Ex Parte Blum et al

Patent Trial and Appeal Board

Jan 29, 2018

14169686 (P.T.A.B. Jan. 29, 2018)

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.
14/169,686 01/31/2014 Gerhard Blum SMB-PT402.1 6097
3624 7590
VOLPE AND KOENIG, P.C.
UNITED PLAZA
30 SOUTH 17TH STREET, 18th Floor
PHILADELPHIA, PA 19103
EXAMINER
GANEY, STEVEN J
ART UNIT PAPER NUMBER
3752
NOTIFICATION DATE DELIVERY MODE
01/31/2018 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):
eoffice @ volpe-koenig. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERHARD BLUM, HERMANN GRETHER,
GEORG STADTLER, ALEXANDER STEIN, CHRISTOPH WEIS,
and OLIVER DENZLER
Appeal 2016-001495
Application 14/169,686
Technology Center 3700
Before STEFAN STAICOVICI, WILLIAM A. CAPP, and
ANTHONY KNIGHT, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Appellants2 seek our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1—3 and 5—10 under 35 U.S.C. § 102(b) as anticipated by
Grether (US 2008/0111007 Al, pub. May 15, 2008), and claim 4 as
unpatentable under 35 U.S.C. § 103(a) over Grether. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 This matter came before the Board for regularly scheduled oral hearing on
January 23, 2018.
2 Appellants identify Neoperl GmbH as the real-party-in-interest. Appeal
Br. 4.
Appeal 2016-001495
Application 14/169,686
THE INVENTION
Appellants’ invention relates to outlet fittings for a water spout.
Spec. 12. Claim 1, reproduced below with paragraph indentation added, is
illustrative of the subject matter on appeal.
1. Sanitary functional unit (1, 2, 3, 4, 5, 40, 41, 42),
comprising:
a housing (6), which can be releasably fastened to a water
outlet of a sanitary outlet fitting,
the housing (6) having an outflow-side housing end face (9)
with outflow openings (10),
the outflow-side housing end face (9) has at least one slot
(19), which comprises opposing longitudinal sides (20) that
form turning engagement surfaces or tool engagement surfaces
for a turning tool adapted to be releasably inserted into the at
least one slot, and
the housing (6) of the functional unit (1,2,3,4,5, 40,41,
42) is rotatably held on the water outlet of the outlet fitting,
the housing end face (9) is mounted rotatably in relation to
the housing (6) on said housing, or
the housing is rotatably held on the water outlet of the outlet
fitting.
OPINION
Anticipation of Claims 1—3 and 5—10 by Grether
Appellants argue claims 1—3 and 5—10 as a group. Appeal Br. 8—14.
We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(l)(iv) (2016).
The Examiner finds that Grether discloses all of the elements of
claim 1. Final Action 2—3. In particular, the Examiner finds that Grether
element 31 corresponds to Appellants’ slot 19 and that Grether’s element 30
corresponds to Appellants’ opposing longitudinal sides.
Appellants argue that Grether discloses a “castellated” portion with a
“profiled circular edge” that differs from the claimed structure. Appeal
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Application 14/169,686
Br. 10. Furthermore, Appellants contend that Grether does not disclose a
“slot” under Appellants’ proposed construction of the term. Id. at 10-13.
Finally, Appellants argue that Grether fails to disclose an end face with
outflow openings as claimed. Id. at 13—14.
Determining whether claims are anticipated involves a two-step
analysis. In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012). The
first step involves construction of the claims at issue. Id. The second step of
an anticipation analysis involves comparing the claims to prior art. Id. A
prior art reference anticipates a claim under 35 U.S.C. § 102(b) if it discloses
every claim limitation. Id.
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under
the broadest reasonable interpretation standard, claim terms are given their
ordinary and customary meaning as would be understood by one of ordinary
skill in the art in the context of the entire disclosure. In re Translogic Tech.,
Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). During patent prosecution when
claims can be amended, ambiguities should be recognized, scope and
breadth of language explored, and clarification imposed. See In re Zletz, 893
F.2d 319, 321 (Fed. Cir. 1989). Construing claims broadly during
prosecution is not unfair to the applicant, because the applicant has the
opportunity to amend the claims to obtain more precise claim coverage. In
re Am. Acad. ofSci. Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2012).
Appellants offer a common English language dictionary definition of
“slot” as: (a) a narrow opening or groove, slit, notch; or (b) a narrow
passage or enclosure. Appeal Br. 12. Appellants direct our attention to
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Application 14/169,686
paragraphs 64 and 65 of the Specification as being consistent with their
dictionary definition. Id. at 13. Similarly, Appellants offer a common
English language dictionary definition of “face.” Reply Br. 7. Based, in
part, on these definitions, Appellants argue that Grether lacks a “slot” in its
“end face.” Id. at 7—8. Appellants argue that Grether elements 30 and 31
extends beyond Grether’s perforated plate 6 and, therefore, cannot be
considered to be part of the plate. Id.
An exemplary embodiment of Appellants’ preferred device is
illustrated in Figures 3 and 4 of Appellants’ disclosure. The outflow end of
the device illustrated in Figure 4 exhibits a central (or radially inward)
portion that incorporates a plurality of outflow openings 10. Spec. 60,
Figs. 1, 3, and 4. The outflow end also exhibits a radially outward or “rim”
portion. Id. Essentially, Appellants contend that the “end face” should be
limited to the central or radially inward portion that contains the outflow
openings and exclude the radially outward or rim portion. However,
Appellants do not direct us to any language in the Specification that would
restrict the “end face” to only a central portion to the exclusion of a radially
outward, rim portion of the outflow end of the device. Upon review of the
Appellants’ Specification and Figures, we determine that the broadest,
reasonable construction of “end face” includes the entirety of the surface of
the outflow end of the device, including a rim portion.
Having thus construed “end face,” we determine that the claimed slot
may be disposed anywhere in the “end face,” including, in whole or in part,
being disposed in a rim portion thereof. See Claims App., claim 1 (“the
outflow-side housing end face (9) has at least one slot”). The claim
language merely requires that there be an “end face” with both outflow
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Application 14/169,686
openings and a slot. Id. Contrary to Appellants’ position, there is no
requirement in the claim that the “slot” be disposed such that outflow-
openings are disposed within the slot.3
The Examiner finds that Grether’s Figure shows perforated plate 6 at
the outlet end which satisfies Appellants’ claim limitation directed to an end
face with outflow openings. Ans. 4. With respect to the claimed slot, the
Examiner directs our attention to paragraph 32 of Grether as disclosing a slot
with opposing longitudinal sides. Id.
Grether is directed to an insertion cartridge that is inserted in a
discharging plumbing fixture. Grether, Abstract. Housing 5 of Grether has
perforated plate 6 embodied in one piece therewith at its outlet end. Id. 125.
The outlet end exhibits profiled circular edge 29 that contacts an assembly
tool. Id. 132. Circular edge 29 has circular wall sections 30 with
interruptions 31 located therebetween. Id. The interruptions are sized such
that the circular wall sections 30 fit into an identical insertion cartridge. Id.
The profiling of the circular edge is sized and shaped so that an identical
cartridge, oriented upside down, can be used as an assembly tool to engage
the profiled circular edge to screw the cartridge in and out. Id.
With respect to Appellants’ “end face” argument, we agree with the
Examiner that Grether’s perforated plate 6 corresponds to Appellants’
claimed end face with outflow openings. Perforated plate 6 is disposed at
the outflow side of the unit. Grether 125, Fig. A person of ordinary skill in
the art would understand the perforations in perforated plate 6 as “outflow
openings” within the meaning of claim 1. Grether’s profiled circular
3 In other words, there is no requirement that the slot and any of the outflow
openings be co-located.
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Application 14/169,686
edge 29 is disposed at the circumferential perimeter of perforated plate 6.
Id. 126, Fig. (showing structure of housing 5 and perforated plate 6
extending laterally to the internal wall 14 of the discharging plumbing
fixture 4). Thus, Grether’s profiled edge 29 forms at least a portion of
Grether’s “end face.” Id.
With respect to Appellants’ “slot” argument, once again, the
Examiner has stated the better position. The Examiner explains that
Grether’s circular wall sections of circular edge 29 exhibit opposing
longitudinal sides at interruptions 31.
As to the opposing longitudinal sides that form turning
engagement surfaces or tool engagement surfaces, note that
longitudinal sides 30 clearly show opposing longitudinal sides
of the slot 31 in the Figure of Grether, which form turning
engagement surfaces or tool engagement surfaces, see
paragraph [0032], There are no further limitations as to the
length of the longitudinal sides or whether the longitudinal
sides extend across the face of the outflow-side housing end
face.
Ans. 4—5.
We agree with the Examiner that there is no requirement in the claim
that the “slot” is disposed in the center of the end face as opposed to its
periphery. Neither is there any requirement that the longitudinal sides have
any particular length. Grether’s profiled edge forms a curvilinear narrow
opening, slit, or notch, i.e., a “slot,” near the outer periphery of Grether’s
end face. We do not construe “end face” as excluding the radially outward
or rim portion of the outflow end of the sanitary unit. Thus, Grether’s
disclosure of a profiled end at the outflow end that contacts an assembly tool
is sufficient to support the Examiner’s finding by a preponderance of the
evidence.
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Application 14/169,686
In view of the foregoing, we sustain the Examiner’s anticipation
rejection of claims 1—3 and 5—10.
Unpatentability of Claim 4 over Grether
Appellants do not argue for the separate patentability of claim 4. This
constitutes a waiver and, consequently, we summarily sustain the rejection.
See 37 C.F.R. § 41.37(c)(l)(iv) (failure to separately argue claims).
DECISION
The decision of the Examiner to reject claims 1—10 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)(l)(iv).
AFFIRMED
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