Ex Parte COURTNEY et al

Patent Trial and Appeal Board

Aug 31, 2018

13474315 (P.T.A.B. Aug. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/474,315 05/17/2012
25227 7590 09/05/2018
MORRISON & FOERSTER LLP
1650 TYSONS BOULEVARD
SUITE400
MCLEAN, VA 22102
FIRST NAMED INVENTOR
Stephen Benjamin COURTNEY
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
424662053400 9522
EXAMINER
ROS, NICHOLAS A
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
09/05/2018 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):
EOfficeVA@mofo.com
PatentDocket@mofo.com
pair_mofo@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN BENJAMIN COURTNEY,
PATRICK JOSEPH WILLIAM MOLONEY, and
CHRISTOPHER LESNIOWSKI
Appeal2017-003437
Application 13/474,315
Technology Center 3700
Before MICHAEL L. HOELTER, JEFFREY A. STEPHENS, and
ERIC C. JESCHKE, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134(a) from the
Examiner's Final Office Action ("Final Act.") rejecting claims 1, 2, and 8-
14. Claims 3-7 and 15 are objected to as being dependent upon a rejected
base claim. Final Act. 8. We have jurisdiction under 35 U.S.C. § 6(b ).
1 The real party in interest is identified as Dyson Technology Ltd. Appeal
Br. 3.
Appeal2017-003437
Application 13/474,315
For the reasons explained below, we do not find error in the
rejections. Accordingly, we AFFIRM.
Claimed Subject Matter
Claim 1, the sole independent claim on appeal, illustrates the claimed
subject matter and is reproduced below (with paragraph spacing and
emphasis added).
1. A fixture for a sink, the fixture incorporating a water tap
and a hand dryer,
the water tap comprising a spout arranged to project over
the basin of the sink, and
the hand dryer comprising two or more hand-dryer nozzles
- at least one for each of a user's hands;
wherein each left-hand nozzle is located on the left-hand
side of the spout and each right-hand nozzle is located on the
right-hand side of the spout such that the spout acts as a dividing
partition between the left-hand and right-hand nozzles.
Rejections
I. Claims 1, 2, 8-11, and 13 stand rejected under pre-AIA
35 U.S.C. § I03(a) as unpatentable over Japanese Patent Publication
3160341 to Nishioka (published June 24, 2010) (hereinafter "Nishioka
'341") and Japanese Patent Publication 2001-I40305A to Nishioka
(published May 22, 2001) (hereinafter "Nishioka '305"). 2 Final Act. 3---6.
II. Claims 12 and 14 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over Nishioka '341, Nishioka '305, and Churchill
(US 2008/0222910 Al, published Sept. 18, 2008). Final Act. 6-7.
2 Citations to the figures of Nishioka '341 or '305 are to the respective JPO
publication, while citations to the text are to the respective translation
included with Appellants' IDS filed February 25, 2015.
2
Appeal2017-003437
Application 13/474,315
DISCUSSION
Rejection I
Appellants argue that Nishioka '341 and Nishioka '305 "do not
disclose or suggest, alone or in combination, a spout that 'acts as a dividing
partition between the left-hand and right-hand nozzles', as claimed" in claim
1. Appeal Br. 11. Appellants contend the left- and right-hand nozzles in
Nishioka '341 are not divided by the faucet T acting as a dividing partition.
Id. at 12. Nishioka '341 's "outlet nozzles are actually divided at connection
part 16 of the stand-alone dryer, not by the faucet T," and claim 1 requires
that the left-hand and right-hand nozzles are "divided through the spout,"
argue Appellants. Id. ( emphasis omitted).
The Examiner finds Nishioka '341 teaches two outlet nozzles 17, 19
separated by a distance G, which allows one nozzle (17) to be located on the
left side of a sink faucet (T) and the other nozzle (19) to be located in the
right side of the sink faucet (T). Final Act. 3--4. Figure 1 of Nishioka '341
is reproduced below.
3
Appeal2017-003437
Application 13/474,315
[ ~ 1 J
12 ~-
--------
',
5A
Nishioka '341 's Figure 1 shows a hand dryer 1 installed around a faucet T of
washstand S. Jet nozzles 18 and 20 (which provide, respectively, "rocket
engine jets" 17 and 19) sandwich the faucet T of the washstand S from right
and left. Nishioka '341 paras. 20, 23.
Based on the above-identified teachings ofNishioka '341, we do not
agree with Appellants' contention that Nishioka '341 's left- and right-hand
nozzles are not divided by the faucet T acting as a dividing partition. Claim
1 's limitation requiring that "each left-hand nozzle is located on the left-
hand side of the spout and each right-hand nozzle is located on the right-
4
Appeal2017-003437
Application 13/474,315
hand side of the spout such that the spout acts as a dividing partition
between the left-hand and right-hand nozzles" says nothing of the nozzles
being divided "through the spout," as argued by Appellants.
To the extent claim 1 's language that the "fixture incorporat[ es] a
water tap and a hand dryer" requires that these structures be integral, the
Examiner has addressed this limitation in finding one of ordinary skill in the
art would have made the relevant aspects ofNishioka'341 's design integral
as taught by Nishioka '305. See Final Act. 4. The Examiner finds an
integrated design "would provide a more aesthetically appealing product
which also utilizes a minimum amount of space in the sink area," id. at 3,
and would "create a more compact system which allows for more free
counter space," id. at 4. The Examiner finds "the combination would have
been obvious and desirable to one of ordinary skill in the art in a number of
scenarios such as new construction." Id. at 3.
Appellants challenge the Examiner's findings regarding the reasons
one of ordinary skill in the art would have combined the teachings of
Nishioka '341 and '305 in the manner claimed, by arguing that the
combination would change the principle of operation and frustrate the
intended purpose of Nishioka '341, that Nishioka '341 teaches away from
combining the teachings in this manner, and that the combination is based on
impermissible hindsight. Appeal Br. 14--20. Appellants' arguments are
primarily based on Nishioka '341 's teaching that its hand dryer can be easily
retrofitted to a sink basin "without special installation work." See, e.g.,
Appeal Br. 14 (quoting Nishioka '341 paras. 23, 30, 35, 39) (emphasis
omitted). Appellants contend the ability ofNishioka '341 's design to be
retrofitted is a principle of operation that cannot be changed, a purpose that
5
Appeal2017-003437
Application 13/474,315
cannot be frustrated, and a teaching away from an integral design. See
Appeal Br. 14--18.
Appellants' arguments do not inform us of error in the Examiner's
determination as to why one of skill in the art would have adapted Nishioka
'341 's design by making the hand dryer integral with the spout in new
construction applications. We are not persuaded that Nishioka '314's focus
on retrofit applications would have blinded one of skill in the art to the
benefit of applying its teaching of a nozzle on either side of the water spout
in a new construction context where the air and water lines are integrated
into a single faucet fixture as in Nishioka '305. Indeed, because the hand
dryer in Nishioka '314 is designed for retrofitting, the reference implicitly
invites one of ordinary skill in the art to consider what design changes would
be made to implement the same concept in a new construction environment.
Considered in that light, we agree with the Examiner's finding that one of
ordinary skill in the art would have recognized that forming Nishioka '341 's
air tube and nozzles integrally with the water spout (such as in Nishioka
'305) would be more aesthetically pleasing and take less counter space than
Nishioka '341 's retrofit design.
Appellants contend that combining Nishioka '341 's hand dryer with
the faucet "would take up more space than Nishioka[ '305's] combined
faucet and hand dryer arrangement" because that design takes up the least
amount of space with only a single nozzle. Appeal Br. 18. The Examiner
did not, however, find that integrating Nishioka '341 's double-nozzled dryer
with the water faucet would be the most compact design (nor is this feature
recited in claim 1 ). The Examiner nonetheless articulated reasoning with a
rational underpinning for modifying Nishioka '341 to make the assembly
6
Appeal2017-003437
Application 13/474,315
more compact. The existence of other existing or obvious design variations
does not defeat the obviousness of the claim at issue.
Appellants also argue "there is no technical benefit that would arise
from the combination" ofNishioka '341 and '305. Appeal Br. 19.
Appellants point out that Nishioka '341 already achieves Nishioka '305's
purpose of allowing the user to keep his or her hands in one place for the
washing and drying of his or her hands. Id. Appellants quote MPEP
§ 2143(I)(A), which in tum cites In re Omeprazole Patent Litigation, 536
F.3d 1361 (Fed. Cir. 2008), in arguing that integrating Nishioka '341 's hand
dryer with the faucet is an extra process step that would add an additional
component, thus amounting to extra work and greater expense for no
apparent reason. Appeal Br. 20. In this case, however, as noted above, the
Examiner has articulated reasoning for the proposed modification.
Accordingly, for the reasons discussed above and by the Examiner,
we are not informed of error in the Examiner's rejection of claim 1 under
35 U.S.C. § 103(a) as unpatentable over Nishioka '341 and Nishioka '305.
Thus, we sustain the rejection of claim 1, and, for the same reasons, the
rejection of claims 2, 8-11, and 13, which are not argued separately.
Rejection II
Appellants do not present separate argument for the rejection of
dependent claims 12 and 14. For the same reasons as claim 1, we sustain the
rejection under 35 U.S.C. § 103(a) of claims 12 and 14.
DECISION
We affirm the Examiner's rejection of claims 1, 2, and 8-14.
7
Appeal2017-003437
Application 13/474,315
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)(l )(iv).
AFFIRMED
8