Ex Parte Bayley

Board of Patent Appeals and Interferences

Jun 25, 2003

08891351 (B.P.A.I. Jun. 25, 2003)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 40
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JEFF BAYLEY
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Appeal No. 2003-0666
Application No. 08/891,351
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HEARD: June 10, 2003
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Before ABRAMS, STAAB, and BAHR, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-8,
which are all of the claims pending in this application.
We REVERSE.
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1The rejection of claims 5-8 was stated as “the art as applied to claim 1 above, and further in view
of Alker.” Since two rejections of claim 1 preceded the rejection of claims 5-8, we assume that the
examiner intends that there also be two rejections of claims 5-8, and we have proceeded on this basis.
BACKGROUND
The appellant's invention relates to a universal drain adaptor kit. An
understanding of the invention can be derived from a reading of exemplary claim 1,
which has been reproduced below.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Wise 938,102 Oct. 26, 1909
Izzi, Sr. (Izzi) 4,423,526 Jan. 3, 1984
Alker 4,920,582 May, 1, 1990
The prior art admitted by the appellant as disclosed in the specification in the last
paragraph of page 7. (AAPA)
Claims 1 and 4 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Wise in view of AAPA.
Claims 1-4 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Wise in view of AAPA and Alker.
Claims 5-8 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Wise in view of AAPA and Izzi.
Claims 5-8 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Wise in view of AAPA, Alker and Izzi.1
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Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the Answer
(Paper No. 34) for the examiner's complete reasoning in support of the rejections, and
to the Brief (Paper No. 31) and Reply Brief (Paper No. 35) for the appellant's arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
According to the appellant, depending upon the structure of the building in which
it is installed, the main drain opening and the overflow drain opening of a bathtub are
provided with either an indirect connection to the P-trap or a direct connection thereto.
In an indirect connection, the vertical section of pipe from the overflow drain opening
extends directly to the P-trap and is joined along the way to a horizontal section of pipe
connecting the main drain opening. In a direct connection a vertical pipe extends from
the main drain opening directly to the P-trap, and the vertical pipe from the overflow
drain opening is connected by a horizontal pipe to the pipe from the main drain opening
(see Figures 1 and 2). The appellant’s invention is a kit that contains the fittings
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needed to construct both the indirect and direct configurations, which allows the
installer to manufacture whichever configuration is required on the scene.
Claim 1 recites the invention in the following manner:
A universal drain adaptor kit for use in association with a bath tub
[sic] having a main drain opening and an overflow drain opening, the
universal drain adaptor kit comprising:
a thermoplastic tee fitting having an attachment bell;
an overflow elbow;
a thermoplastic 90° elbow fitting having an attachment bell;
and an adaptor bushing, said adaptor bushing having:
internal interengaging means for receiving and securing a
drain fitting therein,
an external surface sized and shaped to be secured to either
of the attachment bells of said 90° elbow and said tee fitting,
and
a rim sized and shaped to fit around said main drain opening
in said bathtub,
wherein said kit when combined with drainage piping can be
configured to form either a direct or an indirect drainage
attachment for said bathtub.
All of the rejections are under 35 U.S.C. § 103. The test for obviousness is what
the combined teachings of the prior art would have suggested to one of ordinary skill in
the art. See, for example, In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA
1981). In establishing a prima facie case of obviousness, it is incumbent upon the
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examiner to provide a reason why one of ordinary skill in the art would have been led to
modify a prior art reference or to combine reference teachings to arrive at the claimed
invention. See Ex parte Clapp, 227 USPQ 972, 973 (Bd. Pat. App. & Int. 1985). To this
end, the requisite motivation must stem from some teaching, suggestion or inference in
the prior art as a whole or from the knowledge generally available to one of ordinary
skill in the art and not from the appellant's disclosure. See, for example, Uniroyal, Inc.
v. Rudkin-Wiley Corp., 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert.
denied, 488 U.S. 825 (1988).
Claims 1 and 4 stand unpatentable over Wise in view of AAPA. As we
understand this rejection, it is the examiner’s view that Wise discloses all of the subject
matter recited in claim 1 except for the “thermoplastic bell[s],” but it would have been
obvious to replace the bells disclosed by Wise with thermoplastic bells in view of the
AAPA, that is, the appellant’s admission in his specification that such bells were known
in the art at the time of the invention. According to the examiner, “[i]t would have been
prima facie obvious to employ this modern day fitting scheme in the 1909 disclosure of
Wise. The fittings set forth supra are capable of being used as set forth in the last two
lines [of] claim 1" (Answer, page 2).
Wise is not concerned with providing fittings that will allow a bathtub drain
system to be assembled in two different configurations. Wise discloses an indirect
bathtub drainage system comprising a tee fitting 16 equipped with three compression
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fittings 17 connected to a vertical pipe 19 from the overflow drain, a vertical pipe
communicating with a P-fitting, and a horizontal pipe 15 communicating with the main
drain. From the drawings, all three of the compression fittings on the tee fitting appear
to be the same size, and the reference does not advise otherwise. The patent
describes fittings 5 and 20, which are attached respectively to the main drain and the
overflow drain, as having a “large expanded mouth 6 [22] and a contracted tubular neck
7 [21]” (page 1, lines 81 and 82; page 2, lines 11 and 12). Thus, while the proximal
ends of fittings 5 and 20 appear to be the same size as the three fittings on the tee, it is
clear from the specification and the drawings that the distal ends, which mate with the
main drain fitting and the overflow drain fitting, are larger. The patentee describes the
connection between the expanded mouth of each bell to the tub in the following
manner: “To adapt the bell for attaching to the bottom of the tub, I provide a sheet metal
bushing 9 [23] which has an annular flange 10 [24] formed substantially at right angles
to the part 9 [23]” (page 1, lines 82-86). As shown in Figure 6, the inner surface of the
expanded bell is threaded onto the outer surface of the bushing, and the outer surface
of the flanged strainer is threaded into the inner surface of the bushing.
The arrangement of the adaptor bushings to the expanded bell of the ells and to
the bathtub drain fittings recited in Wise is the same as is recited in the appellant’s
claim 1. However, the reference does not disclose or teach that the adapter bushing
has “an external surface sized and shaped to be secured to either of the attachment
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bells of said 90° elbow and said tee fitting” (emphasis added), for the bushings
disclosed therein fit only one end of each 90° elbow (the expanded end), and do not fit
the other end of the elbow or any of the tee fittings.
The examiner’s theory seems to be that (1) modern thermoplastic fittings all have
the same size attachment bells, (2) it would have been obvious to one of ordinary skill
in the art to employ thermoplastic fittings in the Wise arrangement, (3) this would result
in all of the bells of the tees and the elbows being the same size, and (4) the bushing
used in Wise to connect the bells to the drain fittings then would fit all of the bells,
rather than just to ones on the drain fittings. Implicit in this theory is that the expanded
bell fittings in Wise would be replaced by bells of the same size as the other bells.
From our perspective, however, even if suggestion were to exist for substituting
thermoplastic fittings for the metal fittings disclosed by Wise, we fail to perceive any
teaching, suggestion or incentive which would have led one of ordinary skill in the art to
reduce the size of Wise’s expanded bells to the same size as those of the other bells
on the ells and the tee. Support for this position is found in the fact that Wise does not
recognize the problem solved by the appellant, and thus there would seem to be no
reason to deviate from bell sizes disclosed in the reference.
This being the case, it is our conclusion that Wise and AAPA do not establish a
prima facie case of obviousness with regard to the subject matter recited in
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independent claim 1 or, it follows, in dependent claim 4, and therefore we will not
sustain this rejection.
Claims 1-4 stand rejected as being unpatentable over Wise, AAPA and Alker.
The deficiency discussed above in the combination of Wise and AAPA is not, in our
view, alleviated by Alker. This additional reference discloses a system in which the
same components can be arranged to form either a direct connection or an indirect
connection from the two bathtub drains to a P-trap, which apparently is why the
examiner applied it. However, while in Alker two 90° ells, a tee and an adaptor bushing
are utilized, both ells and the tee have one attachment bell that is larger than the other
bells in order to accommodate the larger openings in the bathtub drains. Therefore, in
this regard Alker is no different than Wise and, as was the case in Wise, the adaptor
bushing does not have an external surface sized and shaped to be secured to either of
the attachment bells of the ells and the tee, as is required by claim 1. The rejection of
independent claim 1 and dependent claims 2-4 is not sustained.
Izzi is added to either of the above combinations of references to reject claims 5-
8. Izzi is applied for teaching providing a raised rib on the adaptor of a plumbing drain
pipe to interface with a seal. Be that as it may, Izzi fails to overcome the problems
explained above with regard to claim 1, and therefore neither of the rejections of claims
5-8 is sustained.
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Since we have not sustained any of the rejections, there is no reason for us to
consider the appellant’s Rule 132 declarations directed to secondary considerations of
nonobviousness (Papers No. 14 and 19), and we therefore shall not comment upon
them.
CONCLUSION
None of the rejections are sustained.
The decision of the examiner is reversed..
REVERSED
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NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
NEA/lbg
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