Ex Parte Castellote

Board of Patent Appeals and Interferences

Jul 30, 2009

10448438 (B.P.A.I. Jul. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MIGUEL CASTELLOTE
____________

Appeal 2008-000256
Application 10/448,438
Technology Center 3700
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Decided:1 July 30, 2009
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Before WILLIAM F. PATE III, LINDA E. HORNER, and
KEN B. BARRETT, Administrative Patent Judges.

WILLIAM F. PATE III, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Application 10/448,438

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STATEMENT OF CASE
This is an appeal from the final rejection of claims 1, 4, 6, 7, 32, and
33. Claim 8 stands objected to as allowable if rewritten in independent
form. Claims 2, 3, 5, and 9-31 have been cancelled. We have jurisdiction
over the appeal under 35 U.S.C. §§ 134 and 6.
The claimed subject matter is directed to an air jet for an air massage
system used with a bathtub. A hollow body of the air jet has a flange which
can be mounted to the hidden surface of the wall of the bathtub by adhesive.
Claim 1, reproduced below, is further illustrative of the claimed
subject matter.
1. An air jet for an air massage system for use with a
bathtub having a wall defining opposite visible and hidden
surfaces, at least one opening being defined through the wall,
comprising:

a hollow body having an inlet and outlet and adapted to
receive a unidirectional flow device therebetween, said inlet
being adapted to be in fluid communication with a source of
pressurized air, said unidirectional flow device being disposed
for allowing air therethrough only in a direction from said inlet
to said outlet; and

a flange connected to the outlet and adapted to be
mounted to the hidden surface of the wall of the bathtub
opposite the opening such that air passing through the hollow
body passes through the opening in the wall of the bathtub, the
flange comprising:
- holes extending through the flange; and
- a recess being defined between the flange and the
hidden surface of the wall, the recess being in fluid
communication with said holes for introducing an adhesive in
said recess through said holes, said recess being open between
the flange and the hidden surface of the wall of the bathtub for
introducing said adhesive in said recess;
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whereby the air jet is secured only to the hidden surface
of the bathtub without any portion of the air jet extending
beyond the visible surface of the bathtub during operation of
the air jet.

REFERENCES
The references of record relied upon by the examiner as evidence of
obviousness are:
Dupont US 4,387,854 Jun. 14, 1983
Sandrin US 5,546,617 Aug. 20, 1996
Dieudonne (As translated) EP 313,488 Apr. 26, 1989

REJECTIONS
Claims 1, 4, and 33 stand rejected under 35 U.S.C. § 103 as
unpatentable over Dieudonne in view of Sandrin.
Claims 6, 7, and 32 stand rejected under 35 U.S.C. § 103 as
unpatentable over Dieudonne in view of Sandrin, and further in view of
Dupont.
A rejection of claims 1, 4, and 33 as anticipated by Sandrin has been
withdrawn by the Examiner in the Examiner’s Answer.
On page 4 of the Brief, Appellant raises the issue of an objection
made to the specification. This issue relates to a petitionable matter and is
not subject to review by this Board.

ISSUES
Appellant argues that while Dieudonne discloses a hidden jet, the
Sandrin jet is not hidden and that a separate ring nut 10 is used to mount the
jet in the hole in the bathtub wall. Thus, according to Appellant, if the
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teaching of Sandrin were used to attach the jet of Dieudonne to a bathtub
wall, the air jet would no longer be hidden due of the presence of ring nut 10
on the visible side of the bathtub. Thus, the sole issue for our consideration
is whether Appellant has established that the Examiner erred in concluding
that the combined teachings of Dieudonne and Sandrin would have
suggested the claimed subject matter to one of ordinary skill.

FINDINGS OF FACT
1. Dieudonne discloses an air jet for an air massage system used
in a bathtub 2 and at least one opening 3 defined thru the wall
thereof. See translation, page 3, ll. 11-18. The hollow body of
Dieudonne has a check valve or unidirectional flow device
having a movable element 4 and a valve seat 5. The air jet is
connected to the hidden wall of the bathtub 2 by the use of
flange 6. The flange is adhered onto the hidden wall of the
bathtub using reinforcement mass 7 formed of a resin which
adheres the flange to the hidden wall of the bathtub as by
gluing. See translation, page 3, ll. 21 – page 4, l. 3.
Dieudonne differs from the claimed subject matter, since it
does not disclose holes through the flange or a recess defined
between the flange and the hidden surface of the bathtub.
2. Dieudonne recognizes the desirability of attaching the hollow
body to the interior of the bathtub without having any element
protrude inside the bathtub so that there is nothing remaining to
bother the user and the esthetics of the bathtub are improved.
See translation, page 4, ll. 4-9.
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3. Sandrin also discloses an air jet having a hollow body that is
affixed to the hidden surface of a bathtub. Sandrin is fastened
to the bathtub wall by a ring nut 10 and by a silicone sealant
injected to fill the recess 14 defined between the hollow body
end surface or flange 12 and the hidden bathtub wall. See col.
3, ll. 3-12 and ll. 13-19. Recess 14 is also characterized by
through holes 19 and 18 by which the silicone is injected into
the recess via hole 19 and air is vented from the diametrically
opposed vent hole 18. See col. 3, ll. 20-43. Sandrin differs
from the claimed subject matter in that, in addition to silicone,
Sandrin also discloses a ring nut 10 to hold the hollow body in
place.

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 406-407 (“While the sequence of these questions
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might be reordered in any particular case, the [Graham] factors continue to
define the inquiry that controls.”).
While there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness, “the analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR,
550 U.S. at 418.
When a work is available in one field of endeavour, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.
Id. at 417. We “must ask whether the improvement is more than the
predictable use of prior art elements according to their established
functions.” Id.

ANALYSIS
As noted above, Dieudonne recognizes the desirability of mounting
the hollow body to the hidden side of the bathtub with no structure
protruding into the bathtub. Dieudonne discloses a flange which is merely
covered by the adhesive. Sandrin, on the other hand, shows a method of
providing a recess under a flange so that the flange side in contact with the
bathtub has adhesive between the flange and the bathtub. Sandrin discloses
that holes provide the necessary insertion point for the silicone to enter the
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recess between the bathtub and the flange. Therefore, it would have been
obvious to use the recess with insertion holes disclosed in Sandrin to fasten
the flange of Dieudonne to the hidden wall of the bathtub. This is merely
applying a known technique to a known device, ready for improvement, to
yield predictable results.
Appellant argues that when the teachings of Sandrin and Dieudonne
are considered together, one of ordinary skill would be compelled to use the
ring nut 10 which Sandrin discloses as part of his mounting structure. We
disagree. First of all, Dieudonne clearly recognizes the benefits of attaching
only to the hidden side of the tub. Secondly, while Sandrin discloses
multiple techniques to connect the hollow body to the tub, the technique of
using a recess to secure a flange to the wall with an adhesive or sealant is
clearly taught by Sandrin. Such a technique is a clear improvement to the
attachment of the flange in Dieudonne (since the silicone resides between
the flange and the tub wall instead of merely covering the flange) and would
have yielded predictable results. Appellant’s argument is based on the
erroneous notion that one of ordinary skill is a mere automaton that could
not pick and choose from a set of appropriate techniques to select one that
actually improves the adhesion and sealing onto a tub.
With respect to the rejection of claims 6, 7 and 32, Appellant relies
upon the same argument. As noted above, this argument fails to convince us
that the Examiner erred in rejecting the claimed subject matter.
DECISION
Appellant has failed to establish that the Examiner erred in rejecting
claims 1, 4, 6-7, 32, and 33 under § 103.
The rejections of claims 1, 4, 6-7, 32, and 33 are affirmed.
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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) (2007).

AFFIRMED

Vsh

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