Carl Kah

Patent Trials and Appeals Board

May 18, 2020

2019006054 (P.T.A.B. May. 18, 2020)

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.
14/515,016 10/15/2014 Carl L.C. Kah JR. 47587/0146 2740
1912 7590 05/18/2020
AMSTER, ROTHSTEIN & EBENSTEIN LLP
90 PARK AVENUE
NEW YORK, NY 10016
EXAMINER
CERNOCH, STEVEN MICHAEL
ART UNIT PAPER NUMBER
3752
MAIL DATE DELIVERY MODE
05/18/2020 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 CARL L.C. KAH JR.
____________

Appeal 2019-006054
Application 14/515,016
Technology Center 3700
____________

Before JENNIFER D. BAHR, WILLIAM A. CAPP and LISA M. GUIJT,
Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the rejection
of claims 11–19 and 29. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the inventor, Carl L.C. Kah, Jr., as the
real party in interest. Appeal Br. 3.
Appeal 2019-006054
Application 14/515,016
2
THE INVENTION
Appellant’s invention relates to “a cone nozzle assembly for use in a
rotary nozzle sprinkler.” Spec. ¶ 2. Claims 11 and 29 are the independent
claims on appeal. Claim 11, reproduced below with disputed limitations
italicized for emphasis, is illustrative of the subject matter on appeal.
11. A sprinkler head nozzle assembly comprising:
a nozzle housing including an inlet for pressurized water
and an outlet downstream of the inlet;
a rotating arc adjustment ring mounted on the nozzle
housing such that rotation of the arc adjustment ring extends and
reduces a length of an arcuate exit opening to set an arc of
coverage of the sprinkler head nozzle assembly;
a rotating distributor, mounted on a central shaft extending
through an arcuate adjustable nozzle including a valve assembly
positioned below the rotating distributor in the nozzle housing
and operable to direct water onto the rotating distributor;
the valve assembly further comprising:
an upper valve element including a top portion with
a conical axially stepped and spiraled underside valve
surface; and
a lower valve member including a central opening
and a radially stepped and spiraled edge surrounding the
central opening, the upper valve member mounted in the
lower valve member such that the lower valve member is
movable relative to the upper valve member such that
interaction between the axially stepped and spiraled
underside valve surface of the upper valve member and the
stepped and spiraled edge of the lower valve member
defines the arcuate exit opening to provide a conically
shaped water discharge stream over a desired arc of
coverage when the water flows through the valve
assembly.

Appeal 2019-006054
Application 14/515,016
3
THE REJECTIONS
The following rejections are before us for review:
I. Claims 11, 12, 16–19, and 29 stand rejected under 35
U.S.C. § 102(a)(1) as being anticipated by Kah (US
2008/0257962 A1; published Oct. 23, 2008).
II. Claims 13–15 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Kah.

OPINION
Rejection I
Regarding independent claim 1, the Examiner finds that Kah
discloses, inter alia, a valve assembly (i.e., body housing 204) having an
upper valve element 2022 including a top portion with a conical axially
stepped and spiraled underside valve surface (i.e., stepped valving spiral
2020c), as claimed. Final Act. 2–3. Regarding the claim recitation requiring
the underside surface to be conical, as well as axially stepped and spiraled,
the Examiner provides an annotated drawing of Kah’s Figure 29, reproduced
below, identifying an “[a]ngled surface” on the underside of upper valve
element 2022, which the Examiner finds discloses the claimed conical
surface. Ans. 4.
Appeal 2019-006054
Application 14/515,016
4

The Examiner’s annotated Figure 29 of Kah depicts “a center shaft of the
nozzle assembly . . . incorporat[ing] the upper arcuate valve member [2022]”
(Kah ¶ 48), whereupon the Examiner has identified an angled surface on the
underside of upper valve element 2022 relative to the longitudinal axis of the
central shaft (i.e., the shaft with thread 2015b). The Examiner additionally
relies on the definition of the claim term “spiral” (i.e., “winding in a
continuous and gradually widening or tightening curve, either around a
[central] point on a flat plane or about an axis so as to form a cone”) as
further support for finding that Kah’s spiraled underside surface must, by
definition, be conical. Adv. Act. 2 (emphasis added).
Appellant argues that Kah’s upper valve element 2022 “is not conical
in shape.” Appeal Br. 7 (citing Kah, Fig. 25). In support, Appellant
submits, with reference to Figures 25 and 29 of Kah, that “there is no part of
the element 2022 that is conical, including element 2020c,” and in particular,
“the spiral portion of the element 2022 in Kah is simply not ‘conical’ in
shape.” Id. at 8; see also Reply Br. 2. Appellant also submits that Kah’s
Appeal 2019-006054
Application 14/515,016
5
Specification is does not teach “providing any sort of conical shape with
respect to the element 2022.” Appeal Br. 8; see also Reply Br. 2. Appellant
further submits that “[t]he definition [of spiral] cited by the Examiner makes
clear that a spiral is not necessarily conical, as is the case in Kah.” Appeal
Br. 8; see also Reply Br. 2.
Claim 11 requires the upper valve element to include “a top portion
with a conical axially stepped and spiraled underside valve surface.”
Because the claimed underside valve surface must have axial steps and a
spiral in addition to being conical, we do not construe claim 11 as requiring
the underside surface to be a geometric cone. Rather, we construe claim 11
as requiring an underside surface to resemble a cone in shape, for example,
having a portion that is angled relative to a central axis, in addition to
portions defining axial, spiraled steps in the conical surface.2 Cf.
https://www.merriam-webster.com/dictionary/conical (last visited May 13,
2020) (attached as Exhibit A) (defining “conical” as “resembling a cone
especially in shape”). Construing claims broadly during prosecution is not
unfair to the applicant, because the applicant has the opportunity to amend
the claims to obtain more precise claim coverage. In re Am. Acad. of Sci.
Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2012).
Here, a preponderance of the evidence supports the Examiner’s
finding that Kah depicts a conical surface (i.e., a surface that resembles a
cone), which is angled relative to the central axis of shaft 2015, on the

2 Figure 4 of the Specification appears to depict stepped and spiraled
underside surface 31a as an outer, smooth, conical surface, with neither steps
nor spirals; rather, the steps and spirals appear to be depicted on a inner
surface of upper valve member 31. See Spec. ¶ 37 (“upper valve member 21
and the upper stepped and spiraled underside surface 31a thereof are shown
in perspective in Fig. 4”).
Appeal 2019-006054
Application 14/515,016
6
underside of upper valve element 2022, as identified by the Examiner supra,
and as the same surface is depicted in Kah’s Figures 25, 30, and 32. See In
re Aslanian, 590 F.2d 911, 914 (CCPA 1979) (“a drawing in a utility patent
can be cited against the claims of a utility patent application even though the
feature shown in the drawing was . . . unexplained in the specification of the
reference patent”). In sum, we are not persuaded by Appellant’s argument
supra that “there is no part of the element 2022 that is conical, including
element 2020c.”
Regarding the Examiner’s reliance on the definition of the claim term
“spiral” as resulting in a conical surface on the underside of Kah’s top
portion of upper valve element 2022, we disagree. For example, there may
be perpendicular (i.e., not angled) surfaces between the axial steps forming
Kah’s spiraled edges, which edges—not surfaces—wind in a continuous and
gradually tightening curve. Therefore, in this context, the Examiner errs by
applying the definition of spiral to Kah’s upper valve member 2022 to find a
conical underside surface. However, such an additional finding is not
necessary for the Examiner’s prima facie rejection as stated supra.
Accordingly, we sustain the Examiner’s rejection of independent
claim 11. Appellant chose not to provide arguments for the patentability of
claims 12, 16–19, and 29 apart from the arguments presented for
independent claim 11 supra, and therefore, for essentially the same reasons
as stated supra, we also sustain the Examiner’s rejection of claims 12, 16–
19, and 29. Appeal Br. 9.
Rejection II
Appellant chose not to provide arguments for the patentability of
claims 13–15 apart from the arguments presented for independent claim 11
Appeal 2019-006054
Application 14/515,016
7
supra, and therefore, for essentially the same reasons as stated supra, we
also sustain the Examiner’s rejection of claims 13–15. Appeal Br. 9.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s) Affirmed Reversed
11, 12, 16–
19, 29
102(a)(1) Kah 11, 12, 16–
19, 29

13–15 103 Kah 13–15
Overall
Outcome
11–19, 29
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)(iv).
AFFIRMED