Ex Parte Chapman

Board of Patent Appeals and Interferences

Feb 28, 2002

09141637 (B.P.A.I. Feb. 28, 2002)

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for publication and is not binding precedent of the Board.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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DAVID KEITH CHAPMAN
____________
Appeal No. 2001-0680
Application No. 09/141,637
____________
ON BRIEF
____________
Before McCANDLISH, Senior Administrative Patent Judge, COHEN and
STAAB, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1, 3, 4, 8 and 9, which all the claims
currently pending in the application.
Appellant’s invention pertains to a portable toilet or potty
for children. As illustrated in Figures 1 and 2, the portable
toilet comprises a base 1 having a floor with a raised portion 4, a
removable seat 7 having a circular rim 8, and a lid 12. A further
Appeal No. 2001-0680
Application No. 09/141,637
1Our understanding of this reference is derived from a
translation prepared in the PTO, a copy o which is attached to
this decision.
2On page 3 of the brief, the examiner has taken it upon
himself to decide that this merits panel of the Board should
select claim 9 as the representative claim in this appeal, and
that therefore it is not necessary for the examiner to include
the rejections of claims 1, 3, 4 and 8, or to list the Luders and
Klinger references additionally applied in these rejections, in
the answer. This is clearly improper. 37 CFR § 1.192(c)(7)
states that for each ground of rejection which appellant contests
and which applies to a group of two or more claims, the Board
shall select a single claim from the group and decide the appeal
as to that ground of rejection on the basis of that claim alone
unless appellant states that the claims do not stand or fall
together and provides appropriate arguments as to why the claims
do not stand or fall together. We know of no circumstances under
which the examiner should use this rule to “streamline” the
(continued...)
2
understanding of the invention can be derived from a reading of
exemplary claim 9, which is reproduced in the appendix to
appellant’s brief.
The references applied in the final rejection are:
Moore 186,264 Jan. 16, 1877
Luders 25,300 Dec. 20, 1883
(German Patent)
Hawkins 22,019 Oct. 3, 1896
(British Patent)
Ritter1 96,447 Oct. 16, 1922
(Swiss Patent)
Klinger 236,594 Mar. 15, 1984
(Austrian Patent)
The following rejections under 35 U.S.C. § 103 are before us
for review:2
Appeal No. 2001-0680
Application No. 09/141,637
2(...continued)
answer as was done here. However, in light of our determination
that the examiner’s foundation combination of Hawkins, Ritter and
Moore is not sound, the above procedural error is mute.
3
(1) claim 9, unpatentable over Hawkins, Ritter and Moore;
(2) claims 1, 3 and 4, unpatentable over Hawkins, Ritter and
Moore as applied in the rejection of claim 9, and further in view
of Luders; and
(3) claim 8, unpatentable over Hawkins, Ritter, Moore and
Luders as applied in the rejection of claim 1 et al., and further
in view of Klinger.
Discussion
Concerning the basic combination of Hawkins, Ritter and Moore,
the examiner contends that it would have been obvious in Hawkins to
support the funnel shaped cover A thereof utilizing both the
container floor (as in Figure 5) and the container rim (as in
Figure 2), and that when this is done, the resulting hybrid chamber
pot and cover combination would “teach[] all claimed elements
except for the seat extending ‘inwardly away’ from the container
side wall, and for the container floor including a raised portion”
(answer, page 4). However, the examiner considers that it would
have been obvious to inwardly extend the “rim/seat” of Hawkins’
funnel shaped cover “in order to provide better, wider, user
Appeal No. 2001-0680
Application No. 09/141,637
3Interestingly, the examiner’s tertiary reference to Moore
also does not indicate that the rim of the “chamber vessel”
thereof is intended to be sat upon in use.
4
support” (answer, page 5) in view of Ritter, and that it would have
been further obvious to provide the container of Hawkins with a
raised floor portion in view of Moore.
At the outset, it is not clear to us that the rim of Hawkins’
chamber pot is intended to be sat upon in use. In this regard,
Hawkins does not disclose that the user sits on the chamber pot
when using it, and appellant’s argument on page 4 of the brief that
the width of the rim of the pot is too narrow for it to be used as
a seat is reasonable.3 Accordingly, the examiner’s denomination of
element A of Hawkins as a “seat portion” and element C as a
“rim/seat” throughout the answer is not well taken.
As to the proposed initial modification of Hawkins, the
examiner’s position that it would have been obvious to support the
funnel shaped cover A of the Figure 5 embodiment of Hawkins at both
the floor and the rim of the chamber pot is not persuasive in the
absence of evidence to support such a position. While we
appreciate that the Figure 2 and Figure 5 embodiments of Hawkins
show the cover A being supported at the rim and floor of the
container, respectively, we discern no teaching or suggestion in
Appeal No. 2001-0680
Application No. 09/141,637
5
Hawkins or Ritter or Moore, and the examiner has pointed to no such
teaching or suggestion, that would indicate that these alternative
constructions should be combined, or that either one alone is
inadequate for its intended purpose of supporting and positioning
the cover relative to the chamber pot. Simply put, nothing in
Hawkins or Ritter or Moore teaches or suggests providing a “seat”
that would be supported at both the rim and bottom of the container
in use, as now claimed. For this reason alone, the standing
rejection of claim 9 cannot be sustained.
Moreover, we also do not agree with the examiner that it would
have been obvious to extend the rim of the initially modified
funnel shaped cover of the Figure 5 embodiment of Hawkins inwardly
away from the container side wall in view of Ritter. One reason
for our disagreement with the examiner on this point is that we do
not regard the Ritter device as being “an analogous potty” (answer,
page 5) with respect to Hawkins. As is made clear from a reading
of the attached translation of Ritter, this reference pertains to a
container for holding waste matter of a domestic animal such as a
cat. Thus, the Ritter device is more akin to a litter box than the
chamber pot of Hawkins. In view of the intended use of Ritter as a
waste management device for a domestic animal such as a cat,
wherein the cover is apparently configured to allow the animal to
Appeal No. 2001-0680
Application No. 09/141,637
6
stand on the rim thereof (translation, page 3), the examiner’s
contention that it would have been obvious in view of Ritter “to
inwardly extend the seat associated with the Hawkins potty in order
to provide better, wider, user support” (answer, page 5) is
strained. Another reason for our disagreement with the examiner on
this point concerns the examiner’s two stage modification of the
Figure 5 embodiment of Hawkins. Simply put, the examiner’s
reconfiguration of Hawkins wherein the rim of the Figure 5
embodiment is first extended outwardly in view of the Figure 2
embodiment thereof and then extended inwardly in view of Ritter
appears to us to be a hindsight reconstruction based on appellant’s
own teachings rather that anything that is fairly taught by
Hawkins, Ritter and/or Moore.
As a final point, we note that on page 7 of the answer, the
examiner also makes much of the fact that several advantages urged
by appellant for the claimed construction have not specifically
been mentioned in the specification. However, simply because they
have not been included in the specification does not mean that such
advantages need not be considered, as the examiner apparently
believes. See In re Chu, 66 F.3d 292, 298, 36 USPQ2d 1089, 1094
(Fed. Cir. 1995).
Appeal No. 2001-0680
Application No. 09/141,637
7
In light of the foregoing, the examiner’s rejection of claim 9
as being unpatentable over Hawkins in view of Ritter and Moore
cannot be sustained.
Concerning the rejection of claims 1, 3 and 4 further in view
of Luders, and the rejection of claim 8 further in view of Luders
and Klinger, these additional references have been applied for
reasons other than for the deficiencies attributed to Hawkins
discussed above. For this reason, the rejections of these claims
also cannot be sustained.
The decision of the examiner is reversed.
REVERSED
HARRISON McCANDLISH )
Senior Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
Appeal No. 2001-0680
Application No. 09/141,637
8
LJS/lp
TIM HEADLEY
HAYNES AND BOONE
1000 LOUISIANA STREET
SUITE 4300
HOUSTON TX 77002-5012