Ex Parte YatesDownload PDFPatent Trial and Appeal BoardMay 17, 201612888002 (P.T.A.B. May. 17, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/888,002 09/22/2010 James M. Yates 24024 7590 05/19/2016 Calfee, Halter & Griswold LLP The Calfee Building 1405 East Sixth Street Cleveland, OH 44114-1607 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. 33298/04008-GOJ.P.l 13DIV 3576 EXAMINER SHEARER, DANIEL R ART UNIT PAPER NUMBER 3754 NOTIFICATION DATE DELIVERY MODE 05/19/2016 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): ipdocket@calfee.com wfrick@calfee.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMES M. YATES Appeal2014-003155 Application 12/888,002 Technology Center 3700 Before JENNIFER D. BAHR, FREDERICK C. LANEY, and ARTHUR M. PESLAK, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE James M. Yates (Appellant) appeals under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1, 3, 4, 7-9, 11, 12, 14, 15, 17-21, and 23. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. Appeal2014-003155 Application 12/888,002 THE CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A foam generator for a soap dispenser, comprising: a housing having an air inlet and a liquid inlet located at a first end of the housing; an air flow line connected to the air inlet, wherein the air flow line separates the housing from the remote air pump; a liquid flow line connected to the liquid inlet, wherein the liquid flow line separates the housing from the remote liquid pump; an entrapment zone located within the housing; a mixing chamber located within the housing downstream of the entrapment zone, wherein the mixing chamber has a larger volume than the entrapment zone and the diameter of the mixing chamber is greater than the diameter of the air inlet and the diameter of the liquid inlet; an air passage extending between said air inlet and said mixing chamber, the air passage extending along an axial path and having a first cross-sectional area that linearly diminishes in size prior to the entrapment zone to increase the velocity of the air, and wherein at least a portion of the entrapment zone is contained in the air passage; a liquid passage extending between said liquid inlet and said entrapment zone, the liquid passage extending substantially parallel to the air passage for a first distance and extending a second distance that is not parallel to the air passage and the liquid passage converges into the air passage at the entrapment zone and the air and liquid are combined at the entrapment zone and expelled into said mixing chamber and said air passage constricts in cross section in the flow direction prior to the entrapment zone to increase the velocity of the air prior to said convergence with said liquid passage at said entrapment zone; and a porous passage member located downstream of the mixing chamber, 2 Appeal2014-003155 Application 12/888,002 wherein the porous passage member causes the mixture of liquid and air to be expelled as a foam. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Kuribayashi Hull Flanagan us 3,840,183 us 4,366,081 us 4,925,109 REJECTIONS Oct. 8, 1974 Dec. 28, 1982 May 15, 1990 I. Claim 15 stands rejected under 35 U.S.C. § 112, fourth paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. II. Claims 1, 3, 4, 7-9, 11, 12, 14, 15, 17-21, and 23 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hull, Kuribayashi, and Flanagan. DISCUSSION Claims on Appeal The Claims Appendix submitted with Appellant's Response (hereinafter "Resp."), filed September 4, 2013, in response to the Notification of Non-Compliant Appeal Brief, issued August 9, 2013, characterizes claims 8, 12, and 15 as "not being appealed." Resp. 3-5. However, this is not correct because the electronic record for the present application does not show that Appellant filed an amendment in accordance with 37 C.F.R. § 1.121and§1.116 or§ 41.33 cancelling claims 8, 12, and 3 Appeal2014-003155 Application 12/888,002 15. See 37 C.F.R. § 41.31(c) ("An appeal, when taken, is presumed to be taken from the rejection of all claims under rejection unless cancelled by an amendment filed by the applicant and entered by the Office."); 37 C.F.R. § 41.39(a)(l) (providing that the "examiner's answer is deemed to incorporate all of the grounds of rejection set forth in the Office action from which the appeal is taken (as modified by any advisory action and pre- appeal brief conference decision), unless the examiner's answer expressly indicates that a ground of rejection has been withdrawn"). Accordingly, claims 1, 3, 4, 7-9, 11, 12, 14, 15, 17-21, and 23 are involved in this appeal. Rejection I Appellant does not present any arguments contesting this rejection in the Appeal Brief. Thus, Appellant has waived any argument of error. See 37 C.F.R. § 41.37((c)(iv) ("Except as provided for in§§ 41.41, 41.47 and 41.52, any arguments ... not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal."). Accordingly, we summarily sustain the rejection of claim 15 under 35 U.S.C. § 112, fourth paragraph. See In re Berger, 279 F.3d 975, 984, 985 (Fed. Cir. 2002) (holding that the Board did not err in sustaining a rejection under 35 U.S.C. § 112 when the applicant failed to contest the rejection on appeal); MPEP § 1205.02, 8th ed., Rev. 8, August 2012 ("if a ground of rejection stated by the examiner is not addressed in the appellant's brief, that ground of rejection will be summarily sustained by the Board."). 4 Appeal2014-003155 Application 12/888,002 Rejection II The Examiner rejects claims 1, 3, 4, 7-9, 11, 12, 14, 15, 17-21, and 23 as being unpatentable over the combined teachings of Hull, Kuribayashi, and Flanagan. Final Act. 3-5. The Examiner finds: Hull shows a foam generator for a soap dispenser (Fig. 1 ), comprising a housing (45, 21) having an air inlet (from 43) and a liquid inlet (from 41) located at a first end of the housing, an air flow line (31, 43) connected to the air inlet, wherein the air flow line separates the housing from the remote air source (13), a liquid flow line ( 41, 3 7) connected to the liquid inlet, wherein the liquid flow line separates the housing from the remote liquid source ( 15), a mixing chamber ( 45) and a porous passage member (85, 95) located downstream of the mixing chamber, wherein the porous passage member causes the mixture of liquid and air to be expelled as a foam (see abstract). Id. at 3. The Examiner further finds: Kuribayashi discloses a mixing device (Fig. 9) [lJ [sic] with a housing ( l) having an air inlet (at end of 8) and a liquid inlet (at end of 9) located at a first end of the housing, an entrapment zone (14) located within the housing, a mixing chamber (3) located within the housing downstream of the entrapment zone, wherein the mixing chamber has a larger volume than the entrapment zone (Fig. 9) [sic], and the diameter of the mixing chamber is greater than the diameter of the air inlet and the diameter of the liquid inlet (Fig. 9) [sic], an air passage (12, 13, 14) extending between the air inlet the mixing chamber, the air passage extending along an axial path and having a first cross- sectional area that linearly diminishes in size prior to the entrapment zone to increase the velocity of the air (Fig. 9) [sic], and wherein at least a portion of the entrapment zone is contained in the air passage (Fig. 9) [sic], a liquid passage (15, 16) 1 The Examiner's reference to "(Fig. 9)" is an ostensible error, as Kuribayashi only includes Figures 1-3. The reference numerals referred to in the Final Action match the reference numerals of Kuribayashi's Figure 2. 5 Appeal2014-003155 Application 12/888,002 extending between the liquid inlet and the entrapment zone mixing chamber, the liquid passage extending substantially parallel to the air passage for a first distance ( 16) and extending a second distance ( 15) that is not parallel to the air passage and the liquid passages converges into the air passage at the entrapment zone (Fig. 9) [sic] and the air and liquid are combined at the entrapment zone and expelled into the mixing chamber and the air passage constricts in cross section in the flow direction prior to the entrapment zone to increase the velocity of the air prior to the convergence with the liquid passage at the entrapment zone (Fig. 9) [sic]. Id. at 4--5. The Examiner's rejection is predicated in part on a determination that "[i]t would have been obvious to one having ordinary skill in the art at the time the invention was made to have manufactured the mixing chamber of Hull with the shape of Kuribayashi to enhance atomization and mixing." Id. at 5 (emphasis added). Appellant submits that "[t]he Office Action is vague as to whether both the mixing T (45) and foam generator (21) of Hull are being replaced by the burner nozzle of Kuribayashi, or if only the mixing T ( 45) is being replaced by the burner nozzle ofKuribayashi." Appeal Br. 14. Appellant argues, inter alia, that "the Office Action fails to establish a prima facie case of obviousness for modifying the mixing T of Hull with the burner nozzle of Kuribayashi." Appeal Br. 16. In particular, Appellant argues that the Office Action does not identify why one of ordinary skill in the art would have felt a need to enhance atomizing at the mixing chamber T ( 45) upstream of the two turbulator chambers . . . [and] there is no reason that one of ordinary skill in the art would replace an inexpensive T with the complex shape of the burner nozzle of Kuribayashi when Hull is already producing "a very 6 Appeal2014-003155 Application 12/888,002 high quality foam" without the added cost and complexity of the burner nozzle of Kuribayashi. Id. at 17. The Examiner identifies Kuribayashi' s Figure 2 as illustrating a mixing device and specifically identifies truncated cavity 3 as corresponding to the mixing chamber located within a housing downstream of the entrapment zone. Final Act. 4 (identifying "a mixing chamber (3) located within the housing downstream of the entrapment zone, wherein the mixing chamber has a larger volume than the entrapment zone (Fig. 9) [sic]."). In responding to Appellant's query as to which structure( s) in Hull the rejection proposes to replace with Kuribayashi' s burner nozzle, the Examiner clarifies that "the Examiner is proposing that only the mixing T of Hull is replaced by the mixing chamber of Kuribayashi." Ans. 6. In the Examiner's Answer, the Examiner does not contradict Appellant's characterization of the Examiner's rejection as purporting to replace T (45) of Hull with the shape of the Kuribayashi burner nozzle (i.e., the structure shown in Kuribayashi's Figure 2, including truncated cavity 3). See Appeal Br. 14; Ans. 6 ("Appellant has not identified any recitation in Hull that soap-like bubbles created by the mixing chamber are undesirable."); id. at 7 ("It is noted that the 'soap bubbles' of Kuribayashi are only formed after exiting the nozzle and being allowed to expand."). At venturi 35, Hull combines soap and water into "a combined fluid which is relatively poorly mixed." Hull, col. 3, 11. 41--47. Hull's "'T' 45" combines the fluid of water and soap with air and "[t]he combined fluid of air, water, and soap will then pass through a line 47 to the foam generator 21." Id., col. 3, 11. 47-53 (boldface omitted). Kuribayashi's burner nozzle, 7 Appeal2014-003155 Application 12/888,002 on the other hand, ejects "fuel oil in atomized condition." Kuribayashi, col. 1, 11. 4--5. More specifically, Kuribayashi's nozzle is configured so that [o]il injected radially into the mixing chamber IM ... is mixed up with air discharged axially[,] ... conveyed rightwardly[,] and will be collected in a thin film 3F on the surface of the truncated cavity 3 ... [and t]he thin film 3F or oil is constantly moved rightwardly toward the ejecting opening 4, tom off into small particles by action of high speed air flow ejected out of the opening 4. Id., col. 2, 11. 6-15 (boldface omitted). As such, the oil "will be atomized when ejected out of the mouthpiece 2" so that it can be burned. Id., col. 3, 11. 29-31. The Examiner's proposed substitution of Hull's "T" 45 with Kuribayashi's truncated cavity 3 (i.e., the structure identified by the Examiner as the "mixing chamber") would result in atomized water and soap being ejected and then transmitted through line 4 7 to foam generator 21. Rejections on obviousness grounds must be supported by "some articulated reasoning with some rational underpinning" to combine the known elements in the manner required in the claim at issue. In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006), cited with approval inKSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Although the Examiner's articulated reason for modifying Hull's mixing chamber with the shape of Kuribayashi is "to enhance atomization and mixing," the Examiner does not explain, and it is not apparent, why a person of ordinary skill in the art would have been prompted to atomize the combined fluid of air, water, and soap in Hull prior to the mixture entering foam generator 21. See Final Act 5 (proposing manufacturing the "mixing chamber of Hull with the shape of Kuribayashi to enhance atomization and 8 Appeal2014-003155 Application 12/888,002 mixing"); Ans. 6-7. Thus, the articulated reason lacks a rational underpinning. In rejecting claims 1, 3, 4, 7-9, 11, 12, 14, 15, 17-21, and 23, the Examiner relies upon Flanagan to teach the remote air pump and remote liquid pump recited in claim 1. Final Act. 5. The Examiner does not rely on any teachings of Flanagan that might make up for the deficiency in the proposed combination of Hull and Kuribayashi. For the above reasons, the Examiner fails to establish that the subject matter of claims 1, 3, 4, 7-9, 11, 12, 14, 15, 17-21, and 23 would have been obvious. Thus, we do not sustain the rejection of these claims under 35 U.S.C. § 103 as being unpatentable over Hull, Kuribayashi, and Flanagan. DECISION The Examiner's decision rejecting claim 15 under 35 U.S.C. § 112 is AFFIRMED. The Examiner's decision rejecting claims 1, 3, 4, 7-9, 11, 12, 14, 15, 17-21, and 23 under 35 U.S.C. § 103 is REVERSED. 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-IN-PART 9 Copy with citationCopy as parenthetical citation