Ex Parte Morgan et al

Patent Trial and Appeal BoardMar 18, 2015

11746214 (P.T.A.B. Mar. 18, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TERRA J. MORGAN, DOUGLAS A. SOLLER, ANTHONY R. KEVEK, BRAD P. BARANOWSKI, CHRISTOPHER R. SHERIDAN, JOHN C. TAYLOR, MARC B. FROSCH, and EVAN A. SPARKS ____________ Appeal 2013-003433 Application 11/746,214 1 Technology Center 3700 ____________ Before JOSEPH A. FISCHETTI, MICHAEL C. ASTORINO, and ROBERT L. KINDER, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL 1 According to the Appellants, “[t]he real party in interest . . . is SC Johnson and Son, Inc.” Appeal Br. 3. Appeal 2013-003433 Application 11/746,214 2 STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1, 4–7, 10, 17, 19, and 21. 2 Claims 2, 3, 8, 9, 11– 16, 18, 20, and 22–24 have been cancelled. Appeal Br. 5. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We affirm. Claimed Subject Matter Claims 1 and 17 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A drain clog remover for removing a clog from a drain pipe, the apparatus comprising: a container having an outlet and defining a reservoir adapted to receive a drain cleaning composition to chemically act directly on the clog; an elongate shaft coupled to the container and having a proximal end and a distal tip, the shaft having an exterior surface sized for insertion into the drain pipe; a delivery passage extending through the shaft and having an inlet formed at the shaft proximal end in fluid communication with the container outlet; and barbs extending outwardly from the shaft exterior surface configured to mechanically act directly on the clog by gripping fibrous material. 2 The Appellants indicate that pending claims 1, 4–7, 10, 17, 19, and 21 are the rejected claims on appeal. Appeal Br. 5. Similarly, an Advisory Action, mailed May 10, 2012, in the “STATUS OF CLAIMS” section, recites that claims 1, 4–7, 10, 17–19, and 21 are rejected. Additionally, the Final Office Action, mailed January 20, 2012, includes form PTOL-326, which indicates that claim 18 is not a pending claim or a rejected claim. Appeal 2013-003433 Application 11/746,214 3 Rejections I. Claims 1, 6, and 10 are rejected under 35 U.S.C. § 103(a) as unpatentable over Ahern (US 2,283,780, iss. May 19, 1942) and Luoma (WO 02/48471 A1, pub. June 20, 2002). II. Claims 4 and 7 are rejected under 35 U.S.C. § 103(a) as unpatentable over Ahern, Luoma, and Scheindel (US 5,785,301, iss. July 28, 1998). III. Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over Ahern, Luoma, Scheindel, and Harbeck (DE 19726583 A1, iss. Dec. 24, 1998). IV. Claims 17, 19, and 21 are rejected under 35 U.S.C. § 103(a) as unpatentable over Ahern, Luoma, and Scheindel. ANALYSIS Rejections I–III The Appellants contend that the combined teachings of Ahern and Luoma, as proffered by the Examiner, does not render the subject matter of claim 1 obvious “because there is insufficient rationale on the record to combine the cited references as required in post-KSR obviousness rejections.” Appeal Br. 10. The Appellants contend that Ahern and Luoma lacks any suggestion to combine and teach away. Appeal Br. 10. The Appellants also contend that the combination of Ahern and Luoma employs impermissible hindsight reasoning. Appeal Br. 10. The Appellants’ contentions are based primarily on a premise that Ahern and Luoma provide mutually exclusive approaches to attacking a clog. Appeal Br. 12–15. With regard to Ahern’s device, the Appellants Appeal 2013-003433 Application 11/746,214 4 suggest that Ahern’s device does not mechanically attack a clog. Appeal Br. 12–14. Rather, the Appellants admit, “Ahern discloses [a] chemical drain clog remover.” Appeal Br. 12 (citing Ahern, Fig. 1). As such, the Appellants acknowledge that Ahern’s device chemically attacks a clog. With regard to Luoma’s device, the Appellants suggest that Luoma’s device does not chemically attack a clog. Appeal Br. 13. Rather, the Appellants suggest that Luoma’s device, particularly, Luoma’s barbed portions 20 along elongate flexible strip 12, mechanically attacks a clog. See Appeal Br. 13– 14. The Appellants’ contentions are not persuasive because the Appellants’ premise that Ahern and Luoma provide mutually exclusive approaches to attacking a clog is unsound. Rather, the devices of Ahern and Luoma both can be used to mechanically attack a clog. As discussed previously, Luoma’s device mechanically attack clogs. As for Ahern’s device, the Examiner finds that Ahern’s device can be used to mechanically attack a clog in numerous ways. Ans. 4. First, the Examiner finds that Ahern’s projections 4, 9, and 11 can be used to mechanically attack a clog. Ans. 4. In response, the Appellants make a distinction between projections 4, 9, and 11 and the claimed “barbs.” Reply Br. 2. However, whether or not a projection is a barb does not address the Examiner’s finding that Ahern’s projections 4, 9, and 11 can be used to mechanically attack a clog. Second, the Examiner finds that squeezing Ahern’s “bulb[, i.e., rubber bulb 2,] can be considered a mechanical action.” See Ans. 4. In response, the Appellants’ acknowledge that the Examiner’s finding that “squeezing [a] bulb can be considered a Appeal 2013-003433 Application 11/746,214 5 mechanical action” “may be true.” 3 Reply Br. 3. Third, the Examiner also finds that the act of inserting Ahern’s flexible tube into a drain and contacting a clog is a mechanical attack on that clog. See Ans. 4. The foregoing findings from the Examiner are reasonable. Based on the foregoing, the Appellants’ premise that Ahern and Luoma offer mutually exclusive approaches to attacking a clog lacks adequate support. Accordingly, the Appellants’ contentions are not persuasive. Thus, the rejection of claim 1 as unpatentable over Ahern and Luoma is sustained. The Appellants do not provide further argument for the rejection of claims 6 and 10, which both depend directly from claim 1, under 35 U.S.C. § 103(a), as unpatentable over Ahern and Luoma. Thus, the rejection of claims 6 and 10 is sustained. The Appellants do not separately argue the rejections, under 35 U.S.C. § 103(a), of: claims 4 and 7 as unpatentable over Ahern, Luoma, and Scheindel; and, claim 5 as unpatentable over Ahern, Luoma, Scheindel, and Harbeck. Thus, these rejections are also sustained. Rejection IV The “Appellants respectfully submit that the method claimed in claim 17 . . . is non-obvious for at least the same reasons as indicated above with respect to claim 1.” Appeal Br. 15. However, for similar reasons as discussed above, the Appellants’ submission is not persuasive. 3 The Appellants’ acknowledgement is a statement that is used to attempt to distinguish Ahern’s device and disclosure from the subject matter of claim 17. See Reply Br. 3. Appeal 2013-003433 Application 11/746,214 6 The Appellants contend that the combined teachings of Ahern and Luoma would not render claim 17’s “integral drain clog removing device,” i.e., “a pre-filled container of drain cleaner mounted to a barbed shaft and method for using same.” See Appeal Br. 16. The Appellants assert that “Luoma has no chemical cleaner whatsoever” and Ahern “does not have a prefilled container of chemical composition to clear a clog, but rather is simply a compressible bulb which can be filled with water by a user, akin to a turkey baster, by squeezing same.” Appeal Br. 16. The Appellants also contend that claim 17 requires a specific type of mechanical action. See Reply Br. 3. More particularly, “applying a mechanical action directly to the clog by inserting an elongate shaft into the drain pipe until a distal tip of the shaft engages the clog” with “a plurality of barbs engaging fibrous material during the mechanical action.” Reply Br. 3. The Appellants’ contentions are not persuasive. In response, the Examiner explains that Ahern’s device, as modified, would form an integral drain clog removing device as required by the method of claim 17. See Ans. 5. We agree with the Examiner. Notably, the Examiner points out that claim 17 does not require a pre-filled container, but explains why the normal use of Ahern’s device would result in a bulb that is pre-filled. See Ans. 5. Again, we agree with the Examiner. Further, the Examiner determines that combined teachings of Ahern, Luoma, and Scheindel discloses the “instant invention,” but is “silent as to a method for removing a clog from a drain pipe” and that “the method would arrive from normal use of the apparatus of Ahern, [as modified by] Luoma and Scheindel and accordingly, fails to be patentably distinct.” Final Act. 4–5. The Examiner’s determination is reasonable and the Appellants do not Appeal 2013-003433 Application 11/746,214 7 provide persuasive evidence or technical reasoning contrary to the Examiner’s determination. Thus, the rejection of claim 17 as unpatentable over Ahern, Luoma, and Scheindel is sustained. The Appellants do not provide further argument for the rejection of claims 19 and 21, which both depend directly from claim 17, under 35 U.S.C. § 103(a), as unpatentable over Ahern, Luoma, and Scheindel. Thus, the rejection of claims 19 and 21 is sustained. DECISION We AFFIRM the rejections of claims 1, 4–7, 10, 17, 19, and 21. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED rvb