Ex Parte QIAN et alDownload PDFPatent Trial and Appeal BoardMar 27, 201813779026 (P.T.A.B. Mar. 27, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 131779,026 02/27/2013 56352 7590 GLOBAL IP SERVICES 7285 Eagle Court Winton, CA 95388 03/27/2018 FIRST NAMED INVENTOR DA VY ZIDE QIAN 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. DAQ-109 7507 EXAMINER CRANE, LAUREN ASHLEY ART UNIT PAPER NUMBER 3754 MAILDATE DELIVERY MODE 03/27/2018 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 DA VY ZIDE QIAN, BENYU QIAN, and LEQUN LU Appeal2017-003601 Application 13/779,026 Technology Center 3700 Before EDWARD A. BROWN, ARTHUR M. PESLAK, and SEAN P. O'HANLON, Administrative Patent Judges. PESLAK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Davy Zide Qian et al. ("Appellants") appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-11. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. Appeal2017-003601 Application 13/779,026 THE CLAIMED SUBJECT MATTER Claim 1, the only independent claim, is reproduced below. 1. A portable water and energy saving bathtub comprising: a body, it is defined by a first and a second side walls, a first and a second end walls as well as a bottom to become an opened container without a water discharge hole, a step on the bottom is located beside the second end wall; a flashboard gate, which is the first end wall, includes a groove on inner faces of the container, a flashboard capable of moving is inserted into the groove, a water seal ring is set between the groove and the flashboard, when the flashboard gate is closed the container holds water without, when the flashboard is opened water is discharged; a reducing-volume-chunk for raising water level in the bathtub, liking a cube, a width of the cube is little smaller than the same of the container, a height of the cube is smaller than a distance between legs of a bath person sitting on the step and a top of the container; the reducing-volume-chunk has two hanging arms extending to outside of the cube, each hanging arm has a groove, the grooves sit on the first and second side walls of the container, therefore, the reducing-volume-chunk is hanged in the container; a locking-releasing-device for the reducing-volume-chunk, which can lock the reducing-volume-chunk together with the container or release the lock to separate the reducing-volume- chunk from the container. REJECTIONS 1) Claims 1-11 1 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. 2) Claims 1-11 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. 1 The heading for this rejection lists claims 1-14. Final Act. 2. However, claims 12-14 are cancelled. Appeal Br. 24 (Claims App.). 2 Appeal2017-003601 Application 13/779,026 3) Claims 1-9 and 11 are rejected under 35 U.S.C. § 103(a) as unpatentable over Johansson (US 4,112,524, issued Sept. 12, 1978), Bailey (US 906,992, issued Dec. 15, 1908), and Gourlay (US 77 ,480, issued May 5, 1868). 4) Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable over Johansson, Bailey, Gourlay, and Lofquist (US 6,381,769 Bl, issued May 7, 2002). DISCUSSION Rejection 1 The Examiner finds that the limitation in claim 1 of a "container without a water discharge hole" is not described in the originally filed Specification and determines that the subject matter of the claims is "not described in the specification in such a way as to enable one skilled in the art ... to make and/or use the invention." Final Act. 2. "The test of enablement is whether one reasonably skilled in the art could make or use the invention from the disclosure in the patent coupled with information known in the art without undue experimentation." United States vs. Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988). When rejecting a claim under 35 U.S.C. § 112 for lack of enablement, the Examiner bears an initial burden of setting forth a reasonable explanation as to why the scope of protection provided by the claim is not adequately enabled by the description of the invention provided in the specification of the application. See In re Wright, 999 F.2d 1557, 1561---62 (Fed. Cir. 1993). We appreciate the Examiner's finding that the limitation "container without a water discharge hole" is not described verbatim in the Specification. 3 Appeal2017-003601 Application 13/779,026 Appellants' drawings, however, do not appear to show a water discharge hole in the body of the device, which supports Appellants' position. Reply Br. 6. In any event, we determine that the Examiner has not stated an adequate explanation as to why one of ordinary skill in the art would have been unable to make or use a portable water and energy saving bathtub that does not include "a water discharge hole" without undue experimentation. We, thus, do not sustain the rejection of claims 1-11under35 U.S.C. § 112, first paragraph. Rejection 2 The Examiner rejects claims 1-11 due to the use of the word "little" in claims 1, 5, and 6 because, according to the Examiner, the term is relative and renders the claims indefinite. Final Act. 3--4. Appellants do not dispute, but accept, the "Examiner's ... rejection and will delete" the term "little" from the claims. Appeal Br. 10. Therefore, we summarily sustain the rejection of claim 1 and claims 2-11, which depend directly or indirectly from claim 1, as being indefinite under 35 U.S.C. § 112, second paragraph. Although we sustain the rejection of claims 1-11 as being indefinite, the indefiniteness does not impact our consideration of the rejections under 35 U.S.C. § 103. Rejection 3 The Examiner finds that Johansson discloses many of the limitations of claim 1 including a "flashboard gate (10), which is the first end wall, includes a groove (9) on inner faces of the container" and "[a] water seal ring is set or formed between the groove and the flashboard" but, "fails to show a reducing-volume-chunk." Final Act. 4--5. The Examiner finds that Bailey "teaches a reducing volume chuck[ sic] (10)" as recited in claim 1. Id. 4 Appeal2017-003601 Application 13/779,026 at 5. The Examiner additionally finds that Bailey discloses "[a] locking- releasing device (4) for the reducing-volume-chunk which can lock the reducing-volume-chunk together with the container or release, when the chunk is vertical." Id. at 5-6. The Examiner finds that Gourlay "teaches a portable bath house ... includ[ing] a[n] opened container (C) without a water discharge hole." Id. at 6. The Examiner concludes that it would have been obvious to one of ordinary skill in the art "to have included a bath house without a drain in order to prevent leaks." Id. The Examiner further concludes that "[t]he combination yields the groove located in the sidewalls, is wider than the hanging arm of the locking-releasing-device. The hanging arm is easily put in the groove to fix a correct position of the locking- releasing-device." Id. Appellants contend that Johansson does not disclose "a water seal ring is set between the groove and the flashboard" as recited in claim 1. Appeal Br. 13. Appellants also contend that Bailey does not disclose the recited "locking-releasing-device," because Bailey's "plate 9 and basin 10 can be freely turned to the position shown by the dotted lines in Fig. 1 without releasing lock." Id. at 14 (citing Bailey 11. 26-48). Appellants argue "[i]f the basin 10 meets water, the basin will be floated up." Id. at 15. The Examiner responds that "Johansson teaches a water seal ring is set or formed between the groove and the flashboard." Ans. 8. The Examiner maintains that "Bailey teaches a locking-releasing-device (4) that secured the basin to the bathtub. The locking device locks or secured the basin to the bathtub." Id. (citing Bailey 1:25-50). For the following reasons, we do not sustain the rejection of claim 1. 5 Appeal2017-003601 Application 13/779,026 Johansson discloses "shower-bath tub 1 ... and the front wall 6 has guideways 9 enabling a door 10 to be withdrawn and removed." Johansson, 1:50-57, Fig. 1. The Examiner does not direct us to any disclosure in Johansson of a water seal ring between guideways 9 and door 10. Final Act. 5; Ans. 8. Consequently, the Examiner's finding that Johansson discloses "a water seal ring [is] set between the groove and the flashboard," as required by claim 1, is not supported by a preponderance of the evidence. Bailey discloses "wash basins of the type adapted to be movably mounted adjacent an ordinary bath-tub ... and capable of being folded back against the wall when not in use." Bailey p. 1, 11. 8-14, Fig. 1. Bailey discloses that element 4, which the Examiner finds corresponds to the recited "locking-releasing-device," engages "the under edge of' the back rim 1 of the tub 2. Id. at p. 1, 11. 33-34. As shown in Figures 1and3 of Bailey, basin 10, which is secured to plate 9, rotates about point 5 to an upright position when not in use. Id. at Figs. 1, 3. Element 4 also moves from a first position shown in Figure 1 to a second position shown in Figure 3 when the basin is rotated. Id. We initially note that the Examiner does not provide a reason (i.e., rationale) why one of ordinary skill in the art would modify Johansson's device with Bailey's teaching of a reducing volume chunk. See Final Act. 5. Further, the Examiner has not adequately explained how Bailey's element 4 "can lock the reducing-volume-chunk together with the container or release the lock to separate the reducing volume chunk from the container" as required by claim 1. Bailey's element 4 is disclosed as moving between two different positions when basin 10 is rotated from the first position to the upright position and, thus, is part of a mechanism that allows basin 10 to 6 Appeal2017-003601 Application 13/779,026 rotate. It appears that locking would need to occur at the side of tub 2 opposite to element 4 near element 12 to provide locking, as asserted by the Examiner. See Bailey, Fig. 1. Therefore, the Examiner's finding that Bailey's element 4 corresponds to the recited "locking-releasing device" is not supported by a 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."). We, thus, do not sustain the rejection of claim 1. Claims 2- 9 and 11 depend directly or indirectly from claim 1. Appeal Br. 22-24 (Claims App.). We, thus, do not sustain the rejection of claims 2-9 and 11 for the same reasons. Rejection 2 Claim 10 depends from claim 1. Appeal Br. 24 (Claims App.). The Examiner rejects claim 10 based on the combination of Johansson, Bailey, and Gourlay with additional disclosure from Lofquist. Final Act. 6-7. The Examiner does not rely on Lofquist to cure the deficiencies in the combination of Johansson, Bailey, and Gourlay stated above. Id. We, thus, do not sustain the rejection of claim 10 for the same reasons stated above for claim 1. DECISION The Examiner's decision rejecting claims 1-11 under 35 U.S.C. § 112, first paragraph is reversed. The Examiner's decision rejecting claims 1-11 under 35 U.S.C. 7 Appeal2017-003601 Application 13/779,026 § 112, second paragraph is affirmed. The Examiner's decision rejecting claims 1-11 under 35 U.S.C. § 103(a) is reversed. 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)(l )(iv). AFFIRMED 8 Copy with citationCopy as parenthetical citation