Ex Parte EmrDownload PDFPatent Trial and Appeal BoardApr 30, 201311355227 (P.T.A.B. Apr. 30, 2013) Copy Citation 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. 11/355,227 02/15/2006 Daniel J. Emr DJE-1-US 8574 25560 7590 05/01/2013 Harold I. Masteller 105 Meadows Drive Springboro, OH 45066 EXAMINER BAKER, LORI LYNN ART UNIT PAPER NUMBER 3751 MAIL DATE DELIVERY MODE 05/01/2013 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 DANIEL J. EMR ____________ Appeal 2011-001569 Application 11/355,227 Technology Center 3700 ____________ Before WILLIAM V. SAINDON, JILL D. HILL, and BEVERLY M. BUNTING, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-001569 Application 11/355,227 2 STATEMENT OF THE CASE Daniel Emr (Appellant) appeals under 35 U.S.C. § 134 from a final rejection of claims 1-5, 7-9, 12-14, 18, 19, 21, 23-26, 28, and 29. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The claimed subject matter relates to “urinal strainers, and in particular, to a non-splash urinal strainer that includes a deodorant canister with a funnel shaped conduit adapted to receive, trap, and direct an incoming urine stream into the waste drain of a urinal without encountering urine splash back from the strainer device.” Spec., para. [0001]. Claims 1 and 28 are independent. Claim 1 is illustrative of the subject matter on appeal and is reproduced below: 1. A urinal strainer, comprising: a) a perforated base pad; b) a deodorant canister comprising: i) a continuous outside wall including a first end fixed to said perforated base pad, a second end opposite said first end, and a plurality of apertures extending through the continuous outside wall; ii) an elongated conduit that provides a channel to convey a urine stream from an open rim end of said conduit and a drain end of said conduit, said open rim end contiguous with the second end of said continuous outside wall and said drain end proximate said perforated base pad, iii) a perforated grate disposed at the drain end of said elongated conduit, said perforated grate positioned to contain debris within said elongated conduit channel and to drain conveyed urine from the elongated conduit channel; and Appeal 2011-001569 Application 11/355,227 3 iv) deodorant material positioned within a chamber between said elongated conduit and said continuous outside wall, said deodorant material formed to encircle said elongated conduit, said deodorant material shielded from contact by the urine stream conveyed through said elongated conduit channel. EVIDENCE The Examiner relies on the following evidence: Morad US 5,365,616 Nov. 22, 1994 Hill US 5,452,484 Sep. 26, 1995 Casari US 2004/0194198 A1 Oct. 7, 2004 REJECTIONS Appellant seeks review of the Examiner’s rejections of: claims 1-5, 7-9, 12-14, 18, 19, 21, 23-26, 28, and 29 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement; claims 1-5, 7-9, 12-14, 18, 19, 21, 23-26, 28, and 29 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter applicant regards as the invention; claims 1-5, 7-9, 12-14, 18, 19, 21, 24-26, 28, and 29 under 35 U.S.C. § 103(a) as unpatentable over Morad and Hill; and claim 23 under 35 U.S.C. § 103(a) as unpatentable over Morad, Hill and Casari. Br. 5-6. Appeal 2011-001569 Application 11/355,227 4 ANALYSIS Rejections under 35 U.S.C. § 112 35 U.S.C. § 112, First Paragraph The Examiner rejects claims 1-5, 7-9, 12-14, 18, 19, 21, 23-26, 28, and 29 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement, finding that the claimed subject matter, “an elongated conduit,” was not described in the Specification as originally filed in such a way as to reasonably convey to one skilled in the relevant art that the inventors had possession of an elongated conduit at the time the application was filed. Ans. 3. The Examiner also finds that the originally- filed Specification only sets forth a funnel-shaped conduit. Id. Appellant argues that their amendment changing “a conduit extending” to “an elongated conduit” simply rephrased the claim language where the meaning remains intact. Br. 6. We disagree. “An elongated conduit” is simply not a mere rephrasing of “a conduit extending.” In addition, Appellant has failed to explain what aspect of the conduit is elongated (e.g., its cross-sectional shape), and the Specification provides no assistance in determining the conduit aspect that is elongated. Appellant also argues that Figures 2-6 and paragraph [0038] of the originally-filed Specification provide support for “an elongated conduit.” Br. 7. We agree with the Examiner that an elongated conduit is not shown in the drawings. Ans. 10. While we acknowledge that paragraph [0038] states that a preferred deodorant canister comprises a circular configuration, but that “the outside wall 6 and the conduits 8 through 8d may comprise any suitable geometric shape,” because we are uncertain regarding the aspect of the conduit that is being claimed as “elongated,” we are not persuaded by Appeal 2011-001569 Application 11/355,227 5 Appellant’s argument and we sustain the rejection of claims 1-5, 7-9, 12-14, 18, 19, 21, 23-26, 28, and 29 under 35 U.S.C. § 112, first paragraph. 35 U.S.C. § 112, Second Paragraph The Examiner rejects claims 1-5, 7-9, 12-14, 18, 19, 21, 23-26, 28, and 29 under 35 U.S.C. § 112, second paragraph, as being indefinite. The Examiner finds that the claim language “said perforated grate positioned to contain debris within said elongated conduit channel” renders claims 1 and 28 indefinite (and presumably, those claims that depend therefrom). Ans. 4. Claims 28 and 29 do not include the claim language at issue, however, Appellant argues that the perforated grate preventing debris “from entering chamber 11 with deodorant canister 4” (Spec. para. [0022]) means that the perforated grate contains debris within the conduit. Br. 8. We agree with Appellant. Accordingly, the Examiner’s finding that claims 1 and 28 are indefinite based on the “perforated grate positioned to contain debris” language is in error. The Examiner also finds that the limitation, “a plurality of apertures that extend through the elongated conduit and communicate with said chamber [located between the elongated conduit and the outside wall]” in claims 9, 14, and 21 is in conflict with the limitation in claim 1 that the deodorant material is “shielded from contact by the urine stream conveyed through the elongated conduit channel.” Ans. 4. Appellant argues that the plurality of apertures does not conflict with the limitation in claim 1 that the deodorant material is shielded from contact by the urine stream because the apertures are recited as being located adjacent the drain end of the conduit. Br. 9. We are not convinced that locating the apertures adjacent the drain end of the conduit prevents urine Appeal 2011-001569 Application 11/355,227 6 from contacting the deodorant, and indeed, the claims do not require such a configuration (and instead permit the apertures to be higher up). We therefore sustain the rejection under 35 U.S.C. § 112, second paragraph, with respect to claims 9, 14, and 21. Regarding claim 1, the Examiner also finds that there is no antecedent basis for “the urine stream.” Ans. 4. Appellant does not contest this rejection (Br. 8-9) and we therefore sustain the rejection of claim 1 under 35 U.S.C. § 112, second paragraph, based on this issue. Claims 2-5, 7-9, 12-14, 18, 19, and 23-26 are sustained for the same reasons. We therefore sustain the rejection of claims 1-5, 7-9, 12-14, 18, 19, 21, and 23-26 under 35 U.S.C. § 112, second paragraph. We do not sustain the rejection of claims 28 and 29 under 35 U.S.C. § 112, second paragraph. Rejections under 35 U.S.C. § 103(a) The Examiner rejects claims 1-5, 7-9, 12-14, 18, 19, 21, 24-26, 28, and 29 under 35 U.S.C. § 103(a) as unpatentable over Morad and Hill, and claim 23 under 35 U.S.C. § 103(a) as unpatentable over Morad, Hill, and Casari, finding that Morad teaches the claimed perforated base pad and deodorant canister having a continuous outside wall with plural apertures extending therethrough. Ans. 4, 9. The Examiner also finds that Morad teaches a “conduit (6) extending over the deodorant canister.” Ans. 5. The Examiner admits that Morad fails to teach the conduit being elongated and providing a channel extending into the urine canister, and a tapered wall of the conduit. Id. The Examiner finds that Hill teaches a funnel-shaped conduit for use in receiving a fluid, the conduit having an open rim end and a drain end and deterring splashing of fluid streams of various widths. Ans. 5. The Examiner concludes that “[i]t would have been obvious to one Appeal 2011-001569 Application 11/355,227 7 having ordinary skill in the art at the time the invention was made to have modified the urinal strainer of Morad such that the conduit (6) extended into the deodorant canister and the conduit included a tapered wall from the open end to drain end to deter splashing of urine as taught by Hill.” Ans. 5-6. The Examiner then states that, as modified, the open rim end of the conduit is contiguous with the second end of the continuous outside wall, and the drain end of the conduit is proximate the perforated base pad. Ans. 6. Appellant argues that Morad does not teach or suggest a conduit, because a conduit is defined as a pipe or channel for conveying fluids and Morad’s circular top 6 is not a pipe or channel. Br. 10 (quoting The American Heritage® Dictionary definition of “conduit”). We note that a conduit is also defined as “a means of transmitting or distributing.” MERRIAM-WEBSTER DICTIONARY, found at http://www.merriam- webster.com/dictionary/conduit (last visited April 25, 2013). Given that Appellant’s Specification does not define the term “conduit” as being limited to a pipe or channel, the broadest reasonable interpretation includes both dictionary definitions. Morad’s circular top 6 transmits or distributes urine to side walls 10 and base 8, and therefore Morad discloses a conduit. We are not persuaded by Appellant’s arguments to the contrary. Appellant also argues that the Examiner improperly attempts to reconstruct Appellant’s claimed invention in hindsight. Br. 11-12. Appellant has not explained why the Examiner’s articulated reason is ineffective to support the conclusion of obviousness. Because the Examiner’s reasoning includes a rational underpinning to support the legal conclusion of obviousness, we are not persuaded that the Examiner’s modification was arrived at using hindsight. Appeal 2011-001569 Application 11/355,227 8 Appellant does not advance any separate argument suggesting that claims 2-5, 7, 12-14, 18, 19, 21, and 24-26 might be patentable over Morad and Hill if claim 1 is obvious over Morad and Hill. Thus, we group these claims with claim 1 and they fall therewith. In addition, Appellant does not advance any separate argument suggesting that claim 23 might be patentable over Morad, Hill, and Casari if claim 1 is obvious over Morad and Hill. We therefore also sustain the rejection of claims 2-5, 7, 12-14, 18, 19, 21, and 23-26 under 35 U.S.C. § 103(a). Regarding claim 8, which recites that the chamber (between the elongated conduit and the continuous outside wall) comprises “a urine trap below said drain end perforated grate,” the Examiner concludes that it would have been “obvious to one having ordinary skill in the art to have provided a urine trap located below the drain end perforated grate to provide the means by which urine properly flows down to the urinal drain. Urine traps are commonly known in the art to be provided in sanitary appliance drains by U- or S-shaped piping.” Ans. 7. Appellant admits that U- and S-shaped traps are well known in the art and are provided in waste line pipes at a location below the plumbing fixture drain. Appellant argues that, unlike a U- or S- shaped trap, the disclosed urine trap 11a is located above the fixture drain, and as claimed is integral with the chamber 11. Because claim 8 recites the urine trap being part of the chamber (as opposed to part of the fixture, as in the Examiner’s rejection), and claims 1, 2, and 7, from which claim 8 depends, recite the chamber being defined by the continuous outside wall, the elongated conduit, the perforated grate, and the perforated base pad, the Examiner’s rejection does not address the Appeal 2011-001569 Application 11/355,227 9 structure claimed. Claim 9 depends from claim 8 and we therefore also do not sustain the rejection of claim 9. Regarding claim 28, which recites a method for eliminating or reducing backsplash by, among other things, using a urinal strainer similar to that recited in claim 1, the Examiner concludes that the steps of “placing a urinal strainer . . . over a waste drain provided in a bowl portion of the urinal fixture, directing a urine stream into the open rim end of said conduit channel as claimed, discharging urine as claimed, and draining urine through the chamber into the waste drain of the urinal fixture” are not taught by Morad but would have been obvious to one having ordinary skill in the art when using the urinal strainer in a normal manner. Ans. 8. Appellant argues that one having ordinary skill in the art would not have been able to carry out step a) of claim 28 because the claimed urinal strainer did not exist. Br. 13. Appellant also argues, regarding step b), that prior to Appellant’s invention one skilled in the art could not convey a urine stream from an open rim end of a conduit to a drain end of a conduit because such a device did not exist. Appellant further argues that the prior art of record fail to teach preventing urine from contacting a deodorant. Br. 13. With respect to both arguments, the Examiner responds that Morad and Hill teach the claimed urine strainer and that it therefore would have been obvious to use the urine strainer of Morad as modified by Hill according to the method recited in claim 28. Ans. 15-16. We agree with the Examiner that it would have been obvious to use the urine strainer taught by Morad as modified by Hill in accordance with the method recited in claim 28. That such a urine strainer did not exist does not render the claimed method non- obvious when the claimed urine strainer was obvious over the prior art. We Appeal 2011-001569 Application 11/355,227 10 therefore sustain the rejection of claim 28 under 35 U.S.C. § 103(a). Appellant does not advance any separate argument suggesting that claim 29 might be patentable over Morad and Hill if claim 28 is obvious over Morad and Hill. We therefore also sustain the rejection of claim 29 under 35 U.S.C. § 103(a). DECISION We AFFIRM the rejection of claims 1-5, 7-9, 12-14, 18, 19, 21, 23- 26, 28, and 29 under 35 U.S.C. § 112, first paragraph. We AFFIRM the rejection of claims 1-5, 7-9, 12-14, 18, 19, 21, and 23-26 under 35 U.S.C. § 112, second paragraph. We REVERSE the rejection of claims 28 and 29 under 35 U.S.C. § 112, second paragraph. We AFFIRM the Examiner’s rejections of claims 1-5, 7, 12-14, 18, 19, 21, 23-26, 28, and 29 under 35 U.S.C. § 103(a). We REVERSE the Examiner’s rejection of claims 8 and 9 under 35 U.S.C. § 103(a). 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)(1)(iv). AFFIRMED mls Copy with citationCopy as parenthetical citation