Ex Parte Majocka et alDownload PDFPatent Trial and Appeal BoardSep 27, 201714252356 (P.T.A.B. Sep. 27, 2017) Copy Citation 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 Claims 22, 24, and 26 are withdrawn.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 2 Appeal 2017-004716 Application 14/252,356 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. 3 Appeal 2017-004716 Application 14/252,356 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 4 Appeal 2017-004716 Application 14/252,356 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. 5 Appeal 2017-004716 Application 14/252,356 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 6 Appeal 2017-004716 Application 14/252,356 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)). 7 Appeal 2017-004716 Application 14/252,356 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 8 Appeal 2017-004716 Application 14/252,356 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 9 Appeal 2017-004716 Application 14/252,356 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 10 Appeal 2017-004716 Application 14/252,356 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 11 Appeal 2017-004716 Application 14/252,356 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, 12 Appeal 2017-004716 Application 14/252,356 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. 13 Appeal 2017-004716 Application 14/252,356 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. 14 Appeal 2017-004716 Application 14/252,356 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 15 Copy with citationCopy as parenthetical citation