Ex Parte Lunder

Patent Trial and Appeal BoardAug 28, 2013

11147719 (P.T.A.B. Aug. 28, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/147,719 06/09/2005 Dennis Lunder V-0100.45 7179 41418 7590 08/28/2013 LAW OFFICES OF CHRISTOPHER L. MAKAY 1634 MILAM BUILDING 115 EAST TRAVIS STREET SAN ANTONIO, TX 78205-1763 EXAMINER RIPLEY, JAY R ART UNIT PAPER NUMBER 3679 MAIL DATE DELIVERY MODE 08/28/2013 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 DENNIS LUNDER ____________________ Appeal 2011-010907 Application 11/147,719 Technology Center 3600 ____________________ Before: WILLIAM V. SAINDON, WILLIAM A. CAPP, and SCOTT A. DANIELS, Administrative Patent Judges. DANIELS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-010907 Application 11/147,719 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 15-32. Claims 1-14 are canceled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The claims are directed to a rotatable coupling, specifically “to an improved coupling device for connecting and separating a flexible waste disposal hose between a recreational vehicle waste discharge outlet and the inlet of an external waste disposal receptacle, septic or sewer system.” Spec. 1. Claim 15, reproduced below, is illustrative of the claimed subject matter: 15. A rotatable coupling assembly for facilitating the connection and separation of a recreational vehicle waste discharge hose, the rotatable coupling assembly comprising: a hose member having a first end portion and second end portion; a first coupling assembly attached to said first end portion of said hose member, said first coupling assembly having a fitting member rotatable 360° about the longitudinal axis of said hose member; and, a second coupling assembly attached to said second end portion of said hose member, said second coupling assembly having a fitting member rotatable 360° about the longitudinal axis of said hose member. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Pohlman Johnson US 894,900 US 5,971,438 Aug. 4, 1908 Oct. 26, 1999 Appeal 2011-010907 Application 11/147,719 3 Other references relied upon by the Examiner: Applicant’s Admitted Prior Art (AAPA) - Page 1 of Appellant’s Specification - Description of the Prior Art. REJECTIONS The Examiner made the following rejections: Claims 17, 19, 26-29, 31 and 32 stand rejected under 35 U.S.C §112 second paragraph as indefinite. Ans. 3. Claims 30 and 31 stand rejected under 35 U.S.C §102(b) as being anticipated by Pohlman. Ans. 4. Claims 15-19 stands rejected under 35 U.S.C §103(a) as being unpatentable over Pohlman. Ans. 9. Claims 20-22 stand rejected under 35 U.S.C §103(a) as being unpatentable over Pohlman, AAPA and Johnson. Ans. 11. Claims 23-29 stand rejected under 35 U.S.C §103(a) as being unpatentable over Pohlman. Ans. 15. Claim 32 stands rejected under 35 U.S.C §103(a) as being unpatentable over Pohlman, AAPA and Johnson. Ans. 20. ANALYSIS Claims 17, 19, 26-29, 31 and 32 as indefinite The Examiner found claims 17, 19, 26-29, 31 and 32 indefinite taking the position that elements encompassed by “hook-like projections”, as recited in each of the claims, are not actually disclosed in the Specification, and thus the scope of the claims cannot be determined. Ans. 3-4. Appeal 2011-010907 Application 11/147,719 4 Referring to Appellant’s Fig. 1, the Specification describes that the third fitting member 80 includes “hook-like members 60”, for receiving the radial projections 58 on the opposing second fitting member 46. Spec. 6, ll. 11-13. The “hook-like members 60”, or projections, are distinctly shown throughout Appellant’s drawings in both close relation to, or in cooperating engagement with the radial projections 58 to illustrate the interrelationship of these elements. See Figs. 4-5, 9-10. Finding support and consistency in the Specification for this element, we agree with Appellant’s contention that this claim term is not unclear. Appellant’s claim is written broadly so that the claimed “hook-like projections” encompasses a variety of hook shapes and connections that might facilitate the secure coupling of the opposing fittings. However, the fact that a claim is broad does not mean that it is indefinite, that is, undue breadth is not indefiniteness. In re Johnson, 558 F.2d 1008, 1016 n.17 (CCPA 1977). Accordingly, we do not sustain the Examiner’s rejection of claims 17, 19, 26-29, 31 and 32 as indefinite. Claims 30 and 31 as anticipated by Pohlman The Examiner found that Pohlman discloses each of the elements of independent claims 30 and 31 including inter alia, a hose member, a ring member, a first member having a main body, and a fitting member “rotatable 360° about said main body” as called for in both claims. Ans. 5. Based on Pohlman’s written description and drawings, the Examiner found that the 360° rotational function of the fitting was inherent in Pohlman, and supported a prima facie anticipation rejection, shifting the burden to Appellant to provide evidence to the contrary. Ans. 7. Appeal 2011-010907 Application 11/147,719 5 Appellant contends that the novel aspect of the claimed invention is the ability of the claimed fitting to rotate 360° about the main body, and disagrees with the Examiner that Pohlman discloses such a feature. App. Br. 14. Appellant argues that Pohlman “plainly does not provide for the 360° rotational capability of any of the structural elements described in the Pohlman specification and drawings,” and that a prima facie case has not been made out by the Examiner based on inherency. Id. Appellant insists that the only rotation disclosed by Pohlman is the relative rotation between the opposing interlocking members 19 and 20 securing the coupling together. App. Br. 15. We are not persuaded by Appellant’s argument because in addition to discussing the interlocking rotation of the members 19 and 20, Pohlman also discloses relative rotation between members 19 and 20 and the bearing surface 13 of the respective tubular members 5 and 6. Pohlman describes that “[m]ounted for rotation on the bearing surfaces 13… are mating members 19 and 20.” Pohlman pg. 1, col. 2, ll. 87-89. Based on this evidence, the Examiner had a reasonable belief that Pohlman discloses relative rotation of the fittings, i.e. members 19 and 20, relative to the supporting bearing surfaces 13 of the respective tubular members 5 and 6. where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. Appeal 2011-010907 Application 11/147,719 6 In re Swinehart, 439 F.2d 210, 213 (CCPA 1971); See also In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“when the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not”). Under applicable principles of inherency, including Swinehart, the Examiner has set forth a prima facie case for anticipation. The Appellant has failed to establish, with either evidence or technical reasoning, that Pohlman does not possess the claimed rotational characteristics. Appellant further argues that when the mating members 19 and 20 are secured together in Pohlman, this “will prevent the entire assemblage of elements, whether individually or in combination, from fully rotating 360° in the manner recited in Appellant's Claims 30 and 31.” App. Br. 16. In support of this contention Appellant points out that Pohlman’s members 19 and 20 have a depending flange 21 which prevents longitudinal movement of the members 19 and 20. App. Br. 16 citing Pohlman, pg. 1 col. 2, ll. 87-93. This argument however does not explain how flange 21 inhibits rotational movement between the members 19 and 20 and the bearing surface 13. Such a structure may prevent longitudinal movement of the members 19 and 20 on the bearing surface 13 along the axis of the tubular section, but nothing in Pohlman’s disclosure, or any other evidence presented by Appellant, indicates any structure or function precluding relative rotation between the members 19 and 20 and the bearing surface 13 either in a coupled, or uncoupled state.1 1 Appellant also argues that members 19 and 20 are coupled in a “tight fit” which precludes the assemblage from rotating. App. Br. 15-16. We note that neither claim 30 or 31 includes a limitation of the fitting in a coupled Appeal 2011-010907 Application 11/147,719 7 We sustain the Examiner’s anticipation rejection of claims 30 and 31. Claims 15-19 as unpatentable over Pohlman The Examiner found that Pohlman discloses each of the limitations of claim 15 except for the second coupling member attached to the second end portion of the hose member. Ans. 10. The Examiner reasoned that one of skill in the art, familiar with fluid couplings would find it obvious to try such an arrangement “to allow the connection of multiple hose members to one another.” Id. Appellant does not contest the Examiner’s stated reasoning for the combination of references, but argues, similar to claims 30 and 31, that Pohlman does not disclose rotation of the members 19 and 20 in a 360° manner about the tubular supports 5 and 6 as called for in claim 15. App. Br. 19. Claim 15 recites a first and second coupling “having a fitting member rotatable 360° about the longitudinal axis of said hose member.” Appellant argues that the Examiner’s finding that such rotation in Pohlman is inherent lacks factual support, and again asserts that nothing in Pohlman discloses that members 19 and 20 rotate on the bearing surfaces 13 about the tubular supports 5 and 6. App. Br. 19. We are again not persuaded by this argument for the reasons discussed above with respect to claims 30 and 31. The Examiner’s findings based on Pohlman’s disclosure have established a prima facie case of obviousness, and the burden has shifted to Appellant to provide evidence or technical reasoning to the contrary. Appellant provides no argument aside from disputing the sufficiency of the Examiner’s prima facie case. See App. Br. 20. As such, we sustain state. Appellant’s argument is not commensurate in scope with claims 30 and 31. Appeal 2011-010907 Application 11/147,719 8 the rejection of claim 15 as unpatentable in view of Pohlman. Appellant offers no new arguments for the patentability of claim 16-19 and relies, instead, on their arguments asserted in support of claim 15. See App. Br. 18- 20. Accordingly, we sustain the rejection of claims 16-19 as well. Claims 20-22 as unpatentable over Pohlman, AAPA and Johnson Appellant does not contest the Examiner’s stated reasoning for the combination of Pohlman, AAPA and Johnson, but argues, similar to claims 30, 31 and 15 discussed supra, that Pohlman does not disclose rotation of the members 19 and 20 in a 360° manner about the tubular supports 5 and 6 as called for in claim 20, and that the Examiner has not presented a prima facie case of obviousness. App. Br. 21-23. Different from the previous claims, claim 20 recites the connection of the rotatable fittings in “a bayonet connection for forming a single fixed coupling rotatable as a unit 360° about the longitudinal axis of said hose member.” Appellant emphasizes that Pohlman teaches nothing remotely similar to the claimed rotatable “single fixed coupling” and that “it is more than mere allegation that the cited art is incapable of performing the claimed function.” App. Br. 22. The Examiner has provided an articulated reasoning with rational underpinning showing Pohlman’s written description and drawings describing the rotation of the members 19 and 20 about the tubular supports 5 and 6. Appellant’s argument to the contrary is unpersuasive because Appellant provides no evidence or technical explanation to support the conclusion that the coupled elements 19 and 20 in Pohlman cannot rotate when coupled together. That the members 19 and 20 are longitudinally restrained does not apprise us of error in the Examiner’s finding that whether coupled or uncoupled, the members 19 and 20 are Appeal 2011-010907 Application 11/147,719 9 rotatable on the bearing surface 13 relative to the respective tubular members 5 and 6. The Examiner has presented a prima facie case of obviousness. Appellant provides no substantive argument aside from disputing the sufficiency of the Examiner’s prima facie case. See App. Br. 20-23. As such, we sustain the rejection of claim 20 as unpatentable in view of Pohlman, AAPA, and Johnson. Appellant offers no new arguments for the patentability of claims 21 and 22 and relies, instead, on their arguments asserted in support of claim 20. See App. Br. 20-23. Accordingly, we sustain the rejection of claims 21 and 22 as well. Claims 23-29 as unpatentable over Pohlman Appellant states their position with respect to claims 23-29 is essentially the same as in the previous claims, and reasserts by incorporation the previous arguments advanced against the rejections of claims 15-22. App. Br. 23-24. Appellant reiterates that Pohlman neither explicitly nor inherently discloses the 360° rotational capability of the separate coupling assemblies as called for in claim 23. App. Br. 24. Appellant also argues that claims 24 and 25, depending from claim 23, further recite a “single unit coupling” where the separate fittings are coupled together, yet still permit independent rotation relative of the coupling with respective hose members. App. Br. 25. For the reasons discussed supra with respect to independent claims 15 and 20 we are not apprised of error in the Examiner’s rejection of claims 23, 24 and 25. The Examiner has provided an articulated reasoning with rational underpinning explaining that Pohlman’s written description and drawings describe the rotation of the members 19 and 20 about the tubular Appeal 2011-010907 Application 11/147,719 10 supports 5 and 6. Appellant’s arguments to the contrary are unpersuasive because Appellant provides no evidence or technical explanation to support the conclusion that the coupled elements 19 and 20 in Pohlman cannot rotate 360° either separately or when coupled together, relative to their respective hose members. We sustain the Examiner’s rejection of claims 23, 24 and 25 as unpatentable over Pohlman. Appellant offers no new arguments for the patentability of claims 26-29 and relies, instead, on their arguments asserted in support of claims 23, 24 and 25. See App. Br. 25. Accordingly, we sustain the rejection of claims 26-29 as well. Claim 32 as unpatentable over Pohlman, AAPA and Johnson Appellant does not contest the Examiner’s combination of Pohlman, AAPA and Johnson, but argues with respect to claim 32 that “[a]s before, everything rests with Pohlman and its teachings, or rather what those teachings are lacking.” App. Br. 26. As with claims 30 and 31, Appellant realleges that Pohlman’s depending flange 21 prevents longitudinal movement of the fittings and provides a tight, secure fitting, and proves that the members 19 and 20 cannot rotate on the bearing surfaces of their respective tubular members 5 and 6. App. Br. 27. As set forth above with respect to the anticipation rejection of claims 30 and 31 in view of Pohlman, the Examiner has set forth a prima facie case, in this case of obviousness, that Pohlman’s members 19 and 20 are capable of rotating relative to their respective tubular members 5 and 6, and we are not persuaded of Examiner error by Appellant’s position that the restriction of longitudinal movement in the fitting precludes 360° rotation of the fittings. We sustain the rejection of claim 32 as unpatentable over Pohlman, AAPA, and Johnson. Appeal 2011-010907 Application 11/147,719 11 DECISION For the above reasons, the Examiner’s rejection of claims 17, 19, 26- 29, 31 and 32 under 35 U.S.C §112 second paragraph as indefinite is REVERSED. The rejection of claims 15-32 as either anticipated by, or obvious in view of Pohlman, or obvious in view of Pohlman, AAPA and Johnson is AFFIRMED. 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) (2009). AFFIRMED tj