Ex Parte Fasser et al

Patent Trials and Appeals BoardApr 29, 2013

11598991 - (D) (P.T.A.B. Apr. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/598,991 11/14/2006 Eric K. Fasser 288903-00300-1 1179 7590 04/29/2013 David C. Jenkins Eckert Seamans Cherin & Mellott, LLC 44th Floor 600 Grant Street Pittsburgh, PA 15219 EXAMINER CAMPOS, JR, JUAN J ART UNIT PAPER NUMBER 3654 MAIL DATE DELIVERY MODE 04/29/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ERIC K. FASSER and STEPHEN T. ENGLISH ____________________ Appeal 2011-002909 Application 11/598,991 Technology Center 3600 ____________________ Before: CHARLES N. GREENHUT, BRETT C. MARTIN, and NEIL A. SMITH, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-002909 Application 11/598,991 2 STATEMENT OF CASE Erik K. Fasser and Stephen T. English (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. THE INVENTION Appellants’ claims are directed generally to a canister hose reel. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A portable hose reel assembly comprising: a housing assembly structured to support a rotatable hose reel assembly on an axis; an elongated reel assembly rotatably coupled to said housing assembly and extending longitudinally about said axis; a handle assembly having a handle member and at least one brace; said at least one brace coupled to said housing assembly and extending generally parallel to said axis; and said handle member coupled to said at least one brace and extending generally perpendicular to said at least one brace. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Brown Plantz Spear US 4,315,522 US 5,782,412 US 5,794,649 Feb. 16, 1982 Jul. 21, 1998 Aug. 18, 1998 Tanji1 JP 2003-293376 Dec. 22, 2003 1 The Examiner references US Application No. 2006/0006270, also to Tanji and which contains many of the same figures as the Japanese reference, for textual explanation of the untranslated Japanese reference. See, e.g., Ans. 3. Appeal 2011-002909 Application 11/598,991 3 THE REJECTIONS ON APPEAL The Examiner made the following rejections: Claim 1 stands rejected under 35 U.S.C §112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter that Appellants regard as the invention. Ans. 3. Claims 1, 6, and 7 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Spear. Ans. 4. Claims 1, 6, and 7 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Tanji. Ans. 6. Claims 2-5 and 8-17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Tanji and Plantz. Ans. 7. Claims 18 and 19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Tanji, Plantz, and Brown. Ans. 11. Claim 20 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Tanji and Brown. Ans. 15. ANALYSIS Drawing Objection The Examiner objects to the drawings because the claimed “elongated reel assembly” is not shown in the drawings. See Final Rejection dated Mar. 2, 2010, p. 2. Appellants request our review of this objection. App. Br. 11. Appellants have not apprised us, however, as to how this objection to the drawings is “the kind of adverse decision . . . which relate[s], at least indirectly, to matters involving the rejection of claims,” thereby making it appealable. Requirements made by the Examiner that are not subject to Appeal 2011-002909 Application 11/598,991 4 appeal are petitionable to the Director under 37 C.F.R. § 1.181(a)(1). Accordingly, we have no authority to decide the Examiner's objections to the drawings. See Ex Parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010) (quoting In re Mindick, 37, F.2d 892, 894 (CCPA 1967)). Indefiniteness The Examiner rejects claim 1 as indefinite because the phrase “extending longitudinally about said axis” is allegedly unclear. Ans. 3. The Examiner goes on to explain that “the elongated reel assembly extending longitudinally about said axis is unclear because the use of the ‘about’ without defining the extension direction of the reel assembly leaves the claim unclear.” Ans. 18. As Appellants point out, however, “‘about’ means ‘around the outside.’” App. Br. 12 (citing Merriam-Webster Online Dictionary, 11th ed.; see App. Br. Exh. 3). Further, as Appellants explain, “[c]laim 1 initially identifies ‘an axis of rotation’ then, turning to the phrase identified by the Examiner, states that the ‘reel assembly’ ‘extend[s] longitudinally about said axis.” Id. We agree with Appellants that the claim language is clear that “the ‘direction’ the reel assembly extends is the direction of the axis of rotation” and that “[‘]about’ means around the outside” of said axis. Reply Br. 2. Accordingly, we do not sustain the Examiner’s rejection of claim 1 as indefinite. Anticipation by Spear Appellants argue the claims subject to this rejection as a group. We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). The Examiner finds that Spear teaches each element recited in claim 1. See Ans. 4-5. Appellants’ main argument against this rejection centers around what the Examiner identifies in Spear as the claimed “handle member.” See App App App Exam (App The depi eal 2011-0 lication 11 . Br. 14-18 iner’s no . Br. 15-1 figure abo cted in Fig As an ex [t]he pro disclose legs 28 a tubular h along th two side 02909 /598,991 ; Reply Br tation of v 6): ve shows t ure 1 of th ample, Ap blem with s, “The han nd a singl and grip p e top of th legs 28.” . 3-4. Ap arious elem he Examin e patent. pellants a the Exam dle struct e molded p ortion 26 e transvers 5 pellants sp ents of F er’s notat rgue that: iner’s asse ure 4 is ma lastic tran of the tran e member ecifically ig. 1 of Sp ions to Sp rtions is th de of two sverse me sverse me 22 betwee take issue ear as sho ear’s hose at Spear s molded p mber 22. mber 22 ex n the end with the wn below reel as pecifically lastic side … A tends s of the Appeal 2011-002909 Application 11/598,991 6 App. Br. 16. Appellants argue that “[t]hus, Spear discloses names and reference numbers for the various elements upon which the Examiner bases this rejection.” Id. We note, however, that a reference that describes the subject matter of a claim anticipates the claim even if the reference does not use the same terminology used in the claim. See In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (stating that anticipation does not require an ipsissimis verbis test). Appellants also point to a dictionary definition that states that “‘handle’ is ‘a part that is designed especially to be grasped by the hand.’” App. Br. 15 (citing to Merriam-Webster Online Dictionary, 11th ed. http://www.merriam-webster.com/dictionary/handle; see App. Br. Exh. 5). Appellants then note that Spear has an element 26 that is intended to be used as a handle and, thus, the elements noted by the Examiner cannot be handles because there already exists an element intended to be used as such. Id. Appellants’ arguments on this point fail for at least two reasons. First, and foremost, Appellants ignore the secondary definition listed in the same Merriam-Webster Online Dictionary citation that defines a handle much more broadly as simply “something that resembles a handle.” See App. Br., Exh. 5. Appellants provide no intrinsic evidence that their choice of a narrower definition of “handle” is required in this instance. As Appellants even admit, “it may be possible to grasp the ‘legs’ 28’ by the hand” (App. Br. 16), thus it does not seem at all unreasonable for the Examiner to utilize the portions of elements 28 as “handle members.” Therefore, we do not agree that the Examiner has provided an unreasonable interpretation of the term “handle member.” Further, as noted above, Appellants’ claims recite a “handle member,” not simply a “handle.” In this instance, “handle” is essentially used to Appeal 2011-002909 Application 11/598,991 7 modify the broad recitation of a “member.” As the Examiner notes in his markup of Figure 1 supra, “Handle Member” is merely being referred to as a “Part of [a] Handle Assembly.” We find the Examiner’s interpretation of Spear’s Figure 1 as reasonable and reject Appellants’ ipsissimis verbis application of Spear’s description of Figure 1. For the reasons stated above, we sustain the Examiner’s rejection of claims 1, 6, and 7 as anticipated by Spear. Obviousness over Tanji Appellants argue the claims subject to this rejection as a group. We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). The Examiner rejects claim 1 as unpatentable over the combination of two embodiments shown in Tanji, that of Figures 1 and 11. Ans. 6. The Examiner finds that Tanji Figure 11 teaches all of the claimed elements except for a housing. Id. The Examiner also finds that Tanji teaches a hose reel “using a housing assembly 11 around a hose reel” as shown in Figures 1-5. Ans. 6-7. The Examiner then concludes that the combination of the two would be obvious “to follow the teaching [in] Tanji of placing a housing around a hose reel, and to protect the hose from damage once the hose is wound.” Ans. 7. Appellants argue two reasons as to why this rejection is improper, “(1) the Examiner has misidentified the elements of Tanji and (2) the Examiner has not presented a prima facie case for obviousness.” App. Br. 18. Appellants’ first argument is essentially the same as used above in relation to the rejection over Spear. Appellants argue that Tanji identifies “element number 316 as a handle and element 222 as a linking bar” and that “the Examiner asserts the exact opposite.” This again is an improper ipsissimis Appeal 2011-002909 Application 11/598,991 8 verbis application of Tanji.2 Tanji’s labeling of certain elements does not limit their use for other purposes. Structurally, the elements identified by the Examiner meet the claimed structural configuration as braces and a handle member. In fact, looking at Figure 11 of Tanji, regardless of what element 222 is named, it seems quite likely that a user desiring to pick up that hose reel would do so by grasping element 222. This falls squarely within the broader definition of “handle” noted above. We also do not see where Appellants have provided a persuasive basis for the assertion that the Examiner has failed to present a prima facie case of obviousness. Appellants do not identify any elements missing from the Tanji combination proposed by the Examiner, other than asserting that elements identified by the Examiner are missing because they are not exactly named according to the claim language or as disclosed in Tanji. See App. Br. 19. Further, as noted above, the Examiner explains that one of skill in the art would seek to include a housing as taught elsewhere in Tanji, “to protect the hose from damage once the hose is wound.” Ans. 7. Appellants provide no persuasive argument as to why this is not a valid rationale for combining the two embodiments of Tanji. We find the Examiner’s stated basis for the combination to be an “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness” as required. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Appellants’ additional argument regarding the alleged change to the principle of operation in Tanji is unpersuasive. See App. Br. 21. Tanji discloses multiple embodiments of a hose reel. One has a housing (Figure 1) 2 The teaching in the prior reference need not be ipsissimis verbis. Structural Rubber Products v. Park Rubber, 749 F. 2d 707, 716 (Fed. Cir. 1984). Appeal 2011-002909 Application 11/598,991 9 and the other (Figure 11) has bracing and handle elements that meet the other limitations found in claim 1. Adding the housing of Figure 1 to the reel otherwise disclosed in Figure 11,3 does not change the principle of operation as a hose reel. We do not find Appellants’ argument persuasive that repurposing “the handle and linking bar … to serve different functions” amounts to changing the principle of operation of the device. It would still operate as a hose reel. Accordingly, for the reasons above, we sustain the Examiner’s rejection of claims 1, 6, and 7 as obvious over Tanji. Obviousness over Tanji and Plantz Appellants argue the claims subject to this rejection as a group. We select claim 2 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Appellants restate their argument regarding the labeling of elements in Tanji, which we have already rejected supra. Without identifying any specific elements as allegedly missing from the rejection of claim 2, Appellants appear to attack only the motivation for combining Tanji and Plantz. Appellants assert that the Examiner simply concludes that, “it would have been obvious to a person of ordinary skill in this art to modify the hose reel of Tanji by modifying the handle member to be a curved handle member and positioning the handle so that the handle member extends generally circumferentially about a reel, to follow the teaching of Plantz….” and that such “is not an ‘articulated reasoning’ as to how/why the combination would be made, but merely identifying aspects of the combined element.” App. Br. 22-23 (citing Ans. 9). The conclusion of the Examiner’s 3 We note that Appellants readily admit that “it is true that the two embodiments of Tanji could be bodily incorporated into each other.” Reply Br. 6. Appeal 2011-002909 Application 11/598,991 10 sentence that is omitted from the above quote, however, further states “… to provide even holding force for the reel during use (see figures 4-5 of Plantz).” Ans. 8. Although curiously not mentioned in Appellants Appeal Brief, Appellants do eventually challenge the Examiner’s fully stated rationale in their Reply by asserting that “nothing in Plantz discloses ‘even holding force for the reel during use’ or that such a force is desirable.” Reply Br. 7. While this may be true, a determination of obviousness does not require the claimed invention to be expressly suggested by any one or all of the references. See e.g., In re Keller, 642 F.2d 413, 425 (CCPA 1981).4 We disagree that the Examiner’s rationale is “a random rationale made from whole cloth” as asserted by Appellants, but see it merely as explanation of what would generally be known to one of ordinary skill in the art—a point which Appellants do not contest. Reply Br. 8. Further, although Appellants admit that Plantz has an “arcuate shape as seen from the side,” they argue that “the ‘curve’ of the handle disclosed in Plantz relates to its cross-sectional shape.” Reply Br. 7. Regardless of what else Plantz might disclose, we see no point in arguing such because it is essentially irrelevant to the Examiner’s use of Plantz as teaching “a generally arcuate portion and the portion extending generally circumferentially about the reel assembly.” Ans. 8. Appellants’ discussion of what else Plantz discloses regarding the handle does not apprise us of error as to the teaching actually used by the Examiner. 4 Appellants also assert that the Examiner fails to assert that such a “result is desirable as is known in the art or even generally known.” Reply Br. 8. We find this unpersuasive because the Examiner’s reason for making a proposed combination need not be expressly taught by the prior art. KSR Int’l v. Teleflex, 550 U.S. 398, 415 (2007) Appeal 2011-002909 Application 11/598,991 11 Accordingly, for the reasons stated above, we do not find Appellants arguments as to claim 2 persuasive. We, thus, sustain the Examiner’s rejection of claims 2-5 and 8-17 as unpatentable over Tanji and Plantz. Obviousness over Tanji, Plantz, and Brown Claim 18 The Examiner asserts that the combination of Tanji and Plantz teaches all of the claimed elements except for “the water conduit having a stationary portion and a rotating portion (see figure 7).” Ans. 12. The Examiner then concludes that it would have been obvious to modify the hose reel of the Tanji-Plantz combination with the stationary and rotating portions of Brown “to follow the teaching of Brown, and to make connecting the hose to the hose reel easier.” Ans. 12. Appellants’ only argument against this combination is that Tanji does not actually omit the stationary and rotating portion because “as shown in Figure 3 of Tanji the ‘connecting plug 51’ of Tanji has a water conduit having a stationary portion and a rotating portion” and that, therefore, “the combination of Tanji and Brown is irrelevant.” App. Br. 23. Even if, as Appellants suggest, Brown’s teachings are somewhat duplicative of Tanji’s, that, without more, would be unhelpful to Appellants. See, e.g., In re Boyer 363 F. 2d 455, 458 n.2 (CCPA 1966)(“We think legal support for our reliance on [fewer than all references cited], under these circumstances, can be found in In re Bush, 296 F.2d 491.”). Thus, we have found no error in the Examiner’s combination of Tanji, Brown, and Plantz. Further, Appellants do not specify any elements of claim 18 that are allegedly missing from the Examiner’s combination of Tanji, Brown and Plantz. See App. Br. 23-24, Reply Br. 9. Where an Appellants’ remarks do Appeal 2011-002909 Application 11/598,991 12 not point to any specific language within the claims to distinguish over the prior art, those remarks amount to a general allegation that the claims define a patentable invention. Such allegations will not be considered an argument for separate patentability. 37 C.F.R. § 41.37(c)(1)(vii) (2007). Accordingly, Appellants have provided no persuasive argument as to the rejection of claim 18 and we, therefore, sustain the Examiner’s rejection of claim 18. Claim 19 Appellants again do not point to any specific element in claim 19 that is allegedly missing from the proposed combination. As noted above, we do not consider such general allegations as an argument for separate patentability. Appellants do appear to attack the motivation for the combination, but merely state “[t]he description of the combination is provided in a single conclusory sentence.” App. Br. 24. Appellants point to no alleged error, nor do they explain why the Examiner’s statement is only conclusory. The Examiner states at least one basis for combining Brown with Tanji and Plantz as “to follow the teaching of Brown of using a rotating portion that is structured to face [sic] a first or second direction, and to allow for winding of the hose using clockwise or counter-clockwise rotation of the crank.” Ans. 14. We do not agree that this is merely a conclusory statement, and with nothing further from Appellants as to why it is only conclusory, we are not apprised of error in the Examiner’s rejection of claim 19. Accordingly, we sustain the Examiner’s rejection of claim 19. Obviousness over Tanji and Brown With respect to claim 20, Appellants again merely state “not all of the elements of the present claims are disclosed in the cited art,” but point to no Appeal 2011-002909 Application 11/598,991 13 specific claim element that is missing from the Examiner’s proposed combination. App. Br. 24. Appellants then, as with claim 19, simply assert, with no analysis, that “the Examiner has failed to properly support the rejection as required by KSR International and 35 U.S.C. § 103(a).” The Examiner provides a detailed explanation of the rejection as to claim 20 and provides a rationale for combining Brown with the Tanji. See Ans. 15-17. With nothing more from Appellants beyond such conclusory statements without any analysis of their applicability to the rejection of claim 20, and given the Examiner’s lengthy explanation of the rejection with a specific rationale supporting the combination, we see no persuasive basis provided by Appellants for overturning the Examiner’s rejection. Accordingly, we sustain the Examiner’s rejection of claim 20. DECISION We REVERSE the Examiner’s rejection of claim 1 under 35 U.S.C §112, second paragraph. We AFFIRM the Examiner’s rejections of claims 1-20 under 35 U.S.C. §§ 102 and 103. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED5 Klh 5 See 37 C.F.R. § 41.50(a)(1) (2012) (“The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim, except as to any ground specifically reversed.”).