Ex Parte Winter et al

Patent Trial and Appeal Board

Aug 14, 2017

13507603 (P.T.A.B. Aug. 14, 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.
13/507,603 07/13/2012 Ken Winter WSAN1US 5131
7590
Mr. Ken Winter
% K. Winter Sanitation Inc.
2816 6TH Line
Innisfil, ON L9S 4S4
CANADA
EXAMINER
LE, HUYEN D
ART UNIT PAPER NUMBER
3754
MAIL DATE DELIVERY MODE
08/14/2017 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 KEN WINTER and ROGER WINTER
Appeal 2016-002333
Application 13/507,6031
Technology Center 3700
Before STEFAN STAICOVICI, EDWARD A. BROWN, and
SEAN P. O’HANLON, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Ken Winter and Roger Winter (Appellants) appeal under 35 U.S.C.
§ 134(a) from the Examiner’s final decision rejecting claims 1—4. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM-IN-PART.
1 According to Appellants, the inventors Ken Winter and Roger Winter are
the real parties in interest. Appeal Br. 1 (filed Mar. 17, 2015).
Appeal 2016-002333
Application 13/507,603
INVENTION
Appellants’ invention relates to “an improved roll-out toilet that can
pass through standard doors and contains a toilet, separate urinal and a sink.”
Spec. 1,11. 3^4.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A portable toilet comprising a front wall, a rear wall
opposite said front wall and a first side wall and a second side
wall forming a pair of opposed side walls interconnecting said
front and rear wall to define an enclosure, a toilet having a
holding tank adjacent to said rear wall, a sink adjacent to said
front wall, a urinal adjacent to said first side wall and an access
door through said second side wall to provide access to said
enclosure.
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 1 and 3 under 35 U.S.C. § 103(a)
as being unpatentable over Weiss (US 6,681,413 B2, issued
Jan. 27, 2004) and Maihart (US 4,238,858, issued Dec. 16,
1980).
II. The Examiner rejected claims 2 and 4 under 35 U.S.C. § 103(a)
as being unpatentable over Weiss, Maihart, and Pate (US
4,490,863, issued Jan. 1, 1985).
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Appeal 2016-002333
Application 13/507,603
ANALYSIS
Rejection I
The Examiner finds that Weiss discloses a portable toilet forming an
enclosure defined by front wall 22, pair of side walls 24, and rear wall
opposite front wall 22, and including a toilet having holding tank 36 and
urinal 41 adjacent to side wall 24. Final Act. 2 (mailed Dec. 31, 2014).
However, the Examiner finds that that “Weiss does not teach a sink adjacent
to the front wall [22] and an access door through the second side wall [24] to
provide access to the enclosure.” Id. Nonetheless, the Examiner further
finds that Maihart “teaches a portable toilet comprising a sink adjacent to the
front wall and an access door 8 through the second side wall to provide
access to the enclosure.” Id. Thus, the Examiner concludes that it would
have been obvious for a person of ordinary skill in the art
to provide the Weiss toilet with a sink in front of the toilet bowl
and an access door through the second side wall (on the side of
the toilet bowl) instead of on the front wall in view of the
teaching of Maihart in order for user to wash [his or her]
hand[s] after [using] the toilet and to provide access to the toilet
enclosure.
Id. The Examiner further determines it would have been obvious for a
person of ordinary skill in the art to “modify the Weiss toilet to include a
sink adjacent to the front wall and relocate the access door to the side wall as
taught by Maihart for convenience] purposes.” Id. at 4.
Claim 1
Appellants argue “that the selection of a specific layout from Maihart”
to modify the layout of Weiss’s portable toilet, as the Examiner proposes, is
based on impermissible hindsight. Appeal Br. 11. According to Appellants,
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Application 13/507,603
“the only teaching that changing the layout [of Weiss’s toilet] ... to permit
passage of the portable toilet as a unit [through] conventionally sized
doorways is found in the present invention.” Id. Appellants assert that
neither Weiss nor Maihart disclose a portable toilet that is sized such that it
can be moved through a building. See id. at 9-10. For example, Appellants
note that in Maihart, “once assemble[d] [the toilet] is not intended to be
moved from the location where it has been assembled.” Id. at 8.
We do not agree with Appellants’ arguments because limitations not
appearing in the claims cannot be relied upon for patentability. In re Self,
671 F.2d 1344, 1348 (CCPA 1982). Here, claim 1 does not require that the
claimed portable toiled is sized such that it can be moved to a location into a
building through conventional sized doorways. See Supp. Appeal Br. 2
(filed June 11, 2015).
The Examiner relies on Maihart for disclosing: (1) sink 11 located on
a front wall opposite toilet 12, and (2) for providing access door 8 on side
wall panel 9. See Maihart, Fig. 5. As such, in a first instance, the Examiner
has set forth an adequate reasoning with rational underpinning to provide
Maihart’s sink to Weiss’s toilet, namely, “in order for [a] user to wash [his
or her] hand[s] after [using] the toilet.” See Final Act. 2; In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006) (“[Rejections on obviousness grounds
[require] . . . 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)). Secondly, although we
appreciate that Weiss’s toilet already includes door 27 located on front wall
22, nonetheless, we note that moving the location of door 27 to side wall 24
(side wall opposite urinal 41) to allow Maihart’s sink to be located on
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Application 13/507,603
Weiss’s front wall 22 is simply rearranging elements without changing their
respective functions. “[W]hen a patent ‘simply arranges old elements with
each performing the same function it had been known to perform’ and yields
no more than one would expect from such an arrangement, the combination
is obvious.” KSR, 550 U.S. at 417 (quoting Sakraida v. AgPro, Inc., 425
U.S. 273,282 (1976)).
We agree with the Examiner that whether Weiss’s door 27 is located
on front wall 22 and the sink of Maihart is located on Weiss’s side wall 24 or
vice versa is a matter of convenience and does not change the manner in
which the portable toilet of Weiss, as modified by Maihart, functions. See
Final Act. 4. In either situation, a user will use the sink to clean his or her
hands and will use the door to gain access to the toilet of Weiss, as modified
by Maihart. Accordingly, the Examiner’s modification does not amount to
impermissible hindsight.
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103(a) of claim 1 as unpatentable over Weiss and
Maihart.
Claim 3
In contrast to claim 1, claim 3 adds the limitation that the width X of
the front and rear walls is “a width that can pass through conventional door
sizes.” See Supp. Appeal Br. 2.
The Examiner finds that “Maihart teaches a toilet having a length . . .
longer than a width,” and, thus, concludes that it would have been obvious
for a person of ordinary skill in the art “to modify the dimension of
Weissf’s] enclosure [to have] a length longer than the width in view of the
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Application 13/507,603
teaching of Maihart to allow a user to have more room between the toilet
bowl and the sink, wherein doing so would be an obvious design choice.”
Final Act. 3.
Appellants argue that Weiss does not disclose a portable toilet that
“can be easily moved as a unit through a normal sized door.” Appeal Br. 10.
Although we appreciate the Examiner’s position, nonetheless, we note
that the Examiner does not make sufficient findings regarding the width
dimension of Weiss’s toilet, as modified by Maihart, being such that it can
pass through conventional door sizes. Merely because the length of Weiss’s
toilet, as modified by Maihart, is longer than its width does not mean that the
“width . . . can pass through conventional door sizes,” as called for by
claim 3. Moreover, we note that because Weiss’s portable toilet is for use at
“construction sites . . . [and] outdoor events such as fairs, concerts and
sporting activities,” the Examiner’s finding that Weiss’s portable toilet 10 is
“easily moved through a constructed or partially constructed building” is not
supported by a preponderance of the evidence. See Ans. 4 (mailed Oct. 19,
2015); see also Weiss, col. 1,11. 13—14.
Accordingly, we do not sustain the rejection under 35 U.S.C. § 103(a)
of claim 3 as unpatentable over Weiss and Maihart.
Rejection II
Claims 2 and 4 add the limitation of a first drain line that extends from
the sink and drains into one side of the urinal adjacent to the sink and a
second drain line that extends from the other side of the urinal and drains
into the holding tank of the toilet. See Supp. Appeal Br. 2.
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Application 13/507,603
The Examiner finds that the combined teachings of Weiss and Maihart
do not disclose the above mentioned limitation, but that Pate discloses “a
urinal 52 having a first drain line 46 extending from a sink 44 into one side
of the urinal and a second drain line extending from the other side of the
urinal.” Final Act. 3; see also Pate, Fig. 4.
Appellants argue that the drain from sink 44 in Pate is not connected
to urinal 52, and, thus, does not drain into one side of the urinal, as called for
by claims 2 and 4. Appeal Br. 11.
In response, the Examiner takes the position that because “[cjlaim 2
does not recite that the second drain pipe [is] directly connected to the
urinal,” “Pate shows a drain line 46 extending from a sink 44 to ‘one side’ of
the urinal 52 and [a] second drain pipe 46 extending from the other side of
the urinal 52.” Ans. 5.
Although we appreciate that claim 2 does not require that the drain
pipe be connected directly to the urinal, nonetheless, claim 2 does require
that the drain line extends from a sink and drains into one side of a urinal. In
Pate, drain line 46 extends from sink 44 and drains into urinal adapter 48,
50, not into one side of urinal 52. See Pate, col. 4,11. 12—18, Fig. 4. We do
not agree with the Examiner’s interpretation of Pate’s urinal adapter 48, 50
as being part of urinal 52. Pate specifically discloses that “[e]ach urinal
adapter [48, 50] is designed to operatively connect and receive a lightweight
urinal [52]” and that collar portion 48 fits co-axially around drain line 46,
whereas upstanding receiver 50 communicates with down spout 54 of urinal
52. Pate, col. 4,11. 15—24. Pate further discloses that the use of adapter 48,
50 “enable[s] the respective urinals to be easily removed and cleaned.” Id.
at col. 4,11. 33—34. Hence, in light of Pate’s disclosure, like Appellants, we
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Application 13/507,603
find that a reasonable interpretation of Pate’s urinal adapter 48, 50 is that of
a “T” connector through which water drains from sink 44 and from urinal
52. Appeal Br. 12.
Accordingly, as Pate’s urinal adapter 48, 50 is not part of urinal 52,
Pate fails to disclose a drain line that extends from a sink and drains into one
side of a urinal, as called for by each of claims 2 and 4. Therefore, we do
not sustain the rejection under 35 U.S.C. § 103(a) of claims 2 and 4 as
unpatentable over Weiss, Maihart, and Pate.
SUMMARY
The Examiner’s decision to reject claims 1—4 under 35 U.S.C. § 103(a)
is affirmed as to claim 1, and reversed as to claims 2-4.
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).
AFFIRMED-IN-PART
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