Ex Parte Ball

Board of Patent Appeals and Interferences

Dec 13, 2006

10326449 (B.P.A.I. Dec. 13, 2006)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM T. BALL
____________

Appeal No. 2006-2338
Application No. 10/326,449
Technology Center 3700
____________

ON BRIEF
____________

Before FRANKFORT, CRAWFORD and HORNER, Administrative Patent
Judges.
HORNER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the examiner's
final rejection of claims 1 and 4-6, all of the claims pending in the application.
Claims 2 and 3 have been canceled.
We affirm.
Appeal No. 2006-2338 Page 2
Application No. 10/326,449

BACKGROUND
The appellant's invention relates to an overflow system for a bathtub and a
method of sealing an overflow fluid port of a bathtub for testing for leaks. Claim
4, reproduced below, is representative of the subject matter on appeal. A copy of
all of the claims on appeal can be found in the appendix to the appellant’s brief.
4. An overflow system for a bathtub which has a bottom, and
adjacent side and endwalls, a drain port in the bottom, and
overflow port in an endwall, with said overflow port being in
communication with a vent pipe, comprising:
a drain pipe adapted to be in communication with said
drain port and said overflow port,
said drain pipe having an inverted L-shape, including a
horizontal leg extending into and through the overflow port of
the bathtub and terminating with a flat perimeter edge, and a
vertical leg extending downwardly for connection to a fluid
drain system,
and an expandable plug having a resilient washer with a
smooth and continuous outer perimeter that is removably
positioned in the interior of the horizontal leg and expanded to
frictionally seal the horizontal leg against fluid flow.
Appeal No. 2006-2338 Page 3
Application No. 10/326,449

The examiner relies upon the following as evidence of unpatentability:
Taylor, Jr. et al. (Taylor) 4,683,597 Aug. 04, 1987
Ball 5,890,241 Apr. 06, 1999
Appellant’s admitted Prior
Art (AAPA), Specification,
page 3, line 17 – page 4, line
34

The following rejections are before us for review.
1. Claims 1, 4 and 5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Taylor and AAPA.
2. Claim 6 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over
Taylor, AAPA and Ball.1
Rather than reiterate in detail the conflicting viewpoints advanced by the
examiner and the appellant regarding this appeal, we make reference to the
examiner's answer (mailed February 13, 2006) for the examiner's complete
reasoning in support of the rejections and to the appellant's brief (filed October 14,
2004) and reply brief (filed April 17, 2006) for the appellant's arguments.

OPINION
In reaching our decision in this appeal, we have carefully considered the
appellant’s specification and claims, the applied prior art, and the respective
positions articulated by the appellant and the examiner. As a consequence of our
review, we make the determinations that follow.

1 The examiner withdrew the rejection of claim 6 under 35 U.S.C. § 112, first paragraph.
Answer, p. 3.
Appeal No. 2006-2338 Page 4
Application No. 10/326,449

Rejection of Claims 1, 4 and 5
The appellant argues claims 1, 4 and 5 as a group. As such, we select claim
4 from the group as a representative claim on which to base our decision. See 37
C.F.R. § 41.37(c)(1)(vii) (2004).
In the rejection of independent claim 4, the examiner determined that Taylor
discloses a conventional practice of leak testing a bathtub overflow system of the
type including a drain port, an overflow port, and a drain pipe, in which the
overflow port is closed with an expandable plug during the leak testing. Answer,
p. 3. The examiner found that Taylor teaches all the claimed elements except for
the specific type of overflow system having an inverted L-shape. The examiner
relied on the applicant’s admitted prior art that an inverted L-shape is a common
type of overflow system in the bathtub art. Answer, p. 4. The examiner found that
it would have been obvious to one having ordinary skill in the art at the time the
invention was made to implement the conventional leak testing practice, as taught
by Taylor, on a common inverted L-shape overflow system, as disclosed by the
applicant, to allow leak testing of the overflow system. Answer, p. 4. In
particular, the examiner determined that “a worker in the bathtub overflow system
art would merely need to follow the teachings of Taylor to arrive at the claimed
invention.” Answer, p. 5.
The appellant contends that the examiner failed to particularly identify any
suggestion, teaching, or motivation to combine the prior art references such as the
nature of the problem to be solved, the teachings of the prior art or the knowledge
of persons of ordinary skill in the art. Brief, p. 8. We disagree with the appellant’s
position.
Appeal No. 2006-2338 Page 5
Application No. 10/326,449

We find explicit motivation in the Taylor reference itself to combine its
teaching with the common inverted L-shaped overflow system that would have led
one of ordinary skill in the art to the claimed invention. In particular, as noted by
the examiner on page 3 of the Answer, Taylor teaches that it was known in the
prior art to use an expandable plug, such as a dollar plug with an expandable
rubber “accordion” washer, to seal an overflow drain port during pressure testing.
Taylor, col. 1, lines 15-36. We find, thus, that Taylor teaches using the same
expandable plug for the same purpose of sealing an overflow drain port during leak
testing as in the claimed invention. One having ordinary skill in the art at the time
the invention was made, possessed with the teaching of Taylor and the knowledge
that L-shaped overflow systems were common in the art, would have been led to
apply an expandable plug to an L-shaped overflow system to seal the overflow port
during testing, because the L-shaped overflow system is just another type of
commonly-used drain overflow system, on which leak testing must be performed.
As such, it would have been obvious to one having ordinary skill in the art at the
time the invention was made to have used such an expandable plug on a common
inverted L-shaped overflow drain system in order to perform leak testing as taught
by Taylor.
The appellant also argues that there is no motivation to use an expandable
plug as claimed to seal the overflow drain port, because Taylor discourages the use
of expandable plugs for this purpose due to their tendency to blow out under
pressure. Brief, p. 9. Even if Taylor discourages the use of expandable plugs for
the purpose of pressure testing, it still does not remove the fact that expandable
plugs had been used in the prior art for this purpose. See In re Gurley, 27 F.3d
551, 553, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994) (“A known or obvious
Appeal No. 2006-2338 Page 6
Application No. 10/326,449

composition does not become patentable simply because it has been described as
somewhat inferior to some other product for the same use.”) The applicant has
asserted no discovery beyond what was obvious in view of the prior art.
The appellant further contends that the claimed resilient washer, having a
smooth and continuous outer perimeter, solves the problem of blow out and is an
unobvious improvement over the accordion-style dollar plug disclosed in Taylor.
Brief, p. 9. We see no difference between the resilient washer disclosed in Taylor
and the claimed resilient washer.
Claim 4 recites, “an expandable plug having a resilient washer with a
smooth and continuous outer perimeter.” The dollar plug shown in Figure 1 of
Taylor includes a larger rubber washer (13) having raised areas completely
encircling the washer to form bellows, similar to an accordion. Each raised area is
a strip that forms a smooth and continuous perimeter about the washer. Similarly,
the perimeter of the washer taken about the valley between adjacent raised strips is
also shown as smooth and continuous in Figure 1. The appellant’s claims do not
further limit the shape of the outer surface of the resilient washer to distinguish it
from the accordion-style washer of Taylor. Accordingly, we sustain the
examiner’s rejection of claims 1, 4 and 5 under 35 U.S.C. § 103(a) as being
unpatentable over Taylor in view of AAPA.
Claim 6
The examiner rejected claim 6 under 35 U.S.C. § 103(a) as unpatentable
over Taylor, AAPA and Ball. The examiner found that Ball teaches that it is
common practice to associate a “cover” with an overflow opening and thus it
would have been obvious to associate a cover with the Taylor overflow opening in
order to enhance appearance. Answer, p. 4. The appellant did not separately argue
Appeal No. 2006-2338 Page 7
Application No. 10/326,449

the patentability of claim 6. Rather, the appellant relied on the arguments for
patentability of claims 1, 4, and 5. Brief, p. 10. Finding no separate basis for
patentability of this dependent claim, we also sustain the examiner’s rejection of
claim 6 as unpatentable under 35 U.S.C. § 103(a).

CONCLUSION
To summarize, the decision of the examiner to reject claims 1 and 4-6 is
affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
Appeal No. 2006-2338 Page 8
Application No. 10/326,449

AFFIRMED

)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MURRIEL E. CRAWFORD ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LINDA E. HORNER )
Administrative Patent Judge )
Appeal No. 2006-2338 Page 9
Application No. 10/326,449

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