Ex parte Alles

Board of Patent Appeals and Interferences

Feb 11, 2000

08230075 (B.P.A.I. Feb. 11, 2000)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was
not written for publication in a law journal and (2) is not binding
precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte WILMER F. ALLES
____________
Appeal No. 1996-1561
Application No. 08/230,075
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HEARD: January 12, 2000
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Before McCANDLISH, Senior Administrative Patent Judge, ABRAMS,
and GONZALES, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 1-8, which constitute all of the
claims of record in the application.
The appellant’s invention is directed to a water closet
having a restriction member inserted into the end of the
Appeal No. 1996-1561 Page 2
Application No. 08/230,075
In the final rejection (Paper No. 9), claims 1-8 were1
rejected under 35 U.S.C. § 103 as being unpatentable over
Preston in view of Farrar, and claims 1-7 as being
unpatentable over Preston in view of Baird. In the Answer,
the former rejection was withdrawn, and claim 8 was added to
the latter one.
flexible tube which supplies water to fill the bowl. The
claims on appeal have been reproduced in an appendix to the
Brief.
THE APPLIED REFERENCES
Baird 928,237 Jul. 20,
1909
Preston 3,744,064 Jul. 10,
1973
THE REJECTION
Claims 1-8 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Preston in view of Baird.1
Rather than attempt to reiterate the examiner’s full
commentary with regard to the above-noted rejection and the
conflicting viewpoints advanced by the examiner and the
appellant regarding the rejection, we make reference to the
Appeal No. 1996-1561 Page 3
Application No. 08/230,075
Examiner’s Answer (Paper No. 13) and to the Appellant’s Briefs
(Paper Nos. 12 and 14).
Appeal No. 1996-1561 Page 4
Application No. 08/230,075
OPINION
The guidance provided by our reviewing court with regard
to the evaluation of rejections under 35 U.S.C. § 103 is as
follows: A prima facie case of obviousness is established when
the teachings of the prior art itself would appear to have
suggested the claimed subject matter to one of ordinary skill
in the art (see, for example, In re Bell, 991 F.2d 781, 783, 26
USPQ2d 1529, 1531 (Fed. Cir. 1993)). This is not to say,
however, that the claimed invention must expressly be suggested
in any one or all of the references, rather, the test for
obviousness is what the combined teachings of the references
would have suggested to one of ordinary skill in the art (see,
for example, Cable Elec. Prods. v. Genmark, Inc., 770 F.2d
1015, 1025, 226 USPQ 881, 886-87 (Fed. Cir. 1985)), considering
that a conclusion of obviousness may be made from common
knowledge and common sense of the person of ordinary skill in
the art without any specific hint or suggestion in a particular
reference (see In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545,
549 (CCPA 1969)). Insofar as the references themselves are
concerned, we are bound to consider the disclosure of each for
Appeal No. 1996-1561 Page 5
Application No. 08/230,075
what it fairly teaches one of ordinary skill in the art,
including not only the specific teachings, but also the
inferences which one of ordinary skill in the art would
reasonably have been expected to draw therefrom (see In re Boe,
355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA 1966) and In re
Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968)).
We find ourselves in agreement with the examiner that all
of the subject matter recited in independent claim 1 is
disclosed by Preston, except for the manner in which Preston’s
restriction member (regulator 44) is mounted on the end of the
flexible bowl refill tube (42). In Preston, this is
accomplished by means of an annular protrusion around the
upstream end of the restriction member which is of greater
diameter than the inside of the bore of the flexible tube,
whereby pressing the end of the restriction member into the
tube distends the tube to hold the member in place (see Figure
10). The system recited in claim 1 differs, in that it
requires that the restriction member be provided with screw
threads for the same purpose.
Appeal No. 1996-1561 Page 6
Application No. 08/230,075
Baird discloses a coupling member for attaching together
two pieces of flexible hose. The coupling member is provided
with external threads having a tooth crest outer diameter that
is greater than the inner diameter of the bore of the hose.
The coupling is installed by screwing it into the end of the
hose, which distends the hose and causes the hose to “snugly
embrace” the coupling member (page 1, line 96).
It is our view that one of ordinary skill in the art would
have found it obvious to modify the Preston regulator by
substituting screw threads for the annular protrusion on the
outer periphery of the restriction member, in view of the
teaching of Baird. Suggestion for such is found in the self
evident advantages of easy installation and effective
attachment that are achieved by using screw threads, which
would have been known to the artisan, who is presumed to
possess skill rather than lack it (see In re Sovish, 769 F.2d
738, 742, 226 USPQ 771, 774 (Fed. Cir. 1985)).
It is our conclusion that a prima facie case of
obviousness has been established with regard to the subject
matter recited in claim 1, and we therefore will sustain this
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Application No. 08/230,075
See Brief, page 3, considering that the rejection of2
claim 8 has been separately argued in the Reply Brief.
rejection. Furthermore, in view of the appellant’s election to
group claims 1-7 together, the rejection of claims 2-7 also is2
sustained.
We reach the opposite conclusion, however, with regard to
claim 8. This independent claim additionally requires the
presence of “tool receiving means formed in said restriction
member at one end to permit inserting the restriction member in
said thermoplastic tube at a tube end” (emphasis added).
Neither of the two references applied against claim 8 shows a
tool receiving means of any kind, much less one that is formed
“in” one end of the restriction member, and we are not
persuaded otherwise by the examiner’s argument.
A prima facie case of obviousness therefore has not been
established with regard to the subject matter of claim 8, and
we will not sustain the rejection.
We have carefully considered the arguments the appellant
has directed to the rejection of claim 1. However, they have
not persuaded us that the examiner’s position with regard to
claim 1 was in error. The fact that Preston discloses a
Appeal No. 1996-1561 Page 8
Application No. 08/230,075
different system for insuring that sufficient water is supplied
to the bowl for refill after flushing does not alter the fact
that it discloses a restriction member at the end of the
flexible refill tube which meets the terms of claim 1, except
for the manner in which it is attached.
We also disagree with the appellant that Baird is
nonanalogous art (Brief, pages 6-7). The test for analogous
art is first whether the art is within the field of the
inventor's endeavor and, if not, whether it is reasonably
pertinent to the problem with which the inventor was involved.
See In re Wood, 599 F.2d 1032, 1036, 202 USPQ 171, 174 (CCPA
1979). A reference is reasonably pertinent if, even though it
may be in a different field of endeavor, it logically would
have commended itself to an inventor's attention in considering
his problem because of the matter with which it deals. See In
re Clay, 966 F.2d 656, 659, 23 USPQ2d 1058, 1061 (Fed. Cir.
1992). Baird is not directed to a water closet. However, it
is concerned with the problem of attaching a rigid flow-
through member to the end of a flexible hose and thus, from our
perspective, it logically would have commended itself to an
Appeal No. 1996-1561 Page 9
Application No. 08/230,075
inventor who was dealing with this problem, such as one who
wished to attach a member to the end of the bowl fill hose of a
water closet.
SUMMARY
The rejection of claims 1-7 as being unpatentable over
Preston and Baird is sustained.
The rejection of claim 8 as being unpatentable over
Preston and Baird is not sustained.
The decision of the examiner is affirmed-in-part.
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Application No. 08/230,075
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge
)
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
NEA/jlb
Appeal No. 1996-1561 Page 11
Application No. 08/230,075
Norman St. Landau
230 Chatham Way
Westchester, PA 19380