Ex Parte Jaye

Patent Trial and Appeal Board

Apr 19, 2016

12855251 (P.T.A.B. Apr. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/855,251 08/12/2010
73325 7590 04/21/2016
Matthew G, McKinney
Allen, Dyer, Doppelt, Milbrath & Gilchrist, P.A.
255 South Orange A venue
Suite 1401
Orlando, FL 32801
FIRST NAMED INVENTOR
David Jaye
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.
213-03 9506
EXAMINER
CAHILL, JESSICA MARIE
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
04/21/2016 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):
mmckinney@addmg.com
creganoa@addmg.com
skemraj@addmg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID JAYE
Appeal2014-001257
Application 12/855,251
Technology Center 3700
Before STEFAN STAICOVICI, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
David Jaye (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner's decision rejecting claims 1-5, 8-15, 17, 19 and 20. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
Appeal2014-001257
Application 12/855,251
THE CLAIMED SUBJECT MATTER
Independent claims 1, 17 and 20, reproduced below, are illustrative of
the claimed subject matter.
1. A shower arm leak detection device, the shower arm leak
detection device comprising:
a tubular sleeve having a first end and a second end, wherein the
first end is configured to be secured over a drop ear 90° plumbing
fitting on an interior side of a wall; and
an outer sleeve configured to slide partially over the tubular
sleeve, wherein the outer sleeve allows for telescoping
adjustment to a width between a connection of the drop ear 90°
fitting and an exterior side of the wall.
17. A shower arm leak detection device, the shower arm leak
detection device comprising:
a tubular sleeve having a first end and a second end, wherein the first
end is configured to be secured over a modified drop ear 90°
plumbing fitting on an interior side of a wall;
interior threading on an interior surface of the tubular sleeve is
configured to mate with external threading on a second port of the
modified drop ear 90° fitting; and
an outer sleeve configured to slide partially over the tubular sleeve,
wherein the outer sleeve allows for telescoping adjustment to a width
between a connection of the drop ear 90° fitting and the exterior side
of a wall.
20. A shower arm leak detection device, the shower arm leak
detection device comprising:
an elongated port configured to slide over a shower arm, wherein the
elongated port having internal threading for receiving the shower arm;
and
an outer sleeve configured to fit over the elongated port, wherein the
outer sleeve allows for telescoping adjustment to a width between a
connection of the elongated port and an exterior side of a wall.
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Application 12/855,251
REJECTIONS
1) Claims 12-15, 17,and 19arerejectedunder35U.S.C. §112
second paragraph as being indefinite for failing to particularly
point out and distinctly claim the subject matter of the invention.
Final Act. 2.
2) Claim 20 is rejected under 35 U.S.C. §102(b) as anticipated by
Williamson (US 6,668,852 Bl, iss. Dec. 30, 2003). Id. at 3.
3) Claims 1-5, 8-11, 17, and 19 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Williamson in view of Julian (US
6,460,432 B 1, iss. Oct. 8, 2002). Id. at 4.
4) Claims 12-15 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Williamson in view of Julian and Lee (US
3,136,570, iss. June 9, 1964). Id. at 9.
DISCUSSION
Indefiniteness Rejection
Claim 12 recites, inter alia, "the diameter of the tubular sleeve is
configured to be reduced to fit snugly over the drop ear 90°
fitting."( emphasis added). Br., Claims App. The Examiner rejected claims
12-15, 17, and 19 under 35 U.S.C. §112 second paragraph as indefinite
because the term snugly in claim 12 is a relative term and "the specification
does not provide a standard for ascertaining the requisite degree." Final Act.
2. Appellant notes the Specification refers to "a water tight connection
between the tubular sleeve 102 and the exterior of the drop ear 90° fitting."
Br. 4 (citing Spec. i-f 15). Appellant argues that the term "snugly" indicates
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Application 12/855,251
"a close fit and one of ordinary skill in the art would understand the
particular type of connection specified for the tubular sleeve over the drop
ear fitting." Id. at 3--4.
The question of whether a claim is indefinite under 35 U.S.C. § 112,
second paragraph revolves around whether those skilled in the art would
understand what is claimed when the claim is read in light of the
specification and his or her knowledge of the relevant field of art. See
Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1350 (Fed. Cir.
2010). The field of the claimed invention is plumbing fixtures. See Spec.
i-f2. One of ordinary skill in the art of plumbing fixtures would understand
that the meaning of the term "snugly," as used in claim 12, in light of the
Specification, is a water tight connection. We thus conclude that claim 12 is
not indefinite, and therefore do not sustain the rejection of claims 12-15, 17,
and 19 under 35 U.S.C. §112 second paragraph.
Claim 17 recites, inter alia, a "modified drop ear 90° plumbing
fitting." Emphasis added. The Examiner focused solely on the word
"modified" and rejected claim 17 as indefinite because the word "modified"
is a relative term. Final Act. 3. Appellant correctly responds that the phrase
"modified drop ear 90° plumbing fitting" is referred to in the Specification
"as a particular plumbing fitting, which is clearly shown in Figs. 4 and 5 as
having external threading." Br. 4 (emphasis added); see also spec. i-f20. As
such, the Examiner's interpretation of the term "modified" as a mere relative
term is inconsistent with Appellant's Specification. Based on the description
in the Specification noted by Appellant, we conclude that claim 1 7 is not
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Application 12/855,251
indefinite. We do not sustain the rejection of claim 17 under 35 U.S.C. § 112
second paragraph.
Claim 20 - Anticipation - Williamson
The Examiner rejected claim 20 as anticipated by the device shown in
Figure 4 of Williamson. Final Act. 3--4. The Examiner identifies
Williamson's stem portion 14 as the "elongated port configured to slide over
a shower arm, wherein the elongated port has internal threading for
receiving the shower arm." Id. Appellant argues the Examiner erred
because Williamson's "element 14 is not configured to slide over anything."
Br. 5.
The threads in Williamson's stem portion 14 are shown in Figure 4 in
the large diameter part on the left-hand side. Williamson, Fig. 4. If the
Examiner is asserting that the shower arm is inserted into stem portion 14 by
sliding it into the small diameter part on the right-hand side in Figure 4, the
stem portion 14 would slide over the shower arm, but the diameter of the
shower arm would be too small to be received in the threads in the large
diameter part of stem portion 14. If the Examiner is asserting that the
shower arm is inserted into stem portion 14 from the left-hand side, stem
portion 14 receives the shower arm in the threads but does not "slide over"
the shower arm as recited in claim 20. In either case, the Examiner's finding
that Williamson's stem portion 14 is "an elongated port configured to slide
over a shower arm, wherein the elongated port having internal threading for
receiving the shower arm" is not supported by the preponderance of the
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Application 12/855,251
evidence. Thus, we do not sustain the rejection of claim 20 under 35 U.S.C.
§102(a).
Claims 1-5, 8-11, 17, and 19 - Obviousness - Williamson and Julian
The Examiner referred to housing 15 in Figure 3 of Williamson and
found that all the limitations of independent claims 1 and 17 are found in
Williamson other than the drop ear 90° fitting. Final Act. 5, 7. Specifically,
the Examiner found that Williamson's outer sleeve 25 "allows for
telescoping adjustment to a width," as called for by each of independent
claims 1 and 17, because "the outer sleeve (25) could be installed at any
appropriate depth depending on the thickness of the wall and could also
permit other items to telescope." Id. at 5, 7. The Examiner found that Julian
discloses a drop ear 90° fitting. Id. The Examiner concluded that it would
have been obvious to combine the teachings of Williamson with Julian "for
the purpose of providing a water supply line connection that is capable of
fitting in a small space and capable of making a 90° tum as desired." Id.
Appellant argues the Examiner erred because Williamson "does not
describe or suggest the outer sleeve for telescoping adjustment to a width
between a connection of the drop ear 90° fitting and an exterior side of the
wall." Br. 6. In particular, Appellant submits the Examiner erred in finding
Williamson's collar 25 is configured to slide over housing 15 and provide
for telescoping adjustment. Id.
Williamson discloses that collar 25 is fixed to housing 15 by "sweat
soldering, brazing, welding or gluing." Williamson, col. 5, 1. 12. Therefore,
collar 25 is not capable of performing telescoping adjustment, as called for
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Application 12/855,251
by each of independent claims 1and17. Accordingly, the Examiner's
interpretation of the term "telescopic," which relies on the view that
Williamson's outer sleeve 25 can slide along element 15 and be fixed at
various positions (see Ans. 11 ), is unreasonably broad in view of the plain
and ordinary meaning of the term "telescopic" as it would be understood by
persons of ordinary skill in the art. The Examiner's finding that collar 25
allows for the claimed telescoping adjustment is, thus, not supported by the
preponderance of the evidence. As the rejection is based on erroneous
factual findings, the conclusion of obviousness cannot stand. See In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967) (holding that "[t]he legal
conclusion of obviousness must be supported by facts. Where the legal
conclusion is not supported by facts it cannot stand."). Therefore, we do not
sustain the rejection of claims 1-5, 8-11, 17, and 19-35 under
35 U.S.C. §103(a).
Claims 12-15 U.S.C. §103(a)-Williamson, Julian and Lee
With respect to the rejection of claims 12-15, the Examiner's use of
the disclosures of Williamson, Julian and Lee in combination, fails to
remedy the deficiencies of Williamson and Julian, as described supra. See
Final Act. 9-10. We therefore also do not sustain the rejection of claims 12-
15 under 35 U.S.C. § 103(a).
DECISION
The Examiner's decision rejecting claims 1-5, 8-15, 17, 19, and 20 is
REVERSED.
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Appeal2014-001257
Application 12/855,251
REVERSED
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