrally connected blades as
described in Simmonds. Here, we find it significant that the Specification
does not describe the embodiments shown in Figs. 1-8, which are similar to
that of Simmonds, as including a blade set made from a flexible polymer and
having “plural, integrally formed blades” (claim 1), as required by the
claims. (FF 4). Thus, the Examiner erred in construing the claims in a
manner contrary to Appellant’s written description. In re Baker Hughes,
215 F.3d 1297, 1303 (Fed. Cir. 2000) (“Although the Director points to
various parts of the written description that describe hydrocarbons as gases
and liquids, nowhere does the written description use the terms ‘evolution’
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Application 10/692,402

or ‘liberation’ to describe separation of hydrogen sulfide from a gaseous
hydrocarbon material. . . . We therefore conclude that the Board adopted a
construction of the claim beyond that which was reasonable in light of the
totality of the written description . . . to include gaseous hydrocarbons.”).
Simmonds discloses a mixer having separately pivoted mixing
paddles (i.e., blades), with each paddle mounted in a slotted head formed at
the end of a shaft (FF 6). However, it would be clear to one of ordinary skill
in the art that the claimed collapsible mixing wand could not properly be
construed to cover the collapsible mixing wand taught by Simmonds. While
finding the embodiments of Figs. 1-8 disclosed in the prior art, the Examiner
did not rely on any evidence that the embodiment of Fig. 9, having a
“flexible polymer blade set having plural, integrally formed blades,” was
known or suggested in the prior art. (Ans. 2-20).

The Rejections of Claims 6, 11, and 13 Based on 35 U.S.C. § 103 Over
Simmonds in View of Stiffler and Walls and Over Simmonds in View of
McClean and Walls.
The rejections of claims 6, 11, and 13 over Simmonds in view of
Stiffler or McClean, and Walls, are reversed for the same reasons discussed
above with respect to claims 1, 7, and 8. Stiffler, McClean, and Walls do
not cure the deficiencies in the Examiner’s construction of the claims. (Ans.
2-20).

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CONCLUSION
On this record, the Examiner has not established a prima facie case of
obviousness. The Examiner’s rejections of claims 1, 6-8, 11, and 13 are
reversed.

REVERSED

PL initials:
sld

ROBERT D. VARITZ, P.C.
4915 S.E. 33RD PLACE
PORTLAND, OR 97202
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