Ex Parte Conrad et al

Patent Trial and Appeal Board

Jan 5, 2018

13554193 (P.T.A.B. Jan. 5, 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.
13/554,193 07/20/2012 Joseph Michael Conrad III 104673-15 KGB 7356
27384 7590 01/08/
Briscoe, Kurt G.
Norris McLaughlin & Marcus, PA
875 Third Avenue, 8th Floor
New York, NY 10022
EXAMINER
LE, HUYEN D
ART UNIT PAPER NUMBER
3754
MAIL DATE DELIVERY MODE
01/08/2018 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 JOSEPH MICHAEL CONRAD III and KURT G. BRISCOE
Appeal 2017-0022431
Application 13/554,193
Technology Center 3700
Before ANNETTE R. REIMERS, LISA M. GUIJT, and
GORDON D. KINDER, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE2
Joseph Michael Conrad III and Kurt G. Briscoe (Appellants) appeal
under 35 U.S.C. § 134(a) from the Examiner’s decision to reject under 35
U.S.C. § 103(a) claims 1—13 as unpatentable over Conrad, III (US
2007/0151009 Al, published July 5, 2007) (hereinafter “Conrad”) and
1 We are informed by Appellants that For Kids By Parents, Inc. is the real
party in interest. Appeal Br. 1 (Appeal Brief, filed Mar. 18, 2016, “Appeal
Br.”).
2 The Examiner has withdrawn the 35 U.S.C. § 112, second paragraph,
indefiniteness rejection of claims 11—13. See Ans. 4 (Examiner’s Answer,
mailed Sept. 29, 2016, “Ans.”); see also Final Act. 2 (Final Rejection, mailed
July 29, 2015, “Final Act.”).
Appeal 2017-002243
Application 13/554,193
Raviendran (US 2007/0056086 Al, published Mar. 15, 2007). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claimed subject matter “is directed to a potty training device that
functions as a urine deflector when attached to the underside of an adult
sized toilet seat.” Spec. 13, Figs. 1, 2.
Claim 1, the sole independent claim on appeal, is representative of the
claimed subject matter and recites:
1. A potty training device comprising:
a bendable urine-deflector;
a plurality of attachment tabs, wherein said plurality of
attachment tabs are in contact with the top of said bendable urine-
deflector and are permanently positioned substantially at right
angles to the bendable urine-deflector; and
a means for attaching said potty training device to the
underside of a toilet seat;
wherein the device lacks a folding seam between said
bendable urine-deflector and said plurality of attachment tabs;
and
wherein said bendable urine-deflector can be positioned in
a curved configuration and attached in said curved configuration
via said means for attaching to the underside of said toilet seat to
block an opening formed between the toilet seat and a toilet bowl
to which said toilet seat is attached, and a surface of said
bendable urine-deflector serves as a urine-deflecting surface to
deflect a urine stream directed towards said opening into the
toilet bowl.
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Application 13/554,193
ANALYSIS
Appellants do not offer arguments in favor of claims 2—13 separate
from those presented for independent claim 1. See Appeal Br. 6—11. We
select claim 1 as the representative claim, and claims 2—13 stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Claim 1 is directed to a potty training device that includes “a bendable
urine-deflector” and “a plurality of attachment tabs,” “wherein the device
lacks a folding seam between [the] bendable urine-deflector and [the]
plurality of attachment tabs.” Appeal Br. 13, Claims App. Appellants
contend that “neither Conrad nor Raviendran reflects any anticipated or
known problems with Conrad’s seams.” Appeal Br. 7. According to
Appellants, “it wasn’t until the present Appellants (who are the same
Applicants on Conrad) made and tested a commercial prototype that the
problem first revealed itself’ and “as demonstrated by paragraphs [0009]-
[0011] from the present [Specification . . . Appellants have explained this
problem in the [Specification and have identified the present invention as a
solution thereto.” Appeal Br. 7.
As an initial matter, it is well established that the reason to modify a
reference may often prompt a person of ordinary skill in the art to do what
the inventor has done, but for a different purpose or to solve a different
problem. It is not necessary that the prior art suggests a combination to
achieve the same advantage or result discovered by an applicant. In re
Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006); see also Appeal Br. 7 (“The
Examiner has not attempted to make any case that the prior art evidences
knowledge of the same or a similar problem.”). Therefore, we are not
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Application 13/554,193
persuaded of Examiner error on the basis that the prior art did not recognize
the problem Appellants’ claim to have solved.
Additionally, Appellants’ contention is not responsive to the
Examiner’s proposed rejection of the combined teachings of Conrad and
Raviendran.
In this case, the Examiner finds that Conrad discloses the potty
training device of claim 1 substantially as claimed except Conrad “do[es] not
teach the urine deflector is permanently attached to attachment tabs at a right
angle with no folding seam.” Ans. 4; see also Final Act. 2—3. The Examiner
finds that “Raviendran teaches the urine deflector is permanently attached to
attachment tabs at a right angle with no folding seam.” Ans. 4; see also
Final Act. 3. The Examiner concludes that it would have been obvious to
modify Conrad’s potty training device “to have made the urine deflector
integrally attached to the attachment tabs at the right angles . . . with no
seam line in view of the teaching of Raviendran to improve the structure
integrity and strength of the connection between the urine deflector and
attachment tabs.” Final Act. 3; see also Ans. 4 (It would have been obvious
“to modifying [Conrad’s] device by permanently attaching that attachment
tabs to the urine deflector with no folding seam in view of Raviendran to
make a strong connection between the attachment tabs and the urine
deflector.”).
The Examiner’s findings are sound and supported by a preponderance
of the evidence, and the Examiner’s conclusions therefrom are based on
rational underpinnings. Appellants do not apprise us of Examiner error. In
particular, Appellants do not apprise us of error in the Examiner’s stated
reason for modifying Conrad’s potty training device in view of the teachings
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Application 13/554,193
of Raviendran, namely, “to improve the structure integrity and strength of
the connection between the urine deflector and attachment tabs.” Final Act.
3; see also Ans. 4.
We acknowledge that at page 5 of the Final Rejection, the Examiner
states: “Modifying [Conrad’s] device in view of Raviendran would be
obvious one to skill the art. Such modification would meet the structure as
claimed and inherently solve the aforementioned problem.” Appeal Br. 8;
see also id. at 9-10; Final Act. 5; Reply Br. 23. However, as discussed
above, the Examiner provides an articulated reason with rational
underpinnings for making the proposed modifications, which is not
addressed by Appellants.4 Further, Appellants do not apprise us how the
combined teachings of Conrad and Raviendran would fail to inherently solve
the problem proposed by Appellants. See Appeal Br. 8—11. To the contrary,
Appellants acknowledge that “Conrad suffers a serious defect that renders it
partly inoperative under the indicated conditions” (see Appeal Br. 11) and
Raviendran discloses a toilet device having attachment tabs “at a fixed right
angle without a folding seam” (see id. at 10). Moreover, in response to
Appellants’ contention, the Examiner finds that
[the proposed] modification would meet the potty training device
as claimed. The argued problem and the intended use have been
carefully considered but deemed not to impose any structural
limitations on the claims distinguishable over the modified
3 Reply Brief, filed Nov. 29, 2016 (“Reply Br.”).
4 The Examiner’s rejection in the subject application is distinguished from
Appellants’ discussion of the Sponnoble case, in that, as discussed above, the
Examiner provides an articulated reason with rational underpinnings “for
making the combination” of Conrad and Raviendran, other than inherency,
which Appellants do not address. See Final Act. 3; Ans. 4; see also Appeal
Br. 8; Reply Br. 2; page 4 above.
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Conrad device which is capable of performing the same function
as the device as claimed and solving [Appellants’] problem.
Ans. 4—5 (emphasis added). The Examiner’s findings are sound and based
on rational underpinnings. Appellants do not apprise us of Examiner error.
Lastly, we disagree with Appellants that “the prima facie case of
obviousness will always achieve the claimed invention.” Appeal Br. 10; see
also id. at 11. Absolute predictability that the substitution will be successful
is not required, all that is required is a reasonable expectation of success.
See In re O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988). In this case, the
Examiner’s proposed modifications to Conrad do not appear to be uniquely
challenging, and Appellants have not explained with any specificity why a
person of ordinary skill in the art would not have had an expectation of
success in making the proposed modifications.
Furthermore, Appellants do not provide any evidence or argument
sufficient to show that the proposed modifications would have been beyond
the level of ordinary skill in the art. Neither do Appellants provide any
persuasive evidence or argument sufficient to show that the proposed
modifications would have been more than a predictable use of the prior art
elements according to their established functions. “The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 416 (2007). “If a person of ordinary skill can implement
a predictable variation, § 103 likely bars its patentability.” Id. at 417.
Accordingly, and based on the record presented, we are not persuaded
the Examiner erred in rejecting independent claim 1 as obvious over Conrad
and Raviendran. We sustain the Examiner’s rejection of claim 1 as obvious
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Application 13/554,193
over Conrad and Raviendran. We further sustain the Examiner’s rejection of
claims 2—13, which fall with claim 1.
DECISION
We AFFIRM the decision of the Examiner to reject claims 1—13 as
unpatentable over Conrad and Raviendran.
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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