Ex Parte Clark

Patent Trial and Appeal Board

Feb 28, 2013

11003050 (P.T.A.B. Feb. 28, 2013)

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.
11/003,050 12/03/2004 Michael L. Clark 0095-226 6494
22298 7590 03/01/2013
MICHAEL H JESTER
505 D GRAND CARIBE CAUSEWAY
CORONADO, CA 92118
EXAMINER
KIM, CHRISTOPHER S
ART UNIT PAPER NUMBER
3752
MAIL DATE DELIVERY MODE
03/01/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL L. CLARK
____________

Appeal 2011-000357
Application 11/003,050
Technology Center 3700
____________

Before STEVEN D.A. McCARTHY, ANNETTE R. REIMERS and
CARL M. DeFRANCO, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Michael L. Clark (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision to reject under 35 U.S.C. § 102(b): (1) claims 31, 33
and 37 as anticipated by Alkalai (US 5,641,122; issued Jun. 24, 1997); (2)
claims 31, 33 and 36 as anticipated by Clark (US 5,375,768; issued Dec. 27,
1994); and (3) claims 31, 33 and 37 as anticipated by Lockwood (US
4,417,691; issued Nov. 29, 1983).1,2 Claims 1-30, 32 and 35 have been
canceled. We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellant’s invention relates to a sprinkler having an internal turbine
to rotate a nozzle to distribute water over landscaping. Spec.1, ll. 7-8; fig. 4.
Claim 31, the sole independent claim, is illustrative of the claimed
invention and reads as follows:
31. A sprinkler, comprising:
an outer housing having a lower end connectable
to a source of pressurized water;
a riser vertically reciprocable along a vertical axis
within the outer housing between extended and retracted
positions when the source of pressurized water is turned
ON and OFF;
a nozzle mounted at an upper end of the riser for
rotation about the vertical axis;
a turbine;

1 Appellant incorrectly lists claim 34 as being rejected and subject to this
appeal. App. Br. 2. The Examiner properly addresses this error in the
Examiner’s Answer. Ans. 2.
2 Claim 34 has been objected to as being dependent upon a rejected base
claim, but would be allowable if rewritten in independent form including all
the limitations of the base claim and any intervening claims. See Final Rej.,
4.
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a plurality of mating case members joined together
to form a hollow container and dimensioned to slide
inside the riser; and
a self-contained drive subassembly mounted inside
the hollow container formed by the joined case members,
the self-contained drive subassembly including a drive
mechanism that connects between the turbine and the
nozzle so that when the source of pressurized water is
turned ON the resulting rotation of the turbine by the
pressurized water will rotate the nozzle, the drive
mechanism including a gear train reduction and a
reversing mechanism for causing the nozzle to rotate
between a pair of arc limits.

ANALYSIS
The anticipation rejection based upon Alkalai
Claims 31, 33 and 37
Appellant argues the rejection of claims 31, 33 and 37 together as a
group. App. Br. 5. Therefore, we select claim 31 as the representative
claim, and claims 33 and 37 stand or fall with claim 31. See 37 C.F.R.
§ 41.37(c)(1)(iv)(2012).
Independent claim 31 requires “a plurality of mating case members
joined together to form a hollow container.” App. Br., Claims Appendix.
The Examiner finds that Alkalai teaches “a plurality of mating case members
54, 60 joined together (via tooth members 70; see column 6, lines 13-18) to
form a hollow container (housing 60 is hollow; housing 54 is hollow; space
surrounded by tooth members 70 is hollow).” Ans. 3. The Examiner further
takes the position that
The hollow container defines three chambers: one
within housing 60; a second within housing 54;
and a third enclosed by tooth members 70, lower
part of housing 60 and upper part of housing 54.
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These three chambers are connected by the
passageway that is occupied by shaft 56. These
three chambers house the planetary gear assembly
52, the reversing mechanism 100, 140 and the
turbine 58.

Ans. 7.

Appellant argues that housing 54 and housing 60 of Alkalai “do not
form a hollow container when joined,” as required by Claim 31. App. Br. 5.
According to Appellant, housings 54 and 60 of Alkalai “are not mating case
members but are separate enclosures that are only indirectly coupled through
[] a ‘direction changing assembly’ [i.e., reversing mechanism 100, 110 and
140].” Id. (citing Alkalai, col. 5, ll. 50-52). Appellant further argues that
Alkalai fails to teach that the gear train reduction and the reversing
mechanism are both contained within the same hollow container formed by
the joined case members, as required by claim 31. Id. According to
Appellant, the “direction changing assembly” (i.e., reversing mechanism
100, 110 and 140) of Alkalai (1) “is not contained within either housing 54
or housing 60;” and (2) “is [] not contained within housing 54 along with the
planetary gear assembly 52 [the gear train reduction].” Id.
At the outset, we agree with the Examiner that engagement of the
tooth members 70 of housing (chamber) 54 with the tooth members of
housing (chamber) 60 results in the formation of a hollow chamber. Ans. 6-
7; Alkalai, col. 6, ll. 13-17; figs. 2-3. We note that Alkalai teaches that shaft
56 is received in collar 80, which is (1) integrally formed with housing
(chamber) 54; and (2) seated in a recess formed on the underside of housing
(chamber) 60. Alkalai, col. 6, ll. 22-26; fig. 1. As such, we further agree
with the Examiner that housing (chamber) 54, housing (chamber) 60 and the
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hollow chamber formed by the engaged teeth of housing (chamber) 54 and
housing (chamber) 60 are connected (joined/mated) to each other via shaft
56. We further note that Alkalai teaches that (1) hollow housing (chamber)
54 houses planetary gear assembly (gear train reduction) 52; and (2) hollow
housing (chamber) 60 houses turbine 58. Alkalai, col. 5, ll. 38-46. In
addition, we find that Alkalai teaches that the hollow chamber formed by the
engaged teeth of housing (chamber) 54 and housing (chamber) 60 houses the
reversing mechanism 100, 140. Alkalai, col. 6, ll. 13-17; col. 7, ll. 32-39;
figs. 1-2. Hence, we also agree with the Examiner that the three hollow
chambers, (i.e., housing 54, housing 60 and the hollow chamber formed by
the engaged teeth of housing (chamber) 54 and housing (chamber) 60),
joined/mated together by shaft 56, collectively form a hollow container that
houses the planetary gear assembly (gear train reduction) 52, the reversing
mechanism 100, 140 and the turbine 58, as required by claim 31.
Consequently, we find that Alkalai teaches “a plurality of mating case
members joined together to form a hollow container,” as required by claim
31. Accordingly, the rejection of claim 31 and of claims 33 and 37, which
fall with claim 31, under 35 U.S.C. § 102(b) as anticipated by Alkalai is
sustained.
The anticipation rejection based upon Clark
Claims 31, 33 and 36
Appellant argues the rejection of claims 31, 33 and 36 together as a
group. App. Br. 6. Therefore, we select claim 31 as the representative
claim, and claims 33 and 36 stand or fall with claim 31. See 37 C.F.R.
§ 41.37(c)(1)(iv)(2012).
Independent claim 31 requires “a plurality of mating case members
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joined together to form a hollow container.” App. Br., Claims Appendix.
The Examiner finds that Clark teaches “a plurality of mating case members
(38, 36 and housing of gear train 26) joined together to form a hollow
container (sleeve 36 is hollow and the housing of gear train 26 is hollow).”
Ans. 5. Appellant argues that (1) the reversing mechanism of Clark is
“outside of the housing that contains the gear train 26;” and (2) sleeve 36
and lower rim 38 of Clark “do not form a pair of mating case members that
contain the gear train 26 and reversing mechanism,” as required by the
claims. App. Br. 6.
At the outset, we agree with the Examiner that the claim language
“plurality of mating case members” under its broadest reasonable
interpretation is not limited to a single pair of mating case members, as
proposed by Appellant. Ans. 7; App. Br. 6. While Appellant’s Specification
describes an embodiment in which a pair of case members forms the hollow
container (Spec. 14, ll. 1-6), we are not constrained to read any such direct
connection into claim 31 when Appellant has chosen to claim the invention
using broad language, which under the broadest reasonable interpretation,
does not place an upper limit on the number of case members forming the
container. See In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997) (“Absent
an express definition in their specification, the fact that appellants can point
to definitions or usages that conform to their interpretation does not make
the PTO’s definition unreasonable when the PTO can point to other sources
that support its interpretation”).
We agree with the Examiner that the broadest reasonable
interpretation of the term “plurality of mating case members” does not
preclude reading of the term “plurality of mating case members” on Clark’s
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(1) the gear train 26 housing; (2) the elements connected to and above the
gear train 26 that houses the reversing mechanism; and (3) the sleeve 36 and
lower rim 38. Ans. 7. We further agree with the Examiner that (1) these
elements (case members) are all connected (joined/mated) by the turbine
shaft and the gear train shaft (60); and (2) these elements (case members)
house, therein, the gear train 26, reversing mechanism, and turbine 56. Ans.
7-8.
Consequently, we agree with the Examiner that “[the plurality] of case
members [join together/mate to] form a hollow container having chambers
that house the turbine, gear train and reversing mechanism,” as required by
claim 31. Id. Thus, we find that Clark teaches “a plurality of mating case
members joined together to form a hollow container,” as required by claim
31. Accordingly, the rejection of claim 31 and of claims 33 and 36, which
fall with claim 31, under 35 U.S.C. § 102(b) as anticipated by Clark is
sustained.
The anticipation rejection based upon Lockwood
Claims 31, 33 and 37
Appellant argues the rejection of claims 31, 33 and 37 together as a
group. App. Br. 6. Therefore, we select claim 31 as the representative
claim, and claims 33 and 37 stand or fall with claim 31. See 37 C.F.R.
§ 41.37(c)(1)(iv)(2012).
Independent claim 31 requires “a plurality of mating case members
joined together to form a hollow container.” App. Br., Claims Appendix.
The Examiner finds that Lockwood teaches “a plurality of mating case
members 38, 56 (including the element above [] 56 that houses element 88)
joined together to form a hollow container (hollow because it has the ability
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to contain reversing wheel 60, turbine wheel 84, gear train chamber 88).”
Ans. 6.
Appellant argues (1) “[s]upport plate 38 and drive assembly housing
56 of Lockwood are two structural elements of the same molded part and do
not ‘mate’ to form a hollow container for the gear train reduction 90, 92, 94
and 96”; and (2) “[t]he reversing mechanism including reversing wheel 60 is
below and clearly not within the gear train chamber 88 that houses the gear
train reduction 90, 92, 94 and 96.” Reply Br. 2.
At the outset, we agree with the Examiner that the broadest reasonable
interpretation of the term “plurality of mating case members” does not
preclude reading of the term “plurality of mating case members” on
Lockwood’s (1) “the single element having parts/sections 38 and 56 (support
plate and housing, respectively);” and (2) “the two piece elements that
encase the drive train chamber 88.” Ans. 8. We note that Lockwood teaches
that (1) “the [reversing] wheel 60 is secured for rotation with a vertical shaft
58 extending upwardly within the drive assembly housing 56;” and (2) “the
lower end of [the] vertical shaft 58 is carried within hub 66 of wheel 60
seated within mating boss 68 formed in the support plate 38.” Lockwood,
col. 6, ll. 34-38; fig. 3. As such, we further agree with the Examiner that (1)
these elements (case members) are connected (joined/mated) by shaft 58 to
form two hollow chambers; and (2) “[t]he first chamber [i.e., the two piece
elements that encase the drive train chamber 88] houses the gear train
reduction 92, 94, 100 and the second chamber [i.e., the support plate 38 and
the housing 56] houses turbine 84 and reversing mechanism 60.” Ans. 8.
Accordingly, we find that Lockwood teaches “a plurality of mating
case members joined together to form a hollow container,” as required by
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claim 31. Therefore, the rejection of claim 31 and of claims 33 and 37,
which fall with claim 31, under 35 U.S.C. § 102(b) as anticipated by
Lockwood is sustained.

DECISION
The decision of the Examiner is affirmed as to claims 31, 33, 36 and
37.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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