Ex Parte 7584717 et alDownload PDFPatent Trial and Appeal BoardMay 20, 201690013109 (P.T.A.B. May. 20, 2016) Copy Citation 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. 90/013,109 01/02/2014 7584717 2925118.000075 1054 49841 7590 05/20/2016 Peter L. Brewer Baker, Donelson, Beaman, Caldwell, & Berkowitz. PC 265 Brookview Centre Way Suite 600 KNOXVILLE, TN 37919 EXAMINER GRAHAM, MATTHEW C ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 05/20/2016 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 RADIO SYSTEMS CORPORATION1 Patent Owner ____________________ Appeal 2016-000746 Reexamination Control 90/013,109 Patent No. 7,584,717 B22 Technology Center 3900 ____________________ Before JOHN C. KERINS, DANIEL S. SONG, and BRETT C. MARTIN, Administrative Patent Judges. SONG, Administrative Patent Judge. DECISION ON APPEAL 1 Radio Systems Corporation is the real party in interest (Appeal Brief (hereinafter “App. Br.”) 2). 2 Issued September 8, 2009 (hereinafter “the ’717 patent”) to Skovron et al. Appeal 2016-000746 Patent No. US 7,584,717 B2 Reexamination Control 90/013,109 2 Claims 1–31 are subject of the present appeal under 35 U.S.C. §§ 134(b) and 306 from a Final Rejection (App. Br. 9). We have jurisdiction under 35 U.S.C. §§ 134(b) and 306. We are also informed that the subject patent is involved in the following cases that have been stayed pending this reexamination (App. Br. 3): 1. Radio Systems Corporation et al v. E. Mishan & Sons, Inc., Case No. 3:13-CV-00383, filed July 1, 2013 (E.D. Tenn.); and 2. Radio Systems Corporation et al v. Bluekube Technologies, Inc., Case No. 3:13-CV- 00716, filed December 11, 2013 (E.D. Tenn.). The invention is directed to a portable toilet for an animal (Abstract). Representative independent claim 1 reads as follows (App. Br., Claims App. (amendments incorporated)). 1. A portable toilet for an animal, including: a catchment part comprising a sloped surface shaped to channel urine towards a drain, wherein the sloped surface includes a plurality of corrugations; a collection part arranged under said drain for receiving the urine from the catchment part, wherein the collection part includes walls forming a channel, wherein the collection part includes a receptacle removably residing in the channel, wherein the receptacle comprises a drawer positioned in the channel below the drain to collect the urine from the catchment part; and a porous synthetic grass surface shaped to overlie peaks of the corrugations of the catchment part, wherein the grass surface is adapted to pass the urine therethrough into troughs of said corrugations for drainage into the receptacle. Appeal 2016-000746 Patent No. US 7,584,717 B2 Reexamination Control 90/013,109 3 The Examiner rejected claims 1–31 under 35 U.S.C. §103(a) as unpatentable over the combination of Mohr3 in view of Gloor4 and Maguire.5 We AFFIRM. ANALYSIS In rejecting claims 1–31 as unpatentable, the Examiner finds that Mohr discloses the claimed invention including a porous, synthetic grass overlying a catchment part that slopes toward a drain that drains liquid waste into a collection part including a removable receptacle in a drawer received within a channel (Ans. 2). Thus, the Examiner finds that Mohr discloses the claimed invention except for “the type of a receptacle in the collection part and the use of corrugations in the catchment part.” (Id. at 2–3). To remedy the above noted deficiencies of Mohr, the Examiner relies on Gloor, finding that it discloses a waste disposal system having a catchment part with corrugations and channels that direct urine toward a drain and into a collection part, and a turf assembly that overlies the peaks of the corrugations (id. at 3, citing Gloor, Figs. 1, 14, 17). The Examiner relies on Maguire, finding that it discloses an animal litter box having a catchment part that drains into a collection part, which includes “a rectangular drawer 34 having a handle 39.” (Id. citing Maguire, Fig. 1). Based on the above findings, the Examiner concludes: It would have been obvious to one of ordinary skill in the art to have used a simple drawer in Mohr in view of the teaching of 3 Patent No. US 7,107,933 B2 issued September 19, 2006. 4 Patent No. US 7,434,539 B2 issued October 14, 2008. 5 Canadian Patent Application CA 2 428 856 published November 16, 2004. Appeal 2016-000746 Patent No. US 7,584,717 B2 Reexamination Control 90/013,109 4 Maguire, especially in view of the suggestion in Mohr that that drawer can contain spillage (i.e. urine). To have utilized corrugations would have been obvious to one of ordinary skill in the art in view of the teaching of Gloor so as to better channel the waste fluid as taught by Gloor and so as to simplify and replace the grill 54 of Mohr. (Id). The Patent Owner disagrees with various findings and conclusions of the Examiner. We address the Patent Owner’s arguments below. We note that only those arguments timely made in the briefs of record in this appeal have been considered. Other arguments not made or those not properly presented to the Board have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv) (“Except as provided for in §§ 41.41, 41.47 and 41.52, any arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal.”). Claims 1–4 and 6–11 Pot/Drawer The Patent Owner argues that in Mohr, the drawer merely functions to position the pot-shaped receptacle, which is the device that actually collects the waste, the drawer merely containing “spillage not otherwise captured by the pot shaped receptacle,” and also teaches that in one embodiment, the drawer is unnecessary (App. Br. 18–19, citing Mohr, col. 6, ll. 54–55). According to the Patent Owner, “Mohr’s ‘pot shaped’ receptacle minimizes spillage, provides for easy and convenient removal of waste, is easy to clean, contains odor, and provides visible external indicators of fill level,” so that Appeal 2016-000746 Patent No. US 7,584,717 B2 Reexamination Control 90/013,109 5 “adding the drawer of Maguire to Mohr would eliminate ease of use of Mohr’s removable receptacle and its functional capabilities” and change the principle of operation (id. at 19–20). The Examiner disagrees and finds that “Mohr specifically notes that the drawer can contain spillage. . . . Patent Owner has ignored the teaching in Maguire of having a collection part-a rectangular drawer 34 having a handle 39. The teaching of Maguire would lead one of ordinary skill in the art to simplify the structure of Mohr and eliminate the need for the pot shaped receptacle.” (Ans. 6–7). We agree with the Examiner. While Mohr utilizes the drawer to ensure no spillage occurs, this means that the drawer of Mohr is also leak- proof and designed to hold urine (see Mohr, col. 6, ll. 43–44). In addition, as noted by the Examiner, Maguire clearly discloses simply using a reservoir drawer to hold liquid waste (see, e.g., Maguire, Fig. 1, Abstract, p. 8, ll. 7– 10). Thus, as articulated by the Examiner, it would have been obvious to a person of ordinary skill in the art to “simplify the structure of Mohr and eliminate the need for the pot shaped receptacle.” (Ans. 7). We fail to see how eliminating the need for a pot-like receptacle would “eliminate the ease of use” as asserted by the Patent Owner. Moreover, the basic principle in which Mohr operates is by collecting liquid waste on a collection part, draining the liquid waste through a drain, and holding the liquid waste within a container. This operating principle is not altered by the combination of references and proposed modification suggested by the Examiner. See In re Ratti, 270 F.2d 810, 813 (CCPA 1959) (“This suggested combination of references would require a Appeal 2016-000746 Patent No. US 7,584,717 B2 Reexamination Control 90/013,109 6 substantial reconstruction and redesign of the elements shown in [the primary reference] as well as a change in the basic principles under which the [primary reference] construction was designed to operate.” (Emphasis added)). In Ratti, the modification suggested by the Examiner changed the basic principle of sealing from attaining sealing through a rigid, press-fit, interface between the components, to attaining sealing by providing a resilient interface between the components. Id. at 811–13. Such a modification fundamentally changed the technical basis of how a seal performed its sealing function and how a sealed interface was attained. No such basic principle is altered by the combination of Mohr, Gloor and Maguire suggested by the Examiner. Channel The Patent Owner also argues that Mohr fails to disclose a collection part including walls that form a channel from which the receptacle is removed (App. Br. 21). In particular, the Patent Owner asserts that Figure 2 does not show a “corresponding wall opposite to and cooperating with track 88a or 88b to form a channel for either drawer,” and thus, tracks 88a, 88b act as a single inner guide for drawers 80, 82, respectively, so that “Mohr’s drawer 80 sits loosely exposed in an open cavity.” (id., citing Mohr, col. 3, ll. 62–63; Fig. 2). The Examiner finds that “Fig. 3 of Mohr shows a channel for holding the drawer in place-- the side walls supporting the drawer are considered to be a channel for the receptacle-- the drawer.” (Ans. 4). Alternatively, the Examiner also finds that “it is commonplace in the art of drawers to have Appeal 2016-000746 Patent No. US 7,584,717 B2 Reexamination Control 90/013,109 7 walls that surround the drawers or rails to hold the drawer in place[](locate it) so that the drawer does not twist, and thus become stuck during the opening or closing of the drawer. While Mohr shows only one rail 88a, the use of two rails to hold drawers is commonplace.” (Id. at 7). We agree with the Examiner. While the Patent Owner disputes the finding that Mohr actually shows opposing guides for drawer 80, we are of the view that the presence of opposing guides would have been reasonably inferred by a person of ordinary skill. See In re Preda, 401 F.2d 825, 826 (CCPA 1968) (in considering the scope and content of the prior art, “it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.”). While Mohr teaches that such tracks are optional, it does not fairly suggest that only one guide is to be provided. Instead, a person of ordinary skill in the art would infer that an opposing track would have been provided, especially considering that such opposing rails for guiding drawers “is commonplace” as noted by the Examiner. Moreover, even if the presence of opposing guides for drawer 80 would not have been inferred, we also agree with the Examiner that such construction is a commonplace in the art and use thereof would have been obvious to a person of ordinary skill in the art to ensure that “the drawer does not twist, and thus become stuck during the opening or closing of the drawer” as stated by the Examiner. The Patent Owner further argues that incorporating the channel of Maguire into Mohr requires substantial reconstruction and changes the principle of operation (App. Br. 21). However, we fail to see how incorporating an opposing guide constitutes Appeal 2016-000746 Patent No. US 7,584,717 B2 Reexamination Control 90/013,109 8 substantial reconstruction or impact the principle under which the device operates considering at least one guide is already clearly provided in the device of Mohr. Corrugations The Patent Owner argues that “the Examiner’s proposed inclusion of Gloor’s corrugations in Mohr’s sloped surface would require substantial reconstruction” because the artificial turf is placed on the corrugation instead of the grill surface (App. Br. 23–24). The Patent Owner asserts that such modification “substantially alters the design and operation of Mohr’s overall waste collection system,” and “would destroy the functionality of Mohr by eliminating the operation and ease of use of Mohr's support frame, grill and turf.” (Id. at 25). The Examiner finds that: [b]oth Mohr and Gloor teach synthetic grass surfaces overlaying a structure to allow for drainage. In Mohr it is a screen. In Gloor it is a corrugated surface. The peaks of the corrugations of Gloor form a flat surface equivalent to the structure of the screen in Mohr. Consequently, the corrugations in Gloor would be a substitute for the raised surface, the screen, in Mohr. (Ans. 7). We agree with the Examiner for the reasons articulated. Although the modification suggested by the Examiner does alter the operation and functionality of the Mohr’s device, we do not agree that such alteration is so substantial that a person of ordinary skill would not have found it obvious or would not have been motivated to pursue it. In this regard, “case law does Appeal 2016-000746 Patent No. US 7,584,717 B2 Reexamination Control 90/013,109 9 not require that a particular combination must be the preferred, or the most desirable, combination described in the prior art in order to provide the motivation for the current invention.” In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004). We further note that the resultant device would be simpler and likely less expensive. In this regard, an implicit motivation to combine has been found to exist when the improvement is technology-independent and the combination of references results in a product that is more desirable (e.g., stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient). See Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006); see also Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.”); Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another.”). Claim 5 With respect to claim 5, the Patent Owner relies on its arguments addressed above and its dependency for patentability (App. Br. 26). The Patent Owner also again asserts that the prior art applied does not teach a channel, tracks 88a, 88b of Mohr merely providing a single guide for drawers 80, 82 (id. at 27). However, we are unpersuaded by the Patent Owner’s arguments for the reasons discussed supra. Appeal 2016-000746 Patent No. US 7,584,717 B2 Reexamination Control 90/013,109 10 Claim 12 With respect to claim 12, the Patent Owner relies on its arguments addressed above, and again asserts that the prior art applied does not teach a channel (id. at 28–29). However, we are unpersuaded by the Patent Owner’s arguments for the reasons discussed supra. The Patent Owner also argues that the prior art does not disclose a drain that “comprises an elongated opening”, each reference disclosing a circular drain or plug (id. at 30). However, we agree with the Examiner that “to have made the drain hole elongated, instead of circular, would have been obvious to one of ordinary skill in the art as a mere matter of choice without any evidence of criticality for the shape of the drain hole.” (Ans. 5; see also Ans. 8). Claims 13–25 The Patent Owner again relies on its arguments addressed above for patentability of these rejected claims (App. Br. 30). However, we are unpersuaded by the Patent Owner’s arguments for the reasons discussed supra. The Patent Owner also argues that the applied prior art taken either alone or in combination, fails to teach a sloped surface with corrugations, “wherein the sloped surface comprises a first planar panel and a second planar panel, wherein troughs of the first planar panel converge with troughs of the second planar panel to form a first secondary trough.” (Id. at 30–31). The Patent Owner further refers to Figure 1 of Gloor to argue that its corrugations converge around a circular plug, but do not form a secondary Appeal 2016-000746 Patent No. US 7,584,717 B2 Reexamination Control 90/013,109 11 trough as required, and that Gloor does not teach the shape or dimensions of the ribs (id. at 31). The claimed secondary trough refers to an area of the collection part near the end of the corrugations of each planar surface, which is devoid of corrugations. We agree with the Examiner (Ans. 4) that this arrangement of the corrugations and the panels is shown in Figure 14 of Gloor which discloses ribs 238. Figure 14 of Gloor clearly shows four different planar sections adjoining each other, each of the planar sections including ribs thereon for directing liquid waste toward an adjoining panel into an area devoid of ribs, that is, a secondary trough (Gloor, Fig. 14). Hence, we agree with the Examiner that “Figure 14 of Gloor does clearly show four planar sections that meet in the gaps between the ribs 238. These gaps are troughs to the degree claimed. The claims do not recite separate panels joined together at the [t]roughs. The planar sections in Gloor are panels to the same degree shown in the patent-at hand.” (Ans. 7–8; see also Ans. 4). Whereas the Patent Owner further asserts that Figure 14 of Gloor does not appear to disclose corrugations because the shape or dimensions of the ribs is not shown (App. Br. 31), we note that the shape of the ribs is clearly shown in Figure 17 which is disclosed as being “an enlarged, fragmentary, cross-sectional view [of the embodiment shown in Figure 14], taken generally along line 17 in FIG. 14.” (Gloor, col. 2, ll. 32–33). We also see no requirement for corrugations of a specific dimension in the claims at issue. Appeal 2016-000746 Patent No. US 7,584,717 B2 Reexamination Control 90/013,109 12 Claims 26 and 30 The Patent Owner again unpersuasively relies on its arguments addressed above for patentability of these rejected claims (App. Br. 33). The Patent Owner also again argues that the prior art does not disclose a drain that “comprises an elongated opening” (id.), but as discussed supra, we agree with the Examiner that selection of the shape of the drain would have been obvious to one of ordinary skill as a matter of design choice (Ans. 5; see also Ans. 8). Claim 27 The Patent Owner again unpersuasively relies on its arguments addressed above and dependency for patentability of claim 27 (App. Br. 33). The Patent Owner also argues that “regarding claim 27, Mohr does not disclose wherein the peaks of the plurality of corrugations comprise uniform curved peaks,” and instead, Figure 17 of Gloor shows that its corrugations have peaks with flat surfaces (id. at 34). The Examiner finds that “[t]he phrase ‘uniform curved peaks’ as written describes the curved shapes as being uniform in the curved shape. As such, this is shown by Gloor to the broad degree recited.” (Ans. 8; see also Ans. 5). We generally agree with the Examiner. The claim language at issue states “wherein the peaks of the plurality of corrugations comprise uniform curved peaks.” (App. Br. at 34, Claims App. (emphasis added)). Thus, the claim does not require the entirety of the peaks of the corrugations to be in the form of a uniform curve, or require exclusion of flat surfaces as argued by the Patent Owner. Figure 17 of Gloor shows that, in addition to a Appeal 2016-000746 Patent No. US 7,584,717 B2 Reexamination Control 90/013,109 13 flat surface, the upper surface of the ribs, that is, their peaks, also include a curved portion toward the end thereof (see Gloor, Fig. 17). Thus, we agree with the Examiner that Gloor satisfies the recited broad claim language. Claim 28 The Patent Owner again unpersuasively relies on its arguments addressed above and dependency for patentability of claim 28 (App. Br. 34). The Patent Owner also argues that “regarding claim 28, Mohr does not disclose wherein the peaks and troughs of the plurality of corrugations comprise parallel peaks and troughs. Rather, Gloor’s corrugations (as seen in Figure 1 of Gloor) extend radially from a center drain. (Col. 3, lines 28– 31; Figure 1, Figure 8, Figure 17).” (Id. at 34). The Patent Owner again asserts that “Gloor does not teach any structure, shape or dimension of such ribs.” (Id.). However, the Patent Owner overlooks Figure 14 of Gloor that clearly shows the parallel arrangement of the ribs, and Figure 17 of Gloor that shows the shape of the ribs as discussed supra. Again, the claims do not recite a specific dimensional requirement for the ribs. Thus, we agree with the Examiner’s finding that “Fig. 14 of Gloor shows parallel peaks and troughs.” (Ans. 5; see also Ans. 8). Claim 29 The Patent Owner unpersuasively relies on its arguments addressed above and dependency for patentability of claim 29 (App. Br. 35). The Patent Owner also argues that: Appeal 2016-000746 Patent No. US 7,584,717 B2 Reexamination Control 90/013,109 14 regarding claim 29, Mohr does not disclose wherein the elongated opening is eccentric to the catchment part and is positioned in proximity to a front of the collection part that presents the receptacle for removal, wherein a side of the elongated opening is aligned with an edge of the front of the collection part. Further neither Gloor nor Maguire teach an elongated opening with such orientation. (Id. at 35). However, we agree with the Examiner that “[t]he opening as shown in Fig. 14 [of] Gloor is not in the middle of the structure. It is clearly offset to one side and therefore ‘eccentric’ to the catchment part. Likewise, Mohr, in Fig. 2, shows an ‘eccentric’ opening.” (Ans. 8). Moreover, as already discussed supra, utilization of an elongated opening rather than a circular opening is a design choice. Claim 31 The Patent Owner again unpersuasively relies on its arguments addressed above for patentability of claim 31 (App. Br. 35). The Patent Owner also argues that “the corrugations of Gloor do not disclose wherein the catchment part forms at least three adjoining planar panels, each panel comprising a plurality of corrugations with the corrugations being configured to gravitationally direct the urine towards an adjoining panel as a plurality of parallel streams” as required by claim 31 (id. at 36). However, Figure 14 of Gloor clearly shows four different planar sections adjoining each other in which the ribs direct the liquid waste toward an adjoining panel as a plurality of parallel streams (Gloor, Fig. 14). Therefore, we find the Patent Owner’s argument unpersuasive. Appeal 2016-000746 Patent No. US 7,584,717 B2 Reexamination Control 90/013,109 15 CONCLUSION We AFFIRM the Examiner’s rejections. Requests for extensions of time in this ex parte reexamination proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f). AFFIRMED FOR PATENT OWNER ATTORNEYS: PETER L. BREWER BAKER, DONELSON, BEAMAN, CALDWELL, & BERKOWITZ. PC 265 BROOKVIEW CENTRE WAY SUITE 600 KNOXVILLE TN 37919 THIRD PARTY REQUESTER: NOTARO, MICHALOS & ZACCARIA P.C. 100 DUTCH HILL ROAD ORANGEBURG, NY 10962 Copy with citationCopy as parenthetical citation