UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

Transcription

1 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD In Re: U.S. Patent No. 7,144,150 : Attorney Docket No Inventor: James J. Farrell : Filed: November 17, 2003 : Issued: December 5, 2006 : IPR No. Unassigned Assignee: f REAL Foods LLC Title: Rinseable Splash Shield and Method of Use Mail Stop PATENT BOARD Patent Trial and Appeal Board U.S. Patent and Trademark Office P.O. Box 1450 Alexandria, Virginia Submitted Electronically via the PTAB E2E DECLARATION OF ALEXANDER H. SLOCUM UNDER 37 C.F.R Hamilton Beach, Exh. 1016, p. 001

2 TABLE OF CONTENTS I. BACKGROUND AND QUALIFICATIONS... 3 II. LEGAL UNDERSTANDING... 4 A. Broadest Reasonable Interpretation... 4 B. Anticipation... 5 C. Obviousness... 5 III. LEVEL OF ORDINARY SKILL IN THE ART... 7 IV. THE 150 PATENT... 8 A. Overview of the 150 Patent... 8 B. Claim Construction...11 V. THE PRIOR ART...13 A. The Neilson Patent (U.S. Pat. No. 5,439,289)...13 B. The Oberg Patent (U.S. Pat. No. 2,995,158)...20 C. The Hansen Publication (WO 00/36925)...18 D. The Karkos Patent (U.S. Pat. No. 6,164,575)...22 E. The Sato Publication (JP H U)...25 VI. Grounds of Unpatentability...31 A. Independent Claim 15 is Rendered Obvious In View of Neilson, Oberg, and Hansen...31 B. Independent Claim 15 is Rendered Obvious In View of Sato and Oberg.37 C. Dependent Claims 20 and 22 are Rendered Obvious in View of Neilson, Oberg, and Hansen...41 D. Dependent Claim 22 is Rendered Obvious in View of Neilson, Oberg, Hansen, and Karkos...42 ii Hamilton Beach, Exh. 1016, p. 002

3 E. Dependent Claims 20 and 22 are Rendered Obvious in View of Sato and Oberg...45 F. Dependent Claim 22 is Rendered Obvious in View of Sato, Oberg, and Karkos...46 VII. OATH...49 iii Hamilton Beach, Exh. 1016, p. 003

4 DECLARATION OF ALEXANDER H. SLOCUM I, Alexander H. Slocum, declare as follows: 1. I have been retained as a technical expert on behalf of Hamilton Beach Brands, Inc. in connection with the above-captioned Inter Partes Review of U.S. Patent No. 7,144,150 ( the 150 Patent ). I understand that the 150 Patent is currently assigned to f REAL Foods, LLC ( f real ). 2. I am familiar with the technology at issue as of November 17, 2003, which is the filing date of US Patent No. 7,144,150 ( the 150 Patent ), as well as the technology at issue as of November 15, 2002, which is the filing date of the provisional application to which the 150 Patent claims priority and is listed on the face of the 150 Patent. 3. I have been asked to provide my technical opinion on concepts discussed in the 150 Patent and the reference documents, as well as my technical opinion on how these concepts relate to several 150 Patent claim limitations in the context of the specification. 4. I have been asked to consider how a person having ordinary skill in the art ( PHOSITA ) would understand the claims of the 150 Patent and the applied reference combinations. For purposes of my opinions, I relied on the claim constructions proposed by f real in a now dismissed patent infringement action, f real Foods, LLC v. Hamilton Beach Brands, Inc., No. 1:14-cv GMS (D. 1 Hamilton Beach, Exh. 1016, p. 004

5 Del., filed Oct. 3, 2014) (the 2014 Action ). I also reviewed the claim construction of sufficient mass by the Patent Trial and Appeal Board in IPR (Exh. 1010) for related U.S. Patent No. 7,520,658 that is a division of 150 Patent and shares a common disclosure. In reaching the opinions stated herein, I have considered the 150 Patent and the references listed in Section V in the context of my own education, training, research, knowledge, and personal and professional experience. 5. I am being compensated at my standard hourly rate of $650 per hour. My compensation is not dependent on the outcome of this Inter Partes Review and in no way affects the substance of my statements in this declaration. 6. In connection with my analysis, I have reviewed the 150 Patent and its file history and various other references provided in the list below: Exh Exh Exh Exh Exh Exh Exh Exh U.S. Patent No. 7,144,150 to James J. Farrell ( the 150 Patent ) U.S. Patent No. 5,439,289 to Jim L. Neilson ( Neilson ) U.S. Patent No. 2,995,158 to Elliot G. Oberg ( Oberg ) International Application Publication No. WO 00/36925 to Asbjørn Hansen, Sr. ( Hansen ) U.S. Patent No. 6,164,575 to John F. Karkos, Jr. ( Karkos ) Japanese Utility Model No. H U1 to Toshihiro Sato et al. ( Sato ) Verified Translation of Sato Prosecution History of the 150 Patent 2 Hamilton Beach, Exh. 1016, p. 005

6 Exh f real Foods LLC v. Hamilton Beach Brands Inc. et al., No cv-01270, D.I. 59 (D. Del. July 28, 2015). Exh IPR , Paper No. 10 (November 30, 2016) Exh IPR , Paper No. 10 (November 30, 2016) Exh Exh Exh Exh U.S. Patent No. 7,520,658 by James J. Farrell ( the 658 Patent ) U.S. Patent No. 7,520,662 by James J. Farrell ( the 662 Patent ) U.S. Provisional Application No. 60/426,622 ( the Provisional Application ) C.V. of Alexander H. Slocum I. BACKGROUND AND QUALIFICATIONS 7. My qualifications are stated more fully in my curriculum vitae. Exh Here I provide a brief summary of my qualifications: 8. I received a S.B. degree in Mechanical Engineering from Massachusetts Institute of Technology ( MIT ) in I received a S.M. degree in Mechanical Engineering from MIT in I received a Ph.D. degree in Mechanical Engineering from MIT in I have been employed as a tenured Professor in Mechanical Engineering at MIT since I was employed as a tenured Associate Professor in Mechanical Engineering at MIT from , and an Associate Professor in Mechanical Engineering at MIT from I was employed as an Assistant 3 Hamilton Beach, Exh. 1016, p. 006

7 Professor in Mechanical Engineering at MIT from I was employed as a Visiting Professor at Cranfield Institute of Technology from I was employed as an Assistant Professor in Civil Engineering at MIT from In addition, I was employed as a Mechanical Engineer at the National institute of Standards and Technology from I am a named inventor on over one hundred US patents and have a number of additional patent applications currently pending before the U.S. Patent and Trademark Office ( USPTO ). I have been substantively involved in the prosecution of numerous of these patents. II. LEGAL UNDERSTANDING 13. My opinions are informed by my understanding of the relevant law. I understand that the patentability analysis is conducted on a claim-by-claim basis. A. Broadest Reasonable Interpretation 14. I understand that in proceedings before the USPTO, the claims of an unexpired patent are to be given their broadest reasonable interpretation in view of the specification from the perspective of one of ordinary skill in the art. I have been informed that the 150 Patent has not expired. Looking at MPEP 2111, because claims can be amended in Inter Partes Review proceedings, claim terms should be interpreted in the broadest reasonable manner as is reasonably allowed to reduce the possibility that an issued patent will be interpreted more broadly than 4 Hamilton Beach, Exh. 1016, p. 007

8 justified. Thus, claim terms are interpreted more broadly than they otherwise would be interpreted at district court in view of a fully developed prosecution record under claim construction principles outlined in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). B. Anticipation 15. First, I understand that a single piece of prior art anticipates a claim if each and every element of the claim is disclosed in that prior art. I further understand that, where a claim element is not explicitly disclosed in a prior art reference, the reference may nonetheless anticipate a claim if the missing claim element is necessarily present in the apparatus or a natural result of the method disclosed i.e., the missing element is inherent. C. Obviousness 16. I understand that the prior art may render a patent claim obvious. I understand that two or more pieces of prior art that each disclose fewer than all elements of a patent claim may nevertheless be combined to render a patent claim obvious if the combination of the prior art collectively discloses all elements of the claim and one of ordinary skill in the art at the time would have been motivated to combine the prior art. I understand that this motivation to combine need not be explicit in any of the prior art, but may be inferred from the knowledge of one of ordinary skill in the art at the time the patent was filed. I also understand that one 5 Hamilton Beach, Exh. 1016, p. 008

9 of ordinary skill in the art is not an automaton, but is a person having ordinary creativity. I further understand that one or more pieces of prior art that disclose fewer than all of the elements of a patent claim may render a patent claim obvious if including the missing element would have been obvious to one of skill in the art (e.g., the missing element represents only an insubstantial difference over the prior art or a reconfiguration of a known system). 17. I understand that a patent claim is obvious if the differences between the subject matter claimed and the prior art are such that the subject matter as a whole would have been obvious at the time of the invention. I understand that the obviousness analysis must focus on the knowledge available to one of skill in the art at the time of the invention in order to avoid impermissible hindsight. I further understand that the obviousness inquiry assumes that the PHOSITA would have knowledge of all relevant references available at the time of the invention. 18. I also understand that the USPTO has identified exemplary rationales that may support a conclusion of obviousness, and I have considered those rationales in my analysis. The rationales include: (A) Combining prior art elements according to known methods to yield predictable results; (B) Simple substitution of one known element for another to obtain predictable results; 6 Hamilton Beach, Exh. 1016, p. 009

10 (C) Use of known technique to improve similar devices (methods, or products) in the same way; (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results; (E) Obvious to try choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; (F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. III. LEVEL OF ORDINARY SKILL IN THE ART 19. I have approached my analysis of the 150 Patent from the perspective of a hypothetical PHOSITA at the time of the filing of the 150 Patent. 20. It is my opinion that a hypothetical person of ordinary skill in the art of the 150 Patent would be an engineer with at least an undergraduate degree in mechanical engineering or related discipline and at least three years of professional or research experience in the design of products that utilize fluid systems. 7 Hamilton Beach, Exh. 1016, p. 010

11 IV. THE 150 PATENT A. Overview of the 150 Patent 21. I have reviewed the 150 Patent to Farrell, which is entitled Rinseable Splash Shield and Method of Use. Exh I understand that the 150 Patent was filed on November 17, 2003, and issued on December 5, See id. I also understand that the 150 Patent claims priority to U.S. Provisional Patent Application No. 60/426,622 ( the Provisional Application ), which was filed on November 15, The very limited disclosure of the Provisional Application does not support the claimed subject matter of the 150 Patent. However, all of the limitations of the claims of the 150 Patent discussed below were well known in the art prior to the filing date of the Provisional Application. Thus, for consistency and to minimize confusion, my analysis will be focused on the state of the art prior to the filing date of the Provisional Application. 22. I understand that the 150 Patent generally relates to blending machines for making frozen milkshakes, coffee drinks, smoothies, or other frozen drinks, and specifically to self-service machines for blending frozen substance in a cup. See Exh at 2: But a PHOSITA would understand the alleged invention of the 150 Patent applies to any device for mixing liquid, such as the mixing device in U.S. Patent No. 5,145,250 to Planck described in the Background of the Invention of the 150 Patent. Exh at 1:55-2:2. 8 Hamilton Beach, Exh. 1016, p. 011

12 23. I have reviewed the file history of the 150 Patent. I understand that originally filed claim 10 of the 150 Patent (which was modified during prosecution and issued as claim 15) is drafted in Jepson format. I understand that claims drafted in Jepson format serve as an admission by the Applicant that the subject matter of the preamble of such a claim is the prior art work of another. See MPEP 2129(III). I understand that the Examiner acknowledged Applicant s choice of the Jepson format, where the improvement/point of novelty is specifically called out, for original claim 10 of the 150 Patent in a Non-Final Office Action, and that the Applicant affirmed his selection of this format. Exh. 1007, Non-Final Office Action page 5 (Exh at 72); Exh. 1007, Response to NFOA pages 6-7 (Exh at 94-95) (showing Applicant s response without contesting the Examiner s classification of claim 10 as being drafted in Jepson format). 24. The preamble of original claim 10 of the 150 Patent recites: 10. On a mixing machine for mixing a liquid contained in a vessel having an opening, the mixing machine of a type including a holder for receiving the vessel and a rotatable mixing element extendable into the vessel for mixing the contents of the vessel, the improvement comprising: Exh. 1007, Originally Filed Claim 10 (Exh at 18). Thus, by using the Jepson format, I understand that Applicant admitted that each of the elements in the preamble was well-known in the prior art. 9 Hamilton Beach, Exh. 1016, p. 012

13 25. I note that the Applicant specifically admits in the Background of the Invention section of the 150 Patent that numerous prior art references disclose a splash shield. Exh at 1: In acknowledging this, Applicant states that the present invention merely relates to a method for rinsing the prior art splash shields to avoid the potential for carryover of mixed ingredients from one batch to the next and without requiring cleaning of the [prior art splash shield] remotely from the mixing device. Exh at 1: Additionally, the Specification of the 150 Patent admits at least the following elements are within the prior art: These [prior art] patents describe a machine that allows a milkshake or other frozen drink to be quickly made from a block of ingredients pre-frozen into a serving cup. The frozen contents within the serving cup are broken into small frozen particles using a rotating blade, and blended with an added liquid also using the rotating blade. Exh at 1:29-34 (emphasis added). During mixing, material can splash from the cup onto the drink machine and surrounding area. U.S. Pat. Nos. 5,328,263 and 5,439,289 (Neilson) each describe a separate, dedicated lid placement mechanism that positions a lid onto a cup so as to minimize such splashing when the contents of the cup are being mixed. U.S. Pat. No. 5,145,250 (Planck) describes a mixing device wherein the lid and mixing device move axially together until the lid makes contact with the receptacle, at which time springs keep the lid in contact with the receptacle as the mixing head travels further into the receptacle. Exh at 1:48-59 (emphasis added). 10 Hamilton Beach, Exh. 1016, p. 013

14 27. Accordingly, I understand that the Applicant additionally admits that: (i) a mixing machine for mixing a liquid contained in a vessel having an opening; (ii) the mixing machine of a type including a rotatable mixing element extendable into the vessel for mixing the contents of the vessel; and (iii) a splash shield carried by the mixing machine and positionable covering the opening of the vessel were known in the prior art before the alleged invention of the 150 Patent. 28. Thus, I understand that the only claim limitations of claim 15 that the Applicant has not admitted as being disclosed by prior art are the following: a rinse chamber in the mixing machine, the rinse chamber having an entrance and a door moveable to a closed position covering the entrance;... at least one nozzle coupled to a source of rinse fluid and oriented to direct rinse fluid onto the splash shield within the rinse chamber. B. Claim Construction (i) rinse chamber 29. As noted above, I understand that in proceedings before the USPTO, the claims of an unexpired patent are to be given their broadest reasonable interpretation in view of the specification from the perspective of one of ordinary skill in the art. I also understand that claim terms should be interpreted more broadly than they otherwise would be interpreted at district court in view of a fully 11 Hamilton Beach, Exh. 1016, p. 014

15 developed prosecution record under claim construction principles outlined in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). 30. Nevertheless, I understand f real proposed a claim construction of the rinse chamber phrase in claim 15 of the 150 Patent in the 2014 Action, which should be no broader than the broadest reasonable interpretation of that phrase. Accordingly, for purposes of this petition, I am applying f real s proposed construction of the phrase rinse chamber as an enclosure in which a rinse apparatus is positioned to provide rinsing. See Exh at 6. (ii) sufficient mass 31. Dependent claim 22 recites sufficient mass to retain the vessel within the holder during relative movement of the mixing element and vessel in opposite directions. I understand that a similar limitation was recited in claim 1 of the 658 Patent was subject to an IPR petition in IPR It is further my understanding that the Board held in IPR that sufficient mass should be given its plain and ordinary meaning, and set forth that sufficient mass in claim 1 of the 658 Patent meant the splash shield is heavy enough to create sufficient downward force on the vessel so as to retain the vessel within the holder when the mixing element moves upwardly in the vessel from the first position to the second position when liquid is present. Exh at 15. Because of a slight variation in the claim language in claim 22 of the 150 Patent I am applying a 12 Hamilton Beach, Exh. 1016, p. 015

16 slightly different construction of the term sufficient mass for claim 22, namely the splash shield is heavy enough to create sufficient downward force on the vessel so as to retain the vessel within the holder when the mixing element and vessel move in opposite directions. (iii) splash shield 32. I understand f real and Petitioner agreed upon a claim construction of the phrase splash shield in claims 15 and 22 of the 150 Patent in the 2014 Action, which should be no broader than the broadest reasonable interpretation of that phrase. See Exh at 4. Accordingly, for purposes of this petition, I am applying the agreed-upon construction of the phrase splash shield as lid for the cup opening. Id. V. THE PRIOR ART A. The Neilson Patent (U.S. Pat. No. 5,439,289) 33. Neilson issued on August 8, 1995, which is more than one year prior to the earliest priority date of the 150 Patent. Accordingly, I understand that Neilson qualifies as prior art under 35 U.S.C. 102(b). 34. Neilson discloses a mixing machine for mixing a liquid (i.e., milkshake) contained in a vessel/receptacle 14 having an opening. Exh at 1:10-13 and Fig. 1. The mixing machine is of a type including a rotatable mixing element 44 extendable into the vessel for mixing the contents of the vessel. Exh at 3:30-45 and Figs. 3A-3B. 13 Hamilton Beach, Exh. 1016, p. 016

17 35. Neilson discloses a milk shake machine with a housing 10, a platform 12 for supporting a vessel/receptacle 14. Exh at 2:62-68 and Fig. 1. Platform 12 is below the mixer placed within a portion of the housing so as to support the vessel/receptacle 14 in a location for the mixer to descend. Exh at Fig. 1. Receptacle 14 has a bottom and side wall defining an interior and an opening at the upper end thereof communicating with the interior. Exh at 2: Neilson also discloses that milk shake machines prior to its invention had the drawbacks of the vessel/receptacle not being positively supported on its bottom, which can lead to spillage, and cleaning difficulties at the point of attachment of the container or receptacle to the housing. Exh at 1: Neilson attempts to solve the problem of spillage and cleaning difficulties in prior milk shake machines by including the support 12 to positively support the bottom of the receptacle during mixing operation, and including a lid 16 being positioned over the receptacle. Exh at 1: Neilson discloses that the lid 16 has a top wall 18, a tapered wall 20 having a circular cross section extending downwardly from top wall 18, and a 14 Hamilton Beach, Exh. 1016, p. 017

18 lower rim 22 that can engage the vessel/receptacle 14 when brought into engagement. Exh at 3:1-9. The lid seats along the upper edge of vessel/receptacle 14 to cover the opening of the vessel/receptacle 14. Exh Figs. 3A-3B. 39. Neilson discloses that the mixer head is closely adjacent to both the top wall and tapered wall of the lid when the mixer head is at its uppermost position and the lid is still in engagement with the receptacle. This promotes the removal of excess material from the mixer head and allows such material to drip down into the receptacle. Exh at 4: Accordingly, it would have been obvious to a PHOSITA that lid 16 of Neilson acts as a splash shield. Specifically, the lid 16 acts as a splash shield during mixing and when the rotating mixer head is withdrawn from the liquid by containing the excess material within the lid 16 and vessel/receptacle 14. Exh at 4: Neilson also discloses that the lid s top wall 18 defines an aperture 40 in which a mixer shaft 42 is disposed. Exh at 3: The mixer shaft 42 includes a mixer head 44 on its lower end under the lid s top wall 18. Exh at 3: The shaft 42 is freely rotatable within aperture 40. Exh at 3: Neilson discloses that an operator places vessel/receptacle 14 under lid 16 and actuates electric motor 38 to lower the lid 16 and bring it into engagement with the side wall of the vessel/receptacle 14 as shown in Figs. 6A and 15 Hamilton Beach, Exh. 1016, p. 018

19 6B. Exh at 4: The lid 16 is moved downward with respect to stationary mixer shaft 42 such that when the lid 16 moves downward the mixer head 44 becomes disposed up close to the bottom of the lid s top wall 18. Exh at 4:22-29 and Fig. 3A. After the lid 16 is in position covering the opening of the vessel/receptacle 14, electric motor 86 is actuated to rotate the mixer shaft and mixer head and the gear motor 78 is energized to move mixer shaft and mixer head downwardly as shown in Figs. 3B and 6C to bring the rotating mixer head closely adjacent to the bottom of the receptacle where it continues to rotate in order to thoroughly mix the contents of the vessel/receptacle. Exh at 4: The motor next moves mixer shaft and head upwardly to the top of the lid recess where the rotation slows to a stop. In one configuration, the motor 38 pulls lid 16 to its elevated position. Exh at 4: Receptacle 14 and the mixed contents are then removed from the system. Exh at 2: Neilson specifically contemplates and accommodates cleaning a splash shield. In particular, Neilson discloses that lid 16 is readily detachable for cleaning. Exh at 5:66. Any suitable means may be utilized to clean the lid. Exh at 5: Although a removable lid can make the lid cleanable, the need to remove it for cleaning requires additional steps by the servicer of the machine to maintain the machine. A PHOSITA would have recognized a need to simplify service and maintenance of a machine. This common need provides 16 Hamilton Beach, Exh. 1016, p. 019

20 motivation to a PHOSITA to search for a way to clean the splash shield without removing it from the machine because in a food store setting there is no time to remove the splash shield. 43. Neilson also discloses that spline bearing 82 permits free up or down motion of the mixer shaft, but is operable to transmit rotational torque to the mixer shaft. Exh at 4:6-9. In addition, Neilson discloses means to prevent rotation of cup or receptacle 14 during the mixing operation so that the operator need not manually hold and maintain the receptacle in place and against such rotation through indents 90 formed at the bottom of receptacle that receive corresponding detents or projections 92 located on platform 12. Exh at 5:1-13. Even with the means to prevent rotation of the cup during mixing, a PHOSITA would have recognized that the lid of Neilson must still have sufficient mass to withstand the operational forces of a mixing apparatus with a motor-powered mixing element. The means preventing rotation of the vessel does not necessarily include means to prevent vertical separation of the cup from the cupholder during mixing. Thus, the lid (and the drive mechanism to which it is attached, including motor 38) of Neilson would apply sufficient mass (inertia) to the top of the cup to retain the cup in the cupholder during mixing and would apply sufficient mass (inertia) to the top of the cup to prevent separation of the cup from the cupholder during mixing and relative movement of the mixing element and vessel in opposite directions. 17 Hamilton Beach, Exh. 1016, p. 020

21 B. The Hansen Publication (WO 00/36925) 44. Hansen published on June 29, 2000, which is more than one year prior to the earliest priority date of the 150 Patent. Accordingly, I understand that Hansen qualifies as prior art under 35 U.S.C. 102(b). 45. Hansen discloses a mixing machine for mixing ice cream into a semiliquid in a funnel or vessel having an opening. Exh at 1:2-12 and Fig The mixing machine is of a type including a rotatable mixing element (i.e., auger with a spindle) extendable into the funnel/vessel for mixing the contents in the funnel/vessel. Exh at 2: The funnel is an enclosure 8 with a closable inlet 9 and a funnel outlet with an ice cream nozzle 38 closing and dispensing the bottom of enclosure 8. Exh at 4: The closable inlet 9 is closed by a lid 35 which is hinged to the inlet 9 in a hinge 36. Exh at 4: A PHOSITA would have understood that the lid 35 closing the closable inlet 9 is used in Hansen to close the enclosure 8 to prevent ice cream 18 Hamilton Beach, Exh. 1016, p. 021

22 from splashing from the enclosure 8 and to prevent rinse fluid during automatic cleaning from escaping from enclosure Hansen discloses that in ice cream or milkshake mixing apparatuses after some use bacteriological growth will take place, which may constitute a health risk to the consumer. Exh at 1: Hansen further discloses that for prior art devices to prevent this bacteriological growth manual washing is required, which is time consuming and encumbered with the drawback that the result depend very much of the care of the operator. Exh at 1: This provides motivation to a PHOSITA to wash the splash shield in-situ and to seek out an automatic washing system. 52. To improve the ability to keep bacteriological levels low for an ice cream or milkshake mixing apparatus, Hansen discloses a spray nozzle within the enclosure for pointing a water spray at the rotatable mixing element (i.e., auger with a spindle). Exh at 1: Specifically, Hansen discloses a spray nozzle 10 for pointing a water spray at the auger 3 for washing purposes. Exh at 5: Hansen further discloses that a vane wheel 14 is located in a transition area between the auger 3 and the auger spindle 4, causing a deflection of the water spray during a movement of the auger 3 past the spray nozzle 10. A heated water supply 16, a cold water supply 17 and a liquid detergent supply 18, in 19 Hamilton Beach, Exh. 1016, p. 022

23 which liquid detergent is supplied form a liquid detergent container 53 via a pump 54, and corresponding not illustrated control valves, allow various spraying concepts to be used for washing or rinsing the enclosure 8 and the auger 3 between the ice cream mixing. Exh at 5: Based on the water spraying system in Hansen, a PHOSITA would have understood that a rinse water spray nozzle or nozzles would be directed to spray rinse fluid onto all features and surfaces within the mixing enclosure. 55. I also understand that the Examiner did not consider the Hansen reference during prosecution of the 150 Patent. C. The Oberg Patent (U.S. Pat. No. 2,995,158) 56. Oberg issued on August 8, 1961, which is more than one year prior to the earliest priority date of the 150 Patent. Accordingly, I understand that Oberg qualifies as prior art under 35 U.S.C. 102(b). 57. Oberg discloses a vending machine for an ice cream drink or liquid, such as a milkshake. Exh at 1: The machine includes a mixing station 20. Exh at 2: The mixing station 20 of the machine mixes the liquid or milkshake in a cup or vessel. Exh at 2: The mixing occurs within the cup in a carriage/cup receptacle 64. Exh at 6: Hamilton Beach, Exh. 1016, p. 023

24 59. The mixing station 20 of the machine is of a type including a rotatable mixing element 216 extendable into the cup/vessel for mixing the contents of the cup/vessel. Specifically, within the mixing station 20, a mixer 210 is mounted for vertical movements within the cabinet by means of the rotatable worm gear 212 operated by the motor 214, which rotates the gear 212 to cause the mixer blades 216 to descend through the aperture 218 into a mixing position within the carriage receptacle 64. Exh at 5:71 6: Within the mixing station 20 of the machine, the carriage receptacle 64 holding the cup is placed in a mixing chamber 252. Exh at 6:40 and Fig The carriage receptacle 64 is the receptacle for a cup in the carriage 22 that is mounted for lateral sliding movements within the cabinet 10 to move the cup through the different stations of the vending machine. Exh at 3: The mixing chamber 252 includes splash guards 254 and a vertically movable glass door 256 covering an entrance to the mixing chamber 252 during the mixing stage. Exh at 6:40-42; Fig. 2. The glass door 256 can be opened 21 Hamilton Beach, Exh. 1016, p. 024

25 by the customer or attendant for purposes of removing the completed milk shake or for cleaning of the mixing chamber 252. Exh at 6: As such, a PHOSITA would have understood that the mixing chamber 252 is an enclosure in which a rinse apparatus (i.e., apparatus for cleaning the mixing chamber) is positioned to provide rinsing. 63. I understand that the Examiner did not consider the Oberg reference during prosecution of the 150 Patent. D. The Karkos Patent (U.S. Pat. No. 6,164,575) 64. Karkos issued on December 26, 2000, which is more than one year prior to the earliest priority date of the 150 Patent. Accordingly, I understand that Karkos qualifies as prior art under 35 U.S.C. 102(b). 65. Karkos discloses a machine 10 for making frozen drinks. Exh at 3: Karkos discloses making the frozen drinks in a cup 25 positioned in the machine 10 on the blender platform 35. Exh at 3: The blender platform 35 includes a shoulder 36 projecting upwardly around the perimeter that helps prevent cup 25 from rotating when the blender is operated. Exh at 3: The machine 10 further includes a chute 24. A cover 30 is readily mounted onto the chute 24 by a set of elongated, thin, flexible ribs 42 extending 22 Hamilton Beach, Exh. 1016, p. 025

26 outwardly from the inner wall 41 of cover mounting aperture 40 of cover 30 cooperating with a rigid lip 44 extending outwardly from the bottom edge of chute 24. Exh at 3:46-60 and Fig. 4. As shown in Fig. 4, cover 30 is a lid for the opening of cup When the cover 30 is mounted on chute 24 in its rest position, which is its position without cup 25 in the machine, the front-loaded weight of cover 30 will ensure that flexible ribs 42 come to rest on lip 44 at the bottom edge of chute 24. Exh at 4: As the cup 25 is brought into position in machine 10, the front rim of blender cup 25 will contact the front of rounded lower portion 50 of cover 30, which causes the front of cover 30 to slide upward on chute 24 in a camming action. Exh at 4: As cup 25 is slid into position, the lower portion 50 of cover 30 slides along the rim of cup 25, which causes the entire cover 30 to be pushed 23 Hamilton Beach, Exh. 1016, p. 026

27 upward, until the cup reaches approximately its final position, at which point the cover 30 will drop down into a seated position with the rim 49 of cover 30 resting on the upper rim of cup 25. Exh at 4: The weight and shape of cover 30 and its semi-rigidness ensure that cover 30 will not be dislodged either when shaved ice is being provided to the blender cup through chute 24, or when the blend is activated to blend the ingredients in the cup. Exh at 4: A PHOSITA would have understood that providing shaved ice or activating the blending process would cause some relative movement of the cup 25 and blender platform 35, because cup 25 is slidably supported by blender platform 35 and the shoulder 36 without sufficient constraints to prevent any non-rotational movement of cup 25, and, as explained by Karkos, the forces caused by providing shaved ice from chute 24 or activating the blending causes movement of cup 25 (i.e., movement that could cause a cover to become dislodged). 73. In fact, a PHOSITA would have understood that the cover 30 of Karkos is especially formed with sufficient weight (i.e., mass) and semi-rigidness to ensure the cover 30 and cup 25 stay in constant contact during all phases of making the frozen drink as an improvement over prior art machines for making frozen drinks, such as U.S. Patent No. 4,786,002 to Misubayashi et al., which includes a soft lid (i.e., lid that is thin, flexible, and light weight) that is 24 Hamilton Beach, Exh. 1016, p. 027

28 detachably mounted to the lower end of the shaved ice discharge chute to cover the opening of the container, but does not adequately prevent unwanted splashing and discharge of the drink ingredients when the blender mechanism is operated. Exh at 1: A PHOSITA would have also understood that because cup 25 is not restrained from axial movement during mixing/blending operations except by the weight of cover 30, and the cover 30 requires sufficient weight/mass and semirigidness to maintain constant contact between cover 30 and cup 25 during mixing operations to prevent splashing or escaping of the ingredients being mixed. Therefore, a PHOSITA would have understood that the weight (i.e., mass) of cover 30 must be sufficient to retain cup 25 within the platform 35 during all phases of the mixing/blending process. 75. I also understand that the Examiner did not consider the Karkos reference during prosecution of the 150 Patent. E. The Sato Publication (JP H U1) 76. Sato published on December 18, 1992, which is more than one year prior to the earliest priority date of the 150 Patent. Accordingly, I understand that Sato qualifies as prior art under 35 U.S.C. 102(b). 77. Sato discloses a vending machine that includes mixing liquids, including viscous liquids such as soups, within a cup having an opening to form a 25 Hamilton Beach, Exh. 1016, p. 028

29 hot or cold drink for purchase from the vending machine. Exh at [0001] and [0004]. The mixing machine is of a type including a rotatable stirring blade extendable into the cup for mixing the contents of the cup. Exh. 1006, Figs Sato discloses that when a stirring blade is rotated with sufficient vigor, there is a problem of potential splashing and overflow of the liquids from the cup. Exh at [0006]. 79. To solve this problem, Sato discloses a mixing machine having a stirring blade connected to an end of a rotating shaft of a stirring motor, a mechanism for moving the stirring motor and Annotated Fig. 1 of Sato stirring blade vertically into and out of the cup, a cup cover disposed on the rotating shaft of the stirring motor concentrically with the stirring blade, and a means for moving the cup cover vertically. Exh at [0007]. 80. In a working example of Sato, the stirring device within the vending machine includes a stirring blade 1; a stirring motor 2 which drives the stirring blade 1; cup cover 5; and a vertical drive mechanism 4, which is mounted on the 26 Hamilton Beach, Exh. 1016, p. 029

30 base 3 and moves the stirring motor 2 vertically. Exh at [0009] and Exh at Figs The stirring blade 1, rotating shaft 21, and stirring motor 2 are mounted to an L-shaped motor support frame 22 that engages with a vertical slide shaft 31 by a slide bearing 23 to guide and support vertical movement of the stirring motor 2, rotating shaft 21, and stirring blade 1. Exh at [0010]. 82. The vertical drive mechanism 4 includes a conveyor 43 composed of a belt, wire or the like stretched parallel to a slide shaft 31 between upper and lower pulleys 41 and 42; a drive motor 44 connected to the pulley 41; and position detecting switches 45 and 46 which detect the vertical position of the motor support frame 22. Exh at [0012] and Exh at Figs A PHOSITA would have recognized that the cover support frame 53 is not connected to the conveyor The cup cover 5 is a lid/cap that covers the opening of the cup 6 and it fits loosely on the rotating shaft 21 of the stirring motor 2. Exh at [0011]. The cup cover 5 is mounted with a reverse-l-shaped cover support frame 53 to the slide shaft 31 by a slide bearing 54. Exh at [0011]. A PHOSITA would have recognized that the cover support frame 53 is not connected to the conveyor Hamilton Beach, Exh. 1016, p. 030

31 84. The cup cover 5 also includes a nozzle 51 coupled to water supplying devices, such as a hot water storage tank. Exh at [0011]. 85. Sato further discloses that just before the end of stirring, and when pulling up the stirring blade 1, the inner wall surface of the cup cover 5 and the stirring blade 1 can be rinsed or washed by injecting some hot water into the cup cover 5 through the nozzle 51 while the stirring blade 1 is rotating. Exh at [0016]. 86. A PHOSITA would have understood that because the hot water spraying from the nozzle 51 is washing the stirring blade 1 and cup cover 5, the nozzle 51 is oriented to direct fluid onto a surface of the cup cover 5 and the stirring blade 1. As such, a PHOSITA would have recognized that the nozzle 51 of Sato is at least one nozzle coupled to a source of rinse fluid and oriented to direct rinse fluid onto the splash shield and at least one nozzle oriented to direct rinse fluid onto the mixing element. 87. In operation, the cup 6 is brought to and supported under the stirring blade 1 by the cup conveyance mechanism 8. Exh at [0014]. The vertical drive mechanism 4 operates downward to lower the motor support frame 22, which lowers the stirring motor 2 with the stirring blade 1, which enters the cup 6. Id. When the stirring motor 2 descends, the cup cover 5 follows along with the cover support frame 53 until the cup cover 5 lands on the upper surface of the cup 6. Id. 28 Hamilton Beach, Exh. 1016, p. 031

32 At that point, as shown in Fig. 2, the cup cover 5, separated from the motor support frame 22, stops moving and covers the top surface of the cup 6 Id. A PHOSITA would have understood that the cover support frame 53 slides freely on slide shaft 31 and cup cover 5 slides freely on shaft 21, because both must freely slide in order for it to be possible when the stirring motor 2 descends via vertical drive mechanism 4 moving motor support frame 22 downwardly for the cover support frame 53 to slide downwardly with gravity, but stop and separate from motor support base 22, when the cup covering 5 comes into contact with the upper rim of cup Further, when the motor support frame 22 is moved upwardly by the vertical drive mechanism 4 and comes into contact with the cover support frame 53, the upward movement of the motor support frame 22 pulls up the cover support frame 53 along with the cup cover 5. Exh at [0015]. 89. Based on the above, a PHOSITA would have understood that the machine of Sato enables the cup cover 5 to move upward and downward with the stirring blade 1 within the perimeter of the cup cover 5 from the rest position to the point at which the cup cover 5 contacts the upper rim of cup 6, and also allows the stirring blade 1 to further descend throughout the vertical extent of cup 6 to fully mix the liquids. 29 Hamilton Beach, Exh. 1016, p. 032

33 90. Sato further discloses that during the stirring process, the vertical drive mechanism 4 may be operated so that the stirring blade 1 reciprocates vertically inside the cup 6 to the extent of not pushing up the cup cover 5 to provide more effective stirring of the ingredients. Exh at [0016]. 91. A PHOSITA also would have understood that because the cup cover 5 and cover support frame 53 are each freely slidable on shafts 21 and 31, respectively, only the weight of the cup cover 5 in combination with the weight of the cover support frame 53 holds the cup cover 5 onto the upper rim of cup 6 as the stirring blade 1 is rotated and moved up and down within the cup 6 during the mixing process. 92. Sato fails to disclose any features for holding the cup 6 in vertical position with respect to the cup conveyance mechanism 8 during the stirring of the liquids by the stirring blade 1 rotating and moving up and down within the cup 6, except the gravity force of cup cover 5 on the upper rim of cup 6 towards conveyor cup holder Accordingly, a PHOSITA would have understood the weight of cup cover 5 and cover support frame 53 to be the forces retaining the cup 6 within the conveyor cup holder 8 during relative vertical movement of the stirring blade 1 and cup 6 in opposite directions. 30 Hamilton Beach, Exh. 1016, p. 033

34 94. After mixing is complete, the cup conveyance mechanism 8 moves the cup 6 containing a beverage to a product take-out window. Exh at [0015]. A PHOSITA would have understood that the beverage is delivered to a product take-out window, because the mixing occurred within an enclosure. As such, because mixing and rinsing (i.e., dispensing hot water from nozzle 51 onto the cup cover 5 and stirring blade 1 for rinsing) occurs in the same location, a PHOSITA would have understood that Sato suggests a rinse apparatus positioned in an enclosure to provide rinsing. Accordingly, it would have been obvious to a PHOSITA that the apparatus of Sato includes a rinse chamber, as that term is construed in paragraph 30 above. 95. I also understand that the Examiner did not consider the Sato reference during prosecution of the 150 Patent. VI. Grounds of Unpatentability A. Independent Claim 15 is Rendered Obvious In View of Neilson, Hansen, and Oberg 96. It is my opinion that the combination of Neilson in view of Hansen and Oberg discloses or suggests all of the limitations of claim 15 of the 150 Patent. It would have been obvious for a PHOSITA to modify Neilson with the teachings of Hansen and Oberg because each reference is generally directed to systems for mixing or blending of liquids and/or frozen solids while mitigating product splash as described in paragraphs 34, 45, and 57 above. 31 Hamilton Beach, Exh. 1016, p. 034

35 97. It is my understanding based on paragraphs above that the preamble of claim 15 is admitted to be prior art. Accordingly, [o]n a mixing machine for mixing a liquid contained in a vessel having an opening, the mixing machine of a type including a rotatable mixing element extendable into the vessel for mixing the contents of the vessel was known prior to the invention of the 150 Patent as admitted by the Applicant of the 150 Patent. 98. To the extent that the Applicant has not already admitted that these elements are found in the prior art by inclusion in a Jepson claim preamble of the originally filed claims of the 150 Patent, Neilson discloses each of the preamble features of claim 15 for the reasons provided in paragraph 34 above. 99. Additionally, Neilson discloses a platform 12 for the cup 14 to rest below the mixer placed within a portion of the housing as provided in paragraphs 35 above It is my opinion that Neilson further discloses a splash shield carried by the mixing machine, the splash shield positionable covering the opening of the vessel, when the terms in that phrase are interpreted in the manner set forth in paragraph 32 above. Specifically, the phrase mentioned above is disclosed in Neilson as set forth in the paragraph 39 above when the term splash shield is interpreted to refer to the lid of the cup opening. 32 Hamilton Beach, Exh. 1016, p. 035

36 101. Neilson fails to explicitly disclose either the cup holding location as a rinse chamber having an entrance and a door moveable to a closed position covering the entrance or at least one nozzle coupled to a source of rinse fluid and oriented to direct rinse fluid onto the splash shield within the rinse chamber However, it would have been obvious to modify Neilson to include each of the two mentioned features based on the teachings of Hansen and Oberg As explained in paragraphs 45 above, Hansen discloses a mixing machine for mixing ice cream into a semiliquid in a funnel As explained in paragraphs above, Hansen discloses that ice cream or milkshake mixing apparatuses must be cleaned to prevent a health risk to consumers and that manual washing is time consuming and relies too heavily on care of the operator to prevent the health risk caused by an apparatus that is not properly cleaned To address the concern disclosed above, Hansen discloses a spray nozzle that is coupled to a source of rinse fluid and is within the enclosure for pointing a water spray at the rotatable mixing element as well as all other portions of enclosure 8 for automatically rinsing enclosure 8 and the mixing element to remove excess ice cream as set forth in paragraphs above It is my opinion that it would have been obvious to a PHOSITA to modify Neilson to include at least one nozzle coupled to a source of rinse fluid 33 Hamilton Beach, Exh. 1016, p. 036

37 and oriented to direct rinse fluid onto the splash shield within the rinse chamber, because Hansen discloses that all features within the mixing enclosure should be contacted by rinse fluid from a nozzle within the mixing enclosure that is coupled to a source of rinse fluid in order to remove excess ice cream without having to rely on manual washing by an attendant It is my opinion that all features within the mixing enclosure to which rinse fluid is directed would have been understood by a PHOSITA to include the splash shield of Neilson, as the splash shield is clearly in contact with excess ice cream that should be removed and Neilson itself acknowledges that lid 16 should be cleaned as set forth in paragraph 42 above As explained in paragraphs above, Oberg discloses a vending machine including a mixing station for mixing liquid or milkshakes in a cup or vessel by lowering a mixing element into the cup placed on a platform below the mixing element in the same manner as Neilson As explained in paragraph 63 above, Oberg discloses a mixing chamber that includes splash guards and a vertically movable glass door covering an entrance to the mixing chamber during the mixing stage and that can be opened to provide access for purposes of removing the completed milk shake or for cleaning of the mixing chamber. 34 Hamilton Beach, Exh. 1016, p. 037

38 110. It is my opinion that the mixing chamber of Oberg containing splash shields and a closable door forming an enclosure and which is cleaned by an attendant by opening the door is an enclosure in which a rinse apparatus (i.e., the apparatus used by the attendant to clean) is positioned to provide rinsing, which is the meaning of the term rinse chamber provided by Patent Owner in the 2014 Action It is also my opinion that it would have been obvious to a PHOSITA to modify the combination of Neilson and Hansen to include a rinse chamber in the mixing machine, the rinse chamber having an entrance and a door moveable to a closed position covering the entrance as taught in Oberg, in order to enclose the area surrounding the features of Neilson that need to be cleaned by the spray nozzle taught by Hansen so as to prevent the rinse fluid from the spray nozzle from escaping the area of the mixing machine of Neilson that includes the features that need to be cleaned by automatically rinsing Neilson s lid 16 and mixing element Moreover, it is my opinion that a PHOSITA would have combined these prior art elements by known methods, with no change in their functions, to yield predictable results. Specifically, a PHOSITA could have taken the splash shield and configuration of Neilson, added the spray device of Hansen to direct rinse fluid onto the splash shield, and added the rinse chamber having an entrance 35 Hamilton Beach, Exh. 1016, p. 038