Ex Parte Majocka et al

Patent Trial and Appeal Board

Sep 27, 2017

14252356 (P.T.A.B. Sep. 27, 2017)

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.
14/252,356 04/14/2014 Christopher A. Majocka 158214.00372 2230
26710 7590 09/29/2017
QUARLES & BRADY LLP
Attn: IP Docket
411 E. WISCONSIN AVENUE
SUITE 2350
MILWAUKEE, WI 53202-4426
EXAMINER
KATCHEVES, BASIL S
ART UNIT PAPER NUMBER
3638
NOTIFICATION DATE DELIVERY MODE
09/29/2017 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):
pat-dept@quarles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ZUM INDUSTRIES, LLC1
Appeal 2017-004716
Application 14/252,356
Technology Center 3600
Before MICHAEL J. STRAUSS, JOYCE CRAIG, and
AARON W. MOORE, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
1 Christopher A. Majocka, Douglas R. Wroblewski, William A. Verdecchia,
Patrick Slater, and Robert Diplacido are named as inventors.
Appeal 2017-004716
Application 14/252,356
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1—4, 7—10, 13—17, 20, 21, 23, and 25. Claims 22, 24, and 26 are withdrawn.
Claims 5,6, 11, 12, 18, and 19 are canceled. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
THE INVENTION
The claims are directed to a rough-in adapter cover for a drain
assembly. Spec., Title, 12. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A drain assembly, comprising:
a drain body configured to be connected to a drain pipe
such that the drain body is in fluid communication with the drain
pipe; and
a cover configured to be operatively connected to the drain
body in a position over the drain body and to at least partially
define a void in a poured concrete slab over the drain body,
wherein the cover includes a top, a bottom, and at least one
perimetrical sidewall that defines at least one perimetrical
surface of the cover, and at least one layer of a release material
is applied to the at least one perimetrical surface of the cover to
prevent poured concrete from adhering to the cover, and
wherein the bottom of the cover includes a non-threaded
attachment mechanism for operatively connecting the cover to
the drain body.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Castillo US 5,921,282 July 13, 1999
Boeshart US 6,817,150 B1 Nov. 16,2004
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REJECTIONS
The Examiner made the following rejections:
Claims 1—4, 7—10, 13—17, and 20 stand provisionally rejected on the
ground of nonstatutory double patenting over claims 1—30 of copending
Application No. 14/067,036 in view of Boeshart.
Claims 1—4, 7—10, 13—17, 20, 21, 23, and 25 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Castillo and Boeshart.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments the Examiner has erred. We disagree with Appellant’s
conclusions. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken (Final Act. 2—5)
and (2) the reasons set forth by the Examiner in the Examiner’s Answer in
response to Appellant’s Appeal Brief (Ans. 5—7) and concur with the
conclusions reached by the Examiner. We highlight the following arguments
seriatim as they are presented in the Appeal Brief, pages 6—24, for ease of
reference including section headings corresponding to those used by
Appellant.
I) Provisional Double Patenting Rejection
Appellant does not contest the provisional double patenting rejection.
Appeal Br. 6—7. Accordingly, we summarily affirm the provisional rejection
of claims 1—4, 7—10, 13—7, and 20 on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 1—30
ofU.S. Application No. 14/067,036 (“the ’036 application”) and Boeshart.
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We also note that the ’036 application has since issued on August 30, 2016,
as U.S. Patent No. 9,428,900 B2.
II) Rejection under 35 U.S.C. § 103(a)
A) Independent claims 1, 8, and 14
Appellant contends the combination of Castillo’s protective cover and
Boeshart’s release agent is improper because “the bottom of [Castillo’s]
cover remains in the concrete following the removal of the top portion [of
the cover].” App. Br. 8. Appellant argues “[accordingly, the structure and
planned use of the disposable cover of Castillo does not create the need or
use for the cover to be coated in any releasable material, such as that of
Boeshart.” Id. The Examiner responds, explaining that, because Castillo’s
cover is removable “to leave space in the concrete which then allows vertical
adjustment and finally the finishing with grout, . . . the modification [to
include Boeshart’s release agent] is being made as a means to more easily
remove the cover since it is a necessary step in the installation of the drain.”
Ans. 5.
We agree with the Examiner. Because “[t]he cover in Castillo is
intended to be removed from [the] concrete[,] . . .a release material would
aid in the removal of the cover.” Id. Therefore, Appellant’s argument the
combination is improper because there is no need for any release material
(App. Br. 8) is unpersuasive of Examiner error. We are also not persuaded
there is no need for a release material because, as argued by Appellant, “the
cover is destroyed in the process of installation.” Id. Instead, as explained
by the Examiner, the reasoning for “making the modification [is not] as a
means to save or protect the cover [but]... to more easily remove the
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cover.” Ans. 5. Appellant’s argument “Castillo teaches away from a
combination with Boesharf (App. Br. 7), fails for the same reason.
Appellant further contends the combination of Castillo and Boeshart
is improper because “Boeshart constitutes non-analogous art.” App. Br. 9.
According to Appellant, “the Examiner provided no basis to explain why
one of ordinary skill in the art would stray from Castillo’s focus on installing
drain assemblies into a reference, Boeshart, that is focused on creating forms
for concrete slabs.” Id. Appellant argues Boeshart is neither “in the same
field of endeavor as the claimed invention” nor “reasonably pertinent to the
problem faced by the inventor.” Id. According to Appellant, Boeshart is
narrowly directed to “the formation of concrete panels for use in
construction” in contrast to drain installation to which the pending claims are
directed. Id. Appellant further argues Boesharf s use of a release agent to
solve a problem in modularly forming structural joists and ribs within
concrete panels would not logically commend itself to an inventor’s
attention in considering a problem arising in drain installation. Id. The
Examiner responds, finding “both references are related in that they both are
construction assemblies often used together in the construction of buildings,
homes, etc[.,] and are concerned with embedding in concrete.”
Appellant provides insufficient evidence the Examiner’s findings are
improper. It is well settled that mere attorney arguments and conclusory
statements, which are unsupported by factual evidence, are entitled to little
probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re
De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Attorney argument is not
evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Nor can such
argument take the place of evidence lacking in the record. Meitzner v.
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Mindick, 549 F.2d 775, 782 (CCPA 1977). In the absence of sufficient
evidence to the contrary, we agree with the Examiner in finding the
invention and references are directed to the common field of endeavor of the
construction of buildings, homes, etc., and to the common problem of
embedding structures in concrete. Ans. 6.
Appellant further argues there would have been no reason for one
skilled in the art to apply a release material applied at a mold interface for
the production of a concrete form panel to a perimetrical surface for a
removable cover for drain installation and to only apply the material to
selected surfaces of the cover. App. Br. 12. Appellant further argues it is
not evident Boesharf s foam coating material would also work with the
hardened plastics of Castillo’s cover. App. Br. 13. The Examiner responds,
finding one skilled in the art would have known which portion of the
Castillo device would be removed and require the release material. Ans. 6.
We agree. The Examiner further finds “the use of a release material on
forms [as per Boeshart] and the use of a release material for drains [of
Castillo] does not teach away from [each other because] the use of a release
material teaches an easy release from concrete.” Id. The Examiner finds an
absence of evidence that Castillo’s plastics would not accept the release
material of Boeshart. Ans. 7. We agree with these findings as well.
We are also not persuaded “[t]he Examiner relied upon impermissible
hindsight reasoning in support of the pending obviousness rejection.” App.
Br. 10.
Any judgment on obviousness is . . . necessarily a reconstruction
based upon hindsight reasoning, but so long as it takes into
account only knowledge which was within the level of ordinary
skill at the time the claimed invention was made and does not
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include knowledge gleaned only from applicant’s disclosure,
such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971); see also Radix Corp.
v. Samuels, 13 USPQ2d 1689, 1693 (D.D.C. 1989) (“[A]ny obviousness
inquiry necessarily involves some hindsight.”); In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds . . . must
[include] some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness”), cited with approval in KSR
Int’l Co v. Teleflex Inc., 550 U.S. 398, 418 (2007). Herein the Examiner has
articulated reasoning with rational underpinnings sufficient to justify the
legal conclusion of obviousness, as discussed supra. Final Act. 3^4; Ans. 5—
7. In contrast, Appellant provides insufficient evidence “Castillo teaches
away from any combination with the release material of Boeshart” (App. Br.
8), there was improper “[slacking modifications on other modifications to
arrive at a specifically claimed structure” (App. Br. 12), or a “spray-on
adherence resistant material [similar to that taught by Boeshart would not]
necessarily work with hardened plastics as in Castillo’ '’ (App. Br. 13).
Concerning the teaching away argument, Appellant fails to provide
sufficient evidence or reasoning explaining why Castillo discourages the
ordinary artisan from making the combination of elements as claimed, i.e.,
using a release agent to assist in removal of the cover from the surrounding
concrete. “A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” Ricoh Co., Ltd. v. Quanta
Comput. Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (quoting Optivus Tech.,
Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir. 2006)).
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The “stacking” argument is unpersuasive for lack of sufficient
evidence or argument the Examiner’s reasoning for combining the teachings
of Castillo and Boeshart is inadequate, i.e., that the Examiner has failed to
articulate reasoning based on rational underpinning, sufficient to support the
combination and a conclusion of obviousness.
Appellant’s argument alleging there is no evidence Boeshart’s release
agent would work with Castillo’s plastic is unpersuasive because Appellant
provides insufficient evidence Boeshart’s release material would not work
with Castillo’s plastic. Furthermore, claim 1 only recites a generic “release
material”; Boeshart is relied upon for teaching the use of such a release
agent for forming structures with concrete. As found by the Examiner,
“[t]here are a wide variety of release materials well known in many arts
which aid the removal or [separation] of two items.” Ans. 6. In the absence
of evidence to the contrary, one skilled in the art would be expected to
exercise independent judgment in selecting a suitable release agent for use
with a form or cover such as taught by Castillo. Furthermore, even if
Boeshart’s release agent were found to be unsuitable for use with Boeshart’s
plastic cover, we note “a non-enabling reference may qualify as prior art for
the purpose of determining obviousness under [35 U.S.C.] § 103.” Symbol
Techs. Inc. v. Opticon Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991); see also
Beckman Instruments, Inc. v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed.
Cir. 1989) (indicating an inoperative reference “is prior art for all that it
teaches.”)
Appellant’s argument is further unpersuasive because, although the
Examiner relies on Boeshart for teaching a release material for use with
concrete, the Examiner relies on the combination of Castillo and Boeshart
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teaching or suggesting a release material for concrete used in the
environment of Castillo including, for example, a plastic cover. “Non­
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)).
Appellant further contends the combination of “Castillo and Boeshart
[fails to] disclose a non-threaded attachment mechanism that operatively
connects the cover to the drain body.” App. Br. 14. Appellant argues “the
top portion of the casing 20 in Castillo (construed as the ‘cover’ by the
Office) only connects to a strainer or grate portion of a floor drain and not a
drain body as defined in the present application.” App. Br. 15. The
Examiner responds, explaining the claim does not require a specific
configuration of attachments, only “that the cover is attached to the body
(6b) or that all components are attached together.” Ans. 7.
We agree with the Examiner. Limitations not explicit or inherent in
the language of a claim cannot be imported from the specification. See E-
Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003).
Although the claims are interpreted in light of the specification, limitations
from the specification are not read into the claims. See In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993). Claim 1 requires that the cover includes a
non-threaded attachment mechanism for operatively connecting the cover to
the drain body but does not specify that the cover be in intimate contact with
a particular part of the drain body or directly attaches to the drain body with
no intervening structures. Thus, by connecting to the strainer or grate which
is, in turn, connected to the drain body, the cover is also connected to the
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drain body. Furthermore, claim 1 does not distinguish between a drain body
and a strainer or grate portion to which Appellant admits Castillo’s cover
connects. App. Br. 15. Although Appellant directs attention to the
description of the related art in arguing a drain body is separate from a drain
head including a grate or strainer (App. Br. 15 (citing Spec. 13)), claim 1
does not include such a distinction and we decline to import such a
requirement from the Specification into the claim. E-Pass Techs, 343 F.3d
at 1369. We further note claim 2 requires the cover be removably connected
to an adjustable member which, in turn, is connected to the drain body, i.e.,
not directly to the drain body. Thus, Appellant’s argument is seemingly at
odds with the requirements of claim 2, which supports a broader
interpretation of the connecting limitation.
For the reasons discussed supra, we are not persuaded of Examiner
error. Accordingly, we sustain the rejection of independent claim 1 and, for
similar reasons, the rejection of independent claims 8 and 14 under 35
U.S.C. § 103(a) over Castillo and Boeshart.
B) Dependent Claims 2-4, 7, 9, 10, 13, 15—17, 20, 21, 23, and 25
i) Claims 2 and 15
Appellant contends “[ajlthough Castillo discloses extended edges 32
that securely snap around the rim 14 of the fixture, the Examiner fails to
show that the fixture is ‘an adjustable member adjustably connected to the
drain body’ [as required by claim 2].” App. Br. 18. The Examiner
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responds, finding “the top of Castillo is adjustable [vertically] as recited in
Castillo (paragraph 11, Detailed Description).” Ans. 7.
We are not persuaded of Examiner error. To the extent Appellant’s
argument is based on differences in nomenclature, such as what structure is
designated or labeled as a drain body versus an adjustable member, the
argument is based on a distinction without a difference, i.e., a logical fallacy.
In particular, in the absence of a structural difference, whether the adjustable
member is characterized as one component of a group of parts referenced or
labeled as the drain body or otherwise, i.e., an independently labeled
component connected to the drain body, such differences in labeling fail to
structurally distinguish claim 2 over Castillo. Instead, we agree with the
Examiner in finding Castillo teaches or suggests the disputed limitation.
Accordingly, we sustain the rejection of claim 2 and, for the same reasons,
the rejection of claim 15 under 35 U.S.C. § 103(a).
ii) Claim 3
Appellant contends the Examiner’s application of Castillo’s flared
neck portion for disclosing the claim’s adjustable member as a shank is not
understood. As a consequence, Appellant alleges Castillo fails to disclose
the limitations of claim 3 and “the proffered reasoning for the combination
of references is insufficient.” App. Br. 19. The Examiner responds, finding
“[regarding] claim 3, the lower portion [of Castillo’s flared necked portion]
has a shank, or neck.” Ans. 7. We agree with the Examiner. In particular,
the structure labeled by the Examiner as the “Adjustable member” in Figure
6C of Castillo (Ans. 4), is depicted as having the disputed shank, i.e., “a
stem, stalk or similar part.” Shank, Merriam-Webster’s Third New Int’l
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Dictionary of the English Language 1190 (2002). Accordingly, we
sustain the rejection of claim 3 under 35 U.S.C. § 103(a).
iii) Claims 4 and 17
Appellant contends Castillo’s extended edge 32 of flanges 30 extend
from the interior sidewall, not on or depending from the bottom of the cover.
App. Br. 19 (citing Castillo’s Fig. 5B). We find this argument unpersuasive
because the Examiner relies on the removable top portion shown in
Castillo’s Figure 6C for disclosing the disputed cover. Ans. 5. Thus, as
depicted in Figure 6C, extended edge 32 is located at the bottom of the
removable top portion or lid. Accordingly, we sustain the rejection of
claims 4 and 17 under 35 U.S.C. § 103(a).
iv) Claims 7, 13, and 20
Appellant contends the Examiner’s application of the Castillo
reference fails to teach or suggest the two perimetrical sidewalls having
different diameters that define at least two perimetrical surfaces of the cover
and at least one layer of the release material applied to each of the surfaces
as required by claims 7, 13, and 20. App. Br. 19-20. In particular, the
Examiner finds Castillo’s bottom hooked perimeter and interior perimeter
teach or suggest the disputed sidewalls having different diameters. Final
Act. 4. The Examiner further finds “[t]he addition of the release material to
all sides would have been obvious since concrete flows.” Id. However, as
argued by Appellant, although the internal hooked perimeter may have a
different diameter than the upper internal diameter of the lid, the surfaces on
which release material is applied, i.e., the outer surface, has a single,
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constant diameter. Thus, we agree with Appellant that Castillo fails to teach
or suggest the limitations of claims 7, 13, and 20 and, therefore, we do not
sustain the rejection of these claims under 35 U.S.C. § 103(a).
v) Claim 9
Appellant’s argument in connection with claim 9 repeats argument
presented in connection with claim 1 and is unpersuasive for the same
reasons. See App. Br. 20. Accordingly, we sustain the rejection of claim 9
under 35 U.S.C. § 103(a).
vi) Claim 10
Appellant’s argument in connection with the rejection of claim 10 is
repetitious of that found unpersuasive in connection with the rejection of
claims 4 and 17. App. Br. 21. Accordingly we sustain the rejection of claim
10 under 35 U.S.C. § 103(a).
vii) Claim 16
Appellant argues, rather than adjusting a height of the cover such that
it is positioned level flush with an intended height of the finished floor,
Castillo discloses adjusting the cover below the intended height of a finished
floor. App. Br. 22. According to Appellant
a plumber would first have to adjust the height of the strainer of
Castillo below the intended height of the finished floor to
compensate for the height of the top portion of the casing 20, and
then later re-adjust the strainer to be flush with the finished floor
after detaching the top portion of the casing 20 at the second
perforation line 50.
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App. Br. 22. The Examiner finds “the height of [Castillo’s] cover is
inherently adjustable. Doing so would have been an obvious design choice
regarding the intended purpose and specification of the concrete level.”
Ans. 5. We agree with the Examiner. As depicted in Castillo’s Figure 6C,
the top portion of the plastic casing is substantially level or flush with the
level of the poured concrete, i.e., with the intended height of the finished
floor surface as required by claim 16. Accordingly, we sustain the rejection
of claim 16 under 35 U.S.C. § 103(a).
viii) Claims 21, 23, and 25
Appellant contends “Boeshart is unclear on whether [the word]
‘foam’ [of Boeshart’s ‘foam release agent’] is describing the characteristic
of the release agent or whether it is referring to the foam form being
released. Thus, the claim element ‘foam material’ [of claim 21] has not been
disclosed or taught by Boeshart.'” App. Br. 23. We find the contention
unpersuasive of error. In particular, Boeshart discloses “a coating of a foam
[40] release agent is sprayed over the top faces of the upper-most top hat 18
(in the version shown in FIG. 5) and within slots 230 and 236. This coating
is a material which resists adherence of the hardened concrete with the form
panel.” App. Br. 22—23 (quoting Boeshart, 5:39-44). There is no disclosure
the panel is made of “foam” or, as asserted by Appellant, “Styrofoam” (App.
Br. 23). Thus, Appellant fails to provide sufficient evidence the disclosed
“foam 40 release agent” would not suggest to one skilled in the art that the
release material is a foam material rather than merely for use with a form
panel made offoam.
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Appellant further argues Boeshart fails to disclose the release material
is self-adhesive, disputing the Examiner’s finding that Boeshart’s sprayed
release agent is inherently adhesive. App. Br. 23. Appellant’s argument is
unpersuasive. As explained by the Examiner, Boeshart discloses spraying a
foam release agent on the portions of the form panel and such a sprayed
coating is inherently adhesive. Final Act. 3. Because such a sprayed coating
at least suggests a coating that adheres to the substrate on which it is sprayed
(so as not to run off before the concrete is poured, for example), we find
Appellant’s argument unpersuasive. Accordingly, we affirm the rejection of
claims 21, 23, and 25 under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner’s decision to provisionally reject claims 1—4,
7—10, 13—17, and 20 on the ground of nonstatutory double patenting.
We reverse the Examiner’s decision to reject claims 7, 13, and 20
under 35 U.S.C. § 103(a).
We affirm the Examiner’s decision to reject claims 1—4, 8—10, 14—17,
21, 23, and 25 under 35 U.S.C. § 103(a).
Because we affirm at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner’s decision rejecting
claims 1^1, 7-10, 13-17, 20, 21, 23, and 25. See 37 C.F.R. § 41.50(a)(1)
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED
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