RK INVENTIONS, LLC

Patent Trials and Appeals BoardApr 2, 2021

2020004722 (P.T.A.B. Apr. 2, 2021)

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. 15/852,319 12/22/2017 Ryan Kole 5202-005 1055 51500 7590 04/02/2021 PATZIK, FRANK & SAMOTNY LTD. 200 SOUTH WACKER DRIVE SUITE 2700 CHICAGO, IL 60606 EXAMINER MCCALISTER, WILLIAM M ART UNIT PAPER NUMBER 3753 NOTIFICATION DATE DELIVERY MODE 04/02/2021 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): ipdocket@pfs-law.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RYAN KOLE ____________ Appeal 2020-004722 Application 15/852,3191 Technology Center 3700 ____________ Before EDWARD A. BROWN, JILL D. HILL, and ERIC C. JESCHKE, Administrative Patent Judges. JESCHKE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant2 seeks review, under 35 U.S.C. § 134(a), of the Examiner’s decision, as set forth in the Final Office Action dated August 15, 2019 (“Final Act.”), and as further explained in the Advisory Action dated October 23, 2019 (“Adv. Act.”), rejecting claims 1, 2, and 5–7. Claims 3, 4, 8, and 9 have been withdrawn. We have jurisdiction under 35 U.S.C. § 6(b). 1 Appellant identifies Appeal No. 2016-000375, decided July 13, 2017, in U.S. Patent Application No. 13/130,613 as a related appeal. Appeal Br. 4. 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies RK Inventions, LLC and Ryan Kole as the real parties in interest. Appeal Br. 3. Appeal 2020-004722 Application 15/852,319 2 We affirm in part and enter a new ground of rejection based on the authority provided to the Board under 37 C.F.R. § 41.50(b). BACKGROUND The disclosed subject matter “relates, in general, [to] water faucets and, more particularly, to the handles associated with valves coupled to water faucets, for the activation and deactivation of the supply of water thereto.” Spec. 1:12–14.3 Claims 1 and 5 are independent. Claim 1 is reproduced below, with emphasis added: 1. A handle for attachment to a water valve, the handle comprising: a handle body having a longitudinal axis extending therethrough and a bottom region; a first lever operably coupled to the handle body on a first side of the longitudinal axis; and a second lever operably coupled to the handle body on a second, opposing side of the longitudinal axis; wherein at least a portion of at least one of the first lever and the second lever includes an associated indicator designating that the associated lever is to be used solely for one of activating and deactivating the water valve; and wherein the handle is one of substantially V-shaped, substantially L-shaped, and substantially Y-shaped. 3 Citations to the Specification refer to the clean version filed on April 20, 2018. Appeal 2020-004722 Application 15/852,319 3 REJECTIONS4 1. Claims 1 and 2 stand rejected under 35 U.S.C. § 102(a) as anticipated by Seltsam (US 3,207,472, issued Sept. 21, 1965). 2. Claims 5–7 stand rejected under 35 U.S.C. § 102(a) as anticipated by Clover (US 1,345,748, issued July 6, 1920). DISCUSSION Rejection 1 – The rejection of claims 1 and 2 as anticipated by Seltsam Independent claim 1 recites a “handle comprising” “a handle body . . . ,” “a first lever . . . ,” and “a second lever . . . ,” “wherein the handle is one of substantially V-shaped, substantially L-shaped, and substantially Y-shaped.” Claims App. 2.5 4 The Examiner rejected (1) claims 1 and 2 under 35 U.S.C. § 102(a) as anticipated by Wangelin (US D159,565, issued Aug. 1, 1950) and (2) claims 5–7 under 35 U.S.C. § 102(a) as anticipated by Rexach (US D717,920 S, issued Nov. 18, 2014). See Final Act. 4–9. The Examiner has withdrawn these rejections. See Adv. Act.; Ans. 3. 5 On January 30, 2020, Appellant filed a corrected Claims Appendix (“Claims App.”). Appeal 2020-004722 Application 15/852,319 4 In the Answer, the Examiner provides this annotated version of Figure 2 of Seltsam, which identifies the alleged “first lever” and “second lever”: Ans. 4. Figure 2 of Seltsam generally shows a front elevation view of a tubular diaphragm valve. See Seltsam, 4:9–13. With the annotations above, the Examiner identifies (1) on the left side, a “first lever,” a “connection at top of first level to horizontal part,” and a “bulge,” (2) on the right side, a “second lever,” a “connection at top of first level to horizontal part,” and a “bulge,” and (3) in the middle, a “horizontal part.” We understand the Examiner to identify the structures listed as (1) in the prior sentence collectively as the “first lever” and the structures listed as (2) collectively as the “second lever.” This understanding is supported by statements that “the first lever and the second lever as mapped to Seltsam are Appeal 2020-004722 Application 15/852,319 5 seen to include the structure at the upper left corner and upper right corner of Seltsam’s handle 93” and that “the top of the first lever includes a bulge to the left, and the top of the second lever includes a bulge to the right.” Ans. 3–4. As to the recited “handle body,” the Examiner provides two alternative positions: either arcuate cam portion 25 and flat portion 26 of handle 93 together6 or “the whole handle 93.” Final Act. 2. The Examiner does not expressly identify a “handle.” As to the requirement in the final clause of claim 1—that the “handle is one of substantially V-shaped, substantially L- shaped, and substantially Y-shaped”—the Examiner finds that the “handle” in the Figure 2 embodiment of Seltsam is “substantially V-shaped and substantially Y-shaped.” Final Act. 2. Appellant argues that the Figure 2 embodiment does not include a “handle” in any of the three shapes recited in the final clause. See Appeal Br. 13–15; Reply Br. 6–7. For the reasons below, we are persuaded by this argument as to both of the Examiner’s alternative positions. In the context of the Examiner’s first alternative position, the Examiner would include in the recited “handle” only (1) the “first lever” described above, (2) the “second lever” described above, and (3) as the “handle body,” arcuate cam portion 25 and flat portion 26 of handle 93 together. See Final Act. 2; Ans. 5 (stating that “all of the claimed elements (the handle body, first lever, and second lever), as mapped to Seltsam, 6 Seltsam uses reference numeral 25 for both a “compression spring” and the “arcuate cam portion” of handle 93. See Seltsam, 4:67–75. Given that “arcuate cam portion 25” of handle 93 and “flat 26” of handle 93 are discussed together (id at 4:73–75), we understand the Examiner’s use of “25, 26” (Final Act. 2) to indicate that “25” refers to the “arcuate cam portion” of handle 93 rather than the “compression spring.” We note that none of Figures 1–3 identifies arcuate cam portion 25 with its reference numeral. Appeal 2020-004722 Application 15/852,319 6 together form a handle that is disclosed by Seltsam to be ‘substantially V- shaped’ or ‘substantially Y-shaped’”). Importantly, the Examiner would not include as part of the “handle” the “horizontal part” identified in the annotated version of Figure 2 above. As argued by Appellant, and as explained below, on the facts here, excluding the “horizontal part” from the “handle” is improper. See Appeal Br. 14 (“[T]he Examiner is seeking to ‘cherry pick’ only a subset of the overall triangular handle of Seltsam, refer to that subset as being V-shaped, and find that Appellant’s claimed handle shape is disclosed within Seltsam. However, Appellant has not claimed that the handle of claim 1 has a substantially V-shaped, Y-shaped or L-shaped portion, region, or subset of its periphery. Rather, Appellant’s claim 1 recites that the handle is substantially V-shaped, Y-shaped or L-shaped.”). Written using the “comprising” transition phrase, claim 1 indicates that the “handle” includes, but is not limited to, a “handle body,” “first lever,” and “second lever.” Claims App. 2; see also Exergen Corp. v. Wal- Mart Stores, Inc., 575 F.3d 1312, 1319 (Fed. Cir. 2009) (“The claim uses the term ‘comprising,’ which is well understood in patent law to mean ‘including but not limited to.’”). In contrast, as discussed above, the Examiner interprets the “handle” as limited to only a “handle body,” “first lever,” and “second lever”—as if claim 1 recited, for example, “consisting of” rather than “comprising.” See, e.g., Norian Corp. v. Stryker Corp., 363 F.3d 1321, 1331 (Fed. Cir. 2004) (“‘Consisting of’ is a term of patent convention meaning that the claimed invention contains only what is expressly set forth in the claim.”); see also Conoco, Inc. v. Energy & Envtl. Int’l, L.C., 460 F.3d 1349, 1360 (Fed. Cir. 2006) (“The Patent Board of Appeals has interpreted ‘consisting of’ to ‘close[] the claim to the inclusion of materials other than those recited except for impurities ordinarily Appeal 2020-004722 Application 15/852,319 7 associated therewith.’” (quoting Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948))). We agree with Appellant that one of ordinary skill in the art would view the “horizontal part” identified in the annotated version of Figure 2 as part of the “handle” and thus that structure must be considered in assessing the shape of the “handle.” See Reply Br. 6 (“Simply put, a triable is not substantially V-shaped, substantially L-shaped, or substantially Y- shaped . . . . To find a Y-shaped handle in Seltsam, the Examiner effectively lops off an entire side of its triangular handle. To find a V-shaped handle in Seltsam, the Examiner further removes Seltsam’s handle stem or support of reference numeral 26.”). Seltsam does not distinguish the “horizontal part” from the surrounding structure, and instead, simply identifies the whole structure as “handle 93.” See, e.g., Seltsam Fig. 2, 4:71–75 (“A handle 93 is attached to the stem by suitable pivot pin means indicated at 24. The handle has an arcuate cam portion 25 having a flat 26 for purposes hereinafter to be described.”). And, when considering the “horizontal part” as part of the “handle” (as is proper), we agree with Appellant that the “handle” in the context of the Examiner’s first alternative position is not one of the recited shapes. See Appeal Br. 15 (“Properly considered, Seltsam can only be deemed to disclose a handle that is triangular in shape . . . .”). In the context of the Examiner’s second alternative position, the “handle body” is “the whole handle 93.” Final Act. 2. Because the “handle body” in this context would include all the structures of the “handle” discussed above, we again agree with Appellant that the “handle” is not one of the recited shapes. Both Appellant and the Examiner discuss a portion of the decision in the prior related appeal. See Appeal Br. 13–14; Ans. 5. In that appeal, as Appeal 2020-004722 Application 15/852,319 8 here, the sole independent claim recited a “handle comprising” “a handle body . . . ,” “a first lever . . . ,” and “a second lever . . . ,” but the relevant dependent claim added that “the handle is T-shaped.” Ex parte Kole, Appeal No. 2016-000375, at 2, 10 (PTAB July 13, 2017) (“Prior Appeal”). To address this “T-shaped” requirement, the Examiner relied on the only figure from Metz,7 reproduced below: See also Appeal Br. 14 (reproducing the figure from Metz). In the Prior Appeal, the examiner identified “a” in Metz as the “handle body,” “b” as the “first lever,” and “c” as the second lever.” Prior Appeal 4. We did not sustain the rejection of the dependent claim because, to create the required “T-shape,” the examiner was improperly relying on either (1) only the identified “handle body” and “first lever” or (2) only the identified “handle body” and “second lever” even though the claim required assessing the shape of the whole “handle”—i.e., at least the “handle body,” “first lever,” and “second lever.” Id. at 11–12. The Examiner here highlights footnote 3 7 GB 188,537, issued Nov. 16, 1922. Appeal 2020-004722 Application 15/852,319 9 in the Prior Appeal, which provided: “We do not address whether or how a ‘handle’ with additional structure (i.e., not required by claim 1) could fall within the scope of claim 10.” Ans. 4 (citing Prior Appeal 11 n.3). Although the issue raised in this footnote did not arise in the prior appeal, it is precisely the issue before us now. Here, the “additional structure” not required by the independent claim (to use the language from the footnote) is the “horizontal part” in the annotated version of Figure 2 of Seltsam. And, for the reasons above, we determine that one of ordinary skill in the art would have viewed that “horizontal part” as a portion of the overall “handle.” Thus, contrary to the Examiner’s position (see Ans. 4), the discussion in the Prior Appeal expressly does not address the issue before us in this appeal. For these reasons, we do not sustain the rejection of claim 1, or the rejection of claim 2, which depends from claim 1. New Ground of Rejection We enter a new ground of rejection: Independent claim 1 and dependent claim 2 are rejected under 35 U.S.C. § 112 ¶1 as failing to comply with the written description requirement. The test for compliance with the written description requirement is “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Independent claim 1 recites a “handle comprising” “a handle body,” “a first lever,” and “a second lever,” “wherein the handle is one of substantially V-shaped, substantially L-shaped, and substantially Y-shaped.” Claims App. 2. Claim 2 limits claim 1 to one of the three shapes, requiring Appeal 2020-004722 Application 15/852,319 10 that “the handle is substantially V-shaped.” Id. For the reasons below, the Specification does not provide adequate written description support for a “handle” that is either “substantially V-shaped” (as recited in both claims 1 and 2) or that is “substantially L-shaped” (as recited only in claim 1). As to “substantially V-shaped,” the Specification discloses: A first embodiment of the present invention, having a substantially V-shaped lever configuration, is shown in Figs. 1A through 1C as comprising handle 10, having handle body 20, first lever, or gripping region 30, and second lever, or gripping region 40. Spec. 6:9–12. In the Summary of Claimed Subject Matter in the Appeal Brief, Appellant relies on Figure 1C as to “substantially V-shaped.” See Appeal Br. 7. We reproduce below Figures 1A through 1C: Spec., Figs. 1A–1C. Figure 1A is “a simplified side elevational view of a first embodiment,” Figure 1B is “a simplified top view of the embodiment of Fig. 1A,” and Figure 1C is “a simplified front elevational view of the embodiment of Fig. 1A.” Id. at 4:2–5. None of the aspects of the Specification above provide adequate written description support for a “handle”—i.e., at least a “handle body,” “first lever,” and “second lever”—that is “substantially V-shaped.” Instead, the Specification only provides support for (as expressly stated) “a substantially V-shaped lever configuration” (Spec. 6:9–12 (emphasis Appeal 2020-004722 Application 15/852,319 11 added))—i.e., only “first lever” 30 and “second lever” 40 being, together, “substantially V-shaped.” Indeed, if handle body 20 in the Figures above is considered as part of the “handle”—as it must be based on claim 1—the shape for the “handle” overall is not “substantially V-shaped” (rather, it is likely “substantially Y-shaped”). Thus, we find that claim 1 lacks adequate written description support. Claim 2, which limits claim 1 to a “handle” that is “substantially V-shaped,” lacks adequate written description support for the same reason. We turn now to a “handle” that is “substantially L-shaped.” The text of the Specification does not use “L” to describe the shape of a “handle” or even a portion of a “handle.” Cf. Spec. 7:6–7 (discussing a “substantially T- shaped configuration”). In the Summary of Claimed Subject Matter in the Appeal Brief, Appellant relies on Figure 8 as to “substantially L-shaped.” See Appeal Br. 7. We reproduce Figure 8 below: Spec., Fig. 8. As to Figure 8, the Specification provides the following: Two handles 10 of the present invention are shown in conjunction with a double-handled faucet system in Fig. 8. In such installations, one handle 10 is associated with a hot water Appeal 2020-004722 Application 15/852,319 12 valve coupled with faucet 50 (shown disposed above sink or wash basin 60), while another handle 20 is associated with a cold water valve, also coupled to faucet 50. Spec. 8:9–12. Figure 8 is “a simplified front perspective view of a sink and faucet employing two handles of the present invention in conjunction with separately controlled hot and cold water valves.” Id. at 4:18–20. None of the aspects of the Specification above provide adequate written description support for a “handle”—i.e., at least a “handle body,” “first lever,” and “second lever”—that is “substantially L-shaped.” As an initial matter, we see little difference between handle 10 in Figure 1A (allegedly showing a “handle” that is “substantially V-shaped”) and handles 10 in Figure 8 (allegedly showing at least one “handle” that is “substantially L-shaped”). Moreover, the aspects of the Specification above only provide support for, if anything, “a substantially L-shaped” lever configuration—i.e., only “first lever” 30 and “second lever” 40 being, together, “substantially L- shaped.” Similar to the situation above, if handle body 20 in Figure 8 is considered as part of the “handle” (as it must), the shape for the “handle” overall is not “substantially L-shaped.” For this additional and independent reason, we find that claim 1 lacks adequate written description support. Rejection 2 – The rejection of claims 5–7 as anticipated by Clover Appellant acknowledges this rejection but does not present any arguments addressing it. See Appeal Br. 5 (“Claim[s] on appeal: 1 and 2. The rejections to claims 5–7 are not being appealed.”). Thus, we summarily sustain it. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“If an appellant fails to present arguments on a particular issue—or, more broadly, on a particular rejection—the Board will not, as a Appeal 2020-004722 Application 15/852,319 13 general matter, unilaterally review those uncontested aspects of the rejection.”). CONCLUSION We affirm in part the Examiner’s rejection of claims 1, 2, and 5–7. More specifically, we (1) reverse the decision to reject claims 1 and 2 under 35 U.S.C. § 102(a), and (2) affirm the decision to reject claims 5–7 under 35 U.S.C. § 102(a). We enter a new ground of rejection of claims 1 and 2 under 35 U.S.C. § 112 ¶ 1 as failing to comply with the written description requirement. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground 1, 2 102(a) Seltsam 1, 2 5–7 102(a) Clover 5–7 1, 2 Written Description 1, 2 Overall Outcome 5–7 1, 2 1, 2 FINALITY OF DECISION This decision contains a new ground of rejection based on the authority provided to the Board under 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: Appeal 2020-004722 Application 15/852,319 14 When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv); 37 C.F.R. § 41.50(f). AFFIRMED IN PART; 37 C.F.R. § 41.50(b)