Ex Parte Fasser et al

Patent Trials and Appeals Board

Apr 29, 2013

11598991 - (D) (P.T.A.B. Apr. 29, 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.
11/598,991 11/14/2006 Eric K. Fasser 288903-00300-1 1179
7590 04/29/2013
David C. Jenkins
Eckert Seamans Cherin & Mellott, LLC
44th Floor
600 Grant Street
Pittsburgh, PA 15219
EXAMINER
CAMPOS, JR, JUAN J
ART UNIT PAPER NUMBER
3654
MAIL DATE DELIVERY MODE
04/29/2013 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 ERIC K. FASSER and STEPHEN T. ENGLISH
____________________

Appeal 2011-002909
Application 11/598,991
Technology Center 3600
____________________

Before: CHARLES N. GREENHUT, BRETT C. MARTIN, and
NEIL A. SMITH, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-002909
Application 11/598,991

2
STATEMENT OF CASE
Erik K. Fasser and Stephen T. English (Appellants) appeal under 35
U.S.C. § 134 from the Examiner’s rejection of claims 1-20. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellants’ claims are directed generally to a canister hose reel.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A portable hose reel assembly comprising:
a housing assembly structured to support a
rotatable hose reel assembly on an axis;
an elongated reel assembly rotatably
coupled to said housing assembly and extending
longitudinally about said axis;
a handle assembly having a handle member
and at least one brace;
said at least one brace coupled to said
housing assembly and extending generally parallel
to said axis; and
said handle member coupled to said at least
one brace and extending generally perpendicular to
said at least one brace.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Brown
Plantz
Spear
US 4,315,522
US 5,782,412
US 5,794,649
Feb. 16, 1982
Jul. 21, 1998
Aug. 18, 1998
Tanji1 JP 2003-293376 Dec. 22, 2003

1 The Examiner references US Application No. 2006/0006270, also to Tanji
and which contains many of the same figures as the Japanese reference, for
textual explanation of the untranslated Japanese reference. See, e.g., Ans. 3.
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THE REJECTIONS ON APPEAL
The Examiner made the following rejections:
Claim 1 stands rejected under 35 U.S.C §112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter that Appellants regard as the invention. Ans. 3.
Claims 1, 6, and 7 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Spear. Ans. 4.
Claims 1, 6, and 7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tanji. Ans. 6.
Claims 2-5 and 8-17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tanji and Plantz. Ans. 7.
Claims 18 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tanji, Plantz, and Brown. Ans. 11.
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tanji and Brown. Ans. 15.

ANALYSIS
Drawing Objection
The Examiner objects to the drawings because the claimed “elongated
reel assembly” is not shown in the drawings. See Final Rejection dated Mar.
2, 2010, p. 2. Appellants request our review of this objection. App. Br. 11.
Appellants have not apprised us, however, as to how this objection to the
drawings is “the kind of adverse decision . . . which relate[s], at least
indirectly, to matters involving the rejection of claims,” thereby making it
appealable. Requirements made by the Examiner that are not subject to
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appeal are petitionable to the Director under 37 C.F.R. § 1.181(a)(1).
Accordingly, we have no authority to decide the Examiner's objections to the
drawings. See Ex Parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010)
(quoting In re Mindick, 37, F.2d 892, 894 (CCPA 1967)).
Indefiniteness
The Examiner rejects claim 1 as indefinite because the phrase
“extending longitudinally about said axis” is allegedly unclear. Ans. 3. The
Examiner goes on to explain that “the elongated reel assembly extending
longitudinally about said axis is unclear because the use of the ‘about’
without defining the extension direction of the reel assembly leaves the
claim unclear.” Ans. 18. As Appellants point out, however, “‘about’ means
‘around the outside.’” App. Br. 12 (citing Merriam-Webster Online
Dictionary, 11th ed.; see App. Br. Exh. 3). Further, as Appellants explain,
“[c]laim 1 initially identifies ‘an axis of rotation’ then, turning to the phrase
identified by the Examiner, states that the ‘reel assembly’ ‘extend[s]
longitudinally about said axis.” Id. We agree with Appellants that the claim
language is clear that “the ‘direction’ the reel assembly extends is the
direction of the axis of rotation” and that “[‘]about’ means around the
outside” of said axis. Reply Br. 2. Accordingly, we do not sustain the
Examiner’s rejection of claim 1 as indefinite.
Anticipation by Spear
Appellants argue the claims subject to this rejection as a group. We
select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner finds that Spear teaches each element recited in claim 1. See
Ans. 4-5. Appellants’ main argument against this rejection centers around
what the Examiner identifies in Spear as the claimed “handle member.” See
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App. Br. 16. Appellants argue that “[t]hus, Spear discloses names and
reference numbers for the various elements upon which the Examiner bases
this rejection.” Id. We note, however, that a reference that describes the
subject matter of a claim anticipates the claim even if the reference does not
use the same terminology used in the claim. See In re Bond, 910 F.2d 831,
832 (Fed. Cir. 1990) (stating that anticipation does not require an ipsissimis
verbis test). Appellants also point to a dictionary definition that states that
“‘handle’ is ‘a part that is designed especially to be grasped by the hand.’”
App. Br. 15 (citing to Merriam-Webster Online Dictionary, 11th ed.
http://www.merriam-webster.com/dictionary/handle; see App. Br. Exh. 5).
Appellants then note that Spear has an element 26 that is intended to be used
as a handle and, thus, the elements noted by the Examiner cannot be handles
because there already exists an element intended to be used as such. Id.
Appellants’ arguments on this point fail for at least two reasons. First,
and foremost, Appellants ignore the secondary definition listed in the same
Merriam-Webster Online Dictionary citation that defines a handle much
more broadly as simply “something that resembles a handle.” See App. Br.,
Exh. 5. Appellants provide no intrinsic evidence that their choice of a
narrower definition of “handle” is required in this instance. As Appellants
even admit, “it may be possible to grasp the ‘legs’ 28’ by the hand” (App.
Br. 16), thus it does not seem at all unreasonable for the Examiner to utilize
the portions of elements 28 as “handle members.” Therefore, we do not
agree that the Examiner has provided an unreasonable interpretation of the
term “handle member.”
Further, as noted above, Appellants’ claims recite a “handle member,”
not simply a “handle.” In this instance, “handle” is essentially used to
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modify the broad recitation of a “member.” As the Examiner notes in his
markup of Figure 1 supra, “Handle Member” is merely being referred to as a
“Part of [a] Handle Assembly.” We find the Examiner’s interpretation of
Spear’s Figure 1 as reasonable and reject Appellants’ ipsissimis verbis
application of Spear’s description of Figure 1. For the reasons stated above,
we sustain the Examiner’s rejection of claims 1, 6, and 7 as anticipated by
Spear.
Obviousness over Tanji
Appellants argue the claims subject to this rejection as a group. We
select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner rejects claim 1 as unpatentable over the combination of two
embodiments shown in Tanji, that of Figures 1 and 11. Ans. 6. The
Examiner finds that Tanji Figure 11 teaches all of the claimed elements
except for a housing. Id. The Examiner also finds that Tanji teaches a hose
reel “using a housing assembly 11 around a hose reel” as shown in Figures
1-5. Ans. 6-7. The Examiner then concludes that the combination of the
two would be obvious “to follow the teaching [in] Tanji of placing a housing
around a hose reel, and to protect the hose from damage once the hose is
wound.” Ans. 7.
Appellants argue two reasons as to why this rejection is improper, “(1)
the Examiner has misidentified the elements of Tanji and (2) the Examiner
has not presented a prima facie case for obviousness.” App. Br. 18.
Appellants’ first argument is essentially the same as used above in relation
to the rejection over Spear. Appellants argue that Tanji identifies “element
number 316 as a handle and element 222 as a linking bar” and that “the
Examiner asserts the exact opposite.” This again is an improper ipsissimis
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verbis application of Tanji.2 Tanji’s labeling of certain elements does not
limit their use for other purposes. Structurally, the elements identified by
the Examiner meet the claimed structural configuration as braces and a
handle member. In fact, looking at Figure 11 of Tanji, regardless of what
element 222 is named, it seems quite likely that a user desiring to pick up
that hose reel would do so by grasping element 222. This falls squarely
within the broader definition of “handle” noted above.
We also do not see where Appellants have provided a persuasive basis
for the assertion that the Examiner has failed to present a prima facie case of
obviousness. Appellants do not identify any elements missing from the
Tanji combination proposed by the Examiner, other than asserting that
elements identified by the Examiner are missing because they are not exactly
named according to the claim language or as disclosed in Tanji. See App.
Br. 19. Further, as noted above, the Examiner explains that one of skill in
the art would seek to include a housing as taught elsewhere in Tanji, “to
protect the hose from damage once the hose is wound.” Ans. 7. Appellants
provide no persuasive argument as to why this is not a valid rationale for
combining the two embodiments of Tanji. We find the Examiner’s stated
basis for the combination to be an “articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness” as required. In
re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
Appellants’ additional argument regarding the alleged change to the
principle of operation in Tanji is unpersuasive. See App. Br. 21. Tanji
discloses multiple embodiments of a hose reel. One has a housing (Figure 1)

2 The teaching in the prior reference need not be ipsissimis verbis. Structural
Rubber Products v. Park Rubber, 749 F. 2d 707, 716 (Fed. Cir. 1984).
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and the other (Figure 11) has bracing and handle elements that meet the
other limitations found in claim 1. Adding the housing of Figure 1 to the
reel otherwise disclosed in Figure 11,3 does not change the principle of
operation as a hose reel. We do not find Appellants’ argument persuasive
that repurposing “the handle and linking bar … to serve different functions”
amounts to changing the principle of operation of the device. It would still
operate as a hose reel. Accordingly, for the reasons above, we sustain the
Examiner’s rejection of claims 1, 6, and 7 as obvious over Tanji.
Obviousness over Tanji and Plantz
Appellants argue the claims subject to this rejection as a group. We
select claim 2 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Appellants restate their argument regarding the labeling of elements in Tanji,
which we have already rejected supra. Without identifying any specific
elements as allegedly missing from the rejection of claim 2, Appellants
appear to attack only the motivation for combining Tanji and Plantz.
Appellants assert that
the Examiner simply concludes that, “it would have been obvious to a
person of ordinary skill in this art to modify the hose reel of Tanji by
modifying the handle member to be a curved handle member and
positioning the handle so that the handle member extends generally
circumferentially about a reel, to follow the teaching of Plantz….”
and that such “is not an ‘articulated reasoning’ as to how/why the
combination would be made, but merely identifying aspects of the combined
element.” App. Br. 22-23 (citing Ans. 9). The conclusion of the Examiner’s

3 We note that Appellants readily admit that “it is true that the two
embodiments of Tanji could be bodily incorporated into each other.” Reply
Br. 6.
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sentence that is omitted from the above quote, however, further states “… to
provide even holding force for the reel during use (see figures 4-5 of
Plantz).” Ans. 8. Although curiously not mentioned in Appellants Appeal
Brief, Appellants do eventually challenge the Examiner’s fully stated
rationale in their Reply by asserting that “nothing in Plantz discloses ‘even
holding force for the reel during use’ or that such a force is desirable.”
Reply Br. 7. While this may be true, a determination of obviousness does
not require the claimed invention to be expressly suggested by any one or all
of the references. See e.g., In re Keller, 642 F.2d 413, 425 (CCPA 1981).4
We disagree that the Examiner’s rationale is “a random rationale made from
whole cloth” as asserted by Appellants, but see it merely as explanation of
what would generally be known to one of ordinary skill in the art—a point
which Appellants do not contest. Reply Br. 8.
Further, although Appellants admit that Plantz has an “arcuate shape
as seen from the side,” they argue that “the ‘curve’ of the handle disclosed in
Plantz relates to its cross-sectional shape.” Reply Br. 7. Regardless of what
else Plantz might disclose, we see no point in arguing such because it is
essentially irrelevant to the Examiner’s use of Plantz as teaching “a
generally arcuate portion and the portion extending generally
circumferentially about the reel assembly.” Ans. 8. Appellants’ discussion
of what else Plantz discloses regarding the handle does not apprise us of
error as to the teaching actually used by the Examiner.

4 Appellants also assert that the Examiner fails to assert that such a “result is
desirable as is known in the art or even generally known.” Reply Br. 8. We
find this unpersuasive because the Examiner’s reason for making a proposed
combination need not be expressly taught by the prior art. KSR Int’l v.
Teleflex, 550 U.S. 398, 415 (2007)
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Accordingly, for the reasons stated above, we do not find Appellants
arguments as to claim 2 persuasive. We, thus, sustain the Examiner’s
rejection of claims 2-5 and 8-17 as unpatentable over Tanji and Plantz.
Obviousness over Tanji, Plantz, and Brown
Claim 18
The Examiner asserts that the combination of Tanji and Plantz teaches
all of the claimed elements except for “the water conduit having a stationary
portion and a rotating portion (see figure 7).” Ans. 12. The Examiner then
concludes that it would have been obvious to modify the hose reel of the
Tanji-Plantz combination with the stationary and rotating portions of Brown
“to follow the teaching of Brown, and to make connecting the hose to the
hose reel easier.” Ans. 12. Appellants’ only argument against this
combination is that Tanji does not actually omit the stationary and rotating
portion because “as shown in Figure 3 of Tanji the ‘connecting plug 51’ of
Tanji has a water conduit having a stationary portion and a rotating portion”
and that, therefore, “the combination of Tanji and Brown is irrelevant.”
App. Br. 23. Even if, as Appellants suggest, Brown’s teachings are
somewhat duplicative of Tanji’s, that, without more, would be unhelpful to
Appellants. See, e.g., In re Boyer 363 F. 2d 455, 458 n.2 (CCPA 1966)(“We
think legal support for our reliance on [fewer than all references cited],
under these circumstances, can be found in In re Bush, 296 F.2d 491.”).
Thus, we have found no error in the Examiner’s combination of Tanji,
Brown, and Plantz.
Further, Appellants do not specify any elements of claim 18 that are
allegedly missing from the Examiner’s combination of Tanji, Brown and
Plantz. See App. Br. 23-24, Reply Br. 9. Where an Appellants’ remarks do
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not point to any specific language within the claims to distinguish over the
prior art, those remarks amount to a general allegation that the claims define
a patentable invention. Such allegations will not be considered an argument
for separate patentability. 37 C.F.R. § 41.37(c)(1)(vii) (2007). Accordingly,
Appellants have provided no persuasive argument as to the rejection of
claim 18 and we, therefore, sustain the Examiner’s rejection of claim 18.
Claim 19
Appellants again do not point to any specific element in claim 19 that
is allegedly missing from the proposed combination. As noted above, we do
not consider such general allegations as an argument for separate
patentability. Appellants do appear to attack the motivation for the
combination, but merely state “[t]he description of the combination is
provided in a single conclusory sentence.” App. Br. 24. Appellants point to
no alleged error, nor do they explain why the Examiner’s statement is only
conclusory.
The Examiner states at least one basis for combining Brown with
Tanji and Plantz as “to follow the teaching of Brown of using a rotating
portion that is structured to face [sic] a first or second direction, and to allow
for winding of the hose using clockwise or counter-clockwise rotation of the
crank.” Ans. 14. We do not agree that this is merely a conclusory
statement, and with nothing further from Appellants as to why it is only
conclusory, we are not apprised of error in the Examiner’s rejection of claim
19. Accordingly, we sustain the Examiner’s rejection of claim 19.
Obviousness over Tanji and Brown
With respect to claim 20, Appellants again merely state “not all of the
elements of the present claims are disclosed in the cited art,” but point to no
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specific claim element that is missing from the Examiner’s proposed
combination. App. Br. 24. Appellants then, as with claim 19, simply assert,
with no analysis, that “the Examiner has failed to properly support the
rejection as required by KSR International and 35 U.S.C. § 103(a).” The
Examiner provides a detailed explanation of the rejection as to claim 20 and
provides a rationale for combining Brown with the Tanji. See Ans. 15-17.
With nothing more from Appellants beyond such conclusory statements
without any analysis of their applicability to the rejection of claim 20, and
given the Examiner’s lengthy explanation of the rejection with a specific
rationale supporting the combination, we see no persuasive basis provided
by Appellants for overturning the Examiner’s rejection. Accordingly, we
sustain the Examiner’s rejection of claim 20.

DECISION
We REVERSE the Examiner’s rejection of claim 1 under 35 U.S.C
§112, second paragraph. We AFFIRM the Examiner’s rejections of claims
1-20 under 35 U.S.C. §§ 102 and 103.
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).

AFFIRMED5

Klh

5 See 37 C.F.R. § 41.50(a)(1) (2012) (“The affirmance of the rejection of a
claim on any of the grounds specified constitutes a general affirmance of the
decision of the examiner on that claim, except as to any ground specifically
reversed.”).