Ex parte DONATI

Board of Patent Appeals and Interferences

Dec 10, 1998

08511841 (B.P.A.I. Dec. 10, 1998)

Application for patent filed August 7, 1995. According1
to appellant this application is a continuation of Appliation
No. 08/227,005, filed April 13, 1994; which is a continuation-
in-part of Application No. 08/134,281, filed October 7, 1993,
now U.S. Patent No. 5,406,657, issued April 18, 1995; which is
a continuation-in-part of Application No. 07/978,814, filed
November 19, 1992, now U.S. Patent No. 5,251,346, issued
October 12, 1993.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte WILLIAM R. DONATI
____________
Appeal No. 97-0441
Application No. 08/511,8411
____________
ON BRIEF
____________
Before COHEN, FRANKFORT, and PATE, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
Appeal No. 97-0441
Application No. 08/511,841
2
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 2, 4, 5 and 17, which are all of the
claims
Appeal No. 97-0441
Application No. 08/511,841
Claims 2 and 5 were amended subsequent to the final2
rejection (see Paper Nos. 14 and 23). According to the
examiner (Paper No. 15), the rejection of claims 2, 4 and 5
under
35 U.S.C. § 112, second paragraph, found on pages 3-4 of the
final rejection has been overcome.
3
remaining in the application. Claims 1, 3 and 6 through 16
have been canceled.2
Appellant’s invention relates to an electrically operated
toilet tank flush valve system which aids in water
conservation. As explained on pages 6-7 of the specification,
the system includes an adjustable electrical float sensor
switch unit (700), seen best in Figures 12 and 14 of the
drawings, operationally connected to a solenoid valve (200)
for allowing filling of the toilet tank (50) to a
predetermined maximum level as desired or as required by local
code. Independent claim 17 is representative of the subject
matter on appeal and a copy of that claim appears in the
Appendix to appellant’s brief.
Appeal No. 97-0441
Application No. 08/511,841
4
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Kimball 5,084,920 Feb. 4,
1992
Veal 5,307,524 May
3, 1994
Claims 2, 4, 5 and 17 stand rejected under 35 U.S.C. §
103 as being unpatentable over Kimball in view of Veal.
Rather than reiterate the examiner's full statement of
the above-noted rejection and the conflicting viewpoints
advanced by the examiner and appellant regarding the
rejection, we make reference to the examiner's answer (Paper
No. 18, mailed May 9, 1996) for the examiner's reasoning in
support of the rejection, and to appellant’s brief (Paper No.
17, filed May 1, 1996) and reply brief (Paper No. 19, filed
July 9, 1996) for appellant’s arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant’s specification and claims,
to the applied prior art references, and to the respective
Appeal No. 97-0441
Application No. 08/511,841
5
positions articulated by appellant and the examiner. As a
consequence of our review, we have made the determination that
the examiner’s position is not supported by the applied prior
art references and will therefore not be sustained. Our
reasons follow.
Like appellant, when we consider the collective teachings
of Kimball and Veal, we find nothing therein which would have
been suggestive to one of ordinary skill in the art of
substituting or employing the float operated, adjustable
signal means of Veal, seen in Figures 8, 12A and 12B, in place
of the float (28) and switch (29) of Kimball. In our opinion,
the examiner’s position is based on impermissible hindsight
gleaned from appellant’s own disclosure and not from any fair
teaching or suggestion found in the applied patents
themselves. Absent the disclosure of the present application,
it is our opinion that one of ordinary skill in the art would
not have been motivated by the teachings of the applied prior
art to modify the toilet flushing system of Kimball in the
manner urged by the examiner so as to arrive at the subject
Appeal No. 97-0441
Application No. 08/511,841
6
matter set forth in appellant’s independent claim 17 on
appeal.
If anything, it would appear to us that one of ordinary
skill in the art would have been led by the combined teachings
of the applied references to merely incorporate the automatic
toilet seat arrangement of Veal into the toilet of Kimball so
as to gain the benefits of such an automatic seat arrangement,
while also employing and maintaining the water recycling
system as disclosed in Kimball. As urged by appellant in the
brief and reply brief, there is nothing in either Kimball or
Veal which addresses varying the desired maximum water level
in the toilet tanks disclosed therein as a possible water
conservation measure, or which would have been suggestive to
one of ordinary skill in the art that the amount of water used
in flushing a toilet can be controlled or varied by placing a
vertically adjustable electrical float switch in the toilet
tank to control an electrically operated solenoid valve, which
in turn controls the inlet water to the tank and the volume of
water admitted to the tank to thereby control the desired
water level in the tank.
Appeal No. 97-0441
Application No. 08/511,841
7
Like appellant (reply brief, pages 2-4), we find that the
examiner’s interpretation of claim 17 on appeal (answer,
pages 5-7) totally ignores the clear import of the claim
language when the claim is viewed from the perspective of one
of ordinary skill in the art who has read appellant’s
specification. It is a well-settled maxim of our Patent law
that, in proceedings before the Patent and Trademark Office,
claims must be given their broadest reasonable interpretation
consistent with the specification, and that the claim language
cannot be read in a vacuum, but instead must be read in light
of the specification as it would be interpreted by one of
ordinary skill in the pertinent art. See In re Sneed, 710
F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983). This the
examiner has clearly not done.
For the above reasons, the examiner's rejection of
appellant’s claims 2, 4, 5 and 17 under 35 U.S.C. § 103 as
being
Appeal No. 97-0441
Application No. 08/511,841
8
unpatentable over Kimball in view of Veal will not be
sustained, and the decision of the examiner rejecting claims
2, 4, 5 and 17 of the present application is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
WILLIAM F. PATE, III )
Administrative Patent Judge )
Appeal No. 97-0441
Application No. 08/511,841
9
Barry G. Magidoff
Reid & Priest
40 West 57th Street
New York, NY 10019
Shereece
Appeal No. 97-0441
Application No. 08/511,841
APJ FRANFORT
APJ COHEN
APJ PATE
REVERSED
Prepared: September 21, 1999