Clayton C. Garrels et al.

Patent Trials and Appeals Board

Oct 29, 2019

14019487 - (D) (P.T.A.B. Oct. 29, 2019)

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.
14/019,487 09/05/2013 Clayton C. Garrels 046150-1985
(PT-KP-1864)
7806
12572 7590 10/29/2019
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
SKUBINNA, CHRISTINE J
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
10/29/2019 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CLAYTON C. GARRELS,
WILLIAM C. KURU, and RANDY S. GRASKAMP
__________________

Appeal 2018-008695
Application 14/019,487
Technology Center 3700
____________________

Before STEFAN STAICOVICI, JAMES P. CALVE, and
BRANDON J. WARNER, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the decision of the
Examiner rejecting claims 1–12 and 25–38. Claims 13–24 are cancelled.
Appeal Br. 39 (Claims App.). We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Kohler Co. Appeal Br. 2.
Appeal 2018-008695
Application 14/019,487

2
CLAIMED SUBJECT MATTER
Claims 1 and 25 are independent. Claim 1 is reproduced below.
1. A toilet configured to be in fluid communication
with a drain pipe, the toilet comprising:
a tank for holding a first supply of water therein;
a bowl having an inlet and an outlet, wherein the
inlet is in fluid communication with the tank, such that the bowl
is configured to receive the first supply of water;
a passage having a first end, a second end, a
bottom surface defining an upper peak, and an inlet opening
provided between the first end and the second end; and
a water system comprising:
a storage device that is configured to hold a
second supply of water therein, the storage device having
an outlet being in fluid communication with the inlet
opening of the passage; and
a valve disposed between the inlet opening
of the passage and the outlet of the storage device;
wherein the first end is in fluid
communication with the outlet of the bowl;
wherein the second end is configured to be
in fluid communication with the drain pipe;
wherein the inlet opening is provided at a
location that is level with or below the upper peak; and
wherein the passage is configured to receive
the second supply of water through the inlet opening
during a flush cycle.

REJECTIONS
Claims 1–6, 8–10, and 37 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Tubbs (US 3,224,013, iss. Dec. 21, 1965), Hoeppener
(NL1023302 C2, iss. Jan. 3, 2005), and Young (US 5,642,533, iss. July 1,
1997).
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Application 14/019,487

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Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Tubbs, Hoeppener, Young, and Johnson, Jr. (US 5,845,346, iss. Dec. 8,
1998).
Claims 11, 12, 25–28, 30–36, and 38 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Tubbs, Hoeppener, Young, and Okubo
(US 8,418,277 B2, iss. Apr. 16, 2013).
Claim 29 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Tubbs, Hoeppener, Young, Okubo, and Johnson, Jr.
ANALYSIS
Claims 1–6, 8–10, and 37
Rejected over Tubbs, Hoeppener, and Young
Regarding claim 1, The Examiner finds that Tubbs teaches a toilet in
Figure 1 including bowl 10 configured to receive a first supply of water via
nozzles 26, a passage (drainage conduit 13 with raised knee 12) with a first
end in fluid communication with the outlet of bowl 10 and a second end in
fluid communication with the drain pipe (exhaust 16). Final Act. 2–3.
The Examiner finds that Tubbs lacks a tank for holding a first supply
of water and a storage device configured to hold a second supply of water.
Id. at 3. The Examiner finds that Hoeppener teaches these features as tank
11 for holding a first supply of fresh water in Figure 1 and a storage device
(purge vessel 9) for holding a second supply of grey water. Id. at 3–4. The
Examiner determines it would have been obvious to a person of ordinary
skill in the art to modify Tubbs to include first and second storage tanks “for
the purpose of being able to use grey water for flushing of the toilet which
conserves fresh water supplies as shown by Hoeppener.” Id. at 4. The
Examiner relies on Young to teach the claimed inlet opening. Id. at 4–5.
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Application 14/019,487

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Appellant argues that it would not have been obvious to a skilled
artisan to use tanks on Tubbs’ toilet because Tubbs teaches a tankless force
flush toilet arrangement as a way to improve flushing ability, reduce cycle
time, and significantly reduce water consumption over a toilet with a tank so
Tubbs disparages and, thus, teaches away from using a toilet tank with tanks
as claimed. Appeal Br. 7–8. Appellant also argues that Tubbs teaches away
from using tanks with its force flush system in order to reduce noise, size,
weight, and sweating and, thus, Tubbs cannot be modified to add tanks. Id.
at 8–9. Appellant also argues that a tankless system is integral to the forced
flush arrangement of Tubbs. Reply Br. 5. As a result, Appellant argues that
adding tanks to Tubbs would change Tubbs’ principle of operation because
Tubbs relies on the pressure of water piping system 22 to obtain a desired
spray configuration and teaches that a simple stream of most water taps and
orifices will not suffice to create the desired spray configuration of conical
sheath 20 needed to provide the forced flush arrangement. Appeal Br. 9–10.
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994); Polaris Indus. Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1069
(Fed. Cir. 2018) (same). “A prior art reference evidences teaching away if it
‘criticize[s], discredit[s], or otherwise discourage[s] the solution claimed.’”
In re Brandt, 886 F.3d 1171, 1178 (Fed. Cir. 2018) (quoting In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004)). “Additionally, a reference may teach
away from a use when that use would render the result inoperable.” In re
ICON Health & Fitness, Inc., 496 F.3d 1374, 1381 (Fed. Cir. 2007).
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Here, Tubbs expressly criticizes and disparages the use of toilet tanks
as water wasteful, prone to stoppage, and messy. Tubbs teaches that known
arrangements for flushing toilet bowls use several gallons of water for each
flushing operation depending on the tank sizes and flushing designs. Tubbs,
1:10–15. Tubbs notes that a common tank and flush arrangement uses four
gallons per flush and another silent flush model uses seven gallons per flush.
Id. at 1:15–18. Tubbs also criticizes toilet tanks and gravity flush systems as
prone to stoppages and tending to sweat and stain floors. Id. at 1:19–24.
Tubbs touts his tankless force flush arrangement as conserving water,
improving efficiency, and reducing cost and maintenance. Tubbs teaches “a
force flush arrangement operable without using a tank system besides being
much quieter, requires only about one gallon of water per flush and assures
flushing without stoppages of the type normally suffered by gravity flush
systems.” Id. at 1:25–29. His tankless system “not only saves substantial
cycle time, but also results in a 75% water conservation compared to the
four gallon model and an 86% conservation compared to the popular seven
gallon model.” Id. at 1:29–33. In addition, “omission of a tank substantially
reduces shipping and handling costs as well as providing additional space for
use as storage and allowing substantial reduction of waste, dead space and
particularly space which is difficult to keep clean.” Id. at 1:36–42.
Tubbs teaches that his tankless force flush system “is concerned with
the relative pressures, not water levels” unlike “conventional arrangements
[that] dump water into the bowl for a substantial time to thus initiate flushing
as a function of the relative water levels.” Id. at 2:47–52; 1:64–70. Thus,
we agree with Appellant that adding tanks would change the principle of
operation of Tubbs’ toilet system. Appeal Br. 9–10.
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Tubbs teaches to use pressurized water from water line 22 to form a
water spray sheath 20 to seal drainage conduit 13 and establish a vacuum
(pressure differential) “to rapidly flush the toilet bowl 10.” Tubbs, 2:52–3:8.
Tubbs teaches that this vacuum is established in three seconds or less to
initiate a much more rapid flushing operation that requires less than a quart
of water. Id. at 3:8–27.
As such, for the foregoing reason, Tubbs teaches away from using
tanks by disparaging tanks, touting the advantages of a tankless system, and
creating a vacuum with a pressurized water spray to force flush the toilet.
“[E]ven if a reference is not found to teach away, its statements regarding
preferences are relevant to a finding regarding whether a skilled artisan
would be motivated to combine that reference with another reference.”
Polaris Indus., 882 F.3d at 1069 (“adding a fuel tank under one of the seats
of Denney’s ATV would significantly raise its occupancy area, thereby
raising the center of gravity and rendering the vehicle less stable, which
would run contrary to one of Denney’s stated purposes”).
Even if other prior art systems such as Johnson2 and Rüegg3 use tanks
as the Examiner asserts (Ans. 3), Tubbs teaches away from using tanks with
his tankless force flush system as discussed above. Johnson and Rüegg both
feed water from a single tank into a toilet bowl as backflow via the drainage
pipe to raise the level in the toilet bowl higher to initiate flushing. Johnson,
3:15–43, Fig. 1; Rüegg, 3:57–4:23, Fig. 1; see Reply Br. 7–11. We find no
teaching in either reference to use tanks for force flushing with a nozzle and
pressurized water to create a vacuum in a drainage pipe as Tubbs does.

2 US 5,515,556, iss. May 14, 1996.
3 US 5,666,675, iss. Sept. 16, 1997.
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Application 14/019,487

7
Because Tubbs teaches away from a toilet system with tanks, a skilled
artisan would not have had a reason with rational underpinnings to add tanks
to Tubbs’ toilet. Accordingly, we do not sustain the rejection of claim 1 or
claims 2–6, 8–10, and 37, which depend therefrom.
Claim 7
Rejected over Tubbs, Hoeppener, Young, and Johnson, Jr.
The Examiner’s reliance on Johnson, Jr. to teach a pump that moves
collected grey water from a collection device to the storage device does not
cure the above-noted deficiency of the combination of Tubbs, Hoeppener,
and Young as to claim 1 from which claim 7 depends indirectly. See Final
Act. 5. Thus, we do not sustain the rejection of claim 7.
Claims 11, 12, 25–28, 30–36, and 38
Rejected over Tubbs, Hoeppener, Young, and Okubo
Independent claim 25 recites a grey water toilet with similar features
to those recited in claim 1 and additionally includes a pedestal configured to
support the compartments for storing fresh and grey water. Appeal Br. 39–
40 (Claims App.). The Examiner relies on Hoeppener to teach storage tanks
for fresh and grey water and proposes to modify Tubbs to include such tanks
for the same reasons as in the rejection of claim 1. Final Act. 6–8. We
agree with Appellant that Tubbs’ tankless force flush system teaches away
from using the tanks of Hoeppener for the reasons discussed above for claim
1. Appeal Br. 22–24. Thus, we do not sustain the rejection of claim 25 or
claims 26–28, 30–36, and 38, which depend therefrom. Nor do we sustain
the rejection of claims 11 and 12, because the Examiner’s reliance on Okubo
to teach a pedestal does not cure the deficiencies noted above as to claim 1
from which claims 11 and 12 depend indirectly.
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Application 14/019,487

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Claim 29
Rejected over Tubbs, Hoeppener, Young, Okubo, and Johnson, Jr.
The Examiner’s reliance on Johnson, Jr. to teach a pump as recited in
claim 29 does not cure the deficiency discussed above for claim 25 from
which claim 29 depends indirectly. See Final Act. 9. Thus, we do not
sustain the rejection of claim 29.
CONCLUSION
We reverse the rejections of claims 1–12 and 25–38.
Claims
Rejected
35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
1–6, 8–10, 37 103(a)   Tubbs, Hoeppener,
Young
1–6, 8–10, 37
7 103(a)  Tubbs, Hoeppener,
Young, Johnson, Jr.
7
11, 12, 25–28,
30–36, 38
103(a) Tubbs, Hoeppener,
Young, Okubo
11, 12, 25–28,
30–36, 38
29 103(a) Tubbs, Hoeppener,
Young, Okubo, and
Johnson, Jr.
29
Overall
Outcome
1–12, 25–38

REVERSED