Ex Parte Schuster et al

Patent Trial and Appeal Board

May 8, 2013

11050317 (P.T.A.B. May. 8, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL J. SCHUSTER and MICHAEL J. D’AURELIO
____________

Appeal 2011-002547
Application 11/050,317
Technology Center 3700
____________

Before GAY ANN SPAHN, BENJAMIN D.M. WOOD, and
ADAM V. FLOYD, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Michael J. Schuster and Michael J. D’Aurelio (Appellants) seek our
review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 18-51
under 35 U.S.C. § 103(a) as unpatentable over Patterson (US 7,047,574 B2,
issued May 23, 2006) and Tsutsui (US 5,133,089, issued Jul. 28, 1992).
Appellants cancelled claims 1-17. We have jurisdiction under 35 U.S.C.
§ 6(b).
Appeal 2011-002547
Application 11/050,317

2
We REVERSE.

CLAIMED SUBJECT MATTER
The claimed subject matter relates to control of toilet bowl fill flow in
order to prevent waste of water. Spec. 1, Title and para. [0001]. Claims 18
and 35 are the independent claims on appeal. Claim 18, reproduced below,
with emphasis added, is illustrative of the appealed subject matter.
18. A toilet water flow control system,
comprising:
a bowl fill valve having an inlet to receive
water from a bowl fill outlet of a fill valve in a
toilet tank, and the bowl fill valve having an outlet;
and
a control circuit operatively coupled to the
bowl fill valve, the control circuit being
configured to open the bowl fill valve for a
predefined period of time during a flush cycle of a
toilet to fill a toilet bowl of the toilet with water,
wherein the predefined period of time is less than a
total time of the flush cycle.

Independent claim 35 is directed to a toilet water flow control system
including, inter alia, “control logic store in the memory and executable by
the processor, the control logic further comprising logic that opens the bowl
fill valve for a predetermined period of time during a flush cycle of a toilet
to fill a toilet bowl of the toilet with water, wherein the predefined period of
time is less than a total time of the flush cycle.”

OPINION
With respect to independent claims 18 and 35, the Examiner finds that
Patterson discloses a toilet water flow control system including, inter alia, “a
Appeal 2011-002547
Application 11/050,317

3
fill or inlet valve (Fig. 5) having an inlet and an outlet, and a control circuit
(Fig. 5) operatively coupled to the inlet valve, wherein the control circuit
being configured to open the inlet valve for a predefined period of time
during a flush cycle to fill the bowl.” Ans. 3 and 6. The Examiner
acknowledges that “Patterson does not specifically disclose that the
predefined period of time is less than a total time of the flush cycle,” but
concludes that it would have been obvious to one of ordinary skill in the art
to “modif[y] . . . Patterson’s control circuit by employing a predefined
period of time less than a total time of the flush cycle,” since “[s]uch
modification would be considered a mere choice of a preferred filling time
on the basis of its suitability for the intended use, especially since Patterson
also discloses that the desired filling time is varied for different flushes.”
Ans. 3-4.
Appellants state that claims 18 and 35 are similar in scope so that
“arguments . . . presented . . . with reference to claim 18 are applicable to
claim 35.” App. Br. 6. Thus, with respect to both claims 18 and 35,
Appellants first argue that the claims specify a bowl fill valve with an inlet
to receive water from a bowl fill outlet of a toilet tank fill valve, whereas
Patterson discloses only a single “inlet valve 104/304” through which water
is directly supplied to the bowl. App. Br. 7. Appellants also argue that
“upon reading Patterson, one skilled in the art would not think to modify a
control circuit as suggested” by the Examiner, because “reducing the time
the inlet valve is open actually reduces the length of the cycle.” App. Br. 8.
Appellants explain that in Patterson, “the ‘inlet valve 104/304’ remains open
for the entire flush cycle,” and “[i]f it did not do so, then there would be not
water to implement the flush of the toilet itself.” Id. Appellants also argue
Appeal 2011-002547
Application 11/050,317

4
that “[t]o the extent . . . Patterson appears to teach varying the time the inlet
valve 104/304 is open allegedly for the purpose of varying the liquid level in
the toilet bowl, then Patterson shows or suggests varying the length of the
entire flush cycle,” and “[c]onsequently, Patterson fails to show or suggest
opening a bowl fill valve for a period of time that is less than the total time
of the flush cycle.” Id.
The Examiner responds that Patterson’s toilet system 300 depicted in
figure 3 contains an inlet valve 104 and a bowl fill valve 304 configured to
receive water from a bowl fill outlet of a fill valve 104. Ans. 6 (citing
Patterson, col. 3, ll. 12-15). The Examiner further responds that “[w]ith
respect to [Appellants’] argument against the limitation of ‘the predefined
period of time is less th[a]n a total time of the flush cycle,’ the position was
taken as mere design choice,” and “Patterson is varying the refill volume
into the toilet bowl to prevent formation of chemical ring by utilizing a flow
rate sensor and the amount of volume being flush[ed] via a separate valve
316.” Id. The Examiner states that in Patterson, “the refill volumes are
within the range of 0.7 gallons and 1.3 gallons” and “[i]t is commonly
known that a water saving toilet tank hold[s] a water volume of
approximately 1.4 gallons and above for flushing a toilet.” Ans. 6-7. Thus,
the Examiner suggests that “it is within reason to arrive []at the refill
volumes [being] less th[a]n the flush volume.” Ans. 7. The Examiner finds
that Patterson “discloses the formula of time in relation to volume and flow
rate” and “[i]t is within the skill of one having ordinary skill in the art . . . to
arrive at the preferred period of time that is less th[a]n a total time of the
flush cycle since the time, flow rate, and volume variable can be derived
from a standard equation.” Id (citing Patterson, col. 7, ll. 35-63).
Appeal 2011-002547
Application 11/050,317

5
Appellants reply they disagree “that ‘the predefined period of time is
less than a total time of the flush cycle’ is ‘mere design choice.’” Reply Br.
4.
We are persuaded by Appellants’ argument that the Examiner’s use of
design choice is inappropriate here. Design choice only applies when old
elements in the prior art perform the same function as the now claimed
structures. See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (use of claimed
feature solves no stated problem and presents no unexpected result and
“would be an obvious matter of design choice within the skill of the art”). In
the present case, the claimed structure is a control circuit (e.g., processor
203, memory 206, and local interface 209 of automated bowl fill system 140
shown in figure 3) configured to open the bowl fill valve for a
predetermined time less than a total time of the flush cycle. The claimed
control circuit performs differently from the Patterson prior art in which a
liquid volume control logic 210, liquid volume control element 108, and
flow rate sensor 202 function “to automatically vary, for different flushes,
the refill volume of liquid that flows into the liquid receptacle 106 thereby
varying the amount of liquid that remains in the receptacle between flushes.”
Patterson, col. 3, ll. 33-37. Although the amount of liquid is varied from
flush to flush, there is no evidence that Patterson discloses a separate bowl
fill valve, much less “to open the bowl fill valve for a predefined period of
time during a flush cycle of a toilet to fill a toilet bowl of the toilet with
water, wherein the predefined period of time is less than a total time of the
flush cycle,” as recited in claim 18 and similar language in claim 35. Thus,
a finding of obvious design choice is precluded. See In re Gal, 980 F.2d
717, 719 (Fed. Cir. 1992) (finding of obvious design choice precluded when
Appeal 2011-002547
Application 11/050,317

6
claimed structure and the function it performs are different from the prior
art).
Although the Examiner points to Patterson’ “first inlet valve 304,”
“fill valve 104,” and “separate valve 316” (see Ans. 6 (citing Patterson, col.
6, ll. 5-14)) as prior art structure that would allow for the function of a bowl
fill valve to be opened for a predetermined time less than a total time of the
flush cycle, Patterson’s inlet valve 104 of the embodiment of toilet system
100 shown in Figure 1 does not work together with Patterson’s inlet valve
304 of the embodiment of toilet system 300 shown in Figure 3. In other
words, the Examiner’s reliance on Patterson’s mention of “inlet valve 104,”
at column 6, line 11, is misplaced, because this is a typographical error that
should read “inlet valve 304.”1 Thus, Patterson has no structure that would
satisfy the claim language of “a control circuit . . . configured to open the
bowl fill valve for a predefined period of time . . . less than a total time of
the flush cycle.” It would not have been a matter of obvious design choice
to one of ordinary skill in the art to modify Patterson “to arrive at the
predefined period of time that is less th[a]n a total time of the flush cycle” as
suggested by the Examiner.
Accordingly, we do not sustain the Examiner’s rejection of
independent claims 18 and 35, and claims 18-34 and 36-51 dependent
thereon, under 35 U.S.C. § 103(a) as unpatentable over Patterson and
Tsutsui.

1 That “inlet valve 104” should read “inlet valve 304” is clear from figure 3,
which depicts valve 304, but not valve 104. Neither figure 3 nor any other
figure in Patterson depicts an embodiment containing both valves 104 and
304.
Appeal 2011-002547
Application 11/050,317

7
DECISION
We reverse the Examiner’s decision to reject claims 18-51.

REVERSED

Klh